Update on USPTO’s Implementation of ‘Alice v. CLS Bank’

The following guest post comes from USPTO Commissioner for Patents Peggy Focarino and is a re-publication of what Commissioner Focarino published on the USPTO Director’s Blog.

Today I would like to address our ongoing implementation of the June 19, 2014, unanimous Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (Alice Corp.). In the decision, the court held claims to a computerized scheme for mitigating settlement risk patent-ineligible because they are drawn to an abstract idea. I want to share with you the steps we’re taking to implement the decision.

First, on June 25th, we issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp.

Second, the USPTO has applications that were indicated as allowable prior to Alice Corp., but that have not yet issued as patents. Given our duty to issue patents in compliance with existing case law, we have taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice Corp. To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.

We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions. After withdrawal, the applications were returned to the originally assigned examiner for further prosecution. Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn. (Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status.)

This limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).

Third, as we continue to study Alice Corp. in the context of existing and developing precedent, public feedback will assist us in formulating further guidance for our examiners. On June 30th, a Federal Register Notice was published to solicit written comments from the public on the preliminary examination instructions. The period for submitting those comments ended July 31, 2014. We appreciate the comments we have received to date. All input will be carefully considered as we work to develop further examination guidance, which we anticipate issuing this coming fall.

We look forward to working with our stakeholders in refining our examination guidance, and will continue to seek feedback as we implement changes as the laws evolve.

305 thoughts on “Update on USPTO’s Implementation of ‘Alice v. CLS Bank’

  1. Ned said:

    “anon, if one cannot “ignore” ineligible subject matter in conducting a 102/103 analysis, then one can effectively patent anything at all simply by adding in something, anything, eligible to the claim albeit that it is completely old.

    Take math.

    That is not eligible.

    Add a pencil and paper to perform the math and suddenly the subject matter is “novel” in a 102/103 sense even though the only thing new is the math?”

    But this is what the EPO does, and it works just fine, despite the cat-calls from the UK that it is “intellectually dishonest”. At the EPO, if you claim

    “1. A computer.” or “2. A computer running a business method” or 3. A computer-implemented business method.” or “4. A disc carrying a business method program.”

    it’s eligible because computers and discs have technical character and the patent system is co-terminous with technology.

    It works at the EPO because the EPO is civil law not English common law, and because the EPO’s “Problem and Solution Approach” to the analysis of novelty and obviousness makes an early breakfast of any non-technological stuff in the claim .

    I still think Randall Rader (often in Munich) found the EPO way rigorous, intellectually satisfying, and persuasive but got burned out by the greater pragmatism of many others, who realised how costly it would be, in the USA, to place the filtering burden on 102 and 103.

    1. Patent eligible and patentable = NOT a matter of “pragmatism of filtering burden.

      Our Congress acted with a reason for creating and separating these two notions in 1952.

      It is our law.

      Still.

      The Supreme Court does not have the authority to rewrite that law.

      1. 101? That’s the one that ties the pre-filtering for eligibility of subject matter to a matter of panning for the gold of subject matter that is BOTH “new” AND in the “useful” arts. I think SCOTUS is at last communicating to us effectively what, in the context of the Constitution, 35 USC 101 actually requires.

        As to patentable novelty, 102, that’s another issue altogether. We agree about that.

    2. It works at the EPO because the EPO is civil law not English common law

      Of course, the lesson to be learned here is that there is no patent common law as that term is meant in legal systems where it comes to writing the law for what is patent eligible.

      Reading a map is allowed.
      Writing the map is not allowed.

      This is directly tied to our constitution and the allocation of authority therein.

      Apparently those uneducated in law continue to confuse the authority granted by Congress in earlier patent law for the judiciary to develop the concept of “invention” with some wholesale free-for-all of common law.

      That authority was removed in 1952.

      Also those uneducated in law might miss that NOT ALL common law has been removed. Congress still allows common law development along the lines of equity in the enforcement phase of patents. See 35 USC 283 for how that allowance to the courts is worded. No such words exist in 35 USC 101.

    3. Max, I think we already discussed this problem before in that, in Europe, technology can be taken into account in determining “inventive step” because “invention” is what is being determined. In contrast, by the time one gets to the 102/103 filter in the United States, it is assumed that one is analyzing patentable subject matter so the only question left is whether the differences between the claimed subject matter and the prior art are obvious, not whether those differences are directed to an otherwise patentable invention.

      This is why those who advocate moving the analysis of patentable subject matter from 101, to 102/103, thoroughly misunderstand the inquiry. Moreover, those who advocate removing novelty from the analysis of patentable subject matter in 101 also thoroughly misunderstand the inquiry.

      The Supreme Court likes to do the analysis by first identifying whether the claim is directed to ineligible subject matter. It then determines whether enough new, but eligible subject matter is present such that a meaningful inquiry can be conducted under 102/103 to determine whether that additional, eligible subject matter is patentable. But this inquiry also could be framed as determining what is new in the claim and whether that subject matter is eligible.

      However, we cannot adopt the European approach because of the history, background and the wording of §103 that is designed to prevent any inquiry there as to whether the subject matter being claimed is otherwise statutory.

      1. Thanks Ned. You write:

        “we cannot adopt the European approach because of the history, background and the wording of §103 that is designed to prevent any inquiry there as to whether the subject matter being claimed is otherwise statutory”

        I defer to you on US law. However, I am not yet convinced. The EPC 103 provision (Art 56, EPC) reads:

        “An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art”

        Nothing there about “technical”. Yet the EPO manages to give no patentable weight to non-technical inventive steps (in accountancy, tax saving, book plots etc). For the EPO, the only kind of inventiveness that “counts” is the sort of inventiveness that corresponds to a patentable invention, that is to say, a non-obvious solution to a problem found within the useful arts. That’s no more than commonsense and SCOTUS is not afraid to invoke commonsense when it suits it to do so. What is to stop SCOTUS making just such a pronouncement (except the shame of once again following a path pioneered by a foreign Patent Office). I don’t see it yet.

        1. The shame would be SCOTUS actually listening to you and “following a path” that lies in foreign law and not in US law.

          Reading the map is not the same as writing a map.

        2. Max, I would like to point out that the EPC statute still considers “the invention.” It does not consider, as in the US statute, “the differences.”

  2. From 17.1.5.1.2.1.1

    “What if neither the “doing something” nor the “thinking” are new taken in isolation, but the combination of the “doing something” and the “thinking” is new?”

    is I suppose yet another way of exploring whether it is legitimate to “dissect” a claim when considering its eligibility.

    It set me wondering whether it makes any sense, to talk about a “combination” of an old act with a new thought. The old act takes place wholly outside the human brain. The new thought takes place wholly within the human brain. How do you “combine” them? How do you even collocate them (or even bring them into any sort of intercourse, the one with the other)?

    Could Anon2 come up with an example of “the combination” so I can think about it some more?

    1. For some reason this is stuck for moderation. Trying again to see if it works:

      “This is going beyond the purpose of the initial example. My thoughts are that in general it does not make sense to claim an abstraction as an element i.e. as part of what the invention “comprises” as opposed to context or starting material etc. I merely observe the single category “process” can include both an abstract process and a tangible process.

      I agree that in general an abstraction plays no part in anything claimable as tangible. You need not claim a piece of clay “combined” with (a mystic@l) purely abstract Platonic spherical form, to obtain a roughly spherical real piece of clay… you need only claim the real piece of clay in the form (substantially) of a sphere. You need not claim a process which is a combination of one actual process step literally directed (impossible) by an ephemeral abstract intrinsic pattern of repetition… you need only claim actually doing the process steps in the particular manner i.e. with repetition.

      There is no argument that the real things can be represented by abstractions, or that the use of abstractions can lead an inventor to develop a real thing, but the patent drafter ought to describe and direct his claim to the real thing.

      I agree that dissecting claims is problematic. I would prefer the test to be whether a claim as a whole is patent eligible not whether this part or that part is.”

      1. If “claim as whole” means that if any part of the claim, however old, is statutory, then the 101 becomes a meaningless farce.

            1. Truly not.

              If you understood ANYTHING from Frederico, you would understand what Congress was up to in the 1952 Act.

              IF – as you would have it – 101 (patent eligible) were not distinct from 102/103 (patentable) then Congress would not have set them up so.

              You continue to purposefully conflate patent eligible and patentable. These are two distinct concepts. You have an ethical duty to recognize this.

              1. anon, if one cannot “ignore” ineligible subject matter in conducting a 102/103 analysis, then one can effectively patent anything at all simply by adding in something, anything, eligible to the claim albeit that it is completely old.

                Take math.

                That is not eligible.

                Add a pencil and paper to perform the math and suddenly the subject matter is “novel” in a 102/103 sense even though the only thing new is the math?

      1. Did you include a gen- word?

        Until there is a genuine combination separate consideration of elements is not “dissection”.

    2. Place an egg into boiling water, count to 12, remove egg.

      Place an egg into boiling water, count to 50, remove egg.

      1. Nice one Ned. A 3 step method, with the middlestep, timing, one that can be effected by thinking. Its not thinking that cooks the egg though. Its the timing.

    3. How do you even collocate them (or even bring them into any sort of intercourse, the one with the other)?

      That’s not a serious question is it?

      If it is, then mechanism reply set to “You are a f001″
      If it is not, then mechanism reply set to “Don’t try my patience, f001.”

      That’s the problem you have with your dissection – it distorts what the claim as a whole is.

  3. Anon2 — it’s refreshing to find yet another commenter making an apparently bona attempt to break things down. I’ve presented lists of abstractions similar to yours many, many times here over the past several years. It’s useful to remind people that not all “abstractions” are difficult to identify as such lest we are subjected to endless commentary along the lines that “the term ‘abstract” is meaningless and every patent is now threatened!”.

    Abstractions are disembodied ideas. Thus, all information — facts, non-facts, dreams, fantasies, correlations, history, myth — is abstract and ineligible (of course; you’ll note that “information”, like, “abstractions”, is also not included in 101). It doesn’t matter how useful or suprising or valuable the information is. You can’t protect it with a patent. Thus, if you can identify a situation where an otherwise lawful actor (e.g., someone practicing the prior art) is turned into an infringer of a claim because he/she “determined” or “thought” something that was disclosed for the first time in a patent specification, then that claim is ineligible (please feel very free to be the first person to identify an exception to this fundamental rule).

    Note that the term “algorithm” is considered by many to be consonant with the term “process” (at least in this context). Thus, while some “algorithms” are surely ineligible for patenting (e.g., algorithms performed entirely in the mind), others may be eligible (e.g., algorithms which necessarily include novel steps involving transformations of matter).

    Note also that the mere assignment of meaning to information/data is also abstract. Claims, therefore, which recite nothing new except for some “new” information (typically received/stored/transmitted by a ge neric computing machine) are also ineligible according to the same logic: they remove ineligible subject matter from the public domain (computers) by making it an infringing act to use a computer to “process” that information.

  4. 6, To let you in on a secrit (actually I may have told you already) but I don’t even necessarily think that preemption is “correct” or “right” myself. I simply think it is the lawl that binds this land.

    That said, to be sure I’m against abstract ideas, natural phenom, and lawls of nature being patented upon. I simply think that such should have been made explicit in 52, along with a slew of other things, and that congress should keep up with and update the list of things that are not eligible for their entitlement program for the useful arts. Or else they should be more explicit about what is included. And surprise surprise, that’s what we see the beginnings of now!

    To be sure, 6, Frederico believed that the separation of section 101 and section 102 into two different statutes was not intended to change the law of section 101 one iota. Frederico commented that “old” compositions, manufactures and machines were not eligible under 101. Certainly, a product of nature is not new – and was so held by the Supreme Court in Myriad.

    Furthermore, in cases like Hotel Security (business methods) and In re Russell (printed matter), where the novel part of the claim was directed to nonstatutory subject matter, the claim was considered unpatentable. Some would say that the proper basis for rejecting such claims is 102/103 because the eligible part of the claim is old. However, the courts treated the cases under 101 – nonstatutory – as much as they did under 102.

    Finally, the Supreme Court had just decided Funk Brothers, where the Supreme Court held, consistent with Hotel Security, that there must be invention elsewhere in the claim rather than in a law of nature otherwise the claim was essentially to the law of nature itself. This is another way of saying that the novel portion of the claim cannot be ineligible subject matter.

    The understanding of the statute and its relationship to nonstatutory subject matter was well understood in 1952. The craziness that patent law became since the 60s is directly related to the CCPA and most particularly related to one particular judge on that court.

    1. To be sure, 6, Frederico believed that the separation of section 101 and section 102 into two different statutes was not intended to change the law of section 101 one iota.

      This is simply not true Ned.

      We’ve been over this before.

    2. Your polemics against Judge Rich add nothing – you continue to ignore that it was Congress that acted in 1952 to restrain a run-away judicial branch and their decisions on “patentable novelty” – you know, the term used in Hotel Security – and to create a stabilizing effect from such errant judicial “creations.”

      Just like you continue to purposefully ignore simple set theory in your agenda against printed matter and refuse to see that it was the judiciary that created a doctrine against printed matter (the afore-explained Set B type).

      You keep on leaving out this material distinctions Ned – such is very misleading and deceptive.

      1. Congress that acted in 1952 to restrain a run-away judicial branch and their decisions on “patentable novelty”

        You have zero evidence that Congress intended to allow people to obtain patents that protect ineligible subject matter (e.g., a novel, non-obvious mental process) merely be appending that ineligible subject matter to an old step.

        None.

        And that’s issue (one of them) that never goes away, Billy. Why is this so hard for you to understand? You can’t get around the fact that if you allow people pursue claims by engaging in such shenangians, then you are allowing people to protect abstractions and other subject matter that is clearly outside the scope of 101.

        This is why the fundamental holding of Prometheus will never, ever be overturned. You can’t have a sane patent system and allow people to play that game with their claims.

        You don’t need a law degree or any kind of a technical degree to understand this either, Billy. Indeed, in my experience it’s only patent lawyers who are capable of deluding themselves into believing that there is any other way to deal with the issue. Everyone else with half a brain “gets it” after a minute or two of simple explanation.

        Gee, I wonder why.

        1. On the contrary Malcolm, I have provided evidence multiple times from the Congressional record, from the writings of those closest involved (Frederico and Rich) and from such sources as Cornell Law.

          As to what this evidence goes to, well, your dissembling and twisted spin and misrepresentations aside – my words stand complete and accurate.

          If you want to discuss what I have to say, kindly refrain from misrepresenting what I have to say.

        2. “You have zero evidence ”

          You can tell that to him till the cows come home and his PF will not be any less “true” in his own mind.

      1. It’s neither interesting (being but a rehash of prior posts) nor accurate (as explained in my comments).

        That is of course, unless you want to dwell in the echo chamber fantasy land of Ned-IMHO-Law land…

  5. I wonder how many cases from Google (Lee’s former (current?) and future boss) were pulled from allowance.

  6. This is such a totally bitchin’ article Focarino! Thanks!!!!

    So tell me, how do you decide whether a claim is “abstract”?

    1. Can we start with what is self-evidently “abstract” to everyone (other than a nihilist or a philosophical skeptic)? This is just the single undebatable datapoint from which we would need to interpolate … or stretch… to get to where the SCOTUS went with it…

      Please note these are precisely what claims should not look like, as they are directed to abstractions *as such*. Examples I have found for claims to abstractions are claims directed to either

      1 mental content as such, or
      2 purely descriptive material (reflecting mental content) as such.

      Note: none of the following claims any entity in reality or any process occurring in reality (as opposed to in a human mind) and are thus directed 100% to an abstraction

      Claim A: The equation:
      x = …

      Claim B: An algorithm described by steps outlined as:
      I, j, k

      Claim C: A geometric shape defined by:
      n,m,o

      Claim D: An idea comprising:
      I, ii, iii

      Claim E: A thought comprising:
      1, 2, 3

      Claim F: A mental process comprising:
      A,B,C

      Claim G: Mental contents comprising:
      x,y,z

      Are there any other types of claims which qualify the “self-evidently” abstract?

      1. When I say “Examples” I do not mean they are claims that were actually filed… they are simply examples of what improper claims to abstractions would look like.

      2. Claim B: An algorithm described by steps outlined as:
        I, j, k

        That “example” covers every method ever practiced. Including every method for making any chemical or drug. Yet methods are patentable subject matter.

        How do you resolve that?

        1. The claim meant to cover the “recipe” not the actual performance of the steps. I was trying to cover an “abstract algorithm” but of course, using the term “abstract” as part of an illustration of what abstract means.. is invalid circular reasoning.

          “An algorithm” as such, I suppose, could be interpreted two ways, actual performing of “steps” or a description/set of directions to be followed when doing the steps. I was trying to literally claim the bare “set of directions” as such, not in use or for use by anyone or anything and certainly not machine readable. This is why I used the term “described by steps”. The language is not clear and hence could be directed to actual performance of a process or something which could be used by a machine.

          How about

          Claim B “A algorithmic purely descriptive description of steps comprising:”

          1. You cannot avoid the problem: claims themselves are only “purely descriptive” descriptions. Your revised Claim B still cannot be included in your list.

            It appears that you are perhaps “reaching” for the abstraction of a novel or other literary work…

            1. Can someone infringe a patent by writing down a flow diagram of a computer program, or by typing and saving source code? The flow diagram and source code are examples of descriptive material… but in another way they also qualify as “algorithms” no?

              Perhaps the following is clearer:

              Claim B: “A purely descriptive description of an algorithm comprising steps:”

            2. anon:

              A word is an abstraction which, in the case of the word “table”, refer to tangible things in reality.

              Claims ARE abstractions, but they are not directed to abstractions (not supposed to be). The read on actual things/processes that can infringe.

              Your statement “claims themselves are purely descriptive descriptions” is beside the point. Can you explain?

              1. I understand… no clarification is needed.

                We know a claim directed solely to a disembodied description as such (such as a disembodied description as such of an algorithm) is a claim directed to an abstraction.

          2. To clarify, the distinction is that for a claim to cover a method/chemical/pharmaceutical it is directed to actual actions or entities in reality.

            For a method the claim is directed to the actual actions which are to be taken in reality and which would constitute infringement, and a chemical it would be covered by a claim being directed to the entity in reality (molecule), the actual actions performed in reality to create or purify the molecule, or an actual use (activity in reality) of the molecule.

            A disembodied unperformed algorithm … in someone’s mind or its mere description, is not patentable, and I believe is also an abstraction.

        2. Claim B: An algorithm described by steps outlined as:
          I, j, k

          That “example” covers every method ever practiced. Including every method for making any chemical or drug. Yet methods are patentable subject matter.

          The example is of an abstract idea per the first part of the two-part analysis proposed by SCOTUS in Alice v CLS.

          Your concern over the coverage of method patents would be addressed by the second part (i.e., “are there other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., more than a mere instruction to apply the abstract idea?“).

          1. The problem saul is that Breyer’s words – out of context – simply are not correct.

            “mere” instruction to apply are all what process claims are.

            Period.

      3. I agree with Les – your Claim B needs to be removed from your list

        (btw, appreciate the effort to provide a substantive catalog).

        Also what should be self-evident (but likely not), is that these claims of yours are not addressing a mixture of claim elements, which I think will draw sharper debate.

      4. I also like your acknowledgement (lost on Ned) of purely descriptive – as opposed to functionally related – material.

        Even simple set theory explanations will do no good for those who refuse to listen to reason.

      5. Is it possible or coherent to speak of something literally being a combination of the abstract and the real (tangible).

        Can you claim:

        I) An x comprising:

        an equation; and

        an elongate iron member.

        What could x possibly be? It would have to be part abstract because it literally comprises an equation (not an expression of it, not an embodiment or manifestation of it but the equation as such) while at the same time being part real, having as one its parts matter. For clarity Math Textbooks do not comprise equations, they comprise paper and ink which represent equations, equations as such being in the abstract.

        The only combination of the abstract with the real would be a method claim including steps which are performed in the external reality and in the mind.

        A process comprising:

        doing something in the real world; and

        thinking.

        Are there any other literal combinations of the abstract and the real?

        Note that a method step which takes an abstract something and does something real with it is not itself abstract it is performance of some real method step.

        1. A process comprising:

          doing something in the real world; and

          thinking.

          You have stumbled on the banal Malcolm pet theory. The extent that this says anything at all can be replaced with the larger notion that you cannot have claim elements that are merely disjointed conglomerations, for example:

          A manufacture comprising:

          a blue bicycle,
          a fish bowl, and
          a copy of the lyrics to the Battle Hymn of the Republic.

          And yes, Malcolm’s pet theory is just as silly.

          1. What theory is that?

            PS: I was not trying to make any point regarding “disjoint conglomerations”. My point was that in contrast with a material/apparatus element (where conceptually it is impossible to combine an element which is a bare abstraction and an element which is actual under a single conceptual entity) a claim having process steps can comprise elements of the two categories. I am not implying that the two categories of process cannot combine/cooperate for a unitary result. Obviously they could if the real world process step relied on something done in the thinking step.

          2. Billy: The extent that this says anything at all can be replaced with the larger notion that you cannot have claim elements that are merely disjointed conglomerations, for example:

            A manufacture comprising:

            a blue bicycle,
            a fish bowl, and
            a copy of the lyrics to the Battle Hymn of the Republic.

            Is that claim ineligible subject matter under 101, Billy? It looks like it might lack utility but it doesn’t look like ineligible subject matter to me. What’s your argument for the lack of subject matter eligibility?

            On the other hand, “A process comprising: doing something in the real world; and thinking.” is an ineligible claim as long as the “doing something” is old. It doesn’t matter how new-fangled, useful or non-obvious the thinking is. And that’s not a “theory.” It’s the law, following directly from Prometheus. You’ll never be able to find a court to enforce such a claim in the United States.

            1. MM

              What if neither the “doing something” nor the “thinking” are new taken in isolation, but the combination of the “doing something” and the “thinking” is new?

              (Of course some combinations of such things which are not new and/or are obvious)

              1. What if neither the “doing something” nor the “thinking” are new taken in isolation, but the combination of the “doing something” and the “thinking” is new?

                Then you have a claim to a method of performing an old step followed by an ineligible mental step (which happens to be old when viewed in isolation according to your hypo). That claim is still ineligible, for the same reasons I already provided.

              2. That would imply that the newness of the individual elements, at least in this particular instance, is more important than the newness of the whole.

                Is that not a little bit counterintuitive?

            2. …and once again Malcolm leads into his pet theory (but STILL has not indicated an answer to my simple yes/no question as to his willingness to provide a cogent, direct, and intellectually honest answers to my oft-posted critique of his pet theory, the critique that shows his pet theory is misapplied and reduces to nothing more than a banality.

              101 rejections include category or utility or both. Pay attention to what the Court has done here: category has been met, but the Court disregards that aspect.

              Even Ned has understood this – why can’t you?

              (of course, it could be that you DO understand it, but are still advocating in a deceptive manner, as is your want)

          1. There is no distinction between patenting a book as such, and a recipe as such.

            Neither a book on your desk nor a recipe on a piece of paper could infringe a valid claim… precisely because no valid claim could properly read on a book or a recipe.

            There is a distinction between trying to claim the recipe itself (written instructions) and trying to claim the steps performed (in reality) when someone follows the recipe. The former is written material the latter is a process.

              1. (I think that you already know this – given your initial post and my reply at 17.1.4 – but your short answer may confuse those who wish to be confused regarding the law and Set C type of printed matter)

              2. this too hits on a fallacy (or dissembling) often employed on these boards by Malcolm – the CRP sounding in his “robot chef” meme.

                Given that Malcolm has volunteered admissions against interest as to knowing and understanding the controlling law in this area, his purposeful engagement in posting (conduct) involving such material misrepresentations would seem to be violations of his (supposedly) own sworn ethical duties.

                Even upon notice, he seems determined to misrepresent in his ardent advocacy.

            1. anon2, a book with printing is old. The content of the printing, the recipe, is new. However, such is nonstatutory even if a method following the recipe is statutory.

              See, e.g., In re Russell for the legal analysis of the printed matter doctrine — follows Hotel Security.

      6. anon2, have you read the Rubber Tip Pencil case relied on by Benson and Alice?

        The idea was to put a piece of rubber on the tip of a pencil. The claim was to a piece of rubber for the purpose.

        Of course rubber is a manufacture.

        So, why was the claim abstract?

        1. I have not read the case.

          “The idea was to put a piece of rubber on the tip of a pencil. The claim was to a piece of rubber for the purpose.”

          Was the claimed actually directed to the “idea” or the actual “putting the piece of rubber on the tip of the pencil”, or the “rubber tip” itself or the “use” of the rubber tip for some purpose?

          Whether WHAT is claimed IS abstract… well that depends on … WHAT is claimed…

          As for “why” that claim was deemed “abstract” by other individuals i.e what goes on in their heads… I cannot say.

          I am interested, though. Thank you. I will look at that case.

          1. While a bit more difficult and nuanced, also keep in mind the historical frame of reference of the Court at the time of the case.

            As we have seen throughout history, the Court sometimes is a bit over-zealous in its anti-patent activism. It is when we do not learn from history that we most often find ourselves repeating it.

          2. Rubber-Tip Pencil Company v. Howard, 87 U.S. 498 (1874)

            “An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new. Consequently he took nothing by his patent.”

            Here the “claim” was not directed to something abstract. It seems the court likes the idea behind the claim, but finds the claim itself claims nothing new.

            Again I cant guess what they actually were thinking what the concept “idea” means and what its relation to the “claim” was.

            1. anon2, a piece of rubber was old, even one having an aperture to fit on the end of a stick.

              The idea of putting the piece of rubber on the end of a pencil was new.

              But there was nothing in the claim but that idea. No structure or anything else.

              1. I wonder, if at the time formal claims were the norm, and if the patentee had claimed a method or manufacture, including a step of actually putting a piece of rubber on the end of a pencil, whether the end result would have been the same.

                An idea is not an action.

                It would stand to reason that if the “idea” of putting a piece of rubber on the end of a pencil was “new” at the time, then the *actual act* of putting a piece of rubber on the end of a pencil must have also been “new”. As such the claim could be directed to the action/process step (not an idea)which was “new”.

                I absolutely know the analysis does not stop there but in addressing patentability the court would then have to address something other than simply newness and “ideas”, because what is claimed is not an idea and is new.

              2. Anon2, you seem to skip the analysis.

                The manufacture that was claimed was old.

                The idea of using that old manufacture for a new application was without any structure or steps or anything.

                This case was a variant on a well-understood proposition: one cannot claim an old machine, manufacture or composition simply because one finds a new use for it. One can, however, claim that new use as a process.

              3. One can, however, claim that new use as a process.

                Just one of the courtesies of the 1952 Act that directly reset some of the judicial tinkering.

                You are welcome.

    2. Tour, So tell me, how do you decide whether a claim is “abstract”?

      Check post 16.

      From Hotel Security on until it seem Prater, chere it appears that the wheels came off the cart at the CCPA, the courts determined that if the novel part of the claim was directed to nonstatutory subject matter, the claim as a whole was not patentable.

      It is quite apparent that the Supreme Court is conducting this analysis today in cases like Prometheus and Alice. It is also consistent with Benson, with Flook and with Funk Brothers.

      Diehr made the point that the presence of nonstatutory subject matter in a claim would not render it unpatentable provided that there was invention disclosed in the statutory part of the claim. And of course we are familiar with the exception to the printed matter doctrine that if the printed matter is functional with respect to the otherwise statutory subject matter in that that subject matter is improved, the claim as a whole is patentable.

      But you say, this begs the question, because allegedly the Supreme Court has not clearly defined what is statutory subject matter. But they have, to a degree. As noted by the Federal Circuit in In re Comiskey, if subject matter is neither a machine, a manufacture or composition, or process that employs one these to produce a new result, the subject matter is not statutory.

      “The Supreme Court has reviewed process patents reciting algorithms or abstract concepts in claims directed to industrial processes. In that context, the Supreme Court has held that a claim reciting an algorithm or abstract idea can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter. 35 U.S.C. § 101. As the PTO notes, ‘[t]he Supreme Court has recognized only two instances in which such a method may qualify as a section 101 process: when the process `either [1] was tied to a particular apparatus’ or [2] operated to change materials to a `different state or thing.'” In re Comiskey, 499 F.3d 1365, 1376 (Fed. Cir. 2007). The PTO brief they were citing was written by none other than Stephen Chen who is now a member of the Federal Circuit.

      Abstract therefore is another way of saying that the subject matter is nonstatutory, and the claim is unpatentable under 101 if the novel aspects of the claim are abstract.

      1. . But they have, to a degree. As noted by the Federal Circuit in In re Comiskey, if subject matter is neither a machine, a manufacture or composition, or process that employs one these to produce a new result, the subject matter is not statutory.

        This also is EXPRESSLY what the Court does NOT say in Alice.

        You are not paying attention Ned to the FACT that the Court has expressly thrown out the statutory categories with their “Gist/Abstract” swordplay.

        I know this gives you fits – but you cannot rewrite what the Court has written.

        1. anon, the SC did not purport to define abstract.

          But a good start is the statute, not so?

          If the novel subject matter in a claim is non statutory, why is that claim patentable?

          1. But a good start is the statute, not so?

            You are still missing the point that the Supreme Court did NOT use the statute – they disregarded the statutory categories.

            We have already discussed this exact point Ned. I noted your immediate attempts to squeeze your mantra into the case by so noting your attempt at dropping the word “category” from your posts and your using only the word “statutory.”

            It is more than just a little disingenuous for you to attempt to continue twisting the case to fit something that it simply does not. You really need to come to grips with what the Court did.

            1. Anon, I too regret that the Supreme Court has not sought fit to rely on the statute for its holdings in either Bilski or Alice. It does seem, therefore, that the Supreme Court is off on a lark, making things up as they go, almost like the make-believe world of Alice in Wonderland.

              Regretful indeed.

              1. It is more than simply “regretful” Ned – it rather wrecks the spin you attempt post-decision on these boards.

                Pleas try to amend your posts so that this error is not propagated.

                Keep your eyes open as to what the Court is actually doing.

      2. As the PTO notes, ‘[t]he Supreme Court has recognized only two instances in which such a method may qualify as a section 101 process: when the process `either [1] was tied to a particular apparatus’ or [2] operated to change materials to a `different state or thing.’”

        Ned – you KNOW this is not controlling law given the one of two unanimous holdings of Bilski: MoT not required.

        You know better than to present 2007 case law as controlling law on the very point that was negated by the Court.

        1. Stevens pointed out that the majority opinion did not state why the claim before it were abstract.

          A majority of the court, Scalia with Breyer, were of the view that a claim that failed the MOT was not likely to be patentable.

          1. There is nothing from Stevens in Bilski that is controlling law.

            Zero.

            To spin as you do here (“a majority of the court“) so as to create the impression of controlling law where there is NONE – is a bit deceptive of you, and will only confuse those lesser adept at understanding the law.

            Stevens was slated to write the majority position in Bilski – he lost that position for a reason. You continue to ignore that reason.

            In fact, in Alice, that “reason” lost further ground: it is not at all surprising to see you continue to strive to completely ignore the FACT that 3, the new 4 is still not 5.

            And as I have noted: that very same 3 has been revealed in the learned (inside) writings of a certain past president as to carry caution about their activist tendencies – very much on point here in our continued discussions about a Court only too willing to ignore the separation of powers doctrine in its pursuit of its own agenda.

            Those of us that understand law in its larger context, those of us that recognize that the separation of powers doctrine serves a vital interest, and those of us that recognize precisely which branch of the government was given sole authority to write patent law are the ones that try to show in our discussions the larger danger of a Court unbound by respect of these things.

  7. Application of Prater, 415 F.2d 1378 (C.C.P.A. 1968):

    “In the first form of the rejection under 35 U.S.C. §§ 101 and 102, the examiner argues, on the one hand, that if the novel part of a claim is readable on subject matter which is unpatentable because it is outside the statutory classes of patentable subject matter, then the claim as a whole is unpatentable under 35 U.S.C. § 101;” Id. at, 1381 (emphasis in the original)

    Prater I decided that the novel aspects of a claim could read on nontatutory subject matter. The PTO moved for rehearing. That motion was then granted.

    Prater II did not however not accurately summarize the examiner’s position. It states the position as follows: if the part of the claim reads on nonstatutory subject matter, another part reads on eligible, then claim is unpatentable. Wow, that is horse of a different color.

    It does seem that the CCPA set up a strawman argument in Prater II and never really addressed the contention of the examiner. But the examiner’s reasoning was fully supported by the case law, such as Hotel Security and Funk Bros.; and has not once again been sustained by Prometheus and Alice.

    Reinier, I think Prater is not good law, or at least, does not address the issues involved properly.

  8. Is there anyway to determine what applications were pulled? It would be interesting to see how the USPTO made their rejections under 101.

  9. Talked with yet another examiner. They were more than happy to discuss any issues we had with the rejections and art, but we were warned that the entire art unit was on lockdown and every pending application in that art unit is considered ineligible subject matter.

    The examiner was apologetic and extremely frustrated with the absolute lack of guidance being offered on Alice, but they were being instructed to reject everything regardless of whether they understood the grounds for the rejection or not.

    These tactics show a complete and utter lack of respect for applicants and the rule of law. I highly doubt the organ grinders that run the art unit have carefully considered each and every claim of every pending application.

    I suppose this is one way to cut PTO expenses.

    1. I suppose this is one way to cut PTO expenses.

      Or the opposite – see the posts about the effects of the Just-Say-No Reject-Reject-Reject era that we STILL have not dug ourselves out of (hint to the government: trying to reject your way out of the backlog does not work).

    2. “every pending application in that art unit is considered ineligible subject matter.”

      Subject matter eligibility.

      Not merely restricted to “claim” eligibility.

    3. “The examiner was apologetic and extremely frustrated with the absolute lack of guidance being offered on Alice”

      On of those dratted examiners that doesn’t know tha lawl! Lulz.

      “These tactics show a complete and utter lack of respect for applicants and the rule of law. ”

      Indeed, in certain AUs the applicants aren’t respected and the reason is that the applicants themselves don’t respect the rule of law.

          1. My comment was not a knock against the examiner, in fact, quite the opposite.

            It’s impossible for an entire art unit to have combed through every pending and allowed application to determine that they all are ineligible. There simply hasn’t been enough time since interim guidelines were put out to examiners to have accomplished this feat.

            I sympathize with their position.

            They have no idea how to implement the decision at this point.

            No one does.

            (INCLUDING YOU)

            1. “My comment was not a knock against the examiner, in fact, quite the opposite.”

              Right, your comment was a knock against the lawl itself. That’s why I said:

              #waytoshowrealrespectforthelawl

              “It’s impossible for an entire art unit to have combed through every pending and allowed application to determine that they all are ineligible.”

              Not really. Might take me an afternoon in some AU’s for the last couple months of their work. Especially if I had primaries helping me. It isn’t even hard to come up with easy examples.

              1. What is this “lawl” that you speak of? If you are talking about Alice, it’s boundaries are, at this point, impossible to circumscribe. The court acknowledged that the appropriate test for abstractness would be developed by lower courts. So, what exactly are you referring to? Personal opinions about what “abstract” means are worthless and unworkable. Until these terms are given life by various courts they are essentially nonce words.

                The PTO is itself struggling with how to apply it in terms of examination.

                The fact that you aren’t treading lightly with this issue is a sad commentary about the caliber of folks that the PTO is hiring. I know every organization has it’s share of know-it-alls, but we should be able to expect more. Most examiners I work with are cordial and non-combative. Thank goodness you are the exception to the rule, rather than the norm.

              2. Bluto, the so-called fact that the PTO is struggling is really a demonstration of willful ignorance — some like that of certain members of the Federal Circuit who conducted a decades long resistance to Benson.

                When one reads the position of the PTO in Prater, one knows that at one time the PTO really did get it — where the novel aspects of a claim are nonstatutory, the claims as a whole is unpatentable.

              3. “If you are talking about Alice, it’s boundaries are, at this point, impossible to circumscribe.”

                Yep, they’re so “impossible to circumscribe” that a 2nd year examiner (me many moons ago) managed to flawlessly enunciate them several years go.

                It was like sooooooo hard. Really. It was. Took me like an entire night of reading the BFD cases. Zero has changed since then.

                But I understand if you can’t be bothered to put in the work.

                “The PTO is itself struggling with how to apply it in terms of examination.”

                Not according to the numbers of rejections that just got sent out lol! Sure, there’s the occasional ta rd like the one you met that doesn’t know the lawl, but I mean come on. He’s the exception rather than the rule.

                “The fact that you aren’t treading lightly with this issue is a sad commentary about the caliber of folks that the PTO is hiring.”

                Yes indeed, if the rest of examiners treaded confidently like I do, after knowing the lawl, we wouldn’t find ourselves in this predicament to begin with. But alas, we have all these wussy people that don’t know the lawl from their ar se running loose and attempting to “tread carefully” so as not to offend the scofflaws like yourself.

                “cordial and non-combative. ”

                I’m cordial and only a tad combatitive (only if the applicant requests such), especially with people that respect the law. People with no respect for the law, like yourself, well, I mean come on, what am I supposed to do? Just be nice? I would, but modern women don’t like that, they’re too feminized.

              4. It’s wonderful that you think your enunciations and musings carry the weight and force of the law, but the rest of us that actually care prefer to conduct ourselves within the actual legal framework created by the courts.

                The Alice court refused to elucidate what an abstract idea is. This job was left up to lower courts. The fact that you can’t (or don’t) understand this is comical, but expected from someone who’s received Costco brand legal training from the USPTO.

                Your hubris is entertaining at least.

              5. If anybody is looking for “6”, just visit the USPTO and look for the guy standing in the lobby saying:

                “Welcome to the USPTO, I love you.”

                “Welcome to the USPTO, I love you.”

                “Welcome to the USPTO, I love you.”

              6. “It’s wonderful that you think your enunciations and musings carry the weight and force of the law”

                I can tell that you have a bit of ta rdation going on over there but why in the sam happy hec k would you think that? I most certainly do not think “my enunciations” “carry the weight and force of lawl”. I think the court’s do. I think the court’s words from the 60’s do. I simply restated them in the current format years before the USSC went ahead and did it for you. Because I’m not a complete re ta rd and know how to read. But I understand why you guys didn’t want to do it, why some of you couldn’t manage to do it, and why some of you still can’t be bothered to do it.

                “but the rest of us that actually care prefer to conduct ourselves within the actual legal framework created by the courts.”

                Why you scoffing at their lawl bro?

                ‘The Alice court refused to elucidate what an abstract idea is.”

                Awww, did they refuse to “eludicate” what an abstract idea is? Awwwwww!!!!!! Hopefully the lower courts refuse as well. And then the Fed Circ does as well. And hopefully all this leads to rich rich and very sweet lols for me!

  10. I wrote: if the mental steps (the ineligible subject matter) are the only thing new in the claim then your claim is almost surely an ineligible claim.

    and Billy asked me to explain to him why this is the case. I’ve explained it to him hundreds of times already, of course. It’s basic stuff and pretty much anybody with half a brain can follow the logic. The problem that Billy has, undoubtedly, is that Billy doesn’t like where the logic leads.

    Here’s the deal, Billy: imagine a claim to a method of washing your socks. The claim recites “determining the number of dirty socks, wherein if the number of dirty socks is greater than the number of peanuts in the nearest bag of patents, then the colored dirty socks are washed first.”

    Now, we all know that some people have been washing their colored socks separately from their white socks for a long, long time. But this claim turns those people into infringers if they perform an ineligible information processing task (comparing one number to another) prior to engaging in this ancient practice. The claim, therefore, is ineligible. It protects the ineligible subject matter (the “novel” mental step of comparing the number of dirty socks to the number of peanuts in a nearby bag), in this particular context. Easy, basic stuff. And that’s all we need to know before we chuck this claim (and every claim like it) in the t oilet where it belongs.

    Any other questions, Billy?

    1. And lest anyone wishes to convince themselves that the analysis above “means that nothing is patentable” or some such nonsense, please recognize that if you invent a new machine for comparing the number of dirty socks to the number of peanuts in a bag, and you describe that machine in your claim in objective structural terms such that the recited structure is distinct from prior art structures, then you’re golden. That’s an eligible claim, friends.

      There’s plenty of innovation yet to be claimed, friends. But Alice and Prometheus make it much more difficult to simply innundate the PTO with abstract j nk that some attorney dreamt up because “if granted” it could be used to shake down entire industries or thousands of ordinary people using their computers as their computers were intended to be used. As it should be.

      1. The objective structural claim terms canard…

        Except for the FACT that such is not the law (and you misrepresent by pretending that it is, you might be half way to being interesting.

        Alas, you are not.

        1. objective structural claim terms canard

          It’s not a “canard”, Billy.

          such is not the law

          You are pretty much the last person on earth to be telling anyone what the “law” is with respect to subject matter eligibility, Billy.

          1. I am MORE than pretty sure that the only-structural claim description that you advocate is not the law

            (whether or not you think that I am the last person on earth to be telling anyone on this FACT is quite immaterial and only indicates your continued dissembling on the matter)

            I seem to recall an ethical duty about not misrepresenting material law…

            Maybe our pal the examiner can help you with that Malcolm.

    2. The Arrhenius equation is also an abstraction.

      “Running” the Arrhenius equation over and over again is…

      (take a guess)

      1. “Running” the Arrhenius equation over and over again is…(take a guess)

        That’s also an ineligible abstraction, Billy.

            1. Thanks for helping me make my point 6 – that’s twice recently you have ‘bucked’ your circlemate Malcolm…

              (it’s ok to admit it – I won’t tell anyone)

    1. Hey anon don’t you love how they both straight up admit that there are “millions” of invalid patents under Alice?

      lol, taking out the garbage, millions of patents at a time. Oooooo the humanity!1111!!!1!11!!1!!1

      /bow

  11. Billy: Mental steps is dead unless of course you allow full dissection of claims.

    Mental steps are the quintessential example of abstract subject matter. A claim that protects a mental step — either by itself or in the context of some otherwise old activity — is ineligible.

    Can you tell us all, Billy: what is the difference between “full dissection of claims” and “looking at the claim elements to see what’s ineligible and what’s eligible and comparing the elements to the prior art? Because the latter is not only permitted but necessary to many cases to determine the eligibility of the claim as a whole.

    claims CAN legitimately contain portions that are either actual mental steps or are mechanized surrogates of such.

    Right. But, as you’ve been informed for many years (by me and others and more lately by a unamimous Supreme Court), if the mental steps (the ineligible subject matter) are the only thing new in the claim then your claim is almost surely an ineligible claim. Let me know if you need me to explain to you (again) why this is the case.

    1. Shall I retrieve the post that has been presented at least thrice previously, dismantling your little pet theory and have you address those factors I have presented to you, Malcolm?

      You never seem able to get around to addressing those factors. Now, why is that?

      1. factors I have presented

        LOL. Billy’s been w anking on about his “factors” for years.

        Your “factors” don’t change the analysis, Billy. It’s sad that you are either too ignorant to grasp that fact, or too dishonest to admit it.

        But do keep w anking away at your “factors” if it pleases you, Billy. That’s good for laughs anyway.

          1. yet, you never have ANY answers for those factor

            LOL. The pa th0l0gical l i a r just can’t help himself.

            Get your meds adjusted, nxtcase.

            1. If I present it (again), will you address (that is, in a cognitive, intellectually honest and direct manner) the points I present, or will you (yet again) run away?

    2. Let me know if you need me to explain to you (again) why this is the case.

      I would not mind if you actually did it once.

      Thanks.

      1. I wrote: if the mental steps (the ineligible subject matter) are the only thing new in the claim then your claim is almost surely an ineligible claim.

        and Billy asked me to explain why this is the case. I’ve explained it to him hundreds of times already, of course. It’s basic stuff. Jason and Dennis and pretty much everyone with half a brain can follow the logic. The problem that Billy has, undoubtedly, is that Billy doesn’t like where the logic leads.

        Here’s the deal, Billy: imagine a claim to a method of washing your socks. The claim comprises two steps. Let’s say the first step is a mental step of “determining whether the number of dirty socks “S” and the second step is “wherein if the number of dirty socks is greater than the number of peanuts in the nearest bag of patents, then the colored dirty socks are washed first.

        Now, we all know that some people have been washing their colored socks separately from their white socks for a long, long time. But this claim turns those people into infringers if they perform an ineligible information processing task prior to engaging in this ancient practice. The claim, therefore, is ineligible. It protects the ineligible subject matter (the mental step), in this particular context. Easy, basic stuff. And that’s all we need to know before we chuck this claim (and every claim like it) in the t oilet where it belongs.

        Any other questions, Billy?

        1. Any other questions, Billy?

          Yes – or – no – will you finally stop running away and provide cogent and intellectually responses to the points that I have presented multiple times dealing with your “pet theory” and this 101 subject?

          Can you handle a yes or no type of question?

    3. (btw, love the softshow tap dancing with “ then your claim is almost surely an ineligible claim.“)

      Almost, now….

      1. What’s your problem, Billy? I left the door open a crack for you so you wouldn’t be afraid at night.

        Your mommy is just down the hall.

            1. The “med” reply is beyond banal Malcolm – how about it? Will you commit to giving an intellectually honest and direct answer to the points that I present to your lovely pet theory?

              Yes, or no, please.

    4. are the only thing new in the claim

      LOL – so you don’t like the easy to understand adage of “Only God creates from scratch” (but won’t – or can’t explain why).

      How about something easy then:

      How old do you think are electrons, neutrons and protons?

      And yet, configurations abound.

      Exact same thing with the software arts. Your problem is that you just don’t like those arts and just don’t like how a person having ordinary skill in such arts uses language to best describe their inventions.

      Oddly, you would be perfectly happy with a 247 page, completely incomprehensible – but completely structurally claimed ABSOLUTE EQUIVALENT to a normal software claim.

      You are a most bizarre and unrealistic philosophic-ends-whatever-the-means type of person who is ethically bankrupt and should not be having a legal discussion in the ways that you attempt.

    1. At least there was no reference to a mission statement…. nor a reference to the vowels used or not to spell “Team”….

  12. Has anyone reviewed the form rejections in any detail yet? They’re atrocious. I have one that’s a different way of interacting with a system. The form says that the abstract idea is “organizing human activity”. I’m trying to decide whether the examiner forgot to read the claims, or is just that dumb.

    1. That phrase is in the form paragraph and the gibberish Thomas put his name to in the Alice decision. I’d re-read Alice before responding to the Office Action if I were you.

        1. Well, assuming the thing “interacting with the system” is a human, under BRI, that would seem to fall under the umbrella of human activity and the “new way” would seem to be a method of organizing said human activity. No?

              1. Because, like I said in the setup, it’s a method/system of organizing and displaying data in response to human input, not a system/method that dictates the order or type of steps/actions performed by humans.

              2. Why would you misstate what you said in the age of copy and paste, while what you said a few posts above. What you said was, ” I have one that’s a different way of interacting with a system. ”

                Interacting with a system is human activity. A new way to interact is fairly construed as a new way to organize that interaction…

              3. Something for both of you to consider is that part of the non-circular definition of “technological” includes the phrase you two are quibbling over: methods of organizing human behavior.

                Think about it.

    2. The form says that the abstract idea is “organizing human activity”. I’m trying to decide whether the examiner forgot to read the claims, or is just that dumb.

      Or maybe it’s you.

      Let’s see the claims.

        1. I could care less who bja is.

          But the whining is worse than pointless when nobody can see the rejected claims that he’s whining about.

  13. Sooner or later it will become apparent that Alice’s patent should not have been rejected under the “abstract ideas” exception, but udner the mental steps doctrine.
    The “abstract ideas” exception was only invoked for the reason that (ever since Chakrabarty) only “abstract ideas”, “natural phenomena” and “laws of nature” are accepted as judicially created exceptions on § 101, and then “abstract ideas” appear to be closest.

    But actually all patents are a kind of ideas, and all ideas are abstract to some extent. § 112 implies that inventions are carried out. Inventions are distinguished from their execution.

    There is actually a different reason to exclude business methods. In the EPC, business methods are excluded since they are considered a kind of mental steps, and the mental steps doctrine exists in US patent law as well. In In re Prater II (1969) is was rightly decided that only “mental steps” inventions are excluded that only can be executed with essential human judgement. Actually, this follows from § 112, which requires a description that can be carried out by any person skilled in the art. Of course, § 112 only reflects indirectly on substantive patent law, but logically it is a sign that subject matter that can not be described in the required way should not be considered patentable subject-matter in the first place.

    It should be understood that patents are not merely a reward for brainwork, a tool to appropriate brainwork. They are a correction to the principle of freedom of competition. Mental steps do not need such a protection. A firm that says “I can not compete unless my business methods are protected by law” ifnores a basi principle of western society.

    1. Reinier thanks for that. The distinction between abstract and mental is one I had not thought about before.

      But, apart from that, there is something else. Forgive me, but, seeing your “can not” usage, and living in Germany, I cannot help myself from making an observation on the way nagatives are expressed in the English language. Thus:

      1. I can not go to the ball. Or, I can indeed go to the ball. It is for me to decide whether or not I go.

      2. I simply cannot go to the ball. I’m here in hospital with two broken legs.

      3. I must not go to the ball. Doctor’s orders. It might do further damage to my broken legs.

      4. I don’t have to (auf Deutsch: muss nicht) go to the ball. I can instead watch it on TV.

      5. It’s up to me to decide. I may go to the ball. Or, I may not go to the ball. You see, I simply haven’t decided yet.

      So much scope for readers to misunderstand plain English, even when it is not insolubly ambiguous.

      I should finish with something funny. It seems apochryphal but I am told it really happened.

      A pompous lecturer at Harvard was telling his audience that in English double negatives to express a positive are not uncommon, but that there are no examples of the opposite, a double positive to express a negative.

      Immediately a weary voice from the back row calls out “Yeah, yeah”.

      1. Funny – but not quite on point, as the phrase is rendered meaning in a different manner – not in the actual words themselves (like a double negative would).

        In English, ANY phrase can be turned to ANY meaning through use and intonation. For example, the manner in which “have a nice day” – pleasant enough in its plain meaning can be construed to be its opposite.

        This merely reflects the fact that language evolves, and that irony and the play on words is a rich past time for the mentally advantaged.

        Have a nice day.

      2. “Yeah, yeah” is not a negative. It expresses, boredom with an uninteresting, often repeated assertion.

        “Yeah, right” on the other hand, can express disbelief, skepticism and in that sense could be thought of as a double positive expressing a negative.

        1. Yeah yeah Les. You are sooooooo right, that “Yeah yeah” is “not a negative”.

          What I mean is, you are not not wrong in your assessment.

            1. Les,

              What do you expect of an Englishman, living in Germany, attempting to comment on U.S. law when all that he has is the same six months of experience repeated 80 times?

              1. He wasn’t commenting on Law. He was commenting on English. Something, he is fully qualified to do.

                However, since I was born in BKLYN, I think I know a little somtin about the proper use of the double negative and the double positive.

            2. Les, I’m obliged. I expect you’re right. Does it make a decisive difference though? I thought not, but do correct me there, if necessary.

              1. I think so. To a U.S. audience at least. Yeah, Right is funny. Yeah, Yeah is a bit off…. in a way similar to “One small step for Man, One giant leap for mankind” is a bit off.

                What Neal said he said, and blames the radio voice activation mechanism for corrupting was: “One small step for a man. One giant leap for mankind.”

                Much better yes?

            3. Les, about the double negative joke above, you might want to check out the first “Sourced” bullet point in Wikipedia’s entry on Sydney Morgenbesser.

              link to en.wikiquote.org

              My source was the book by Jim Holt on the philosophy of jokes.

              I’m sure you (and other readers) if they want to tell the joke, will want to get right the punchline “Yeah, yeah”.

              I was wrong, that it was Harvard. It was in fact New York. But the lecturer was a philosopher from England, ha ha.

    2. Reiner,

      Mental steps is dead unless of course you allow full dissection of claims. This is because claims CAN legitimately contain portions that are either actual mental steps or are mechanized surrogates of such.

      It really is as simple and elegant as one of my favorite words: anthropomorphication.

      Also – your notion of “Inventions are distinguished from their execution” FAILS for the statutory category of methods – hence the heated debate here (and the often improper treatment of an equal statutory category as being attempted to be a mere handmaiden category of the other three “hard goods” categories.

      Your notion of “no business methods” has been strictly rejected by our Court – in fact, you should have noticed that 3, the new 4, is still not 5. It is you that ignores a basic principle of western society here.

    3. Reinier, “exceptions?” That assumes that subject matter is otherwise statutory.

      When the novel subject matter is non statutory, the claim as a whole is not patentable.

      This is the proper analysis and it was the mode of analysis used in Hotel Security and the line of cases that followed, including the so-called printed matter doctrine that is still followed today. That was the analysis in Funk Bros., in Benson, in explicitly in Prometheus.

      Alice has said that Prometheus is the mode of analysis. This is the same mode of analysis as Hotel Security.

      1. When the novel subject matter is non statutory, the claim as a whole is not patentable.

        LOL – the return of the canard.

        Tell me again, Ned what was novel in Diehr?

        Not perfect cures – those were obtained previously
        Not thermocouples, not the equation, not the curing equipment…

        (hint: it was the software program that ran the show)

          1. …and Ned, you have not answered my question on Diehr – again.

            …and I see you have decided NOT to acknowledge the difference between not reading and not being confined in our discussion on the Pendency thread.

            Funny, you engaged in some rather silly name-calling, all the while it was you that did not understand the topic (and you getting your own case law wrong).

    4. Reiner It should be understood that patents are not merely a reward for brainwork, a tool to appropriate brainwork. They are a correction to the principle of freedom of competition. Mental steps do not need such a protection. A firm that says “I can not compete unless my business methods are protected by law” ifnores a basi principle of western society.

      Yup.

  14. Dear Readers, when the estimable Ms Focarino writes that she is:

    “..working with our stakeholders in refining our examination guidance”

    what does that mean? Who are her “stakeholders”?

    I ask because the EPO these days keeps banging on about balancing its duties to Inventors with its duties to the public. That might be because of the inordinate amount of examiner time is taken up with inter partes disputes about whether a patent, duly issued, now needs to be revoked over the whole 600 million person EPC zone. The EPO seems to see the public as a “stakeholder”. Does the USPTO too?

    1. Unlike European patent law, U.S. patent law has a constitutional basis “To promote the progress of science and useful arts, by securing for limited times to [authors and] inventors the exclusive right to their respective [writings and ] discoveries;”

      This phrase clearly says that society is supposed to benefit. The benefits for the inventor/patent owner are merely a means to that end. Several age-old SCOTUS opinions confirm this principle.

      Naturally, (prospective) patent owners lobby most for more patent protection, so there is a need to consider also the other side.

      Unfortunately, AFAIK nobody knows how to relate legal rules to the (social) usefulness of patents.

      For EPO, the parliaments of the member states can decide what they want. But the interpretation still leaves a lot of room. The members of the EPO boards of appeal are not genuinly judges – which is actually cconfirmed by the statement of the EPO itself that it is working on improving the independence of these members.

      The experience with the CAFC shows that the formal independence is less a problem than that judges specialized in patents tend to believe in patents, not to say that they love patents. Hence the SCOTUS must often step in to correct the “enthusiasm” of the CAFC (see the statistics published lately on this website). Unfortunately, with the advent of the unified European patent no such correction mechanisme exists anymore.

      1. I notice that you have chosen not to discuss the constitutional clause (which I have explained in a discussion with 6, and for which I previously provided links).

        Your attempted “just” means to an end is significantly off in the actual balance as captured in the phrase Quid Pro Quo.

        You are also wrong in the power struggle depiction between the Supreme Court and the vassal of appointed Congress – the lower court CAFC.

        But given your sum total of works and deep holding of [TYPICAL] anti-patent beliefs, is it any real surprise that you get these fundamental aspects of our US law wrong?

      2. The Social usefulness of patents is not technology. The social usefulness of patents is the protection of valid “property rights”, which free individuals of society then use to better their lives through economic activity. Freedom and economic activity are also useful to individuals in “society”.

        The mere presence of technology in a rightless society is useless… since that would be no proper society.

        1. Egads – you want property out of this deal?

          No doubt, personal and fully alienable property too…

          You do know that you will p1ss off both the Left and the Right with such wantings…

    2. Max –

      On its face the phrase refers to inventors, assignees and the public; anyone with a stake in whether a patent issues or not.

      What it really means is : We will go through the motions of accepting comments from everyone and then do what we want justifying it with double speak, as we are the ones with the power.

    3. On some level the “balance” between the so called “public” and the “inventor” is a false dichotomy.

      If “the public” only ever can be (more correctly – simply IS) a group of individuals, are not individual inventors then also part of the “public”? Are we balancing them against themselves?

      If everyone of “the public” enjoys rights, including rights to the fruits of their own mental labor, specifically patent rights for inventions, would not any “shift” in the so called “balance” between the “public” and “the inventor” essentially be a balance between everyone’s right to property (IP) and everyone’s effective ability to … buy stuff?

      As between rights to property and one’s effective “ability” to buy stuff… are individuals of the public really so obtuse as not to see what is more important in their lives vis-à-vis the state?

      Have Americans become so alienated from the ideals of the Founding Fathers that they would sell their rights, their freedoms (even if in fractions) merely for cheaper iPads, and Sotware?

      1. Everybody (or nearly everybody) has self-interest in promoting the progress of science and useful arts. Thus, the USPTO has a duty to administer the patent system, and the courts have a duty to adjudicate individual patents, such that the patent system, as implemented, promotes such progress. I imagine the USPTO is conferring with its “stakeholders” to achieve such progress.

        Such progess does not come from refusing all patent applications, nor in allowing them all. The hard bit is deciding which cases to allow and which to refuse.

        Today’s patent owner is tomorrow’s petitioner for revocation. well, that is so at the EPO, where rival corporations are forever opposing each other’s duly issued patents.

        1. Please note that in this sovereign, we have placed a different (higher) cultural – and legal – aspect on the individual, as opposed to the corporation.

          Have a nice day.

      2. Have Americans become so alienated from the ideals of the Founding Fathers that they would sell their rights, their freedoms (even if in fractions) merely for cheaper iPads, and Sotware?

        ROTFLMAO

        Beyond parody.

            1. He does not see his own ethical dilemma of what he wants interfering with what his supposed job is in the obtainment of something for his clients that he so evidently despises.

    4. “Stakeholders” is the term for the tiny, tiny fraction of society — almost always wealthy people — who have patents and want more of them.

  15. I’m truly relieved at the PTO’s concern that it not issue invalid patents, and its willingness to take the initiative to implement Supreme Court caselaw in a manner consistent with, if nevertheless somewhat more broadly, than what the Court itself said. Alright, perhaps a lot more broadly than what’s required, but still, it’s the thought that counts, right? Nevertheless, when I see the PTO taking a serious look at petitions for revival of applications for unintentional abandonment (which it seems to grant a matter of course), and even withdraws a few granted petitions in cases in which it’s obvious that the abandonment was intentional, THEN I’ll know the PTO has gotten serious about its job.

    1. Hurl, I couldn’t disagree with you more. You equate compliance with procedure with 101 that is fundamental?

      Kinda like the pr icks who have problems with hoteled examiners are getting the job done but are not at their desks 8-hours a day.

      Kinda like running joke in Charles Stross novels where the secret agent, nominally reporting in to middle management for cover purposes is harassed by that same middle management about expense reports, missing scheduled meetings, not showing up on time because they were on a mission.

      Kinda like the a holes who turn the ambulance engine off automatically if the car or bus needs some environmental filter to be changed. (And this is not a hypothetical case.)

      People like you are a major irritant to modern civilization.

  16. I can tell you that the allowed cases pulled by the USPTO were RANDOM. Looking at the ones from my firm, there was no rhyme or reason for the ones they picked. I’ve discussed this with many colleagues at other firms and they share the same experience. I heard something like 15% of all allowed cases in the software arts were pulled, but this number is probably not reliable.

    1. I’m curious as to the criteria used for pulling these cases as well, since Patently-O is the only place I’ve even heard about this happening. I certainly haven’t read about it internally, but a good portion of the time I hear about pilot programs and other events here first rather than through official channels.

      I wonder if there’s some correlation to the classification of the applications (were a lot of class 705 cases pulled, for instance?).

  17. To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.

    We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a ge neric computer to perform ge neric computer functions.

    No hard numbers?

      1. Hopefully anything that can add/subtract/multiply/divide/read numbers/write numbers… test for zero and jump to a index in a decision table.

        You know, anything in arithmetic… :)

          1. :) There is no difference.

            Applied math is just “math” as it pertains to a particular subject.

            Using math operators doesn’t change the fact that they are math.

              1. Then the law is wrong.

                Patenting a formula is not supposed to be allowed.

                Now a patent CAN include non-patentable items. I’m not trying to say that.

                But a claim that only exists as a wording of a formula is wrong.

              2. Patenting a formula is not supposed to be allowed.
                Assuming, for sake of argument, that this statement is correct, the law recognizes that you can have a formula within the claims and still have statutory subject matter.

                Also, don’t confuse logic (e.g., if A, then B) with a mathematical formula (e.g., A = B + C). For example, there is a difference between “if the temperature of a mold cavity exceeds 500 Celsius, then remove the object from the mold” and “force equals mass times acceleration.” While one might be considered a fundamental truth, the other certainly is not.

              3. “Also, don’t confuse logic (e.g., if A, then B) with a mathematical formula (e.g., A = B + C).”

                In math there is no difference. You can’t patent logic either (logic is a branch of mathematics).

                “if the temperature of a mold cavity exceeds 500 Celsius, then remove the object from the mold”

                First remove the patentable parts. You are left with the logic “if (a > 500) then” HOW the object is removed is external to the logic, and may involve other patentable actions. Making the decision is a mathematical expression. It may take some patentable device to measure the temperature. No issues there. But the actual logic is just that – logic. And that same logic can (and is) used in a lot of places.

              4. Too deep for you to grasp? Care to explain why you think that what I wrote was gar bage?

                (I realize that I am asking you to venture from your short script)

              5. Slo Mo the law recognizes that you can have a formula within the claims and still have statutory subject matter.

                Yes, but if the math is the only thing new in the claim and the claim doesn’t describe any new transformation of matter then the claim is ineligible.

              6. Care to explain why you think that what I wrote was gar bage?

                How about you just answer the direct question I asked you instead of reciting b. s. aphorisms, Billy?

                Grow up, clown.

              7. any new transformation of matter then the claim is ineligible.

                LOL – you missed the memo from the Royal Nine in Bilski: MoT not required.

                Are you still struggling to understand the difference between a requirement and a clue?

                Obviously so, as you just stated part of MoT as a requirement. (It is not).

                This too “deep” for you, pumpkin?

              8. In math there is no difference.
                One (e.g., 10 = 6 + 4) is a fundamental truth (in base 10), the other is not.

                You can’t patent logic either (logic is a branch of mathematics)
                Wrong on both accounts. The phrase “if the girl is hot, then I’ll ask her out on a date” is a form of logic. It isn’t “mathematics.” As for logic not being patentable, I take it you don’t practice patent law?

                But a claim that only exists as a wording of a formula is wrong.
                Yeah … but nobody claims things that way. Again, I take it you don’t practice patent law.

                First remove the patentable parts.
                It is kind of easy to find “abstract ideas” when you do that. As acknowledged by SCOTUS, nearly every patentable invention involves nonstatutory subject matter. As such, if all you do is go looking for nonstatutory subject matter, you are going to find it. However, that isn’t the test.

              9. I get that Malcolm’s obsession with Mr. Quinn forces a certain set of characters to be included in the filter, but this is really annoying.

                So once again:

                Oh no,

                From the Wiki:

                Mathematics is the study of topics such as quantity (numbers),[2] structure,[3] space,[2] and change.[4][5][6] There is a range of views among mathematicians and philosophers as to the exact scope and definition of mathematics.[7][8]

                That’s why I posted the Tegmark links.

                Much like a different nose of wax, the word “mathematics” is often used to mean different things in different contexts.

                In the context of patent law, the distinction between math and applied math governs.

                In the context of [TYPICAL] ontology, Tegmark’s view is a permissible, albeit extreme one. But understanding Tegmark in context shows the absurdity of the anti-software patent polemic of “maths” are not patent eligible. In an ontological sense, everything IS “maths.”

                In a play on Galileo, the patent system exists nonetheless.

                link to en.wikipedia.org

              10. “”If you accept the idea that both space itself, and all the stuff in space, have no properties at all except mathematical properties,” then the idea that everything is mathematical “starts to sound a little bit less insane,” ”

                Of course if you don’t accept that “idea” then the idea that “everything is mathematical” still sounds insane.

                Like anon!

              11. 6,

                Your assumption is as wrong as you so often are – and the thing about it being that your wrongness seems to be so joyfully embraced by you, that your comment about “lack of education” comes across glaringly as an AOOTWMD.

                This is not the first time (and surely will not be the last) that your own lack of appreciation of the physical world and the sciences used to explore that world betray your inability to understand patent law.

                Take for example, transience and In re Nuitjen. While I fully admit to the case being controlling law, the underlying reasoning simply shows a lack of understanding and appreciation of the physical reality that science clearly establishes. When I have attempted to engage you in a conversation on the physical sciences involved, you instead abandon science and cling (tightly and blindly) to your anti-patent belieb system.

              12. “This is not the first time (and surely will not be the last) that your own lack of appreciation of the physical world and the sciences used to explore that world betray your inability to understand patent law.”

                Yep that’s me! Lacking appreciation of that which I spent 4 years being formally trained in! I lack appreciation of it so much that I spent four years studying it! Unlike anon of course who appreciates it so much that he spent 0 years studying it!

                In all srsness, if you were simply to get a formal education you’d really come around. It is a near certainty.

                ” When I have attempted to engage you in a conversation on the physical sciences involved,”

                We’ve discussed that half to death Mr. OCPD. We need not endlessly tweak the discussion. I understand your points. So did the court. You still don’t understand theirs. I do though.

              13. You confuse my directness with right/wrong with your projected fantasies.

                What then would your own “instructing” and “know exactly” be considered to Les at 1.1.1.1.3.4.3 be considered under the same analysis?

                The log in your own eye first, 6…

              14. “You confuse my directness with right/wrong with your projected fantasies.”

                I know anon, I know brosef. Me and everyone else that interacts with an OCPDer does that. We’re all just confusing your “directness” “with” right/wrong with our projected fantasies. It’s all us brosef.

                “What then would your own “instructing” and “know exactly” be considered to Les at 1.1.1.1.3.4.3 be considered under the same analysis?”

                It would be considered “instructing” and “know exactly”, under any “analysis”.

                But here, let’s talk this out a bit so that you might gain some insight.

                If you’re looking for me to say that I’m “inherently” “right” on that matter, or that I’m “necessarily right”, that it is “just right” or something of that nature, as you always feel you are on all the truths you own, you won’t get that out of me.

                And the reason for that is simple. I’m only “right” in so far as I’m simply repeating back to you what the USSC is saying, and holding your hand a bit where you guys feel you’re ignorant about what they’re saying. Note for a second Mr. OCPD that this is not because “my way” is the “right way”, or that this way is “inherently right/good/whatever” or because I own this truth and you guys cannot be right or anything of that sort. It isn’t even “right” as in “right right” or “right just because it is right”. “my way” (really just the court’s way) here is “right” solely because the USSC has enunciated that it is and nobody but the congress can gainsay them with authority. Solely. Thus it is only “right” to that extent. The whole thing rests solely on their authority, and I recognize that from the get go. Specifically their authority to interpret. There is no mystical legal, or any other mystical ju ju that makes this way “right” or anything of that sort. The whole of it rests on authority. Theirs.

                All of that makes it so that I wouldn’t even be comfortable or necessarily “correct” myself to go on and on about me or the court being “right”. It is less “right” and more “the way it is”.

                ___________
                To let you in on a secrit (actually I may have told you already) but I don’t even necessarily think that preemption is “correct” or “right” myself. I simply think it is the lawl that binds this land.

                That said, to be sure I’m against abstract ideas, natural phenom, and lawls of nature being patented upon. I simply think that such should have been made explicit in 52, along with a slew of other things, and that congress should keep up with and update the list of things that are not eligible for their entitlement program for the useful arts. Or else they should be more explicit about what is included. And surprise surprise, that’s what we see the beginnings of now!

              15. LOL – in other words, you are wrong all on your own (and embrace it) but you are only “right” if you recognize that you are projecting someone else with balls enough to be direct.

                Gotcha.

              16. It is less “right” and more “the way it is”.

                Even more LOL – as this sounds familiar to what I have been telling you all along about facts and law and how it is in our arguments when you try your little psycho games and say it is because “I anon said so

                Have you bothered with the link I earlier provided yet?

                link to en.wikipedia.org

                Your blatant attempt to copy me is, um, “moving.”

              17. “in other words, you are wrong all on your own (and embrace it) but you are only “right” if you recognize that you are projecting someone else with balls enough to be direct.”

                Brosef where did you get that? Sometimes you say some sht that just makes you sound dum as a box of rocks. I said nothing of the sort. Perhaps you should read again if that is what you took away. I understand that your OCPD or p syc h opathy might be getting in your way a bit here, because this is complicated enough for a normal person, but you can do better without my having to correct you explicitly.

                I guess it could just be the p a t h ol ogical lying super power flaring up. I guess in that case, just try to let it die down. Just don’t use that super power tonight

                +++++++++++++++

                “Even more LOL – as this sounds familiar to what I have been telling you all along about facts and law and how it is in our arguments when you try your little ps y cho games and say it is because “I anon said so””

                It only “sounds familiar” to you because you’re the only one that knows (in your mind brain) that’s what you’re trying to say when you explicitly say “I’m right n you’re wrong hur”. You leave us to divine that you’re not actually “right”, because the whole situation isn’t a matter of “right/wrong”, it’s just that you feel that such is just the way things are.

                But you don’t explicitly say that. Because you’re OCPD. Instead, you say you’re right. Or the other person is wrong. But you can say what I said specifically you know. Or at least you could if you weren’t OCPD and didn’t own the f out of all the truth.

                But keep in mind, that so long as you’re relying on the federal circuit’s say so, you’re going to have people like me and MM and others loling at you. Because their “authority” at this current day appears to be about as much as a traffic cop has, or less. And you know why that is? Because they spent years making nonsensical decisions. Decades even. All to patent protect.

                And now they’re starting to tumble down around them at an astounding rate. And do you know why?

                Because those were the “wrong” interpretations to begin with and the people with real authority are stepping in to correct their mistakes. As in, literally, they done fed up their statutory construction etc because they were too busy patent protecting. And they were the “wrong” interpretations for good reason. Specifically, the statutory lawl was not meant to be read though a deliberately pro-patent prism. And when you do that, you’re going to get the wrong interpretation, just as a simple matter of course, as in that is what must happen. You literally are bound to f up eventually if you keep on doing that.

                _______________
                And anon, I know you don’t like to belieb that what I think matters, but it actually does, because I have had a minute portion of authority foisted upon me. Likewise, what the USSC believes matters, because the have authority.

                Not to mention the fact that I successfully saw preemption through to revival! YEAH BABY! YEAH!

                #leadership
                #millionsofappsandpatentsinvalid

          2. “applied math” is not identical to “math”

            The “math” of “applied math” is, however, identical to “math”

            The application of and/or the act of applying “applied math” is not the same as mere “math”.

            I believe people here are speaking past one another.

  18. To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.

    We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a ge neric computer to perform ge neric computer functions.

    No hard numbers? What did the PTO consider a “generic computer function”?

  19. Just curious – how does an Office without a bonafide vetted Director put forth any official policy?

    Is that not one of the duties of former Director Kappos that cannot descend to Miss Lee?

    1. anon, I somewhat see your point. But if Obama and the Sec. Commerce have no problem with Lee’s actions, the only people who can complain are congress — and right now, no one can be successfully appointed it seems.

      1. “the only people who can complain”

        Are you Fn serious?

        How about those directly affected by the shadow power of the puppet policy settings?

    2. So what’s the alternative? Issuing patents to nonstatutory claims in direct contravention of Alice? Or suspending all issuances until a director is sworn in so that the policy implementation can be official?

      1. Holding up the notion that they are acting so as to “obey the law” while they continue to disregard another law has a very hollow ring to it – especially when you consider the players and politics involved.

        Open your eyes.

    3. Actually, that is rather simple.

      Whenever a management position is empty, it is up to the manager of that position to give direction. Sometimes that is as simple as directing a “next lower level manager” to carry out the function.

      Happens fairly often.

      1. Yet another example of someone clueless as to law and the limitations that law imposes.

        Please come informed with some minimal level of understanding to this legal forum, jesse. Give my regards to the slashdot crowd.

        1. Then you have no concept of how “chain of command” actually works.

          If what you appear to be claiming is true, then the entire PTO has to stop functioning.

          1. Again – in law – especially the tropic here, there is no unfettered chain of command.

            jesse – please try to inform yourself before you comment.

          2. …and no, the entire PTO does not have to stop functioning, as certain duties are allowed to be passed down the chain of command.

            Just not the ones that are significant as to why the position is vetted in the first place.

            1. And those go up the chain. And if that person so directs, it can be delegated by that person to another.

              That is how “Acting directors” function.

              I have even seen such a position rotate until a designated director is appointed.

              1. You still miss the point that Lee has not been given those duties – LEGALLY – as that would require vetting by Congress – per the law.

                You keep on ignoring the law in a legal discussion. That just does not work out well for you.

            2. “Just not the ones that are significant as to why the position is vetted in the first place.”

              And anon would know because he learned all of his power structure lawl on the interbuts!

              “You still miss the point that Lee has not been given those duties – LEGALLY – as that would require vetting by Congress – per the law.”

              ACCORDING TO ANON!!!!!11!1!!!! WHY CAN”T EVERYONE GENUFLECT BEFORE ANON?!?!?!?!!?!!?!!?!?!!1111!1!1?!?!?!

  20. Rejecting claims and pulling allowed applications but you’re basically acknowledging that your examination guidelines are incomplete and will be updated in the fall.

    Super duper.

    Ready. Fire. Aim.

      1. Um, 6, maybe her own words: “We look forward to working with our stakeholders in refining our examination guidance

        /face palm

        1. That’s just puff anon. They don’t really look forward to working with their “stakeholders” in “refining” examination guidance. The guidance as is nigh perfectly fits the law. In order to “refine” it, then you’ll have to talk the courts into “refining” the lawl.

          1. What I can tell you that I have seen is boilerplate paragraphs with no reference to claim language or any application of law to facts. It’s clear to me so far that the PTO has no idea how to apply Alice yet. This isn’t keeping them from doing so.

            In other words, don’t worry, we’ll fix it after you file an RCE or two just to argue over how the claims are not abstract. Soon, PTAB will be inundated with cases where the only remaining issue is 101. A docket full of new and non-obvious claims that are supposedly abstract.

          2. 6, the guidelines are as per usual, very one sided and indefinite. They say to reject if the claim includes something abstract without “something more”, but they don’t say what abstract is. They give precious little by way of guidance as to what qualifying “something mores” might be.

              1. If one consults a dictionary, then one comes to the conclusion that the decision in Alice is wrong. So, as long as we are operating in the rabbit hole, the Mad Hatter is going to have to provide the definitions.

              2. adjective
                adjective: abstract
                abˈstrakt,ˈabˌstrakt/

                1.
                existing in thought or as an idea but not having a physical or concrete existence.
                “abstract concepts such as love or beauty”

                The claims in Alice recited concrete steps related to establishing shadow accounts and maintaining and consulting those accounts. The methods were to be carried out by machines (and/or by humans to some extent). They had concrete form. They did not claim love or beauty. They were note abstract.

              3. Is that like “technological” without the circular effects, 6?

                (because, you know, all business methods fall into the meaning of the non-circular English language dictionary)

              4. It’s so funny to walk a contrarian examiner through a case, and then they finally see that the case had no guidance….. just like the attorneys were saying from the outset and the original pointe that the examiner was arguing.

              5. “If one consults a dictionary, then one comes to the conclusion that the decision in Alice is wrong.”

                I don’t. Neither does most of ‘Merica. So perhaps you need to re-consult your dictionary.

              6. “The claims in Alice recited concrete steps related to establishing shadow accounts and maintaining and consulting those accounts. ”

                The claims! The claims!

                We’re talking about SUBJECT MATTER ELIGIBILITY. Subject matter. I don’t know how much more crystal clear that it can be made for you lester, the cult to which you belong, that of the claim, is of lessened value here.

            1. 6 –

              The claims define the subject matter. The subject matter is what is recited in the claims.

              Distillation down to a gist is still impermissible.

              1. 6 is not right – but for a different reason.

                (he does not get what you are telling him – mostly because what you are telling him is what the Court actually did)

                He retreats to his little “Cult of the Claim” mantra, showing that he understands neither the current decision, not the “Cult of the Claim” mantra that he wishes to bandy about.

              2. “The claims define the subject matter”

                Not technically always true. Sometimes true though. But I respect your right to have an opinion.

                “Distillation down to a gist is still impermissible.”

                Finding the subject matter is however, not.

              3. Note also lester, I’m sitting here taking time out of my day to instruct you in why you don’t understand these decisions (which I predicted with knife like precision) and you’re just sitting and back talking me.

                Have fun back talking me. I know exactly what the decision is about. I’m trying to explain it to you, either you can listen or just sit there and not listen. If you don’t want to listen, fine, but there’s literally 0 need for you to back talk since you’re the one claiming ignorance in the first place.

              4. (which I predicted with knife like precision)

                LOL – the knife being the double edged sword of “Gist/Abstract”…

                ;-)

                (but also note 6 – your journey through law is not yet complete – as you continue to FAIL to understand why the Court’s decision, being what it is, is a problem for the law itself – it is rather humorous that you want to congratulate yourself, but do not recognize that what you want to congratulate yourself for is NOT something to be congratulated, but merely is the first step in the legal discussion that the more astute of us are attempting to have)

            2. “We’re talking about SUBJECT MATTER ELIGIBILITY. Subject matter. I don’t know how much more crystal clear that it can be made for you lester, the cult to which you belong, that of the claim, is of lessened value here.”

              You can make it more crystal clear by explaining why you think the what is claimed is irrelevant to an analysis of subject matter eligibility.

              What subject matter is being evaluated as to eligibility if not the subject matter of the claimed invention?

              Why would you evaluate eligibility of subject matter other than that of the claimed invention?

              Is it that you don’t have enough to do and you don’t want to have to report you were doing laundry to the next set of auditors?

              1. Les,

                Surely you realize that “Gisting” is critical for the Court to be able to keep its finger in the 101 Nose of Wax, given that those “d@mm scriviners” actually follow the law as written by Congress, and that the Court – no matter what Congress actually does – will not allow their own implicit writing to become “dead letters” See Prometheus.

              2. They didn’t go so far as to say gisting is permitted. As long as we are through the looking glass, we should not try to apply muggle logic and extrapolate anything from Alice beyond the literal pronouncements.

              3. “You can make it more crystal clear by explaining why you think the what is claimed is irrelevant to an analysis of subject matter eligibility.”

                I didn’t say it is “irrelevant”. It most certainly is “relevant” in just about all cases. It just does not solely and entirely control in all cases. That’s because the art of the draftsman can dress up an abstract idea/natural lawl/natural phenom to make it look like it is actually just a product/machine/compos/method. There’s nothing exactly earth shattering about this.

                “What subject matter is being evaluated as to eligibility if not the subject matter of the claimed invention?”

                It ge n erally is the “subject matter of the claimed invention”.

                Note that does not mean that the “claimed invention” aka the exact words in the claim, always dictate what the subject matter involved is. Draftsmen are very good at burying problematic subject matter involved in an application in technical doohickery (usually old features) while writing the claims so that the reader cannot tell what the subject matter actually is, or are mislead into thinking it is something else other than what it actually is, all while leaving the what subject matter is effectively covered the same. Doing so isn’t really all that hard in many cases.

              4. 6,

                That has to be the absolute worst defense of Gisting that I have ever seen.

                I think that even the Court might make their letters into dead ones after reading that.

          3. The guidance may fit the law. However, getting examiners to understand and apply the actual law is going to be a challenge, as you’ve made abundantly clear.

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