SmartGene v. Advanced Biological Laboratories

By Jason Rantanen

Earlier this month, I posed a question relating to the patent eligibility of the following claim:

  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.

This claim was a real one, from a real case.  It’s Claim 1 from U.S. Patent No. 6,081,786, and in a January 2014 nonprecedential opinion the Federal Circuit affirmed a district court’s ruling that it and claims from related patent No. 6,188,988 were ineligible for patent protection under 35 U.S.C. § 101.  Here’s the core of the court’s reasoning:

The district court correctly held that the claim 1 method falls outside the eligibility standards of section 101 as that provision has been construed. This conclusion follows from CyberSource Corp. v. Retail Decisions, Inc., where, based on earlier precedents, this court held that section 101 did not embrace a process defined simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. 654 F.3d 1366, 1373 (Fed. Cir. 2011); see also In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982). As CyberSource explains, those precedents rest on Supreme Court decisions indicating that section 101 covers neither “mental processes”—associated with or as part of a category of “abstract ideas”—nor processes that merely invoke a computer and its basic functionality for implementing such mental processes, without specifying even arguably new physical components or specifying processes defined other than by the mentally performable steps. See Gottschalk v. Benson, 409 U.S. 63, 67-68 (1972); Parker v. Flook, 437 U.S. 584, 589 (1978).

***

The Supreme Court’s post-CyberSource decision in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), reinforces the application of Cyber-Source to decide the present case. The Supreme Court in Mayo, though addressing a case involving the “law of nature” exclusion from section 101, recognized that “mental processes” and “abstract ideas” (whatever may be the precise definition and relation of those concepts) are excluded from section 101. See 132 S. Ct. at 1289, 1293, 1297-98 (quotation marks omitted). Whatever the boundaries of the “abstract ideas” category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options. Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility under section 101 requires that the claim involve “enough” else—applying the idea in the realm of tangible physical objects (for product claims) or physical actions (for process claims)—that is beyond “well-understood, routine, conventional activity.” 132 S. Ct. at 1294, 1298, 1299. The claim here does not do so. It calls on a computer to do nothing that is even arguably an advance in physical implementations of routine mental information comparison and rule-application processes. In this context, the concern about preempting public use of certain kinds of knowledge, emphasized in Mayo, is a grave one. See id. at 1301-02.

Our decisions since Mayo do not undermine Cyber-Source or its application here…..

You can read the entire opinion here: SmartGene v ABL.

ABL has since filed a petition for certiorari, as well as an amicus brief in Alice v. CLS.  Its position is that SmartGene should be GVR’d regardless of the outcome in Alice v. CLS (which might issue as soon as tomorrow).  From the introduction:

Judge Pauline Newman recently characterized the Federal Circuit as being in a state of jurisprudential “deadlock,” making patent eligibility under 35 U.S.C. § 101 a question “whose result will depend on the random selection of the panel.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1280 (Fed. Cir. 2013) (hereinafter CLS Bank) (en banc) (Newman, J., dissenting), cert granted, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 734 (2013) (hereinafter Alice). No better case illustrates the panel-dependent crapshoot that Section 101 jurisprudence has become than this one. Although it is impossible to predict the Court’s forthcoming opinion in Alice, there is little doubt that it will significantly impact the law in this area and break the deadlock in the Federal Circuit.

The decision below is a prime example of the
current dysfunctional state of the law in the Federal Circuit.

You can read the petition here: ABL v. SmartGene petition for writ of certiorari.

145 thoughts on “SmartGene v. Advanced Biological Laboratories

  1. simply as using a computer to perform a series of mental steps that people, aware of each step, can and regularly do perform in their heads. 654 F.3d 1366, 1373 (Fed. Cir. 2011); see also In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989); In re Meyer, 688 F.2d 789, 794-95 (C.C.P.A. 1982).

    This is an unbelievably ignorant statement. Would a tractor be invalid under 101 because it merely performs physical steps that a person can easily perform with their body? The ignorance of the above quote is epic. How any intellectual honest person can say that a machine that automates human thought processes is per se ineligible is beyond any rational discussion.

    1. And gee, Tarantula, I suppose an invention to write opinions for the Fed. Cir. should per se be ineligble under 101, eh? Again, how does it make sense to appoint a person that has never taken an interest in science and a slight interest in patent law (probably just to get their appointment)? What sense does that make?

  2. From what I have read of the opinion–and I have not yet read it in its entirety–it is, once again, woefully inarticulate.

    Regulars may have noticed that I no longer contribute to discussions on this board. That is so, not due to any defect of the board itself, but instead to what I see as the woefully inarticulate mistreatment and misunderstanding of patent law by jurists, academics, and administrators (but especially jurists of the CAFC).

    I won’t even enter upon an analysis of this opinion, I have fatigued of this exercise.

    These people are overburdened, and are doing a terrible job in an absolute sense–HOWEVER the fact that they are overburdened can be the result of either one or a combination of 2 factors:

    1) too great a workload
    2) too little capacity.

    These things depend on administrative structure, individual ability, etc.. For whatever reason, the capacity is out of balance with the workload.

    I would not reduce this phenomenon to (1), while assuming reasonable capacity, for there is no particularly good reason to assume that political appointees will have any such reasonable capacity, especially considering the quality of the individuals who appoint them, and the committees that recommend them. I have had, I continue to have, and I have expressed, my doubts as to both the work ethic and the cognitive and/or communicative abilities of particular jurists on the CAFC.

    This system is a real disaster, and in the past few years I have been busy with other matters. To return to the fold at this time, and find the system to be the same as, or worse than, it was, is incredibly disappointing. Worse than that, it is vexing.

    Good luck. My recommendation at this time is that Judge Taranto return to school and audit some classes in argumentation, logic, and reasoning, and that he take other members of the CAFC with him.

  3. Principle in the abstract: the distinction here is “useful” vs. “used.”

    The problem with these claims more than anything else is that they stop at “generating information.” Information is useful, but is not used in the claim.

    Principle in the abstract typically is a problem under 112, is it not? Enablement, breadth, etc. But it that always true if the means for generating the information is novel?

        1. anon, it was not a reply, it was a new post on protecting information, where everything in the claim was old and the only thing new was information.

          I think the Supreme Court cases on 101, other than law of nature or product of nature, can be reduced to this observation, that if the final step in a process or system is a number, and the process is otherwise old, or the computer hardware is otherwise old, then the claim protects information. As such, the claim provides something that is useful, but not used. That is what Benson identified as the problem with the claims in that case, and Flook in its case, and with the claims in Mayo. Simply ending in a number is not enough.

          But the post was deleted.

          1. Don’t know then Ned.

            Saw another blog that actually highlighted the “error” that prevented a post – would be a nice addition here…

          2. There appears to be no rational or objective standard for things being caught in moderation.

            I have a post in moderation that does no more than reference a link to this very blog that cannot get through, and another that does no more than consolidate three replies already on the thread.

            It also appears that RandomExaminer’s posts on at least one older thread are newly released.

          3. Maybe it’s because you have plagiarized my comments to this board, made years ago. Nice to know that you agree with my reasoning, however, although you seem to lack a more substantial appreciation of the concept described.

            1. IBP, I’m sorry for plagiarizing your comments made years ago. Perhaps if I had read them at the time, I would have remembered to quote you.

    1. Ned,

      We waited for…
      …”principle in the abstract”…?

      we’ve talked about this in the past – how this simply became gobbledygook in the hands of too many judges twisting it to mean too many different things such that Congress stepped in and said “No mas – we are taking the tool of common law evolution away from the judiciary.”

      1. anon, it is good to remind the judges and the folks who read this blog what “abstract” means, where it comes from in the original English cases. It simply means that an idea must be applied to produce a practical result.

        Take the Rubber-Tip Pencil case cited in Benson for the “idea” exception. The problem was that the claim was functional, devoid of details of structure or process — exactly like in Morse’s claim 8.

        This is not a 101 problem, but a 112 problem.

        1. Ned,

          The Court (your favorite Royal Nine, remember) have explicitly chosen where they have tied down their implicit writings of law.

          Are you saying they chose incorrectly? Are you saying that they should have done something else? Are you saying that they have (or should have had) violated the separation of powers doctrine by explicitly writing patent law in one or more other sections of the law?

          And what happened to 4 and 5? Has 4 become 5?

        2. Ned,

          On another thread you blandly repeat your old mantra about how the Supreme Court is not to be blamed.

          Respectfully, I would like you to attempt answers to the questions I put to you, as they have direct bearing on your stated views.

            1. I will further agree in principle with Rich and Rader that the judicial exceptions must end. Ground any and all rejections/invalidity doctrines in the statutes.

    2. Would recitation of the insignificant post solution activity of displaying the generated information address the problem you perceive Ned?

      I’m not sure why generating information is deemed not to be useful. Of course it is useful.

      Moreover, I don’t understand what policy goal is served by burdening claims with aspects such as post solution displaying, or printing or even using the generated information. All that does is let an infringer claim they are not infringing because they don’t do the displaying or printing, they merely generate the information according to the invented method….

          1. In case you didn’t notice, the taking of keys is not limited to whom you are slurring your words to – anyone can and should step in, including friends or the bartender.

  4. Not one mention of Bilski, and yet the decision mapped well to that opinion in noting that “The district court concluded that the claim does “no more than describe . . . an abstract mental process engaged in routinely, either entirely
    within a physician’s mind, or potentially aided by other resources in the treatment of patients.” Later in the opinion, the Federal Circuit made this observation, “The claim does not purport to identify new computer hardware: it assumes the availability of physical components for input, memory, look-up, comparison, and output. Nor does it purport to identify any steps beyond those which doctors routinely and consciously perform. Our ruling is limited to the circumstances presented here, in which every step is a familiar part of the conscious process that doctors can and do perform in their heads.”

    One can get sidetracked on the “mental steps” aspect of the opinion. But the really important aspect was the finding that the “mental steps” were notoriously old (“familiar”), and that the computer steps added nothing (“Benson”). This analysis is straight out of Bilski, that there held the claims ineligible because the hedging process being claimed was notoriously old and fundamental.

    It seems that the Bilski case is not understood. Part of the problem is that Bilski and this case both sound in prior art – not really a 101 cases at all.

    1. Part of the problem in relying on Benson’s “mental steps” aspect is that the Supreme Court in Flook stated that the problem identified in Benson was “math,” not mental steps.

      1. An even bigger problem: you have to actually use what the claim is – not disassociate the claim for some “gist” and the mental steps doctrine is a FAIL because machines really do not think (anthropomorphication).

    2. “One can get sidetracked on the “mental steps” aspect of the opinion. But the really important aspect was the finding that the “mental steps” were notoriously old (“familiar”), and that the computer steps added nothing (“Benson”). This analysis is straight out of Bilski, that there held the claims ineligible because the hedging process being claimed was notoriously old and fundamental.”

      Once again “notoriously old” is a 102 issue and should ave not bearing in a 101 inquiry.

      Alas, the flaws in our court system appear to be notoriously old and unrepairable.

      1. Les, absolutely agree. If something is not patentable on the basis that it is notoriously old, then this is a matter for 102/103.

    3. Ned (again) injects a plain error in his recounting of Bilski – there was no computer in the claims at issue in Bilski.

      The error is a type of over-read/run-on: “and that the computer steps added nothing (“Benson”). This analysis is straight out of Bilski,

      This has been noted – and corrected – before.

      1. anon,

        Bilski: notoriously old. Benson: The addition of a GP computer not enough.

        Smartgene: method is “familiar.” The addition of a GP computer not enough.

        Bilski and Smartgene sound in 102/103, not 101.

        1. (sigh)

          Once again Ned- there was no GP computer in the claims of Bilski, and you are over-reading Benson (need I supply the quote from that decision yet again?)

  5. I also like how they’re starting to question the competency of the judges at the appellate level to make factual findings on 0 record before them. I like that the softiewafties are finally getting around to this position after having benefited from that behavior from the courts for 20 years or so now.

  6. NWPA et al. likes to talk about nuclear bomb arguments. Man they just handed us a nice one on a silver plater at the bottom of page 14 of the cert petition.

    1. LOL –

      Finally, if patent eligibility excludes a computer system or program that replaces the logical or mathematical reasoning of a human, then it logically
      follows that no computer program that performs any logical or mathematical task that a human could do is patent eligible.

      They’re crying like this is a bad thing? Hilarious.

      1. What is even more hilarious is that you think that such removal of an entire innovation sector from patent eligibility is a good thing.

        It boggles the mind if you were to understand what the world of innovation entails and how you seem to be perfectly clueless in that regard.

        Your penchant for excluding this area based solely on the koolaid you have drunk is more than a little frightening.

        1. How can you infer Dobu’s reason from excluding mental process from patents? There is no way to know from his post.

          You may politely ask him to develop his arguments, if you are interested. There are arguments to both sides, and there is a balance to be reached between excluding useful patent fields and obvious / general patents getting monopolies for contributing nothing to the society.

          I find the mental process test a useful line to be drawn, but you may suggest another. Or you may think thare is no line to be drawn, and then I would disagree.

          1. Anon73,

            Dobu’s post (here) is not taken in a vacuum.

            He has – in previous conversations – elucidated his source material and what he says is understood – just disagreed upon.

            As to “mental process,” two things to refresh your recollection: machines do not think (anthropomorphication) and no one (except strawman Malcolm and take-the-keys-away Les) are talking about claims COMPLETELY in the mind.

            Pay attention. Especially if you deign to attempt to correct someone else who needs not the correction you offer.

          2. I find the mental process test a useful line to be drawn, but you may suggest another. Or you may think thare is no line to be drawn, and then I would disagree.

            The bl 0g tr0ll called “anon” doesn’t like to talk about or explain his beliefs as to whether mental processes should be protectable with patents under existing laws or future laws. He also despises policy discussions because then people who aren’t directly invested in the system might dare to point out that the system wasn’t designed as an entitlement program solely for his benefit.

            Basically the guy just likes to insult people who don’t love patents as much as he does. Once you understand this, everything he does or says is very easy to understand (at least when it’s written in regular English and not some parody of the ridiculously turgid prose of 19th century legal opinions).

            1. doesn’t like to talk about or explain his beliefs

              LOL – lovely AOOTWMD.

              Tell me again about how ‘oldbox’ – without change – come sto have a new capability?

            2. Basically the guy just likes to insult people

              LOL – says the guy spinning out of control and into yet another apoplectic fit of rage.

              Remove the insults and the others items off of your short script and what remains of your posts?

              Absolutely nothing.

        2. entire innovation sector

          That needn’t be the case, of course. There are all kinds of reasonable compromises that could be made. And it’s likely that some will be made before the plug is pulled for good.

          But you will have the same hysterical fit regardless. That much is guaranteed.

          1. Several things about your reply at 5.1.1.1 reveal a startling psychosis.

            First you assume that “compromise” is even needed; then you presume that compromises (not in evidence) would be “reasonable” (doubtful given your lack of understanding and past quips like you think that machines really do think, your unexplained feeling that all future inventions are already ‘in there’ in the ‘oldbox,’ your recognition of the controlling law of the exceptions to the judicial doctrine of printed matter (even though you refuse to integrate that knowledge – or even provide notice of the material facts); then you apparently believe that the proper branch of the government for re-writing law in a first instance, changing the law to incorporate any such “compromises” is a not the branch to whom the constitution delegates such authority (denigrating a proper view of the separation of powers doctrine); and then you vomit an unsupported conclusory “opinion” that “the plug [will be] pulled for good;” and on top of all that, pull your usual lame AOOTWMD and accuse me of throwing some future hysterical fit “regardless” showing just how totally clueless you are to several of the predominant legal issues in play.

            Pull your head out of wherever it is, wake up to how law – particularly patent law – is meant to be written, and call your congressman if you want a change to the law (and in the meantime, stop pretending that the law here and now is something other than what it actually is).

            Can you comport yourself with a little dignity, a little intellectual honesty and refrain from your stale vapid short script of rhetorical nonsense?

            (Yes, that answer is likewise pretty much guaranteed)

            1. The reference to Malcolm @ 5.1.1.1 should now read 6.1.1.2 as the clearance of posts in moderation and other edits have affected the thread designations.

  7. Never let your opponent — whether it be an infringer or the patent office — get away with characterizing one (or 2-3) of your claims as being “representative.”

    Never.

    Always argue for the separate eligibility and patentability of each and every one your claims. From first OA all the way through the completion of litigation.

    Always.

    The system claims could have won this case for ABL.

    1. Always argue for the separate eligibility and patentability of each and every one your claims. From first OA all the way through the completion of litigation.

      Because nothing ridiculous that you say under oath will ever come back to bite you.

      Grow up, man.

      1. LOL – Malcolm admonishing anyone about saying things that come back to bite and telling anyone to grow up….

        KA-BLOOEY! – there goes an entire parallel universe of irony factories.

        (hmmm, he even throws in there the ‘distinction’ of “under oath” – as if his writings here need not have the same intellectual honesty, as if his advocacy on this modern social media mechanism is somehow not guided by the ethical constraints that real attorneys are obliged to follow)

  8. “Mayo demanded that, when a claim involves an abstract idea (or, in Mayo itself, a law of nature), eligibility under section 101 requires that the claim involve “enough” else—applying the idea in the realm of tangible physical objects (for product claims) or physical actions (for process claims)—that is beyond “well-understood, routine, conventional activity.””

    One of the things the court discussed in oral arguments this past session was whether the state of the art had any bearing on 101. It does, and this statement shows that at least Taranto understands.

    When the art contains a machine (most commonly nowadays a computer) and the specification does not distinguish over the machine except by a general application of an abstract idea or law of nature, the proper characterization of the claim is that it is being drawn toward claiming the abstract idea or natural law.

    A lazy view of the foregoing would be an argument that one is improperly letting a 102/103 analysis bleed into a 101 analysis. This is incorrect and would ignore the quoted “well understood, routine conventional activity” language. A 101 analysis requires one accurately determine what the applicant consider to be their invention. Sometimes the conclusion is that the applicant isn’t attempting to claim a new processor, or a new memory (though they might be necessary limitations), or even particular instructions (as they are rarely claimed), but is rather attempting to “improve” upon the known computer by generally applying the idea that it be used for a particular type of information processing. This “improvement” is likely both obvious and a claim toward an abstract idea.

    1. One of the things the court discussed in oral arguments this past session “…

      …was the massive backpedaling from Breyer, who all but said “oops – you guys took me too seriously, I did not really mean that”

    2. Random, identifying the invention is one thing and a reason to discount the GP Computer limitations for patentability purposes, but it is quite another to then say that a claimed computer process are “mental steps.” Any child in the street knows the difference between a computer and the human brain. To the extent the courts continue to embarrass themselves with such tripe, they do a discredit to the judiciary.

      1. Ned: it is quite another to then say that a claimed computer process are “mental steps.”

        Let’s call them “information processing steps” then. Happy?

        Any child in the street knows the difference between a computer and the human brain.

        That’s nice. Does the typical softie woftie claim drafter know the difference? Because other than the use of the word “computer” and a few other “magic words”, it doesn’t seem like they have a clue.

  9. No better case illustrates the panel-dependent crapshoot that Section 101 jurisprudence has become than this one.

    In fact, 99% of the time there is no “crapshoot” whatsover and it’s incredibly easy to predict eligibility, regardless of the panel that is drawn. Indeed, the outcome in Prometheus v. Mayo was predictable and necessary for reasons that were widely publicized prior the decision. In fact, it was predicted, by myself and others. It doesn’t take a degree in patent law to figure out that you can’t turn an ineligible process (thinking about a “new” correlation) into an eligible process merely by taking on some old conventional step prior to the new mental process. That would be absurd.

    Was anyone surprised by the result in SmartGene other than the attorneys who argued on behalf of an apparently misinformed and deeply confused patentee? I’m not aware of anybody who would be surprised. You can’t patent old information about medical therapies, even if it’s organized in a new way. Why would anyone be surprised to learn that it doesn’t help if you stick in some “magic words” about an old computer doing nothing more than what an old computer does (store information for retrieval)? What rational policy argument is there that would justify the patenting of such gxrbxge?

    We all know that certain people (e.g., the author of the quoted text) love the idea of a patent system that coddles the lowest form of inventing, i.e., the functionally-claimed “computer implemented” storage, receipt and transfer of otherwise ineligible data. This microsocopic class of invariably well-heeled and deeply invested people see 101 jurisprudence as an attack on their livelihoods or those of their friends/clients (apparently they can’t find anything better to do with their intellects, which are always somehow deemed — by them — to be vastly superior to those of any of their critics).

    These same people, of course, when asked whether “new” information should be protectable by patents merely because, as claimed, that information is described as (surprise!) being accessible by ancient technology or because it appears after an old, conventional step of gathering data related to that information, will suddenly stick their fingers in their ears or their heads in the sand and pretend that they were born yesterday.

    The other game they will play is to pretend that if their claims aren’t granted then nobody should be entitled to patents on anything and we should all join the Amish. Nobody believes that silly empty threat, of course, but we see it here all the time.

    Here’s the question I would ask: if gxrbxge like the patent at issue in ABL v. SmartGene is eligible for patenting, is there anything “on a computer” that isn’t eligible for patenting? Recognize that we aren’t talking about a “new machine” in the traditional sense. We are talking about an old machine that, in most instances, has never been made or tested but is “made new” merely by the description in the claim of some new (or old) information stored or “processed” by the old machine — an old machine that everyone knows (and has known for a long, long time) can store and process any kind of information that it is instructed to store and process.

    There are no novel structures recited for these “machine” or “system” claims, unless you consider “structure” to include “logical structure” or “data structure” which zero people (other than a few invested patent attorneys) seriously believe. All that the typical computer-implemented claim is doing is protecting the information that the public can access and process using a computer. Since when is information eligible for patenting?

    The other inevitable complaint is that all this should be dealt with using 103 instead of 101. There’s two problems with that, as everyone knows. First, the Federal Circuit long ago incorporated 101 considerations into its jurisprudence to deal with the very same issues we are presented with in cases like SmartGene: the attempt to protect ineligible subject matter such as “non-obvious” information with patents. Second, the same “judicial activism” which resulted in this sleight-of-hand with respect to 103 also injected into 103 a list of “secondary” evidentiary considerations — some with a very tenuous link to reality — which turned 103 into a very expensive “crapshoot”, one that is at least as unpredictable as 101 but which are much more prone to manipulation by patentees, in their favor. Is anyone surprised that people who seek to control what sort of information is accessible on computers would favor 103 over 101? If so, I’ve got a bridge to sell you…

    1. some “magic words” about an old computer doing nothing more than what an old computer does

      zzzz – pay no attention to the man behind the curtain…

    2. That was a good-quality post. Hopefully, some of the low-quality posters will take the opportunity to read and learn from it.

        1. Maybe Memorial Day is opposite day for you, but the rest of us proudly honor the sacrifice and courage of our men and women in uniform.

          1. Nice Grumpy Cat, and as typical your latest reply is a complete non-sequitur to the conversation, so even though the sentiment is noble, the mismatch makes the post of low quality.

            Try to stay on topic.

    3. Of course, the practical reason for rejecting these claims under Section 101 andnot Section 103 is because that would result in a USPTO crapshoot. To reject these kinds of methods under 103, an examiner would have to do something like:

      Step 1: Determine the claim portions to ignore under 101 ineligibility (Can you think of something that would result in more appeals?).
      Step 2: Examine the remaining portions of the Claim (which will be claimed with silly functional language, designed to be difficult to find in the prior art, or just not talked about in older patents because they are really quite dumb).
      Step 3: Cobble together a 103 rejection based on combining silly steps like “providing patient information” with “outputting…” (another avenue for appeal).

      It would be a huge mess, and bear in mind that most of these examiners are not also lawyers (and if you want that, LOL, prepare for Quintupled fees at the USPTO).

      1. >“claim portions to ignore”

        “Stop right there – Do not pass Go. Do not collect $200.”

        Ugh you have me agreeing with anon.

        1. LOL – If you were to stop and think Random Examiner, you would recognize that such is not a bad thing – at all.

        2. Which is why I said 103 is unworkable for these issues. Which is what a huge swath of people who oppose Prometheus etc, said the court should have used.

          The problem is, under 103, its impossible to weed out broad claims to laws of nature/abstract ideas/phenomenon/ etc.

          I was simply pointing out that its nearly impossible to protect those classes using 103 from the uspto, which is a bigger issue than if you agree with the substance of Prometheus.

          1. Chicago, not impossible. The courts have been applying the printed matter doctrine during 102/103 for some time without any problem.

            The problem is the statute — it teaches us to look at the prior art and compare differences. It provides no guidance when limitations are not functionally incorporated, or not new, or not useful; or neither a machine, manufacture nor a composition. Theses issues have to be dealt with elsewhere – as in 112, or in 101.

          2. Stop whining and do your Fn job, Chicago (the most of these examiners are not lawyers QQ indicates that you are one of those ‘poor’ examiners).

      2. Mr. Chicago, after Prometheus v. Mayo, I would think it clear that there is no legal authority to exclude any claim limitation from consideration under §103.

        It seems to me that if the only thing new at the end of the analysis of prior art is something not functionally related to the other elements, and itself neither a machine, manufacture, or composition, then I think there might be the basis for a 101 rejection.

        1. not functionally related to the other elements

          That is the integration aspect that the USPTO published in its takeaway from the Prometheus case – the very same notion that Malcolm consistently dissembles about in his pet theory.

          and itself neither a machine, manufacture, or composition

          Once again Ned – your untoward bias towards the last equal category of patent eligible subject matter is showing. You need to realize that the 1952 Act also changed the law as to the equality of that particular category – and you miss out on one of the explicit holdings of the Bilski case that all nine justices agreed to: MoT is not required.

          This is a material element that you are choosing to consistently leave out of the discussion – not a practice that you should continue.

            1. You implicitly have left out “claim as a whole” Ned in your attempt to argue “the only difference”

              Or perhaps, you mean something else by the intimation “the only difference in a claim as a whole is some non-statutory item” – as I am recalling your past (fully rebutted) attempts at using that “line of logic” that ignored the facts that software is a manufacture in its own right, a machine component (typically) manufactured for a purpose that fits in the Useful Arts (as the constitutional phrase is understood), and that software is equivalent to firmware and is equivalent to hardware.

            2. Claim as a whole is not required in 101, it is required in 103, by statute.

              Looking at the original English cases, Tatham, Morse, Funk Bros., and Benson, is there any hint at all about claims as a whole?

              No.

              Is it in the statutes? Yes, but not in 101.

              Then, anon, where is it that the statutes impose on the courts to consider claim as a whole in the context of 101.

              Cite the statute.

            3. …and if Ned – you persist in this manner, will you (finally) tell me what the “Point of Novelty” was in the Diehr case?

              You have a very real problem vacillating here on this particular case. Can it be that software – your archenemy from a philosophical j1had standpoint is directly in the cross-hairs and that EITHER way you go – PON, or no need under 101 to have claim as a whole – your view goes down in flames in view of Diehr

              (and relatedly, have you yet overcome your own personal lack of understanding in the Nazomi case – particularly your odd attempts to portray the case as one only dealing with hardware?)

              Your tendency towards silence screams volumes.

            4. Seriously, anon.

              You have time and time again and time again, ad nauseum, insistent that the courts have to base 101 on the statutes.

              Where in the statutory framework is “claim as whole” required for 101? What statute?

            5. I have repeatedly said that “point of novelty” is a concept pertinent to 112.

              Elsewhere, the question is what is the novel subject matter. That can a number of elements, as in Diehr.

          1. Claim as a whole? Do I once again have to quote you what that means from Graham? It actually means those portions of the claim that distinguish over the prior art.

    4. There are no novel structures recited for these “machine” or “system” claims, unless you consider “structure” to include “logical structure” or “data structure” which zero people (other than a few invested patent attorneys) seriously believe.
      Ah yes … the “I believe in magic” theory. Without a different structure the computer doesn’t act differently … which for an un-programmed computer is little more than an expensive paper weight. Different functionality requires different structure — no ifs, ands, or buts.

      which zero people (other than a few invested patent attorneys) seriously believe.
      Again … the only explanation is that software must be magic since there is no physical manifestation. Most people know very little about how most things work. Hence, your appeal to crowd logic sounds a little tinny.

      Since when is information eligible for patenting?
      ALL THE TIME. Take the language, “upon x, perform y.” The “x” is information. It could be the internal temperature of a casting. It could be the location of a lever in a machine. It could be just about anything that describes another thing (i.e., information). BTW … nobody claims information per se, so if that is your argument, it is a bad straw man.

      is there anything “on a computer” that isn’t eligible for patenting?
      Would you ask the same about tinker toys? Is there anything you can build with tinker toys that isn’t eligible for patenting? Heaven forbid.

      Same tired nonsense from MM. A computer is just a machine … hmmm, where did I see the term “machine” before … oh wait, it was in the text of 35 USC 101. Software is an improvement to a machine. Hmm, where did I see the term “improvement” before … oh wait, it was in the text of 35 USC 101 again. Doesn’t it suck when the language of the statute gets in the way of a good rant?

      Is a machine an abstract idea? a law of nature? a physical phenomena? No, no, and no. Oh wait, I don’t like computers — so many people are getting rich off of them, and I’m so jealous <– the real reason behind MM's rants.

      1. LOL- instead of tinker toys, just substitute electrons, protons and neutrons.

        All other slams of Malcolm meet with approval.

      2. “Without a different structure the computer doesn’t act differently … which for an un-programmed computer is little more than an expensive paper weight. Different functionality requires different structure — no ifs, ands, or buts.”

        This is the same specious logic anon engages in. A claim to functionality is not a claim to structure (see, at the least, 112, 6th). The fact that one describes a function to be achieved does not describe or limit the structure, see General Electric v. Wabash.

        “Again … the only explanation is that software must be magic since there is no physical manifestation.”

        Nobody is saying there is no physical manifestation, simply that it never appears in your specification and isn’t in your claims. The fact that you have software which is physically stored on something doesn’t mean you have written that structure into a document. A specification that states that you have a pretty box that does a function, without explaining how the function is achieved, is not a described structure. A claim to that functionality similarly has no structure.

        “Would you ask the same about tinker toys? Is there anything you can build with tinker toys that isn’t eligible for patenting? Heaven forbid.”

        and “LOL- instead of tinker toys, just substitute electrons, protons and neutrons.”

        A claim to “tinker toys, ordered to perform the function of X” in ineligible. A claim to “electrons, protons and neutrons, ordered to perform the function of X” is ineligible. At least the tinker toys you can claim were made by man, but they’re still ineligible because the claim is not directed to a means to achieve a result but the result itself. The result itself is outside of 101.

        “Software is an improvement to a machine.”

        Are the claims here limited to a particular software means, or to any software which achieves the end? The claim isn’t so much an improvement to a machine as the idea that the machine can be improved in such a fashion. That’s an invalid idea under 101, obvious under 103 and overbroad under 112. This has been restated in half a dozen cases by the Supreme Court. You can go all the way back to Morse for that one, was his function not an improvement to machines?

        “Is a machine an abstract idea? a law of nature? a physical phenomena? No, no, and no. Oh wait, I don’t like computers — so many people are getting rich off of them, and I’m so jealous <– the real reason behind MM's rants."

        A computer is a machine that converts logical rules into action. When your claim is expressed at such a high level that the only thing you are improving in the art is the logic, you are only adding abstract ideas. By the same example: Before guns were rifled, one could disclose how to make a rifled barrel and the beneficial result (the bullet would be more accurate at long distances). But one could not claim "firing a bullet that is more accurate at long distances" nor "a machine that fires a bullet that is more accurate at long distances" even though it's nominally a "machine". What one can claim is a gun with a rifled barrel. That's a claim to the machine. The other two are claims to functions, which nominally have a machine in them.

        There are plenty of computer software inventions, but there are many more which are overbroad and are attempting to claim the effects rather than the means.

        1. When your claim is expressed at such a high level that the only thing you are improving in the art is the logic, you are only adding abstract ideas.

          Wrong. Simply and utterly wrong. Claims are to be read in light of what a person having ordinary skill in the art to which the invention pertains.

          In this very real patent sense, structure of printed matter easily has patentable weight according to the exceptions to the judicial doctrine of printed matter.

          While I recognize that you are not an attorney (and thus not bound by the ethical rules that attorneys are bound by, even when those attorneys are advocating with the use of a modern social media), your refusal to acknowledge and incorporate this material fact renders your position sterile. You are – or should be – aware of this, even as an examiner.

        2. This is the same specious logic anon engages in.

          Thing is Random Examiner, it is not species logic.

          You (nor anyone else) have ever explained how ‘oldbox’ – without change comes to have a new capability.

          You further simply get the “not in the claims” wrong, as you are not properly reading the claims as you must do – that is, reading the claims as understood by a person having ordinary skill in the art to which the invention pertains being informed by the specification.

          You not liking the logic and refusing to understand how it wrecks your philosophical viewpoint does not make it species.

          1. TB: reading the claims as understood by a person having ordinary skill in the art to which the invention pertains being informed by the specification.

            Translation: read the claims so that the patentee is right about everything.

        3. This is the same specious logic anon engages in.
          You so believe in magic? How does different function result without different structure?

          simply that it never appears in your specification and isn’t in your claims
          Still confused between enablement and claiming? I claim “A connected to B with a fastener” and the specification doesn’t describe further the “fastener.” You have a problem with that? Explain why or why not.

          The claim isn’t so much an improvement to a machine as the idea that the machine can be improved in such a fashion.
          If that is your logic(?), you are more than welcome to it. Did a bunch of examiners come up with that 6 drinks into happy hour?

          computer is a machine
          Bingo!!! We have a winner — now let’s just look at the language of 35 USC 101. Do I see “machine” listed? I think I do.

          But one could not claim “firing a bullet that is more accurate at long distances” nor “a machine that fires a bullet that is more accurate at long distances” even though it’s nominally a “machine”.
          So you say. However, we are dealing with 35 USC 101. Not enablement under 35 USC 112.

          The other two are claims to functions, which nominally have a machine in them.
          OK — I can claim it as a method. There are few machines that I cannot claim as a method, and if “functional” language is OK in method claims (steps are little more than individual functions), why shouldn’t similar language be used in a machine? What is the policy argument for having machine claims being treated differently than process claims?

          there are many more which are overbroad and are attempting to claim the effects rather than the means
          That is your opinion — fortunately, your opinion doesn’t comport with the law or how the USPTO examines patent applications.

          1. “You so believe in magic? How does different function result without different structure?”

            Claim 1: A machine comprising a spinning wheel
            Claim 2: A machine comprising a spinning wheel wherein the wheel is manipulated to spin straw into gold
            Claim 3: Any machine comprising the function of spinning straw into gold.

            Claim 3 is ineligible, because the claim is to a function that was not made by man. The function (the ability to change straw into gold) preexisted man. What is the distinction between claims 1 and 2? The same function which is ineligible.

            Now assume the Applicant admits that the subject matter of 1 is not his invention. At this point, claim 2 becomes ineligible, because applicant admits his invention constitutes only the improvement directed toward an ineligible function.

            The only thing that remains is if a fair reading of the application is that applicant didn’t invent a spinning wheel. That is readily apparent from reading the amount of detail being put into the description and enablement of the spinning wheel, as well as some small amount of knowledge of the current state of the art.

            The same happens with computers. A claim to a processor + memory + code that causes a function is really a claim to the function, because it is clear that applicant has not invented a new processor or memory and has not limited his code in any structural manner – he only cares about the result. A claim to the function is both overbroad and ineligible.

            “computer is a machine
            Bingo!!! We have a winner — now let’s just look at the language of 35 USC 101. Do I see “machine” listed? I think I do.”

            How intellectually lazy of you. “Things that cure cancer” is a preexisting idea, because whatever was capable of killing cancer was capable of it before we “discovered” (and thats the proper word) its capability. A claim to “any machine that cures cancer” (as opposed to a specific machine) is a claim on the preexisting idea, even though it nominally has a machine in it. If Congress were to insist that they intended “any machine that cures cancer” to be patentable, the court would have to strike down the statute as unconstitutional, as it would exceed the scope of authority granted congress.

            “So you say. However, we are dealing with 35 USC 101. Not enablement under 35 USC 112.”

            You don’t seem to understand. Nobody “invented” the idea that a bullet could fly further. Physics is physics, and it predated man. What someone invented was a structure that applied physics into a result we appreciate. The structure of the invention (the rifled barrel) is eligible, the physics of corkscrewing a projectile to keep it on an even flight path is not. A claim to the barrel is eligible, a claim to any machine which utilizes the physics is an attempt to claim the physics itself, and is ineligible. Even if Congress were to repeal 112 altogether, they would still lack the constitutional authority to grant a patent on physics. Since the statutory categories of 101 cannot exceed the constitutional grant, it is clear there must be an eligibility problem. The fact that there is also an overbroad problem is secondary.

            “OK — I can claim it as a method. There are few machines that I cannot claim as a method, and if “functional” language is OK in method claims (steps are little more than individual functions), why shouldn’t similar language be used in a machine? What is the policy argument for having machine claims being treated differently than process claims?”

            Functional language generally isn’t okay in method claims, just as its generally not okay in apparatus claims.

            “That is your opinion — fortunately, your opinion doesn’t comport with the law or how the USPTO examines patent applications.”

            I have unanimous Supreme Court cases which say differently. The fact that half of the federal circuit doesn’t want to apply the law doesn’t change what the big boys say.

            1. (sigh) in steps then…

              Caught in moderation filter before, only a single word seems to be the cause, so let’s try again…

              Random,

              LOL – move the goalposts back and address the question directly.

              (you made a lot of dust with your kicking – your references to “clear” merely assume the conclusion you want and DO NOT ADDRESS the question put to you)

            2. That you accuse your protagonist of being “intellectually 1azy” as you yourself dodge the issue put to you is more than a bit d1shonest.

            3. As to your “generally not” words…. Your position simply does not accord with the law as has been noted repeatedly in that elements of a claim and functional descriptions in a claim are allowed at a far greater level than your position indicates (allowed through MORE THAN just 112(f)).

            4. …as has been noted repeatedly in that elements of a claim and functional descriptions in a claim are allowed at a far greater level than your position indicates (allowed through MORE THAN just 112(f)).

            5. You have nothing – you may think you have a unanimous Supreme Court decision backing you up, but much like your (typical) gripe that examiners just don’t know the law – here too, you just don’t know the law, and you do not have what you think you have.

              You might want to read Sun Tzu to understand why you will always FAIL when you choose to do battle on terrain that you do not understand (and please, don’t come to battle and whine that the other side is better prepared…).

      3. I don’t like computers — so many people are getting rich off of them, and I’m so jealous <– the real reason behind MM's rants.

        LOLOLOL!!!!!

        Right. I’m “jealous” of the bottom-feeding skmbgs who come to me begging for help with their jxnk patents.

        1. Not sure if “jealous” is exactly the right word, but there is some definite and serious cognitive dissonance present with the level of disdain you hold for a profession that allegedly you are a member of – and work product, allegedly you create.

          You have been repeatedly (and kindly) told to change careers and to get into a line of work that you can believe in the work product produced.

          1. You have been repeatedly (and kindly) told to change careers and to get into a line of work that you can believe in

            Instead of obsessing about my “career choice”, maybe you should just get your prescription adjusted.

            People who have a clue (= not you) understand quite well that my “career choice” is not what matters to you at all. What matters is that your arguments sxck and I don’t hesitate to explain why in straightforward terms that leave you with nothing to do but spew insults and l i e s.

            You haven’t noticed this?

            LOL. I guess you just need a few more lessons. Never fear. They’re coming soon enough.

            1. You are too full of yourself – it is not so much your career choice that I “obsess” over, but rather, it is the psychotic ramblings and fallout from that career choice that infects every thread on this board that you spread your vile curse-sade on.

              Yes, there is a difference.

              What matters is that your arguments sxck and I don’t hesitate to explain why in straightforward terms

              LOL – one massive opposite day AOOTWMD there. What a pitiful wretch you are.

            2. and I don’t hesitate to explain why in straightforward terms

              Lots of threads have now built up (again) that show your statement to be an outright and blatant 1ie.

              Once again, the CRP-runaway-CRP again rhetorical tool is in play.

    5. Malcolm, if the claimed process did not cover something notoriously old, as in the present case, but was genuinely new, and then confined to computer implementation, what would your objection be?

      What is the 101 problem? The subject matter would be both new and useful. It is claimed as a new use of an old machine. What statutory basis is there to exclude such a claim under 101?

      1. It is claimed as a new use of an old machine. What statutory basis is there to exclude such a claim under 101?

        two things:

        1) first and foremost you fail as a new machine is created. See Alappat. See also Nazomi. See exceptions to the judicial doctrine of printed matter. See discussions (that go without rebuttal) on ‘oldbox’ without change cannot have new capability.

        2) Notwithstanding 1) see also 35 USC 100(b): (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

        In BOTH ways, the anti-s lose.

      2. if the claimed process did not cover something notoriously old, as in the present case, but was genuinely new, and then confined to computer implementation, what would your objection be?

        The answer depends very much on the specifics of the claimed invention, of course.

        But generally speaking, if the computer is recited merely to “automate” otherwise ineligible information processing (something computers were designed to do, as everyone knows), it’s still an ineligible claim.

        If you’re relying on a “new” machine to confer eligibility on your claim, then you need some new stucture for that machine.

        A non-obvious use for an old machine is necessarily going to have to be a use that results in a physical transformation of matter that the machine was previously not believed to be capable of or was otherwise unexpected. Otherwise the claim is going to end up ineligible or obvious (unenforceable either way).

        1. “‘[A]utomate’ otherwise ineligible information processing…”

          I you to mean that “information processing” is otherwise ineligible.

          Assuming that when tied to a computer, the mental steps doctrine is inapt, why is “information processing” otherwise ineligible?

          I have view, below, but I want to know what you think.

          My view: Information processing is otherwise ineligible because information is neither a machine, a manufacture nor a composition of matter.

          You and I have long agreed that information is not eligible, but have not agreed on why.

        2. A non-obvious use for an old machine is necessarily going to have to be a use that results in a physical transformation of matter that the machine was previously not believed to be capable of or was otherwise unexpected

          LOL – the MoT thing – really Malcolm? You haven’t been paying attention, have you?

          As far as ‘oldbox’ and new capabilities without change (i.e. you don NOT have such), you still have not addressed the fact that new capability is there and only there because of change – ALL the software inventions simply are not already ‘in there’ – you are violating the Morse principal in your attempts to adhere to the debunked House paradigm.

          Where is that straightforward explanation Malcolm – on something simple that goes to the heart of the software patent eligibility (note – distinct from patentability) discussion.

          For all your crowing about you give answers, this has never been given by you and has been asked of you for ages.

  10. Was someone actually advised to spend the money for a cert petition on the basis of having a realistic chance for the present [Mayo et al] Supreme Court to overrule this Fed. Cir. panel decision and allow further suit on this claim? i.e., for some reason other than for the time delay? Is there some way for the other side to get sanctions recoveries in cases like this?

    1. I suggest you pay attention to what was written in the decision, curmudgeon. You seem to be assuming that the law here is not unsettled (at best) and clear (at worst).

      1. While cases at the boundaries may not be clear, it is completely settled whether claims which map well to Mayo would be allowable. A unanimous decision was handed down barely two years ago.

        Their cert statement is correct though – a number of jurists on the federal circuit continue to ignore the Supreme Court and just do what they wish, and that is a problem.

        1. Random Examiner,

          Prometheus was a 9-0 Chamberlain-like bone thrown to Breyer. The decision cannot be squared with the precedents is cites as most on point and explicitly says that it is not changing.

          Funny how it is the anti-patent crowd of Malcolm and examiners like yourself and 6 that seem to think the decision is a model of clarity (what the H was the en banc Alice decision all about then?)

          1. a 9-0 Chamberlain-like bone thrown to Breyer

            Please keep up the weirdaxx WWII analogies! They are really compelling and show how deeply you think about this important topic.

            The decision cannot be squared with the precedents

            Completely false but keep chanting that to yourself. It apparently has some narcotic effect on you that nobody else can detect.

            1. Not completely false at all – you have failed (and failed miserably in your one single attempt in the aftermath meltdown you had in the Myriad case).

              Funny, you never tried again to square the decision with the precedents most on point and to which the Prometheus decision itself said were not being changed.

            1. Your post at 1.1.1.1.2.2 does not make sense.

              Mental infirmity has nothing to do with how easy it is to understand the inability of the decision to square with the precedents the decision says are most on point and that the decision explicitly says that it is not changing.

              How would you like me to “further define” something that is already so easy to understand? Typically one asks for further definition for things NOT easy to understand. It does not speak well for you to admit that a mentally infirm person can understand something on its face while you cannot. That’s like denigrating yourself and calling yourself less capable than a mentally infirm person.

            2. Mental infirmity has nothing to do with how easy it is to understand the inability of the decision to square with the precedents the decision says are most on point and that the decision explicitly says that it is not changing.

              Beyond parody.

          2. Also I didn’t say the decision was a model of clarity, Breyer said in oral argument what they intended to do: Sketch an outline of what didn’t fit eligibility and have the federal circuit fill it in. Instead the federal circuit not only didn’t apply/expand upon what they were given but they actively worked against applying the rule. The boundaries are not clear, because the court left that to the federal circuit which shirked its responsibility. But we’re not talking about a fringe case here, this is closely related to the facts of a 9-0 decision.

            1. Breyer said in oral argument what they intended to do: Sketch an outline of what didn’t fit eligibility and have the federal circuit fill it in.

              LOL – you noticed the backpedalling too then.

        2. a number of jurists on the federal circuit continue to ignore the Supreme Court and just do what they wish, and that is a problem.

          And the other problem is the USPTO which, in its endless efforts to please its “customers”, seems to have difficulty grasping and communicating both the basic, underlying logic of cases like Prometheus and applying and communicating that underlying logic to its “customers.”

          How can it be possible that a practitioner can suggest with a straight face at a meeting of professionals that correlations should be eligible for patenting? But that recently happened.

          Likewise, other “expert” practitioners appear to have deluded themselves into thinking that merely adding additional steps (e.g., drug administration steps) to the Prometheus claim would somehow save it, regardless of any consideration as to whether those additional steps (like the preceding step) were themselves practiced in the prior art by people Crone’s disease patients.

          Underneath all of this is the strange zombie presumption that every new fact is somehow protectable by a patent if you just figure out how “how to claim it.” And somehow it’s the USPTO’s job to telll everyone what themagic words are. Guess what, folks: wrong, wrong, wrong.

          And then there are the “experts” who whine that their clients can’t wait for the USPTO to explain to them how to amend their claims to make them eligible. These are the same “experts” who were surprised by Prometheus and still can’t wrap their heads around the basic problem with protecting ineligible subject matter with patent claims that recite no more than the ineligible subject matter and a bunch of old, obvious hoohaw. Their clients were misinformed (surprise!) and now somehow the USPTO is to worry about them.

          Wake up, clients. Wake up, prosecutors. It’s not all about you. It never was, even if it may have seemed that way for a long time.

          1. “And the other problem is the USPTO which, in its endless efforts to please its “customers”, seems to have difficulty grasping and communicating both the basic, underlying logic of cases like Prometheus and applying and communicating that underlying logic to its “customers.””

            You forget that the average Examiner has virtually no legal training. Prometheus has exactly one line in the MPEP.

            1. Prometheus has exactly one line in the MPEP.

              Even better RandomExaminer was the Office link that Malcolm jumped at providing before he even read what that link stated as the Office takeaway (hint: the Office takeaway ignored his little pet theory and instead focused on integration – a concept notably dissembled in his pet theory).

            2. Random, regarding Prometheus, the problem was that the data gathering steps were not new, and the claimed ended in information that was useful, but not used.

              The SC still has not clearly held this to be a 101 problem — they dance all around it though.

            3. Ned,

              As I have repeatedly mentioned, the Supreme Court does this dance because (at least 5 of them) realize that the Court has no authority (properly respecting the separation of powers doctrine of the US Constitution) to write patent law in the first instance, as would be required for a definitive statement of the Court ruling out either business methods or software patents.

            4. You forget that the average Examiner has virtually no legal training

              Again with the “poor examiner” QQ?

              All that matters here Random Examiner is that you examiners better have enough legal training in order for you to do your Fn job. That job happens to be examining applications under the law – so you better have enough training to do that. If you knowingly are cashing your paycheck and cannot do your job, then perhaps we all should take a closer look at what amounts to be theft by a government employee.

            5. “All that matters here Random Examiner is that you examiners better have enough legal training in order for you to do your Fn job. That job happens to be examining applications under the law – so you better have enough training to do that. If you knowingly are cashing your paycheck and cannot do your job, then perhaps we all should take a closer look at what amounts to be theft by a government employee.”

              hahaha, cute.

            6. It’s hardly “cute” for you to parade your whining and yet be willing to take that paycheck home.

              Do you even get what your job entails?

        3. Mr. Random, how do these claims map “well” to Prometheus v. Mayo? I think the map well to Bilski, emphasizing as they do that the steps performed other than the computer steps are “familiar.” This is the basis for excluding the hedging algorithm being claimed in Bilski – that they were notoriously old and fundamental.

          But I don’t see how they map well to Prometheus. Please explain.

      2. I did. This Fed. Cir. decision finds this case to be a perfectly clear case, even for S.J.
        [The unsettled nature of "unpatentable subject matter" law for other, completely different, claims is not in issue here. Thus, a cert argument that the upcoming Sup. Ct. Alice case decision [even its most unlikely outcome] could somehow support patentability in this case is laughable.]

        1. Your eyes are clenched way too tightly curmudgeon if you cannot see the effect of a decision in Alice will have on this case.

          Maybe you should read the parties’ briefs.

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