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.
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…
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.
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?
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.
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.
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).
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???
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.
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.
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.
“ 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.
“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.
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)
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.
“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.
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.
“ 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.
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!!!!
Now this is an interesting question.
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.
And the disadvantage with the earlier priority claim is the concomitant loss of patent term.
“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.
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.
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.
Let’s see who really understand the state of the law by your predictions.
My predictions are of record – see the oral argument threads.
Please re-post.
Nope – just visit the thread – my analysis was very detailed.
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.
“Now that there is fee shifting, the calculus changes.”
LOL – be careful of what you wish for…
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.
>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.
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.
“ invalid as being functional at the point of novelty”
Cite please.
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
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.
WTMQQDNR
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.
“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.”
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?
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.
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.
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).
“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…
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.
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]
[shrug] away and re read my post.
re read my post.
I don’t need do. It’s devoid of meaning.
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.
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.
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:
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:
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?
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.
>>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?
Night, Is there something about the word “akin” that flummoxes you?
(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.
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.
anon, software is not math — at least, not in the way the SC thinks of math. See, e.g., fn. 15 of Flook.
Thanks Ned for clarifying your position on the topic.
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? 😉
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.
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.
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.
Your bland statement of “there is no conflict” is obviously false.
“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.
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.
Well stated, my patient and too kind friend.
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.
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]
“ 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.
“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).