PTO: Business Method Patent in 100 Days

by Dennis Crouch

A couple of weeks ago, the USPTO issued U.S. Patent No. 8,712,797 to the drug-price-shopping company named GoodRX. The patent appears to be a typical business-method type invention based on the idea that automated internet communications can help solve consumer information problems. Here, the basics are to obtain a price list from two different pharmacy benefit managers and then display “at least a portion” of those prices through a user interface.

What is unusual is that the patent issued only 98 days after its filing date. The notice-of-allowance was mailed 44 days after filing.  (Note – this is not a continuation or divisional but it does claim priority to a provisional application.)  The application included a track-one request ($2,000 for small entity) filed by Knobbe. This is an incredibly short timeline for issuing a broad business-method patent that is very likely invalid.

Claim 1 is listed as follows:

1. A method of displaying prices for drugs … comprising:

providing a user interface using a computer processor;

receiving from the user interface information identifying a first drug;

obtaining a first set of prices for the first drug that is associated with a first pharmacy benefit manager (PBM), wherein a pharmacy benefit manager processes a claim relating to a drug and has an agreement with a pharmacy relating to a price of one or more drugs, the first set of prices comprising at least one price for the first drug and each price in the first set of prices being determined by an agreement between the first PBM and a pharmacy;

obtaining a second set of prices for the first drug that is associated with a second pharmacy benefit manager, the second set of prices comprising at least one price for the first drug and each price in the second set of prices being determined by an agreement between the second PBM and a pharmacy; and

displaying in the user interface at least a portion of the first set of prices and the second set of prices.

As mentioned above, the patent claims priority to a provisional filing. One interesting aspect of this case is that the provisional was filed pre-AIA and the application was filed post-AIA. For these transitional applications, the USPTO asks applicants to declare whether new matter was added to the non-provisional application and the applicant here indicated that answer was no. The problem is that the provisional application is actually quite sparse and – at least to my eye – there are a number of claims that were not described by that document.  Of course, we would need to ask whether there is any remedy for failing to accurately answer the AIA-Transition question.

To the extent you are concerned about GoodRX patent viability, the company does have two additional applications pending that claim priority to the same provisional application.

428 thoughts on “PTO: Business Method Patent in 100 Days

  1. Malcolm is (again) resorting to a banal “look at me look at me” rhetorical tool of re-posting an existing post on top of the thread merely to have his name (and vapid view) on top.

    As if his posts did not create enough clutter the first time through…

  2. Downthread JCD has fallen into a familiar trap:

    that means that adding abstract subject matter to a claim can render it patent ineligible under 101. There is certainly a chance that that claim would be found ineligible under current jurisprudence, but it seems a strange result.

    There’s nothing strange about the result. It is the correct result and it is easy to understand why it is correct unless you believe that there should be no restrictions on eligible subject matter.

    Let’s take a simple example with two very reasonable assumptions: (1) taking a drug is eligible subject matter and (2) mental processes are ineligible subject matter (perhaps the quintessential example of abstractions).

    Claim 1. A method for stimulating one’s metabolism comprising drinking coffee.

    Claim 2. The method of claim 1, further comprising thinking about a zebra-striped spider with hornet wings.

    Claim 1 is eligible subject matter. Claim 2 is ineligible subject matter because it protects an abstraction (thinking about a zebra-striped spider with hornet wings). It protects that abstraction because people who freely practice the prior art (drinking coffee) become infringers when they think about the zebra-striped spider with hornet wings. There is nothing “strange” about this.

    This is basic, fundamental stuff. The issue is never going to go away and the outcome for such claims (i.e., no patent, or at least no enforceable patent) is never going to change because nobody in our society (indeed: in our world) except for a tiny, tiny, tiny fraction of invested bttm-fders and grifters wants such patents to be granted or enforced.

    1. Dennis: I believe that this claim is obvious. I also believe that there is an easy 101 argument here under Mayo, Bilski, and the soon to appear CLS Bank (speculating).

      The basics of the 101 eligibility argument are that the general idea of comparing prices provided by two separate benefit managers is an abstract idea and the addition of a “user interface” and “computer processor” are so entirely routine that they do nothing to transform the abstract idea into eligible subject matter, but instead continue to preempt all practical uses of the invention except for doing the work with pencil and paper.

      And my own analysis:

      Anytime you see this kind of grbge recited in an issued computer-implemented claim, there’s an increased likelihood that someone made a big mistake:

      the first set of prices comprising at least one price for the first drug and each price in the first set of prices being determined by an agreement between the first PBM and a pharmacy;

      What’s the structure of “determined by an agreement”? What difference does it make for this computer-implemented “technology” (or the obviousness of that technology) how the displayed prices were determined?

      Given that displaying prices on a computer screen is older than the hills (something everyone knows unless they were born yesterday), the only possible hook for patentability seems to be the ineligible “method” by which the prices were determined (“by agreement”). This claim is a bad joke.

      providing a user interface using a computer processor; receiving from the user interface….displaying in the user interface

      As if any of jnk is relevant to the alleged “invention” here. When will the softiewofties grow up?

      1. What a CRPPY analysis.

        ad hominem accusation of mistake.

        vapid questions.

        strawman “old as hills” rivaling the age of electrons, protons and neutrons.

        more ad nominem

        another call to “grow up” from the least grown up person that posts on this blog. A signature AOOTWMD.

        Worse yet, this is completely interchangeable with any other post by Malcolm discussing any other patent that he does not like. There is no substance here from Malcolm. Analysis? Do you really want to call that that?

      2. From a 103 standpoint, it seems pretty easy to argue that the claim is invalid.

        You could certainly say that:
        -whereas, it is clearly well known for a pharmacy benefit manager to have an agreement with a pharmacy relating to a price of one or more drugs;
        -whereas, it is clearly well known to obtain a first price for an item from a first location and a second price for the item from a second location and compare the two;
        -whereas, it is clearly well known that you can obtain prices electronically using a computer; and
        -whereas, it is clearly well known to display information obtained electronically on a display;
        -therefore, it would be obvious to obtain first price information for a first pharmacy benefit manager from a first location and second price information for a second pharmacy benefit manager from a second location and display the two on a display.

        Some people may disagree with a conclusion of obviousness, but I don’t think anyone would find it to be an unreasonable conclusion.

        The far more interesting assertion is that this patent should be invalid under 101 as not being directed to eligible subject matter.

        For example, Dennis argues that: “the general idea of comparing prices provided by two separate benefit managers is an abstract idea and the addition of a ‘user interface’ and ‘computer processor’ are so entirely routine that they do nothing to transform the abstract idea into eligible subject matter, but instead continue to preempt all practical uses of the invention except for doing the work with pencil and paper”.

        I am assuming that he meant to say “preempt all practical uses of the [abstract idea] except for doing the work with pencil and paper”, as obviously there is nothing wrong with a claimed invention preempting use of the claimed invention. However, I would potentially take issue with this preemption analysis, as the claim clearly recites “displaying in the user interface at least a portion of the first set of prices and the second set of prices” and does not preempt comparisons which do not display a portion of both price sets. For example, an application might compare two price sets but only display a portion of the lower price set.

        I mention this not as a way to argue that this claim is definitely 101 eligible, but merely to point out that the current preemption framework can be very nebulous and difficult to interpret and apply.

    2. Claim 1 is invalid under 101. The claim attempts to preempt the abstract concept of using chemicals to stimulate the human metabolism. The use of coffee adds no structure to the claim as coffee is merely a well-know chemical stimulant. Drinking the coffee add no structure to the claim as drinking is well-know as a way to add chemicals to humans. Invalid under 101.

      I won’t bother citing to any facts. The patentee will simply have to trust my judgment.

    3. Malcolm once again strawmanning badly with: “Let’s take a simple example with two very reasonable assumptions: (1) taking a drug is eligible subject matter and (2) mental processes are ineligible subject matter (perhaps the quintessential example of abstractions).

      First, it is not at all reasonable to make the assumptions.

      In 1), taking a drug is explicitly called into question by the Prometheus case, as the metabolic reaction – even for a man-made drug – was called out by the Court to be a law of nature.

      In 2), we have (once again) a moving of goalposts to Malcolm wanting to move from claims that may have an element that is a mental step to a claim that is comprised completely of mental steps (a strawman only Malcolm – and perhaps Les when I cannot grab his car keys quickly enough – talk about).

    4. Lol, so not only does a diskette magically become ineligible subject matter when your the second person to claim it and claim a program stored on it (that disk in your hand is no longer an apparatus, despite the fact I’m HOLDING IT IN MY HAND WITH THE PROGRAM STORED IN IT), but now a dependent claim that depends from an eligible independent claim can be ineligible because of ADDED LIMITATIONS?!

      Man, this blog has the most desperate-to-perform-mental-gymnastics-to-make-black-white trolls!

      Do you have ANY intellectual honesty left???

  3. All this talk of 101. Lizard Tech provides the proper analysis. A patentee should be afforded the scope of enablement. All claims are abstractions. All. The question the SCOTUS should be asking (or better yet just stop taking cert) is whether or not the claim is too far up in the abstraction ladder. ALL claims are abstractions. (Read Bilski dissent of Newman for description of the ladders of abstraction.) And note that every engineering school that I attended (2 of the top 5) taught first year students about the ladders of abstraction as a problem solving method.

    So, we have an easy way to enforce the abstraction ladder by scope of enablement. If you went too far up the ladder, then there are other inventions that are non-obvious within your claim scope that you did not enable, so you lose your claims.

    That is real patent law. Real science. Not the mumbo-jumbo that the SCOTUS and the antis are spouting. This method can be applied with real facts–not a judge psychotically chanting that technology that they do not understand adds no structure.

    1. 101 is the atom bomb of judicial patent law writing.

      The addiction cannot be hidden if the Justices were to go about and attempt to import their “dead letters” into the other sections of patent law such as 112 and 103.

      LOL – they cannot even effectively do it with 101, as we can see the depths of the “implicit” rabbit hole and the utter mess left behind when the Supremes stick their fingers into 101 nose of wax, and the CAFC punches them in the nose and breaks those fingers.

      Go ask Alice.

  4. Please excuse my naiveté, but I have a question about how examiners treat CIPs. Here is the scenario. I filed a parent case in 2010 for a new machine. Then I invented a new feature and filed it as a CIP in 2011 adding the new feature disclosure to the 2010 Specification. I discovered a second new feature of the machine in 2013 and filed a CIP adding the new feature to the 2011 Specification. Thus, the 2013 Specification is cumulative of the 2010, 2011, and 2013 disclosures. All of my 2013 claims are limited by the second new feature, as so: A machine, comprising: a new feature, and a second new feature. Now in 2014, I am re-thinking the CIP strategy. Does the Examiner always use the CIP filing date for doing their search? Or do they use the earliest date in the priority claim? What are the advantages and disadvantages for editing the priority claim of the 2013 application to be limited to ONLY the 2013 filing since this was the first time I disclosed the second new feature? And if the answer is to edit the priority claim, what are the real advantages and disadvantages for filing a CIP at all? Has the answer to this question changed because of AIA? Thanks in advance!!!!

    1. Regardless of the AIA, if one of your patent application publications was published more than a year prior to the effective filing date of the claims of the 2013 application, it is prior art to those under the facts alleged regardless of the priority claim.

      The only benefit I see in the priority claim is the continuing opportunity to claim inventions 100% supported by the earlier applications.

    2. “Does the Examiner always use the CIP filing date for doing their search? Or do they use the earliest date in the priority claim?”

      We just do a search bro. Then we sort out whether what we find qualifies as prior art or not against a given claim.

      Some examiners like to date limit their searches, that doesn’t really work out so well for CIP’s (except perhaps date limiting so that you don’t get stuff that is filed/published wayyyyyy behind the filing date of the CIP app).

      “And if the answer is to edit the priority claim, what are the real advantages and disadvantages for filing a CIP at all?”

      You can put some claims in the CIP that may, or may not have WD back further than the filing date of the CIP app and let the office sort out whether they think they get WD. Also, you’re able to put those claims in the CIP alongside other claims that would have only the FD of the CIP app.

      It isn’t a “huge” benefit usually.

      “Has the answer to this question changed because of AIA? !!!!”

      Idk about that.

    3. Imagine that you file a patent application and then, within a year, you come up with some additional features you wish you could add, for example, in dependent claims. So you think about filing another patent application, but you don’t want to have to pay to prosecute and eventually maintain two different applications. The solution is to file a CIP and abandon the parent. In my view, that’s the ONLY situation in which filing a CIP should be considered.

      1. TINLA,

        With the AIA, the situation you suggest will be more and more a default situation since getting something on file will be paramount without a mechanism to swear behind.

        Of course, this was not only known, but broadly forecast by the likes of Ron Katznelson.

  5. Lots of bluster and nonsense as usual. And, lots of misrepresenting the law and science.

    But, what are your predictions for Alice? Time to man (or woman) up or shut up.

    1. Well if you want our prediction, why not put yours up first brosef?

      I’ve said a number of nuanced things but the bottom line is 9-0 against Alice. The 5 people against Rader will be vindicated and “preemption” will necessarily stand. Whether or not they kill all B claims outright remains to be seen, but since nobody brought it up, I doubt they will. They’ll clarify Bilski a bit and Scalia might chime in about having “seen the light” so to speak in view of the amendments to the statute and what sort of arguments have been based on the Bilski majority portion he joined.

      1. and “preemption” will necessarily stand.

        6, until (unless) you present a cognitive understanding of the ladders of abstraction, ANY pet theory of yours centered on “preemption” is necessarily null and void for gross malfeasance of you impersonating a reasonable person.

        Scalia might chime in

        LOL – give another listen – read the actual transcript; return to reality.

        in view of amendments to the statute

        You might want to add just a little explanation to this new thing you are thinking of.

        1. “You might want to add just a little explanation to this new thing you are thinking of.”

          It isn’t new at all. Ned noted a long time ago that the section of statute Scalia was persuaded by has been excised from the statute and replaced by a section that bars it from being used in statutory construction of 101. That is quite old news brosefus.

          1. LOL – Ned was shown to be dead wrong on that.

            No one – and I repeat no one ever tried to go down that dead end again.

            And now you want to somehow make it a cornerstone of your views on the oral arguments in Alice?

            Really?

            (you are doing that delusional thing again 6)

            1. Anon, just because we don’t want to sit and argue with you about something all day everyday doesn’t mean that it is somehow “shown to be dead wrong”. The change in the law was made. That’s a fact brosef. You can’t really “show that to be wrong”. What the supremes will decide to do with that fact is up in the air. We’ll see shortly.

              For most of us what is to be done is fairly clear, and we think that ivo those changes Scalia likely won’t be as apt to take the old position he took. That’s just our opinion brosef. We’re entitled to it. You can have your own opinion on it, no matter how wonky or wacko yours are. We don’t have to sit around and argue about whose opinion is best, we’ll see shortly what happens.

            2. Just because..

              Nice. Except it was shown to be wrong.

              (do you really want to hang your hat on Ned’s statutory construction skills?)

              Once again, you mistake a fact for what you think that fact means. You tend to do that a lot. And not surprising, you tend to do that and try to align everything with your belief system (even messing up objective physics in your wake).

              For most of us what is to be done is fairly clear

              LOL – who is this “most of us”? and is what you think “to be done” include a violation of the separation of powers doctrine?

              Um, do you even know (or care) what that doctrine is?

              And lastly, please spare me the “I have a right to my opinion” CRP. No one is saying otherwise. However, what you want to label as “opinion” and put out there is very different from an on target meaningful discussion of law. You are letting that “law is entirely subjective, in the mind and anything goes” belief system of yours get in the way again.

      2. I know I should put down my prediction, but I haven’t finished formulating it yet. I am sure that this is not going to be a big anti-software patent decision. And I am sure that Laurie is not going to come out of this smelling good. I think the SCOTUS will recognize that Laurie’s method is not the application of law, but an egotist deciding whether or not a patent is valid based on their subjective opinion with no factual basis.

        1. I am sure that this is not going to be a big anti-software patent decision

          Agreed – given the stipulations by both parties and the admissions made by Perry during the oral arguments, I think that any hope by the anti-software patent crowd for a complete “victory” is merely wishful thinking at this point.

          with no factual basis

          The Court is clearly struggling with their own bungling of 101 jurisprudence. Breyer’s backtracking was palpable. The desperation of finding some “out” was clearly present by Breyer and Sotomayor, and it appeared that only Ginsburg remains wed to the (dwindling) Bilski overt-re writing the words of Congress 4.

          I think the best way of viewing any decision by the Court is to apply a Chamberlain/Churchill metric and one MUST remember that the CAFC threw this case into the Supreme Court’s face and said: “We cannot make sense of what you have been telling us – we cannot “just apply it” – we need something more.”

          The Court has an immediate Ben Parker moment: with great power comes great responsibility.

          The Court also has a scrutiny upon it that may be unlike any other scrutiny in previous 101 cases: the call for abiding within the limitation imposed by the separation of powers doctrine, which rings out loudly – and in direct contradistinction to many voices (including academics) calling out to ignore this critical constitutional constraint.

  6. This case begs the question that if the office allows claims that are so bad that not even the usual inmates can defend it, has it really done anything wrong vis a vis the public?

    The answer to this question was “of course” because people didn’t want to pay to hire counsel to fight even obviously poor claims. Now that there is fee shifting, the calculus changes.

    1. When you read a claim like this it makes you wonder why the PTO can’t just have a few people that know what they are doing reading proposed patent claims before issuance.

      Geez, I’d think a good patent attorney could evaluate at least 50 of these a day to determine whether or not they are ridiculous.

    2. >f the office allows claims that are so bad that not even the usual inmates can >defend it,

      To: RandomDOPE

      If you hadn’t notice, the “usual inmates” do not defend claims per se. The “usual inmates” defend the patent system and the application of the law. The arguments are almost never about the claims, but how the law is being applied.

  7. JCD: “Nontrivial example:

    1. A quantum computer comprising:
    (a) a hard drive;
    (b) a processor; and
    (c) memory configured to represent information utilizing qubits.

    2. The quantum computer of claim 1, wherein the hard drive contains computer executable instructions for performing cryptanalysis.”

    Not to divert attention too much, but claim 1 is invalid as being functional at the point of novelty.

    It also is a parts list, no cooperation is alleged between the elements.

  8. Examiner Cobanoglu has granted 93 published patents since his career began in 2007. As it happens, 16 of these were granted without him issuing even a single office action. Only a single office action was issued in another 11 of the published grants. Here are his first action allowance applications (the noted date is the application filing date):

    13/452,215 04-20-2012
    12/957,106 11-30-2010
    13/781,101 02-28-2013
    13/736,700 01-08-2013
    12/801,988 07-07-2010
    13/400,786 02-21-2012
    12/956,848 11-30-2010
    12/700,195 02-04-2010
    12/826,801 06-30-2010
    12/995,470 12-01-2010
    13/426,691 03-22-2012
    13/298,806 11-17-2011
    13/458,447 04-27-2012
    12/848,670 08-02-2010
    13/049,389 03-16-2011
    13/154,730 06-07-2011

    - Chris Holt

    1. 8595030

      1. A system for managing form-generated data related to a patient encounter, wherein the form-generated data is generated by electronic writing system configured to generate location information that identifies the location of a user writing on the form, the form having designated information fields at different locations on the form, the system comprising:

      a contextualizer configured to translate location information related to a user writing on a form to a contextualized data element, wherein the form has designated information fields at different locations on the form and wherein the contextualized data element comprises contextual information that is associated with the user writing, wherein the contextualizer includes a mapping data set that maps user areas on the form to labels that are associated with the designated information fields and wherein the contextualizer is configured to identify a label from the location information by comparing the location information to the mapping data set, the contextualized data element comprising the label;

      and wherein the contextualized data element is distributed to an Electronic Medical Record (EMR)/Electronic Health Record (EHR) application, which utilizes the label in the contextualized data element to perform a function that is related to the user writing on the form, via a publish/subscribe protocol in which the EMR/EHR application subscribes to a specific contextualized data element by identifying the label associated with the contextualized data element.

      Functional claimed jnk of the lowest order. “My system reads and organizes your health care forms because I say it does.” When will the softie wofties grow up?

      Gotta love the background section: “While creating an electronic image of a marked up form on a remote computer allows subsequent electronic access to the marked up forms, to glean useful data from the user writing on the form, a person viewing the electronic image must manually convert the user writings to useable data, by for example, keying in data from check boxes. ”

      Gee, that assumes that this person doesn’t have a computer configured to automate that manual task. And that’s a ridiculous assumption because everybody knows that computers can be configured to do any information processing task that a human can do. All you have to do is imagine the information processing task, imagine a computer configured to do it, and voila! you just gave birth to a new machine. Welcome to our broken patent system.

      1. What is being claimed is a system that can accept any form and find the relevant information, so long as the form includes the contextual labels. This means that you only have to fill out one medical form and it can be used for all the concerned parties…. all the doctors, all the insurance companies, etc., without requiring everyone to use the same form.

        This is truly a boon to mankind.

        You don’t think that’s worthy of a patent?

        Fine. You are hereby condemned to never use take advantage of it.

        Here’s a pen and a clip board. Never mind about your broken hand, fill these forms out, then a Doctor will see you.

        1. Fine. You are hereby condemned to never use take advantage of it.

          Been there, done that.

          Les, you are speaking to those that have no compunction whatsoever to deny protection to things that they choose to use the benefit of.

          These people see no hypocrisy at all in refusing to “put their money where their mouths are.”

          “Want without giving” after all is not that removed from “to each according to their need.”

    2. Wait, are you trying to suggest 93 is a lot, or a little, or is it the 27/93 ratio you’re trying to highlight?

  9. Downthread JCD has fallen into a familiar trap:

    that means that adding abstract subject matter to a claim can render it patent ineligible under 101. There is certainly a chance that that claim would be found ineligible under current jurisprudence, but it seems a strange result.

    There’s nothing strange about the result. It is the correct result and it is easy to understand why it is correct unless you believe that there should be no restrictions on eligible subject matter.

    Let’s take a simple example with two very reasonable assumptions: (1) taking a drug is eligible subject matter and (2) mental processes are ineligible subject matter (perhaps the quintessential example of abstractions).

    Claim 1. A method for stimulating one’s metabolism comprising drinking coffee.
    Claim 2. The method of claim 2, further comprising thinking about a zebra-striped spider with hornet wings.

    Claim 1 is eligible subject matter. Claim 2 is ineligible subject matter because it protects an abstraction (thinking about a zebra-striped spider with hornet wings). It protects that abstraction because people who freely practice the prior art (drinking coffee) become infringers when they think about the zebra-striped spider with hornet wings. There is nothing “strange” about this.

    This is basic, fundamental stuff. The issue is never going to go away and the outcome for such claims (i.e., no patent, or at least no enforceable patent) is never going to change because nobody in our society (indeed: in our world) except for a tiny, tiny, tiny fraction of invested bttm-fders and grifters wants such patents to be granted or enforced.

    1. Malcolm, in the run up to Mayo, you and I discussed this very example. If there is invention in claim 1, adding ineligible subject matter to it in claim 2 does not render claim 2 unpatentable.

      If claim 1 is not new, then claim 2 is also not patentable — because the novel subject matter is ineligible.

      And, for that matter, that is exactly what Mayo held when it suggested that if there was invention in the administering of the drug and blood test, the result may have been different.

      This is also consistent with Funk Bros. that looked for invention beyond the law of nature.

      This is a big circle. What we are really doing is what 103 tells us to do: look to the differences between the claimed subject matter and the prior art.

      Well, if that difference is ineligible, then there is no patentable difference between the claimed subject matter and the prior art.

      We should recognize that the Supreme Court is actually conducting a 102/101/103 analysis, with 102 going first.

      1. If there is invention in claim 1, adding ineligible subject matter to it in claim 2 does not render claim 2 unpatentable.

        Correct (assuming the invention of claim 1 is eligible on its own terms) because the issue of protecting of ineligible subject matter doesn’t arise in that case (e.g., people practicing eligible claim 1 infringe eligible claim 1 regardless what they are thinking while they practice the claim).

        1. issue…doesn’t arise

          Not quite right Malcolm – you are aware that claims can be brought individually, right? – claim 1 may not even be a part of the suit…

          1. Not quite right Malcolm

            It’s exactly right and your point about “bringing individual claims” changes nothing.

            If you disagree, provide a specific example to illustrate your “point” and explain how that example proves me wrong.

          2. You can bring dependent claim 2 “individually” but infringers still have to practice all the steps in the eligible (and separately patentable, in this hypo) claim 1 before they are liable. Given that fact, it really doesn’t matter what they are thinking about.

            Look at it another way: people infringe claim 1 regardless of what they think about while they are practicing claim 1. If claim 1 is eligible and separately patentable, there is no point in bringing claim 2 “individually.” If claim 1 is not patentable on its own terms, then claim 2 is going to be ineligible.

            [shrugs]

            1. RQ/HD decrees it so

              All you have to do is explain exactly what you were driving at with your incomprehensible comment, in English, using complete declaratory sentences instead of “hints” and innuendo. We all understand that it is often very difficult for you to follow up and explain your own gibberish.

              Golly, I wonder why.

            2. And all you have to do is stop projecting your reading disability and calling it someone else’s problem with English as a First Language.

              Better yet – my suggestion is something within your actual control.

    2. Thanks for the thoughts; strange as it may seem I am truly interested to see the disparate opinions on this issue (and underlying reasoning).

      Your post is actually very interesting, and I appreciate the example.

      The problem is, I’m having trouble reconciling existing jurisprudence with your conclusion regarding claim 2. For example, in Cybersource, the Federal Circuit notes that:

      Methods which can be performed entirely in the human mind are unpatentable not because there is anything wrong with claiming mental method steps as part of a process containing non-mental steps, but rather because computational methods which can be performed entirely in the human mind are the types of methods that embody the “basic tools of scientific and technological work” that are free to all men and reserved exclusively to none.

      In a footnote, the court even references a prior decision (In re Abele, 684 F.2d 902, 908 (CCPA 1982)) “finding a claim patentable that included both mental steps and physical steps”.

      Further, the Supreme Court made it clear in Diehr that:

      In determining the eligibility of [a] claimed process for patent protection under [Section] 101, [] claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.

      Thus, it seems pretty clear that (1) the Supreme Court does not countenance disregarding a portion of a claim for 101 analysis, and (2) the Federal Circuit has specifically declined to find a method claim ineligible simply because it includes a mental step, where it also includes a physical step.

      Is it your position that the Federal Circuit’s decision in Abele should not stand, and its dicta in Cybersource should not be followed?

      1. JCD, regarding the “computational methods,” they are excluded subject matter because they are akin to laws of nature and are not “new.” See, Flook, fn. 15. They cannot be the subject of a patent.

        Per Funk Bros., when considering “invention” the law of nature (math) must be excluded. Flook to the same effect.

        Regarding claim as a whole, see Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966) at 32-34. (“The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims.”)

        Now, my problem with all this is that there is a critical novelty analysis that must take place before one can move on to “differences” from the prior art. This should place the analysis in 103. The Supreme Court want it in 101.

        Also, note, some on the Federal Circuit do not want any novelty analysis. This position has been flatly rejected by the Supreme Court time and time again. But note also, it makes, or should make, no difference if ineligible subject matter is new or old. It simply cannot be claimed.

        1. >>the law of nature (math)

          Math is not a law of nature. This continued view of yours Ned (we all know this was put into place in modern case law by Benson) is counter to all modern thinking.

          Do you think Newton’s method of approximation is a natural law?

            1. (sigh)

              It is not the word Ned – it is in your use of and resulting position of the word.

              The fact that you have a crusade and routinely over-read case law and misconstrue facts (such as the fact that software is equivalent to firmware and is equivalent to hardware) is why those familiar to your agenda react to what you say in the manner that they do.

          1. Even worse NWPA is the implicit view (by Ned) that software is math.

            And yet (as I have pointed out), one cannot obtain a copyright on math and one can obtain a copyright on software.

            1. Of course, your over-reliance on that particular footnote should be balanced with another quote from the Flook case that you tend to not even acknowledge.

              You know the one, right? ;-)

      2. JCD, after Prometheus (and even before) the passage from Diehr stands only for the trivial proposition that the mere presence of ineligible subject matter in a claim does not render the claim ineligible. The Supreme Court in Prometheus certainly demands that one look at the individual elements in the claim and compare the eligible elements to the prior art to determine whether the eligible elements are old/conventional. Call that “dissection” or whatever else you want, but that’s what they are doing. That’s what you have to do. There’s no way around this issue.

        the Federal Circuit has specifically declined to find a method claim ineligible simply because it includes a mental step, where it also includes a physical step.

        Right. Nobody here is arguing that a method claim is ineligible “simply” because it has a mental step. There’s more to it than that.

        1. Wrong again Malcolm.

          Prometheus was explicit that it did not change any precedents.

          And yes, you have not yet squared the case with those precedents.

          1. Prometheus was explicit that it did not change any precedents.

            Right. Because Diehr never meant what you and the zombie Dierhbots said it meant.

            you have not yet squared the case with those precedents.

            There is no conflict between Prometheus and the reasonable person’s view of Diehr, i.e., there is nothing to square.

        2. Right. Nobody here is arguing that a method claim is ineligible “simply” because it has a mental step. There’s more to it than that.

          Of course, this will not stop Malcolm from his typical attempts to move the goalposts and talk about claims that are “totally in the mind.”

          And equally of course, he is nailed every time he attempts such dissembling.

        3. JCD, after Prometheus (and even before) the passage from Diehr stands only for the trivial proposition that the mere presence of ineligible subject matter in a claim does not render the claim ineligible. The Supreme Court in Prometheus certainly demands that one look at the individual elements in the claim and compare the eligible elements to the prior art to determine whether the eligible elements are old/conventional. Call that “dissection” or whatever else you want, but that’s what they are doing. That’s what you have to do. There’s no way around this issue.

          That may well be the case, but I think it’s important to note that this is only one step taken by the Court in analyzing the claim, not the entire analysis. After all, the test “that one look at the individual elements in the claim and compare the eligible elements to the prior art to determine whether the eligible elements are old/conventional” is functionally identical (for the ineligible subject matter of laws of nature) to assuming that laws of nature are prior art in determining whether a claim is novel and nonobvious. This is EXACTLY what the Supreme Court specifically declined to do, suggesting that this approach is untenable because “studiously ignoring all laws of nature when evaluating a patent application under §§102 and 103 would ‘make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.’” (There is some question whether this rationale would apply to abstract ideas, although this just suggests that perhaps laws of nature and abstract ideas should be treated differently.)

          The claim examined by the Supreme Court in Prometheus was bad. The wherein recitation relating to a law of nature was not used to inform any recited step, so it was abundantly clear that the law of nature was not applied, and that the claim did not recite an application of a law of nature. The case easily could have been decided with as little discussion as that. But it wasn’t, and as a result there is lots of dicta which further confuses the issue. I always enjoy hearing disparate opinions on this issue, but I think that it is relatively easy to take sections of the Court’s analysis out of context and think that Prometheus stands for more than it does.

          The Court in Prometheus looked at the claims holistically, and found that rather than trying to claim an application of natural laws, the claims attempted to preempt the use of natural laws, and “upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries”. I am not sure the same result would be reached for claims that do not risk disproportionately tying up a natural law.

          1. JCD, not “prior art” so much as “ignored,” ignored because it is ineligible.

            Now take printed matter. If functional with respect to the underlying subject matter, it is not ignored.

            Ditto to any other law of nature, etc.

          2. JCD That may well be the case

            It is the case.

            After all, the test “that one look at the individual elements in the claim and compare the eligible elements to the prior art to determine whether the eligible elements are old/conventional” is functionally identical (for the ineligible subject matter of laws of nature) to assuming that laws of nature are prior art in determining whether a claim is novel and nonobvious.

            You mean that you will reach the same result. That is true. So what? The Supreme Court did not have a problem with the result in Prometheus (i.e., a tanked claim). The fact that an approved analysis gets you the same result as a rejected analysis means nothing.

            The case easily could have been decided with as little discussion as that. But it wasn’t

            So what?

            The claim examined by the Supreme Court in Prometheus was bad.

            Yes, it was. It recited an old conventional data gathering step followed by a step of thinking about a correlation that could be drawn from that data. The Supreme Court recognized this was a big problem and tanked the claim.

            I think that it is relatively easy to take sections of the Court’s analysis out of context and think that Prometheus stands for more than it does.

            That’s easy to do with any opinion.

            I am not sure the same result would be reached for claims that do not risk disproportionately tying up a natural law.

            Then go ahead and try to claim and old data gathering step followed by a step of thinking about some abstraction that is not a natural law. See what happens. Or you can just use common sense and the Supreme Court’s decision in Prometheus v. Mayo and understand that such a claim is ineligible and will never be deemed enforceable. But, hey, it’s your money (or it’s your client’s money). Go right ahead and flush it down the t-let.

            [shrugs]

            1. gets you the same result as a rejected analysis means nothing.

              LOL – the pinnacle of the legal reasoning of “Whatever

              /eye roll.

              That’s easy to do with any opinion.” – you answered your own question of “So what?

              Pay attention.

      3. and (2) the Federal Circuit has specifically declined to find a method claim ineligible simply because it includes a mental step, where it also includes a physical step.

        Any similarity between what you state and the pet theory of Malcolm that has been tossed on the bonfire is purely not coincidental.

        Note that Malcolm perpetually attempts to dissemble on this, at once claiming “of course, mental steps are allowed, moving the goalpost to discussing claims comprised COMPLETELY of mental steps, and then slipping back in his pet theory which is only an example of a claim with a mental step and not a claim COMPLETELY of mental steps. Of course, his pet theory requires a disassociation and non-integration of the elements of his claim, and is just as much a sham as trying to argue with a claim comprised ONLY of non-mental steps, but that has no association among its elements (like a claim to a bicycle, a goldfish in a blue bowl and NASA lunar module – without more). That such is nonsense is clearly evident. But that won’t stop him and his army of sockpuppets at PatentDocs from repeating the banality (and dissembling about it).

    3. Two other quick points:

      (1) The judicial exception is at its core seems to be grounded in ensuring that the basic tools of scientific and technological work are free to all men and reserved exclusively to none; does claim 2 restrict scientific and technological progress?

      (2) What if thinking about a zebra-striped spider with hornet wings after drinking coffee had a demonstrable unexpected result such as stimulating brain function in Alzheimer patients? Obviously this is an absurd hypothetical, but in that case should it be patent eligible?

      1. JCD (2) What if thinking about a zebra-striped spider with hornet wings after drinking coffee had a demonstrable unexpected result such as stimulating brain function in Alzheimer patients? Obviously this is an absurd hypothetical, but in that case should it be patent eligible?

        Absolutely not. You realize, of course, that a multitude of useful mental processes and an infinitely vast amount of useful information already exists. New useful mental processes and new useful information are continually being identified. The use of the patent system to promote “progress” in “new ways of thinking” and “new stuff to think about” is a terrible, horrifying prospect and you’ll never succeed in convincing normal people otherwise. Most people know better.

        does claim 2 restrict scientific and technological progress?

        I’m not sure which “claim 2″ you are referring to. If you’re referring to my hypothetical, it’s easily adjusted such that the mental step is less wacky. I chose that particular abstraction (the fantastical hornet) because it seems non-obvious on its face.

        1. Most people know better.

          Most people immediately recognize your dissembling goalpost moving strawman and dismiss you.

    4. MM

      1. I think you meant claim 2 to depend from claim 1 and not from itself, is that correct?

      2. Claim 1 is open ended. Implicitly it encompasses dependent claim 2.

      If your are drinking coffee you are infringing, whether or not you are thinking about striped spider hornets.

      Explicitly reciting your thinking process in a dependent claim does not alter the allow ability of the independent claim. Moreover, the dependency upon an allowed claim bestows allowability upon the dependent claim.

      There may be exceptions to that, I suppose… if the dependent claim is gibberish for example, but I have never come across one. Your claim 2, as a dependent claim under claim 1 is allowabled as its subject matter is encompassed by the circle that is the Venn diagram of claim 1.

  10. I wonder if there are a large number of patents like this that the Examiner (Cobanoglu; Dilek B )had allowed?

    1. I wonder if there are a large number of patents like this that the Examiner (Cobanoglu; Dilek B )had allowed?

      How about this incredible piece of jnk? 8000985

      1. A method of estimating liability for a real accident being considered for liability assessment, comprising: providing a computer system configured to access a memory, wherein the memory comprises sets of characteristics of two or more past or theoretical accidents, wherein the past accidents are accidents that occurred in the past other than the real accident being considered for liability assessment, and wherein at least one characteristic in the sets of characteristics is a roadway configuration, and wherein the memory further comprises an estimated liability for two or more of the past or theoretical accidents; displaying the roadway configuration as a graphical image in a graphical user interface; selecting a graphical image of a roadway configuration corresponding to a roadway configuration of the real accident being considered for liability assessment; determining a roadway configuration among the two or more past or theoretical accidents that most nearly matches the selected roadway configuration of the real accident being considered for liability assessment; and determining an estimate of liability for the real accident being considered for liability assessment, wherein the estimated liability is based, at least in part, on the liability for a past or theoretical accident corresponding to the determined matching roadway configuration.

      The softie wofties. Will they ever grow up? Because there is an infinite amount of this gxrbge that anybody can throw at the patent system and here we have one Examiner who loves his rubber stamp. And there are a lot more of them. Of course, if the Examiner’s put their stamps down then some “defender” of human rights like Hal Wegner is liable to drive a busload of sillycon valley types to the USPTO and stage a big protest with papier mache puppets and everything. Golly, that would be so scary.

      1. Someone who engages in as much ad hominem and empty name-calling, rampant straw-manning and other vapid rhetorical techniques, asking (in a pejorative manner no less) an entire class of the highest level of innovation in the modern world to “grow up”…

        KABLOOEY !

  11. After Prometheus said there is no statutory basis for ignoring limitations for 103 purposes, if a limitation is ineligible subject matter, as in printed matter, it has to be dealt with under 101, not under 103. Functional limitations, properties, and the like, have to be dealt with under 112.

    So, I claim a coffee cup with my name on it. Under the pre-Prometheus 103, the PTO simply rejects over prior coffee cups, ignoring the printed matter. Now what?

    The mind boggles.

    1. JCD, “I continue to think that 101 is being used to do work that 103 was designed to do.”

      Of course it is. And the problem here is 103 itself which provides no basis for not considering ineligible subject matter – see Prometheus.

      So, if the novel subject matter is ineligible, where does one turn?

      1. One does not turn to the judiciary and plead with them to write patent law – not if one recognizes and respects the Constitution.

        1. Are you suggesting, anon, that if one claims subject matter not eligible under 101 that he must obtain a patent nevertheless?

            1. I am suggesting that 101 be dealt with as Congress wrote the law.
              I am suggesting that 103 be recognized for the full impact meant by Congress – that Congress acted to remove the ability of the Court to set by common law evolution the definition of ‘invention” that prior to 1952 had as its home the 101 corresponding part of the law.
              I am suggesting that I have provided ample legal backing for this view – including your own favorite hero Frederico, as well as the congressional record.

              Finally, I am suggesting that what I have posted is correct – NOT because it is I that have posted it. Rather, it is correct because it is correct and I have chosen to post it because it is correct.

            2. anon, I agree in principle.

              Now, if subject matter is not eligible and it is the only thing new, is there a proper way of rejecting the claim, and if so, how?

              It seems if 101 cannot consider prior art, and 103 cannot discount the ineligible, then we are at an impasse.

      2. One also does not conflate the law and attempt to muddle the distinction between patent eligibility and patentability.

        Congress made that distinction – Congress wrote with those words – it is not up to the judiciary to re write the words of Congress.

        4 is (still) not 5.

    2. (sigh)

      Ned – please update your comments to include the full (and proper) notion of the exceptions to the judicial printed matter doctrine.

      Then kindly NOT go that canard of non-Useful Arts in your examples.

      Thanks.

      All of this has been patiently explained to you, so no extra drama of “the mind boggles” is necessary. The sky is not falling.

            1. and material and controlling law at that – such that it is unethical to knowingly portray otherwise – even for advocates using a modern social media vehicle for their advocacy

            2. it is unethical to knowingly portray otherwise – even for advocates using a modern social media vehicle for their advocacy

              There is nothing unethical about pointing out that some judicially created doctrine is complete b.s.

              So sxck it, creep.

            3. pointing out?

              Or dissembling and hoping that no one notices that you are not reflecting actual law?

              If you want to “point out,” I suggest that you do more than your typical vapid ad hominem and take some time to put together a cogent argument. One that reflects reality.

    3. Ned: I claim a coffee cup with my name on it. Under the pre-Prometheus 103, the PTO simply rejects over prior coffee cups, ignoring the printed matter. Now what? The mind boggles.

      Not sure why there needs to be any boggling. The claim is ineligible because it protects ineligible subject matter (i.e., information, whether it’s your name on a coffee cup or your mom’s name tattooed on your face).

      1. …and about those exceptions, wherein there is a functional relationship…

        (you are an attorney bound by ethics, right?)

          1. Just because you don’t like it and that it rains on your parade and curse-ade against software does not make it “meaningless gobbledygook

            But you already knew that, right pumpkin?

            1. ust because you don’t like it and that it rains on your parade and curse-ade against software does not make it “meaningless gobbledygook”

              That’s nice. But meaningless gobbledygook it remains.

              Maybe instead of pounding your table all the time you can go ahead and explain to everybody how you can tell the difference between “functional” “printed matter” and non-”functional” “printed matter”. Of course, you’ll first need to recognize that “printed matter” is not limited to information that is printed.

              So please go ahead and give your explanation to everyone. After all, you’re the expert on this subject. Or at least you pretend to be one. So let’s hear it.

            2. LOL – goes silent?

              What blog are you on? Which fantasy world have you retreated to?

              Is it the same one where the silence on how an ‘oldbox’ – without change – suddenly finds itself with new capabilities?

            3. Still waiting for the mental patient to provide his explanation. Once again:

              Maybe instead of pounding your table all the time you can go ahead and explain to everybody how you can tell the difference between “functional” “printed matter” and non-”functional” “printed matter”. Of course, you’ll first need to recognize that “printed matter” is not limited to information that is printed.

              So please go ahead and give your explanation to everyone. After all, you’re the expert on this subject. Or at least you pretend to be one. So let’s hear it.

              Still waiting. Go ahead. Defend your baby. What’s the matter? Cat got your tongue, creep?

            4. Defend my baby?

              The defense is self evident given the very reason why we have a patent system.

              You do know why we have a patent system, right Malcolm?

        1. But what statute?

          Enter the rejection, but do not use 103. See the problem?

          No. It’s an ineligible claim under 101. There is no problem.

            1. Never mind reality.

              This is reality. It was reality before Prometheus v. Mayo and it’s reality after Prometheus v. Mayo.

              Information is ineligible for patenting. You can’t patent information just because you stick it on a coffee cup. And it’s a 101 problem, not a 103 problem. It always was. You and the Federal Circuit can pull some gxrbge out of your behind and declare it to be a 103 problem but it’s not.

              Did Congress intend to make information patentable when it wrote 101 and 103? Of course it didn’t.

              You and your buddy Big G should encourage Congress to rewrite the statute if you have a problem with the Federal Circuit “writing law.” Get Hricik on board, too. You’ll make a really impressive team.

            2. Nice strawman, with your too-constrained view on “information” which misses the larger picture of patent eligibility for software inventions.

              But you already knew that, right pumpkin?

            3. your too-constrained view on “information” which misses the larger picture of patent eligibility for software inventions.

              LOLOLOLOLOLOLOL

    4. The court in Prometheus incorporated “prior art” into its analysis of 101 while saying that it was improper to incorporate 101 considerations into 103 analysis.

      Now consider that just for a couple of seconds.

      1. Ned,

        I have asked Malcolm to square that very notion from day one of the Prometheus verdict.

        He never has.

        He cannot.

      2. The court in Prometheus incorporated “prior art” into its analysis of 101

        So what?

        it was improper to incorporate 101 considerations into 103 analysis.

        So what?

        1. So what?

          So reform your posts and stop dissembling about what the law is, about software inventions and 101 patent eligibility.

          It really is not asking that much, Malcolm.

        2. what the law is

          The law changes all the time, you sad little man. And you don’t like how it’s been changing and how it’s going to continue to change. You might as well sit and tell gay people to stop complaining about “what the law is” in those axx-backwards states where they are still being discriminated against. All that does is make you look like a bitter old jxrk. But, hey, you’ve got an ever-shrinking number of like-minded friends so you can’t be completely looneytunes. And you’re old and “wise”. Or so you tell yourself on a daily basis.

          1. The law changes all the time, you sad little man.

            Nice strawman. No one is saying otherwise. In fact patent law just changed in a massive way under the constitutionally approved way of Congress passing the AIA.

            Um, you do understand basic US law and things like the separation of powers, the constitution and the like, right pumpkin?

            All else in your post was mindless and unfounded rambling.

            You are getting apoplectic (again).

            1. No one is saying otherwise.

              In fact, you silly dissembling clown, you incessantly whine on and on here about the “actual law” as if it is written in stone and means only what you decide that it means.

              In reality, Federal courts interpret and apply the patent laws written by Congress to fact patterns that, in many cases, were not contemplated by the drafters of the laws. That’s how our system works. More to the point, that’s how the system has to work unless we want the patent system to be constantly undermined and handicapped by bttmfdrs and grfters like you.

            2. So sorry (for you) that a simple saying that perfectly and clearly captures the conversation bores you so much Malcolm.

              Perhaps instead of *clciking* and ignoring the point, you might find it exciting to try to come up with a cogent legal counterpoint.

              Please take into account the well-known separation of powers doctrine in your ‘oh-so-clever’ response.

              (I will not be holding my breath waiting for you to provide any type of thoughtful response)

      3. May I suggest the proper rejection 102/101/103? Prior art, ineligible subject matter, and obviousness all at once. Limitations that are ineligible are excluded. This means the claim, as in Diehr, is patentable if something else is non obvious.

        1. “all at once”

          The great “WHATEVER” muddle of law.

          Ned, try stopping and thinking about why this is so difficult for you to just accept what the law actually is.

        2. Limitations that are ineligible are excluded. This means the claim, as in Diehr, is patentable if something else is non obvious

          Nice, but that is simply not what the law is here and now.

          Give your Congressman a call Ned, and do this the right way.

            1. It is manifest that both Rich and Federico were marginally competent. They exhibited the competence of the tradesman, per Scalia, not of the generalist.

              This is somewhat puzzling in the case of Rich, who, after all, graduated from Harvard Law.

              I think Rich’s main problem was not competence, but that he was political, aggressively against the leftist Supreme Court lead by Douglas. He was certain that Douglas was the problem, and that he could do things better. Well, it turns out, he and Federico made a hash of things in any number of ways.

              But the ideology Rich injected into the CCPA and Federal Circuit that the ’52 Act was a replacement of prior law rather than a codification is the real problem. These two courts kept making up new law rather than looking to the cases prior to ’52. Divided infringement is a classic example where Rader really screwed the pooch, reading into 271(a) a mythical requirement that “whoever” can only mean one person.

              How do we fix this mess? I for one would repeal 271(a)-(c) as not necessary. Repeal 112(f) for the same reason. Finally, repeal 103 or amend it specifically exclude from its consideration ineligible subject matter per 101.

              I would then clarify 282 that 101 is to be included in the grounds for invalidity.

              Then there is the matter of 102(f).

            2. “He was certain that Douglas was the problem, and that he could do things better. ”

              That definitely fits. And to be clear, when he was operating (the period around the greatest generation) surely that was the attitude of many a man.

            3. It fits, but not as Ned portrays.

              It fits as when in the position of a judge – no one was more qualified to best interpret the law (reading the map), because Judge Rich – had helped write the law (in his Congress-approved rule as architect of writing the map).

              This is a fact ignored by some, and purposefully (with ad hominem) twisted by others who simply do not want to accept how the map was drawn by Congress, because that map – as drawn – permits things that certain individuals do not want to be permitted.

              It really is as simple as that.

          1. anon, the current AIA was also written by those who believe they can do it better than Thomas Jefferson and the Supreme Court. Consider that just for a second.

            1. Ned – note the very words you use: and the Supreme Court.

              Per the constitution and the Act of 1952, the Supreme Court is OUT of the patent law writing business.

              Whether or not “doing it better” comes into play is a red herring when the point of the matter is the determination of who holds the legitimate constitutional authority to write patent law.

              I am well familiar with your (and evidently Prof. Crouch’s) view that better law is developed with the tool of common law evolution and the “natural” highest authority being the Supreme Court for the use of that tool.

              I really wish that you would acknowledge the massive issue of a violation of the separation of powers doctrine that is implicated with any post-1952 Court writing of patent law.

              To continue to ignore the foundational implications is a staggering dereliction of duty that all lawyers owe – not to the Supreme Court, but to the Constitution.

              One’s allegiance sworn in at bar is not to the Royal Nine. You seem incapable of even recognizing this fault of yours, much less correcting that fault.

    5. There’s nothing surprising about this at all. The state of the art does inform a 101 analysis which is different from a 103 analysis.

      The state of the art would show you could print letters on cups. Thus the most accurate way to view the “improvement” offered by the teachings of the spec is that a name constitutes information. That’s not a valid “improvement” and it fails 101.

      The prior art teaches printing on coffee cups, which renders printing your name on a coffee cup obvious. No limitations are ignored and your head doesn’t explode – just because your name isn’t in the prior art doesn’t make it non obvious.

      The fact that it’s a claim to a cup does not end the 101 analysis. The fact that it contains a previously undisclosed piece of information (your name) does not end a 103 analysis.

      1. The state of the art does inform a 101 analysis

        Thanks for chiming in Random Examiner with your typical wrong understanding of the law.

        1. You need to check yourself with Prometheus. The only reason that claim was ineligible was because it relied upon elements already known in the art. Had the application of the law of nature itself had been an improvement, the claim would have stood. Instead the only addition was the correlation, which was unpatentable.

          If you were right (and you almost never are) the administration of a drug step would have itself been enough to render the claims eligible.

          Everyone on the board gets a little dumber whenever you type, Billy.

          1. Prometheus is recognized and is already part of the ‘check.’

            Still waiting for someone – anyone – to square that decision with the rest of the precedents that that decision explicitly states that it is not changing.

            If you were right (and you almost never are)

            Coming from you (one of the black is white regulars), that is a mighty compliment. Thanks.

          2. The fact that the Supremes conflate 101 and 103 does not mean that it is proper to do so. It means that the SCOTUS is flawed.
            SCOTUS also gave us a second term of George WMD Bush, not to mention other travesties. That doesn’t make it right.

  12. Any one of the dozen Medicare Part D tools available online would have been a decent 102/103 reference. CVS has one, something called “eHealth” has one, AARP has one, Kaiser Permanente has one, medicare.gov has one…

    Just another lazy examination…for a really lazy examination, check out Amazon’s “photo studio” patent: U.S. 8,676,045.

    1. I note your use of the phrase “has one”.

      The present tense does not qualify as PRIOR art.

      I also note your use of the phrase “one.” One what? Shopping tool of some kind? Or shopping tool of the kind claimed? I dare say CVS doesn’t help you find cheaper meds at Walgreens.

        1. I’m aware of Flo. I’m not aware that Flo predates the filing date of the subject application. In any event, your assertion that it would have been obvious to adapt Flo to prescription drugs and to arrive at the claimed method is respectfully traversed.

          1. She does. Or rather, Progressive Insurance’s system does.

            Mere statement by you to traverse the obvious use of a system built for automobile rate comparisons to a system of medical prescription rate comparisons is not enough. Rejection maintained.

            1. You can maintain it if you want. But the burden is on the Office to present a prima facie case of obviousness. You have not met that burden. I’ll win on appeal.

          2. Really? You don’t know, sitting here on May 20th whether Flo predates an application filed Jan 21st?

            Never mind that she is a marketing campaign that post dated an embodiment which post dated a constructive invention.

            The assertion of obviousness is self-evident: adapting a technology in one field for use in another field for the same results is always obvious.

  13. I don’t recall ever posting a comment here before. However, I’ve been reading this blog for years, and so it’s possible I may have done so and simply forgotten about it.

    1. Prior art does not teach “obtaining set of prices from two different pharmacy benefit managers (PBMs) that have agreements with a pharmacy.”

      The prior art also doesn’t “teach” obtaining prices from two different pharmacy benefit managers who voted for different candidates in the last Presidential primary election. Why should that matter for the purpose of granting a patent on a method for displaying prices?

      The prior art teach one PBM providing discounted prices for the client.

      The prior art also teaches comparison shopping, and getting price information from people who engaged in a negotiation to determine the prices. Is there something special about prices for prescription drugs where these ancient facts are somehow deemed irrelevant? Of course there isn’t.

      This is yet another poster child for our broken patent system. The softie wofties insist that giving old data (like price data) a new name or changing the source of the data somehow merits patent protection. It doesn’t. Information is ineligible for patenting, and abstract descriptors of the information or other abstractions such as legal relationships between parties cannot be relied on for patentability. When these fundamental principles are ignored, the patent system quickly turns into a complete joke at the public’s expense, which is where we are at now (and where we have been for quite some time).

      1. Dennis has made it clear that he believes this claim to be invalid, and you seem to agree. My suspicion would be that you are both viewing it to be clearly invalid under 103, but are you suggesting you believe it to be invalid under 101 as well? If not, what are you relying on for discounting portions of the claim as abstract even if other portions are not abstract? Not trying to start an argument, just honestly curious.

        1. but are you suggesting you believe it to be invalid under 101 as well?

          JCD, Prof. Crouch stated that he believes the claim is also invalid under 101. See post 1.1.

          He has not yet responded as to how he thinks the claim fails under 101.

          I doubt that you will receive any type of cognitive answer from Malcolm.

        2. what are you relying on for discounting portions of the claim as abstract even if other portions are not abstract?

          The Supreme Court in Prometheus made it perfectly clear in a 9-0 decision that the mere recitation of eligible subject matter in a claim does not impart per se eligibility to the claim. So there is nothing that stands in the way of analyzing claims to determine what is abstract and what isn’t, and then evaluating whether the claim is an attempt to protect the abstractions (whether that protection is “global” or limited to a particular field).

          This is a claim to a method of displaying prices on a computer screen. Let’s just assume for the sake of argument that such a claim is eligible for patenting. In any event, we all know that a method of displaying prices on a computer screen is old and unpatentable.

          So what’s new here? Is it some new machine, structurally distinguished from an old machine? Nope. What’s new (allegedly) is the recitation of abstractions about the “kind” of price (“drug prices”) and abstractions about the “kind” of people who are providing the prices (“Pharmacy Benefit Managers”) and the abstract relationships those people have with others (“agreements”).

          From the perspective of promoting progress in the “information display arts” (trying not to laugh as I write this), allowing such abstractions to impart patentability is no different than allowing an old monitor to become patentable merely because you give the monitor a new name or because you recite some “new” information that can be displayed on the monitor (e.g., some “new” instructions for curing cancer) or because you recite the “new” name of a person or the name of a “new” place that is providing information to the monitor. You can’t claim that “new” information, or those “new” people, or those “new” relationships, or the names of those “new” places. They are ineligible for patenting. Logically, you can’t sidestep that prohibition by salting an unpatentable method with those same ineligible abstractions and limiting the unpatentable method to a specific field.

          1. “The Supreme Court in Prometheus made it perfectly clear in a 9-0 decision that the mere recitation of eligible subject matter in a claim does not impart per se eligibility to the claim.”

            Yeah, that sounds like the Supremes alright. The mere fact that the claim recites eligible subject matter does not mean the claim recited eligible subject matter.

            “When logic and proportion
            Have fallen sloppy dead
            And the white knight is talking backwards
            And the Red Queen’s “Off with her head!”
            Remember what the dormouse said

            Feed your head
            Feed your head”

            1. Les: The mere fact that the claim recites eligible subject matter does not mean the claim recited eligible subject matter.

              That’s a childish way of looking at what’s being discussed but nobody is surprised anymore. We all know that the patent txxbxggers will do and say anything if it “sounds good” in the patent luvvin’ echo chambers where they spend most of their time.

            2. Isn’t what I said, just what YOU said?

              Gee, Les, it’s all archived for everyone to read. Why don’t you compare what I said to what you said?

              Your patent txxbxggers, folks. The best and the brighest right here for everyone to see.

            3. JCD I was thinking that you might have been saying that you can disregard portions of a claim that you deem an “abstraction” in 103 analysis. I was curious as to whether that was what you were truly saying, and, if so, what support you might have for that.

              Abstractions come in many flavors. A “new” computer monitor that, as claimed, differs from an old computer monitor only by virtue of the information content displayed on the monitor is both obvious under 103 (applying the Federal Circuit’s so-called “printed matter doctrine”) and ineligible under 101 (extending the straightforward logic in Prometheus from “correlations” to “abstractions”).

              are you suggesting that you can disregard a portion of a claim that is an “abstraction” in 103 analysis?

              Are you suggesting that the Federal Circuit’s “printed matter doctrine” is just eligibility in 103 clothing? If so, welcome aboard.

              All I’m suggesting is that the patentee who claims [old stuff]+[abstraction] is free to pick its poison. The result is the same: no patent. As far as I know, the USPTO still recognizes the printed matter doctrine as viable law. They don’t have to do that, of course. They could apply 101 the next time they are faced with an old kit comprising “new instructions” and force the Federal Circuit to grow up, should the applicant seek to challenge the ruling (but why would an applicant bother?).

            4. Abstractions come in many flavors. A “new” computer monitor that, as claimed, differs from an old computer monitor only by virtue of the information content displayed on the monitor is both obvious under 103 (applying the Federal Circuit’s so-called “printed matter doctrine”) and ineligible under 101 (extending the straightforward logic in Prometheus from “correlations” to “abstractions”).

              Apparently strawmen come in many flavors too.

              Now try to integrate the exceptions to the judicial doctrine of printed matter into your position, Malcolm.

              LOL – yeah, thought so.

            5. Gee, Les, it’s all archived for everyone to read.

              Which makes Malcolm’s AOOTWMD and his long history of massive self-FAILS and KA-BLOOEY of so many irony factories so amazing.

            6. the exceptions to the judicial doctrine of printed matter

              The “exceptions” are a pile of incoherent self-serving gxrbxge, as everybody knows but people like you are very, very afraid to admit.

              But it doesn’t matter, ultimately. That charade will come to an end soon enough, with or without your hysterical screaming.

            7. pile of incoherent self-serving gxrbxge

              So declares the Red Queen / Humpty Dumpty.

              Meanwhile, back here on planet earth, they really do matter in law and in fact. Software really does work and software inventions really are patent eligible.

              But you always have your ‘policy/opinion’ table you can pound Malcolm.

              (and note that it is you that is childishly screaming, while it is me that is calmly reminding you of the reality of law and fact)

            8. hey really do matter in law and in fact.

              They don’t matter to me.

              If you have a claim whose patentability rests on one of these so-called “exceptions” you are advised not to assert that claim against me or my clients unless you want your claim and all such claims to be tossed in the trash by the Supreme Court. Why? Because that’s where we’ll end up (if you’re that silly and have the money to waste) and you will lose.

            9. They don’t matter to me.

              Yes – we have seen that the actual law and actual facts don’t matter to you – because you will merely decree them to by nonsense in your typical RQ/HD manner.

              You must enjoy that fiefdom you run up there in your little head, being able to declare any law and any fact you happen not to like as not meaning anything.

              The real world does operate differently than that Malcolm. Come join it for a spell.

            10. you will merely decree them to by nonsense

              I’ve done much more than “decree”, as you are well aware. Just be patient and I’m sure an appropriate thread for that discussion will pop up again. We’ll see who does more “decreeing” when that happens.

            11. I’ve done much more than “decree”

              Another banal point Malcolm.

              Yes, you have QQed up a storm and shat all over the place.

              Congrats.

            12. Les, Les, Les, can’t you apply Supreme Court logic, and just realize the first guy to claim a CD has an invention that is eligible under 101, but the second guy who claims that second CD with a program stored thereon, well the structure of his CD has disappeared? Really, that once solid CD with a header area and a track area, made of a particular plastic, it disintegrates into nonpatentium when the program is stored on it.

            13. LOL – nice Marsh, I would but add:

              B-b-b-b-but structure

              .

              (and neglect to add that claims need not be described ONLY in structural terms, that functional descriptions in claims is permitted under 112 (and more than just 112(f)) and that claims are to be read from the vantage point of a person having ordinary skill in the art to which the invention pertains, informed by the specification, and that for inventions pertaining to software, that very same PHOSITA fully understands that structural differences exist, based on the FACT that the written aspects of software necessarily impart structure (thus earning the copyright aspect) and that this type of structure – for this art – is the type of structure that brings patent eligiblity because of the exceptions to the judicial doctrine of printed matter that some RQ/HD types want to clench tight their eyes and ignore.

            14. You must learn to rely on MM’s so-fis-ti-kat-ed analysis proving the CD has no structure, not rely on the fact that you are looking at the structure of the CD in your hand

              (LOL).

            15. …and let’s not forget 6′s Einstein-level genius that a Britney Spears CD is perfectly exchangeable with a Microsoft Operating System CD…

            16. MM:

              “The “exceptions” are a pile of incoherent self-serving gxrbxge, as everybody knows but people like you are very, very afraid to admit.”

              Sorry, I’ve joined the conversation in the middle. Are you referring to the Judicially created exceptions to the enumerated categories of patentable subject matter recited in 35 USC 101? Because if your are, I think we have found something upon which we can agree!

              Is this the beginning of a beautiful friendship Inspector?

            17. Les,

              Give me your car keys.

              Malcolm is not referring to the three enumerated judicial exceptions to 101.

              Instead, he is playing his parlor game of parsing out a different judicial exception and mischaracterizing (in a legally material manner – quite unethically) the full recognized doctrine by purposefully omitting a known (and known because he has volunteered an admission as to his knowledge), material aspect of the doctrine – the exceptions to the printed matter doctrine.

              He claims to be a lawyer and consistently violates the ethics of a lawyer by knowingly and purposefully violating ABA Rule 8.4(c) in his pursuit of advocacy and representing under a cloud of dust what the law is.

              This has everything to do with HOW he goes about proslytizing his agenda and has nothing to do with WHAT his agenda is.

              I have stated repeatedly that I would have no problem with Malcolm and what he wants to say if he took a proper tact in saying what he wants to say.

              If he did not habitually misrepresent the law, misrepresent facts, and misrepresent what others post on the law and facts, and instead, acknowledged reality and then posted his reasons for wanting to change the law in light of actual facts, he would not receive so much flak from me.

              As it is, he pretends to be some Caulfield-like protector against “grifters,” protecting the innocent infringers running through a filed of rye, when it is he that is engaged in activity that should be shunned. Hence, the AOOTWMD rhetoric is by far the most distasteful thing that ANY poster on these boards engages in. Somehow, he thinks that his ends justify his abominable means.

              The do not.

            18. Nontrivial example:

              1. A quantum computer comprising:
              (a) a hard drive;
              (b) a processor; and
              (c) memory configured to represent information utilizing qubits.

              2. The quantum computer of claim 1, wherein the hard drive contains computer executable instructions for performing cryptanalysis.

            19. DanH:

              2. The quantum computer of claim 1, wherein the hard drive contains computer executable instructions for performing cryptanalysis.

              In this case, claim 2 is not directed to ineligible subject matter, despite it (arguably) having a limitation that recites only an abstract concept. It might be ineligible if you present it fifty years from now, when every citizen of the earth has one of those quantum computers in his/her pocket.”

              Your reference to 50 years from now makes it clear that you are confusing eligibility with patentability.

              Claim 1 recites an apparatus/machine. Therefore it is eligible to be patented. It falls within one of the categories listed in 35 USC 101.

              Whether it is new or not, is another question that is evaluated under the provisions of 35 USC 102.

              As to another of your points, there are many that would assert that :do cyptography recites an abstract idea.

              I’m not sure why. I don’t think those same people would say “stir” is an abstract idea.

            20. Les,

              It is interesting then, that on the record right now before the Supreme Court in the Alice case there are three critical things:

              1) the stipulation by both parties that the statutory category requirement of 101 has been met.

              2) the stipulation by both parties that the software as claimed does create a new machine (the holding of Alappat is not at issue before the Court).

              3) that Perry even agreed with the view that a purely “math” type process (cryptography) was indeed patent eligible.

              Given that certain facts have been stipulated to and are not before the Court as being at issue, it is fair to say RIGHT NOW that any musing by the Court on things not at issue might be taken as mere dicta.

          2. does not impart per se eligibility to the claim

            Nice strawman.

            No one EVER has said that any claim has per se eligibility.

            D’Oh ! (said in the best Homer Simpson tones)

            1. No one EVER has said that any claim has per se eligibility.

              Right, but someone asked a question. Remember the question? Here’s the question: what are you relying on for discounting portions of the claim as abstract even if other portions are not abstract.

              I answered the question. Get a life, creep.

            2. Your original statement I was curious about was that “abstractions … cannot be relied on for patentability”. It seems very obvious that abstractions can’t be relied on for patentability under 101, so I was thinking that you might have been saying that you can disregard portions of a claim that you deem an “abstraction” in 103 analysis. I was curious as to whether that was what you were truly saying, and, if so, what support you might have for that.

              I suspect I either misapprehended you, or did not make my query clear, as I do not believe Prometheus suggests you can disregard abstractions for 103 analysis. In point of fact, I think the Court in Prometheus clearly disregards the PTO’s suggested reliance on 102/103 for invalidity in concert with a broad interpretation of 101 by noting that 103 provides no basis for disregarding portions of a claim.

              Contra this, are you suggesting that you can disregard a portion of a claim that is an “abstraction” in 103 analysis? If so, I’d be curious as to how you reconcile that with the Court’s thoughts in Prometheus.

              Thanks!

            3. His response re the printed matter doctrine is actually interesting, and potentially a good point. It certainly is an example of disregarding a portion of a claim for 102/103 analysis, so kudos to him. As has been noted in this thread, this is very similar to the approach proposed in the U.S.’s amicus brief to treat laws of nature as prior art for purposes of 102/103 analysis. Notably, however, the Supreme Court declines to adopt this approach (although, admittedly, one of their stated reasons for doing so seems less relevant in the context of an abstraction).

            4. JCD,

              His response re: printed matter is not interesting, given the fact that he has volunteered an admission against interests in knowing that the controlling law of the exceptions to the judicial doctrine of printed matter come into play for software inventions.

              The exception that printed matter gains patentable weight when the printed matter has a functional relationship to the media on which it is printed is fully in play with software. It is an undeniable fact, given that software really does work and when an ‘oldbox’ is configured with software, the ‘oldbox’ really does change and obtains a new functionality from the software that the ‘oldbox’ previously did not have (the change and the fact that the ‘oldbox’ did not have – inherently or otherwise – the capability prior to the change is reflected in the wrecking of the “house” fallacy and the fact that the Morse case prevents you from claiming the first computer has all future inventions and improvements to the machine “already in there.”

              Malcolm tends to omit this material fact and pretend that the law is actually something else in his advocacy on this modern social media mechanism – even when reminded (and then he only treats these gentle reminders with aggressive ad hominem and dust-kicking).

              You astutely note that the Supreme Court jurisprudence on 101 appears to be a jumbled hot mess. Do you by chance review the oral arguments in the Alice case and note that even Justice Breyer seems to be back-peddling fiercely? DO you wonder if the Supreme Court will seek a Chamberlain-like escape from the slap across the face challenge from the CAFC who threw up their hands in the en banc Alice opinion and told the Court: “hey, we just cannot fix your mess.”…?

            5. I had not, but I went back and reviewed a summary as well as the Fed. Cir. decision. Interesting, but I don’t know that I have any inkling of an idea as to what they might do.

              I continue to think that 101 is being used to do work that 103 was designed to do. For example, during oral argument Justice Breyer offered a hypothetical regarding King tut giving away chits for gold and using an abacus to keep track of how much has been given away. I would be INCREDIBLY curious to ask Justice Breyer whether this method would have been patent eligible at the time (under our current law). It involves use of chits, gold, and an abacus. It certainly looks to me more like application of an abstract idea than an abstract idea itself.

              But this question wasn’t asked at oral argument. Instead, it was protested that this was a caricature, to which Breyer responded that it was a “caricature designed to suggest that there is an abstract idea here”. The point Breyer intends to make is that simply using a computer to implement an abstract idea doesn’t make it patentable under 101. I think, however, that subconsciously he’s relying on a different thought: that this isn’t new, and simply adding a computer doesn’t add anything new. This is textbook 103 analysis! The subconscious argument is: it’s known to keep track of solvency; it would be obvious to do it with a computer.

              This seems cleaner. It doesn’t require trying to figure out why a computer or computer readable medium suddenly becomes ineligible subject matter simply because it recites something that can be characterized as abstract.

              For example, consider claim 1:

              1. A computer comprising:
              (a) a hard drive;
              (b) a processor; and
              (c) memory.

              Is this claim patent eligible under 101? Certainly.

              Now consider dependent claim 2.

              2. The computer of claim 1, wherein the hard drive contains computer executable instructions for performing a method comprising hedging risk.

              Is claim 2 patent eligible under 101? It seems hard to see how it is not, if it depends from a claim that is patent eligible. If it is not, then that means that adding abstract subject matter to a claim can render it patent ineligible under 101. There is certainly a chance that that claim would be found ineligible under current jurisprudence, but it seems a strange result.

            6. Is claim 2 patent eligible under 101? It seems hard to see how it is not, if it depends from a claim that is patent eligible. If it is not, then that means that adding abstract subject matter to a claim can render it patent ineligible under 101. … it seems a strange result.

              You can’t present your claim 1 in good faith, though, can you? That makes the fact that claim 2 is ineligible a little less strange, if you ask me.

            7. You can’t present your claim 1 in good faith, though, can you? That makes the fact that claim 2 is ineligible a little less strange, if you ask me.

              That’s a non-sequitur DanH.

              I am sure that if you gave it a second’s worth of thought, a non-trivial example expressing the same legal point could be developed.

              Perhaps you should stop looking for the right trees in the wrong forest?

            8. I am sure that if you gave it a second’s worth of thought, a non-trivial example expressing the same legal point could be developed.

              Go for it, then. Please provide a non-trivial example expressing the same legal point.

              The triviality of the hypothetical claim 1 is exactly the point.

            9. Nontrivial example:

              1. A quantum computer comprising:
              (a) a hard drive;
              (b) a processor; and
              (c) memory configured to represent information utilizing qubits.

              2. The quantum computer of claim 1, wherein the hard drive contains computer executable instructions for performing cryptanalysis.

              (posted in the wrong place above)

            10. The triviality of the hypothetical claim 1 is exactly the point.

              DanH – it is only the point if you want to celebrate finding a right tree in a wrong forest.

              Seriously, get a grip and realize the bigger picture. I expect more from someone who gets so easily ruffled by ad hominem posts – whining like that and turning around and being a pissant pedant is no way to go through life, son.

            11. 2. The quantum computer of claim 1, wherein the hard drive contains computer executable instructions for performing cryptanalysis.

              In this case, claim 2 is not directed to ineligible subject matter, despite it (arguably) having a limitation that recites only an abstract concept. It might be ineligible if you present it fifty years from now, when every citizen of the earth has one of those quantum computers in his/her pocket.

            12. Seriously, get a grip and realize the bigger picture. I expect more from someone who gets so easily ruffled by ad hominem posts – whining like that and turning around and being a pissant pedant is no way to go through life, son.

              Is this your way of saying that you can’t provide a non-trivial example expressing the same legal point?

            13. No.

              It is a way of saying that you are hunting for the wrong thing, and then whining about when you get smacked down.

              (and btw, the gentleman that he is, JCD has already complied with your wish, but you were too busy playing the @$$-hat to bother noticing)

            14. What if it is clear that, practically speaking, cryptanalysis can only be performed with a quantum computer such that patenting cryptanalysis with a quantum computer would effectively preempt cryptanalysis? In this case, is it still patent eligible subject matter under 101?

              What you seem to be saying is that whether it effectively preempts cryptanalysis is only relevant to a 101 inquiry if the technology used to do so was previously known. On the one hand, I guess that makes sense, as if you have the right to exclude others from making a quantum computer, then I guess you have the right to exclude others from making a quantum computer for cryptanalysis.

              On the other hand, this seems to point to the fact that “preemption” isn’t really a core tenet of 101 analysis. That is, under your approach, simply because something effectively preempts any application of an abstract idea doesn’t mean that it isn’t patent eligible under 101. It may still be patent eligible if the preemption doesn’t simply involve the application of known technology.

              The problem that I have is that this looks suspiciously like a novelty inquiry.

              If 101 is a threshold inquiry, and if a claim that effectively preempts an abstract idea isn’t patent eligible under 101, then why does it become patent eligible when you combine it with something else that is patent eligible and previously unknown (e.g. a quantum computer), but not when you combine it with something else that was patent eligible but known (e.g. a computer)?

            15. What if it is clear that, practically speaking, cryptanalysis can only be performed with a quantum computer such that patenting cryptanalysis with a quantum computer would effectively preempt cryptanalysis?

              I don’t know how to answer that, JCD. It’s clearly not true that patenting cryptanalysis with a quantum computer would “effectively preempt cryptanalysis” today, whereas it might in 50 years. So I don’t think my previous answer changes.

              On the other hand, this seems to point to the fact that “preemption” isn’t really a core tenet of 101 analysis.

              I don’t think the Supreme Court has suggested that preemption is a “core tenet” of 101 analysis. What they’ve suggested is that if the claim preempts a tremendously broad range of applications of an abstract idea, when your technical contribution is essentially non-existent, then the claim is directed to ineligible subject matter.

            16. What they’ve suggested is that if the claim preempts a tremendously broad range of applications of an abstract idea, when your technical contribution is essentially non-existent, then the claim is directed to ineligible subject matter. (emphasis added)

              I think it’s the emphasized portion that I am concerned about, as I am not sure that a determination of 101 eligibility should require a determination as to what your technical contribution was. Doesn’t this require consideration of known technology (i.e. prior art)? Doesn’t this require comparing such known technology to the claimed invention and determining differences, and then determining that the differences don’t rise to a level of “innovation”? Isn’t this the type of subjective “innovation” test that Congress enacted 103 to prevent judges from going through?

            17. I am not sure that a determination of 101 eligibility should require a determination as to what your technical contribution was.

              Here’s a thought, JCD: just tell everyone what sort of determinations 101 eligibility “should require”. In your humble opinion, of course.

              Keep in mind that any kindergarten-grade magic word test (e.g., “look for a physical object”) is going to be ineffective and pointless because the 1st graders will just salt their claims with whatever verbiage you decide is sufficient to pass the test.

              Isn’t this the type of subjective “innovation” test that Congress enacted 103 to prevent judges from going through?

              If 103 was enacted to prevent a subjective “innovation test”, the drafters of 103 were complete m0 r0ns.

              Here’s the deal, JCD: judges and juries are human beings, and patent statutes are incapable of keeping up with unpredictable technological advances and lawyerly game-playing. As a result, there is always going to be “subjectivity” in the system. That’s a feature, not a bug.

            18. [blockquote]If 103 was enacted to prevent a subjective “innovation test”, the drafters of 103 were complete m0 r0ns.[/blockquote]

              Whether or not that is true, that doesn’t change the fact that the 1952 Patent Act, which was enacted by Congress, was drafted to address this issue. But don’t take my word for it, here’s Judge Rader in his concurrence in Alice:

              [blockquote]the central thrust of the 1952 Act removed ‘unmeasurable’ inquiries into ‘inventiveness’ and instead supplies the nonobviousness requirement of Section 103[/blockquote]

              I don’t understand why this claim, and other similar claims, can’t be adequately addressed by 103. If it is obvious, then it isn’t patentable. If it isn’t obvious, then why shouldn’t it be patentable?

              I just don’t understand the need to strain a judicially created exception in tension with the judicially acknowledged Congressional mandate for broad patent eligibility in order to create an alternative “limited technical contribution” (in a claim that preempts an abstract idea) invalidation standard under a judicially created exception to 101, when 103 is specifically designed for that type of analysis.

            19. Note: Reposted with correct tags.

              If 103 was enacted to prevent a subjective “innovation test”, the drafters of 103 were complete m0 r0ns.

              Whether or not that is true, that doesn’t change the fact that the 1952 Patent Act, which was enacted by Congress, was drafted to address this issue. But don’t take my word for it, here’s Judge Rader in his concurrence in Alice:

              the central thrust of the 1952 Act removed ‘unmeasurable’ inquiries into ‘inventiveness’ and instead supplies the nonobviousness requirement of Section 103

              I don’t understand why this claim, and other similar claims, can’t be adequately addressed by 103. If it is obvious, then it isn’t patentable. If it isn’t obvious, then why shouldn’t it be patentable?

              I just don’t understand the need to strain a judicially created exception in tension with the judicially acknowledged Congressional mandate for broad patent eligibility in order to create an alternative “limited technical contribution” (in a claim that preempts an abstract idea) invalidation standard under a judicially created exception to 101, when 103 is specifically designed for that type of analysis.

            20. I am not sure that a determination of 101 eligibility should require a determination as to what your technical contribution was. Doesn’t this require consideration of known technology (i.e. prior art)? Doesn’t this require comparing such known technology to the claimed invention and determining differences, and then determining that the differences don’t rise to a level of “innovation”?

              No, it doesn’t require any serious “consideration” of known technology, nor does it require any painstaking analysis of differences. It does require determining whether the recitation of “technology” in the claim is merely nominal. If so, set it aside and look at what’s left. If all you have left is an abstract concept, there’s no invention.

              Could you reach the same results through 103? Sure, but why bother?

            21. No, it doesn’t require any serious “consideration” of known technology, nor does it require any painstaking analysis of differences. It does require determining whether the recitation of “technology” in the claim is merely nominal. If so, set it aside and look at what’s left. If all you have left is an abstract concept, there’s no invention.

              Would this not at the least require construction of the claim terms to determine what “technology” is being recited? And aren’t claim terms interpreted in light of the knowledge of an ordinary artisan, such that short recitation could in fact describe highly technical structure?

              I really think what you’re wanting to do is just say: but look at this claim, it’s SO CLEAR that there is nothing innovative there. To which I would say: that’s a 103 issue! The 101 exception you are wanting to use is that the claim is directed to something abstract.

              However, if you are saying that a claim to a process using a quantum computer would be directed to something abstract when quantum computers are widely known, but would not be directed to something abstract if quantum computers are unknown, then your standard for whether a claim is improperly directed to something abstract is tied together with an inquiry as to the amount of innovation of non-abstract portions of the claim. How is this any different than ignoring portions of a claim under a judicial exception for 101 when evaluating patentability under 103, which the Supreme court indicated it was not a fan of in Prometheus.

              That is, starting with a claim and removing recitation believed to be “nominal” (or non-innovative), and then considering whether the remaining portions of the claim are abstract amounts to a determination of whether the recitation believed to be innovative is abstract.

              Even setting aside the fact that there are no established standards for determining whether technological recitation is “nominal” or recitation is non-innovative (do you just use 103 jurisprudence?), this is similar to starting with a claim and removing abstract portions of the claim and then determining whether the remaining portions of the claim are novel and nonobvious under 103. The Supreme Court frowned on an approach to 103 which disregarded laws of nature during 103 analysis, so I am not sure why it would be any more inclined to favor this approach, which appears to effectively operate to similarly disregard portions of a claim which fall under a judicial exception under 101 and examine the remainder of the claim to determine whether it is “innovative”.

            22. Whether or not that is true, that doesn’t change the fact that the 1952 Patent Act, which was enacted by Congress, was drafted to address this issue.

              If Congress wants to stop me from drinking beer and they pass a law that says “People can’t drive on freeways” then I really could care less what Congress intended. Nobody should care because Congress was an id i0t.

              I don’t understand why this claim, and other similar claims, can’t be adequately addressed by 103.

              Maybe you’re not smart enough. [shrugs] What am I supposed to do to help you?

              Tell everyone how you propose to deal with a non-obvious mental process under 103? Or a claim that recites a non-obvious set of instructions?

              On top of that problem, we have all the judicially created gxrbge that allows prima facie obvious crp to be patented in spite of its prima facie obviousness because of post-filing “evidence” like licensing that are demonstrably unrelated to the obviousness question. Somehow you don’t have a problem with that, I’m guessing …

              I just don’t understand the need to strain a judicially created exception in tension with the judicially acknowledged Congressional mandate for broad patent eligibility

              There’s nothing “narrow” about an eligibility statute that prevents people from protecting abstractions and mental processes and allows you to patent pretty much anything else that you can describe in objective physical/structural terms. Just because the stuff you’d like to patent isn’t eligible doesn’t matter. Because it’s not about you.

              And aren’t claim terms interpreted in light of the knowledge of an ordinary artisan, such that short recitation could in fact describe highly technical structure?

              What in the world does this have to do with the price of a drug?

              there are no established standards for determining whether technological recitation is “nominal”

              A computer is “nominal.” Satisfied?

              or recitation is non-innovative (do you just use 103 jurisprudence?)

              Sure. Why not?

              this is similar to starting with a claim and removing abstract portions of the claim and then determining whether the remaining portions of the claim are novel and nonobvious under 103.

              Yes, it is. Do you have problem with that? Why?

              The Supreme Court frowned on an approach to 103 which disregarded laws of nature during 103 analysis

              We’re not talking about 103. We’re talking about 101.

              I am not sure why it would be any more inclined to favor this approach

              That bridge is already crossed. Read Prometheus v. Mayo again if you are confused. It doesn’t matter if the ineligible subject matter is a mental step of thinking about a law of nature or any other abstraction (Mayo and Prometheus, in fact, came to different conclusions about what the blood levels “meant” to the data-gatherer — it was irrelevant to the issue). What matters is whether the claim depends on the ineligible subject matter for patentability.

          3. Les, do you know where the current problem came from? The 1952 Act in its creation of §103.

            The new §103 said that one had to compare the difference between the claimed subject matter and the prior art and on that basis determine whether the claim was obvious to one of ordinary skill in the art. But what about ineligible subject matter? Can it be the point of departure from the prior art such that it might be considered in the analysis?

            The statute’s enactment stood close on the heels of Funk Brothers v. Kalo (1948) that had held that ineligible subject matter had to be ignored when determining “invention, ” which is now encoded as §103. But there is no nothing in §103 as enacted that statutory authorizes the trier of fact, the PTO or the courts, to ignore ineligible subject matter.

            That is why the Supreme Court in Prometheus v. Mayo said that one cannot resolve this issue of ineligible subject matter in §102/103, but had to resort instead to §101.

            Were the Supreme Court to provide a construction of §103 consistent with Funk Brothers, then we could ignore ineligible subject matter in determining obviousness, except to the extent that it was applied to produce a substantial new result. But until then, simply finding eligible subject matter in the claim is not enough. One has instead determine whether there is invention in subject matter other than the ineligible subject matter, or whether the ineligible subject matter is applied to produce a substantial new result.

            1. You have to consider the claims as a whole.

              It is improper to dissect claim language as you appear to be advocating.

              You can’t pull out every third word and then examine the remaining words.

              If a claim recites a method, then it is eligible.

            2. It is improper to dissect claim language as you appear to be advocating.

              No, Les. That’s false.

              There was an important Supreme Court case that dealt with the issue. It was a 9-0 decision. You know the case. Stop pretending it never happened. Pretending it didn’t happen makes you look like an idi0t or a lixr, or both.

            3. Ned,

              It is interesting how you are forced to intertwine 101 and 103.

              It appears that some of what I have been beating into your head is starting to get through.

            4. Show the lie, Malcolm.

              You will not because you cannot.

              The Office takeaway from Prometheus was centered on integration – a key facet missing from your pet little theory.

              Too bad, so sad.

            5. The Office takeaway from Prometheus was centered on integration

              That’s nice. There are no ways to “integrate” a mental step of thinking about a “new” fact with an old data gathering step and nothing in the PTO guidelines suggests otherwise. Similarly, you’ve never been able to provide a single example of specific claim in the form [oldstep]+[newthought] that is eligible. Until you can do that, you are quite simply full of it.

              But by all means please continue with your habitual lying and dissembling about how the PTO guidelines are inconsistent with anything I’ve said about Prometheus or its underlying logic.

            6. LOL- plain wrong – there are plenty of ways to integrate mental steps.

              Of course, your mantra of a little pet theory is something that you cling so tightly to and only share with your s_ckpuppets at PatentDocs…

            7. habitual lying and dissembling about how the PTO guidelines are inconsistent with anything I’ve said

              No lying or dissembling required.

              You are dead wrong on what you have said, and I have shown the holes in your little pet theory six ways to Sunday.

              Pay attention.

            8. Claim as a whole? Now where does this quote come from?

              “Let us first return to the fundamental disagreement between the parties. Cook Chemical, as we noted at the outset, urges that the invention must be viewed as the overall combination, or—putting it in the language of the statute—that we must consider the subject matter sought to be patented taken as a whole. With this position, taken in the abstract, there is, of course, no quibble. But the history of the prosecution of the Scoggin application in the Patent Office reveals a substantial divergence in respondent’s present position.”

              There follows a summary of the prosecution history.

              “Here, the patentee obtained his patent only by accepting the limitations imposed by the Examiner. The claims were carefully drafted to reflect these limitations and Cook Chemical is not now free to assert a broader view of Scoggin’s invention. The subject matter as a whole reduces, then, to the distinguishing features clearly incorporated into the claims. We now turn to those features.”

          4. Any invention can be invalidated under the Laurie test. Identify the abstract concept and then chant the rest of the elements and proclaim “doesn’t add any structure.”

            1. proclaim ‘doesn’t add any structure.’

              It is more insidious than that NWPA.

              Merely adding structure is not the decision point, but rather, it is the (potentially void for vagueness) judicial pronouncement of “add enough structure.”

              This mirrors the oft stated “I know p0rn0 when I see it” line.

              The Supreme Court simply needs to do a better job here, as their actions appear to at best perpetuate a crises, and at worst instigate a crises of constitutional proportions.

              All because of their addictions to noses of wax and the ability that 101 provides for inserting policy/philosophy into the allocated authority belonging to Congress.

        3. I believe that this claim is obvious.

          I also believe that there is an easy 101 argument here under Mayo, Bilski, and the soon to appear CLS Bank (speculating).

          The basics of the 101 eligibility argument are that the general idea of comparing prices provided by two separate benefit managers is an abstract idea and the addition of a “user interface” and “computer processor” are so entirely routine that they do nothing to transform the abstract idea into eligible subject matter, but instead continue to preempt all practical uses of the invention except for doing the work with pencil and paper.

            1. Your obnoxious comment illustrates a good a point. What about the elements in the claim? Examination should focus on each and every element. This broad brush it seems like an abstraction to me is not applying law but making a value judgment without facts.

            1. Sure sounds a lot like you’re conflating 101 and 103 here

              It sounds like a straightforward application of the Supreme Court’s reasoning in Mayo and Bilski to these facts.

              Whether you think it sounds like “conflation” or “dribblyganegus” is irrelevant.

          1. are so entirely routine that they do nothing to transform the abstract idea into eligible subject matter

            Invention “re-invented” and the last line of 103 is made a nullity.

            If the Court wanted to explicitly rewrite patent law, they should have let Stevens have his way in Bilski.

            We could always use a Supreme Court induced constitutional crisis to take our minds off of an upcoming fiscal battle. Who really cares that the constitution did not give the judiciary the authority to write patent law anyway? Bah, surely not a patent law professor, right?

            ;-)

            1. the last line of 103 is made a nullity.

              The “claims as a whole” means only that a court or the PTO can’t simply declare a claim non-obvious because it contains only old elements. In rare cases, there might have been teaching away or some potent unexpected result that warrants a finding that the combination was non-obvious.

              Only really ignorant or really desperate people believe (or pretend to believe) that the last line of 103 turns 103 into an equivalent of 102. Which are you?

            2. Who really cares that the constitution did not give the judiciary the authority to write patent law anyway?

              Nobody except for some really desperate extremists, apparently.

            3. can’t simply declare a claim non-obvious because it contains only old elements

              LOL – way wrong.

              that the last line of 103 turns 103 into an equivalent of 102.

              What a bizarre strawman. I know of no one that has ever even come close to postulating that.

              Nobody except for some really desperate extremists, apparently.

              LOL – maybe you need to read again the amicus briefs in the Alice case where many (including several um, rather sensitive professors) actively encourage the Court to write patent law – you do know that reading a map is not the same thing as writing a map, right?

            4. you do know that reading a map is not the same thing as writing a map, right?

              I do know that you are fond of repeating pithy aphorisms long after anyone has continued to pay attention to them.

              several um, rather sensitive professors) actively encourage the Court to write patent law

              So what?

          2. Dennis, the SC in Bilski also relied on “fundamental economic practice” and “long prevalent.” From a 101 point of view (the statute), this neatly linked the hedging method claimed in Bilski to “new” in the statute, the statutory basis that Flook identified as the basis for its holding regarding “math.” Newly discovered, but not new — as fundamental trues always existed, like laws of nature and products of nature.

            I am not sure one can call any method “abstract” unless it is notoriously old and fundamental. If someone were to invent an entirely new method, not mathematical, not fundamental at all, just new, and limited it to computers, it should fall within 101 unless there is a problem with useful Arts.

            Also, take a look at the Rubber-Tip case — it is the source of Benson’s “idea.” Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 22 L. Ed. 410 (1874). There, the claim was to a new and useful rubber head for lead-pencils.

            There was no structure claimed at all, just rubber heads for the application. Any rubber-head would do. It was a claim for the principle in the abstract.

            But the court noted the faculty that rubber might be made to attach to a solid substance by forming a cavity in the rubber and fitting the solid. The principle was WELL KNOWN. Beyond this well known principle, the “inventor” provided nothing at all.

            The principle was known and the Supreme Court held that the device to give it effect was not “new.”

            All this goes to show that in every case, the Supreme Court has held in connection with the so-called exception that lack of “newness” is the sine qua non of abstract idea, or a product or law of nature.

            Thus, one cannot simply declare any method abstract. It must be know and fundamental, and I take this to mean to be notoriously well known.

            1. I am not sure one can call any method “abstract” unless it is notoriously old and fundamental.

              All mental processes are abstract. All mental processes are methods. Therefore, you are wrong.

            2. as fundamental trues always existed, like laws of nature and products of nature.

              Ned, serious question: why do you persist in your chosen path of ignorance and maintain an illusion that the universe is static and never changing?

            3. All mental processes are abstract. All mental processes are methods.

              LOL – thank you for diving headlong into the “all mental” canard as that gives me the opportunity to use one of my favorite words: anthropomorphication.

              Machines really do not think (in the legal patent sense of why the mental steps doctrine was created – to head off your usual banal short script reply)

            4. for the principle in the abstract.

              and once again Ned you trot out the basis why the Congress took umbrage with the Court and changed the law in 1952 to remove the Court’s ability to set the meaning of the word invention.

              Your own hero Frederico wrote about how the phrase “principle in the abstract” had become so bent and distorted into a meaningless jumble by the judiciary.

              And yet, you refuse to learn from this history.

              (sigh)

            5. Machines really do not think

              That’s nice. The word “machines” does not appear in Ned’s comment. The phrase “any method”, however, does appear in Ned’s comment.

              Try to keep up.

            6. MM, the problem about mental processes is that they are not really processes.

              Take a new mental process, new, not notoriously old, and then have it be performed by a machine, then the process becomes physical. It is no longer mental.

              Can one say an encryption algorithm performed by a computer is mental? Not really.

            7. What this appears to settle on is the fear of certain people of the category of “process” when the full import of that word is recognized.

              This is nothing more than the old “Justice Story/England did not recognize fully what a method is” bias.

              The bias would seek to take “method” or process out of its place as an equal category of patent eligibility and only treat it as a lesser category of getting to one of the hard goods categories.

              This bias is even worse than MoT.

            8. Take a new mental process, new, not notoriously old, and then have it be performed by a machine, then the process becomes physical. It is no longer mental.

              For patent claim purposes, it’s not physical until the novel structure of this machine is recited in the claim. Until then it’s little more than a dream about a machine that thinks faster than you do.

              Everyone can have those dreams. In fact, everybody does. It’s just that most people arent desperate grfters trying to get rich off the Internet by exploiting the broken system. Most people can’t afford to do that. Most people aren’t lawyers.

            9. Malcolm asks me to “keep up” on my comment of anthropomorphication and then turns around and goofs with:

              machine that thinks faster

              /face palm

          3. but instead continue to preempt all practical uses of the invention

            That’s what claims and patents do: that is the exclusive nature of the beast. The statement applies to every single solitary patent – ever.

            Did you mean to say something else?

          4. Dennis -

            Please consider this similar assertion:

            The basics of the 101 eligibility argument are that the general idea of flying is an abstract idea and the addition of a “user interface” and “wood, burlap, rope and pulleys” to the problem of moving objects are so entirely routine that they do nothing to transform the abstract idea into eligible subject matter, but instead continue to preempt all practical uses of the abstract idea “flight” except for when it is practiced by birds.

      2. The prior art also doesn’t “teach” obtaining prices from two different pharmacy benefit managers who voted for different candidates in the last Presidential primary election. Why should that matter for the purpose of granting a patent on a method for displaying prices?

        Strawman extraordinaire

  14. The ADS in the present application has an unchecked checkbox in the AIA transition statement. This statement states that the box must be checked in order for the application to be examined under the first-inventor-to-file provisions of the AIA. In other words, the failure to check the box is effectively a statement that the claim is fully supported in the provisional application.

    It just seems to me that this is backwards, and that one should be required to claim that the claims are fully supported in the prior application rather than the other way around. Wherever constructed this portion of the ADS did this did not have their head screwed on straight.

    1. Ned,

      Again, you seem to want to target the attorney and yet ignore a more glaring target.

      Each and every listed inventor signed an oath stating that the inventor fully believed that they were in fact an original joint inventor of the claimed invention in the application.

      Feel free to pursue fraud against the inventors.

      1. The inventors cannot have intentionally made any misstatement regarding the AIA. As a result, no fraud on the PTO.

        However, attorneys making false representations of fact should be disciplined. If the AIA-statement was false in fact, the attorney submitting the application should be investigated and perhaps warned.

        Do you agree or disagree?

            1. Further, the distinction and possible traps between pre-AIA and AIA examination is fully explained to the clients.

              Please tell me that you too explain these things to your clients.

        1. So you’re presuming intent to defraud based on failing to check a box that ultimately means nothing to the prosecution of this case?

          1. bja,

            As paul indicates in his post, the box being checked or not is most definitely not something that “ultimately means nothing to the prosecution.”

            1. There is no intent to deceive. The prosecution is the same under either standard here. None of the 101, 102, or 103 arguments change because the art is the same. So no intent plus same prosecution means that it ultimately means nothing.

            2. bja – you seem to be discussing “prosecution” as something other than prosecution.

              See paul’s comment on this thread highlighting differences that apply.

              The change is related to the changes in 102 and 103 that the AIA brought. These are real changes. The prosecution is really different and thus you are really wrong.

            3. (sigh)

              bja, there does not have to be an “exactly here” example to show the difference.

              Again – read paul’s post – those are real changes.

        2. Ned –

          I believe your point is moot.

          I have given the provisional a quick read through. I have treated the allowed claims similarly. None of the claims leap out at me as not being supported by the provisional. Most of them appear to me to be supported by the figures alone. One might need to lean on what one of ordinary skill in the art would have found implied in the provisional for a couple of them…. but there are none that I see that are blatantly unsupported.

          1. Furthermore, MM and Dennis find the claims to be anticipated and obvious…. If that’s the case or even arguably so, I respectfully submit that one of ordinary skill would be justified in finding that the “inventors” had possession as allegedly, everyone had the claimed invention.

            1. Ned and Les,

              The good professor disagrees with you:

              The problem is that the provisional application is actually quite sparse and – at least to my eye – there are a number of claims that were not described by that document.

              Not sure if there was a specific claim in mind…

      1. Maybe it is one of those “gut” reactions or “I know obviousness when I see it” types of analysis, like MM also frequently gives

      2. Some claims you can look at and be very confident that killer prior art is out there and easy to find. You don’t need present knowledge of citations to see that this claims does nothing but accomplish on a computer what consumers of all products have been doing probably since people started selling things. If you have every called Target to check their price on a drug, then called CVS to check their price on a drug, you have performed most the method. If you kept notes, you created a display and the information identifying the drug. The claim merely puts this activity on a computer. I think Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) leads to invalidity once someone garners proof that people have done comparison shopping for drugs before the geniuses at GoodRX came up with that idea.

        But this case is a good example of why patent attorneys should not exercise common sense when advising clients as to whether or not an “invention” is patentable: The only opinion that counts is the examiner’s, and you don’t know until you file.

        1. But this case is a good example of why patent attorneys should not exercise common sense when advising clients as to whether or not an “invention” is patentable: The only opinion that counts is the examiner’s, and you don’t know until you file.

          Completely the wrong takeaway (and I really hope you meant the opposite).

          1. Completely the wrong takeaway

            Tell everyone what the “right” takeaway is, anon. Better yet, tell everyone what you would have advised the client who came to you with the above claim and said “I want to patent this.”

            1. First point: the right takeaway is that a patent is a legal document and does not have to solely satisfy an examiner.

              Patents need to be prepared for several different audiences, which while one audience may be the examiner, that audience is far from being the most critical one.

              Second point: I would have advised the client to engage in a proper vetting of the invention, including as rigorous and detailed prior art search and analysis as the inventor could afford, and using the materials discovered to write an application and claim set with a spectrum of claims from wide to narrow with suitable fallback positions.

              Thanks for asking.

              Feel free to contribute likewise anytime (and please, feel free to do so without being hounded to give answers as is typically the case).

            2. I would have advised the client to engage in a proper vetting of the invention, including as rigorous and detailed prior art search and analysis as the inventor could afford, and using the materials discovered to write an application and claim set with a spectrum of claims from wide to narrow with suitable fallback positions.

              I’m not asking for a general analysis of how you advise your clients (all of which are imaginary, of course).

              I’m asking you specifically, with respect to this specific claim, what would you have advised the client? Imagine that the client has a limited budget and wants a strong, valid patent. Do you advise him/her to move forward with this claim or do you suggest some amendments?

              You seem to be afraid of answering the question directly. Golly, I wonder why.

          2. Sarcasm is no fun if it goes totally unappreciated. Thanks for appreciating it.
            But you can imagine a better invention where it might make more sense to file in the face of big uncertainty. Only in a case like this, where the claim is blatantly obvious, would I tell a client that my opinion is dispositive and we shouldn’t even bother to ask the PTO. And I would be wrong!
            Cases like this make it harder to tell a client that they are wasting their time: If the PTO will make a mistake for KMOB, why can’t they make a mistake for me?

            1. You are welcome DC.

              But I would tell the client that merely getting one patent rubber stamped “Approved” is not the best legal position to have.

              (See my “fraidy-cat”reply to Malcolm at 11.1.2.1.1.1.)

        2. About a decade ago, prepared and filed an application and traveled to PTO for personal interview with examiner — examiner and examiner’s boss said that there was nothing patentable was disclosed in the application — that is, no claims would ever be allowed. Granted it took two RCE’s because examiner kept finding and citing new art, but eventually a patent issued with a good set of commercially valuable claims.

          1. Congrats.

            You are not alone.

            Anyone with any sense can take a look at the historical data, understand that the Office attempted to Reject itself out of a patent application backlog (coupled with several illegal power-grabbing rules packages) and ended up pretty much only inflating the various queues of backlogs in the process.

    1. How about a little deference?

      Here on planet earth, the PTO grants invalid patents on a regular basis. It’s not that big of a deal.

      Also, this is a blog. We’re not in court. There’s nothing to “defer” to unless you were born yesterday and are completely ignorant of computers, price-comparisons and (lol) agreements.

            1. Marty,

              I must say that your drinking game is an improvement over your ill-thought out rants. I trust that you are learning what the law really is from your decisions not to post ludicrous legal views.

              Now if only Malcolm could learn as you seem to have learned…

        1. this is a blog. We’re not in court.”

          LOL Please clarify, Malcolm.

          Try to believe it, folks. The bl0gtr0ll needs clarification of whether he’s in court, or reading a blog.

          1. Stop mischaracterizing the question, Malcolm – I am asking you to clarify a rather straightforward concept.

            Try again, this time without the spin.

        1. FYI, “presumption” of validity applies.

          Fyi, you can presume whatever you want. Doesn’t change the fact that the patent is unenforceable junk.

          Anybody want a comparison of two prescription drug prices to be displayed on their computer? Here you go:

          link to michigandrugprices.com

          Also please ask me if I care whether somebody “agreed” with someone else about those displayed prices. I don’t. And neither should you. And neither should anybody else.

          GoodRX and their attorneys can jump in the lake and feed off the skummy bottom all day long. They seem very comfortable there.

  15. The thought that came to my mind is that early issue of this particular claim was a deliberate choice within the USPTO, to precipitate a timely debate on the proper function of the USPTO, having regard to the Presumption of Validity, to allow examined claims or to allow rigorously examined claims.

    For years I have endured, in blogs like this, the refrain that the patent system is there to promote the progress of entrepreneurs and start-ups, who can’t start up until they convince investors and that said investors are not convinceable in the absence of “duly issued” patents. I say endured because I have also received tuition from an eminent venture capitalist, that patents in chem/bio are essential but those in business method innovation are no more than a “comfort blanket” that ignorant investment advisers mindlessly crave.

    OK, well then let’s have the USPTO “do its job” and its public duty to promote the progress, by having it issue such claims toute suite, quick sharp and in particular without any further ado.

    Or, having regard to the Presumption of Validity, shall we have the PTO examine properly, and give it the resources to do that job properly? Debate please.

    1. having regard to the Presumption of Validity, shall we have the PTO examine properly, and give it the resources to do that job properly?

      And also make it very cheap, easy and risk-free for any member of the public to blow the whistle when errors occur so that the PTO can do its job correctly the second time around. Yes, this has the effect of “weakening” patents generally. No, that’s not a problem given that the patent system is completely broken right now, thanks in large part to “computer-implementer” applicants who file junk like this on a massive scale.

      1. so that the PTO can do its job correctly the second time around.

        Do the Fn job right the first time around.

        And yes, it is a problem when you don’t and your ‘fix’ tracks the agenda of Large Corp and their desire for weakened patents.

        Come man, tell me again (or still for the first time), who coined the pejorative “Troll” and why did they do so? Hint: it was not for any such notion of whistle-blowing and helping the Office do the right job. It was the KA-BLOOEY ! aspect of ‘grifting’ that you seem to want to disdain.

        Open your eyes: the ‘medicine’ you want to add to the cups of kool-aid leaves a bitter almond aftertaste.

    2. The thought that came to my mind

      Um sure, seeing as the concept has not been broached or offered in any regards, it is perfectly clear why you glom onto one of your pet peeves.

      /eye roll

    3. Max, the problem I see is that the mode of analysis of the PTO continues in the “Rich-Rader” mode, hunting for eligible subject matter in a claim, and then declaring the claim eligible. If there was any doubt that this is a discredited mode of analysis, that was laid to rest in Prometheus v. Mayo.

      Bilski and Prometheus both clearly stood for the proposition that if the novel subject matter in the claim is either notoriously old, or a product of nature, law of nature, or a mathematical algorithm, that more has be added to claim than the routine, assuming that the routine is eligible.

      The PTO should stop issuing these patents, but they continue to do so. After reviewing the recent 101 guidelines, it is clear that the PTO simply cannot distance itself from the discredited approach of the Federal Circuit.

      We can only hope that the Supreme Court in Alice provide some clarity.

      1. Max, the problem I see is that the mode of analysis of the PTO continues in the “Rich-Rader” mode

        LOL – the little circle of favorite memes unconnected to reality continues.

        C’est La Vie.

    4. Max

      Generally, I agree with your point.

      However, 44 days is a long time, if each an every one of them, or even if 10 of them were devoted to searching and reviewing the prior art and reaching a conclusion regarding novelty and obviousness.

      I have noticed that the EPO routinely sits on applications for 5 or six years before issuing a first office action, or if a first action is issued “promptly”, before responding to the applicants reply to the first “communication” or “search opinion”. I don’t think that delay goes toward improving the quality of any patents that might issue.

      1. Yes indeed Les, many patent applications are pending at the EPO. But many applicants like it that way. The EPO can be said to be simply giving its customers what they want, that is to say, delivering high “Quality”.

        Why is slowness to issue what customers want in Europe? I have explained before and can explain again, if it is needed. Mostly intimidation of competitors, but flexibility and cost-saving too.

        What though of that minority of applicants that does want early grant. The EPO serves them too, with its PACE program of expedited examination. No fee required, to get on it. No reason need be given, to get on it. It is free and it works. Fact is though, hardly anybody asks for PACE. Most don’t want it.

        Ah you say, but never mind the community of applicants. It is the public that needs early grant, for reasons of legal certainty, when trying to establish what patents their start up will infringe. But again you would be wrong. The only safeguard you need, to protect such legal certainty, is strict imposition of the 1973 EPC’s Article 123 (which forbids addition of subject matter after filing and widening of scope after issue).

        1. Thanks Max –

          My only comment would be that I’m not sure the EPC’s Article 123 (which forbids addition of subject matter after filing and widening of scope after issue) is sufficient. As a potential competitor or infringer, I need to know if the patent will issue or be rejected. I can’t invest in a new plant if manufacturing the target device will infringe a yet to be issued patent.

          1. Les the only claim to fear is one that BOTH covers what you want to do AND is not invalid. The point about Art 123 EPC is that thanks to it your attorney, given the WO publication and what you want to do, can tell you whether Applicant can get to issue in Europe with a claim that will cover what you want to do. The WO emerges 18 months after the earliest priority date. Roll up, roll up, get your European clearance opinion then, 18 months after the US pro was filed, all thanks to Art 123 EPC.

            And what if it looks as if he can get a claim to issue in Europe, that does cover what you want to do? Well then you need better prior art don’t you. Pay for more searches or pay for a design around. or both.

            What an EPO Examiner thinks is not decisive. Nobody after issue gives that any deference to that. We need to know what the relevant supreme court would hold, if the infringement and validity action were to get that far. Both to be decided there on a preponderance basis. Choose a good experienced attorney. They can tell you what supreme courts in Europe would hold. And they can do it as soon as they have the WO and the search reports on which you choose to rely.

            How about that?

            1. I’m sure what you said is correct. Nevertheless, as a competitor, I would much rather see a final rejection and abandonment. A clearance opinion doesn’t do me much good if the patent nevertheless issues. My margins are small. If there is litigation, I’m wiped out and my family ends up on the dole.

          2. Les,

            although I realize it’s not an ideal answer, generally the file wrapper of a European application gives good indications of where the file is going, on the basis of the cited prior art and of the attorney’s arguments. Another option could be to send a third-party observation if you think the examiner missed a relvant document or misunderstood a key piece of prior art; this can be done for free and even anonymously, and examiners tend to take such observations seriously. Unfortunately some delays are built in the procedure so even if the EPO were less understaffed/more effcient the problem would never go away completely…

  16. Anytime you see this kind of garbage recited in an issued computer-implemented claim, there’s an increased likelihood that someone made a big mistake:

    the first set of prices comprising at least one price for the first drug and each price in the first set of prices being determined by an agreement between the first PBM and a pharmacy;

    What’s the structure of “determined by an agreement”? What difference does it make for this computer-implemented “technology” (or the obviousness of that technology) how the displayed prices were determined?

    Given that displaying prices on a computer screen is older than the hills (something everyone knows unless they were born yesterday), the only possible hook for patentability seems to be the ineligible “method” by which the prices were determined (“by agreement”). This claim is a bad joke.

    providing a user interface using a computer processor; receiving from the user interface….displaying in the user interface

    As if any of junk is relevant to the alleged “invention” here. When will the softie wofties grow up?

    The best part: listening to the folks who defend these claims whine and whine and whine that attempts to make such claims easier to tank are “unconstitutional.”

    1. I’d love to know what the softie wofties and biz whizzers think of the following claims (legally indistinguishable from the junk claim we’re discussing here):

      1. A method of determining prices, wherein the prices comprise prices of an organic apple and fingerprint scanning hardware, wherein the prices are determined by agreement between a guy whose name begins with B and a guy who owns or previously owned or leased a black car.

      Totally novel! Can I haz patent now?

      2. A method of displaying information about a patent attorney comprising

      providing a user interface using a computer processor;

      receiving from the user interface information identifying a patent attorney;

      obtaining a first set of descriptors of said patent attorney, wherein said descriptors are derived from information obtained from comments on a blog left by said patent attorney, wherein if said comments relate to this patent claim and wherein if said patent attorney failed to appreciate why this claim was invalid, said descriptors include an indication that said patent attorney is clueless;

      displaying in the user interface at least the portion of the descriptors indicating that said patent attorney is clueless.

      Can I haz patent now?

    2. The best part: listening to the folks who defend these claims whine and whine and whine that attempts to make such claims easier to tank are “unconstitutional.”

      Un parseable – I have seen no one defend these claims. No one is whining, and it is entirely unclear what you mean by “attempts to make such claims easier to tank are ‘unconstitutional’.

      Try again using that self-adulatory English as a First Language skill.

      1. I have seen no one defend these claims.

        Oh, so you agree that the claims are invalid. Thanks for admitting that. Maybe you’re growing up.

    3. “What’s the structure of “determined by an agreement”? What difference does it make for this computer-implemented “technology” (or the obviousness of that technology) how the displayed prices were determined? ”

      There has to be structure. There doesn’t have to be structure for any four words you select out of context.

      The difference how the displayed prices were determined includes the particulars of what is being claimed and whether or not the prior art includes those particulars.

    4. “Given that displaying prices on a computer screen is older than the hills (something everyone knows unless they were born yesterday), the only possible hook for patentability seems to be the ineligible “method” by which the prices were determined (“by agreement”). This claim is a bad joke.”

      You say displaying prices is older than the hills. Yet I say it is currently next to impossible to comparison shop for prescription drug prices. What is being claimed here is particular to prescription drugs and would go a long way to reducing the currently outrageous costs of health care.

      Why shouldn’t a method for helping consumers shop for a source of prescription medicine be patentable? You say its old, or obvious. I say, give me a URL please!

      1. You say displaying prices is older than the hills. Yet I say it is currently next to impossible to comparison shop for prescription drug prices.

        Your ignorance is not relevant to the analysis. Other people know how to compare prescription drug prices and have known how to do that for decades. Try a Google search “prescription drugs cheaper in canada 2000″

        Man, some people just race to the bottom when it comes to defending gxrbxge patents. Why?

        1. It is illegal/problematic to import drugs from Canada. For one thing, it violates U.S. Patents for those drugs.

          If I was not clear, forgive me. It is extremal difficult to comparison shop for prescription drugs within the U.S. The subject patented method would make it easier.

          1. It is extremal difficult to comparison shop for prescription drugs within the U.S.

            But easy to do so between countries? Fascinating.

            So what exactly is so “difficult” about calling up Drugstore A and Drugstore B and asking them how much they charge for a given prescription drug? Does this all go back to that time in grade school when you were dared to lick the tether ball pole in the middle of winter?

            1. Well, “IF” one is on a multitude of medications, the druggist isn’t going to be happy about having to look up all the prices for your particular doses and factor in whether the purchase is for a 30 or 90 day supply. Especially if he is receiving 100 such calls a day. From the callers perspective, here in the big city, there are not just 2 pharmacies to call. There are many.

              All of that is part of what makes it so difficult.

  17. Dennis

    Other than what might be a problem with antecedence with the repeated use of the phrase “a pharmacy”, which probably should have been a first pharmacy and a second pharmacy, what do you see that leads you to your conclusion of “probably invalid”?

  18. “very likely invalid”

    This represents everything that is currently wrong with patent enforcement, licensing, and valuation.

    The comment, not the patent itself.

    1. “very likely invalid”

      This represents everything that is currently wrong with patent enforcement, licensing, and valuation.

      The comment, not the patent itself.

      I assume you’re referring to the fact that Dennis used the words “very likely invalid” instead of “complete junk”.

  19. I don’t think the time-to-issuance was particularly abnormal in this case. For any Track 1 with a first action allowance, it’s going to be very short, with most of the delays resulting from pre-examination processes. And in this particular situation, the examiner actually waited until the clock started ticking on this case before starting to work on it, so it could have gone out two weeks earlier.

    I obviously can’t comment on the validity of the issued claims. People can take a look at the examiner’s search history and reach their own conclusions as to whether the examiner did a good job or not.

        1. That may be – but you need to deal with a couple of other policies and not look at what you feel would be nice in a vacuum.

    1. APoTU, Examiner did not apply Bilski. Price comparison is notoriously old. That prices are set by contract is old, and at times, illegal under the antitrust laws. The alleged novel subject matter is notoriously old. The computer elements are routine.

      What are the PTO’s guidelines on Bilski? See if a computer is recited then turn to the prior art? Really? After Bilski? After Prometheus?

        1. after Diehr and reading claims as a whole…

          You seem to have forgotten Prometheus wherein the Supreme Court punched a gigantic 9-0 hole in the Diehrbot universe. So much for “Mr. Ethics” and his “intellectual honesty.”

          But we all knew this already.

          1. LOL – Have not forgotten about Prometheus at all – nor its statements as to Diehr being the case most on point and that Prometheus was not intended to change any precedents, AND the fact that no one – not even (or especially) you have ever succeeded in squaring Prometheus with those very same precedents.

            You may want to review Breyer’s pitiful yammering in the Alice oral arguments in which he all but explicitly states that he Fd up and overreached in Prometheus.

            And THAT is a fully ethical and intellectually honest response to your bleating.

            1. Your suggestion is moot, given the evidence of your “ability” to read.

              Plus, let me remind you of the Prof. Crouch standard of writing here at Patently-O:

              Thanks – Although if you read this blog regularly, you’ll know I often avoid the normal rules of grammar, spelling, and punctuation.

              See link to patentlyo.com

            2. You quite miss the point of Professor’s quote Malcolm.

              Just as you quite miss the point that once again you kick up dust and do not reply to the substantive point that I have presented.

              Try again – 6.2.1.1.1 Read it. Try to say something intelligent in reply (and yes, that means that you should not reach for your typical short script items).

            3. You are not a fine writer.
              You are not a fine reader.

              You are not modest.

              You claim to be such a wizz with your vaunted English as a First Language skill set, and yet, all that we ever see from you is the very very very low brow ad hominems and mischaracterizations.

              Why is it that you do not present compelling posts that utilize facts without spin and a proper use of existing controlling law?

              (yes, that’s a rhetorical question)

  20. Dennis, On the AIA issue, how it affects the patent depends on whether it violates a statute, as opposed to the rules, and the false claim results in the issuance of an invalid patent.

    Now, what was the wording of the statute?

    1. Also, I think it questionable whether there is any further harm done if the patent is invalid under either the AIA or the pre-AIA law.

      As to the freshly minted attorney from Knobbe, Dennis, you have done enough to flag the issue to the OED. If they agree that the statement was false, perhaps they should further investigate.

      1. Ned,

        Note this was an allowance on first action. Your aim for the OED appears somewhat misplaced. What SPE signed off on this?

    2. Ned, a false affirmative priority date claim by a patent attorney or agent is risking OED consideration even IF it did not make a prior art difference.
      Plus, changing an application from an AIA application to a pre-AIA application by a false AIA-avoidance priority claim, as here, would most certainly increase the amount of potentially applicable prior art, to add anything previously public anywhere in the world even one day prior to the AIA application filing date as prior art, and moving the effective prior art date of all foreign-origin U.S. applications or patents a year earlier [back to their parent foreign application filing dates.]

      1. good points paul as to why one would not want to have AIA apply.

        But I think Ned’s point was a little different. I think Ned wants (and I would agree) an affirmative action taken by an applicant rather than the “missing” of not checking a checkbox.

        Remember too that another (un**foreseen) aspect of the AIA was the wholesale removal from the law of the phrase “without deceptive intent.”

        **gee, I wonder how that load of B$ was sold…

  21. Oh no, the USPTO examined an application quickly under a program under which applications are examined quickly.

    If the patent is “likely” invalid, then I would think you should have no trouble providing invalidating prior art or otherwise explaining how it’s invalid.

      1. I do not read Ohnos comment as an indication that the patentability hurdles were lowered. I only saw snark on the “quickly” angle.

    1. I would think you should have no trouble providing invalidating prior art or otherwise explaining how it’s invalid.,

      What planet are these people from?

      1. It is unclear why you are making this vapid comment.

        The attempt to denigrate the poster is without meaning or cause. What is the point of your post?

        1. What is the point of your post?

          To demonstrate that some people will literally stoop to defend any crxp patent, no matter how ridiculous it is.

          And you, in turn, will stoop to defend those people, every time.

          1. stoop to defend

            Again, Malcolm, try reading what I have already actually posted before you stick your foot in your mouth.

            1. try reading what I have already actually posted

              I did. I haven’t seen you post anywhere that this claim is plainly invalid or ineligible gxrbxge. On the contrary, I have seen you leap to the defense of those who suggested otherwise or who are unable to reach that simply, straightforward conclusion without having their hands held.

              But go ahead and pretend that didn’t happen.

            2. I did.

              LOL – not the type of admission that builds credibility for your vaunted English as a First Language skills.

              “pretending” appears to be something that you specialize in – and yet another lovely AOOTWMD.

  22. I don’t know why people do this; I tell clients all the time, better to have a good patent than a quick patent.

    1. Agreed – especially concerning any type of reliance on a quick and dirty provisional filing – AND especially on one that spans the AIA changeover…

    2. better to have a good patent than a quick patent.

      Tell everyone what the problem is with this patent, Nick.

  23. broad business-method patent that is very likely invalid

    Before I venture into the patent and file history, any thoughts as to why the “very likely” is believed?

    103?
    112?
    101?
    102?

    A combination of these…

    1. 102/103/101: It is well known that folks compare prices offered by different pharmacy benefit managers. You do this by obtaining prices and comparing them in a spreadsheet. For 101, see Bilski, Mayo, and (soon) CLS Bank.

      What’s troubling was the ease of this applicant’s pathway compared with most patent applicants who have much more sophisticated advances in technology.

      1. Also, price comparison for anything is notoriously old. This is simply an application of an notoriously old principle to an drug prices.

        How in the world?

      2. What’s troubling was the ease of this applicant’s pathway compared with most patent applicants who have much more sophisticated advances in technology.

        Hmmm, should I surmise from this comment that a flash of genius (or other manner of making an invention that relies on “sophistication”) should be the order of the day?

        1. That being said, and noting AA JJ’s comment and the listed reasoning given for the allowance, this appears to be one application that was rubber stamped “Accept.”

          So for the 103 and possibly 102 views, I can see the validity issue.

          But for 101, I would like to see more of the professor’s thinking. Methods of displaying remind me of smoothed electrocadiogram signals and in and of themselves appear to be patent eligible (once again drawing the legal distinction between patent eligibility and patentability).

          1. anon, given the reasoning in Bilski, the cases was a classic 103 case. Hedging: notoriously old. Everything added was routine.

            After Bilski, if I were the PTO, I would have told the examiners to follow the SC template, but simply use 102/103.

            1. Why would they not?

              I don’t know enough about the “workings” of your disturbed mind to answer that question.

              Most patent attorneys don’t assume that because a method of displaying “a smoothed electrocadiogram signal” was deemed eligible once upon a time that a method of “displaying prices” or “displaying pictures of dog food” are necessarily also eligible.

              But, hey, if it works for you then it must be some really deep analysis because you’re always right about this stuff.

              Or not.

            2. I don’t know enough about the “workings” of your disturbed mind to answer that question.

              Never stopped you before.

              Of course, your willingness to disgorge ad hominem regardless of anything anyone actually says is pretty well known.

              Most patent attorneys don’t assume… was deemed eligible once upon a time…are necessarily also eligible

              Most real patent attorneys know that eligibility is NOT a time-dependent thing. You are doing that 101 and 102/103 conflation thing again.

              Pay attention: patent eligibility and patentability are separate and distinct concepts.

            3. Most real patent attorneys know that eligibility is NOT a time-dependent thing.

              Most real patent attorneys recognize that the law regarding what is eligible and what isn’t has changed, at least when viewed from the perspective of fake patent attorneys like you.

            4. Most real patent attorneys recognize that the law regarding what is eligible and what isn’t has changed, at least when viewed from the perspective of fake patent attorneys like you

              I am not a fake patent attorney.

              But beyond that, squint as I may, you have said nothing of merit (again).

              Try to say something of merit Malcolm.

            5. And here too – another sub-thread where Malcolm’s response is nothing but dust-kicking ad hominem and the point I present goes without being addressed.

              Do you need the case cite for the methods of displaying smoothed electrocardiogram signals Malcolm?

              Or do you somehow still believe (some legal backing for this would be nice) that categories of things can move from eligibility to ineligibility over time? You seem to have your 102/103 and 101 conflation mechanism locked “on,” and seem unable to recognize when someone is helpfully asking you to turn off that conflation mechanism.

              Yes, Congress did indeed act in 1952 to separate patent eligibility and patentability.

              No, it is not within the authority of the Court to re-write patent law to attempt to return it to the pre-1952 status.

              Do you understand basic US law well enough to recognize why? Or do you want to just shove your head back in the sand?

          2. Also, anon, you seem to not get Bilski. Adding the routine to the ineligible is not enough. Your focus on the eligibility of the routine, like Rader’s focus on the data gathering steps of Mayo, is plain error.

            Notoriously old price comparison is not eligible because it is notoriously old, not new. (Sounds in 102, right?, but Bilski never made any sense.) One cannot add conventional computer elements to make it eligible.

            1. anon, and, let me add, that I agree with you that Bilski was really a prior art case. But, so what? Regardless of 101 or 103, the answer is the same: Everything in the claim was notoriously old. The examiner should have used common knowledge and common sense for at least part of his rejection.

            2. But, so what?

              First, you are not “agreeing with me.”
              Second, it really does matter that law is applied correctly.
              Third, you are again ignoring law and fact in your fallacious treatment of adding (conventional) computer elements to any eligibility determination. Claim as a whole, remember.

          3. I can see the validity issue.

            But you can’t say plainly whether it’s invalid because … why? It’s too “complicated” for you?

            1. “Complicated” has zero to do with it.

              Bashing a single patent is not the “catching the child at the edge of the field of rye” that you would make it out to be.

            2. Bashing a single patent

              LOL. Because this patent is soooooo unusual and not representative at all of the sort of jxnk that gets issued every week, and has been issuing every week for many years.

            3. Your overt focus only means that you are not (and cannot) grasp the meaning of law that is by far more critical here.

              /feigned surprise

        2. hould I surmise from this comment that a flash of genius (or other manner of making an invention that relies on “sophistication”) should be the order of the day?

          No. You should surmise that 103 applies to computer-implemented junk.

      3. It’s easy to dismiss an invention by saying that something’s “well known” or “notoriously old.” It’s harder to make an honest comparison of the prior art to the claimed invention and show how the invention as claimed is anticipated by or obvious over the prior art, or that the claims are directed to or preempt all use of an abstract idea/law of nature/physical phenomenon.

        I would have expected the founder of such a widely read and well established patent law blog to have enough respect for both the examiner and his readers to have laid out the argument he thinks the examiner should have made, or at least to explain why the statement in the notice of allowance that

        Prior art does not teach “obtaining set of prices from two different pharmacy benefit managers (PBMs) that have agreements with a pharmacy.” The prior art teach one PBM providing discounted prices for the client.

        is either wrong or insufficient to justify issuance of the patent, before dismissing the patent (by which I assume is meant the first claim) as “very likely invalid” and the feature the examiner specifically stated was absent from the prior art as “well known.”

        The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

        1. I would have expected the founder of such a widely read and well established patent law blog to have enough respect for both the examiner and his readers to have laid out the argument that 2 + 2 equals 4 in the context of drug prices.

          We’ll hold your hand for your William and walk you through it. Do you want some graham crackers and milk?

        2. William, but the examiner is fricken idi0t, and you know it.

          Price comparison is notoriously old, fundamental even.

          Prices set by contracts are notoriously old and are even illegal under the antitrust laws under certain circumstances.

          Displaying information is notoriously old.

          Everything in the claim is notoriously old except the particular thing being priced. Now, would it be obvious to this with prices set by pharmacy benefit managers? You tell me.

          We just had a discussion about claims where every element was in the prior art and in combination doing the same thing that they were doing in the prior art. In such a situation, there has to be something new in terms of functionality or result. What was that here? What new and UNEXPECTED result was achieved by applying notoriously old method to pharmacies?

          Yeah that’s right, nothing.

          This patent is a fricken embarrassment to the PTO. If I were in congress, I’d call a hearing and bring Sec. of Commerce to the table to answer a few questions:

          1. Where’s the PTO Director?
          2. What were you thinking when you allowed this patent?
          3. Are you going to hold the people responsible to account?

          1. Everything in the claim is notoriously old except the particular thing being priced.

            Prescription drugs have been priced for a long, long time.

            What new and UNEXPECTED result was achieved by applying notoriously old method to pharmacies? Yeah that’s right, nothing.

            Yup. But it has the word “computer” in it so we all need to pretend that we were born yesterday. Because … “investors”!

            1. Unexpected results are not a requirement for patentability.

              Unexpected results are evidence that can be cited in an argument of non-obviousness.

          2. Electrons are notoriously old.

            Protons are notoriously old.

            Neutrons are notoriously old.

            The laws of nature that put these things together are notoriously old.

            The (purposeful) choice of not understanding this analogy is notoriously old.

            1. Oh, and yes, perfectly patent eligible and patentable (yes there is a clear legal difference, still) claims can be completely made up of old elements (even notoriously old elements).

              Basic legal logic seems to be beyond the grasp of those blindly repeating their anti-patent mantras.

            2. perfectly patent eligible and patentable (yes there is a clear legal difference, still) claims can be completely made up of old elements (even notoriously old elements).

              Nobodys arguing otherwise. Is this claim achieving some unexpected result that you’d like to share with everyone, anon?

              I didn’t think so.

              Keep digging.

          3. ” What new and UNEXPECTED result was achieved by applying notoriously old method to pharmacies? ”

            What is new is that you can easily comparison shop for your meds.

            There do not need to be unexpected results.

            Eli’s machine just picked crap outta cotton. Picken crap outta cotton was notoriously old. What was new was the machine/way crap was picked outta cotton.

            What is new here is the way comparison prices are provided.

            1. What is new here is the way comparison prices are provided.

              You seem to be having a difficult time understanding the concept of obviousness Les.

      4. I don’t think that assertion is correct. Not from the standpoint of consumers. If I want to find out what each of my local pharmacies charge for Crestor, I have to call each one or go to each one and ask. That, is a royal pain. If everyone did it, the pharmacies would stop answering such questions, as their staff would have to spend the entire day answering such questions. Moreover, since the prices change fairly often, any information one compiles becomes stale almost immediately.

        So, I think the claim reflects a novel way of doing business…in the US anyway.

        1. I have to call each one or go to each one and ask. That, is a royal pain.

          A royal pain? Before you said “nearly impossible.”

          Also, we’re not talking about calling “each” of your pharmacies. We’re talking about contacting just two of them, for two prices.

          Try to keep up, Les.

        2. Les since the prices change fairly often, any information one compiles becomes stale almost immediately.

          There’s nothing at all in this claim requiring that the displayed prices be fixed for any length of time after they are displayed.

          But you knew that already.

          1. I did know that. That has nothing to do with my point, which was that calling 20 pharmacies to compare pricing is not practical but checking a web cite that implements the claimed method would be.

        3. “If I want to find out what each of my local pharmacies charge for Crestor, I have to call each one or go to each one and ask. That, is a royal pain. ”

          ??

          Places like pharmacychecker.com have been in business for, what, at least 4-5 years or so? (Maybe more, but I’m not an internet archivist)

          This patent, to the extent the provisional application specification supports the granted claims, claims priority all the way back to last February.

          1. Amending my comment above after a brief visit to pharmacychecker.com, where I see they say they’ve been providing their services since at least Feb 2003, which puts them a decade ahead of the priority date here.

            So the price comp thing is pretty old. I can argue the element of consulting the two PBM’s prices (instead of pharmacy prices) is not quite the same.

            Is it nonobviously different?

            1. Is “take the car keys” an insider joke `round here?

              Also, while I’m at it, you frequently use this long acronym at MM, something like AOOTWMD?

              UUTF does that mean?

              (UU = W but I’m not sure Prof.C would permit it that way)

            2. yes, the keys is an inside joke – friends don’t let friends drive like Les drives, meaning that while Les means well, his inartful arguments often miss what the law is.

              As to AOOTWMD, like the RQ/HD, I will once in a while post in first letter bolds. Malcolm falls back to this rhetorical trick so often based on his low level of intellect that the acronym is just so much easier to use.

              Accuse Others Of That Which Malcolm Does

            3. Ah, thanks for responding (AOOTWMD). And here I had thought it might be something about weapons of mass destruction.

              So, in that vein, “friends don’t let friends drive like Les drives” becomes FDLFDLLD.

              Seems a bit condescending treatment for the former great newscaster of WKRP-CN.

              (Oh, the humanity)

            4. Those are Canadian ONLINE pharmacies. Moreover, there is no indication that there are first and second pharmacy benefits manager agreements involved.

            5. But, yes arrogance and condescension are identifying characteristics of some posters here.

              I however, freely admit to an occasional mistake. Some of them, quite public.

              ….I swear to God, I thought turkeys could fly.

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