PTO Issues Alice-based Examination Instructions

By Jason Rantanen

Today, the patent office issued new instructions (download: PTO Alice Instructions) for patent examiners to follow when examining claims for compliance with Section 101.  This practice is similar to those  it followed after the Court issued other substantive patent law opinions.  One important component of the new instructions are that they make it clear that going forward, the PTO will be applying the Mayo v. Prometheus framework to all types of inventions:

[T]he following instructions differ from prior USPTO guidance in two ways:

1) Alice Corp. establishes that the same analysis should be used for all types of judicial exceptions, whereas prior USPTO guidance applied a different analysis to claims with abstract ideas (Bilski guidance in MPEP 2106(1I)(B)) than to claims with laws of nature (Mayo guidance in MPEP 2106.01).

2) Alice Corp. also establishes that the same analysis should be used for all categories of claims (e.g., product and process claims), whereas prior guidance applied a different analysis to product claims involving abstract ideas (relying on tangibility in MPEP 2106(Il)(A)) than to process claims (Bilski guidance).

In addition, the PTO provides a bit of guidance for determining whether a claim will fail one of the two steps.  For the first step (determine whether the claim is directed to an abstract idea), the memorandum provides four examples of abstract ideas referenced in Alice:

  • Fundamental economic practices;
  • Certain methods of organizing human activities;
  • “[A]n idea of itself; and
  • Mathematical relationships/formulas

If an abstract idea is present in the claim, the examiner should proceed to the next step, determining whether any element or combination of elements in the claim  sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.  Examples of limitations that may be sufficient to qualify as “significantly more” include:

  • Improvements to another technology or technical fields;
  • Improvements to the functioning of the computer itself;
  • Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Examples of limitations that are not enough to qualify as “significantly more” include:

  • Adding the words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer;
  • Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.

Read the entire memorandum here:  PTO Alice Instructions. Thanks to David Taylor at SMU Law for sending me a copy of the memo.

314 thoughts on “PTO Issues Alice-based Examination Instructions

  1. It is the job of patent attorneys to push the eligibility envelope, but if there is no envelope to push against, well then their efforts bring scorn on the patent system.

    Congress and SCOTUS have to build the envelope, but it has to be resilient.

    There is a parallel with angioplasty balloons. Too rigid (PET) and under the control of fallible doctors they burst like a paper bag when asked to stretch enough to save the patient. Too stretchy (PE) and they will stretch so far they they injure the patient. When the patient is technological progress, a degree of flexibility to deal with unforseen developments is vital to the health of the patient.

    SCOTUS got to the Golden (Polyamide, limited resilience) Mean on this one. The “abstract” and “significantly more” tests are not so far away from the EPO’s “technical”. I expect US jurisprudence and EPO jurisprudence from now on to feed off each other, and improve clarity and consistency in both jurisdictions.

    1. Beware the line of “bring scorn on the patent system.

      There is no shortage of those who would cry out scorn no matter what the situation.

    2. Beware too, the implicit urge present in MaxDrei’s post to apply law that is beyond the scope of the sovereign.

      There is NO one world order – yet.

    3. Congress and SCOTUS have to build the envelope

      Emphasis added to draw attention to the clear error and misstatement as to which branch of the government has sole authority to write patent law.

  2. I think we are back to the blue pencil rule, except its all collapsed into 101… which means why do anything else after 101? That is my biggest issue with Parker v. Flook.

    For those who don’t know what the blue pencil rule is, the examiner makes an imaginary line through parts of the claim that are abstract ideas and examines the remaining parts under 102. 103, and 104.

    As an analogy, let’s take a post on this blog. Some posts will have something useful to the conversation (statutory) and parts that are personal attacks (non-statutory material). Some are a mixture of both, for example the one below. The examiner will “blue pencil” out the useless attack and examine the rest. For example:

    (sigh)

    And you STILL do not get that invention was carved out of 101, do you?

    Why do you think the power-addicted Court has hung their implicit writings hook on 101, when it would make eminently more sense to separate their “letters” and drop them in the corresponding mailboxes of 112 and 103? Read again Prometheus and the dead letter comment there.

    Use some critical thinking skills Ned. (yes, it might be necessary for you to put to one side your agenda – don’t worry, after you put it aside and use some critical thinking, after that, if you still want to pick that old agenda back up, no – save perhaps Ned Heller – can stop you).

    I wish some posters would show some self-restraint and resist bickering back and forth about nothing… this thread has turned into a cable news show.

    1. So the examiner will blue pencil out the post and leave this part remaining:

      Why do you think the power-addicted Court has hung their implicit writings hook on 101, when it would make eminently more sense to separate their “letters” and drop them in the corresponding mailboxes of 112 and 103? Read again Prometheus and the dead letter comment there.

      (How do you strike text on this blog?) Is it blah blah blah

      1. Ok, I got it now. Sorry for the multiple posts. The blue pencil rule in action is…

        (sigh)

        And you STILL do not get that invention was carved out of 101, do you?

        Why do you think the power-addicted Court has hung their implicit writings hook on 101, when it would make eminently more sense to separate their “letters” and drop them in the corresponding mailboxes of 112 and 103? Read again Prometheus and the dead letter comment there.

        Use some critical thinking skills Ned. (yes, it might be necessary for you to put to one side your agenda – don’t worry, after you put it aside and use some critical thinking, after that, if you still want to pick that old agenda back up, no – save perhaps Ned Heller – can stop you).

        1. Fun game J, but I have one better for you (saves on all of that cross-out too).

          Here’s your typical Malcolm post, but instead of cross-out, I use electronic white out:

          MM
          anyday at anytime

          [this page blank on purpose]

    2. it would make eminently more sense to separate their “letters” and drop them in the corresponding mailboxes of 112 and 103?

      Why do you believe this “makes more sense”?

      Read again Prometheus and the dead letter comment there.

      I’ve read it many times. Do you believe that mental processes are ineligible, regardless of how useful and non-obvious are? Nearly everybody believes that.

      So why does it “make sense” to examine a claim in the form [oldstep]+[newthought] under 103? Why waste defendant’s time and money going through the 103 analysis of the [newthought], with all the secondary considerations etc, when any child can see that the claim is simply protecting the ineligible subject matter as applied to a particular subfield (i.e., the field in which the old data-gathering step is performed)? Please explain.

      I think we are back to the blue pencil rule, except its all collapsed into 101… which means why do anything else after 101?

      There is no need to do 101 first. If you have 102 art by all means use that to tank the claim and be happy about it. If the claim is plainly not enabled or incomprehensible use 112. You can do the 101 analysis (and you should do it) whenever the eligibility issue becomes apparent. Sometimes that’s not going to be apparent until the 103 analysis has been completed. [shrugs]

      1. I’ve read it many times.

        LOL – did you re-read our little back and forth on that section in the archives? It was pretty funny how I had to hold your hand and get you to see that the comment was to the Court’s judicial exceptions.

      2. MM, some of my post was a quote from a previous one by another user and are not my views. (I quoted it to illustrate the use of the blue pencil, and as a jest to some to drop the personal attacks.) To clear things up, yes, I believe mental processes are non-statutory, even if they are novel or unobvious.

        So why does it “make sense” to examine a claim in the form [oldstep]+[newthought] under 103? Why waste defendant’s time and money going through the 103 analysis of the [newthought], with all the secondary considerations etc, when any child can see that the claim is simply protecting the ineligible subject matter as applied to a particular subfield (i.e., the field in which the old data-gathering step is performed)? Please explain.

        I don’t advocate the use of a 102 or 103 evaluation of [old step]+[new mental process]. I advocate for a 102 analysis of [old step]+[new mental process]. Where did I strike “new mental process”? In my 101 analysis… which is why examiners must do 101 analysis first. (And it wouldn’t take much time to reject [old step]+[new mental process], especially if the old step is an everyday computer.

      3. the dead letter comment there.

        I’ve read it many times. Do you believe that mental processes are ineligible, regardless of how useful and non-obvious are? Nearly everybody believes that.

        Non sequitur much?

    3. j, it would be nice if moderators would use blue pencil.

      I notice that some posters get exasperated when they cannot convince others they are right. When the attacks are directed at me, I really do not take offense.

      But I can see the bickering here is annoying others. It really should be toned down just a bit.

      1. The exasperation comes less from “convincing others” and more from getting others to actually have a discussion.

        I have long ago provided the solution to toning down any bickering.

        Post with intellectual honesty.
        Acknowledge and deal with valid counterpoints raised.
        Stop the Accuse OthersOf That Which Malcolm Does.
        Stop the spin
        Stop the mischaracterization of law (including the exceptions to the judicial doctrine of printed matter)
        Stop the mischaracterization of facts
        Stop the mischaracterization of what others post
        Stop the mindless ad hominem that is completely unsupported with zero posting of merit

        Should be relatively easy.

        1. This reminds me of a story my Pastor told once…

          He was not a fire and brimestone guy (he was Lutheran, after all), but the church begged him to give such sermon. He finally gave one, raked the congregation across the coals. His hope was that it would encourage some self-reflection and make people better Christians.

          Afterwards, the response was essentially the same. “Great sermon! Best ever! I have a son/sister/nephew/granddaughter who really needed to hear that.”

        2. This reminds me of a story my Pastor told once…

          He was not a fire and brimestone guy (he was Lutheran, after all), but the church begged him to give such sermon. He finally gave one, raked the congregation across the coals. His hope was that it would encourage some self-reflection and make people better Christians.

          Afterwards, the response was essentially the same. “Great sermon! Best ever! I have a son/sister/nephew/granddaughter who really needed to hear that.”

  3. Consider a device that calculates the price of soybeans using the formula:

    X=a/B*(C+D)^2 – [(e+f)/g)]

    Is that device patentable over a device “configured” to use the same formula to determine how many children in a particular hospital are likely to get the flu?

    Remember that the device has no idea what the input or output data means. It just “crunches the numbers.”

    Related question: does the PTO have a database of algorithms and numeric relationships? If they are indeed “the essence of electronic structure” (as has been asserted by a certain judge once upon a time), it would seem critical to organize these structures in a way that can be easily searched.

      1. Device… Knows…

        Mr. “Intellectual Honesty”, folks, hard at work attacking individual words in a sentence completely removed from their context.

        It’d be almost impossible to believe except that’s pretty much all this m0 r0n knows how to do.

        1. Oh, please do tell me the context, Mr. *sniff** test.

          Does it have anything to do with anthropomorphication?

          And do you still think that machines really do think?

          Lovely AOOTWMD btw.

    1. Anon:
      Device… Knows…

      Is this one of those devices for whom 6 is fighting for their civil liberties?

      Seems this post is “non-statutory.”

      MM: Mr. “Intellectual Honesty”, folks, hard at work attacking individual words in a sentence completely removed from their context.

      It’d be almost impossible to believe except that’s pretty much all this m0 r0n knows how to do.

      This post is also non-statutory… and a successful effort to bypass the filter system to deliver the personal attack.

      Anon: Oh, please do tell me the context, Mr. *sniff** test.
      Does it have anything to do with anthromorphication?

      And do you still think that machines really do think?

      Lovely AOOTWMD btw..

      There might be something useful to respond here, though not clear…

      By the way, this process can be done at home yourself, before you press “Post Comment.”

    2. “Is that device patentable over a device “configured” to use the same formula to determine how many children in a particular hospital are likely to get the flu?”

      You betcha. Just claim & prosecute it as a new-use invention, and voila’!

      Just like Diehr.

      Now, like Diehr– you’ll have to live with this limited-use scope — but fair is fair.

    3. “Is that device patentable over a device “configured” to use the same formula to determine how many children in a particular hospital are likely to get the flu?”

      That is an interesting question.

      However, it would be resolved under 102 or 103, NOT 101!

      1. The Court’s machinations about avoiding placing their judgment in the appropriate section of law (be it 103 or 112) are clear given the official public record in the 1952 Act.

        See Prometheus and the dead letter comment: no matter what, the Court will not relinquish its addiction to jam its fingers into the 101 nose of wax.

        1. To wit (re 103) – as I have stated explicitly before (but the naysayers seem to have a difficult time with their selective memory),
          from the notes tab at : link to law.cornell.edu

          This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

          Clearly Congress would not permit the “addition at a later time” power to be the very power of the courts to develop a definition with the t001 of common law evolution, since that was the power immediately being rescinded. That addition at a later time then can only mean an addition by Congress.

          Congress told the Court in no uncertain terms: get out of the map writing business – your anti-patent antics go too far.

          What is the clear takeaway in the line of cases from the Court is a repudiation of a direct act of Congress – a bloodless revolution of the pen (even as they denigrate scriviners) by a branch of the government totally ignoring the separation of powers doctrine.

  4. Looking forward (as intelligent and thoughtful patent attorneys should always be doing), is there a way to distinguish new, non-obvious useful algorithms that do not merit patent protection from new, non-obvious useful algorithms that do? Put another way, exactly what should be required of an information processing method (or an apparatus) claim reciting an algorithm in order to confer both eligibility and patentability to that claim in view of the vast history of algorithms and symbol manipulation in the prior art? Is there anything that will suffice?

    Just looking forward, folks (and probably not too far forward).

    1. Yes. Put that algorithm to work controlling an injection molding apparatus or a drill press to better produce some useful product, and you are good to go.

      1. Put that algorithm to work controlling an injection molding apparatus or a drill press to better produce some useful product, and you are good to go.

        Just so we’re clear: you’re suggesting that I can put “a computer” onto any old device, recite any algorithm, and if the device is “better” than the prior art device you’re entitled to a patent?

        I’m 100% certain you’re wrong about that. You seem to be taking Diehr for a wild joyride, as if Diehr was written yesterday. It most certainly wasn’t and a claim like Diehr’s would have pretty much zero chance of being granted and/or successfully enforced today.

        I’m trying to encourage you to look forward but instead you are looking backward. Try harder.

        1. Look, I’m no fan of business method patents (which now, I think, are finally dead no matter the lack of a formal death notice) or even of most software patents. But I know that between Heaven (SCOTUS) and Here sit the PTO and the Federal Circuit to tell us all what the Supreme Court really meant. And yes, this is how I feel theywill interpret 101 (103 is still there, of course). Diehr lives, and if you can make the case that the hardware in your claim is now physically doing something that is unobviously different from what it was able to do before your invention, you have a decent shot at getting a patent that will hold up at least as far as the Federal Circuit.

          1. if you can make the case that the hardware in your claim is now physically doing something that is unobviously different from what it was able to do before your invention, you have a decent shot at getting a patent that will hold up at least as far as the Federal Circuit.

            Ah, I think this is likely closer to being correct. The “non-obviousness” of the algorithm is going to be a far less important (and possibly irrelevant) consideration as compared to the unexpected physical transformation effected by the improved machine.

            Diehr lives

            I agree that Diehr will always stand for the banal proposition that the mere presence in a claim of ineligible subject matter is not sufficient to render the claim ineligible per se. And to the extent Diehr has a “life” beyond that, it’s been clear for some time that its “life” has been evolving. Like certain species of giant lizards in our past, it seems to be shrinking as the years go by …

            1. will always stand for the banal proposition

              Hey I know a certain pet theory that is the ultimate in banal propositions. It takes a de facto non-integration assumption, does not account for claims either of all old steps, nor allows for the fact that a claim may have mental steps as elements and is routinely parroted by a whole host of sockpuppets on another blog.

        2. It seems that you are saying that Diehr has been either abrogated (by Congress) or expressly overruled (by the Supreme Court).

          You don’t by chance have a citation to support this proposition (as forward looking as it might be)?

          1. Diehr has been either abrogated (by Congress) or expressly overruled (by the Supreme Court).

            I’m not aware of any serious commenter on the patent system who clings to the notion that at least some interpretations of Diehr were crushed by the logical reasoning presented by the Court in Prometheus.

            Specifically, I’m referring to the formerly popular notion (among certain crowds) that the mere presence in a claim of a limitation (step or structure) that satisfied the eligibility requirement was sufficient to end the eligibility inquiry.

            Thanks for your comment.

  5. Off thread (sort of) but here is what appeared today on the IPKat IPR blog:

    “Readers’ comments. Over the years, one of the most cherished institutions of this weblog has been the facility to post readers’ comments. While this facility is moderated, the blog team has sought to exercise its prerogative to block readers’ comments only where they are plainly spam, entirely irrelevant or (relatively infrequently) defamatory or obscene. However, this blogger is concerned that this facility is being abused by a number of readers who have begun to post anonymous comments that consist of little other than abuse, whether of members of the blog team or of other readers who have posted comments. Criticism of another person’s opinions or reasoning is acceptable and indeed highly desirable, as is the correction of factual or legal errors — but there is nothing that can be gained from posting personal abuse and insults, a practice that lowers the tone of debate and does nothing to enhance the reputation of this weblog as a place where even unpopular arguments can be articulated, analysed and, where appropriate, refuted. Accordingly, this blogger proposes to reject comments that consist entirely or mainly of personal abuse. If any anonymous reader feels that his or her freedom of speech is being compromised (as has been asserted on some previous occasions when this blogger has refused to allow an offensive comment), the person affected is free to post that abuse elsewhere and link back to the Katpost and/or comment. Alternatively, the abusive commenter can emerge from the protective shell of anonymity and give verifiable particulars of his or her identity, so that readers can ascertain for themselves the value, or lack of it, of the ad hominem abuse which they seek to publicise.”

    I think it applies also to this blog! Regular readers, will know who the offenders are!

    To one particular active and notorious poster here there are three sorts of response, namely i) take him on, ii) reason with him, iii) ignore him. Frankly (Ned I’m talking to you in particular) I think Option iii makes most sense and is best adapted to keep dilution of the thread to a minimum.

    1. Regular readers, will know who the offenders are!

      LOL – yet another try at the Crybaby Veto, eh MaxDrei?

      Your option iii) is a FAIL – as this is nothing more than that old saw of CRP-ignore valid counterpoints, run away and CRP again.

      I have shared the best path forward (and it is no surprise that the path actually aligns with what a true discussion means): take heed of the valid counterpoints raised, address them directly and honestly, and integrate them into the conversation going forward.

      Why you (and yes, the small circle of your compatriots – even those only too willing to plunge a blade into the back of your “reasonable assumptions”) fail to be willing to engage in such a conversation is abundantly clear: you do not want your soapboxing diluted.

      Your “dilution of the thread” is clearly not directed to conversation and meaningful discussion, but your ability to soapbox without a critical reprisal.

      Here in the States, we rather prefer the ability – even the sharp ability – to be able to voice those reprisals.

      That you seek to ignore the best path forward (and advocate the CRP soapbox route) is not a surprise at all, given how easily your own views fall to simple critical comments.

      The better path – for all – is for you to stop and critically think about exactly why your views are so easily wrecked. Step up your game – not your soapbox. Don’t be offended, but rather be thankful that you have the opportunity to have your message vetted your message and made stronger.

      1. ” without a critical reprisal.”

        I don’t particularly see the need for any “reprisals”, critical or not. Maybe if you’d simply leave the reprisals out then you might not have everyone so agin ya.

        1. LOL – of course you don’t 6, you want only soapboxes passing in the night with your “anything goes” mantra.

          Silly 6, the real world does not work that way.

          1. You do know that a reprisal is a retaliation correct? What do you feel like you need to retaliate for? Do you feel personally under attack or something? What action against you are you retaliating for? And for what purpose would you carry out this retaliation?

            1. You do know that it is a proper word for a discussion such as this, right? One of the meanings is “comeback – as in what happens with the switching of burdens, overcoming a prima facie case and the lot.

              Why are you so intent on kicking up dust?

              1. I don’t see that definition in either google’s def or merriam’s def. In fact, my interbuts says that it is a synonym, not the definition. And in this case they’re only similar in meaning.

                But be that as it may, keep your “comebacks” not actual reprisals or retaliations and people might not dislike you so much.

              2. LOL – as if the point here is a popularity contest….

                6, you remain clueless, as you once again show that emotional side of you that wants acceptance – blind acceptance.

                Sorry, but in the real world there is no such coddling.

              3. “The Crybaby Veto was attempted several times 6.”

                Yeah but you still had a few holdouts. Including me.

                Had.

                As I learn more about your condition I’m less and less concerned about keeping you around. And I’m going to go out on a limb here and say that’s probably so for more and more people. It isn’t anything personal brosef, or having to do with your “ideas” or whatever. I just feel like your time could be ridiculously better spent in counseling and you could use a nudge. Then, when/if you get better then you could come back upon your docs say so.

              4. Whew, it’s good to know then that your “power” and thoughts about “keeping me around” matter as much as they do.

                (that would be exactly zero).

                Your med control line is a massive FAIL – but hey, if you want to keep flogging that horse, have at it.

        2. Look at the “content” of the people “agin” me.

          That is, if you can dig past the table pounding and find some small bit of law or fact that is not twisted and spun out of all recognition.

          Keep looking. Let me know when you find something (and not something “subjective all in the mind anything goes,” something tied to this reality)

      2. Sometimes anon reminds of that Jack Handy bit where the guy calls you on the phone to threaten you and says “Here that? That’s dynamite.”

        1. Malcolm I don’t know Jack Handy but I do know by now that anon craves attention (in the form of replies) and gets upset when ignored. Methinks he gets more attention on this blog than on any of the others.

          Recall how often we find him whingeing about correspondents being afraid to reply or having run away from the argument.

          It’s sometimes not easy to resist the temptation (don’t I know it) but nevertheless I would encourage you (Ned, 6, and everybody else) to resist rising to fisherman anon’s hook, however temptingly he baits it.

          1. You quite miss the fact MaxDrei that dueling soapboxes is not a discussion.

            Of course, that is not surprising, given that many of your views simply fall apart with any amount of critical thinking, and you cannot be bothered to do anything but soapbox what is clearly CRP.

            Your suggestion has been put forth before: and shown to be, well, probably the least effective suggestion for encouraging actual conversation.

            Again, not a surprise given the “content” of what you provide.

      3. There is some stuff that is attempted to be passed off as critical thinking that is far more offensive…

        Hint: it’s usually posted by MaxDrei and his close circle of friends.

        That is, when they are not attempting Crybaby Vetos…

    2. And in typical drive-by, step up onto his soapbox and spew, but disappear from any ensuing actual discussion, MaxDrei’s cry for a universal Crybaby Veto is being resoundingly THUMPED over at the Kat thread.

      See for yourselves:

      link to ipkitten.blogspot.com

      Come MaxDrei, join the discussion.

  6. Not bad. Now — once they let us in on their definitions of the following terms — we’ll be all set to go:

    1. Abstract (idea)
    2. Fundamental economic practice
    3. Significantly more

    /sarcasm off

    1. My exact thoughts. “We’ll know it when we see it.”

      There couldn’t have been worse guidance given to a group of engineers with no legal training, no industry experience, and no concept of their role in the economy.

  7. McPatentpants: I’m surrounded by an invisible shield! You can’t touch me!
    Court: No, you’re not.
    McPatentpants: Yes, I am!
    Court: [slaps Kookoo in the face]
    McPatentpants: I’m surrounded by an invisible shield!
    Court: No, you’re not. I just slapped you in the face.
    McPatentpants: But we’re still having the same conversation!

    Gee, I wonder what happens next?

    1. To borrow a phrase:

      I can’t even figure out what you’re ranting about.

      Guess you’re out of luck …?

      Hmm, even here my use seems so much better.

      You really blow at this advocacy on a modern social media thing, Malcolm.

      1. To borrow a phrase: “I can’t even figure out what you’re ranting about.

        I’m not ranting. And my question was rhetorical.

        1. lol – the rest of the world is just wery wery quiet (they must be hunting rabbits)

          – said in the best Elmer Fudd tones.

  8. NRLB v. Canning
    link to supremecourt.gov

    The Supreme Court unanimously ruled Obama’s recess appointments to NLRB unconstitutional because they occurred when congress was not on recess. A majority ruled that a recess must be at least 10 days to count as a recess for the appointments clause. Four justices would have gone further, and would have affirmed the lower court holding that a recess in occurs only between congresses.

    The NRLB, without the members unconstitutionally appoint, were without power to act.

    The opinion is silent on who an officer is. But if the NRLB members are “officers,” I think the Director of the USPTO is one, especially if congress says so.

    What we have here, then, is a problem for the PTO as it has a person operating in the capacity of director who has not been appointed by the president and approved by congress.

    If this has no consequences legally, then then I would wonder why we would even create such a fuss over the NRLB.

    Thus, I think there may be a problem with any appointment made by the faux director, or any actions required by law to be undertaken by the director.

    1. Your right to whine about branch to branch malfeasance has been revoked due to your desire to reinstate the Royal Nine to their pre-1952 Crown.

      1. To the great, anon.

        I genuflect, your honor, nay I grovel at your feat and lick your mud-encrusted boots, to seek audience.

        May I humbly seek your leave to again post here? I apologize for thinking the Supreme Court can be right now and then. I wish submit for your kind consideration by frequent denunciation of Bilski as being wrong to the extent anyone can understand that decision.

        There, your honor. I throw you a bone.

        Can I be allowed to post here once more?

        1. You can post all you want – and you can even be inconsistent all you want. Just realize that I can be sarcastic, especially as to your duplicity and false umbrage.

          OK pumpkin?

          Don’t like it? There’s a surefire way to change. Of course, that involves you opening your eyes and perhaps recognizing when you are way off the deep end in you advocacy. Is that too much to ask, that when you advocate you do not misrepresent the law, nor historical facts to reshape the world in your own image and desire?

          It’s not too difficult – especially when I am helping you out.

          1. ?

            You quite evidently miss the point completely 6. Absolutely the wrong takeaway – showing plainly that your control crusade over me is misguided.

            You do realize that your obsession with me reveals more about your latent defects, right?

            1. lulz, my “obsession” isn’t with you brosef. It’s with your mental disability. It is amusing as all get out. And if you didn’t post so much I wouldn’t have so much fodder to be interested in. (I’ll rest assured that you’ll copy me on this in a little while lol)

              And there ain’t much to “take away” from what he said. He was clearly prostrating himself before your greatness in the hope that you’d let him post more. It is exactly what the psychopath wants. Read the fraking literature re re.

              To be sure, he was being facetious and that is to highlight your behavior!

              1. And the fact that you have to implore me to read the literature only proves my point: clearly, I am not as you are attempting to mischaracterize me as being.

                Clearly your antics have failed. Do you not care to see that?

              2. “And the fact that you have to implore me to read the literature only proves my point: clearly, I am not as you are attempting to mischaracterize me as being.”

                Wait wait, a person, who another person thinks is a psychopath, is told to consult the literature so that he’ll learn a little about psychopathy and he thinks that the other person imploring him to read the literature “proves the point” that he isn’t as he is being characterized by that other person.

                L u l z.

                Who’d have guessed? Hearing about the games they play in their minds to convince themselves nothing is wrong with them is half the fun of observing them!

              3. Have you arrived at the part in your little psychobabble handbook on projecting?

                You may want to discuss that part with your doctor at your next visit.

              4. “Have you arrived at the part in your little psychobabble handbook on projecting?”

                Yeah I went ahead and poked around some more to try to see what you were talking about. Turns out projection is totally normal. It’s the way all humans relate to our surroundings.

                The bad kind is only when it is being used as a defense mechanism against something specific. So unless you have something that you think I’m defendin agin during a specific situation I don’t see the point in your bringing it up. But feel free to express yourself on the topic as best you can.

              5. Carrying on, yeah, I found out some more about “truth owning”.

                I’ll just drop the article for you to check out. The whole thing is good, but the “owning truth” as it is turned around in this article is at the bottom.

                link to booksie.com

                You own the truth anon. You fcking own it. You own the f out of it.

                Also that article or a different one explained why you’re so reticent to give some easy answers to some questions. Turns out you may in fact not be so concerned about all software patenting falling to pieces. Instead your indecisiveness simply comes from not being able to judge what is wholly true in a given situation, thus you don’t want to say anything because you don’t want to to be wrong, and you know that you can’t settle on one or the other as being wholly right. I can understand that in moderation, but the OCPDer takes it to new levels of indecisiveness never settling on one or the other.

  9. It says a lot about the opinion that it has barely changed the conversation. The same people (pro and con) are making the same arguments they did before this case came out.

    1. Oh No, I am not. I think Alice’s use of Prometheus really changed the landscape to focus on the whether the novel aspects of a claim are ineligible.

      Oddly, this line restores all the cases regarding business method, printed matter and the like that found the novel portions of the claims ineligible and the eligible portions of the claims old.

      This permit the court(s) to once again focus its attention on the statute to determine eligible subject matter, as opposed to making it up as they go — see, Scalia’s slam in the American Broadcasting cast that “totality of circumstances” is not a rule of law at all. “Abstract” seems like the a “totality of circumstances” test which is not a test at all. However, the statutes require a new and useful machine, manufacture or composition, a or a process (that respectfully, cannot be divorced from the other three categories), or an improvement in one of these. Here is the proper focus, not something entirely extra statutory, something that has no definition, and because the court provides no definition, throws everything into uncertainty.

      1. because the court provides no definition, throws everything into uncertainty.

        Not everything, Ned.

        Not even close. Please stop pretending that nobody has any idea about what is eligible and what isn’t.

        Take a claim in the form [oldstep]+[newthought].

        Is that eligible? Nope.

        Now add to [new thought] the additional limitation [on a computer]. Eligible? Nope.

        I grant that if you want to be remain confused, there is nothing anyone can do to prevent that. But please don’t encourage the pretenders who are running around pretending that the Supreme Court just held that “computers are abstract” or similar such nonsense. That’s not what these cases are about.

        1. MM, I grant you that math and “fundamental economic principles” have been held to be abstract.

          But there are a lot of policy considerations built in to the determination of these as abstract. Whether anything beyond these two examples qualifies is arguable — and the argument will center primarily on these policy considerations. Now that, to me, is just unacceptable.

          The statute, 101, is clear. The law interpreting 101 for 150 years was clear — until Bilski. Discarding the statute and focusing on something like “abstract” that has no definition but a lot of policy considerations is fundamentally wrong.

          I think music, printed matter and business methods are all non statutory. The cases for 100 years held them to be non statutory. But when the Supreme Court was finally faced with a business method in Bilski, they ruled business methods statutory.

          What??????????????????????????????????

          I cannot express how profoundly wrong that ruling was .

          1. I grant you that math and “fundamental economic principles” have been held to be abstract.

            And mental processes. All of them. “Correlating” stuff like “metabolite levels” to “a need” is just the tip of a massive iceberg of ineligible jnk.

            Alice is crystal that if you stick the words “on a computer” to these abstractions, you’re still dead in the water.

            My point is simply that there is far more clarity on this issue than you indicated. There will always be fuzziness on the boundaries. But a big part of the fuzziness has been taken care of between Prometheus and Alice. And thank goodness for that.

            1. And mental processes. All of them.

              Because claims are not allowed to have elements of mental processes…

              Oh wait, they are.

              Never mind (said in the best Emily Litella tones)

      2. STILL waiting for Ned to address:

        How is that logical rebuttal coming along about a Congressional defense to something you claim is non-statutory (and if in fact were non-statutory, would need NO defense)?

        You fit the adage: there are none so blind as those that refuse to see.

      3. anon, the problem you seem to have is that you do not seem to understand cases. I think that is because you do not familiarize yourself with the facts in the case and therefor do not understand what a court is saying when it says it.

        I don’t know how many time I have asked you to tell me the facts in a case as a part of any discussion we are having. I have repeatedly asked you about Alappat, and Nazomi, just to name two. There are a lot more.

        Now we are discussing Hotel Security, Guthrie v. Curlett, In re Russell and In re Patton. I don’t know if you read those cases, because you are completely unfamiliar with their facts. You really do not understand what is going there, or with patent law in general.

        I am glad we see eye to eye on some issues. But I think it could be all if you would take time to actually read the cases I cite.

      4. Ned, AOOTWMD does not work for Malcolm – so why do you think trying to pin the inability to understand cases that you have on me is going to work is more than a bit odd.

        You have started doing that evading simple points thing again…

    2. It says a lot about the opinion that it has barely changed the conversation.

      Prometheus didn’t “change the conversation” either. That says nothing about the opinion but a lot about you.

        1. ovely AOOTWMD (you quite miss the point)

          Notice how the dooshbag just spins the wheel and out pops one of its random insults. What point is being missed? The dooshbag never says.

          Gee, I wonder why.

  10. What would be especially helpful for everybody would be for the PTO to identify some claims that, in light of the PTO’s sudden appreciation of how the patent system is supposed to work, should never have been granted in the first place.

    This grbage (8,424,048, granted April 16, 2013) immediately leaps to mind:

    1. A handheld portable electronic device (HPED), comprising: a body having a display; and a processor for playing a feature length movie on the display, wherein the HPED purchases and downloads to the HPED, via a wireless connection to a network, the feature length movie before a public release date of the feature length movie, and plays the feature length movie on the display before the feature length movie is publicly available for viewing by a general public in movie theaters, wherein a private release group of the general public purchases and plays the feature length movie on HPEDs before the feature length movie is publicly available for viewing in the movie theaters, the feature length movie is subsequently available for viewing by the general public in the movie theaters after being played on the HPEDs, and each of users in the private release group designates specific times when the feature length movie plays on the HPEDs before the feature length movie is publicly available for viewing by the general public in the movie theaters.

    1. This garbage about [fill in with latest QQ rant] immediately leaps to mind:

      Hmmm, that “immediately leaps to mind” rather evidences a purposeful obsession and hunt to show patents in a bad light.

      Not sure anyone else is so obsessed… (well, there is the obsession that 6 has with trying to control me with his passive/aggressive psychobabble….)

    2. The claim is ineligible because other than the legal, astructural “state” (“publicly” available) of the otherwise ineligible content (“feature length movie”), everything else is older than the hills.

      But go ahead and try to defend the claim. Or you can just sit there and spew ad hominems like a total dooshbag l0ser. Your choice.

      1. I care little for “defending claims” and more for having a meaningful (read that as intellectually honest) discussion of the law.

        You should try it some time.

  11. Justice Antonin Scalia disagreed strongly, signaling his displeasure by reading from the bench a statement accusing his colleagues of “judicial adventurism.”

    Too bad we didn’t get that in Alice, but I wonder if our shadow director may go before the Senate after this decision.

    1. You should have written “on behalf of the people where reason and the enlightenment mean nothing,” we are worried that our shadow director will have to be vetted before the public as questions as to her ties to Google may be uncomfortable and her intentions may also become uncomfortable. And we are hoping that in 2 or 3 years she can take her $10 million from Google with a cushie job without much notice.

      Is that what you meant, MM, oh he who lacks reason and loathes the enlightenment? The jihadist of the anti-patent crowd, MM. Broadly lacks reason.

      1. NWPA,

        Of course Malcolm is a hypocrite.

        After all, his number one posting tactic is:
        Accuse Others Of That Which Malcolm Does

        He is the master of the 1ie – and never ceases to label everything else as 1ies. What else can you expect from such an ideologue that maintains that intellectual honesty is not required on a mere blog because this is not a court? His advocacy here on this modern social media platform absolutely fails the standards for lawyers in – and critically – outside of the courtroom.

        Look as well to his usual tag team partner 6, who (while not under the same SELF-IMPOSED control that a lawyer may be under) nevertheless has admitted that truly anything goes on blog posts because “lawl is subjective and completely in the mind.” 6 as well refuses to even acknowledge the possibility of objective reasoning.

        This is all propaganda to Malcolm (and to a lesser extent the lemming lapdog 6), and because he truly believes that the ends justify ANY means, he has no compunction to violating ethical standards that real lawyers have made an oath to.

        1. And anon is really concerned about all that. In fact, he thinks about it nigh every day, or at least a few times a week, and reminds us of it all, all over again.

            1. And not only are you “concerned”. You’re concerned about this perceived ethical matter and other perceived ethical matters all the time. That’s what is colloquially known as a preoccupation.

            2. Nah – you are projecting this sense of “all the time,” as this is but one sliver of time.

              You may be confusing righteousness and your own lack of sense of objectivity in this preoccupation that you have with my views (while being so easy to overlook even more egregious behavior of others).

              Now that – that obsessive of me that you have appears to fit that the symptoms you are describing. Further, the lack of caring is evident in others, so when you say other’s care, well, you need some adjustment to your gauge reading.

              Further, as I explained to you previously (when I was trying to help you with your projecting “control” issues), the note on ethics has to do with the fact that real lawyers have real constraints (not ones that I impose). For some reason, you seem to have a real hard time with authority and you seem to bristle at the slightest notion that you really cannot just do anything at all that you feel like doing. It’s as if you are but still a child – a spoiled child – and you just don’t like all the “rules” that come with being an adult.

              Perhaps you want to share this with your doctor on your next visit….

            3. Righteousness?!? You’re going to go all religious terms on me all of a sudden?!? Seriously?

              But alrigh anon, you don’t think it happens all the time? K well ill just start counting how many times in a month you bring this or another perceived ethical issue up. And maybe well compare it to the amount of times the next greatest ethically concerned person brings these matters up.

            4. lol- again – your ‘take’ is off (and reveals a profound lack of understanding).

              “Righteousness” does not only carry a religious overtone. “Righteousness is a common theme in justice.

              The intersection of right and wrong within the realms of law, justice and religion do seem to confuse you.

              well ill just start counting how many times in a month you bring this or another perceived ethical issue up” LOL – again you miss the point – and the answer is NOT more focus on me 6. You might instead focus on the message, rather than the messenger.

              If you “got” the message, the chances are really good that that message would be presented less often. You really do need to have a fundamental grasp of ethics (you appear to think that a “sliding scale” is acceptable and that is decidedly NOT the case for those who have taken the oath of an attorney).

              Pay attention son – to the message and stop your obsession with the messenger.

              1. Ahh, my “take” is “off”. Once again! Lulz.

                But ok, so instead of religious, you’re going all “anon as a bringer of justice” instead? The deeper you dig, the more comical you become. Ha te to remind you, but you have 0 power sir. 0.

                And I’m not really confused by the intersection of right and wrong, I’m just not preoccupied with it. Like a normal person.

                And I’m not “missing the point”. I’m making a new point re re. Specifically that a simple recording of your behavior over a period of time might help you see that “you’re concerned about this perceived ethical matter and other perceived ethical matters all the time.” And I’m going to do it, and we’ll see.

              2. not digging deeper at all 6 – you are still doing that over-personalization thingie

                (facts are facts, law is law – whether or not it is I that points such out to you)

              3. “And for you, projections are projections.”

                Yep, not just for me, turns out that’s the normal way of relating to ones surroundings. Well, turns out you were right about my having learned something (in this case about psychopathy) and having projected it upon the thing in my surrounding that I thought fit it (you). That’s the normal way of relating to our surroundings brosef.

              4. There is nothing normal about the way that you do that projecting thing, 6 Nothing at all. I think you may have stopped reading way too soon.

                Either that, or you cannot bear to take a look at yourself, and just run away when you ‘get close.’

                Hmmm – running away, seems to be a symptom of you and your friends…

            5. What ethical rules bind a homeless person?

              You rather missed the point (no doubt because you were obsessing over the fact that it was I that presented the point), that the ABA Model Rules of Professional Conduct bind the professionals who have taken the oath of an attorney.

              I clearly differentiated you from that group.

              Pay attention to the message.

            6. …but more directly to your question centering around you:

              As a homeless person – posting under the guise of an employee of the United States Patent and Trademark Office – I would hope that you would want to appropriately reflect the station of your position and post with enough care for accuracy and forthrightness that such a position should bring (homelessness is rather a thoughtless red herring on your part).

              I would hope that you would realize that any posting in an intellectually dishonest and “whatever ends justify the means” – of “lawl is subjective and totally in the mind so whatever goes” manner brings disrespect and opprobrium to the Office that you (whether aware of it or not) represent.

              Do you understand this answer?

              1. I don’t know who told you I worked for the USPTO. Just a homeless person right here brosef. And as to dis respect and opprobr ium meh, all the people I know of irl that know of my writings rather like them.

                This may come as a sh ock to you anon, but a lot of people in the USPTO and the general population (a solid maj ority from my unofficial sampling) don’t like having the congressional entitlement program to promote the progress in the useful arts turned into a big f at fc king joke by you and your coho rts.

        2. Looks like Kookoo McPatentpants has been driven around the bend by a Supreme Court case that didn’t go his way.

          Boo hoo hoo hoo hoo!

        1. …tell me again who has had more posts expunged than anyone else COMBINED?

          That’s right: Malcolm.

          Try to believe it, folk?

          Um, it is rather easy to believe.

  12. Excuse me –

    Regarding this test for NON-Abstractness:

    “Improvements to the functioning of the computer itself”

    Given a generic computer that does not help me intermediate transactions, why is combining that computer with instructions that configure it to help me intermediate transactions via the establishment and maintenance of shadow accounts, not an improvement to the computer?

    1. Les, it might help you to mull over what is the “art” in which the improvement was made. Looking at the subject matter you claim, was the person who came up with the non-obvious new insight really a person skilled in the art of improving computers? Or was it a person involved in the field of trading or accounting?

      Or ask the inventor: have you just invented an improved computer, or was it an Invention in accountancy and trading?

      1. …or ask Lemley and his Team Inventor approach.

        MaxDrei, the (small) problem with your direction is that the modern view of invention is often not constrained to a single inventor, nor a single art field.

        This too reflects the trailing edge of the dual-edged KSR sword. The unforeseen (at least seemingly so) consequence to the Court’s attempt to make PHOSITA more than a mere automaton was to reduce the level of what is required to be submitted in subsequent applications. This is because the Court did not change (one wonders if they even realized) the fact that an applicant need not include that which is “common” in the application. This applies fully to the Team Inventor concept, and a single inventor now is automatically considered to have on his team all the things that KSR provides.

        This same concept is why Malcolm’s “must be physical” is such a canard. I have shared previously the fact that “to be configured” is so powerful precisely because of this concept. Team Inventor need not show the type of structure of precisely how the physical structure is changed because for the art to which the invention pertains – in a Team Inventor world – this includes de facto the actual structure of software (by which it is known in the software arts that this means software captured in a media, thus necessarily having physical structure). It is simply not helpful at all (in fact it would be unhelpful) to have to capture the physical structure as Malcolm would desire with a 14,357 page single claim. Now he may whine all he wants about “grownup arts,” but that’s all that such is: whining.

        Back then to your question of Les: “Or ask the inventor: have you just invented an improved computer, or was it an Invention in accountancy and trading?

        The answer is both – an improved computer, wherein the improvement is related to accountancy and/or trading.

      2. I think the proper judge as to whether the computer was improved is the person or persons that paid for the instructions and installed them in his or her computer and got assistance in inter-mediating transactions via the establishment and maintenance of shadow accounts.

        Surely Max, you are not suggesting that whether or not something is an invention is dependent upon the education or interests of the inventor, are you?

        1. The current “judge” is neither the inventor, nor the invention’s user.

          It is the person having ordinary skill in the art to which the invention pertains, with that legal person being informed by the specification.

          Pound the law.

  13. A brief comment regarding vagueness and judicial restraint:

    There is a far cry difference between creating vagueness after violating the separation of powers doctrine, writing patent law and then refusing to define critical elements of the newly created patent law

    and

    exercising judicial restraint by recognizing in the first instance the proper domain of writing patent law as belonging to another branch of the government, and noting that any change in the law – no matter how much desired on an ideological basis – must be completed through the proper channels.

    The new Office protocol sounding as it attempts to do in “NO NEW LAW” shows more appreciation for Rule of Law than the Court that is on a frolic.

    I wryly note that Malcolm missed the chance of repeating his Prometheus debacle by being the first to provide a hyperlink to an Official statement that completely ignored his pet theory and hinged on an element [integration] that he de facto ASSUMES not in place with his pet theory.

    Better luck next time Malcolm.

  14. Suppose my invention is a better way to process data, thereby to enhance on a screen a grainy image of (say) a biting event on a soccer pitch or a potential military target. Conventional camera, data processing machine and Screen. Just the data processing is new and inventive.

    Eligible? Technical? Abstract? Patentable?

    1. Hmmm,

      Maybe we can ask Arrhythmia and their better looking sine wave heart rhythm depiction (using only existing hardware)…

      But, hey, if we don’t actually define any of the words, who will know what?

      1. I “know what”, in Europe, without needing an express definition of “technical”. Does anybody doubt that image enhancement algorithms fall within the scope of the useful arts? Question is though: do they fall within the new USPTO Guidance?

        Prof Chisum just told us that technical is the word used today instead of the “useful arts” of the 18th Century. Paul Cole told us that the “discover” of the patents clause means “disclose to the USPTO” and you then immediately complimented him on what a good post he had just made. So, for you, is image enhancement technical? Or is that question too difficult for you?

        BTW, if 18th Century “discover” really did mean “disclose to the PTO” then the Framers were indeed contemplating a First to File System, weren’t they?

        1. While you probably meant “Does anybody doubt that image enhancement algorithms fall within the scope of the useful arts? ” to be a rhetorical question, the comments of MANY here cast that assumption of yours into doubt.

          Do you really not see that there are people who post here on a regular basis that would – in fact – not only “doubt,” but would exclaim that such (lacking claims in detailed physical structure) do NOT fall within the scope of the useful arts. Do you really not see that these same people are the same people with whom you routinely align with? People like Malcolm, 6, and Ned? Are you really that dense?

          My dear Prof Chisum is simply wrong about Useful Arts, at least in so far as that term has been determined to be NOT locked into the 18th century (which only makes sense given the context of dealing with innovation and the wanting to push into the unknown).

          You quite miss the point then, my dear MaxDrie, in trying to personalize as to if I (and I alone) find the question “too difficult.” You ignore reality all around you with your first assumption and lack of awareness.

          This is just yet another example of what a bonehead you are – the term bonehead meaning that instead of a brain, you have been blessed with additional calcium.

          So rather than try to kick up more dust with a totally disjoint “first to file” (which overreads “disclose” from a general disclosure to a disclosure to a singular governmental agency), try to actually THINK instead of your usual bumbling and stumbling about.

        2. (that mod filter is a pain in the @$$)

          While you probably meant “Does anybody doubt that image enhancement algorithms fall within the scope of the useful arts? ” to be a rhetorical question, the comments of MANY here cast that assumption of yours into doubt.

          Do you really not see that there are people who post here on a regular basis that would – in fact – not only “doubt,” but would exclaim that such (lacking claims in detailed physical structure) do NOT fall within the scope of the useful arts. Do you really not see that these same people are the same people with whom you routinely align with? People like Malcolm, 6, and Ned? Are you really that dense?

          My dear Prof Chisum is simply wrong about Useful Arts, at least in so far as that term has been determined to be NOT locked into the 18th century (which only makes sense given the context of dealing with innovation and the wanting to push into the unknown).

          You quite miss the point then, my dear MaxDrie, in trying to personalize as to if I (and I alone) find the question “too difficult.” You ignore reality all around you with your first assumption and lack of awareness.

          This is just yet another example of what a bonehead you are – the term bonehead meaning that instead of a brain, you have been blessed with additional calcium.

          So rather than try to kick up more dust with a totally disjoint “first to file” (which overreads “disclose” from a [TYPICAL] disclosure to a disclosure to a singular governmental agency), try to actually THINK instead of your usual bumbling and stumbling about.

          1. Very good example of what I am dealing with regularly.

            My prediction is that claims that are sufficiently narrow to be designed around will stand. Claims too broad to be designed around will be invalidated under 101.

            101 seems to work as a limitation of claim scope loosely based on logic. The logic is sufficiently malleable to be adapted to any invention anyway. The only question to be solved in a 101 analysis is whether the claims deserve to be invalidated because they pre-empt too much.

            1. My prediction is that claims that are sufficiently narrow to be designed around will stand.

              In many cases it does not and should not matter how “narrow” your claim is. If there are insufficient elements in the claim to drag the claim from the abstract into the eligible, the claim is still not eligible.

              For example, you can recite 500 paragraphs of extremely narrow and easy-to-design around limitations in your claim to a “A computerized method for delivering movie content to a user” but if none of those limitations are technical improvements to the signal-delivering technology itself (i.e., if the limitations simply describe some aspect of the movie, whether it’s a legal status, content, or some other status), your claim is still ineligible.

              This is basic, fundamental stuff. This is how the broken patent system gets fixed. Everybody knows why the grifters don’t like it. But they are going to have to get used to it.

              1. In many cases it does not and should not matter how “narrow” your claim is.

                LOL – the defender of the ultimate picture claim has so decreed.

                (PiKa – you forgot the “magic words” of Only Physical – which really does not exist in any legal authority, no matter how much Malcolm dissembles and tries to falsely implicate otherwise).

                /eye roll

              2. the defender of the ultimate picture claim has so decreed.

                Just stating a basic fact. The “narrowness” of the ineligible subject matter is irrelevant to the analysis. If you can identify an error in what I wrote, let everyone know exactly what the error is, in plain English. Try doing it without tripping and getting pigshxt all over your face for a change.

                Good luck.

              3. The basic fact that less than 5% of all claims with any meaningful coverage are of your picture claim “vintage?”

                Um, OK.

                Nice fact.

                Are you even closely cognizant of what that fact means?

                Do your clients?

              4. I see your point. Describing the type of movie will just reduce the domain of application of the method. “Significantly more” is not equivalent to narrow. I think it just means “will not raise the concern of excessive pre-emption in the mind of a judge”.

                But I do not see where the requirement to improve technology comes from. If the method of question improves the well-being of the user for example, I can’t think how the claim would be rejected.

              5. If the method of question improves the well-being of the user for example, I can’t think how the claim would be rejected.

                The “well-being of the user” test for patent eligibility?

                I assume you’re pulling everybody’s leg here.

              6. The basic fact that less than 5% of all claims with any meaningful coverage are of your picture claim “vintage?”

                Translation: “There are no errors in your comment, MM, but I’m a sick psy cho so I’ll just kick up some dust.”

            2. And, sure, 103 could theoretically work to address the sort of jnk claims I described (jnk that actually exists and has been asserted against others) except that “judicial activists” have injected all sorts of baloney into 103 in an effort to coddle the folks who try to claim jnk like that. Get rid of that baloney and then we’ll talk.

              I won’t hold my breath.

              1. LOL

                Malcolm dissembles YET AGAIN on a material point of law.

                So once again, Malcolm (and this time, no “Oooooohhh Shiny” nonsense response from you please):

                The default standard is patent eligible.

                The judicial doctrine constrained that default to certain situations.

                The exception to the judicial doctrine recognized that the judicial doctrine was being applied too far and beyond its intended reach, spelling out how the default standard of patent eligible remains in place.

                Your dissembling as to making it appear that certain wayward judges ADDED to what is patent eligible is plainly unethical.

                Are you really an attorney?
                Did you take an actual state bar oath that incorporates the ABA Model Rules Section 8.4 Misconduct?
                Do you recognize that this rule applies both in and outside of the courtroom?

                Let’s see some direct and honest answers that are on point rather than the typical non-answers and nonsense from your short script.

              2. The sick psy cho just can’t help itself.

                Did you take an actual state bar oath that incorporates the ABA Model Rules Section 8.4 Misconduct?

                LOLOLOLOLOLOL.

                Remember folks:

                NWPA June 24, 2014 at 9:11 am:

                …I’ve written what you just wrote many times. What you get back is a violent denial and threats. This group is little better than the fundamentalist that are raping and killing in Iraq. Reason and the enlightenment mean nothing to this lot.

                anon June 24, 2014 at 9:33 am, responding:

                They want their ends, no matter what the means.

                We’re all like rapists and killers according to these two pieces of human sk um. Yup. Really serious, really ethical people, these two. We should pay close attention to them, especially when they talk about “ethics” because they are really serious about it.

              3. Aside from the serious dust kicking (yeah, it is really noticeable that AGAIN you dodge any type of response on the merits to an accurate post concerning a law you volunteered an admission against interests as to knowing), you just love that self FAIL:

                Mindless Malcolm Nutshell response:

                What is there to address?

                You yourself show NO signs or any willingness to engage in reason. You yourself HABITUALLY engage in point blank unethical treatment of law, facts, and of what others post.
                Tell me Malcolm, when are you going to change from your own bankrupt posting style, and drop your short script tactics?

                Drop the ad hominem
                Drop the spin
                Drop the mischaracterization of law (including the exceptions to the judicial doctrine of printed matter)
                Drop the mischaracterization of facts
                Drop the mischaracterization of what others post
                And above all, drop the Accuse OthersOf That Which Malcolm Does.

                If your point is that you purposefully misrepresent what others post….
                … then your point is just another Malcolm Self-FAIL.

                Nice job. Run with that, pumpkin.

                Um – you really really love that self-FAIL feeling, don’tcha?

              4. You yourself show NO signs or any willingness to engage in reason.

                Jason and Dennis and David know that is utterly and completely false. So do most other folks who read this blog.

                Meanwhile, you and NWPA accuse people who disagree with you about software claims as being equivalent to “rapists and killers” who will, apparently, murder and rape people to get their way. And then you complain about other people being “unreasonable”???

                All this would be really hard to believe except that you’re s0ci 0pathology has been documented for years here.

                Get medical attention, man. Seriously. You need it.

              5. Not false at all.

                Hmmm, maybe that “reason” was in all those posts of your that were expunged….?

                That might be, as there is no reason shown in the posts that are left.

                Just:
                ad hominem
                spin
                mischaracterization of law (including the exceptions to the judicial doctrine of printed matter)
                mischaracterization of facts
                mischaracterization of what others post
                And above all, Accuse OthersOf That Which Malcolm Does.

                Something “witty” about “own that” comes to mind…

              6. The “well-being of the user” test for patent eligibility?

                MM, yes, the well-being of the user is a credible utility. 101 imposes a utility requirement to the inventions.

                I don’t know where the requirement that a claim should improve a technology comes from.

              7. PiKa,

                That’s the first time I ever heard of utility being phrased like that.

                But you are correct in that utility is a part of the 101 statutory requirement, and this brand new Royal Nine-scriviner “improve a technology” is nowhere to be found. It is clearly ultra vires to the law as duly written by Congress (you may recall that I asked for the Congressional reference point for this very thing and was met with only silence and some schlocky Court rejected MoT).

                The only place remaining is that it comes from the Court in violation of the separation of powers.

                Now Ned has taken a baby step in getting upset with the Court for its ultra vires “abstract” notion – let’s see if he can put two and two together and come up with the 4 that this TOO is just like the Court’s action with “abstract.”

              8. the well-being of the user is a credible utility

                I wasn’t questioning whether “well being of the user” is a “credible utility” under 101 (although I could question it, I suppose, if I felt like it). I’m questioning it as a test for subject matter eligibility.

                Consider: a process of thinking of sitting on a giant pink marshmallow covered with baby dragons that feeds you ruby grapes. That might provide you with a sense of well-being. You could certainly argue that it does and I’m not sure how the PTO could prove you wrong. And a mental process is certainly a process. Is that process eligible for patenting? Nope.

                How about a computer “configured” to display that image to you? Eligible for patenting?

                Nope.

                How about if the computer simulates the voice of Orson Welle’s repeating those words to you while you sleep. Eligible for patenting?

                Pretty sure that’s a big “no.”

              9. Malcolm,

                While your strawmen sure are pretty, by clarifying as to the point that PiKa was talking about credible utility (which is a 101 requirement and thus most definitely pertinent to patent eligibility), you seem far too dismissive of the point that he was trying to talk about.

                You might want to reel in your rants a bit when you are playing in the sandbox with others.

            3. “My prediction is that claims that are sufficiently narrow to be designed around will stand. Claims too broad to be designed around will be invalidated under 101.”

              That’s the point in some cases. Glad you’re catching on. It’s called “encouraging innovation” aka designing around the one patented solution to a problem to make a new solution. Of course, we can’t have you patenting “all solutions to x problem” or nobody else can get in on it and the constitutional purpose is frustrated. Personally I think it is wise policy. You get yours, others get theirs. You can get “theirs” too if you invent theirs before they do and file on it as well. But you’ll have to be extra innovative! There again, innovation is promoted.

              Though like MM states below there are other cases that there’s just nothing to be done to save the eligibility of the “invention” because every aspect of the “invention” is abstract or just fluff added for form.

              1. Making things easy to design around is NOT encouraging 6 – have you never heard the phrase “Necessity is the mother of invention?”

                You are doing that “pulling things out of your arse” thing again.

              2. “Making things easy to design around is NOT encouraging 6 – have you never heard the phrase “Necessity is the mother of invention?””

                That’s your take on it anon. And that’s fine. Your take happens to be the opposite of the take the USSC has on this matter. And that’s also fine.

              3. LOL – again with the over-personalization…

                You do that a lot, you know? Especially on objective things that you tend not to want to accept as objective.

                Here, the view is certainly not “mine” in the sense that you are using it. It is a well accepted notion in the studies of innovation and history.

                I suggest that you look into exactly why you seem not to want to accept it. I also suggest that you stop projecting your beliefs and your subjective view of those beliefs when it comes to such things. That tendency of yours makes it rather difficult for you to be able to reason in an objective manner .

                Just a suggestion.

              4. Yes anon I’m very good at spotting when some random as hat inserts his own views on a subject and how they may or may not conflict with the views of the people in power. I get paid to do that regularly.

                You want to beleib that everything you blather about is “objective” but it ain’t brosef. In fact you go on to admit that the basis for your beleif here today is mere common acceptance in studies by others. You do this sht on the regular, but thanks for copping to it this time. You’re incapable of understanding that common acceptance by other ta rds like yourself doesn’t make something objective.

                The supremes are entitled to disagree with both you and things that are commonly accepted by other tar ds like yourself.

                But I’ll remeber this the next time you’re crowing about how objective you’re being. I’ll simply ask if by “objective” do you really mean “commonly accepted by other tar ds similar to yourself and/or a certain court”. Because that actually fits quite nicely in pretty much all situations where you crow about your supposed objectivity.

              5. ah, the switch from passive to aggressive while projecting “beleib”…

                Um, you do realize that it is you and your “beliebs” that are the focus of being wrongfully touted as being right, right? You might want to stop projecting that “ You do this sht on the regular, but thanks for copping to it this time. You’re incapable of understanding” that you yourself are engaged in.

                Facts are facts 6 – you need to learn to deal with that.
                The law is the law 6 – you need to learn to deal with that as well.

                That is why I share the adage:

                When you have the law, pound the law.
                When you have the facts, pound the facts.

                When you have neither, pound the table.

                Pay attention to the message, son – do not obsess over the messenger.

              6. To your self-adulation of “Yes anon I’m very good at spotting when some random as hat inserts his own views on a subject

                Notwithstanding being a legend in your own mind (and the accolades of “you’re a genius” when your views align with Ned Heller’s crusades), Your ability to understand the conversation – as shown in your comments – is exceedingly low.

                The fact that you “get paid to do it regularly” is not an indication of your proficiency at doing it well.

                You seem to miss the subtlety that examination – by and large – is a problem oft whined about on these threads and the implication that such whining has for your professed “abilities.”

                But you do that march up lemming hill really really well!

        3. Does anybody doubt that image enhancement algorithms fall within the scope of the useful arts?

          Your making kindergarten-level arguments, MD, in a scenario where we have adult lawyers trying to turn the patent system into a rigged casino.

          First, it’s been settled for a long time that mathematical algorithms aren’t eligible for patenting, whether they can be theoretically used to “enhance an image” or to calculate the price of tea in China.

          Second, here’s an “algorithm” for you:

          “A method of enhancing an image, comprising looking at the image and determining if it needs to be enhanced, wherein if it needs to be enhanced, the image is subjected to enhancement.”

          Can I get that patented in Europe? Nope. What about in the US? Nope. Is that a problem? Nope.

          So what’s the answer? Stick in some limitation about a computer that performs some maths on some pixels? And if we don’t allow that to be patented, then nobody will develop improved image enhancement software because … “investors”? Is that the argument?

          1. See what you get from your erstwhile compatriot MaxDrei?

            Do you need a hand in removing that blade from your back?

            As I posted – you have assumed something to be reasonable and your own friends cannot see that reasonableness.

            1. Do you need a hand in removing that blade from your back?

              Blade in the back? I’ve been consistent and forthright about my position, and my reasons for that position, for quite some time.

              Rather than a “blade in the back”, it’s more like “we’re draining the pool to clean it so you kids should find someplace else to swim.”

              1. You are pretty dense there Malcolm – the quip was to MaxDrei who is often aligned with you and your views. Here, you have no compunction of dissing the view that he himself put forth as so reasonable as to be assumed to be held by all.

                Your beef isn’t with me on the particular point by MaxDrei, as I told him that “While you probably meant “Does anybody doubt that image enhancement algorithms fall within the scope of the useful arts? ” to be a rhetorical question, the comments of MANY here cast that assumption of yours into doubt.

                I will let MaxDrei defend himself against you (if he wants to).

              2. You are pretty dense there Malcolm – the quip was to MaxDrei

                I understood that perfectly. No idea why you’d think otherwise but go ahead with your weird fantasies.

                [shrugs]

              3. No idea why you’d think otherwise

                Um, maybe because of the way you responded….?

                You are doing that [shrug-look-at-me-I'm-an-@$$] thing again…

          2. And if we don’t allow that to be patented, then nobody will develop

            LOL – the entirely vap1d “but for” argument.

            How pathet1c.

            Hey, recouping is a worthwhile reason for having a patent system – but by no means can such a singular reason be SO twisted as Malcolm attempts to be held out as if that reason is not met, then no patent should be available.

            You really blow at this legal logic thingie Malcolm

            1. if that reason is not met, then no patent should be available.

              That’s not at all what I’m saying. I’m saying that if patents aren’t necessary to “promote progress” in a particular “art” or they tend to “get in the way” of progress in that “art” (and people skilled in the art are opposed to them), that’s a good reason not to pay too much attention to people who cry chicken little when that “art” is excluded from the system or encouraged to grow up a little bit.

              I respect people with the skill to write software that actually works. As for patent lawyers who sit around and dream about computer-implemented products and methods that they couldn’t make work if their lives depended on it …. not so much. Let’s encourage investors to invest in people who have better ideas than “use a computer” and more scientific skill than it takes to write a patent claim.

              1. LOL – you have no clue as to how innovation works, and you want to be the arbiter of “getting in the way” of progress?

                Tell me (on a related note), ever find that 1908 Supreme Court case – it had a nice little something to say about “getting in the way of progress” that you should understand.

    2. Max –

      I’m afraid the Supremes would impermissibly distill that down to the gist of “just focusing”, declare that focusing is as ancient as the first eyeball, further declare that since it is old, it is abstract, allege that your claim would preempt all focusing and therefore is not a method under 35 USC 101.

      “When the men on the chess board
      get up and tell you where to go
      And you just had some kind of mushroom
      And your mind is moving slow
      Go ask Alice
      I think she’ll know

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

      Feed your head
      Feed your head”

  15. Egad! Why does the PTO never get anything right? The PTO lists abstract ideas as being “Mathematical relationships/formulas” and then cites to Benson and Parker v. Flook. Benson involved an algorithm for manipulating data in a “reentrant shift register” in order to convert binary data to binary coded decimal (BCD) data. There was no “mathematical formula” and I find it hard to characterize this process as a “mathematical relationship”. I’ll have to reexamine Parker, but I doubt the claims there will fit into mathematical relationships/formulas, either.

    I can’t wait to see the bazillion of rejections we’ll be getting based on this crappy guidance.

  16. I think the invention of the “intermittent windscreen wiper” is a nice example for exploring the boundary between computer-implemented subject matter that is abstract and subject matter that is patentable.

    I Claim: A. An intermittent windscreen wiper.

    Brilliant Invention. Great contribution to the art. Flash of genius to conceive the concept. Implementation trivial. So the scope of claim commensurate with the contribution to the art is the scope that pre-empts the concept, as such.

    It would be hard to convince a jury that this subject matter is no more than “abstract”. Come on chaps! Let’s get real. It isn’t really “abstract” is it?

    But if we focus on one dirty spot on a windscreen, conventional windsceen wipers are already “intermittent” . So “more” is needed, just to get novelty.

    The wiper blade of an “intermittent” wiper is unchanged from the prior art “non-intermittent” wipers. So the novelty must lie in the drive to the blade. Claim the novelty. Claim the drive.

    I Claim: B. On/Off drive for a wiper blade, characterized by means to operate the blade intermittently.

    Is that enough to switch from abstract to non-abstract? Is my Claim B non-abstract? Is my Claim A abstract?

    1. MaxDrei the point is you don’t need a jury. Under Alice any judge can invalidate the claims without any factual evidence.

      1. And further the point is that this example illustrates that claims should not be limited to only disclosed embodiments or patent application will become ridiculously large (and include disclosure that is unnecessary.)

        Man, the Lemleys of the world never cease to bring in nonsense into the patent world.

    2. But if we focus on one dirty spot on a windscreen, conventional windsceen wipers are already “intermittent” .

      LOL – Would the person having ordinary skill in the art to which the invention pertains take such a pedantic read of the claim?

    3. “Characterized by” language is patent profanity in the States (man, you show your age with language like that).

      1. That from the poster who constantly castigates other commentators for failing to see the wood for the trees, or for barking up the wrong tree.

        Of course I know that in the USA one doesn’t write a c-i-t claim. But for drawing attention to the contribution the invention makes, I don’t know a more compact form of words than c-i-t to do the job quickly, clearly and cleanly.

        I don’t write claims to issue out of the USPTO. I leave that to US counsel (just as they rely on me to write claims for the EPO to issue).

        Now come on, try again. Let’s cut to Hecuba and seriously discuss “abstract” and what’s not.

        1. Now come on, try again. Let’s cut to Hecuba and seriously discuss “abstract” and what’s not.
          SCOTUS says a machine is an “abstract idea.” What could be more simpler than that?

          1. Even better is the desire to “discuss” when the Court point blank tells us: “No, we will NOT define that critical term.”

            Nice job Court.

          2. SCOTUS says a machine is an “abstract idea.”

            They never said that.

            Nice try, though.

            Meet your “intellectually honest” patent txxbxggers, folks.

            1. Actually Malcolm, that’s exactly what they said – given the stipulations made in the case.

              You really cannot stop spinning can you? You really have no clue as to which way is up, do you?

              1. that’s exactly what they said – given the stipulations made in the case.

                LOL.

                I’ll just reiterate and we can all see if the monkey can manage to pull his fingers out of his ears: SCOTUS never said that “a machine is an “abstract idea.”

                They did find that a claim was ineligible for patenting in spite of the fact that the claim recited a machine. Grown up adults can tell the difference.

                You should learn the difference, too. Your imaginary clients would probably appreciate that.

              2. Um,

                Not sure why you think reiterating is going to change what the Court said here: the exception applies to each and every category – (yes including machines)

                Did you miss the stipulated fact below?

                Do you have a clue? (granted, you having a clue is not a requirement)

            2. The question presented is whether these claims are patent eligible under 35 U. S. C. §101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement
              There was a claim directed to a computer system — an unambiguous machine. They said that the claim directed to a computer system was a claim directed to an abstract idea.

              The “abstract ideas” category embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.’ ”
              If they are saying that the machine itself was directed to an “abstract idea” then the machine is nothing more than an idea itself — so simple. Machines are just ideas.

              the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention
              If “ABSTRACT IDEA + COMPUTER = ABSTRACT IDEA” then “COMPUTER = ABSTRACT IDEA”

              At Mayo step two, we must examine the elements of the claim to determine whether it contains an “‘inventive concept’” sufficient to “transform” the claimed abstract idea into a patent-eligible application.
              Combine this with …
              At some level, “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___ (slip op., at 2)
              and you get the presumption that all inventions are nonstatutory unless proven to be statutory — rebuttable by a showing of an “inventive concept” that transforms the invention to patent eligibility. That flows directly from 35 USC 101, don’t you think?

              What is the inventive concept? Page 7 of the slip says:
              We have described step two of this analysis as a search for an “ ‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id., at ___ (slip op., at 3).
              Significantly more than a patent on the ineligible concept itself? An incredibly straight-forward concept to administer there. “Significantly more” — easily definable I say.

              1. Come now, Ohno, you just seemed bound and determined to have Malcolm (guffaw) tell you to grow up, or maybe if you are lucky to Fn grow up, or maybe, if you are really really really lucky, he will break out his “reason” and tell you to grow up in a way that gets the post expunged.

              2. Oh No, I fundamentally agree that the court is wildly astray in calling claims to real machines abstract. Historically, abstract has meant a disembodied idea not including any means or methods to carry out the idea.

                That is WHY the Supreme Court is wrong on its legal theory here and why everyone is confused.

                Non statutory – the analysis carried out in cases such as Hotel Security, Guthrie v. Curlett, is the only approach that makes sense, and it has the beauty to be consistent with Prometheus.

                The problems we are having here are caused by Bilski that ruled the MOT (which is the test described in multiple Supreme Court in defining Art) non exclusive and business methods statutory. That case is 100% out of phase with historical jurisprudence. (To some extent, we have Rader to thank for this, as he came up with the idea to call the claims in Bilski abstract without any explanation as to what he meant by that.)

              3. The problem, Ned – and the ultimate source of your confusion is that you have wiped clean from your mind the history surrounding the 1952 Act and the fact that Congress rescinded the Court’s ability to set the definition of “invention”** by the tool of common law evolution.

                You have yet to come to grips with this key fact.

                **the term includes the various and sundry offshoots such as gist of the invention and the term used in the conclusion of Guthrie.

                You further spin more wildly out of control trying to blame Rader, forgetting of course that Rader merely took the word used by the Court itself.

                So like you Ned – wildly blaming everything else in order to attempt to save your peculiar Ned-IMHO-Law world view. You complete lack of objectivity on this matter is most bizarre.

              4. anon, assuming arguendo that Congress wanted to limit the court’s common law ability to define invention, this still does not suggest that Congress intended to redefine patentable subject matter.

                Unless you can show me some congressional history to the contrary, I do not believe that Congress had any intention to overturn the cases regarding business methods and printed matter that held such to be nonstatutory.

                Not being within 101 has nothing to do with the level of difference between the claimed subject matter and the prior art to justify a patent.

              5. Tell me first Ned about the statutory case of business methods and the question that I have put to you about half a dozen times today – without a single answer yet from you.

                Can you do that?

              6. (sigh)

                And you STILL do not get that invention was carved out of 101, do you?

                Why do you think the power-addicted Court has hung their implicit writings hook on 101, when it would make eminently more sense to separate their “letters” and drop them in the corresponding mailboxes of 112 and 103? Read again Prometheus and the dead letter comment there.

                Use some critical thinking skills Ned. (yes, it might be necessary for you to put to one side your agenda – don’t worry, after you put it aside and use some critical thinking, after that, if you still want to pick that old agenda back up, no – save perhaps Ned Heller – can stop you)

    4. Claim: B. On/Off drive for a wiper blade, characterized by means to operate the blade intermittently.

      Is that enough to switch from abstract to non-abstract? Is my Claim B non-abstract? Is my Claim A abstract?

      Great question, MD. Better question: who gives a shxt about these
      hypothetical claims that are unenforceable under any patent statute? What is the point of wasting any time analyzing them?

      1. Malcolm, I don’t get it, that my wiper drive claim, filed long ago, when it was new, would have been “unenforceable under any patent statute”. So I don’t see why it is a waste of time discussing it. You yourself are forever tossing out hypotheticals for us to debate.

        I’m curious. Would you do me a favour? Assume (for the sake of argument) its subject matter is not old. Can you explain why it would have been unenforceable in Europe?

        Having now glanced at the 4 page USPTO Guidelines, I suspect that the eligibility of my claim is not questionable, for an On/Off drive for a wiper blade is not an “abstract” idea in anybody’s book.

        As to image enhancement, I had supposed the programming to be really quite heavy, but routine, being founded on a serious algorithm, the algorithm being the contribution of substance to the technical field of Image enhancement. My point is that such algorithms are “technical” and the sort of thing the patent system should protect, to promote the progress of useful arts, even without “significantly more” in the claim.

        You differ, I know. it will be interesting to see what the USPTO does to a claim to a computer configured to run such an algorithm. I suspect it will be more inclined to recognise the eligibility of such a claim if the EPO has already issued the self-same Claim.

          1. Um,…

            I don’t think MaxDrei wanted you to wait…..

            …I think that he asked you for answers.

            You do remember what giving answers is like, right? Should “Dennis and Jason and Dave help you out? (you might have to ask really nice of Dave, since your, um, “reason” kind of shut down the comments on the Hindsight thread).

          2. Malcolm, is that it? Your complete answer? If so, I’m relieved, because:

            1. Yes/No answers to questions about subject matter that sits on the margin of fitness for patentability are not possible

            2. From you I have come to expect provocative but intelligent postings and your answer I thought was both of those.

            My “serious” was a tease, because “serious” is a matter of degree, not a binary Yes or No.

            By contrast, the EPO’s “technical” is a binary Yes/No test.

            The USPTO Memo tells Examiners that Alice does NOT exclude software or business methods per se. I see that the USPTO is obliged to leave it largely open to Examiners, what is meant by “significantly more”.

            There is by now a rich jurisprudence at the EPO as to what “technical” includes and what is not “technical”. I imagine there will soon be a burgeoning of cases at the USPTO as to what “more” rises to the level of “significant”.

            All the same, if I have created an algorithm that significantly improves our ability to enhance fuzzy images (of moon landscapes or whatever) I would think that “apply it” ought to be all that I have to write in my patent application, for implementation is surely routine, to the PHOS in the art of computer-aided image enhancement.

            BTW, what is “ordinary”? SCOTUS members ought to have some skill in enhancing another sort of image, that of what is the law of patents. But is their level of skill in this art any more than “ordinary”. Who can say?

            1. So happy for MaxDrei to be able to winnow out a nugget of gold from Malcolm’s river of dross. A savant in the ability to pick out the signal from so much noise, while not being able to obtain a signal when the noise factor is far lower in other messages.

              As to “All the same, if I have created an algorithm that significantly improves our ability to enhance fuzzy images (of moon landscapes or whatever) I would think that “apply it” ought to be all that I have to write in my patent application, for implementation is surely routine, to the PHOS in the art of computer-aided image enhancement.” this is reflected in my comment regarding the modern notion (see Lemley’s views of the AIA) of Team Inventor and the trailing edge of the KSR sword.

  17. What would be especially helpful for everybody would be for the PTO to identify some claims that, in light of the PTO’s sudden appreciation of how the patent system is supposed to work, should never have been granted in the first place.

    This incredibly ridiculous piece of junkola (8,424,048, granted April 16, 2013) immediately leaps to mind:

    1. A handheld portable electronic device (HPED), comprising: a body having a display; and a processor for playing a feature length movie on the display, wherein the HPED purchases and downloads to the HPED, via a wireless connection to a network, the feature length movie before a public release date of the feature length movie, and plays the feature length movie on the display before the feature length movie is publicly available for viewing by a general public in movie theaters, wherein a private release group of the general public purchases and plays the feature length movie on HPEDs before the feature length movie is publicly available for viewing in the movie theaters, the feature length movie is subsequently available for viewing by the general public in the movie theaters after being played on the HPEDs, and each of users in the private release group designates specific times when the feature length movie plays on the HPEDs before the feature length movie is publicly available for viewing by the general public in the movie theaters.

    1. Oh yes, an HPED — the summarily morphed HPCD. HPCD the handheld portable cellular device gone electronic because it was discovered that smart cell phones are little computers that already connected to the clouds and networks and everything else just like electronic computers.

      Better is Claim 8 in this PT Barnum device, enabled with clairvoyance, mind reading and maybe time travel. We the presumptuous respect the inventive magic of the obviously undocumented theater release and personal timing arts. We do not want to steal somebody else’s IP and are wonder if we can get a licensed device before our indie film is optioned.

      Should We the People not wonder about the self governed, why no outcry? The AMA is not hesitant in criticism of quackery or snake oil, engineering journals examine failures, scientists decry pseudo scientific exploitation, do the claiming arts trump the useful?

  18. To reiterate comments I made elsewhere:

    Yes, “pre-emption” of ideas can be a problem, but it’s also at the very heart of what the patent system is. I’m concerned about how this abstract idea test is going to play out in relation to product claims.

    For example:

    Let’s say I realize that intermittent windshield wipers would be a great idea. I hire a patent agent and get a patent that claims an intermittent windshield wiper in broad enough language that essentially all mechanical intermittent windshield wiper devices are covered. (If my agent doesn’t do this, I sue him/her for malpractice). My patent issues and I’ve essentially claimed the “idea” of an intermittent windshield wiper, by pre-empting anyone else from using the idea of mechanical intermittent windshield wiping.

    If we’re going to apply the same reasoning as in Alice to product claims, wouldn’t these claims be rejected? Hasn’t 101 just eaten up all of patent law?

    1. How many times do we have to re-hear these reductio ad absurdum arguments?

      I hire a patent agent and get a patent that claims an intermittent windshield wiper in broad enough language that essentially all mechanical intermittent windshield wiper devices are covered.

      The only way to achieve that is a claim like this: “I claim an improved mechanical windshield wiper wherein said windshield wiper functions intermittently.”

      This claim is dead in the water for any number of reasons. But, yes, it would and should fail under 101. And why not? All you’ve done is fantasize about a function that would be desirable in a windshield and then recited that functionality. “Functionality” isn’t eligible for patenting. New devices are and if they are not described in structural/physical terms that distinguish them from the prior art all you are really doing is claiming your abstract idea about what your imaginary device achieves, and not the innovative work that actually achieves your desired result.

      Why should the patent system protect your fantasies?

      Hasn’t 101 just eaten up all of patent law?

      No, it hasn’t. Not even close.

      1. (and then reality comes back an someone points out that Malcolm’s “physical structure only” is NOT the law…)

        1. What about this:

          1. A windshield wiper system comprising:
          A blade mount;
          A flexible blade held in the blade mount;
          a wiper arm pivoltabley connected to said blade mount at a first end of the wiper arm;
          an motor;
          a motor linkage operatively connected to said a second end of the wiper arm at a first linkage end and to the motor at a second linkage end, wherein said linkage converts motor output to cyclic movement of the wiper arm and blade mount through not more than 180 degrees;
          a timer having a plurality of timer settings configured to control power delivery to the motor so that the motor intermittently through a single cycle of wiper arm movement, wherein the timer settings select a plurality of dwell or pause times between the intermittent periods of power delivery, thereby providing intermittent wiper control.

          Supremes: Wiping is as old as A$$es. Intermittent wiping is equally old. We haven’t wiped our….. glasses…. in years…, the claim merely instructs one to wipe when one wants. It covers the abstract idea of wiping once in a while. Therefore, the claim does not recite a machine.

          1. Yeah idk les, but off hand I’d say that would like be fine. The only thing that ultimately would concern me is the whole “configured to”. Since that is likely where your claim departs from D1. Otherwise, you’d just throw the timer on there sans the configuration stuff.

      2. Good example. The thing that those people that characterize this as functional do not get is 112. You have to enable it. And under LizardTech if you claim too broadly then you could lose your claims.

        So, that is the way real patent attorneys think about this. The rest of this nonsense is fueled by anti-patent big corp.

        1. “The thing that those people that characterize this as functional do not get is 112. You have to enable it.”

          I sort of agree re the enablement req. You certainly have to do that as well. That is an additional req and likely would not be met by the famous inventor that came up with the intermittent wiper if he tried to do MM’s claim.

        2. “Real Patent Attorney”: Lizardtech was not an enablement case, it was a scope of description case.

          It is, presumably, the same issue that AR would have: He would describe one enabling means, claim the entire genre and get it kicked on written description as well. That being said, AR would also have an enablement issue as well as WD and 101.

          1. RandomGuy, you wrote the first comment I have read in this thread that didn’t feel like it was turning my brain to mush. Thank you.

            Until there’s a filter to remove MM and anon (and usually NWPA and Ned), it’s not even worth traveling down here to the comments.

    2. “My patent issues and I’ve essentially claimed the “idea” of an intermittent windshield wiper,”

      A windshield wiper isn’t exactly abstract. So I wouldn’t say that the “idea” of an intermittent one was an abstract idea.

      1. 6 A windshield wiper isn’t exactly abstract. So I wouldn’t say that the “idea” of an intermittent one was an abstract idea.

        “An idea about a computer that does everything.”

        Abstract or not?

        Seems pretty darn abstract to me, regardless of whether “a computer” “isn’t exactly abstract.”

        You aren’t entitled to a patent on an apparatus just because you have “new non-obvious idea” about a desirable apparatus. You are entitled to a patent only when that idea is brought down to earth in the form of a structure (whether an actual object that you’ve created or an object that you’ve constructively reduced to practice) that is described in such a manner that it can be compared to the prior art and potentially infringing art in structural terms. Once you stray from this, the system breaks down into speculation and grifting. That’s not a prediction. That’s an observation. But it was predictable. And people did predict it.

        1. LOL – battle of the witless, between “picture claim boy” and the “huh-what’s a ladder of abstraction?” kid.

          Popcorn, get your popcorn here!

        2. Except it isn’t an idea. It is an invention that is enabled and described in functional terms to cover the many embodiments that one skilled in the art could figure out how to make the invention without inventive activity.

          So, let’s try to figure that out. I know that Lemley has pushed this hard and if you read his ridiculous paper you will see that it is deceptive at best. Lemley also harkens back to a time that never existed and uses examples that are not representative of the eras.

          So, please try to stop being a jihadist MM.

          1. “make the invention without inventive activity.”

            You say “without inventive activity” but according to you, coming up with your own algorithm is “inventive activity” and I presume they’ll likely use a slightly different algorithm in many cases. Analogously, coming up with your own intermittent wiper system may well involve inventive activity.

      2. A windshield wiper isn’t exactly abstract.

        How do you know? What is your definition of “abstract?”

      3. A windshield wiper isn’t exactly abstract. So I wouldn’t say that the “idea” of an intermittent one was an abstract idea.

        Of course a particular windshield wiper isn’t abstract. But he’s not claiming a particular windshield wiper, he’s claiming the concept of a (itermittent) windshield wiper. Any wiper regardless of form that does the wiping. That’s the pinnacle of being disembodied and abstract.

        Imagine if AR was the first to drop a combustion engine into a four wheel vehicle. Would that give him rights to his particular car? Of course. Would it give him rights to exclude all other cars regardless of how different they are in form and function? Of course not. Yet he wants the same amount of protection for even less disclosure in his wiper example, since it appears he doesn’t even disclose even a particular wiper, just the general idea.

      4. A windshield wiper isn’t exactly abstract.

        Kitchen.

        Now, with that prompt, when I say the word “table” what EXACT physical structure comes to mind?

        What are the odds that a claim – a picture claim drawn down to the last bolt or rivet will match anyone else’s picture?

        Then consider your typical double edged sword (as in a non-anti-patent view of KSR, and that cases call for protecting the scope of previous patents): Do you protect previous patents with a scope that captures the excessive multitude of possible distinct (picture) claims, or do you ALLOW patents for each of the excessive multitude of possible distinct (picture) claims?

        When one takes a step back and views the entire picture [sic], whether one is anti-patent or not draws a sharp focus.

        The ability to employ critical thinking reveals the usual suspects for their anti-patent ways.

        (and for added fun, repeat the “table” exercise with the phrase “grain threshing equipment”)

    3. Let’s say I realize that intermittent windshield wipers would be a great idea…broad enough language that essentially all mechanical intermittent windshield wiper devices are covered.

      Your fears are well founded, those are exactly the kind of claims that should fail. How is this different from Morse saying he wants to cover any machine that prints at a distance regardless of how it is achieved?

      wouldn’t these claims be rejected? Hasn’t 101 just eaten up all of patent law?

      There is, of course, a narrower claim that would be valid. But you want more than that (which happens to also be more than you invented anyway) and now you might not get it, so I guess that means the whole system has failed.

      1. How is that different?

        Um, read what he actually said (and note what he did not say – like what Morse said) and leave your strawman at the door.

    4. AR, I tend to agree with you that very broad patents that express otherwise eligible subject matter so broadly as to be beyond the scope of enablement or description are not 101 problems, but 112 problems.

      We say loosely that ideas are not patentable. True. But some ideas are statutory if enabled an some ideas are non statutory regardless of the degree of enablement.

      Take Bilski for example. The subject matter there was fully described, enabled and limited to what was described and enabled. This was not a claim in the abstract and regardless of the holding of the Supreme Court, abstractness was not its problem.

      The problem with the Bilski claims were that they were non statutory, business methods not defining an eligible process. See, Hotel Security, Guthrie v. Curlett and In re Patton.

      But a windshield wiper or a windshield wiping process are both statutory. The claims, if fully enabled and described, are eligible. If they are not fully enabled and described, they have a problem under 112.

      1. AR, I tend to agree with you that very broad patents that express otherwise eligible subject matter so broadly as to be beyond the scope of enablement or description are not 101 problems, but 112 problems.

        See may other concurrent posts – ask yourself WHY is the Court so bent then on using the hook of 101?

      2. And then remind yourself as to which branch of the government gets to set patent eligibility (hint: it aint the judiciary)

      3. Read again in the materials provide to you that it was Congress that was enraged into action to curb the Court’s excesses.

        You desire to cite to those excesses, well, does not carry the weight that you think it does.

  19. At last, a welcome bit of sanity returns to the patent system. Those who prefer that the system remains broken and subject to easy manipulation by lawyers who couldn’t innovate a technological improvement if their life depended on it will surely screech and howl, as they always do.

    The rest of us should rejoice. The bugs will get worked out soon enough.

    There’s more to come, folks!

  20. This is a slow retreat from the Rich era. It seeks to cabin abstract ideas.

    The PTO needs to get out in front in order to clarify the law.

    May I suggest they add to the list “printed matter,” information or facts; music; and anything and everything else that is neither a machine, manufacture or composition, including, but not limited to the abstractions involved in numbers including price, risk, value and the like.

    1. If by “Rich Era,” you mean the actions by Congress as reflected in the (properly) authoritative Patent Act of 1952…

      … congrats on inviting the executive branch to join your bloodless revolution.

      (and you don’t even have to get to your canard of Non-Useful Arts)

      1. The ’52 Act did not change 101 in substance.

        With minor changes, 101 has remained the same since ’93 – that is, 1793 and it was written by none other than the estimable, Thomas Jefferson. Jefferson did was delete “engine,” “device” and “discover,” and add “new” and “composition.”

        The change clearly was intended to exclude the discovery of old compositions as eligible.

        But, if something was neither an Art, machine, manufacture or composition, it was not eligible.

        For Art, see O’Reilly v. Morse:

        “Some, if not all, the traits which distinguish an art from the other legitimate subjects of a patent, are stated with clearness and accuracy by Mr. Curtis, in his Treatise on Patents. “The term art, applies,” says he, “to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means, by which the principle is applied, are incidental only and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article is old, but the invention consists in a new process or method of producing such result, effect, or manufacture.” Curt. on Pat. 80″

        And, this from Federal Statutes Annotated, 2d Ed. (1918), at 35,

        “An art is a mode of treatment of certain materials to produce a given result; and act are series of acts they be performed upon the subject matter to be transformed and reduced to a different state or thing.” The long list of cases includes Morse, Corning v. Burden, Mowry v. Whitney, Burr v. Duryee, all Supreme Court cases.

        From this, Art does not include dance lessons, printed matter, methods of doing business or of training cats or of a new form of music. Rather, it is the well recognized MOT.

        Mein Gott! did Bilski screw up patent law.

        1. In contrast, “abstract” was consistently used to refer to principles in the abstract, a definition of the solution to a problem at such an indefinite level as to be little more than an idea.

          There is a real difference between “abstract” and non statutory. Clearly, when Bilski and Alice used the term “abstract,” it mean, non statutory. But such a conclusion might be wrong given Bilski’s holding that business methods were statutory.

          1. Clearly, when Bilski and Alice used the term “abstract,” it mean, non statutory. But such a conclusion might be wrong given Bilski’s holding that business methods were statutory

            Clearly your shaky Ned-IMHO Law scheme is falling apart.

        2. The ’52 Act did not change 101 in substance.

          No matter how many times you repeat this, you will still be wrong in your far too myopic view.

          You fit the adage: there are none so blind as those that refuse to see.

          How is that logical rebuttal coming along about a Congressional defense to something you claim is non-statutory (and if in fact were non-statutory, would need NO defense)?

          You kind of go quiet (again) in the face if simple and direct logic. Why is that?

    2. Ned: May I suggest they add to the list “printed matter,” information or facts; music; and anything and everything else that is neither a machine, manufacture or composition, including, but not limited to the abstractions involved in numbers including price, risk, value and the like.

      Absolutely. The PTO needs to acknowledge that the so-called “printed matter doctrine” is just eligibility in mis-fitted 103 clothing. The CAFC did as much already in Astrazenca LP v. Apotex (Fed Cir 2010) (“This court has generally found printed matter to fall outside the scope of § 101. See In re Chatfield, 545 F.2d 152, 157 (CCPA 1976) (“Some inventions, however meritorious, do not constitute patentable subject matter, e.g., printed matter . . . .” (citation omitted)).”

      Common sense and basic logic leads one quickly to the conclusion that any “exceptions” to the so-called “printed matter doctrine” (which has never been limited to “printed” matter only) are found by application of the same principles that the Supreme Court has provided to guide applicants regarding eligibility, no more and no less.

    3. May I suggest they add to the list “printed matter,” information or facts; music
      A claim directed to “if A occurs, perform B” is a claimed that involves “information.” “A” could be the number of cars on a roadway, the distance from one component to the next component, or a temperature within a mold cavity. The performance of a great many method steps are conditioned upon information with that “information” being part of the invention as a whole. You really need to rethink what you are asking for.

      As for “printed matter,” nobody claims printed matter, per se. As such, it wouldn’t be an appropriate characterization of nonstatutory subject matter. The printed matter doctrine is a judicial exception to the requirement that all worlds must be given meaning. The policy for the printed matter doctrine is to prevent the re-patenting of an old structure by the addition of printed matter that has no functional relationship to the substrate.

      1. Oh No, you are quite right that no one would claim printed matter, information or music as such. But the case law I have been quoting for awhile now has the same analysis as in Prometheus and Alice: if the novel subject matter in the claim is ineligible, and the eligible subject matter is old, then the claim is unpatentable unless the ineligible is integrated, as in Diehr.

        1. if the novel subject matter in the claim is ineligible, and the eligible subject matter is old, then the claim is unpatentable unless the ineligible is integrated, as in Diehr
          There was no “integration” in CLS? What is integration anyway?

      2. I have held Ned’s hand through a step by step easy to follow logical Set theory explanation of the exceptions to the judicial doctrine of printed matter.

        He simply is not interested in a correct understanding of the legal concept.

        Such just gets in the way of his agenda. Eyes become tightly clenched.

  21. Here is what I just posted on another patent law blog:

    Gene, you tell us, of the “significantly more” conundrum, that:

    the USPTO explains that the following “may be enough to qualify as ‘significantly more’ when recited in a claim with an abstract idea”: improvements to technology or technical field, improvements to the functioning of a computer itself, limitations that link the abstract idea to a particular technical environment.

    This set me wondering whether the USPTO is poised to segregate the claim’s “more” into that “more” that is “technical” and that “more” that is not technical, just like the EPO. Could it be that, from now on, based on Alice, the USPTO will judge patentability (both novelty and non-obviousness) on such “more” as is “technical” and disregard the rest as having a contribution to novelty or non-obviousness? You already have a printed matter doctrine. Is that Doctrine now set to be beefed-up, into a “non-technical doctrine”? Heads up!

  22. As to “Certain methods of organizing human activities“,
    I note the screaming silence of all those clamoring to give non-circular definitions of “technological;” and will hint that a certain definition is published (as I recall) that contains the very phrase I repeat with this post.

    Hmm, something about defining black as white comes to mind… ;-)

    1. anon, so long as they stay away from the third rail, the statute itself, both the PTO and the Supreme Court will be happy. This way, they can make it up as they go along and simply ignore the words of Congress.

      I liked this from Scalia’s dissent in American Broadcasting:

      “That leaves as the criterion … nothing but th’ol’ totality-of-the-circumstances test (whichis not a test at all but merely assertion of an intent to perform test-free, ad hoc, case-by-case evaluation).

      Yeah, the Supreme Court at its finest.

        1. Bingo. No one is even bothering to mention the statutes anymore.
          Read CLS and KSR and a detailed discussion of the statute and what the statutory language of 101, 103 means is absent.

      1. I liked this from Scalia’s dissent in American Broadcasting
        We actually find some common ground. I would say Scalia’s comments fit the “abstract idea” test perfectly. In fact, most of SCOTUS’s previous attempts to provide “flexible” tests in the patent realm are well-characterized by Scalia’s quote.

    2. I note the screaming silence of all those clamoring to give non-circular definitions of “technological

      (i) Expressly recited structural improvement to an existing machine/composition/apparatus, or (ii) a new combination of steps leading to either a previously undisclosed transformation of matter and/or an improvement described in (i).

      Just for starters. I encourage and welcome any constructive suggestions for improvement.

        1. MoT (even in sheepskin) has been tossed out by the Court itself

          What was tossed out is the idea that any tangible machine recited in a claim suffices for eligibility. What was kept was the idea that the presence of a machine — particularly a new machine described in structural terms — was an important and useful clue for determining eligibility.

          How many times do you need to told this before you stop l y i n g about it, you p a t h e t i c f u c k w ad?

          1. Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.”

            The Court is unaware of any “‘ordinary, contemporary, common meaning,'” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.

            1. The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article.

              That’s fine and dandy. Bilski was a Court in complete flail mode. They got the right result but they couldn’t agree on the reasoning. They were, as they put it, “unaware.” Not everyone was “unaware.”

              Are they still “unaware”?

              Since then, the Court has begun educating itself and is certainly realizing that “processes” that are neither embodied in a new machine (structurally described) or that do not result in a new transformation of matter are either abstract or non-technical, pretty much by definition.

              Let me know when the Supreme Court holds that a claim in the form [oldstep]+[newthought] is eligible for patenting. There is no possible way for a claim in that form to be “integrated” — it doesn’t matter what the “old step” is and it doesn’t matter what the “new thought” is. The Supreme Court has not indicated that it is “aware” of such a claim. Neither has anyone else. There’s a very good reason for that.

              Certain people seem desperately in need for the Supreme Court to hold their hand and walk them through these basic, fundamental tenets of any workable patent system. Why is that the case? I think most of these people are simply trying to create confusion because as long as there is confusion there is always a glimmer of hope that their jnky abstract claims will be granted and a chickenshxt defendant will blink.

              1. We don’t need to wait for SCOTUS to give us any further clarification or explicit permission to claim processes that don’t pass MoT.

                Their now-explicit opinion in Alice, refusing to move the goal posts WRT abstractness, cements in place the fact that patent eligible processes need not be tied to a machine or transform an article.

                It is up to lower courts and the Fed Ct. to define the boundaries of what processes are patentable despite not being tied to a machine or accomplishing a transformation. It’s called a gray area and the law is entirely composed of them.

                You may want or need more limitations placed upon subject matter eligibility and that’s your prerogative, but your desires and opinions don’t change the landscape of the law.

              2. Bluto,

                Malcolm likes to think that he is above the law, so how do you expect him to recognize what you are saying?

                I originally was going to say that Malcolm does not know what the law is, but he has volunteered admissions against his interests as to actually knowing what the law is, so I needed to modify my comment accordingly.

                It is an entirely different matter that even or rather especially knowing the law, Malcolm routinely chooses to advocate on this modern social media in a manner involving dishonesty, fraud, deceit and misrepresentation, which as such, is carried out in a definite pattern of repeated offenses and does clearly indicate a deplorable (and actionable) indifference to his legal obligations (if he is indeed an attorney).

          2. Malcolm you keep wanting to kick dust over the very real difference between “clue” and “requirement.”

            In clear direct and honest (that is, spin free), try understanding that ACTUAL difference. If you are brave enough, please feel free to demonstrate YOUR understanding by explaining that difference.

            Yes, we both know what happens next, right pumpkin?

            1. Malcolm you keep wanting to kick dust over the very real difference between “clue” and “requirement.”

              And you keep acting like an idi 0t who can’t tell the difference between a court saying “this is a very useful and important clue although there’s more work to do before we can say be sure it’s eligible” and a court saying “do not make the inquiry.”

              And we know why you’re doing that.

          3. And in direct response, you again accuse me of a lie, when I have said none. Why the dissembling on this Malcolm? Do you really NOT know the difference between a requirement and a clue?

            You don’t have a clue, do you?

          4. What was kept was the idea that the presence of a machine — particularly a new machine described in structural terms —

            When you engage in your AOOTWMD and call someone else a 1iar, you best not engage in such blatant 1ieing yourself.

            That kind of thing is captured in black and white, you know.

        2. You asked for a non-circular definition and you got it.

          If you don’t like the answer, that’s your problem, not mine. But nice try at kicking up some irrelevant dust.

          How are you advising your clients, by the way? Are you still blowing sunshine up their a x xes and telling them sweet, wallet-padding l i e s? Or are you starting to come down to reality with the rest of us?

          That’s a rhetorical question. We all know the answer.

          1. LOL – there you go again trying to personalize something for which you should know better.

            Hey, you don’t need to get mad at me just because I tell you something that is accurate. And yes, this is very much your problem if you are advising your clients with bad law.

            That’s not reality where you are “down at” – that’s called slime.

            No thanks – I will stay on the high road that you offer (albeit without recognition) to me on a consistent basis. Ah, the rewards of posting with intellectual honesty are great. Come up here to this reality some time.

  23. 6,

    Is “tangibility” gone as a test factor?

    This might mirror the Office evolution of the treatment of the (ill-formed) currently controlling law according to Nuitjen, which moved the emphasis from ‘tangible’ to ‘transient.’

    Of course, any sane person can look up into a clear night sky and see ample evidence of the inanity of considering wave forms ‘transient.’

    1. Why in the fricken’ world are we left to guess about what “abstract” means?

      This is not law.

      1. Why in the fricken’ world are we left to guess about what “abstract” means? This is not law.

        Mental steps, non-physical “relationships” (e.g., legal relationships, legal statuses and and correlations) and information itself are the quintessential examples of abstractions.

        How much more do you need? There are always going to be subjects on the boundary, as you know.

        1. MM, why don’t we define abstractions as generally anything that is non statutory that is not a law of nature or product of nature. (See, e.g., Hotel Security, Guthrie v. Curlett, and In re Patton.)

          Laws of nature are not new, and are non statutory for that reason. Flook, fn. 15.

          Products of nature are not new compositions and are non statutory for that reason. Myriad’s holding.

          1. It happens. I’ve got comments hanging out there in the ether as well. It’s pretty much impossible to figure out what triggers the moderation machine.

      2. Because “abstract” is not in the statute but was made up by the courts (because they were too lazy to invalidate using 112, 102 or 103 or their predecessors) — and if a hard definition is given to abstract then the courts are essentially legislating

      3. Likely because the justice’s couldn’t agree on a definition during their deliberations … but really, really, really wanted to issue a unanimous decision.

        Clarity and certainty for all be dam*ed.

    2. Of course, any sane person can look up into a clear night sky and see ample evidence of the inanity of considering wave forms ‘transient.’
      I also love how the USPTO has perverted the meanings of the terms “computer readable medium” and/or “storage medium” — terms that have existed in the art for many decades. The addition of “non-transitory” supposedly cures the problem except the term “non-transitory” has no art-recognized meaning and is arguably indefinite.

      1. It’s an unnecessary nonce from the get-go (as anyone who understands even high school physics could tell you)

        I am yet again reminded of the great and powerful Oz…

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