New Section 101 Decisions: Patents Invalid

The Supreme Court’s decisions from Alice and Mayo are beginning to really have their impact. A few examples:

  • Walker Digital v. Google (D. Del. September 2014) (data processing patent invalid under 101 as an abstract idea) (Judge Stark).
  • Genetic Tech v. LabCorp and 23AndMe (D. Del. September 2014) (method of predicting human performance based upon genetic testing invalid under 101 as a law of nature) (report and recommendation from Magistrate Judge to Judge Stark)
  • Ex parte Cote (P.T.A.B. August 2014) (computer method and hardware for ‘phase shifting’ design data invalid under 101)
  • Ex parte Jung (P.T.A.B. August 2014) (diagnostic method associated with epigenetic risk factors invalid under 101).

Some of the claims invalidated are listed below:

Walker:

1. A method for operating a computer system to facilitate an exchange of identities between two anonymous parties, comprising the steps of:
receiving from a first party first data including an identity of said first party;
receiving from said first party at least two first-party rules for releasing said first data including a rule for releasing said identity of said first party;
receiving from a second party a search request comprising at least one search criterion;
receiving from said second party second data including an identity of said second party;
receiving from said second party at least two second-party rules for releasing said second party data including a rule for releasing said identity of said second party;
processing said search request to determine if said first data satisfies said search criterion; and
if said first data satisfies said search criterion, then
exchanging said first and second data, except said identities of said first and second parties, between said first and second parties in accordance with said first-party and second-party rules,
after said exchanging step, upon satisfying said first-party rule for releasing said identity of said first party, transmitting said identity of said first party to said second party, and
after said exchanging step, upon satisfying said second-party rule for releasing said identity of said second party, transmitting said identity of said second party to said first party.

Genetic Tech:

1. A method to predict potential sprinting, strength, or power performance in a human comprising:
a) analyzing a sample obtained from the human for the presence of one or more genetic variations in a-actinin-3 (ACTN3) gene;
b) detecting the presence of two 577R alleles at the loci encoding amino acid number 577 of the a-actinin-3 (ACTN3) protein; and
c) predicting the potential sprinting, strength, or power performance of the human, wherein the presence of two copies of the 577R allele is positively associated with potential sprinting, strength, or power performance.

Cote:

1. A computer-readable storage device including code segments, to be executed by a computer, relating to a lithographic process technology, the computer-readable medium comprising:
a code segment for receiving a plurality of bins, each bin including a plurality of clusters corresponding to layout data, wherein each cluster represents a plurality of shapes in the layout data, the plurality of shapes having a proximity to each other determined by a grow operation; and
a code segment for phase shifting the plurality of clusters independently of one another.

3. A method of using clusters in electronic design automation, the method comprising:
receiving data for a plurality of bins, each bin including a plurality of clusters, each cluster representing a plurality of shapes in an original layout, the plurality of shapes having a proximity to each other determined by a grow operation; and
using a computer, preparing a phase shifting layout for the original layout by phase shifting each of the plurality of clusters independently of one another.

7. An electronic design automation program to be executed by a computer and stored on a non-transient computer-readable medium, the electronic design automation program comprising:
a source code segment designed to receive layout data in a bin and cluster format, wherein at least one bin includes a plurality of clusters, each cluster representing a plurality of shapes in the layout data having a predetermined spatial relationship to each other as determined by a grow operation; and
a source code segment designed to phase shift the plurality of clusters independently of one another.

Jung:

1. A computer-implemented method comprising:
receiving epigenetic information associated with at least one individual;
calculating, using a microprocessor, a risk utilizing the epigenetic information; and
transferring at least a portion of the risk utilizing the epigenetic information.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

348 thoughts on “New Section 101 Decisions: Patents Invalid

  1. fngl51: an algorithm (and single purpose machine) that could find and mechanically retrieve a piece of information recorded on a piece of paper and stored in one of a billion file cabinets would be patentable

    If the machine is described in objective structural terms to distinguish it from prior art machines, sure, go ahead and apply for a patent on that machine.

    But if you require far less than that you must recognize that anyody with half a brain can sit around and claim “new” “single purpose machines” with “new algorithms” to find these “pieces of paper” (different shapes! different origins! different colors!) in “file cabinets (different shapes! different origins! different colors!) as you just did. How do you propose to examine all these “new machines”?

    if it were done on a computer, using a variety of novel algorithms for search, retrieval, data compression, storage and transmission it would not be patentable.

    Note that there’s no contradiction here if the requirement for objective physical structure is applied consistently to both “machines”.

    In both cases, the tasks involve physical devices, with inputs and outputs. The task is identical, but the solution is expressed in a different manner.

    In the case of the typical machine assisted information-processing claim, the solution is not just “expressed differently” than it is in a physically transformative process. Instead the solution is assumed because the “new machine” is claimed in terms of its function, which is logical and useful (thinking works!) or illogical and useless.

    More specifically with respect to your hypothetical, however, the “tasks” are not “identical”. They are analogous in certain respects, but not identical. In part, that’s why we still rely on people to carry out the majority of information-processing tasks, even (or especially) “mundane” ones.

  2. patent leather: Some abstract ideas (economic fundamental practices and who knows what else they will add) can never be “rescuable” unless combined with something else allowable (thus the abstract idea in the claim is ignored). Other types of abstract ideas do not fall in the previous category but the claim as a whole is abstract because it doesn’t have a practical physical result (e.g., just processing information).

    Indeed, there are different kinds of abstractions and the exclusion of abstractions from 101 can manifest itself in different ways. We should focus on identifying what those different ways are in clear terms. Claims protecting ‘fundamental economic practices’ is a good start. Claims protecting objects with a particular “legal status” or distinguishing prior art methods by the recitation of abstract labels (“public” “copy protected”) or past history leaving no physical trace (“purchased from a person with a foreign accent”) are also right up there (if not worse).

    Keep thinking! Because there are certainly more types than these.

  3. I have a question about the meaning of “a claim is directed to”. From Flook, Diehr, or Alice, my understanding was that you could, in step 1 of the Alice test, utilize a subset of claim elements to define what a claim is directo to. However, in Planet Bingo CAFC 2014, Judge Hughes uses portions of the description and the appelant brief (see part II A, page 5).

    Do you know a case that discusses in details what is meant by the “direction of a claim”?

      1. I think it is code for “novel” subject matter.

        Or possibly shorthand for “the difference between the claim and the prior art, whether that prior art is the cited prior art or the ancient practice of humans prior to the ready availability of personal computing devices.”

    1. my understanding was that you could, in step 1 of the Alice test, utilize a subset of claim elements to define what a claim is directo to. However, in Planet Bingo CAFC 2014, Judge Hughes uses portions of the description and the appelant brief

      The answer would seem to depend on the claim. Because one can be one’s own lexicographer it’s possible to draft a claim that, on its face, seems very different from what the claim is, in fact, “directed to” once it’s properly construed.

      Another claim might expressly set forth what the claim is “directed to”, e.g., in the preamble. If that description is accurate, a court may cite the expression. If not, then a court may substitute it’s own words.

      As an example of an inaccurate description, consider a preamble of a claim directed to “a method of improving a treatment”. If the subsequent steps do not, in fact, “improve a treatment”, then the court may observe, after construction of the claim in view of the specification and prosecution history, that the claim is directed to “the use of a correlation for determining possible treatments”.

    2. Its code for I don’t want to think about, or at least type, all the particulars recited in the claim so I am going to distill the claimed subject matter down to a one to three word phrase.

      This is fine if it is just short hand for typing and reading purposes.

      The problem is when the gist becomes the focus of the “abstract idea” analysis as it has in many recent Supreme Court rulings. The gist, being a gist, is, almost by definition, an abstract idea. So ta da… the claim is directed to a machine that flies. Flying is an abstract idea. The claim would preempt all human flight, therefore it is directed toward an abstract idea and is therefore not a machine and not patentable subject matter.

      1. Les,

        There is a difference between the idea of something, and it’s real-world instantiation (if such exists). If the “something” exists or occurs in the physical world, beyond just in the mind, it is not abstract.

        An individual’s “idea” of “flight” is abstract, but “flight” is not an abstract idea. It happens in the physical world. It can be recorded and measured. I have personally made it happen, with some balsa wood and a rubber band.

        Concepts like “shadow accounts”, “debt”, “ownership”, “crediting”, “representing”: abstract. “Flight”: not abstract.

        1. Sorry… mis read it.

          “shadow accounts”, “debt”, “ownership”, “crediting”, “representing” as recited in the associated claims were not “concepts” they were things that were manipulated. For example, the shadow accounts were established and values within them were revised and updated. The accounts were maintained. Hence they are NOT abstract.

          Put another way, flight is just as much a concept as shadow accounts.

          1. How much does a debit weigh? What color is a shadow account? Can you take a video of representing?

            These all have no existence outside the human mind. There is no difference whatsoever between a memory cell containing a “1” denoting the weight of a coconut, and a memory cell containing a “1” to denote the balance of a checking account.

            Your system would have NOTHING as being abstract. Love? I’ll put a 1 in this (contact card, recipe card, vehicle record) if it’s something I “love”, and zero if it isn’t. Now “love” isn’t abstract any more, because I have a computer record for it?

          2. The Wright Brothers did not patent flight but a specific flying machine, and the important claims referred to controlling the flying machine.

  4. Dennis…in Walker vs. Google, judge stark emphasized the below quote from Alice. If one has to remove human ingenuity from patent claims and then interpret them, what else is left to protect? After all, don’t we call this INTELLECTUAL property? This logic would invalidate every patent, because all I have to do is ask the inventor what is the “inventive step” or the so called “idea” and then remove it from the claim and all I am always left is “nothing more”.

    “It bears emphasis that, as the Supreme Court recently explained in Alice, 134 S. Ct. at 2354-55:

    [I]n applying the§ 101 exception, [the Court] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into a patent-eligible invention. The former would risk disproportionately tying up the use of the underlying ideas and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.

    1. Google relied on the non-precedential Planet Bingo. I think Planet Bingo should have won that case but I thought was poorly argued by PB’s attorneys (but considering the panel it was assigned to it was probably unwinnable anyway). Judge Stark in the Walker case relied heavily on the mental steps doctrine. That doctrine is what is going to swallow up all software patents, because any step in software can be performed in a human mind.

      “Mental steps” was not even mentioned at all in Alice. Alice states an abstract idea is a fundamental economic practice. I can see that showing that a practice can be (and has been) performed mentally may be evidence that it is fundamental. But I think applying a dispositive mental steps analysis is no longer proper after Alice and this practice needs to be limited.

      1. Can you please quote where Alice limits the abstract idea to economic practice? In fact Alice mentions:

        “The “abstract ideas” category embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.’

        Thus, if you just ignore the idea of using a propeller with wings, there is “nothing more” in inventing an airplane.

        Thus, now INTELLECTUAL property is devoid of “ideas”.

        1. I think scientist the way to think of this is that the SCOTUS has given the Fed. Cir. carte blanch to invalidate whatever they want. The Fed. Cir. Judges were appointed by Google who do not want any patents for their own self interest.

          This is all part of the federal government being bought. Right now the replacement to Rader is being bought. Obama is probably milking it to get many millions for the Democrats.

          1. “This is all part of the federal government being bought. ”

            It couldn’t possibly have anything to do with the federal government preventing the abuse of its entitlement program to promote the useful arts.

        2. Scientist, Thus, if you just ignore the idea of using a propeller with wings, there is “nothing more” in inventing an airplane.

          I think you and I agree that the real problem with these cases is not that they are disembodied ideas, which would make them “abstract,” it is that the novel subject matter is nonstatutory. The Supreme Court jurisprudence confuses.

        3. if you just ignore the idea of using a propeller with wings, there is “nothing more” in inventing an airplane.

          I think the Supreme Court — the same Supreme Court who wrote Alice — made it perfectly clear in Prometheus that this is not the way their test is to be applied.

      2. >>“Mental steps”

        I think Taranto and Hughes will try to squeeze everything they can into Alice step 1. The mental steps is definitely another game of squeezing more in. Taranto wrote the mere simulation of human mental steps, which, of course, evinces such ignorance of science and technology to merit impeachment. I wonder if our Google Judge knows that about 1/2 of Ph.D.’s in cognitive science spend years trying to get computers to simulate human mental processes. Most likely is that he knows that and doesn’t care. We have barbarians now.

        1. I would like to stick to the language of Alice. I am not able to confirm that this is limited to software or economic ideas. Whether it is new or old idea. Even if it is brilliant idea – such as an airplane.

          I would like to know where in Alice that disputes above understanding?

        2. You don’t make much of a point Ned. Funny how your information processor thinks there is a distinction between those numbers depending on what they are applied to.

        3. Ned, your comment made me think of a question: what is the difference between a anti’s and squirrel’s brain related to computation?

          Answer: there is no difference. According to the anti theory of science there is no equivalence between software/hardware/firmware and their thinking takes place absent hardware. They think in the ether. I am certain that is J. Stevens view of science.

          But, maybe more accurately they know there is a difference but pretend there isn’t for the Google bucks.

          1. As I said Night, your number is 46. That is what you improved information algorithm calculates.

            Now tell us all, Night, whether 46 is the improved price of tea in China, the number of dogs in India, or the number of widgets one must sell in order to make a profit.

        1. I think Alice is internally inconsistent (thanks Thomas), and we can all bang our heads against the all until the next Supreme Court case (which no doubt, will be equally cryptic). All those who say Alice’s guidance is crystal clear are reading it (along with the prior cases) very superficially as there are lots of logical snafus.

          If all “ideas” were abstract, there would be no need for prong 1 and we could just have prong 2 (parker v flook test). I would explain my comment that Ned quotes as there are different “types” of abstract ideas. Some abstract ideas (economic fundamental practices and who knows what else they will add) can never be “rescuable” unless combined with something else allowable (thus the abstract idea in the claim is ignored). Other types of abstract ideas do not fall in the previous category but the claim as a whole is abstract because it doesn’t have a practical physical result (e.g., just processing information). The Cote case may fall into this category. I agree with David Stein below where he states this claim might possibly be rescued by adding “and then use the bin and cluster scheduling to control the industrial process.” Then, the claim is no longer directed to an abstract idea but to a technological process and I would say it would then be statutory. Obviously a similar limitation added to the Alice claims would have no significance. Thus, it is clear that there can be different “types” or “degrees” of abstract ideas based on how technical a subject they relate to. Diehr is a good example of this. You take away the press from the claim and you would be left with the “disembodied” type of abstract claim. But the practical physical application rescues it.

          This is one direction the Fed Circuit can go in. They can also go in the opposite direction that all algorithmic features are “non-rescuable”. The sad part is who is ultimately going to be “right” and “wrong” will just depend on the random panel chosen.

          1. it doesn’t have a practical physical result (e.g., just processing information)

            So, by this reasoning, an algorithm (and single purpose machine) that could find and mechanically retrieve a piece of information recorded on a piece of paper and stored in one of a billion file cabinets would be patentable, but if it were done on a computer, using a variety of novel algorithms for search, retrieval, data compression, storage and transmission it would not be patentable. In both cases, the tasks involve physical devices, with inputs and outputs. The task is identical, but the solution is expressed in a different manner. Both are programmed, but the medium of expression is different. Why is it that algorithms expressed in gears and levers acceptable but ones expressed in electrons or photons not? Both are real.

            1. fngl51, you’re preaching to the choir here. I’m just trying to make sense out of these decisions and the PTAB Cote Decision (but I wouldn’t give too much weight to that). The pendulum is clearly swinging in the other direction and we have to stop it where the powers that be agree it can be stopped before we return to the Flook test.

            2. “Why is it that algorithms expressed in gears and levers acceptable but ones expressed in electrons or photons not? Both are real.”

              I agree with you.

              (and have not heard a good rebuttal)

              “Hardware and software are logically equivalent. Any operation performed by software can also be built directly into the hardware and any instruction executed by the hardware can also be simulated in software. The decision to put certain features in hardware and others in software is based on such factors as cost,
              speed, reliability and frequency of change. There are no hard and fast rules to the effect that X must go into the hardware and Y must be programmed explicitly. Designers with different goals may, and often do, make different decisions … the boundary between hardware and software is arbitrary and constantly changing. Today’s software is tomorrow’s hardware, and vice
              versa.” A.S. Tanenbaum

          2. “who knows what else they will add”

            Would you patent leather buy a home if the government would tell you 10 years later if it comports to all the rules?

            Why would one think this would be different for scientists or investors?

            1. Scientist, I completely agree and many of my other posts are consistent with what you just said. Changing the rules 15 years later is shocking yet it seems to some that it is not a big deal (none of these cases even mention the presumption of validity.) I’m just trying to make sense out of it all and will also be jumping into the pool by going to the Fed Circuit with some claims (assuming the PTAB upholds some 101 rejections). Knowing my luck, I will walk in and see Hughes, Taranto, and Mayer on the panel. I’ll just walk back out.

          3. patent leather, re: 22.1.3.1, I absolutely agree.

            If a claim is fundamentally directed to an improvement in technology and actually claims that improvement rather than ends without actually applying the improvement, it certainly would be eligible. Some of the claims that have been declared unpatentable simply stop before applying the improvement to technology and that is why they were declared unpatentable. Others, as you correctly note, are not fundamentally directed to improvements in technology at all, and even though they have sufficient application, they remain unpatentable because there is no improvement to technology. The Supreme Court has identified at economics as an area that remain unpatentable even if sufficiently applied.

            But having identified economics as an area that remains outside of patentability, it can be generally said that anything that is not directed to improvements in technology will also probably eventually be held not directed to patentable subject matter.

            1. Ned, I don’t think that’s the correct way of looking at Alice. Under Alice, all one has to do is prove a concept “abstract”, then little can save the concept.

              Consider a new and non-obvious encryption technique. Everyone agrees that it’s new and non-obvious. However, it’s based in mathematics (as all encryption is). The mathematics is “abstract”. The computer simply implements the mathematics, so isn’t doing anything new per se, and the computer itself is not improved (encryption just takes unencrypted data and makes encrypted data). Now, the end result — the encrypted data — is improved (say, much harder to decode for an attacker), but the computer is not.

              Alice makes it appear that anything that operates on data to make improved data (e.g., modulation, encryption, many others) is unpatentable under 101. However, to me, a machine that performs modulation, encryption, and the like should be patentable.

              1. I’ll give you an example. I’m working on a case now where the “idea” is that you receive data in a communications device such as a receiver. You process the data in such a way as to remove certain effects of interference. This is useful and new. However, it might also be “abstract”, as everything you do is really mathematical (though memorialized using words). If the Examiner were to state that this is “abstract”, then our options for arguing are extremely limited. Even though we have something new, not obvious, and useful, under Alice, these claims might not be allowed.

    2. Scientist, I can hardly think that a scientist could fail to distinguish between an idea and an application of that idea, which the court was talking about in this phrase:

      “[I]n applying the§ 101 exception, [the Court] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into a patent-eligible invention. “

      1. “I can hardly think that a scientist could fail to distinguish between an idea and an application of that idea”.

        Ned. I cannot distinguish them. Tell me in my airplane example what is the “idea” and what is “application” of that idea? Once you say you ignore the “idea”, everything else is conventional. Tell me how you would write a claim for airplane which passes the Alice test?

        1. Scientist, I’m not thinking that you get it. The idea is of a flying machine. The specification of the apparatus needed to fly is what is patentable. The claim might be to the apparatus but not to the idea. That is the distinction.

          In contrast, there are kinds of ideas, for example economical principles, that are not directed to otherwise eligible subject matter, such as machines manufactures or compositions. Even if applied by reciting all the details necessary to accomplish the task, the subject matter remains outside the patent laws.

          The difference between a flying machine and an economic principle is clear. One is an idea about something otherwise eligible like a machine. The other is an idea about something that is not otherwise eligible, like an economic principle.

          I hope you see the distinction.

          1. CAFC in BuySafe told us that the narrowest part of the idea can be be taken (see below quote). Thus, the narrowest idea is using propeller with wings, not the flying machine. Then everything else is conventional and old.

            I do not see where in Alice it is limited to Economics. They just said IDEAS (see below quote). Please provide a quote in Alice to show that I am wrong. A computer is a machine like an airplane.

            Quote from Alice:

            “The “abstract ideas” category embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.’

            Quote from Buysafe: “the exclusion applies…even if the particular natural law or phenomenon or abstract idea at issue is narrow”

    1. The real problem we have now is a PTO stacked with Google APJs, shadow Google Director Lee, Google Judge Taranto, and Google Judge Hughes.

      It’s the people that are implementing Alice that are the real problem. Obama said he would “fix” the problem on his own and his way was to appoint Google people to “fix” it.

      1. By the way, Google has good reason to want to end all patents. The company really has innovated very little and accomplished very little. They are built almost completely on advertising and have said flat out that they are terrified someone will come up with a better way to search that would take away all their advertising, which they say could all disappear in a few months.

        So, what does the beast with massive profits from advertising, the company that took all the advertising money from print media want to do? Why copy the new innovation, of course. The safe place for Google is to be able to copy others innovation.

        1. Isn’t that a bit of a contradiction?

          If their search is copied… and they can copy others…

          Then there is a net balance.

          Their search algorithm is obviously using semantic analysis… the key is what their algorithm is.

          After that, it is just a huge amount of information.

          So anyone that puts in the effort can replicate the function.

          Google only has safety if they can go faster than anyone else. So far, they have.

          1. Also, Jesse, you are right in that Google sees its competitive advantage as the huge infrastructure that can’t easily be replicated without large capital investment.

            Now, boys and girls, think that through. If all that is true, then a start-up would need a huge capital investment, which it would never get without patents as Google would merely copy.

            You know a good paper would be about the amount of copying that goes on now. The copying that goes on now is huge.

            1. So why hasn’t Bing come even close…

              It has the financial backing.

              I don’t think it has a very good algorithm.

              So it isn’t so easy to “copy”.

              Most of what I see labeled as “copy” is more “imitate”. There is very little actual “copy” involved.

              1. I don’t think it has a very good algorithm.

                Perhaps a bit off topic, but how do you judge? Because if you can make reasonable assessment (a measurement) of the output of the algorithm haven’t you produced something concrete, just like the signal produced by an EKG (see below)?

                Regarding quality, what is your assertion based on (presumably some objective measure)? Do you think that the difference lies in the algorithm or the size of the corpus over which the algorithm works?

              2. True, it is hard to judge.

                Mine is based on queries to both – I get better references from Google so far. More of what I’m looking for is in the first page or two.

                Earlier, Bing couldn’t even find references to some Microsoft products that Google would find. Some searches for information about competing products would also come back with no results, or incorrect results.

                And MS can easily support Bing… but it has to do a better job than Goolge; just as Google had to do a better job than Yahoo when Yahoo started to fail.

        2. Night, are you saying that Google is not innovated?

          You might ask the man on the street what company is more innovative, IBM, Apple, or Google. I might think that Google would win that battle.

          1. The fact is that they have provided very few innovations that have provided them with revenue. The fact is there biggest fear is that someone will innovate to come up with a new search strategy and take away almost all their revenue over night. Those are facts.

            1. That is why they keep researching, and investing in, more advanced search.

              It is the business of “staying ahead of the competition”.

              When businesses stop investing in research, they die.

              MS could have done it. Yahoo could have continued research… but neither have. Thus Yahoo lost to a big MS wallet and had their search taken over.

              MS can still do research. It just seems that most of it comes to nothing except patents to keep anyone else from doing it.

  5. A propos the EPO test, here is a very recent EPO Decision:

    link to epo.org

    about a claim directed to a train of defibrillation pulses. As you know, methods of treatment of the human or animal body by thereapy are not eligible.

    The Board of Appeal allowed the appeal, finding that the EPC does not require for patentability that what is claimed be tangible in the sense of material. It found that the claimed pulse train was of a concrete nature because the claimed pulse train results from an electrical signal and can be measured at any moment. The case was remitted to the Examiners with an order to grant the patent.

    I mention the case in the hope that it corrects verious misapprehensions aired in these columns, about what is eligible for patenting in Europe and because it reveals the difficulty of using words like “concrete” or “tangible” or “physical” as a litmus test of eligibility.

  6. Check out this new opinion from the CAFC, issued today: link to cafc.uscourts.gov

    The case relates to pens that automatically digitize the user’s writing. (I.e., the pen records the movement of its tip during writing, transmits info wirelessly to another device that converts the info into a representation of the handwriting, so you have your notes stored electronically for later.)

    Look at the first representative claim (on p. 6 of the opinion); it recites the following components:
    a housing (btw, old & well-known );
    a transmitter (also old);
    a microswitch (also old); and
    electronic circuitry (also old), defined functionally.

    The point of novelty (if there is one) is the function performed by the recited electronic circuitry.

    Now to get to my point: The claim is directed to the basic idea of using circuits to do useful stuff. Thus, it is clearly abstract, and clearly directed to in eligible subject matter. So where is the sua sponte invalidation under 101?!?!?!

    1. The claim is directed to the basic idea of using circuits to do useful stuff. Thus, it is clearly abstract, and clearly directed to in eligible subject matter. So where is the sua sponte invalidation under 101?!?!?!
      Are you being sarcastic or not?

    2. Functional claiming and statutory subject matter are not necessarily the same thing.

      The claim, if it involves an algorithm even by inference, passes Diehr.

  7. Joe The statutory language of 101 would remain the same listing the patent-eligible categories of inventions, but any discussion of inventions encompassing the exceptions would have to be dealt with under 102 and 103. So you couldn’t patent gravity because your gravity is not novel. Is this a workable solution? Why or why not?

    Of course you understand, Joe, that eligibility considerations have been part of 102/103 analysis for decades (e.g., the so-called “printed matter” doctrine). No sane patent system can function without such limitations because it would quickly be overwhelmed and exploited by purveyors and hoarders of j u n k, benefitting only those purveyors and hoarders at the expense of everyone else.

    A straightforward example to get you focused on the problem is a claim such as the following:

    1. A process comprising thinking about [insert new, useful non-obvious correlation].

    That’s a “process”. But it’s an ineligible process. How do you “get rid of it” under 102/103? You can’t, unless you invoke eligibility considerations under those statues. Let’s look at a slightly more complicated example:

    1. A process comprising reading a person’s medical chart and thinking about [insert new, useful, non-obvious diagnostic correlation].

    Again, that’s an ineligible process. How do you “get rid of it” under 102/103? You can’t, unless you invoke eligibility considerations under those statues. Let’s take another similar example:

    1. A process comprising using an old but otherwise eligible test to obtain data about a person, and thinking about [insert new, useful, non-obvious diagnostic correlation].

    This is also an ineligible process. How do you “get rid of it” under 102/103? You can’t, unless you invoke eligibility considerations under those statues. This is the claim asserted by Prometheus, which turned doctors who were lawfully performing an old test into infringers when they took the additional step of merely thinking aboout the correlation.

    Please try to understand that the fact that I can present numerous examples of ineligible claims does not mean that “nothing is eligible for patenting.” That would be a ridiculous leap of logic (but that doesn’t stop people from taking that ridiculous leap in the comments here every other day).

    Please also understand that if you believe that society needs patents that turn practitioners of the prior art into infringers when they think about things, you are free to lobby your Congressperson to change the law to expressly include such patents. I am 100% confident you will fail at achieving your goal but by all means go ahead and try to do it.

    There are many other examples that raise different issues. These issues are being addressed, in turn, by the courts right now because the public has turned the spotlight onto the broken patent system. I’m happy to discuss some of the other issues with you if you are still confused.

    1. This is such sad reasoning. As if anyone believes this attempt: gee this doesn’t quite cut it, but maybe there is something that will.

      The Church-Turing Thesis is being ignored. No wonder when they appoint non-science, non-patent law judges to the Fed. Cir.

      1. Kind of funny too how the presumption of validity is being turned into prove to me that it is valid and at the PTO what we are seeing is “shall be granted unless” to prove to me……

        Everyone has an angle. At the PTO the examiners are loving it. No more objective test. We just do whatever …

        1. Related somewhat…

          Indulge me on a wide integration here but check out the US in the International Property Rights Index

          link to internationalpropertyrightsindex.org

          I think the gist of the current political ideology is reflected in how the US treats various forms of property rights… notice IP has not yet “fallen into line”. No wonder the attack has begun to focus there…

          1. Something gives me pause when I see Finland at number 1.

            Region profile: Finland

            From 2009 to 2013, the overall IPRI score for Finland decreased by 0.6%. Despite continuing to lead the world in property rights, the IPRI remains stable at 8.6 points in 2013.

            From 2012 to 2013 both the Intellectual Property Rights and Physical Property Rights components remain unchanged. However, from 2012 to 2013 Legal and Political Environment increased by 0.1 points. This increase is because of improvements in both Control of Corruption and Judicial Independence.

            Category

            Score Global Rank Regional Rank
            International Property Right Index

            8.6 1 of 130 1 of 19

            Legal and Political Environment

            8.9 1 of 130 1 of 19

            Judicial Independence

            9.3 2 of 130 1 of 19

            Rule of Law

            8.9 1 of 130 1 of 19

            Political Stability

            7.8 1 of 130 1 of 19

            Control of Corruption

            9.4 3 of 130 2 of 19

            Physical Property Rights

            8.3 1 of 130 1 of 19

            Protection of Physical

            9.2 1 of 130 1 of 19

            Registering Property

            9.4 11 of 130 3 of 19

            Intellectual Property Rights

            8.6 1 of 130 1 of 19
            Potection of Intellectual Property Rights

            9.3 2 of 130 1 of 19

            Patent Protection

            9.3 2 of 130 1 of 19

            Copyright Protection

            7.5 11 of 130 6 of 19

            Who has been to Finland recently. I was given to understand that the place was a mess.

      2. This is such sad reasoning.

        What is “sad” about any of the reasoning in my comment?

        The Church-Turing Thesis is being ignored.

        Huh? What does this have to do with my response to Joe?

        1. The second half of the sentence said why.

          You know why with the Church-Turing Thesis. We have discussed this about a billion times.

  8. Preface: Keep in mind almost ALL inventions are directed to HOW a certain result is achieved regardless of how narrow/broad, tangible/abstract the desired results or problem is characterized. The claimed invention is not to be confused with or conflated with the results it achieves.

    It may be proper (if not “safe” in today’s patent climate) to say that “generic computer implementation” means a computer implementation which, in addition to having standard individual hardware and software elements, is no more than a “generic combination” of those common hardware and software elements. Moreover, as in the mechanical arts and almost all other arts since the inception of the patent system, almost ALL PATENTABLE INEVENTIONS are in fact INVENTIVE COMBINATIONS OF FUNDAMANTAL ELEMENTS which are themselves, when taken in isolation (or when unthinkingly ascertained as a whole without any level of precision), NOT NEW.

    It likely would be proper (but not necessarily safe) to assume, after Alice, a non-generic “implementation” and also the something “significantly more” than the “abstract idea” is to be found in the INVENTIVE COMBINATION of GENERIC FUNDAMENTAL BUILDING BLOCKS directed at achieving the results according to the “abstract idea” or “concept” (problem) to which the invention is “drawn”.

    (The term “abstract idea” here is only meant to signify what SCOTUS meant… not what the words may actually mean)

    1. Moreover, as in the mechanical arts and almost all other arts since the inception of the patent system, almost ALL PATENTABLE INEVENTIONS are in fact INVENTIVE COMBINATIONS OF FUNDAMANTAL ELEMENTS which are themselves, when taken in isolation (or when unthinkingly ascertained as a whole without any level of precision), NOT NEW.

      Bingo.

      A point long made on these boards – while using extreme logic – has also long gone unanswered: think of configurations of those NOT NEW ELEMENTS of electrons, protons and neutrons.

      People – it is the EXACT same logic at play.

    2. Keep in mind almost ALL inventions are directed to HOW a certain result is achieved regardless of how narrow/broad, tangible/abstract the desired results or problem is characterized. The claimed invention is not to be confused with or conflated with the results it achieves.

      Is this meant as an ideal statement or an actual statement of how things are? Information processing, 99% of the time, is most definitely directed toward the results it achieves rather than the particular algorithm that gets one there. Which is why those claims are constantly being knocked down.

  9. I am interested in opinions about how the patent landscape would look if Congress explicitly, through amendment to section 101, removed the law of nature, natural phenomenon, etc. exceptions. The statutory language of 101 would remain the same listing the patent-eligible categories of inventions, but any discussion of inventions encompassing the exceptions would have to be dealt with under 102 and 103. So you couldn’t patent gravity because your gravity is not novel. Is this a workable solution? Why or why not? It seems like the analysis would be much more straightforward. Rather than starting with the exceptions, we would start with the language of the 101 statute. Is it a statutory category of invention? If so, has it been done before or is it an obvious variation of something that has been done before. Thanks!

    1. Joe, you and several other commentators on this blog on the new Sup. Ct. mandated 101 case law remind me of the many published remarks of the rebelling slave state residents during and after the Civil War. I.e., still into reality-denial long after no longer having a snowball’s chance in h– of political or military success for their agenda. There is not the slightest chance that a Congress which recently overwhelmingly passed the AIA and very nearly passed strong anti-troll legislaton is going to vote to overule several unanimous Sup. Ct. decisons and render patentable patents on abstractions, laws of nature, natural phenomenon, mathematics, etc.
      The only realistic hope is that the Fed. Cir. will draw sensible limitations on 101 rejections.

      1. Hi Paul. Thanks for your note. I understand the difficulty in making changes to the statutes and that it is not likely to happen. What I am wondering about is if the patentability analysis can somehow start with the statute (rather than the exceptions as in Alice) and go from there. Practitioners, inventors, investors, etc. want predictability more than anything, and with the current line of cases, there is no predictability. If we start with the statute and work from there, it seems like the analysis and the result would be more straightforward and more predictable. Without a sensible analysis or process, I am not confident that there will be sensible limitations on 101 rejections.

          1. Please do not completely miss-represent what I said.
            All I am saying is that Congress is simply not going to overule these Supreme Court 101 decisions, whether one likes them or not.

      2. Paul, one senses that the Fed. Cir. is already on SCOTUS’s ____ list. The days when the Federal Circuit could get away with attempting to “draw sensible limitations” around Supreme Court decisions and otherwise run interference for the patent bar are over. The Federal Circuit is not the “Supreme Court of Patents” and it never was. Should it be perceived as actively seeking to frustrate the jurisprudence of the Supreme Court, I think the latter would find some administrative way to effectively strip it of jurisdiction in patent cases (if Congress does not). Which might not be a bad idea. I can think of worse things for the country than having a Judge Posner regularly authoring decisions on patent law.

        1. I will firmly disagree Egon that “it never was.”

          I will also point out that there exists a fully constitutional mechanism for Congress to – in reality – make the CAFC the supreme court of patent law.

          Will they? That’s a completely different question than can they.

          1. and it is ironic that Justice Thomas authored the opinion. I thought that he was some type of strict constructionist, but he is continuing with the SupCt interpreting/rewriting 101 as it pleases.

            (103 and 112 would take care of the problems they are worried about, but it is much more fun for judges/justices to use an I know it when I see it approach. A lot easier than having to actually read the application, the claims and the prior art.)

        2. Egon, Agreed.

          The 9-0 decisions this year are sending the Federal Circuit a message. The accepted commentary in the Alice oral argument that the Federal Circuit was resisting Prometheus was another. The comment by the Court that the Federal Circuit did not understand infringement was a third. These decision, these comments should shake the foundation of the Federal Circuit that it is in the crosshairs of the Supreme Court. Things will happen if they continue to defy the Supreme Court.

      3. paul – define “sensible’ when the Court provided NO limit on the sword of “Gist/Abstract.”

        I sense that you too are living in a state of denial.

      4. Paul, to my mind, it isn’t going to happen like that. The Fed. Cir. is going to have to be reined in by the SCOTUS. The Fed. Cir. now has a core of Google judges that will end up having to be reined in by the SCOTUS.

        We can expect Taranto to try to encompass everything in prong 1.

      5. Yes, Paul. There is no prospect of changing §101 in Congress.

        If there were such a possibility, it would be the financial industry preempting more multi hundred billion dollar claims like those in Bilsky and Alice from threatening the whole industry with an explicit exception for business method claims. There is a slim chance that if the opportunity arose, the software industry, economic scholars, and computer science academia might be able to express their near total consensus and get software excluded.

        But none of that is going to happen any time in present view.

        What would Joe’s §101 look like?

        … any — not necessarily new or useful — process, machine, manufacture, composition of matter, law of nature, abstract idea, mathematical formula, mental process, or written expression …

        That should cover the commonly noted exceptions.

        Probably the Supremes would note the limited Constitutional grant of patent power and read all the exceptions right back into the law. The grant is limited to “Progress of Science and useful Arts” and “Discoveries.” There’s simply no Constitutional authority to grant patents on abstract ideas or mathematics and computer software or laws of nature or written expressions.

        1. Hi Owen. Thanks for your post. I was thinking that the “revised” 101 would read as the current 101 does: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title,” but that there would be no exceptions carved out. That is, if the claimed invention is a method that employs an abstract idea, it is patent-eligible under 101. The focus would then shift to 102 and 103 to see if the method employing the abstract idea was new and not obvious. So the 101 gate might be a lower bar, but the overall patentability of the invention would still be subject to the limitations of 102 and 103. Software patents reciting methods performed by a computer could be eligible for patentability under 101, but if they are just taking a known method that used to be performed by hand, an examiner/court would likely say it was obvious to do that and reject the claim under 103. “New” methods could receive patents, while old methods would be properly rejected under 102 and 103. I like to think that this analysis of the claim flows more logically from each section of the Patent Law and makes for a more predictable result. I am interested in your take on if this is a workable process. Thanks!

    2. if Congress explicitly, through amendment to section 101, removed the law of nature, natural phenomenon, etc. exceptions…any discussion of inventions encompassing the exceptions would have to be dealt with under 102 and 103. So you couldn’t patent gravity because your gravity is not novel. Is this a workable solution?

      The result is that the Supreme Court would hold the statute unconstitutional and nobody would get patents. The court is not reading a judicial exception for fun, or attempting to legislate from the bench, the exception is necessary to keep the otherwise overbroad statute from being unconstitutional. Congress lacks the authority to grant patents on whatever they please, and the court has already detailed how the exceptions are necessary to preserve the validity of the system.

  10. This is something patent leather posted to ipwatchdog. To my mind this is where the fight is going to be. The adds something more to the GPS is a technology test just like at the EPO. But, how much they can expand the abstract idea is where we will tell whether or not software is dead or not.

    So, look at this. The Board just took what the invention did and cut and paste it and said it was well-known with no supporting evidence. (By the way it is this type of jurisprudence that has been the basis of EVERY pogram in the world.)

    I hope patent leather doesn’t mind me re-posting.

    patent leather says:

    Just yesterday, a PTAB Opinion in 12/352,538 was issued which reversed a 103 rejection but sua sponte issued a 101 rejection on all claims (the invention is an improved lithography technique for making semiconductors). Claim 3 recites:

    3. A method of using clusters in electronic design automation, the method comprising:
    receiving data for a plurality of bins, each bin including a plurality of clusters, each cluster representing a plurality of shapes in an original layout, the plurality of shapes having a proximity to each other determined by a grow operation; and
    using a computer, preparing a phase shifting layout for the original layout by phase shifting each of the plurality of clusters independently of one another.

    1. So, to be clear. Two prongs. 1) abstract idea that is notoriously well-known. This is where the battle lies with whether or not software is patent eligible. And that is why in the Bingo case it was so disturbing that Taranto said their method “was like” the method in Alice. See, Taranto is trying to expand the test in prong one as much as possible.

      2) Is merely the technological test at the EPO. That is it is just whether or not it relates to what we currently think is hardware or the functioning of a computer or other device.

      1. And boys and girls this is all there is!!!!!!!!!!!! Everything else is noise!!!!!!

        !!!!!!!!!!!!!!!!!!Watch prong 1. That is where the fight is.!!!!!!!!!!!!!!!!!!!!!

        Prong 2 is simply EPO case law.

          1. Nothing more than the “Gist/Abstract” sword – when you can eliminate actual claim elements with the Gist edge, anything can be made to be Abstract and removed with the trailing edge.

            Is it not odd that certain posters here insist on playing games with verbiage, truncating the phrase “statutory category” down to “statutory” in a rather feeble attempt to ignore the fact that the Court in its use of the “Gist/Abstract” sword has eliminated the actual words of Congress with the statutory category aspect of 35 USC 101?

            Being a nominalist is one thing (note NWPA, that Ned has labeled you the ultimate nominalist), but what do you call the person of the opposite extreme? What do you call a court that has rendered an entire phrase of Congress written words moot and meaningless?

            We have now a judicial doctrine – vague and undefined – that does not care at all whether the claimed invention actually meets the statutory categories OR has utility (the other portion of 35 USC 101). In its place, we have the judiciary – deciding sua sponte and without clearly defined legislative guidelines (which implicates the separation of powers doctrines – no matter the vintage of Supreme Court common law) an a priori undeterminable test “of first impression” that nullifies entire fields of claims.

            Further note that this weapon has been unsheathed with no limitations as to its use – the same “logic” applies in any art field whatsoever. Those who celebrate the use of the weapon in art fields they happen to not like because of philosophical reasons should not be surprised when that weapon is used in art fields that they do not despise. (and do not all upon those in the art fields you despise to come up with some “reasonable” stopping point of the use of the weapon – reap what you sow, my friends of the not in my back yard variety).

            1. I think that is one of the things that is missing here. There are other fields that are being hit hard by this. And, from what I’ve seen in OAs, a lot of this is being used by the Office to clear out their backlog.

              Ned’s opinions rarely are based on evidence.

            2. I agree. It is a strawman test. Identify the ‘gist’ or ‘heart of the invention’ – what the new phrase – ‘inventive concept’ or ‘basically’? And then strike it down – don’t bother with reading the claims. I thought this is exactly what was abolished under the ’52 act with the break out of 102/103/112.

                1. iwasthere, you might start any analysis by first determining whether the statutory subject matter in the claim is old. The rest is potentially new – and the courts summarize it and call it the gist.

                  There is no rocket science to understand what is going on here. And it was the conventional form of analysis of claims to non statutory subject matter prevailing in the courts until Judge Rich.

                  See, e.g., Hotel Security, Guthrie v. Curlett, and In re Russell, just as a small sample of a very large number of cases to the same effect.

              1. iswasthere, “Identify the ‘gist’ or ‘heart of the invention’ – what the new phrase – ‘inventive concept’ or ‘basically’?”

                You have to be kidding. Really, you do. You cannot be that dum……

                Come on now. Really??????????

                1. Now Ned was that a real response or a elementary school taunt of the type that Dennis has asked us not to post?

                2. Ned’s non-response is non-sense.

                  This can be easily seen as coming from previous discussions we have had on the very point here that the Court has disregarded the statutory category aspect of 101.

                  Some of our dialogue indicate that Ned saw this and thought the Court to be off base.

                  In typical Ned fashion, Ned is attempting to weave a version of caselaw that supports his agenda. To do so, he needs to change what the Court actually did in Alice and twist it to fit his version of “statutory-truncated-from-statutory-category” and somehow provide the illusion that the Court was addressing something that simply did not meet the statutory category aspect of 101.

                  There is simply NO reasonable – or ethical – way of reading the law (the newly written Supreme Court common law) in that manner.

                  None.

                  To even pretend otherwise is offensive to the decency of anyone who respects the rule of law.

                3. Makes one wonder whether or not there is going to be a takings case rise to the SCOTUS after the new federal common law of Prometheus, Bilski, and Alice.

                  There should be.

                4. I guess i am a little snarky this morning. But, Anon2 above states:

                  It likely would be proper (but not necessarily safe) to assume, after Alice, a non-generic “implementation” and also the something “significantly more” than the “abstract idea” is to be found in the INVENTIVE COMBINATION of GENERIC FUNDAMENTAL BUILDING BLOCKS directed at achieving the results according to the “abstract idea” or “concept” (problem) to which the invention is “drawn”.

                  Now here is a person honestly grappling with the 101 issue and attempting to frame an objective test. Sounds like boilerplate gibberish. It is certainly not very enlightening, and its is no fault of the Anon2 analysis or thinking skills. The case law is unhinged from a rule of law. The another anon is exactly right – it is a gist test – reframed as a 101 test. That said, I am not going to defend a Walker claim that reads on flash/thunder or combines a slot machine with a telephone – or selling old hamburgers at a discount.

                  On a lighter note, at least we can all dismiss the constant neighbors housewives (sorry, houseperson)- invention – oh I have an invention! How about an app that makes a dog whistle ! – as not patentable subject matter.

                5. iwasthere

                  I have been noticing some systemic errors:

                  1 conflation of the claimed invention with one or more of a. context b. problem/advantage c. desired results, all three of which are often expressed as a mere idea, in the abstract, etc.

                  2 unwarranted focus on “generic” nature of individual elements of a claim rather than the actual combination, mischaracterization of the non-generic combination as generic, complete dismissal/ignorance of inventive combination.

                  and thought given the current state of things it would be useful to find ways to best argue around Alice. I’m not saying this should be adopted as a legal test, I’m saying this is where we (advocates of patent owner’s rights) could look to position our client’s inventions.

                  Sorry if you felt it was just “boilerplate gibberish”. I never aim to waste anyone’s time.

                6. iwasthere, given the current state of things it would be useful to find ways to best argue around Alice.

                  One should consider drafting claims as in Diehr where the conventional process, machine, manufacture or composition are modified by the nonstatutory elements to produce an improvement.

        1. By the way, everyone should notice that in effect what we are getting is the EPO test and yet there is simply no basis for this legislation. A technological test? Where is that anywhere in our patent law?

      1. Very much like human information processors. And we all know humans are worthless–well at least some humans.

      2. Except that it generates a shifted mask set for later lithographic process on the same machines in order to account for manufacturing defects in the lithography tooling.

    2. Re: “The invention is an improved lithography technique.” ? Where is any of that in this claim? If it was, they might have much better odds of overcoming this 101 rejection on BRC on appeal. [This is not patent litigation, where patent owners can argue that their claims can be read to include all sorts of thing that they do not actually include.]
      Are there clear specification definitions of ambiguous non-structural claim terms like “cluster” “bins” and “growth operation?” Also, “using a computer” is only a limitation of the second part of this claim, and not the first part of this claim. Are they actually intending to cover manual human steps there?
      Since this was an Board decision on an application they can re-file it and improve their claims.

      1. Paul, no doubt that this claim can likely be fixed to work under prong 2, but the point was how prong 1 was being used to reject the claim.

  11. Until now, I had supposed that there was international consensus about eligibility in chem/bio but most definitely not in software inventions.

    But now, in chem/bio, Prometheus/Mayo has destroyed that consensus. A pity, I think.

    Conversely, in software, post-Alice, I see a burgeoning international consensus around a Justice Douglas “smell test” of whether the alleged contribution is within the useful arts (or in “technology” or in the “physical realm”).

    And it doesn’t get any easier, with consilience bringing us to the point where there is no longer any useful distinction between the hitherto separate worlds of chem/bio and data processing. But perhaps the passion of the software debate will help to bring back clear sight and consensus in chem/bio.

    1. Your “logic” continues to come across as an oddity, MaxDrei:

      a Justice Douglas “smell test” of whether the alleged contribution is within the useful arts (or in “technology” or in the “physical realm”).

      Those are three very different smell tests – and the “physical realm” one is strikingly different than the others (and per the In re Niutjen line of cases, is not even used – physical element of signals accepted, focus on transience).

      The old habit of provoking without critical thinking is hard for you to break, eh?

      1. Very different anon? Really? Go on, give me a clue to your thinking?

        If all I get in reply is more insults, I’m not going to reply, no matter how much you then crow that I’ve run away.

        And anyway, where in my schtick do you find me asserting that the three yardsticks all have the identical length. As I see it, they are three test questions to use. If any specific claim fails all three, that’s significant. If the claim passes all three, that settles it. But if a claim seems to pass one of them and fail another, it might need more thinking about.

        And of course, claims to signals are indeed a challenge.

        1. A clue…?

          Asked and answered – many times now (as per the difference between useful arts and technological ones).

          As to “physicality” – also just answered. Your reply of “indeed a challenge” really does not advance the discussion, now does it – have we me the limits of your contributions? provoking without thinking (again)?

          You have been given much more than just insults. The insults come because you refuse to actually think with what has been given to you, and you prefer to play the game of “provoke” without thinking, of being a shill for all things EPO.

          I believe though MaxDrei, that you ask not to really understand, as those opportunities have long been afforded to you.

        2. Max, try this. Look at replies in your e-mail and skip over anything and everything anon posts. Makes this blog a lot more enjoyable.

          1. Because ignoring inconvenient points of law and fact makes life (and Ned-IMHO-law) so much more enjoyable, and that bubble chamber enjoyment is really the goal here….

            Not having to deal with any pesky counterpoints that ruin arguments…

            Ahhhhhh – if only real life could work out so nicely.

    2. Max, I think the US and the EPO are actually getting closer. You did observe, if I recall correctly, that where the novelty was in the non technical in Europe, there was no technical advance.

      That is what is going on here as well.

      1. Ned, good advice. Thanks.

        What happens at the EPO is that the only sort of non-obviousness that “counts” is non-obviousness within the useful arts. The EPO is practised and adept at setting to one side all assertions of non-obviouousness that are outside the useful arts.

        As to novelty, the EPO has its own equivalent to the Printed Matter Doctrine. Again, features asserted to endow the claim with novelty don’t count if they are not “technical” features.

        Armed with these 102 and 103 tools, the EPO can be relaxed about 101, and duck out of any comparison with the prior art. Instead, it simply asks whether the subject matter of the claim has “technical character”. If you claim “A Computer” it does. If you claim “A method of doing business” it doesn’t.

        The outcome of all this is that the EPO makes short shrift of its examination of any subject matter. Some people like that. Others don’t. Perhaps the ones that do are gaining the upper hand?

  12. MM — you really want a serious discourse? Let me give you a hypothetical.

    Drug A was pulled by Company X after a Phase III trial. Although drug A showed some promises during Phase I and Phase II trials, it just didn’t pan out due to some serious side effects and spotty effectiveness. The patent on Drug A expired 15 years ago.

    Company Y did some research and discovered that the side effects are limited to a certain population with a particular DNA sequence (Sequence 1). They also discovered that the drug is particularly effective with a population having another particular DNA sequence (Sequence 2).

    They submit a patent application claim the following:
    A treatment system, comprising:
    testing a patient for Sequence 1 and/or Sequence 2;
    treating, based upon the testing, the patient with Drug A.

    Perhaps instead of “testing …” we can insert “receiving the results of a testing of …” We won’t likely get direct infringement except for the patient, who is the user of the system, but we can go after the doctor/testing facility/drug supplier based upon secondary infringement.

    Are these claims directed to statutory subject matter? Why or why not?

    Bonus issue: as a matter of policy (regardless of the law) is this the type of research we should be incentivizing?

    1. Let me give you a hypothetical.

      Okay, and then you can respond to one of mine.

      Company Y did some research and discovered that the side effects are limited to a certain population with a particular DNA sequence (Sequence 1). They also discovered that the drug is particularly effective with a population having another particular DNA sequence (Sequence 2).

      This is true of every drug ever invented and every drug that ever will be invented. Why? Because different people are different. The more information you have, the better treatment you can provide. This basic concept also applies, by the way, to a nearly infinite variety of other contexts besides medicine. Advertisting and sales leap immediately to mind.

      1. This is true of every drug ever invented and every drug that ever will be invented.
        They did DNA sequencing hundreds of years ago when many drugs were invented? I didn’t know that. I guess one does learn something new every day.

        This basic concept also applies, by the way, to a nearly infinite variety of other contexts besides medicine
        So, if somebody invests the time and effort to identify one of these relationships, it shouldn’t be protected? Shouldn’t these “discoveries” (where I have seen that term used before?) be incentivized?

        1. What are the odds, Oh no, that you will actually receive a thoughtful and cognitive reply – sans ad ahominem- from Malcolm? Even here in this field – the one that he supposedly practices in?

          1. What are the odds, Oh no, that you will actually receive a thoughtful and cognitive reply – sans ad ahominem- from Malcolm?
            I kind of wanted to find out.

            My hypothetical is something that I’ve thought about for a long time. The idea that many of the medicines that we thought had promise but didn’t pan out did so because they weren’t tailored enough. I can easily see the day when someone is ill, they get a genetic test that identifies the specific problem and/or helps identify that best treatment plan based upon a person’s ge-ne-tic makeup.

            Although this would drive the privacy advocates crazy, I also see a day when people’s medical records (and genetic history) are collected and data mined to find connections that we cannot see today because of the few data points we are working with. I see this revolutionizing medicine. Again, one aspect is the privacy concerns. Another aspect is incentivizing the people doing the research to identify these relationships/connections.

            1. The idea that many of the medicines that we thought had promise but didn’t pan out did so because they weren’t tailored enough.

              There is considerable prior art in this space that dates back nearly a decade.

              Mining the data is also pretty routine today. What is the invention? All of this is obvious to one skilled in the art.

              1. There is considerable prior art in this space that dates back nearly a decade.
                The fact that some relationships have been found does not establish that ALL relationships have been found.

                Mining the data is also pretty routine today. What is the invention? All of this is obvious to one skilled in the art.
                Then why hasn’t it been done?

                1. The fact that some relationships have been found does not establish that ALL relationships have been found.

                  Is that clearly anticipation by one skilled in the art? The concept of tying drug and dosage to specific sub-populations of patients based on genetics is neither new nor novel. There is plenty of prior art.

                  Then why hasn’t it been done?
                  What makes you think it isn’t being done? What purpose do you think that the biorepositories serve? What purpose do you think that Open Access literature serves? What purpose do you think that the public repositories of gene/genome/metagenome/microbiome data serve?

                  ….but, how much of that will appear in the patent literature in the future, if all of it constitutes non-eligible subject material? Who will benefit from mining the data?

                  It won’t be the small innovators or university labs. It won’t even be the pharma companies.

                2. The concept of tying drug and dosage to specific sub-populations of patients based on genetics is neither new nor novel.
                  I acknowledged that. The hard part is finding the specific relationships.

                  Adding trace amounts of various elements to steel is known to increase its properties. That doesn’t mean that every steel composition is no longer patentable under 101, 102, and/or 103.

                  What makes you think it isn’t being done?
                  Being done is not the same as having been done. If this was known “nearly a decade,” why hasn’t it been done yet?

                  how much of that will appear in the patent literature in the future, if all of it constitutes non-eligible subject material? Who will benefit from mining the data?
                  I’m not following the point you are trying to make.

                3. See below-

                  The hard part is finding the specific relationships.
                  Perhaps the discovery of a SNP or mutant allele and how that ties to a specific disease and the therapeutic utility of a drug may be non-obvious, but that would not be patentable. The diagnostic test would be based on finding the SNP or mutant allele, with the prediction that the drug would/would not work.

                  How do I word my claims to work around a 101 rejection on the first part (my test is based on a natural phenomenon) and a 102 or 103 rejection (or both) on a test based on that discovery.

                  Adding trace amounts of various elements to steel is known to increase its properties. That doesn’t mean that every steel composition is no longer patentable under 101, 102, and/or 103.

                  But in this example, can’t the inventor also claim composition of matter (given there is no prior art or the properties of the new steel wouldn’t be anticipated by one skilled in the art)?

                  What makes you think it isn’t being done?
                  Being done is not the same as having been done. If this was known “nearly a decade,” why hasn’t it been done yet?

                  Correct- it has been done. You might want to look in the area of microfluidic devices (lab-on-chip) for use in personalized medicine (aka theragnostics). The question one needs to ask is why wouldn’t this be discovered as part of a preliminary search on prior art? Might it be because the current search methods are so inadequate? Wouldn’t it be nice if there were search methods that actually understood what you were really looking for, regardless of the terms you used to search, and actually found that information? And, if somebody invented such methods, do you think they would be patentable subject material?

                  As for why the field of theragnostics hasn’t matured, I suspect that has as much to do with business decisions as IP law. But, I have been chastised previously for raising but-for fallicies…..

                  Seems I can’t escape that reality.

                  how much of that will appear in the patent literature in the future, if all of it constitutes non-eligible subject material? Who will benefit from mining the data?
                  I’m not following the point you are trying to make.

        2. “So, if somebody invests the time and effort to identify one of these relationships, it (the relationship) shouldn’t be protected?”

          Not really a matter of “shouldn’t”. It’s a matter of “cannot”.

          1. Not really a matter of “shouldn’t”. It’s a matter of “cannot”.

            Are these relationships a discovery? I think so. Where did I see that term used before. Oh wait, here:
            “The Congress shall have Power 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”

        3. They did DNA sequencing hundreds of years ago when many drugs were invented?

          Of course they didn’t. So much for the “serious discussion.”

          1. This is true of every drug ever invented and every drug that ever will be invented.
            followed by:
            Of course they didn’t.
            Make up your mind.

            So much for the “serious discussion.”
            That point was conceded once you were invited to be part of the discussion.

    2. Are these claims directed to statutory subject matter? Why or why not?

      I don’t believe they are. Administering the drug to people needing the drug is old. Sequencing human genomes is old. What’s really being protected here is the information about who are the “best” candidates for treatment among those already known to need treatment.

      I’ll grant you that there are worse claims out there from an eligibility standpoint and it’s possible something similar to this could be eligible. But assuming I can obtain the drug (or make it myself for cheap with my mini chemical synthesis robot) because it’s off-patent, why on earth should I have to pay Company Y before I treat myself with the drug? That seems deeply messed up to me and a lot of other people, particularly when in nearly every one of these scenarios Company X will already have discovered that some people responded better than others.

      1. why on earth should I have to pay Company Y before I treat myself with the drug?
        If you didn’t do the sequencing and you didn’t use the result of the test as part of the treating, then you wouldn’t be infringing.

        That seems deeply messed up to me
        Why is it messed up to find a use for a product that was previously deemed a failure? Remember, this drug failed its Phase III trial.

        Company X will already have discovered that some people responded better than others
        Isn’t there a difference between (I) administering a drug, looking at the reaction, and identifying a person as positively responding to the drug and (II) testing the person for a characteristic, and knowing, based upon the testing, that the person is a good candidate for the drug?

        1. Why is it messed up to find a use for a product that was previously deemed a failure?

          I never said that finding a use for product that was deemed a failure was “messed up.”

          So much for the “serious discussion.”

      2. If the drug, by some effect of it’s novel chemistry, can discover and respond to which patient has which genotypes, it certainly should be eligible. If the discovery is merely information, it cannot be patented.

        As to large efforts and investments; a Hollywood movie may take years of effort, hundreds of millions of dollars of investment, and display vast creativity and novelty. Not Patent Eligible.

          1. Who is the builder of strawmen? Because I am opposed to software patents, I MUST simply be opposed to all IP protection, including patents for machines and copyright for written works.

            But I am most certainly not against IP protection. I am against perverting the patent system, which is for THINGS and not IDEAS.

            1. Martin, is a commonplace tactic of the proponents of patents on software and business methods to label anybody who opposes such patents as being anti-patent or worse. But as you point out, the people who oppose such patents or often than not are actually in favor of a strong patent system.

              One of the worst of these people is a person called Night Writer Patent Attorney, who uses especially foul language in describing anyone he disagrees with. But as you know, the person who most often makes personal attacks against anybody with whom he disagrees is none other than “anon.”

    3. as a matter of policy (regardless of the law) is this the type of research we should be incentivizing?

      Absolutely! It’s already being incentivized to some extent by the market (companies want to sell off-patent drugs to people who can benefit from them without side effects — the more people who can benefit, the better!).

      Additional incentives in the form of government grants to companies working on identifying such patients would be very welcome. Or we could spend a hundred times the amount of that money blowing up people on the other side of the world. Your call (and that of every other citizen in the country).

      Getting the patent system involved in that kind of “innovation” when it’s incredibly easy to identify endless “correlations” and incredibly difficult to keep up with the infinite number of claims that can be produced in a short period of time is silly. The system quickly becomes overwhelmed and breaks and the public loses while the wealthy paper pushers wielding the patents get richer and richer.

      The better solution, in my opinion, is to to encourage and reward the people who invent (and properly claim) the new medical devices that make it easier to obtain this valuable information quickly, reliably, sturdily and cheaply with patents. That’s what the patent system is designed to do.

      Don’t hamstring the ability of those folks to sell their inventions and the ability of customers to use those inventions by forcing them to wade through a million j u n k y patents that can turn pretty much anyone who uses the device for its intended purpose into an infringer.

      1. Absolutely! It’s already being incentivized to some extent by the market (companies want to sell off-patent drugs to people who can benefit from them without side effects
        The people doing the research (i.e., finding the key factor that makes a person a good candidate) has little means to recoup their investment without a patent. Once the key factor is known, anybody can use it and sell the drug. Of course, that key factor could be kept as a secret, but is keeping secrets consistent with the goal of the patent system?

        Additional incentives in the form of government grants to companies working on identifying such patients would be very welcome.
        Except that rewards trying — not success. While I’m personally not against that proposal, it isn’t politically-feasible.

      2. as a matter of policy (regardless of the law) is this the type of research we should be incentivizing (sic)?

        The patent, and the limited protection it provides (which in the past has been about 5-7 yrs after introduction of a new drug to the market) and provides a mechanism for underwriting the cost of development, including not only all of the pre-clinical development (typical 8-10 yrs) and clinical trials (Phase I, Phase II, Phase III), along with all of the other candidate drugs that fail along the way. The cost of bringing a new drug to market is >$1B today. And, what do you think the chance would be to go to the FDA and tell them that the new drug you want to test in humans is a trade secret- so is its formulation, manufacturing, testing?

        Oh, by the way, the generic manufacturers don’t need to pay for any of this up-front research since their products are treated as equivalents to the patented drugs.

        Diagnostic devices and tests also cost money to bring to market, including all of the regulatory hurdles. While not as costly as a new drug entity, one cannot simply roll out a new product. Even diagnostic software (in fact, all software used in pharmaceutical manufacturing and related health-care industries) must undergo extensive validation to ensure that it does exactly what is claimed. Wouldn’t it be nice if Google’s search engine delivered only what you were really looking for- and was extensively tested in phased trials for 3-5 years before it was deemed safe and efficacious and available for use (but only under the strict care of a Ph.D. computer scientist, who would prescribe it for use). And, if there was a single report of “adverse effects” when used, the search engine was pulled from the market and Google would be held liable for damages?

        Without some some form of IP protection, no company will make the necessary investment in developing new drugs, or other products that are similarly complex in nature, including software and hardware engineering.

        One final point-

        Please identify three clinically relevant products that have been developed and brought to market by a university, not-for-profit research institution, or government agency (including through all phases of clinical trials, through scale-up and to “pills-in-a-bottle”.

        Please also identify three clinically relevant text that have come from similar environment and been brought to market by a university, not-for-profit research institution, or government agency.

        Licensing of IP does not count.

        Previous threads have emphasized that good legal decisions are evidenced based. The same goes in science, engineering and business.

        Where are the facts that the course we are currently embarking on will yield the desired results?

          1. That is a business decision

            But isn’t filing a patent a business decision?

            I don’t need to file a patent to disclose a useful discovery. I can publish that in the peer-reviewed scientific, technical or medical literature. I can announce my findings much faster, too. But, I cannot protect them. They are in the public domain, and neither I nor my institution can derive secondary benefits through licensing of my discovery or invention.

            The only reason either a researcher or research institution would go to the expense of patenting something is so that they have a bundle of limited rights that can be used expressly for business purposes.

            What purpose do patents, copyrights and other forms of IP protection have beyond the realm of commerce?

            1. Sure, filing a patent is a business decision. So what?

              I think you are missing the point that you want a business decision to override patent law in one particular art field (pharma).

              The rules about having utility at time of filing apply across the board. Why do we allow pharma to break that rule? Clearly the moaning of less effective patent term coverage comes from the realization that effective patent term in pharma comes after that utility prove-out point.

              You jump to the conclusion that testing cannot be protected and use that as an excuse not to apply the law equally. Sorry, but I am not buying that excuse and unwritten noncompliance of law. You want an express exception? Talk to your Congressman.

              As to “the only reason” line of thought – please do not engage in the fallacy of “but-for.” As I posted, “but-for” is indeed A valid reason for having a patent system – but it also is clearly not the only reason for having a patent system.

            2. What purpose do patents, copyrights and other forms of IP protection have beyond the realm of commerce?

              That’s a good question – but an incomplete one.

              You are only seeing the exchange of Quid Pro Quo from one side – and just like those that only see the exchange from the government’s side (getting the Quo and screw the Quid), seeing the exchange from only the side of the Quid (as embodied in your question) simply misses the duality of the exchange.

        1. As to the length of term – that too is a business decision, stemming from the fact that a filing is made PRIOR to knowing whether or not the item filed upon actually has the proper utility to be used with humans.

          Would not the better patent question be questioning why we allow filings on items with unproven utility?

          1. the fact that a filing is made PRIOR to knowing whether or not the item filed upon actually has the proper utility

            In an ideal world, yes. In the past, under first to invent, to an extent. But, under first to file, not so.

            Moreover, the initial utility is often proving that the novel drug entity actually does what is claimed, either in vitro or in vivo. Safety and/or efficacy require extensive post discovery trials are not part of the initial claims (but may be as a continuation).

            1. I really do “get” that real world aspect, fngl51 – do you get the fact that patent law today is not how you want it to protect that real world aspect?

            2. If you want protection for something that is not safe for humans – fine – you get what you claim.

              If you want protection for something else – then claim that something else and get the appropriate protection.

              But please, do not file a claim for one thing when it is something else that you want protection for.

            3. And the fact that so many items DO fail the sequence of proving the desired utility only shows that what is being filed and claimed is NOT what is being wanted for protection.

              The utility that protection is being desired for is simply not present in a majority of cases that are filed for.

              THAT is a requirement under patent law – you want something different? Some type of “maybe-utility”? Talk to your Congressman.

        2. Finally, costing money to develop smacks of the “but for” rationale.

          It should be well-recognized that “but-for” is a valid reason for having a patent system.

          It should be equally well-recognized that “but-for” is NOT the only reason for having a patent system.

          Keeping this distinction firmly in mind has tremendous merit when addressing those who would a different patent system, selectively eliminating certain art fields.

    4. Are these claims directed to statutory subject matter? Why or why not?

      This case is just Mayo with a finding of non-obviousness, but the non-obviousness doesn’t get you around the 101 issue. The relationship predated the “inventor”, it wasn’t created by him.

      Bonus issue: as a matter of policy (regardless of the law) is this the type of research we should be incentivizing?

      Not via the awarding of a patent.

  13. I am probably the only one, but I don’t have a 101 problem with Walker’s method of operating a computer.

    How about if it were a method for operating a robotic paint sprayer.

    1. How about if it were a method for operating a robotic paint sprayer.

      Spraying paint raises slightly different issues than “exchanging identies”.

      But, more importantly: let’s see the claim that you have in mind.

      If the claim recites nothing more than “a robot” and a bunch of ancient logical steps (“monitor for dripping” “determine unpainted areas and direct spray nozzle there”) then you’re pretty much screwed. Robots are old. Spraypainting is old. Automating stuff with robots is old. For that matter, imagining a robot that could paint in your stead and do it more accurately and efficiently is also old and almost everybody who has spray painted a bunch of stuff has already “innovated” that, at least at the level of abstraction of some readily envisionable robot painter claims (we can only guess what you have in mind — maybe the robot is using some fancy math equation to determine when to stop painting?).

      Why should everybody’s time be wasted looking at your “secondary factors”, particularly when there’s no evidence that those “secondary factors” are related in any way to the validity of the claim? Tank it under 101. Quick, easy, painless. Then everyone can move onto the next piece of paper in the pile and hopefully somebody did something more than spew a bunch of words describing the wonderful ability of this robot in terms of its desired functionality should someone ever get around to actually making it.

      Are there examples of methods of “robot painting” that might be eligible and patent-worthy? I can think of some that certainly would be: methods that recite new robots in terms of their objective structural differences relative to prior art art robots. Is there any reason to believe that patents on such methods are inadequate for promoting progress in the the art of robot painting?

        1. Les, When (mechanical) stuff is “old” it becomes an “abstract idea”?

          Huh?

          With all due respect, Les, you simply cannot be serious.

      1. Why would the claim matter? The idea is changing the color of something. Everything is old. It’s not patentable subject matter under 101.

    2. How about if it were a method for operating a robotic paint sprayer.

      But, the robot is operated by software, likely running on a general purpose computer.

        1. Thermocouples, Anon. Read the decision.

          (And if you feel like replying “Thermocouples were known”, I’ll respond-in-advance “So were computers and the Arhenius equation.”.)

          . . .

          Genets’ genes generally are the geneses of generous generations of generic genets.

          General-purpose computer? General-purpose computer!

          Generalpurposecomputer-generalpurposecomputer-generalpurposecomputer!

          Sorry, had to get that out of my system. =)

          Kindest regards,
          Dobu

          An algorithm is an abstract concept unrelated to physical laws of the universe.” — Donald Knuth

          1. Dobu, literally everyone here has pointed this (what the novel subject matter was in Diehr) out to Anon time and time again. For some reason, it does not sink in. It seems that anon has a mental problem of some sort. Our kind poster from the PTO, 6, has a diagnosis. I am no so sure.

            My daughter is a psychiatrist, an associate professor at Harvard. I have been thinking about discussing the case of anon with her some day.

            Regardless, if you try to deal with anon over time, you will soon learn that he has these systematic blind spots. It is hard to have rational discussions with him. I have taken to simply avoiding him.

            1. Ned,

              I’ve lurked here for years, and more recently have swapped several dozen forum posts with Anon, several of which were on this very subject (Diehr PON), so I have a pretty good idea of what to expect from him. =)

              Thanks for the warning, all the same. And props for your “welcome wagon” for the new arrivals. ;^)

  14. c) predicting the potential sprinting, strength, or power performance of the human, wherein the presence of two copies of the 577R allele is positively associated with potential sprinting, strength, or power performance.

    Wow Genetic Tech, that’s a pretty brazen attempt at clearly ineligible subject matter there.

    1. Random, what really bothers one is that the PTO would allow such claims in the first place. Funk Bros. was decided a long time ago — and yet this Genetic Tech claim was allowed? Was there novelty in the claim other that the law of nature?

      Do you guys in the PTO get any training? Or, does this patent represent a clear decision by the PTO to defy the Supreme Court?

      1. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. –

        See more at: link to codes.lp.findlaw.com

        What part of discovers any new and useful process don’t you (and the courts) understand.

        And before you tell me I’m not using the right definition of discover, please present me with the alleged proper definition of discover and also tell me what there is to discover but laws of nature and products of nature.

        1. Les, you do know that when composition was added by Jefferson, discovery was dropped and new was added.

          Also, all the scholars such as Curtis in the early days believed that discovery generally meant of things that previously existed but were unknown, and in Columbus discovered America.

          So, a discovery could be of a composition or law of nature, but a patent had to be to some new use or implementation of it.

          1. You keep saying it was dropped. and to this I keep saying so what? Its back and has been for a very long time.

            “Also, all the scholars such as Curtis in the early days believed that discovery generally meant of things that previously existed but were unknown, and in Columbus discovered America.

            So, a discovery could be of a composition or law of nature, but a patent had to be to some new use or implementation of it.”

            And so, what do we have in the present claim if not a new use of an alleged law of nature (the correlation of the allele with the exceptional ability)?

            So, you agree. This Genetec claim is valid and the Court is wrong?

            1. Les, the “Law of Nature” might be discovered, but invention still must be in statutory subject matter. It must be new and nonobvious. The LoN must be applied in some fashion to improve the statutory.

              Regarding the statutory subject matter in the claims, there is nothing inventive there. Just data gathering as an input to a calculation. Just like in Flook — ends in an unapplied number.

              1. Les, Sorry, I was looking at the Cote claims.

                On the Genetic claims, I am assured that all the statutory parts of the claim are old. I take that on faith as I am not an expert in the field.

          2. According to Johnson’s dictionary (which was in common usage in the latter half of the 18th Century)

            discover – v. a. to disclose, to detect, to espy [invention
            discovery – s. the act of finding

          1. My understanding of Discoveries agrees with the one in that posting.

            what do we have in the present claim if not a new use of an alleged law of nature (the correlation of the allele with the exceptional ability)?

            So, you agree. This Genetec claim is valid and the Court is wrong?

            1. Les,

              I think you and I took different meanings of “discovery” from that article. I understood it to say that the meaning of the word at the time the Constitution was written inferred a higher standard of novelty than the word “invention”.

              In light of that, I can’t agree with you about the court’s findings in Genetech. Uncovering laws of nature doesn’t meet the level of “discovery” as the term appears to have been used in 18th century English (and/or French, per the article?).

              So, I guess the link wasn’t as helpful as I thought it would be.

      2. Do you guys in the PTO get any training? Or, does this patent represent a clear decision by the PTO to defy the Supreme Court?

        The patent issued in 2009, Mayo was decided in 2012. As to your actual question, I think you can understand why I would decline to answer.

    2. A method to predict “potential sprinting . . . in a human.” Is a fire arm pointed in the general direction of the human? I think that would potentially result in sprinting of the human.

      I would suggest “sprinting potential” – just a thought.

  15. All four of these cases fit the same pattern as Alice and Mayo.

    Handling these as two sets of cases:

    Genetic Tech and Jung both run afoul of the general holding in Mayo v. Prometheus: any invention that involves “measure physiological quantity A, and correlate it with physiological condition B” will be determined as a patent-ineligible “abstract concept” or “law of nature.”

    Moreover, Genetic Tech recites overtly mental steps, so it also has a “mental processes” problem. Jung nominally recites a computer, but it does not add “significantly more” to the abstract idea, so it has no weight under Mayo Step 2.

    ===

    Both Walker and Cote have the same problem as Alice, Bilski, Planet Bingo, etc.:

    1) The technique has no technical effect on the device performing it; and

    2) Other than simply performing the technique faster and more accurately than a human might, using a computer doesn’t confer any advantage on the technique.

    Walker would be dismissed by the CAFC or SCOTUS as: “basically just privacy rules applied to social search.” (And rather than mucking about with 101, the examiner should have knocked this out with Facebook’s profile privacy features.)

    Cote would be dismissed by the CAFC or SCOTUS as: “basically just computer-assisted design and scheduling of an industrial control process.” The claim looks like something that a project manager could do with Microsoft Project. The claim doesn’t recite that the phase-shifted data confers any benefit on the device on which it’s implemented.

    Cote’s claims probably wouldn’t have been allowable under Freeman-Walter-Abele, either, as there is no “post-solution activity.” Honestly, it might not even have been allowable under State Street, as “take in some data, and then adjust it, and… that’s all” raises a utility problem.

    However, Cote is particularly interesting, because if the claims had recited: “and then use the bin and cluster scheduling to control the industrial process,” it might have looked a lot more like Diehr.

    1. David – you hit on a little remarked problem re: looking like Diehr

      Take Flook – look at it closely.

      How close is that case to Diehr?

      1. Take Flook – look at it closely. How close is that case to Diehr?

        Yeah, we really don’t have to speculate about that, since Diehr directly addressed it:

        [In] Parker v. Flook… the claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, nor did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.”

        In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.

        This distinction becomes much more understandable when you look at Flook’s actual claim:

        1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic conversion of hydrocarbons, wherein said alarm limit has a current value of B0+K, wherein B0 is the current alarm base and K is a predetermined alarm offset which comprises:

        (1) Determining the present value of said process variable, said process value being defined as PVL;

        (2) Determining a new alarm base B1, using the following equation: B1 = B0(1.0-F) + PVL(F), where F is a predetermined number greater than zero and less than 1.0;

        (3) Determining an updated alarm limit which is defined as B1+K; and thereafter

        (4) Adjusting said alarm limit to said updated alarm limit value.

        1. on at least one process variable involved in a process comprising the catalytic conversion of hydrocarbons

          Field of use or application of the “technology?”

          Yes I read the words of the decision – but those words are but a smokescreen

          1. (by smokescreeen, I mean the historical fact that Diehr was written with some political deference to the bench as a token gesture in order to “win” some of the Justices over to the majority – one cannot look at the words without understanding the larger historical context)

    2. Good analysis, David.

      Now if only the PTO can get its act together we can start clearing out a substantial portion of the backlog.

    3. I also think Cote is very close to being patentable. I wonder if these people ever lived through the “concrete, tangible, and useful” barrage of rejections the PTO was handing out some years ago? I always have at least dependent claims that produce some type of result, such as producing a semiconductor using the bin and cluster scheduling.

      We had a discussion about this subject. We had a client who implemented a particular, new modulation technique using programmable gate arrays. They could have easily created a semiconductor created to perform these operations. One assumes that a semiconductor that performs these operations is still patentable under Alice (or is it?), even if the modulation technique is mathematical therefore abstract. Yet, they were actually going to implement the modulation technique using an off the shelf DSP (digital signal processor). So, a semiconductor that’s formed specifically to perform these functions is patentable, but a software implementation of the same idea is not? Or once you say “It’s abstract”, then nothing is patentable including that performed by a piece of hardware designed (solely) to perform that “abstract” idea? (And how is it “abstract” if you can create a physical piece of hardware to implement it?)

      To me, if your claims cover an apparatus such as a computer that performs a function, the claim meets 101 and should be examined under 102/103. If your claim covers performing the idea by a person, then the claim does not meet 101.

      1. Patent Bob,

        A circuit is useless unless it connects physically to the world. It is patentable as a machine because the circuit connects to the real world through inputs and outputs.

        Now claim the circuit’s functionality via a GP digital computer – but add in the connections to the real world, the inputs and outputs, and I think you have equivalence to the circuit and eligible subject matter.

        Claim the programmed digital computer in isolation, you simply have Flook. Raw math.

        1. If you are claiming the computer, you are claiming more than just math.

          Math is not a computer.

          (unless, of course, you really do believe in a certain philosophy that I was kind enough to supply a substantive link to – you know, for discussion purposes, and not, as has been misinterpreted as being my personal belief)

      2. PatentBob – your view sounds in one of my favorite words: anthropomorphication

        When what is actually claimed is “gisted” to the point that the fact that it is a machine that is claimed becomes immaterial, is the Court really passing judgment on the actual claim, of are they passing judgment against what they (value judgement inserted) view as devious scriviners who may be meeting the actual words used by Congress – you know – what the law actually is – but are “sneakily” (somehow) grabbing more?

        If we return to actually judging claims – and realize that machines do not think – the “problem” that our activist judges are imagining can be objectively seen to be vastly overblown.

        One simply cannot enforce against any such “patent infringement” that occurs in the mind. Infringement still requires all elements, does it not?

    1. Lemley is just one of many, many, many thoughtful and articulate people who have been advocating for (or at least recognizing the inevitability of) these necessary changes for many years.

      Mark could get run over by a bus tomorrow and these changes are still going to happen. It’s too bad they didn’t happen sooner, is all.

        1. The interview with Lemley brings up an interesting question. Can one claim using means plus function and get about the same claim scope if you write the spec right?

          This is a way to defeat Alice. I wonder what Taranto would say: the mean plus function is just an abstract idea relating to an abstract idea in the specification.

          1. Can one claim using means plus function and get about the same claim scope if you write the spec right?

            You can’t perform any end-arounds these issues, NWPA. Not any end-arounds that are going to last anyway.

            1. …except for the one end around that Malcolm seemingly blessed: the incomprehensible – and unexaminable equivalent claim written over 250 pages, detailing an exacting structural layout of hills and valleys…

              …which would be exactly equivalent to a claim – as written properly – with the use of functional language, language clearly understood by a person having ordinary skill in the art to which the invention pertains – and written as allowed by existing law (ie. 112 – and more than just 1112(f)).

              Except for that.

              Which reminds me: Malcolm have you found the cite to the law that you wish to present as necessitating only a pure structural claim writing regime….? You seem to want to advocate that such is the only permissible way to write claims, and since you are not playing childish games (guffaw), you must have law to back up such a material representation of the law, right?

              1. the incomprehensible – and unexaminable equivalent claim

                Exactly what is “incomprehensible” or “unexaminable” about the claim you are referring to?

                written over 250 pages, detailing an exacting structural layout of hills and valleys…

                That sounds pretty easy to examine. Even easier once the database is set-up dedicated to comparing differences between those highly detailed structures.

                How many patents of that sort do you expect will be filed?

                More or less than the number of detailed structural descriptions of new chemicals that have been submitted by biochemists to protect their engineered sequences?

                1. I am pretty sure that biochemists use “shortcuts” rather than any true actual physical description (especially considering that any true actual physical description will run into problems with the Heisenberg uncertainty principle, and correctly physically describing all of those physical locations of the constiuent electrons, protons and neutrons of the claimed engineered sequences, eh?

                2. I am pretty sure that biochemists use “shortcuts” rather than any true actual physical description (especially considering that any true actual physical description will run into problems with the Heisenberg uncertainty principle, and correctly physically describing all of those physical locations of the constiuent electrons, protons and neutrons of the claimed engineered sequences

                  This is a joke, right?

                3. You really do not understand software at all

                  We all know that this is page 1 of your script: accuse the critic with whom you disagree about software patenting of being ignorant of software.

                  Like most people, I’ve written software. I understand it perfectly well. Moreover, there are plenty of people who understand it equally well or better who disagree with you about the merits of patenting software.

                  If you don’t want to have the discussion, then don’t have it. If you want to just lob insults, then prepare to have those insults highlighted. If the insults become more personal, then prepare to for some blowback.

                  [shrugs]

                4. You have moved the goalposts from talking about the legal position of software to the “feelings” that software should not merit patent eligibility from those who do not understand law.

                  This is a fallacious argument.

                  As to the personal insults, well, we both know who cannot post without resorting to a short script of such things, don’t we?

                5. You also do not address the argument presented that biochem shortcuts are used – shortcuts which do not present the pure structure of what is being claimed.

                  Yes, I did take the “pure structure” to an extreme – but your opposite extreme is equally ridiculous. As is your continued purposeful dissembling as to how claims are read. Shortcuts in claim terminology exist all of the place – chem/bio arts have theirs – as do other art fields. The plain fact which you seek to kick duct over is that claims are to be understood by a person having ordinary skill in the art to which the invention pertains after having been informed by the specification.

                  You insist on ignoring this point in nearly all of your posts attacking the computing arts.

                  The fact that your attacks are ubiquitous make them no less insulting to anyone with any level of intelligence – unless of course, such attacks align with a philosophical agenda.

                  If the editors of this board are going to clamp down on insults – such purposeful and deceitful misrepresentations of material legal principles should top the list. The grade-school level stuff can easily follow (and most likely, would take care of itself if the material law items are taken care of first).

            2. I disagree here. I think what Lemley is saying is the way it always has been done and is the only way going forward. The thing noticably being left out of that statement is that at trial the burden will be on the patentee to show that the defendant’s program is similar to his own, and that’s the critical thing that is missing from current broad functional claiming.

              Once you shift that burden back to where it should be, you’ll see all these cases go away, because other people will in fact have better algorithms and they won’t be similar.

          2. Doesn’t sound right. The MPF claim would need to look to the specification for structure, right? How could “an abstract idea in the specification” provide adequate structure? Claim would be invalid.

          3. Can one claim using means plus function and get about the same claim scope if you write the spec right?

            A few months ago you were telling me that means-plus would lead to thousand page specs…

            If you didn’t write an algorithm, if you didn’t actually code anything I think you’re out of luck. If you wrote it and you didn’t include it I suspect you’re going to be out of luck after Alice. But if you wrote it and you included it in the step I think you could survive the Aristocrat line of cases and then the question will become well what does equivalent thereof mean? Can I show you my algorithm and say, yeah, this is the approach I took but these other four approaches are equivalent and a computer programmer would look at those and say I don’t care which one of those you use. And if you can do that then you might end up with a claim that’s still pretty broad even though it’s in means plus function format.

            This is precisely what I’ve always argued, and what you said would require thousand page specs. The answer is yes you can do it. It simply places the burden on your side at trial, which is where it should be. You disclose structure A, you claim structure A, at trial, defendant has structure B. The burden is on you to show that B is like A. Unlike functional language, where A and B are both subsets of claimed functionality C and the burden is on the defendant to show that C is invalid.

              1. the law allows the use of functional claim terms beyond 112(f)

                Then go for it. Take advantage of it while it lasts, if you think it’s worth your client’s money.

                Meanwhile, people are going to continue to discuss and advocate for fixing any loopholes in the law regarding “functional claiming” that are ripe for closing.

                1. and hey – no problem with anyone advocating for changes – at least as long as they do not misrepresent the law, misrepresent facts, misrepresent what others say and stay away from (your) typical short script nonsense.

                  as you say – if you can advocate properly – go for it.

                  :-)

                2. if you can advocate properly – go for it.

                  Thanks. I’ve been doing that for a while with quite a bit of success, as you seem to have noticed.

                3. LOL – you really are not trying to claim success, are you?

                  Wow – the man at the edge of the rye field really thinks his work here is the driver of success…!

                  Um, sure, let’s go with that. . . .

                4. you really are not trying to claim success

                  I’m sure your comments here and elsewhere have also affected the minds of people reading them, if that’s of any comfort to you.

                  Keep up the great work.

                1. ?

                  Seeing as your comment cannot be verified – one way or the other (and you just recently quipped – also errantly – about how you do not do all the examining), you might want to try again.

            1. what you said would require thousand page specs. The answer is yes you can do it. It simply places the burden on your side at trial, which is where it should be. You disclose structure A, you claim structure A, at trial, defendant has structure B. The burden is on you to show that B is like A.

              Yup.

                1. What “value” does the invention have to reach for you to recommend this trade-off?

                  (you don’t sound as if you even recognize what the trade-off is)

  16. Genetic Tech:

    1. A method to predict potential sprinting, strength, or power performance in a human comprising:

    a) ANALYSING a sample obtained from the human for the presence of one or more genetic variations in a-actinin-3 (ACTN3) gene;

    b) DETECTING the presence of two 577R alleles at the loci encoding amino acid number 577 of the a-actinin-3 (ACTN3) protein; and

    c) predicting the potential sprinting, strength, or power performance of the human, wherein the presence of two copies of the 577R allele is positively associated with potential sprinting, strength, or power performance.

    How is the analysis done? How is the detection done? Is it by a magic microscope? Or by highly trained Maxwell Demons that walk along the chromosonal DNA until they find the sequences of interest, and then conduct a visual and tactile test for the required sequences? (Note that Maxwell Demons are very small creatures). The claim does not tell us.

    Firstly this is a step + function claim within 35 USC 112(e), although I am not aware of any recent case where the section has been applied to a step. But there must be implications from the claim structure.

    Second, if the claim does not recite the reagents and procedures needed for the analysis and detection it suffers from the same fundamental flaw as in Funk Borthers v Kalo, i.e. a claim specifying an outcome without any indication as to how the outcome is to be produced.

    And for astute drafting style, the analysis should stop at the point where a determination is made whether a single copy or two copies are present. The idea of making that determination flows from knowledge of the link between the number of copies and athletic potential, but the rest is a human thought process best left out of the claim.

      1. If it is not a lack of detail that makes this method “abstract,” then what is it that makes the method abstract? It seems to include concrete steps.

        Oh…this one captures a law of nature! If this claim were allowed, then no one could sprint fast with the aid of their naturally occurring two copies of the 577R allele…. no…wait… that’s not it..

        The problem is that it is allegedly not “substantially more” to DISCOVER that there is a relationship between having two copies of the 577R allele and an enhanced ability to sprint and to USE that DISCOVERY to predict sprinting success….. so saith the poly sci or English major, so saith we all…. really…

        but, but, but the LAW says whoever invents or DISCOVERS…. no matter..so saith the poly sci or English major…

        1. Les,

          You too are not grasping what the Court has done.

          Evidently, a claim can be nullified regardless of adding concrete steps, as such will not help. It has already been established that the statutory category portion of 101 can be met – in other words, one does not need to add concrete steps.

          Point blank: meeting the statutory category portion of 101 does not matter.

          Verily – the Court is more than clear that something concrete enough to drop on your toe can still be abstract.

          Of course, they will not define abstract – but that’s a different matter.

          1. Point blank: meeting the statutory category portion of 101 does not matter.

            That’s correct to the extent that “meeting the statutory category portion of 101” means “using one of the words listed in 101”.

            It’s also easily understood why this is necessarily the case (and always will be), provided that you believe that there is such a thing as ineligible subject matter in the first place.

            I’m happy to explain this in more detail if you are still confused.

            1. Not confused at all.

              By the law.

              I would also be more than happy to discuss this with you in greater detail – even using your own little pet theory.

              But you seem to have a serious problem abiding by my simple request that any such discussion entail you to answer my counterpoints in a cognitive and intellectually honest manner.

              Getting you to even agree to do so has merely resulted in your repeated running away.

              What’s up with that?

            2. Not confused at all. By the law.

              Great. You’re just unhappy with it, I guess.

              I would also be more than happy to discuss this with you in greater detail

              Or you could just tell everyone if you believe that there is such a thing as ineligible subject matter and, if there is such a thing, what steps can be taken by jurists and the PTO to determine if a claim is protecting that ineligible subject matter.

              The floor is yours.

            3. It’s also easily understood why this is necessarily the case (and always will be), provided that you believe that there is such a thing as ineligible subject matter in the first place.

              I believe in ineligible subject matter. The process of me thinking about a clever way to get the neighborhood kids to mow my lawn for free is ineligible subject matter.

              What I’m trying to determine is whether any process can be eligible subject matter if it doesn’t result in one of the other three 101 categories (machine, manufacture, composition of matter). Can it?

                1. SlotGuy What I’m trying to determine is whether any process can be eligible subject matter if it doesn’t result in one of the other three 101 categories (machine, manufacture, composition of matter). Can it?

                  SlotGuy, I’m pretty sure you there are plenty of processes for obtaining information (or that “result” in information being obtained) that are still eligible for patenting. For example, a process that recites a separately patentable and eligible apparatus or composition of matter is likely eligible even if the process doesn’t “result” in a manufacture, composition or machine.

                  Similarly, a process that “results” in new information but which recites a new step (or steps) that physically transform matter during the course of the process (and aren’t just trivial transformations such as the consumption of energy by the person or device performing the task) would also likely be eligible.

                  The situation with information processing, where some information goes into a logical pathway and some other information comes out, is always going to raise the eligibility flag because information processing is something we all do, either with our brains or with the old computers that we’ve designed to assist us in that task.

                2. Sounds like you are advocating MoT as a requirement rather than a clue to a non lawyer…

                  You might want to also mention that you what you advocate is not in accord with controlling law.

                3. “The situation with information processing, where some information goes into a logical pathway and some other information comes out, is always going to raise the eligibility flag because information processing is something we all do, either with our brains or with the old computers that we’ve designed to assist us in that task.”

                  So, a new process for converting sunlight to hydrocarbons is not eligible because converting sunlight to hydrocarbons is something all plants do with their cells that evolution designed to assist plants with?

                  Your logic is absurd.

                4. His “logic” is not meant to be critically evaluated.

                  Such critical evaluations defeat the ability to be merely able to get up on a soapbox and provide one’s “policy”/opinion as if it were law.

                  You are going to be labeled “intolerable” if you insist on discussions of law being tethered to real law.

              1. SlotGuy,

                You appear new here so you should be informed that Ned Heller does not finish any conversation that looks like it will go to a place where his third party interests do not want him to go.

                This does mean that you will see what is called a merry-go-round effect. Ned will post one of his views (versions) of law, myself or some other person concerned with the accurate representation of law will point out a counterpoint or flaw in Ned’s position. Ned will refuse to address the counterpoint. Ned will later point the exact same misrepresentation of law in a new thread, oblivious to the counterpoint presented to his already stated version.

                Any attempt to engage Ned in a conversation on the point in question will abruptly stop any time the logic becomes clear that Ned will have to admit to the counterpoint raised.

                It becomes somewhat of a game to see how close you can bring Ned to the recognition of the counterpoint – for example, he recently admits that he recognizes the equivalency of software to firmware to hardware (albeit, he throws in a huge-wiggle-room caveat of “contextual principle” – whatever that means.

                The same game can be played with case law – especially 101 case law. It helps to understand what is actually a holding and what is dicta (as well as having a few great quotes from the Benson, Flook, Diehr, Chakrabarty, Bilski, and Prometheus cases, as well as having a firm grasp of the stipulations and stature of the actual issues involved in the Alice case. It also helps to have an excellent understanding of the history of patent law – and how some of the early English patent law affects (and does not affect) our jurisprudence.

                1. Well, Ned quoted a patent claim and didn’t even read it before he pronounced it ineligible, so I’m not so worried about that. But here’s an example of a process using an old machine to accomplish something new. Is this patentable if drafted properly?

                  1. A method for decreasing the temperature in a minivan having a pneumatically-controlled rear liftgate (PCRL), comprising the steps of:
                  a. Unlatching the PCRL;
                  b. Automatically opening the PCRL at its maximum speed;
                  c. Automatically closing the PCRL at its maximum speed;
                  d. Repeating steps A and B at least 4 additional times; and
                  e. Latching the PCRL.

                  In essence, automatically waving the rear door of a minivan open and closed to fan out the hot air. Minivans have rear liftgates and they are known to open and close. They’re just not known to act as a big fan – I just invented that (I think). I’m not suggesting it’s necessarily a good idea, but is that method patent eligible under 101, ignoring any 102/103 issues?

                2. Ignoring any 102/103 (and presumably 112) issues, the new use of an old machine (here the truck with its tailgate assembly) is patent eligible (See 35 USC 100(b): “and includes a new use of a known process, machine, manufacture, composition of matter, or material“)

                3. SlotGuy, “Well, Ned quoted a patent claim and didn’t even read it before he pronounced it ineligible, so I’m not so worried about that. But here’s an example of a process using an old machine to accomplish something new. Is this patentable if drafted properly?”

                  You should know that I simply click through anon’s posts without reading them. There is a good reason for that.

                  Now I have a good reason for clicking through your posts as well, you lying piece of s….

                4. SlotGuy,

                  Did I tell you that one of the games that Ned plays in order to stop conversations is the “fake umbrage” game?

                  Sorry, I forget to include that.

                5. I’m not suggesting it’s necessarily a good idea

                  It’s not a good idea. It’s obvious.

                  Minivans have rear liftgates and they are known to open and close. They’re just not known to act as a big fan

                  Actually, like most people, I’ve known them to act as a big fan because I’ve opened and closed them. Also car doors. Welcome to planet earth!

                  is that method patent eligible under 101, ignoring any 102/103 issues

                  You can’t ignore the 102/103 issues when dealing with subject matter eligibility.

                  But personally I’d err on the side of eligibility for this claim, which is otherwise a quintessential pile of obvious c r a p. I hope this makes you super happy.

                  Does that mean that every method claim which recites a fanning PCRL is eligible for patenting? Heck no. Especially now that you’ve disclosed the method.

                  See how that works?

                6. But personally I’d err on the side of eligibility for this claim, which is otherwise a quintessential pile of obvious c r a p. I hope this makes you super happy.

                  Since I’m asking about eligibility under 101 rather than obviousness under 103, yes it does. I’ve identified an example of a patent-eligible process using an existing machine that you agree with. You think it’s obvious, and in this case it probably is. But is that a categorical truth? Are all processes that use existing machines obvious? If not, then there is some set of patentable (as opposed to merely patent-eligible) processes that use existing machines.

                  If so, what would be the distinction between a novel method for operating a car door and a novel method for operating a slot machine?

                  US 4,448,419 to Telnaes is probably the most important patent in the history of the casino gaming industry. Since the mid 1980s, it has governed how every single mechanical-reel slot machine operates. Slot machines were known to have mechanical spinning reels before this time, going back nearly 75 years prior. This patent was a change in the method of spinning them. Older slot machine games had equiprobable symbol positions: if three reels had 20 positions each, the chances of each possible combination was 1 in 20^3 or 1 in 8000. That means you can’t have a 100,000-for-1 payout because you can’t afford it. The Telnaes patent taught that by unequally weighting the reels and making some physical positions less likely than others (via random number generation and stepper motor controls), far longer odds could be achieved — and so could giant jackpots. This revolutionized the industry.

                  Do you believe this different method of spinning the reels in a slot machine should have been deemed patent-eligible?

                7. Are all processes that use existing machines obvious?

                  No. But most of the useful ones probably are obvious.

                  This is interesting to you?

          2. the Court is more than clear that something concrete enough to drop on your toe can still be abstract.

            Like a “new” book that’s really heavy because it has so many pages of useful, non-obvious information printed in it. Ouch! It hurts when it falls on my foot.

            Yes, it’s ineligible.

            It’s also nothing new, suprising or unwelcome.

            And for many computer-implemented claims — like claims to “new” displays — the issues presented are indistinguishable. “Computers”, like “books”, are old. And we all know why they were invented in the first place.

            1. Wolfgang Pauli once stated: “Not even wrong.

              Your attempt here to use literature as an example in this legal discussion (especially given your volunteered admission against interest of knowing and understanding the exceptions to the printed matter doctrine) can only be seen as duplicitous.

              Harsher words are more appropriate to one who knowingly engages in fallacious logic – but apparently such words must be carefully administered.

        2. but the LAW says whoever invents or DISCOVERS

          You’re giving the wrong meaning to the word discover, suggesting it has a lower standard than invent, it does not. See link to patently.wpengine.com

          Every previously unknown fact gets “discovered” under your use of the word. Reporters and Detectives are not covered under the patent clause, despite them constantly “discovering” new and useful facts.

          1. I am not suggesting discover has a lower standard than invent.

            If someone discovers the cure for cancer is to drink one ounce of salt water 4 times a day, that in my view is a patentable method based on a discovery, even though salt water is arguably a product of nature and fish drink at least an ounce at least four times a day.

            What reporters and detective do, is uncover things that were known by others. They are not discoveries. I contend that there is nothing to DISCOVER but laws and products of nature.

          2. By the way, there is nothing in that patently-o article that runs counter to what I am saying.

            The claim in question above is directed toward the discovery that the having two of the allele correlates to an ability to sprint.

            I see no reason why that DISCOVERY should not be patentable.

            What definition of discovery are you using that says the subject realization does not qualify as a discovery?

        3. Les, “detail?”

          If detail mattered at all, Bilski would not have been declared abstract.

          Clearly, the SC is using “abstract” for nonstatutory — something that is not a new or improved conventional process (Diehr), a machine, manufacture or composition. Examples are math and other mental processes. Financial risk is abstract — can you figure out why?

          “Directed to” is code for “novel subject matter.”

          A claim where the novel subject matter is nonstatutory is not patentable unless that nonstatutory subject matter is applied as in Diehr.

          1. Clearly, the SC is using “abstract” for nonstatutory

            Your odd changed shorthand of speaking of statutory category with the clipped “statutory” noted, most clearly – and explicitly – NOT so Ned.

            It is beyond ridiculous for you to attempt to peddle this version of the case.

            They have stated that they do not care is you do meet the statutory category. You cannot spin it otherwise.

          2. “Clearly, the SC is using “abstract” for nonstatutory — something that is not a new or improved conventional process (Diehr), a machine, manufacture or composition. Examples are math and other mental processes. Financial risk is abstract — can you figure out why?”

            So the SC said Bilski is non statutory because it was non statutory. Fine work those guys turn out.

            New is judged under 102. Improved is not a requirement.

            as for math….. you gonna make me post a bunch of claims to different FFT methods again?

            1. Les, mostly, it is a 101 issue if the statutory subject matter is admittedly old.

              If one gets into whether the statutory subject matter is new and non obvious, the claim as a whole might still be patentable — just that the ineligible is give no weight. Funk Bros.

              Also, Hotel Security, Guthrie v. Curlett, In re Russell and recent Federal Circuit cases on the printed matter doctrine.

      2. Dennis: don’t think that the patentee expressly including the (presumably known) ways of accomplishing these tasks would have passed step two of Alice.

        Correct. If old methods are recited, then they wouldn’t and they shouldn’t be eligible. This is Mayo rehash.

        Again, there is no limit to the ability of human beings to “correlate” information. You and I and everyone else can “innovate” correlations all day long. Handing out government “rights” that allow people to control information (whether it’s factually true or not) simple because “they were first” is reprehensible not only from a First Amendment perspective but also from the practical viewpoint of protecting the patent system from inevitably being choked by the relentless onslaught of easily “innovated” carpola like this.

        Is that to say that these particular researchers definitely didn’t work hard to identify this particular correlation? Nope. Maybe they did. I don’t know, nor I do care. Why should anybody care? That’s not the point of the exclusion.

        I do know that what would be really nice would be lots of new, inexpensive, affordable, reliable, sturdy choices for devices that could enable people to obtain information about various medically important but sub-microscopic aspects of their bodies. The patent system is perfectly set up to encourage the development of such devices.

        It doesn’t take much deep thought to understand why people don’t want a patent system that turns them into infringers when they think about the data provided by the device.

        1. “Correct. If old methods are recited, then they wouldn’t and they shouldn’t be eligible. This is Mayo rehash.”

          …and if old wood, cloth and rope are recited, it doesn’t matter that the particular configuration is new. That argument wont fly. The flying machine is not patentable.

          1. if old wood, cloth and rope are recited, it doesn’t matter that the particular configuration is new. That argument wont fly. The flying machine is not patentable.

            I’m not aware of any claim reciting a new configuration of physical structures, where those structures and their configuration are described in objective physical terms, which is any danger whatsoever of failing 101 under any of these recent Supreme Court decisions.

            Applying the law irrationally to some ancient vague claim is not a particularly compelling way to challenge the law. The opponents of gay marriage attempted this when they asserted (incorrectly) that legalizing gay marriage would mean that their churches would be forced to marry gay people. That was ridiculous and ineffective.

            1. are described in objective physical terms

              Cite please.

              (yes, I know that this request has already been made, but one of these times Malcolm may actually back up what he says with – gasp – real law)

            2. My point is that if a new combination of old steps is not patent eligible, then a new combination of old physical components, such as wood, cloth and rope should not be patentable.

              This is of course an absurd result as it would mean that nothing is patentable as every invention is a combination of old components assembled in a new configuration.

              This absurd result points out the absurdity of the original premise : “If old methods are recited, then they wouldn’t and they shouldn’t be eligible. ”

              Of course no one is arguing that a claim to something that is completely old should be allowed.

              But a new combination of steps that if taken individually are old is of course both eligible and patentable.

      3. Dennis

        If you could let me know the number of the patent in issue, it would be simple to check whether the 577R allele and the method of detecting it was new (as I thought) or was old. It would be good to have a look at the specification and see what was really discovered.

        It may be that the novelty was to check whether there were 1 or 2 copies of 577R. If the prior art does not teach testing for that then the process may have a novel sequence of steps. But in my opinion to get of the ground you have to specify what is technically new about the test, and that needs more than a mere interpretation as things now stand.

    1. Paul, I replied to Random below that this claim seemed to violate Funk Bros., just as you observed. The more serious question is why the PTO issued it — deliberate policy choices by the PTO to flout the Supreme Court or examiner mistake.

  17. Not to be too flippant, but should the title of this thread be:
    New Section 101 Judicial Law Written: Patents Invalid”

    There is no reasonable way to say that the map we are following here is merely a new interpretation – this is a newly written map.

  18. Random in other threads is making a good case for a very simple proposition: one cannot claim new structure in terms of what it does.

    This is not really a 101 problem, but it come directly from Morse.

    1. These claims are not claiming structure in terms of “what it does”. They are claiming the “doing”.

      It’s called a method or process claim.

      1. These claims are not claiming structure in terms of “what it does”. They are claiming the “doing”.

        Method steps can be functional as well. This should be obvious from the fact that the law recognizes the phrase “step for”, but beyond that –

        a) analyzing a sample obtained from the human for the presence of one or more genetic variations in a-actinin-3 (ACTN3) gene;

        “Analyze” is not an act one can take. One can take a series of acts which, when taken together, will be called the function of analyzing.

        1. LOL – yes “step for” is recognized, but just like – exactly like – the use of functional language in claims is allowed under the law in more than just 112(f).

          It is an important understanding of the law that you seem unwilling to recognize.

          1. Anon2 seemed to be making an argument that method steps can never be functional. I was showing him that is clearly not the case. Your attempt to drive the conversation into strawman territory by lying about what I say (again) won’t bait me this time.

        2. Random, I think that you and I would agree that software, claimed as a sequence of steps, is not really apparatus, but a method at best. Is this correct?

    2. 1. A box including a bottom, four connected sidewalls extending from the bottom, and a top connected to one of the sidewalls and configured to rotate relative to said sidewall.

      Eligible.

      1. 1. A box including a bottom, four connected sidewalls extending from the bottom, and a top connected to one of the sidewalls and configured to rotate relative to said sidewall

        Eligible

        Is it new? If not, then it fails 101 in addition to 102.

        1. Therein lies the rub. What is new? New according to what? According to the whims of a judge absent prior art? Or according to 102/103?

          If the former, that’s an issue.

          If the latter, then why are summary judgement motions being granted on 101 alone without claim construction or any 102/103 analysis?

            1. Nowhere does this claim include a programmable computer. Please try again.

              1. A box including a bottom, four connected sidewalls extending from the bottom, and a top connected to one of the sidewalls and configured to rotate relative to said sidewall

              1. Nowhere does this claim include a programmable computer.

                Right. But your programmable computers isn’t new and neither is a box with a top “configured to” rotate relative to a sidewall.

                1. Your argument is falling to the fallacy of “oldbox,” and the lack of inherency.

                  Why do you insist on playing these childish games?

        2. Also, what is the 101 analysis here to render this ineligible? Just a couple days back you said that “moving a physical object” is not an abstract idea. If that’s the case there is no abstract idea in place here and the Alice test fails.

          1. Just a couple days back you said that “moving a physical object” is not an abstract idea.

            This is an apparatus claim reciting an object that is “capable” of movement, not a method claim directed at moving a physical object (the context of our previous discussion about ‘moving a physical object’). There are many objects which are ineligible under 101. “New” books leap immediately to mind, in spite of the fact that the pages are capable of being moved.

            what is the 101 analysis here to render this ineligible

            The analysis is that boxes with rotatable lids are old. I’m looking at one right now and I assume you didn’t invent it (happy to be corrected and also happy to congratulate you on being the oldest living human being if that’s the case). 101 requires that the invention be “new”. That’s the analysis.

      2. No, perhaps you have trouble reading “not a 101 problem” and understanding that the functional at the point of novelty problem is not a 101 problem.

        Regarding your hypo, you did not tell us what the new structure was. The statement made was one could not claim new structure in terms of what it does.

        All told, the reply did not address the proposition.

    3. This is not really a 101 problem

      Sure it is because “new functionalities” are not among the listed categories of eligible subject matter in 101. Nor is “information”.

      The drafters certainly could have included “new functionalities” in 101. But they didn’t.

      That’s not to say that functional claiming at the point of novelty does not or can not implicate the other statutes. As everyone knows, it’s entirely possible (and not uncommon) for a claim to fail under multiple prongs of the patent act. Happens all the time. Feature, not a bug.

      1. Sure it is because “new functionalities” are not among the listed categories of eligible subject matter in 101.

        Quite clearly, you are mistaken.

        The “new functionalities” as you coyly attempt to play word games are covered in the 101 statute – let me provide the quote: “or any new and useful improvement thereof

        Please stop the childish games.

        1. The “new functionalities” as you coyly attempt to play word games are covered in the 101 statute – let me provide the quote: “or any new and useful improvement thereof”

          If you believe that, then try to claim “A new functionality, wherein said functionality is decreasing appetite and opening a hamster cage wirelessly.”

          Maybe you’ll get your patent and I’ll have to eat my hat. Until then, I’m pretty sure I’m on the right track here.

    4. Ned, just yesterday, you wrote this:

      David, in a method claim, ACTS are not functional. SO THAT is. Most of the “ineligible” method claims you list are of the “so that” variety.

      The claims in Walker, Genetic Tech, and Jung are composed solely of ACTS, not SO THAT statements. (Cote is more down the 112p6 road.)

      By your rationale, the claims in Walker, Genetic Tech, and Jung have no “functional” language whatsoever. So how does your comment that “one cannot claim new structure in terms of what it does” apply to those three cases?

      1. “Analyze” is not an act. One can perform a series of acts that result in the function of analysis. I agree that many of the items in the claims above are acts. Reception and transmission, for example, are acts rather than functions. Analyze and determine are not.

  19. The Genetic Tech patent was examined as a method for detecting and diagnosing cancer. Early detection of cancer is obviously critically important, but patents covering these types of advances are unlikely to be supported moving forward.

    Dennis it would help if you were specific about what you meant by “these types of advances.”

    Many new methods of acquiring information about our genomes (i.e., new sequencing methods) remain eligible for patenting and will continue to remain eligible for patenting.

    Methods that protect the information obtained by sequencing as well as inferences that may be drawn from that information are not eligible for patenting.

    That’s a feature, not a bug, as anyone familiar with drawing an inference will tell you.

    Are you familiar with drawing inferences, Dennis? Of course you are. Please try to remember to remind everyone of the underlying issues here as certain folks are inclined to forget them whenever it suits ther needs.

  20. The Genetic Tech patent was examined as a method for detecting and diagnosing cancer. Early detection of cancer is obviously critically important, but patents covering these types of advances are unlikely to be supported moving forward.

    For those interested, it only takes a few minutes to look through some of the cancer diagnostic patents and see that many of these are likely invalid under Mayo.
    link to patft.uspto.gov

    1. it only takes a few minutes to look through some of the cancer diagnostic patents and see that many of these are likely invalid under Mayo.

      Indeed, and good riddance to those claims which represent many of the most transparent attempts by applicants and patentees to use the patent system to protect information itself.

      Wipe them off the face of the earth. Thank you.

    2. Of course, the USPTO does not seem to have fully received the message. See, for instance Yeda Research’s newly issued Patent No. 8,748,118 claiming:

      1. A method for assessing the presence of bladder cancer in a subject suspected of having bladder cancer, said method comprising: (a) obtaining from the subject a urine sample substantially free of residual cells; (b) determining the level of at least one biomarker in the urine sample, said at least one biomarker being selected from the group consisting of IL-13; HSP60; HSP70; HSP90; and IL-10; (c) comparing the level of said at least one biomarker to a control value or level corresponding to a set of one or more healthy individuals; and (d) determining the presence of bladder cancer in the subject if there is a significant elevation in the level of the at least one biomarker in said urine sample compared to the control value.

      Also, Vanderbilt’s patent No. 8,822,159 issued on Sept 2, 2014 and claiming:

      1. A method of differentiating Spitz nevi from Spitzoid malignant melanoma comprising: (a) subjecting a skin lesion sample from a patient to mass spectrometry; (b) obtaining a mass spectrometric protein profile from said sample; (c) comparing said mass spectrometric protein profile to a known normal, Spitz nevi and/or Spitzoid malignant melanoma profile; and (d) classifying said lesion as a Spitz nevi or Spitzoid malignant melanoma based on the similarities and differences between said mass spectrometric protein profile and said known profile or profiles.

      1. the USPTO does not seem to have fully received the message
        The Genetic Tech decision wasn’t out of the Federal Circuit. There was no message to be received.

          1. See Mayo v. Prometheus (2012).
            Apply the analysis of Mayo to those claims them. Just saying see case cite doesn’t do anything for me. Would you accept that type of analysis from one of your students during an exam?

            E.g., Hypothetical 1 in your Final Exam: “blah, blah, blah more blah, blah, blah. Are these claims directed to statutory subject matter?”
            Student Answer: No. See Alice v. CLS Bank.

            What grade are you going to give that answer?

            1. Apply the analysis of Mayo to those claims them.

              That’s pretty easy. The claims recite an old data gathering step, followed by a step of thinking about an ineligible correlation. Those are the exact facts of Mayo. The claim prevents practitioners of the prior art from thinking about the correlation. The claim therefore protects ineligible subject matter. The claim is therefore ineligible. Again, this is straightforward application of Mayo.

                1. Oh No, this was my point below. MM answered that one typically admits as much in the specification.

                  If there is no such admission, then there might be invention in the data gathering steps which seem otherwise eligible.

          2. Dennis, while I agree with you about how courts would likely regard both claim, I’m wondering if there’s a significant difference between these claims and Prometheus’s claim that might change the outcome.

            Prometheus’s entire claim involved a routine “administering” step, and “determining the level of 6-thioguanine in said subject.” Since there was no recitation of why the level of 6-thioguanine might be a useful determination, one could argue that the Court’s verdict was based on a perceived lack of utility – i.e.: “lots of researchers conduct blood assays for lots of chemicals; why does this matter?” And looking at the preamble (“optimizing therapeutic efficacy for treatment”) is empty enough to make that question seem rhetorical.

            However, “determining the presence of bladder cancer,” as in Yeda’s claim, has explicit, clear, plain utility. So does “classifying said lesion as a Spitz nevi or Spitzoid malignant melanoma,” as per Vanderbilt’s patent.

            I can see a distinction here, much like that between Parker v. Flook and Diamond v. Diehr. If it wanted, the Court could characterize Prometheus as: “the claim only recites a biological relationship, nothing more,” and distinguish Yeda’s or Vanderbilt’s claims as “reciting the relationship only as part of a specific medical process, which must be considered as a whole.”

            I doubt that today’s Court would rule that way, given its florid hostility to patents across the spectrum. But it might take 3-4 years for either case to reach the Court – and in the meantime, the PTAB and CAFC may have run wild with aggressively invalidating all types of patents using the Mayo/Alice “abstract” tests. The Court of 2017 might (finally!) be seeking examples of claims that do have clear utility and specificity to hold up as examples of patent-eligible subject matter, in order to corral the 101 beast – and I can imagine Yeda’s and Vanderbilt’s claims providing a model example for its purposes.

            1. David – First I should say great blog: Folks should check out: link to usptotalk.com by David Stein.

              Your analysis here makes sense, but would (in my view) involve a re-reading of Mayo that shifts the decision’s meaning to be something a little different than what the court actually said. Of course, as you note, the Supreme Court has a history of doing just that.

              1. Dennis, I have had numbers of really good conversations with David. Encouraging patent attorneys like David to become regular posters must be encouraged.

                1. Many thanks, Ned. Yeah, I’ve had great conversations of late with you, NWPA, RandomGuy, Max, and some anons. I really enjoy having a community of differently-minded people to bat around these issues from various perspectives. Good stuff.

              2. I’m guessing that *Mayo* and *Alice* are so strongly worded because the Court felt like the CAFC (and patent community in general) hadn’t given *Bilski* the weight that the Court had intended. *Alice* really feels like: “no, we really mean it!”

                So it’s understandable that the opinions are light on nuance and balance – and I’m expecting (hoping!) to see more nuanced opinions in the next few years. As further prognostication – if the CAFC shows that it’s now taking the Court’s instructions seriously, the Court might stop granting cert so often and allow the CAFC to shape the finer details.

                And many thanks for the website plug!

                I’ve had a variety of thoughts and ideas bottled up, and this seemed the best way to express them. I’m taking my time with writing and editing each article – averaging one publication every two weeks. But I have a lot of ground to cover: 101, 103 / KSR, prosecution tactics and best practices, and USPTO logistics. It’s been a fun project (albeit time-consuming!)

      2. The PTO will always be making mistakes because … human. And also because of relentless pressure from attorneys on the other side in the form of dust-kicking or outright fraud (not saying that’s true in these specific instances).

        But I do know that many Prometheus-style claims (and those particular claims surely fall into that class) have been properly tanked and many, many more are not being pursued at all.

        Thankfully there are some tried and true and phenomenally successful alternatives for discovering and disseminating the type of information that these patents ostensibly protect.

        1. More on my question:

          Assume this step was new and non obvious:

          “determining the level of at least one biomarker in the urine sample, said at least one biomarker being selected from the group consisting of IL-13; HSP60; HSP70; HSP90; and IL-10; “

          1. Ned: Assume this step was new and non obvious:

            “determining the level of at least one biomarker in the urine sample, said at least one biomarker being selected from the group consisting of IL-13; HSP60; HSP70; HSP90; and IL-10; “

            Assuming the step is construed to exclude reading a medical chart (or something similarly ineligible) there would be no eligiblity issue.

            Note however that people have been looking at IL-13 levels in urine for over 20 years.

        2. Ned: how do you know the statutory part of the claim is not new?

          In most of these correlation cases it’s admitted in the specification, Ned. The people mining the data aren’t discovering genes — the genes were discovered by other people as were the methods for determing whether those genes were present (or absent).

          1. B-b-but electrons are admitted prior art.

            So are protons and neutrons.

            Oh – you want something else…. you want a configuration of these old things….

            Well why did you not say so?

            (and let’s eliminate the ‘structural-only’ claim path as already admitted as one – but not the exclusive proper way of claiming).

      3. Irrespective of 101, the Yeda claim appears to be mostly worthless, since it seems to recite a multi-step method in which different steps can be performed by different actors, ergo no underlying infringement, ergo no contributory or induced infringement. (The claim also appears to suffer from 112 issues, as, for example, the term “substantially free of residual cells” doesn’t appear to be defined anywhere in the specification.)

        Unfortunately, knocking out even the *possibility* for patents on diagnostics via SCOTUS-type idiocy will just push this information into the world of trade secrets. What a wonderful way to promote the progress of useful science.

        1. into the world of trade secrets. What a wonderful way to promote the progress of useful science.

          The fact that those with influence over developments in patent law are also the same who really do view what you posit as a wonderful path is a fact often kicked over with dust and belittled.

          Funny is it that such seems to escape careful scrutiny.

          I am reminded again of the business model of such firms (for example, in Big Data you have Lex Machina)….

  21. There’s also CMG Financial Services, Inc. v. Pacific Trust Bank, F.S.B, C.A. No. 11-10344-PSG (N.D. Cal. August 29, 2014).

    1. U.S. Patent No. 7,627,509 (Home ownership payment system and method).

      1. A system for providing an integrated line of credit mortgage account and checking account to a mortgagor, while simultaneously paying off the mortgage loan balance of the mortgagor, comprising:
      an integrated account consisting of a line of credit mortgage having a line of credit account balance and integrated with a dedicated checking account having a checking account balance independent of said line of credit account balance comprised of funds periodically deposited therein by said mortgagor;
      mortgage payment means associated with the integrated account paying down the mortgage balance of said mortgagor upon depositing of funds into said integrated account therein to debit the checking account balance by the amount of funds automatically moved and crediting the line of credit account balance;
      said integrated account providing both a line of credit account, secured by the mortgagor’s property and based on the equity said mortgagor has in the predetermined value of the mortgagor’s property, and an integrated checking account to said mortgagor with said integrated account providing for said funds to be deposited into said checking account of said integrated account;
      said integrated account having means for moving said funds simultaneously and automatically from said checking account into said line of credit account of said integrated account after the depositing of said funds into said checking account;
      means associated with both said line of credit account and said checking account allowing withdrawal of funds from said integrated account by said mortgagor in order to pay other living expenses by automatically transferring funds from said line of credit account to said checking account to fund withdrawals or debits from said checking account to credit checking account balance and debit the line of credit account balance by said transfer amount.

      1. Means plus function limitations. That said, plaintiff’s proposed constructions were not particularly compelling from a 101 standpoint e.g.,

        “Mortgage payment means”:

        “Software-implemented instruction(s) to
        make mortgage payments by debiting the
        checking account balance and crediting the
        line of credit account balance upon receiving
        a deposit in the checking account”

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