PSM

I’ll return to actual blogging once I’m finished grading exams, but for now, here’s a fun one:

Question 10: [Limit: 150 words]

Explain why the following claim from a patent entitled “Systems, Methods and Computer Program Products for Guiding the Selection of Therapeutic Treatment Regimens” does NOT constitute patent eligible subject matter:

  1. A method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition, said method comprising:

 (a) providing patient information to a computing device comprising:

 a first knowledge base comprising a plurality of different therapeutic treatment regimens for said disease or medical condition;

a second knowledge base comprising a plurality of expert rules for evaluating and selecting a therapeutic treatment regimen for said disease or medical condition;

 a third knowledge base comprising advisory information useful for the treatment of a patient with different constituents of said different therapeutic treatment regimens; and

 (b) generating in said computing device a ranked listing of available therapeutic treatment regimens for said patient; and

 (c) generating in said computing device advisory information for one or more therapeutic treatment regimens in said ranked listing based on said patient information and said expert rules.

52 thoughts on “PSM

  1. The claim is in step + function form and therefore has to be construed in accordance with 35 USC 112(f). As we do not have the full specification and do not know what structure corresponds to the process steps it is difficult to give a definite opinion.

    However, all that is added to the basic steps is two items of technical information. All that Prometheus added to a known analytical technique was bare information. Therefore I think (notwithstanding State Street) that this is caught by the reasoning in Mayo v Prometheus and will fail.

    1. Let me offer a slightly better case substitution:

      Therefore I think (notwithstanding Diehr) that this is caught by the reasoning in Mayo v Prometheus and will fail.

      Of course, no one as of yet has been able to actually square the Prometheus case with the Diehr case, but that is not a question asked by Prof. Rantanen.

    2. The claim is in step + function form
      Not even close — unless you think all method steps fall under 112(f).

  2. Per Bilski, the process claims the notoriously old process that medical professionals have historically used to diagnose patients. The requirement to use a computer is insignificant because the few computer steps claimed are claimed in a generic way.

    The claim are therefore abstract.

  3. “does NOT constitute patent eligible subject matter”

    … and, and, and that’s su, su, su supposed to stop them when they pa, pa, pa practice pa, pa, pa, patent prosecution?

  4. The claim appears to be an attempt to claim the abstract idea of making a ranked list of treatment information based on patient information and expert rules for making such lists and then drafting up some advisory treatment information based on the ranked list and patient information by doing it “on a computer” via reciting that the computer is given the relevant data about treatment regimes, expert rules and advisory information in order to do so.

    But that’s just a stab! I mean, I could always tighten/tailor the language up a bit!

    1. 6, why not simply adopt the formula of the Supreme Court — the method being claimed, absent the limitation to a computer, is in point of fact the notoriously old method used by doctors to diagnose patents, and therefor is a fundamental medical practice.

      The addition of generic computer elements is, like in Benson and Flook, insignificant.

      Had there been genuine novelty in the method, it would have made no difference whether the computer limitations were added. It would have been eligible in my view with or without them.

      Many might rightly say, and I somewhat agree, that the way the SC decided Bilski mixed 102/103 into the decision to an unacceptable degree.

      1. Had there been genuine novelty in the method, it would have made no difference whether the computer limitations were added.

        What if it was purely mental?

        1. Well then, Malcolm, the limitation to a computer would have eliminated the mental steps doctrine.

          Bilski stands for the proposition that if the claimed algorithm is old, well known, and fundamental, then it cannot be patented under 101 unless some other independent invention is made in its use.

          1. Well then, Malcolm, the limitation to a computer would have eliminated the mental steps doctrine.

            Exactly right (and a chance for me to use one of my favorite words: anthropomorphication). Even though Malcolm is on the record for ‘thinking’ otherwise, machines really do not think. Not in the proper legal sense for which the mental steps doctrine is meant to protect.

  5. The answer to your question is that the claim is nothing more than an “automated” method of identifying a treatment based on information that is generically described as being relevant to identifying a treatment — the same process that any trained doctor would conduct in his/her mind. The mere recitation of “a computer” for its known purpose of speeding up or increasing the accuracy of an otherwise ineligible mental process is insufficient to confer eligibility, just as the mere recitation of old conventional data gathering steps is insufficient to confer eligiblity to an otherwise ineligible step of thinking about that diagnosis. See, e.g., Mayo v. Prometheus (S. Ct.), Cybersource (FedCir) Smartgene (FedCir).

    1. And the cotton gin was nothing more than a cotton pickin’ automated method of pickin’ seeds and stuff out of picked cotton. The same process that any cotton pickin’ cotton picker would conduct with his/her hands. The mere recitation of combs, cranks and gears for their known purpose of turning and combing for speeding up or increasing the accuracy of an otherwise ineligible physical process is insufficient to confer eligibility, just as the mere recitation of old conventional cotton gathering and pickin’ steps is insufficient to confer eligiblity to an otherwise ineligible step of pickin’ crap outta cotton.

      1. It seems to me that there is a profound difference between “cotton with seeds in it”, on one hand, and “knowledge about a subject”, on the other. The latter is something that we all know can be categorized and stored for retrieval later, be it in a book or in a computer or in our brains. Allowing people to tie up knowledge with patents doesn’t promote knowledge. It promotes the removal of knowledge from parts of the public domain where that knowledge is most useful. This is basic, fundamental stuff — easy to understand and remember and also very persuasive to any mind willing to understand.

        As for this:

        the cotton gin was nothing more than a cotton pickin’ automated method of pickin’ seeds and stuff out of picked cotton.

        even in the dark ages of patenting I’m pretty sure the patent to the cotton gin recited a lot more objective physical structure than the generic baloney recited in the above claim. As I recall, there is a fairly detailed drawing in his patent showing the objective physical structure of a machine that was never previously described. He didn’t just present a flowchart and a description of what the cotton gin accomplished. He actually made a new machine and described it.

        That’s a huge difference compared to the worthless disclosures of the computer-implementers who recite some “new functionality” and based on that disclosure alone proceed to sue or threaten to sue hundreds or thousands of disparate companies who, in most cases, independently invented their own manner of achieving the desired functionality. Likewise with the computer-implementers who invent nothing at all but who obtain patents based on the use of old information-processing devices to process (allegedly) “new” information.

        1. It seems to me that there is a profound difference between “cotton with seeds in it”, on one hand, and “knowledge about a subject”, on the other. The former is something that we all know can be cleaned and stored for retrieval later, be it in as raw fiber or as thread or as cloth. Allowing people to tie up an automatic ginning machine with patents doesn’t promote the useful arts. It promotes the removal of useful devices from parts of the public domain where that devices are most useful. This is basic, fundamental stuff — easy to understand and remember and also very persuasive to any mind willing to understand.

          1. Allowing people to tie up an automatic ginning machine with patents doesn’t promote the useful arts.

            Assuming that this ginning machine is structurally defined in the claim in such a way that it can be distinguished from the prior art on the basis of that structure (and not merely on some new “functionality”) then you seem to be making an argument against the granting of any patents to new machines.

            I’m not aware of any serious person who is making such arguments. The question then arises, I suppose, as to whether you should be taken seriously when you make such arguments.

            I’m guessing not.

            1. Assuming that this ginning machine is structurally defined in the claim in such a way that it can be distinguished from the prior art on the basis of that function (and not merely on some new “structural arrangement of known components”) then you seem to be making an argument against the granting of any patents to new methods.

        1. Furthermore, even grade school girls, who could care less about technology, have a better grasp of logic that was displayed by your post. The newness in the claim had nothing to do with a new computer.

          1. Of course it had nothing to do with a computer.

            The point of my post was to show how the silly logic of the parent post could just as easily be applied to any invention.

            There is no reason to say that you can’t patent automated “mental steps” any more than there is a reason to say that you cant patent automated manual labor.

            1. “There is no reason to say that you can’t patent automated “mental steps” any more than there is a reason to say that you cant patent automated manual labor.”

              Hmmm. Interesting assertion. Thing is that there’s these three government bodies called the judiciary, the executive and the legislative that all disagree with you.

            2. Les, I am not sure that one could not patent the method regardless of the computer had it been truly new. The 101 debate largely seems centered on to be whether the claim is one to technology other than the computer. I would assume medical diagnosis is technological, but the claim in the present case is really not new, or claim at much too high a level.

              Now consider the following, which seems eligible to me:

              Assume a patient has the superbug that is immune to all but one treatment technique. The current method for diagnosing is to successively administer known antibiotics in a specific sequence until one is found that works, or to conduct a culture, both of which may take too long to so that any remedy is too late, or is severely damages because of the delay.

              The invention claimed is based on the observation that the superbug will infect Harvard mouse, while ordinary bugs will not.

              Thus, the claimed “eligible” method would be

              1. A method comprising: injecting a Harvard mouse with blood of a patient, waiting 2 minutes, and if the Harvard mouse temperature rises 2 degrees, determining that the blood of a patient contains a superbug.

            3. Ned –

              If: “but the claim in the present case is really not new,”

              Then reject it under 102.

              I don’t follow the point of your mouse story. But, I’d suggest giving the patient ALL the antibiotics immediately.

            4. 6 –

              Where in the statues do you see a prohibition against patenting methods including mental steps?

              Where do you find an Executive Order prohibiting patents to mental steps?

              Its all result oriented judicial nonsense.

            5. “Where in the statues do you see a prohibition against patenting methods including mental steps?”

              Methods including mental steps does not equal “automated “mental steps””. They are two distinct things. You may, in some instances be able to patent a method including a mental step, perhaps. But you cannot patent automated mental steps. See 101 and 103.

  6. A good reason which neither your students, or any examiner, or probably any Court [since winging a 101 S.J. is now much easier than using 103] will apply is the 103 prior art to this claim of the interactive screen display computer system for doctors that Kaiser Permanente hospitals and the Lockheed LMSC Division were already testing from 1969. Some of it is in LMSC patents from that era.

    1. If it is old or obvious from what is old, then fine, it is unpatentable.

      But the claim does recite a process that REQUIRES “a computing device,” so it does pass muster under section 101, according to a rational analysis. But then we see a lot of analysis on this board (and elsewhere) that does not meet that criterion.

      1. I’ll be interested to know how many of your “principled” students also expressly refuse to answer the question, Jason, and launch into a discussion of the 1952 patent act instead. Will they get points for doing that? I assume not but maybe you have a very liberal approach to such matters …

        The answer to your question is that the claim is nothing more than an “automated” method of identifying a treatment based on information that is generically described as being relevant to identifying a treatment — the same process that any trained doctor would conduct in his/her mind. The mere recitation of “a computer” for its known purpose of speeding up or increasing the accuracy of an otherwise ineligible mental process is insufficient to confer eligibility, just as the mere recitation of old conventional data gathering steps is insufficient to confer eligiblity to an otherwise ineligible step of thinking about that diagnosis. See, e.g., Mayo v. Prometheus (S. Ct.), Cybersource (FedCir) Smartgene (FedCir).

        1. The question is not whether or not the claim constitutes patentable subject matter. The question asks the student to explain why the claim is not patent eligible subject matter. Good lawyers are expected to see and be able to argue both sides of an issue, even if they disagree with it. So no, if a student instead launched into a discussion of the 1952 patent act they would not score well on this question, unless it supported their argument that the claim did not constitute PSM. Similarly, if the question was to explain why the claim is patent eligible subject matter, and the student instead argued that it was not, they would not do well.

          1. Yes. But the bias in the question is offensive.

            If you want to test whether they can argue both sides, (or this side) of a case, they why not phrase the question: What is a legal argument that the following claim does not recite patentable subject matter? instead of proselytizing as you have done?

            Why are you biasing the test against students that disagree with you? It seems they have to know more than the students that agree with you. The ones that disagree have to not only know the law, they have to know how to twist it in a way they disagree with. That doesn’t seem fair.

            1. The ones that disagree have to not only know the law, they have to know how to twist it in a way they disagree with.

              If they know the law articulated by the Federal Circuit in SmartGene — the case that is most directly on point — there’s no need to “twist” anything. Just state the law.

            2. Why are you biasing the test against students that disagree with you? It seems they have to know more than the students that agree with you. The ones that disagree have to not only know the law, they have to know how to twist it in a way they disagree with. That doesn’t seem fair.

              Say what? If you’re advocating a position (whether you agree with it or not) and don’t know the best arguments against your position as well as you know the best arguments for your position, then you’re not doing it right.

              In any case, here you’ve got several recent Supreme Court cases on patentable subject matter. Pick the one that you think has the closest facts (Bilski, in my view), and apply the Court’s logic. Nobody cares whether you “agree” or not.

            3. “Say what? If you’re advocating a position (whether you agree with it or not) and don’t know the best arguments against your position as well as you know the best arguments for your position, then you’re not doing it right.”

              Then why not phrase the question that way? Why not ask the question: what are the best arguments that the claim is or is not patentable?

              Why assert that the claim is not patentable and force a STUDENT to A) think the claim is not patentable and B) support only that position?

            4. Les,

              One wonders which of two answers would be graded higher:

              1) the one that adopts “the best” view against patent eligibility alone; or

              2) the one that adopts “the best,” but also shows why such views only lead to contradictions and the inability of the Court to square itself with its own precedents.

            5. Les did you ever stop and think that maybe the good prof did the following:
              In formulating a question he:
              1. came up with an ineligible abstract idea
              2. drafted the abstract idea up in a computer implementation
              3. decided to ask his students if they could spot what he did

              All of that is perfectly legit. There is no “bias” at play.

            6. “If you’re advocating a position (whether you agree with it or not) and don’t know the best arguments against your position as well as you know the best arguments for your position, then you’re not doing it right.”

              You can tell Les that all day every day and he’ll never understand. He’s not a very good lawlyer.

            7. “Why not ask the question: what are the best arguments that the claim is or is not patentable?”

              Because he only wanted to hear the best arguments that the claim is not eligible. That’s what he wanted to test.

            8. “Why assert that the claim is not patentable and force a STUDENT to A) think the claim is not patentable and B) support only that position?”

              That would be in order to test their abilities as a lawyer.

        2. The question is not

          I laugh out loud at poor Malcolm. Compare and contrast my questioning of the rubric and his attempt here at spin.

    2. This is the credited response.
      Patentable subject matter, but anticipated and/or obvious in view of the prior art.

    3. Give this ancient disclosure, Paul (over 40 years old0, can you think of any example of an “automated” method for using a computer to speed up or increase the accuracy of otherwise generic standard logical deductions in any field of endeavor that would be non-obvious?

      Would it affect your answer if the PTO granted the patent and somebody had taken a license to the patent? If so, why?

  7. In reality (unless SCOTUS gives us some definitive test in CLS Bank), it will depend upon what panel at the Federal Circuit you are dealing with. The claims pass the MOT test, but that isn’t enough for some judges.

      1. Looks like all natural laws and abstract ideas to me!
        I see you take the approach of several of the judges at the Federal Circuit — ‘I know an abstract idea when I see it … just don’t explain me to explain the difference between an ineligible abstract idea and an eligible application of an abstract idea.’

        1. I’m was joking. I clerked with Chief Judge Rader during CLS Bank, and I have some pretty strong views about 101 — check the ethics blog. I don’t even think it’s a defense to infringement. But then again, “when in doubt, consult the statute.”

          1. David, I wonder if you agree, personally, that Bilski seem to rest is decision on the fact that the hedging algorithm claimed was old, notorious and fundamental, which sounds in 102/103 rather than 101. I think Justice Kennedy even admitted in oral argument in Prometheus v. Mayo that that is exactly what the court did.

          2. I’m was joking.
            As was I — sort of. The serious point is that the reality of the cases is that the judge deciding the case is more important than the facts. The legal reasoning gets added only after a decision has been reached (see, e.g., Benson).

            I don’t even think it’s a defense to infringement.
            I agree with your analysis.

            But then again, “when in doubt, consult the statute.”
            That doesn’t work with judges who have an agenda.

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