Guest post by Ben Roxborough. Mr. Roxborough is one of a few dual citizens who have completed federal court clerkships in both the United States and Australia. He has clerked in the U.S. for three years and practiced in Australia for five years, writing articles on how Australian courts developed a workable doctrine for patentable subject matter. He earned an LL.M. degree at Stanford Law School, specializing in intellectual property. This is not legal advice, and he welcomes any comments or criticisms: ben.roxborough@gmail.com
To say that the sands have been shifting with respect to Section 101 jurisprudence would severely understate the seismic change that it has experienced in recent years; ever more so in recent months. The consequence is that the lines between sections 101, 102 and 103 have been blurred. This consequence appears to stem from statements in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1304 (2012), where Justice Breyer suggested that the inquiries “overlap.” Indeed, three years later, the Federal Circuit panel in Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (2015), went as far as saying that a “pragmatic analysis of § 101 is facilitated by considerations analogous to those of §§ 102 and 103.”
Because the lines have blurred, defendants have been able to rely on 102/103 arguments to invalidate patents on 101 grounds. These arguments, which defendants tend to advance at the second step of the Mayo/Alice framework, generally state that the additional steps—beyond the putative ineligible subject matter—are conventional because they can be found in the specification or are so ubiquitous that the court can treat them as routine and well understood by those in the scientific community. In Mayo, 132 S. Ct. at 1298, for example, Justice Breyer cited admissions in the specification that the processes for determining the level of metabolites in a patient’s blood were “well known in the art.” The patent lacked inventive concept because of this. Relying on Mayo, among other cases, defendants now make a simple argument. The argument may be summed up as: “Your Honor, if you combine what’s described in the specification and prior art with the ineligible subject matter, you’ll find that the patent claims are routine and conventional and do not meet the 101 threshold.”
In effect, the 101 ineligibility defense has become a de facto 103 defense, targeting primarily combination patents. But putting aside the fact that this de facto argument reflects a conclusion (rather than any real analysis), the argument is extraordinary because prior art in the specification is used against the patentee. No evidence other than the specification is being proffered to support the defendant’s position (which may mean that the prior art in the specification is an admission, but no patentee would say that the combination of the prior art elements were well known in the art at the time of the invention). And although some district courts have acknowledged this paradox, the argument tends to be successful as it was in McRO, Inc. v. Namco Bandai Games Am., Inc., No. CV 12-10327-GW, 2014 WL 4749601, at *11 (C.D. Cal. Sept. 22, 2014).
But it doesn’t end there: the patentee’s perilous position is only compounded further when the defendant seeks dismissal of the claim pursuant to Federal Rule of Civil Procedure 12(b)(6) because the patentee generally cannot proffer evidence outside the four corners of the complaint (and patent) that could undercut the defendant’s position. This seems unfair from not only a procedural perspective, but also a substantive one. When looking at a combination patent, what courts most want to know (or should want to know) is: “Who would have thought to combine the elements of the invention in the first place, and why?”
These basic concerns are central in the 103 context. But they should be equally relevant in the 101 context. Defendants have had a field day eviscerating patent after patent since Alice using ‘obviousness-like’ arguments to show that the patent lacks inventive concept. What is required in response to these developments is judicial recognition of ‘obviousness-like’ arguments that cut the other way. The article I am writing seeks to develop these themes, so to place plaintiffs and defendants on equal footing under Section 101. They are summarized here (and, admittedly, are far from fully developed):
- THE SKILLED ARTISAN: To provide the 101 analysis with an objective baseline, courts need to define who the skilled artisan is—and what she knew at the time of the invention. Sometimes a plaintiff is precluded from presenting such evidence because courts now decide a significant number of 101 cases at the Rule 12(b)(6) stage. To guard against early Rule 12(b)(6) motions, the skilled artisan’s background should be described in the complaint (or even the patent itself). Or, the Defendant should be required to show ineligibility within the confines of Rule 12(b)(6). This is less of a problem at the Rule 56(a) stage because the patentee has a chance to present skilled artisan’s common general knowledge. Critically, however, in those cases now on appeal—where the district court has not properly articulated the skilled artisan’s background—the Federal Circuit should be remanding such decisions for further factual development of the record. Placing greater emphasis on the skilled artisan can only make the 101 analysis a more balanced one.
- SOLVE THE PROBLEM: Defendants are using the specification against the patentee. But what is referenced in the specification can actually help the patentee demonstrate that the additional steps beyond the ineligible subject matter constitute inventive concept. Specifically, plaintiffs should turn the tables and point to the specification to demonstrate the problems faced by those in the field—and why the invention provides a “new and useful” solution. 35 U.S.C. § 101. Taking a problem-solution approach to define what is “new and useful” is precisely the type of analysis that Judge Chen applied in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), though it has its roots in Diamond v. Diehr, 450 U.S. 175, 188 (1981) and the Supreme Court’s more recent holding in Alice also reflects this approach.
- TEACHING AWAY: This analysis typically applies in the 103 context. But what stops it from being relevant in the 101 context? To this point, the recent BRCA1 decision has opened the door for its application. In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 764 (Fed. Cir. 2014). Just as Justice Breyer tethered the notion of what was “well known in the art” by referring to the specification for 101 purposes, the Federal Circuit in BRCA1 has tethered that same notion to “techniques that a scientist would have thought” to use when deciding to engage in experiments that were directed to the invention. But if inventors engage in activities that run counter to scientific thought, those activities can hardly be considered routine and conventional in a 101 sense, correct? While some may say that teaching away analysis should be reserved for § 103 (and to do so would otherwise conflate § 101 with §103), several reasons militate against this position. First, as stated above, the Supreme Court and Federal Circuit have said that § 101 is facilitated by considerations analogous to those of § 103. Second, teaching away analysis should not be monopolized by § 103. In fact, evidence that teaches away is already relevant to enablement (§ 112) to show that “a significant amount of experimentation would have been necessary to practice the claimed invention.” Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1379-79 (Fed. Cir. 2007). Because teaching away analysis is transferable between different sections in the statute, there would seem no reason why it could not be extended to § 101 to determine whether a combination of steps is routine and conventional.
- HINDSIGHT: Given that Alice requires that courts look at patented elements as a whole, the concern of hindsight bias should have as much relevance to a § 101 challenge as it does a § 103 challenge. For when each of the elements of a claimed invention do not exist in the prior art, or even the ordered combination, how can a defendant rationally argue that the combination is routine and conventional without some degree of hindsight bias kicking in? Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (2005). Indeed, in Mayo, 132 S. Ct. at 1298-99, Justice Breyer explained that the invention in Diehr was patentable because the “ordered combination” of the steps of the claimed invention as a whole were “nowhere suggested” to be “in context obvious, already in use, or purely conventional.” And while the Supreme Court made no express mention of hindsight in its 101 holdings, it was, at the very least, an underlying rationale in Diehr. Footnote 12 of that opinion is exemplary. Alice, too, reinforces this point when it spoke of looking at combination patents as “whole.”
- PREEMPTION & PIONEER PATENTS: Plaintiffs do appear to be pressing preemption arguments more heavily in recent months. The Sequenom case illustrates this: Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (2015) But, sadly, the Federal Circuit panel got it wrong when it was not prepared to consider evidence that demonstrated that the invention did not foreclose the use of the discovery. The saying what’s good for the goose is good for the gander seems apt. Because of this, it will be left to the Federal Circuit en banc, or other panels to address how preemption should factor into the 101 calculus. In any case, those decisions should take a liberal approach to Mayo’s dicta and allow preemption to play a tie-breaking fact role in close cases—e., a role similar to that of secondary indicia in the 103 calculus as evidence providing a tipping point in favor of a non-obviousness determination. To this end, and in the preemption context, the patentee should be entitled to show that there are different ways of achieving the goal to which the patent is directed—not just one (preemptive) way.
In addition, the Mayo decision also spoke of “how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo, 132 S. Ct. at 1303. Does this mean that a pioneer patent should be given more latitude in a 101 context than a patent that provides a mere incremental improvement? I think it does. But a workable doctrine must emerge—much like one emerged with respect to the doctrine of equivalents in the infringement context. The article will address this.
- DRAFT JURY 101 INSTRUCTION: Given that some 101 cases are predicated on underlying factual findings, much like 103, the article will conclude with an appendix that includes a draft jury instruction. That will be addressed in more detail later.
More case law
In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.”
Mere use claims are not statutory. This is why abstract ideas, laws of nature, etc. are not patent eligible. They are mere uses of an existing machine or naturally occurring composition.
Just because there are “steps” doesn’t mean the claim isn’t directed to the mere use of a computer to perform a known task.
“They are mere uses of an existing machine or naturally occurring composition.”
See 35 USC 100(b)
Thanks.
Right a NEW use.
Right.
(See below)
Oopsie for you.
NEW use of a computer.
Old task: listen to speaker, type what was said.
New use of a computer:
Receive audio signal from microphone representing speakers voice, convert audio signal into text; put text into text document.
What if the claims had been worded differently such as.
1. A process comprising: using a high carbon …. subject to stress by sliding friction.
2. A process comprising: using a sustained release … sulfonic acid.
It should have been claimed as :
A method of making a brake pad (or is it a brake drum/rotor?), the method comprising:
what ever the steps are for making a brake pad/drum/ rotor from high carbon austenitic iron alloy having a proportion of free carbon e.g.
Placing 10 parts Austine iron powder in a crucible;
placing 2 parts carbon powder in the crucible;
heat the crucible to above 1200F;
stir the contents of the crucible;
pour into pad/drum/disk shaped mold;
cool the mold to 700F
beat the contents of the mold
heat the contents of the mold
beat the contents of the mold;
allow to cool to room temperature;
shrink wrap in sets of two to a card; and
overcharge.
Noteworthy case law
[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
Generic uses of a computer are not patentable. Generic uses of DNA are not patentable.
This is fundemental to patent law.
There is a difference between an “unappreciated property” and a new configuration. In the first instance, the property was always there (i.e., old). In the second instance, the configuration is new.
It’s a straightforward mathematical exercise to spit out every “configuration” of every DNA molecule with less than 20 bases. Pretty much every one of those configurations is useful for detecting its complement. So: there are really no “new” configurations (in that range anyway) and there are reasonable motivations to make each one.
Also it’s been known for a long time that DNA sequence information would be valuable to everybody. And it’s been known for an equally long time that there’s a lot of that information out there and gathering that information will require some “isolation.” Why do we want to give a tiny handful of corporations monopoly power over that knowledge? Assume you’re not an ‘investor” or an employee in such a company when you answer the question.
“useful for detecting its complement.”
Nice.
So what?
You do realize that such a “use” fails the utility requirement as determined by the courts, right?
Wait, you are not just obfuscating and throwing out misdirection, are you?
Shockers.
“useful for detecting its complement.” Nice. So what?
Just responding to comments 21 and 21.1. Try to keep up, “anon”. I know it’s hard.
The implication, of course, is that all those 20 mers are obvious per se.
You do realize that such a “use” fails the utility requirement as determined by the courts, right?
LOLOLOLOLOLOLOLOLOL Of course I realize that. I explained that to you probably 500 times in the run-up to the Myriad decision because that’s the utility of Myriad’s claimed oligo sequences.
That’s not the point of the discussion in 21.1, however. The point is that it’s a perfectly fine and widely recognized utility and motivation for prior art purposes.
Having you say “keep up” as you go in the wrong direction is rather amusing.
Thanks, but I will pass on that.
“There is a difference between an “unappreciated property” and a new configuration.”
Bingo.
[high five]
Define “generic use”
Using an existing product in accordance with its inherent properties.
Inherency could be an alternate grounds (102) but there can and should be a such thing as 101 inherency
Inherency is the proper patent doctrine.
Why do you think it is that this doctrine is not used (at all) by the anti-software folks?
Could it be that to do so would shine the light on the fact that there position is equivalent to all future inventions and improvements by way of software must be “already in there,” which is a patently absurd (think Morse) result?
That is true but an argument for using 101 instead. I just think you don’t like 101.
“I just think”
You just think wrong.
I like 101 for what Congress actually wrote and the intentions that they had when they wrote it.
I also “like” the separation of powers and the proper allocation of authority for writing the statutory law that is patent law that is embedded in the (gasp) Constitution.
Let me know what the primal law is changed to mirror what you want it to be to match your philosophy. Until then, your opinion is worth the weight of an uninformed (malinformed, actually) opinion.
What you are (finally) digging into, Topce, is what I have been begging Ned Heller and Malcolm to actually use in their arguments: the patent law doctrine of inherency.
Maybe this then is what you mean by your agreeing with me more than I think…
I agree on that point.
I completely disagree with the post though. I don’t see anything wrong with reading 102/103 into 100/101.
You guys are hilarious. I hope you realize that.
What is a generic use of a computer? One that is known? Fine, prove that it was known and reject under 102.
It’s the same old Merry Go Round !
Weeeeeee
Roxborough: Relying on Mayo, among other cases, defendants now make a simple argument. The argument may be summed up as: “Your Honor, if you combine what’s described in the specification and prior art with the ineligible subject matter, you’ll find that the patent claims are routine and conventional and do not meet the 101 threshold.”
Relying on baloney they scraped from the bottom of the Internet, defenders of the worst patents ever granted now make a simple argument: “We were born yesterday, we want our junk patents, and we’re going to stick our heads in the sand and behave like petulant ignorant children until we get to play our game the way we want to play it.”
Seriously, Ben: show everyone you’re deep thoughts on the issues in Prometheus v. Mayo prior to the case being decided. Then we can see what a serious thinker you are. Your post here is basically an endless stream of drivel that recapitulates all the debunked arguments that the s0ckpuppet whiners tried to float here for years.
You can’t evaluate the subject matter eligibility of a typical claim without comparing the claimed “invention” to the prior art. That’s neither “conflation” with nor “blurring of the boundaries” between 101 and 103. It’s just basic logic and common sense.
Now, the Myriad claims are composition claims and raise somewhat different issues from the process and pseudo-process claims at issue in Prometheus, Bilski and Alice. We did debate — and we can continue to debate — how well the reasoning in those cases can be “fit” to the evaluation of new compositions described in objective structural terms. However, the serious problems with isolated DNA claims of the sort that Myriad and companies like Myriad seek remain and those problems are lethal. I don’t see any recognition or acknowledgement of any of these nuances in your vapid ranting.
Let’s take your “strategery” suggestions one at at time and evaluate them as if were living on planet earth, where the PTO has granted thousands upon thousands of incredibly junky claims and — until the public and the Supreme Court woke up — was poised to grant exponentionally more to the lowest form of innovator who ever breathed air.
To provide the 101 analysis with an objective baseline, courts need to define who the skilled artisan is—and what she knew at the time of the invention.
Courts already do this. The game you want to play is to shift the game onto turf where instead of discussing subject matter eligibility, a paid “expert” in computer programming gets to kick dust in the judge’s or jury’s face when the claim recites computer “technology” only nominally but substantively recites non-eligible facts, relationships and processes grounded in ancient non-technical realms (e.g., shoving an ad in a person’s face or otherwise trying to sell them something in response to an action). Guess what? We’re onto you. You lose. Game over. Go home and cry me a river.
plaintiffs should turn the tables and point to the specification to demonstrate the problems faced by those in the field—and why the invention provides a “new and useful” solution.
That only works when there was a genuine problem that people didn’t know how to solve. In nearly every case with these junky computer-implemented claims, the well-known “solution” to the “problem” is “use a computer” or “use logic” or an obvious combination of both. All that’s “new” is some information processing scheme described with marginally greater specificity (typically an abstraction such as “credit card data” as opposed to “data”, or “real estate agent/home buyer” as opposed to “agent/customer” — baloney like that). If you’re solving a bona fide technological problem then you’ll need to provide a technological solution which will — almost invariably, if it’s patent-worhty — involve a novel and unexpected transformation of matter or a recitation of a non-obvious structure in objective structural terms. You don’t want to put that stuff in your claim? Then get ready for 101. You see: we’re onto you. Don’t like it? Go home and cry me a river.
This analysis typically applies in the 103 context. But what stops it from being relevant in the 101 context?
Gee, nothing, I suppose, except for the fact that’s it’s most certainly not relevant. The art “teaches away” from correlating pinkie fingernail length with leukemia. Guess what? You still can’t patent the correlation. Why? It’s irrelevant to the 101 analysis. Also, you must certainly be aware of the fact that 90% (at least) of the “teaching away” arguments that applicants make in defense of their claims are shot down in five seconds because (1) applicants don’t understand what “teaching away” means in the patent law context and/or (2) applicants are ignoring the whole of the prior art and focusin on a spurious sentence in a single reference (see point (1)).
For when each of the elements of a claimed invention do not exist in the prior art, or even the ordered combination, how can a defendant rationally argue that the combination is routine and conventional without some degree of hindsight bias kicking in?
First of all, if the element in question is itself ineligible, the issue of “hindsight” is irrelevant. For example, you can identify the most non-obvious correlation every identified. But you can’t claim a method of “drinking coffee and thinking about [insert non-obvious correlation]. Screeching “hindsight! hindsight!” at the Examiner doesn’t change anything. Now, if you have a new series of ordered steps that results in a new physical transformation of matter, you certainly are in the world of 103 and hindsight should certainly be avoided. Are such steps often recited in the junky “do it on a computer” claims that everyone is concerned about? No, they are not. Sometimes that’s difficult for some folks to appreciate. Most of the time it’s because those folks are willfully ign0rant or, well, just plain ign0rant. See, e.g., the guy here who commented that before computers animators used “their guts” to create cartoons. (<—that actually happened and nobody should be surprised, really, given what we know about the typical defender of junky "do it on a computer" patents, i.e., they will do and say literally anything if they believe it keeps the software patenting merry-go-round spinning).
To this end, and in the preemption context, the patentee should be entitled to show that there are different ways of achieving the goal to which the patent is directed—not just one (preemptive) way.
There are two related preemption issues: the first is the preemption by a patent claim of any ineligible subject matter, no matter how small the context. If ineligible subject matter is taken out of ONE member of the public’s hand, where that person is otherwise practicing the prior art, that’s enough to fail 101. End of analysis. It’s difficult to take you or your concerns seriously when you fail to acknowledge this fundamental fact. The second issue is just a bit more complex: if the claim is of a class that, if deemed eligible, would inevitably result in a mass swamping of the PTO with similar claims and a de facto preemption of ineligible subject matter, then the claim is also going to be deemed ineligible. This is where Sequenom’s junky “I detected this phenomenon first therefore I own the process of detecting the phenomena” style of claiming has serious defects. The claims in Prometheus suffered from both of these preemption issues.
To sum up, Mr. Roxborough: your thoughts here are pretty much worthless. It’s not surprising that you found some “fans” in the comments here but, from experience, I can tell you that your biggest fans are some of the least knowledgable and least credible people in patent law.
Why don’t you put in the same level effort, and provide some citations, like those that are included in the article? Hard to decide which muppet you are. Statler? Or Waldorf?
provide some citations
LOL Do you need a “citation” to know whether it’s raining outside, too?
There is such a thing as ineligible subject matter. See: Prometheus v. Mayo
You can’t turn ineligible subject matter into eligible subject matter by reciting old technology. See: Prometheus v. Mayo
The importance of the ineligible subject matter protected by a claim or its utility to skilled artisans is irrelevant to the analysis. See: Prometheus v. Mayo
There is no other way to read the case. More importantly, it’s logically impossible to have a working subject matter eligibility test without these restrictions. How long have you been practicing patent law? It’s 2015. We’re talking about a hugely important case that is never, ever going to be overturned and you seem to be pretending that you are unaware of the facts in that case or what it was about.
Your premise is nonsense. Ineligible subject matter can’t be “turned into eligible subject matter.” That’s absurd. Ineligible subject matter is ineligible, period. A claim that includes subject matter that would be ineligible by itself might or might not be eligible, depending on what else it includes.
And Mayo didn’t hold that “old technology” can’t turn a natural law into eligible subject matter (again, a flawed premise). Mayo held that eligibility of claims involving a natural law depends on whether the claims “add enough [to the natural law] to allow the processes [the claims] describe to qualify as patent-eligible processes that apply natural laws.”
The issue is whether such claims recite the equivalent of “applying the natural law”. Mayo: “unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”
The steps of Mayo’s claims weren’t insufficient because they weren’t “new technology”. It was the effect the claims as a whole would have had with respect to the natural law that they implicated.
Personally, I think Mayo was properly decided, but that’s beside the point.
Ineligible subject matter can’t be “turned into eligible subject matter.” That’s absurd. Ineligible subject matter is ineligible, period.
Pedanticism is alive and well.
A claim that includes subject matter that would be ineligible by itself might or might not be eligible, depending on what else it includes.
Ah, so you did understand my meaning. Yes, we’re talking about patent claims. “Depending on what else” is not a black box. It never was. The additional mere recitation of old technology does not transform a claim that would otherwise be ineligible into an eligible claim.
The steps of Mayo’s claims weren’t insufficient because they weren’t “new technology”.
The Supreme Court is crystal clear that the additional steps (other than the ineligible step of thinking about a correlation) recited in Prometheus’ claims were insufficient because they were known in the art. That’s the exact same thing. How on earth can you not see this?
Mayo held that eligibility of claims involving a natural law
The reasoning in Mayo is surely not limited to “natural laws”. If it wasn’t perfectly clear before (and it was perfectly clear), the decision in Alice erased any confusion.
Mayo: “unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”
Reciting old technology does not — and can not — provide that “practical assurance”. To appreciate that, you need to look at [old process + new ineligible subject matter] claims from the perspective of people who are lawfully practicing the prior art processes.
Also, “being old” is not the only way that an additional step can be “insufficient” to rescue an otherwise ineligible claim. Can you think of another way? I can think of at least two other major ways. If you can’t think of any additional ways to fail, I humbly suggest you shouldn’t be getting anywhere near a patent application.
“Pedanticism is alive and well.”
Yes, but Malcolm is the Queen of the AccuseOthersOfThatWhich MalcolmDoes.
“because they were known in the art”
Talk about your “kindergarten” level thinking…
This is exactly the “logic” I mock with the “known in the art” of electrons, protons, and neutrons that every machine and manufacture are configured from.
You want to use a version of “logic,” but you refuse to “own” the result of that selfsame “logic.”
We’re talking about processes. Different issues. I realize that’s way too nuanced for you, however. Ask your mommy for a graham cracker.
“different issues”
LOL – where in 101 did you see that?
“The Supreme Court is crystal clear that the additional steps (other than the ineligible step of thinking about a correlation) recited in Prometheus’ claims were insufficient because they were known in the art. That’s the exact same thing. How on earth can you not see this?”
I can’t see it, because it’s not there, and it’s not the exact same thing. You don’t understand the holding. You use the right word — “because”. That is the kind of keyword that points to outcome determining factors. The court did note that the steps were routine, but when it came to the **reason** for the decision (the “because”), this is what the Court said: “**since** they are steps that must be taken in order to apply the laws in question, the effect is simply to tell doctors to apply the law some how when treating their patient”.
The Court explicitly distinguished between the novelty of the non-natural-law steps and their quality of failing to sufficiently limit use of the natural law. The Court also explicitly stated that the lack of novelty of the non-natural-law steps in Mayo was not the issue:
“We need not, and do not, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them. For here, as we have said, the steps add nothing of significance to the natural laws themselves”.
HOPoB,
He is relying on the obfuscation of dissection, the re-animation of “Point of Novelty” in combination claims (expunged by Congress in the Act of 1952), and the attempted treatment of all claims as mere aggregations.
As has been pointed out numerous times (without substantive reply), his “pet theory” resolves down to a basic “no aggregations” statement, not even needing any claim element to be of the type of “mental step” or “new thought” or even “old thought.” One can just as easily apply his “pet theory” to ANY set of “objective physically claimed” elements that are a mere hodge-podge of old items that have no functional interrelationships, and use his exact same “logic.”
“anon” One can just as easily apply his “pet theory” to ANY set of “objective physically claimed” elements that are a mere hodge-podge of old items that have no functional interrelationships,
Please, please, please pull out your magical box of protons, “anon”. It’s so compelling and sooper dooper serious.
You do realize that my magical box is a slap against the very “logic” you attempt to use, eh?
wake up son.
“You can’t evaluate the subject matter eligibility of a typical claim without comparing the claimed “invention” to the prior art.” – Yeah, well, you know, that’s just, like, your opinion, man.
IIT “You can’t evaluate the subject matter eligibility of a typical claim without comparing the claimed “invention” to the prior art.” – Yeah, well, you know, that’s just, like, your opinion, man.
No, it’s not “just my opinion.” It’s the law, it’s always been the law, and it’s always going to be the law. Do you understand basic logic? If you understand basic logic and you acknowledge that there is such a thing as ineligible subject matter, it really doesn’t take much mental effort to arrive at the proposition I stated for you.
It does take quite a bit of effort to pretend that the proposistion is “just my opinion”, however. Unless, of course, you’re really ign0rant in which case you don’t have to pretend. Your call.
You “say” basic logic, but then do nothing but jump to your own conclusion – with NO path of logic provided.
(Your “pet theory” hiding in the wings resolves down to nothing more than not claiming an aggregation – mental steps, or even steps sounding in mental steps need not even be included in that “pet theory,” so your “logic” is bumpkiss)
NO path of logic provided.
LOL
“anon” gets busted for speeding.
Cop: “It’s illegal to go over 75 miles an hour. Didn’t you see the sign?”
“anon” : But I was going over 75 miles an hour and chewing gum!
Cop: So?
“anon”: I just decimated you.
On the impossibly remote chance that I’m not being trolled by IIT, here’s the deal:
Claim 1: I claim a method of thinking about [insert non-obvious correlation here].
Pretty much everyone agrees this is an ineligible claim and very few pretend to be confused about it. If you don’t agree, you’re so far out in right field it’s not worth discussing the topic with you. There are some genuinenly thoughtful people out there, after all, who have a clue about how the patent system works.
Claim 2: I claim a method of drinking a cup of coffee and thinking about [insert non-obvious correlation here].
Now here’s your chance to be super (un)clever! Lookie, it’s a “process” and there’s a transformation of matter (coffee is a drug, after all)! Question for you, IIT: should this claim be deemed eligible by the US patent system or any sane patent system? Explain your answer and try really hard to take into consideration the interests of additional parties other than the tiny tiny tiny fraction of wealthy manipulators of the patent system. I realize this latter bit may pose a serious challenge for you (it does for many others).
…and there is the “pet theory,” as b@nal as ever.
Is anybody is arguing for eligibility of “thoughts about correlations”? “Correlating” is different than “thinking about correlating”. I agree that “thinking about X” should be ineligible under 101. Same goes for claims that merely disguise “thinking about” by calling it “determining”.
But I think you have a different story if it read instead:
Claim 2: I claim a method of drinking a cup of coffee and correlating some random data I have.
That’s probably obvious, and there is no need for contorting 101. Drinking coffee is really old. Finding relationships between data is really old. Correlation does not do anything to improve upon known methods of drinking coffee in any new or unpredictable way. And of course, I don’t think anybody is arguing that the data itself should be eligible.
ejee: Claim 2: I claim a method of drinking a cup of coffee and correlating some random data I have. That’s probably obvious
That claim is most definitely not obvious if the correlation is non-obvious.
I really do hope that you’re not an attorney.
It’s not obvious if it’s not obvious. Sure.
I had in mind the sort of bio/computer claims where the data involved is very much related to what is going on in the rest of the claim, and odds are a person would find it obvious to look at two sets of data for some kind of relationship. That’s why I used the qualifier “probably”
It’s not obvious if it’s not obvious. Sure
It’s a hugely important point.
odds are a person would find it obvious to look at two sets of data for some kind of relationship
That fact doesn’t make the correlation that you find and recite obvious. Again, this is hugely important and if you can’t get the fundamentals down then it’s plain that you have no idea what the issues are.
We all agree that obvious junk is obvious junk. 103 is made to address that junk. The problem addressed by the Supreme Court in Mayo is how to deal with non-obvious ineligible junk of the sort I described in 19.2.2.
ejee: Claim 2: I claim a method of drinking a cup of coffee and correlating some random data I have.
By the way this claim is pretty much indistinguishable from the claim that Prometheus took all the way to the Supreme Court. Prometheus’ claim also happened to be painfully obvious (in addition to ineligible). Somehow it got granted. And somehow Kevin Noonan — a legal “expert” with a Ph.D. in chem/bio — couldn’t bring himself to admit either fact.
Sad but true. And no I’m not going to let people forget that sorry episode because the same behavior continues to this day. It’s wrong.
MM-
Do you think you could respond without the condescending tone? I am not anon…
FYI – I did actually take a class during law school taught by Kevin Noonan, so maybe that has influenced my thinking on this matter.
FYI – I did actually take a class during law school taught by Kevin Noonan, so maybe that has influenced my thinking on this matter.
ROTFLMAO So Noonan doesn’t even teach the facts about Prometheus in his classroom???
I’m appalled. You were ill-served.
Do you think you could respond without the condescending tone?
Do you think you can admit that you have no idea what you’re tallking about?
ejee: I don’t think anybody is arguing that the data itself should be eligible.
People don’t generally come out and say that “people should be subject to lawsuits for using new information in a logical process” because anywhere other than a well-catered conference on patent law such statements would be greeted with derision and scorn (if not outright laughter).
Instead, some people say that patentees should be able to sue you for storing and retrieving information on/from your computer database. Now, you seem like a fellow who knows what a computer is. It’s 2015. Is there a meaningful difference between the two propositions? Try to think about the answer from the perspective of any ordinary person rather than the perspective of the people who make such statements (typically patent attorneys who stand to directly benefit from such a paradigm).
I would seek to invalidate the claim under 112 with regards to the thinking part. Additionally, apply 102, 103.
In my view, we could probably do away with 101 entirely and still capture each of the pre-Alice judicial exceptions under 112, 102, and 103. Laws of nature are barred under 102(b) (pre-AIA). Truly abstract ideas are indefinite and/or not enabled. For post-Alice nonsense, you could apply 103 by first citing to the pre-existing business practice and then cite to a general purpose computer in which other business practices have been implemented.
Truly abstract ideas are indefinite and/or not enabled.
There is nothing indefinite about a process that states “think about a correlation between X and Y”. And it’s completely enabled.
Again, this lightweight kindergartend grade “arguments” against subject matter eligibility were all floated in the run-up to Mayo and they were all addressed thousands of times. Can you put them to bed already? Give us all a break.
I would seek to invalidate the claim under 112 with regards to the thinking part.
And what you do about your malpractice claim?
MM: “your thoughts here are pretty much worthless. It’s not surprising that you found some “fans” in the comments here but, from experience, I can tell you that your biggest fans are some of the least knowledgable and least credible people in patent law.”
Are you in a position to know, MM? I also see you’re back to personal attacks. While I disagree with virtually everything you say on this blog, getting angry with would be like getting angry at a child.
Are you in a position to know, MM?
Having sat here and debated folks like you here and elsewhere for many years while watching your “arguments” get ripped apart in case after case, I’m in pretty much the perfect position to know. Thanks for asking, though.
He’s a legend in his own mind…
MM, yet another masterpiece.
Except, not.
But it does align with Ned’s Windmill Chase, so you have that opinion of Ned thinking you are an Einstein going for you.
Mr. Roxborough: Great article, thank you. The 103 parallels were apparent, but your extensions were insightful and useful.
Prof. Rantanen: The editorial content and quality of Patently-O has improved since Prof. Crouch has included yourself, and others, in running this blog. Nice job on this one.
Mike D: if the Board held the Examiner’s rejection under 103 was improper, then this means that the claimed invention is non-obvious over the applied art and hence inherently *not* well known, such that the 101 rejection should be similarly reversed.
That’s pretty much the silliest argument I’ve ever heard.
Do you have malpractice insurance? God, I hope so.
When you write a new song and punch it out on a roll and put it in a player piano, the piano looks in some ways like a new machine because it is performing a new and useful function of playing a new song, a song which has never been played before.
Can my invention of a player piano which plays my new song be rejected on 101 grounds?
Certainly it is obvious to play my song on a player piano so it fails 103, but does it also somehow fail 101 also?
After we dispose of player pianos we can then move on to software.
Most software which shows up in claims is described at a very abstract level, using words like ‘stored’, ‘transmitted’, ‘displayed’, ‘determined’ etc. This is a reasonable level of abstraction since a PHOSITA can take these terms and turn them into a working application (eventually).
However this is not the only skill a PHOSITA has. For a PHOSITA the claim ‘A system where users of the system enter knowledge X, it is transformed into knowledge Y and then retrieved as knowledge Z’ is also a reasonable level of abstraction for a PHOSITA, they can also take this claim and turn it into a lower level of abstraction (‘stored’, ‘transmitted’ etc) without undue experimentation and then turn it into software.
In other words, once you describe the particular knowledge you want to store and the particular logic used to transform it, then it is obvious to a PHOSITA how to do so with software.
Similar to a player piano, a computer running this software looks like a new machine. It is performing a new and useful transformation of knowledge which has never been done by machine before.
If we agree it is obvious to anyone to use a computer to transform knowledge and it is obvious to a PHOSITA how to use a computer to transform knowledge, can we reject all software patents which only transform knowledge on 103 grounds?
And if we are reject all software patents which transform knowledge on 103 grounds isn’t there a 101 problem lurking underneath which we should use instead?
And if we are reject all software patents which transform knowledge on 103 grounds isn’t there a 101 problem lurking underneath which we should use instead?
Two problems. First, you are assuming a rejection of “all software patents which transform knowledge” on 103 grounds, which isn’t the case. Second, your analogy doesn’t work. A hypothetical patent on “a [new] song on a [old] player piano” is directed to the new song, which is both an abstract idea and nonfunctional. This hypothetical patent would be rejected today under the printed matter doctrine, which I believe is no longer necessary considering Mayo. In contrast, a patent to software (however written) is directed to something that is functional. Therein lies the difference between a song and software (and similarly, between copyright and patent).
Player pianos are an important (or at least common) topic on this site, so I think it is worth discussion :-)
I think you rejected my song on 3 different grounds:
“Directed to the new song” – No, it is directed to the very functional (and useful) machine made up of the combination of the piano and punched paper roll which does something no other machine has done before.
“Printed Matter” – No, I am not patenting the printed roll (which would be would be a paper substrate with holes in it). I am patenting the combination of a player piano roll with particular holes with a player piano to produce a new machine.
“Mayo” – Could you expand a little?
My player piano invention is certainly a useful functional machine, playing my new song.
It is doing something no machine has done before.
It is an invention but sadly it is obvious since any PHOSITA would know to combine the roll with the player piano to produce this machine.
My general purpose computer invention is also a functional (and very useful) machine, storing and transforming particular knowledge using particular logic.
It is doing something no machine has done before.
It is also a sadly obvious invention because any PHOSITA knows how to program a general purpose computer to store and transform particular knowledge using particular logic. In fact it is the main skill of a PHOSITA, creating software which stores and transforms knowledge based on descriptions of the knowledge to be stored and transformed (Also know as ‘Software Requirements’)
But I am still looking for a 101 reason, for example, use Alice and say:
Knowing something or reasoning about something in your head is by definition abstract.
Adding ‘Do it on a machine’ makes it concrete but does not add ‘something more’.
Detailing the machine by describing a general purpose computer which contains the knowledge and performs the reasoning is not something more because the high level description is just what a PHOSITA would create for you if you asked them to implement your knowledge and logic on a computer.
“Directed to the new song” – No, it is directed to the very functional (and useful) machine made up of the combination of the piano and punched paper roll which does something no other machine has done before.
This is straight-forward application of Mayo. The invention is directed to the new song. The song on the piano player is little more than a directive to “implement the new song.” This is an easy one.
“Printed Matter” – No, I am not patenting the printed roll (which would be would be a paper substrate with holes in it). I am patenting the combination of a player piano roll with particular holes with a player piano to produce a new machine.
You don’t understand the printed matter doctrine.
“Mayo” – Could you expand a little?
Read the case and ask intelligent questions — I’ll be more than happy to help you then.
It is an invention but sadly it is obvious since any PHOSITA would know to combine the roll with the player piano to produce this machine.
Obvious? Were all the elements known to those skilled in the art? Perhaps you don’t understand obviousness either.
It is also a sadly obvious invention because any PHOSITA knows how to program a general purpose computer to store and transform particular knowledge using particular logic.
Any carpenter can use a saw, nail and hammer to transform wood into a myriad of different objects. However, that does not mean that these objects are not patentable.
Adding ‘Do it on a machine’ makes it concrete but does not add ‘something more’
Your brain (in most cases) does not work like a computer. For example, the methodology involved in cutting and pasting text with a real paper document is ENTIRELY different from cutting and pasting text in an electronic document. When I’m driving a car on the highway and choose to travel in the left, right, or center, how I make this choice is very different than how an autonomous vehicle might make the same choice.