Three Recent PTAB Decisions on Patent Eligibility

Ex Parte Bak, Application 12/822,772 (PTAB 2015) (Owned by IBM)

Claim at issue: 1. In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:

prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;

enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and

enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee’s calendar.

Holding: [T]he claim is directed to the abstract idea of scheduling a meeting. . . . In this case, to the extent that claim 1 requires a network of computer controlled user interactive display stations and a sending display station, we determine that the recitation of such generic component is insufficient to transform the nature of the claim into a patent-eligible application.

Ex Parte Base, Application 10/489,651 (PTAB 2015) (Owned by Siemens)

Claim at issue: 11. A method for video coding using symbols, the method performed by execution of a computer program stored on a non-transitory computer readable medium and comprising the steps of:

providing a prediction error matrix;

converting the prediction error matrix by coefficient sampling into a series of symbols; and

performing context-adaptive arithmetic encoding of the symbols, wherein the encoding includes for a symbol being encoded, selecting from different predetermined distributions of symbol frequencies a particular predetermined distribution of symbol frequencies based on the symbol encoded immediately beforehand, the predetermined distribution of symbol frequencies indicating the likelihood of different types of symbols occurring immediately following the type of the symbol encoded immediately beforehand based on known statistical interdependencies between different types of symbols occurring in succession;

wherein a number of symbols read out for coefficient sampling is encoded and transmitted.

Holding: Independent claims 11, 20, and 21 are directed to methods of video coding using symbols with three steps: providing a prediction error matrix; converting the prediction into a series of symbols; and performing context-adaptive arithmetic encoding of the symbols. These are mental process steps which can be performed in the human mind, or by a human using a pen and paper. . . . And the recitation in the preamble of independent claims 11 and 21 of performing the method “by execution of a computer program” does not transform the recited abstract idea into a patentable invention.

Ex parte Shideler, Application 11/779,876 (PTAB 2015)

Claim at issue: 12. A method of playing a story based card game associated with a predetermined story and having a series of locations associated with the predetermined story and wherein the game includes a preset number of sequential rounds, the card game comprising: a plurality of sets of location cards, one set of location cards for each of the plurality of locations associated with an aspect of the predetermined story, each set of location cards including one card for each round of the game, wherein each round includes at least one correct location card for that round, wherein each correct location card for each round includes indicia indicating that it is the correct card for that round and including a continuation of the story, whereby a series of correct locations cards for the rounds of the game combine to form a story summary, the method comprising the steps of having the players selectively choose a location card for each round and having the players repeat the selection process until one player can identify all of the correct location cards in the series of correct location cards.

Holding: It is our view that selectively choosing a card and repeating that step until a predetermined goal is reached amounts to merely receiving and evaluating data, and therefore constitutes an abstract idea. . . . [Step 2:] The use of cards having indicia specific to the subject matter of a game is well-known, well-understood, routine and conventional in the field. Thus, from our perspective, such cards, and the other limitations of claim 12, do not add “significantly more” than an abstract idea.

389 thoughts on “Three Recent PTAB Decisions on Patent Eligibility

  1. 30

    worth putting on top (for the casual readers….

    below in the “Post 3” string of comments, I ruminate on how to set forth some of the foundational principles that would make a dialogue possible on what is easily the most contentious aspects in patent law (reaching back more than fifty years)….

    to wit: I take it that this topic (even [em]ployed as often as it is on these pages) does not “grab your fancy”…

    Too bad.

    This is one of three or four major fallacies affecting the ongoing discussions that drive such much “philosophical muckraking” here.

    (others include understanding that Manufactures include those things made by the hand of man coupled with the exceptions to the judicial doctrine of printed matter coupled with the fact that software is defined to be a machine component [there is no such thing a s software that is NOT meant to be a machine component]; and also include the patent doctrine of inherency, and how that doctrine is violated by the (merely implied) notion that computers sans software are the same from an invention protection standpoint of computers with software (which is the point presented first long ago by the Grand Hall experiment, then confirmed in the courts with the Nazomi case – and also directly tie into the full understanding of the holdings of the Alappat case.

    Maybe (just maybe) if these points were made more crystal clear by a person other than I, the “raging battles” might subside with the points that I raise accepted and integrated into the ongoing dialogues.

    Well, one can dream optimistically….

    1. 30.1

      Anon, no one reading this post knows what you’re talking about when you say, “This is one of three or four major fallacies affecting the ongoing discussions that drive such much “philosophical muckraking” here.”

      1. 30.1.1

        B$ Ned.

        The points have often been on the table – and directly pointed out to you to address.

        The “nobody knows” may – just may – apply to those with a mind closed to understanding. Or to those only interested in one way monologues.

        Gee, no surprise then, that you voice this “concern.”

        1. 30.1.1.1

          Anon, that you assume that anybody including me knows what you’re talking about when everybody tells you consistently that we do not know what your talking about is an interesting conundrum.

          1. 30.1.1.1.1

            Ned,

            The only “interesting conundrum” is your purposeful “gee, I don’t understand.”

            How many times have I walked you through – step by step – arguments only to have you run away or try to derail the conversation?

            Beyond count.

            Let me remind you of an easy one: the exceptions to the judicial doctrine of printed matter and my exposition of Simple Set theory.

            Let me remind you of another easy one: The Grand Hall experiment and its direct reflection in the Nazomi case.

            Let me remind you of another easy one: your own production of the Judge O’Malley link and the danger of wanting the judiciary to do the work of the legislature.

            Let me remind you of another easy one: your own production of the danger of using dicta as setting law and your past attempts to use Supreme Court dicta as law.

            Let me remind you of another easy one: your canard of “Point of Novelty” and what the selfsame “Point of Novelty” was in Diehr.

            Let me remind you of another easy one: what it means for a case to have a holding (and that cases often can have more than one holding) and what was an actual holding in Alappat.

            Conundrum, you say?

            Hmmmm.

  2. 29

    One last comment. The amount of bickering on this blog is mind numbing. I actually got a headache trying to filter through to the substantive comments. How on Earth do people post such shallow remarks at such a high rate?

    A last last comment. A metacomment. Good legal decisions don’t raise the kind of dissent and outcry that some of the 101 decisions have raised. Obviously, the converse is not true; lots of outcry does not prove a decision bad. Still, it’s something to think about…

    1. 29.1

      Yes, I do realize. Trolls are hungry for attention and eager to type something into machinery (that they belittle) and then go back and read it back to themselves admiring their own cleverness as they wait, “All-Caps” at the ready, to pounce on any little goats who try to cross their bridge. So don’t feed them. Trolls hate to be ignored.

      I understand about the nature of the argument taking place, and think it is an important one, but any worthwhile argument is an open-minded pursuit of truth. How much of that takes place here? Low SNR my friend, low SNR.

      1. 29.1.1

        It is less about “don’t feed them” and more about “repeat it often enough and it appears to be true.”

        That’s why attempts at dialogue can NEVER be replaced by drive-by monologues.

    2. 29.2

      H, Do you think the bickering could be related to the fact that Dennis allows free debate? Does any other patent law site?

      1. 29.2.1

        Professor Crouch hardly allows a “free debate.”

        Leastwise, how that term implies an actual dialogue without unremitted propaganda and running away from counter points put on the table for discussion.

      2. 29.2.2

        Blogs are either open or moderated. Moderation can take a lot of time, so I understand how things are. My own thought is that blogs that don’t get bogged down in mud have self-shaping features; the participants can conveniently ignore certain threads or posters, or can vote posts up and down, order by popularity or date or poster, etc. Offensive or insulting posts can be flagged and optionally considered by a moderator. Disqus is a good example, but there are others. Disqus has performance issues when posts get up to 1000+.

        Personally, I’d like to filter out MM’s posts because they are an infinite loop of personal opinion. I once felt he had some interesting points to make and freely admit to refining my views on software-related patent law from some of his posts, but how many times are too many? On this Patently-O entry, he is accountable for 1/6th of all of the posts … ~60. How much can one really have to say on three PTAB decisions?

        1. 29.2.2.1

          How much original material does he have to say that takes into account the counter points offered up to what he so often says?

          That would be a null set.

          As I have often said: it is NOT his position pe se that is offensive – it is how he goes about that position. He does NOT engage in any consideration of ANY point – factual, legal, or even philosophical. The (extremely) rare occasions that he has, he has blundered about the law badly, and made some doozy admissions against interests (like knowing and understanding the law concerning the exceptions to the judicial doctrine of printed matter).

          But press him to be (gasp) H0NEST in how he posts, and , well, we just can’t have that, can we?

        2. 29.2.2.2

          H, the posts in a thread are available through e-mail and a comments feeder. I would think, but I do not know, that if one only looks at comments through these methods that one could use his e-mail program to impose a filter on certain people.

          But it would be nice to simply use the browser to filter out comments from selected individuals.

  3. 28

    I guess new and efficient coding schemes for use in all kinds of equipment is not the kind of thing that Congress intended to encourage. If someone made an antenna that improved communication efficiency, there would be no question of patentability. Because someone improves communication by devising a clever coding scheme that can only be performed by configuring a digital processor, they are denied patentability? Where is the practical difference? There is an outrageous discrimination taking place based on technical subject matter. The coding invention is exactly the kind of thing that we need to be invented, and it’s exactly the kind of thing that should be rewarded. Can anyone argue with a straight face that making devices operate more efficiently and reliably is not desirable? How does the public benefit from removing the incentive to improve the heart and soul of modern machinery? Any argument in favor of this decision must ultimately reduce to an “all patents are bad” argument. This decision serves no purpose of the patent scheme. It prevents no over-reaching. It reduces the incentive for someone to technically improve millions of devices. So why?

    And I guess that playing card game is a fundamental building block of human ingenuity. Right.

    The whole charade can be summed up in the quote of one of the decisions: “in our view”. In other words, in our opinion. The Supreme Court opened the door to “I know it when I see it” type of analysis, and the PTO rushed right through it.

    Expressing a computing process in mathematical language is not the same as “math”. It’s an efficient and precise way to communicate to a software engineer about what a computer is doing. Heck, everything in computing is done with numbers. So, all computing is an abstract idea of math. Everyone go home.

    1. 28.1

      Another inexplicable edit – HoPB, my kudos to you must have included something REALLY offensive.

      Offensive at last, to the desired narrative here (oops, fight club and all)

      1. 28.1.1

        I must have missed the edit. I would never intentionally post something offensive here (I save that for sports pages :-). The posts on Patently-O are first rate, but it’s a shame that the comments are the way they are.

        1. 28.1.1.1

          I agree. Wouldn’t it be wonderful if the points made were actually incorporated into the ongoing dialogue?

  4. 27

    At 20.2.1 below, I refer to the subject matter Siemens discloses and enables, and suggest that it might amount to a snappier way for “coding Video” (whatever that means).

    MM replied:

    “That subject matter would be “math”, absent some novel structure. Is math eligible?

    I like that reply, because it vindicates the “per se” drafting of the eligibility section of the EPC. The Siemens claim I envisage would not be directed to math per se but to a process or a system in a field of technology, in which the clever math is embedded. You know, like an eligible and patentable process or system for rubber molding using the Arrhenius equation.

    MM, are you suggesting that Deere was wrongly decided and is now over-ruled?

    1. 27.1

      I like that reply

      Is it any wonder that you “like” (and echo) a fallacy?

      Software is not math.

      When the “board” permits the ongoing falsehoods to be so knowingly made and perpetrated, what “hope” is there for a genuine dialogue?

      As for the last comment, I believe that you mean “Diehr” as opposed to “Deere” and the answer has already been provided by Malcolm who has stated that Diehr WAS wrongly decided.

  5. 26

    link to bigstory.ap.org

    Nissan Motor Co. showed a concept vehicle loaded with laser scanners, a 360 degree camera setup, a radar and computer chips so the car can “think” to deliver autonomous driving. The Japanese automaker called it IDS, which stands for “intelligent driving system.”

    ANTHROPROMOFORNICATION! OMG!

    Best part about this: the number of cars in the future that will be owned by ordinary people and legally driven with this awesome software is exactly zero. LOL

    1. 26.1

      “Best part about this: the number of cars in the future that will be owned by ordinary people and legally driven with this awesome software is exactly zero.”

      Why do you say that? Tesla is selling cars that pretty much do that now.

      link to youtube.com

    2. 26.2

      Thank goodness you’re only posting two hours a week. Given the volume you’ve posted on this thread in the first 2+ days this week, is it safe to assume that your time is up?

    3. 26.3

      The comedy that Malcolm’s post remains, and my reply (censored) of the following is removed:

      Dare ANYONE to point out how my post is objectively more censorable than Malcolm’s.

      You still don’t seem to “get” what anthropomorphication is about…

      “Obtuse, is it deliberate?” – said in the best Andy Dufresne tones

  6. 25

    Down below in reply to 6’s mewling, I state the following (it is worth highlighting here on top for all examiners):

    Sounds like nothing but excuses from you 6 – and very much NOT in line with your very own contribution of the rule that governs your ETHICAL behavior that Lee so recently reminded you of.

    It is more than apparent that you are failing to live up tot he required standards.

    This type of “Chamberlain” acquiescence will only lead to an emboldening of the poor “management” behavior that makes you so inconveniently “uncomfortable.”

    The notion of “well, there’s a lot worse stuff going on” is – and should be – ALARMING: just what ELSE is there that you “insiders” know about (and are apparently also doing NOTHING about)…?

    Instead of the phantasy-make-up-laws-based-on-ends-desired C R P we see posted here, let’s focus on the very real malfeasance in your own house guys. Air those grievances. Get the ball rolling on making some real changes that have real affect not just for you, but sadly make you guys take out your frustrations on my clients.

    1. 25.1

      and combine with your POPA protection of:

      For the less-inclined to click and search, 6’s pincite is:

      Any laws, regulations and policies relevant to an employee’s performance, conduct or employment in the possession of the office shall be made available for inspection and study by the Association and individual members of the Unit, if such material is not otherwise reasonably available. Upon request, a copy of the relevant portion(s) of such material shall be provided to the Association or the requesting employee if the request is not unreasonable and the cost is not excessive.” (emphasis added).

      Since the directive – non-optional verb of “shall” is used, (with a relatively minor caveat), I cannot see how ANY verbal, non-written directive that could possibly affect the performance rating of an examiner could ever exist.

      Examiners take note: you get a “verbal” anything,
      PUSH BACK.

      1. 25.1.1

        While these are almost constructive comments (and cheers to you for that), your recommendations suggests that you’ve never held private or public employment.

        1. 25.1.1.1

          “Bob,”

          Your “comparative analysis” skills are severely lacking.

          As to your “suggestion,” it is notably also lacking – in that we are talking about duties in an occupation that transcend the “private employment” scenario – and are explicitly involved in the examiner’s “public employment.” Notably – you might want to catch up on what 6 provided.

          I do “get’ that what is required may in fact be difficult – nonetheless, the requirement remains clear, and the path of protection I point to should be enough.

          1. 25.1.1.1.1

            “I do “get’ that what is required may in fact be difficult ”

            Or impossible for normal people? I’m flattered to have you think I’m basically He-man Master of the Universe but I can assure you I’m just a normal dude.

            “and the path of protection I point to should be enough.”

            You don’t seem to have pointed to any path of protection (the CBA is not a path of protection it is just the means by which a request for information can be made and grievance can be filed). I myself brought up the PPP’s and the whistleblower protections and those are the “paths of protection”. Both of which were also noted by me to be ridiculously ineffective irl (this is fact and I don’t doubt it). I told you and everyone at the end of my first post on the subject to get those “paths of protection” overhauled so that what you want can even have a chance to take place.

            1. 25.1.1.1.1.1

              What possible objective reasoning is there for removing my reply?

              The editing has clearly become “personal” and in such, rather non-professional.

              Mayhap it is time for you to appoint a truly neutral party to write and enforce ONE consistent set or posting rules.

              While I am not your attorney and this is not legal advice, carrying on with such a personal editing style may affect your rights re: running this blog.

                1. Hey, 6, it does seem that you yourself have made some sort of transition. Remember the good old days when you like to call me (and others, of course) names, like, ret@ard or the like?

                  I’ll miss that swagger. 🙂

                2. Spare the drama?

                  You quite miss then the actual cause of the drama.

                  The lengths gone by the editor show a personal animus beyond any objective reasonableness.

                  If he cannot see that his one actions are made of issue from the one-way editing style and lack of a consistently enforced and objective rule-set (and the possible impact that this behavior has on the ability to “reach in” for discovery – let alone any sense of: link to en.wikipedia.org

                  Long time readers know full well what has been going on – and ongoing well before I started posting here (reference the nine years and running comments).

                3. “Hey, 6, it does seem that you yourself have made some sort of transition. Remember the good old days when you like to call me (and others, of course) names, like, ret@ard or the like?”

                  Well I would but D’s all cracking down.

        2. 25.1.1.2

          your recommendations suggests that you’ve never held private or public employment.

          I’m pretty sure he worked in a mail room once, opening letters addressed to attorneys that he wasn’t supposed to read.

  7. 24

    Copyright law is starting to catch-up with the increasingly nutty world of “owning” logic.

    link to arstechnica.com

    These kinds of tentative carve-outs achieve very little in terms of moving towards sanity. When things finally do turn around, they’re going to turn around fast. Just watch and see. And then we’ll all look back and wonder how on earth a decision as ridiculous as State Street Bank could ever have been written by adult human beings.

    1. 24.1

      catching up…
      achieve very little…

      turn around fast…

      Not sure what point you are trying to make, or how you are backing that point up.

      This just comes across as your (usual) conclusion and diatribe.

  8. 23

    If Shideler is affirmed, are all new card games unpatentable as MM suggests be the case? Here is Shideler Claim 1 with the language discounted by the Board (as best I can determine from the Board’s inexact language) bracketed:

    1. A story based card game have a series of sequential rounds, the card game comprising a plurality of sets of [location] cards, one set of location cards for each of a plurality of locations [associated with an aspect of the story], each set of [location] cards including one card for each round of the game, wherein each round includes at least one [correct location] card for that round, [wherein the correct location card for each round includes text indicating that the it is the correct card for that round and including a continuation of the story, whereby a series of correct locations cards for the rounds of the game combine to form a story summary].

    Dependent claims describe the game board and further details of the indicia on the cards. The expression “associated with an aspect of the story” was discounted as merely an expression of intended use. The “location” related expressions were discounted as printed matter, and the claims were rejected based on the In re Gulack “obviousness” test in light of a prior art published application resulting in the following patents.

    The method and apparatus claims of the reference applied in the In re Gulack rejection were allowed and issued in U.S. Patent Nos. 6,978,999 and 6,685,187, e.g. this apparatus claim of the `187 patent:

    1. A game apparatus comprising: a first set of cards, said first set of cards being a set of cards bearing indicia of a situation to be enacted; a second set of cards, said second set of cards being a set of cards bearing indicia of a style for said situation to be enacted; a third set of cards, said third set of cards being a set of cards bearing indicia of a feeling for said situation to be enacted; a game board defining at least one path of movement and requiring drawing one card from said first set of cards, and the at least one path of movement bearing indicia requiring drawing of at least one card from each set of cards; means to randomly select a number from a finite set of numbers {a spinner}; a plurality of player pieces for placement on and movement through the at least one path of movement; and wherein the players commence and maintain play by moving player pieces along the path of movement in response to random numbers obtained by the player operating the random selection means and wherein the players are directed to enact the situation read from said card from said first set of cards based on the style described on the card drawn from said second set of cards and based on the feeling described on the card drawn from said third set of cards.

    No 112 or 101 rejections posed in the prosecution of the applications resulting in these patents. And the Examiner’s reasons for allowance of the even broader method claim in the ‘687 patent indicate that he based patentability on the indicia on the first and second sets of cards, not the board or spinner structures or that the game employed more than one set of cards.

    Just the luck of the draw from the examining pool? Both Examiners are in AU 3711.

    1. 23.2

      Shideler’s claim 1 has big problems, Joe, that you seem to be trying to wave away with your attempted “paraphrase”. For example, you write:

      wherein the correct location card for each round includes text indicating that the it is the correct card

      There’s no limitation in claim 1 regarding any “text”. Also, you note “[d]ependent claims describe the game board and further details of the indicia on the cards”. That doesn’t help claim 1.

      Claim 1 is a description of a quintessential abstraction (i.e., a set of “rules”) layered on top of objects that are old in the art (i.e., cards). Nothing in claim 1 precludes, for instance, using a standard card dek and “identifying” the jack, the queen, and the king as “locations’ and a subset of those “locations” (e.g., the “location” hards of a particular suit) as the “correct” locations for that round of play.

      U.S. Patent Nos. 6,978,999 and 6,685,187 [were allowed by the USPTO]

      That matters for nothing, pretty much.

    2. 23.3

      “And the Examiner’s reasons for allowance of the even broader method claim in the ‘687 patent indicate that he based patentability on the indicia on the first and second sets of cards, not the board or spinner structures or that the game employed more than one set of cards.”

      Reexam this cr@p now to see what is actually allowable.

      This will be invalidated during litigation. Only distinguishing feature is printed matter as examiner stated. Allowance was error. The printed matter exception is still good law.

      1. 23.3.1

        Not luck. Incompetence. And it is unethical to issue a patent that you know to be ineligible under 101. That is called theft–taking something out of the public domain and claiming that it belongs to your client.

        Sorry. You made it sound like this was your case. If it isn’t, these comments are directed to the attorney of record.

        1. 23.3.1.1

          The attorney of record is in the file history. Too often patentlyo commentators (not accusing you) fail to review the file history.

  9. 22

    Had an examiner tell me this week the following:

    1. He has been instructed to levy an Alice rejection in every case no matter what. He will be given a deficiency if he does not.

    2. Because…the PTO has decided to try to fill as many 101 cases into the pipeline that eventually leads to the Supreme Court, in an effort to get the Court to provide more clarity.

    He did not sound either like a crackpot or a liar, so I believe him.

    1. 22.1

      Demanding a false rejection sounds like an abusive and arbitrary exercise of power.

      What was that section of binding Rules that 6 so recently posted…?

      Does that section speak of (gasp) consequences?

      I wonder if examiners an demand to see any such “direction” in writing, lest they have an action against anyone giving them such “deficiencies”… I also wonder if the examiner’s Union and the patent office ombudsman are aware of this…

      1. 22.1.1

        …and instead of making up law wholesale or cheering on the b@nal here, our resident “examiner voices” would be better tasked with taking care of such internal things….

      2. 22.1.2

        I wonder if examiners an demand to see any such “direction” in writing, lest they have an action against anyone giving them such “deficiencies”

        It’s almost as if the large governmental agency with a union read what you thought and traveled back in time to pre-implement something to prevent that very thing decades ago. It would probably make his story’s truthfulness unlikely, wouldn’t it?

          1. 22.1.2.1.1

            He was referring to the CBA which gives us the right to demand instructions in writing. Unbeknownst to most examiners (and probably most SPEs too).

              1. 22.1.2.1.1.1.1

                Thanks 6.

                I’ll have to give that CBA a read (the POPA website has a downloadable version).

                1. For the less-inclined to click and search, 6’s pincite is:

                  Any laws, regulations and policies relevant to an employee’s performance, conduct or employment in the possession of the office shall be made available for inspection and study by the Association and individual members of the Unit, if such material is not otherwise reasonably available. Upon request, a copy of the relevant portion(s) of such material shall be provided to the Association or the requesting employee if the request is not unreasonable and the cost is not excessive.” (emphasis added).

                  Since the directive – non-optional verb of “shall” is used, (with a relatively minor caveat), I cannot see how ANY verbal, non-written directive that could possibly affect the performance rating of an examiner could ever exist.

                  Examiners take note: you get a “verbal” anything, PUSH BACK.

              1. 22.1.2.1.1.2.1

                This from the same guy we SAWS no problem with SAWS…

                My, how the “good soldier – ethics vanish in front of Star Chamber tactics” comes out…

                1. Hahaha uh huh. Once again anon, it’s got nothing to do with whether you get a fair shake, it’s simply that someone who is interested in not giving you a fair shake doesn’t have to run a convoluted high-maintenance plan to do it, so you probably shouldn’t assume those exist.

                  If the SPE didn’t want to allow the claims, he would tell his junior that there’s better art out there and not to allow the claims. He doesn’t have to subject himself to union action and an angry junior to screw the applicant over.

                2. Once again, you quite miss the point of WHY SAWS was a problem.

                  If it was such a “pristine” program as you want to think it was, then why did the Office pull it so quickly? (but not quickly enough as it blundered into openly admitting that it was only one of who know how many Shadow Programs….)

                  I don’t HAVE TO “assume” existence: the Office stated they exist.

                  What next from you? Are you going to “belieb” in Malcolm’s denial that the Reject-Reject-Reject era even existed?

                  You do realize that it is only your own “credibility” that is diminished with your denials of reality, right?

                3. If it was such a “pristine” program as you want to think it was, then why did the Office pull it so quickly?

                  Assuming facts not in evidence. But to answer your question, probably because it was a little-used program and people’s imaginations were running away with them. It became more trouble than it was worth.

                  Are you going to “belieb” in Malcolm’s denial that the Reject-Reject-Reject era even existed?

                  I wasn’t around. All I can say is right now prosecution is heavily weighted in favor of allowance.

                  You do realize that it is only your own “credibility” that is diminished with your denials of reality, right?

                  I don’t care whether you in particular believe me, and to the extent that third parties don’t believe me that’s fine too. One of us works on the inside, the other plays guessing games with incomplete information.

                4. probably because it was a little-used program and people’s imaginations were running away with them. It became more trouble than it was worth.

                  Ding ding ding!

                  But for “anon” and his pals SAWS was like a meat grinder where innocent patentees were scooped up and turned into soylent tablets. The horror! Meanwhile, the PTO continues to spew forth reams of junk on a weekly basis. But let’s talk about SAWS some more because … patent quality. That’s what super serious guys like “anon” want everyone to believe they really, really care about: patent quality. Does anyone buy that?

                5. ^^^ a couple of guys who just don’t get that the ends do not – and cannot – justify the means.

                  Is anyone surprised?

      3. 22.1.3

        “Does that section speak of (gasp) consequences?”

        Not the exact section but the consequences are put down elsewhere they basically range from a slap on the wrist to dismissal.

        Still, the examiner’s SPE might be hand picking cases he thinks must have a 101 to send to this examiner (or to his whole AU). There’s not much blo w back for that.

        1. 22.1.3.1

          Please note that “hand-picking” is expressly not what was said.

          Hand-picking implies actual thinking and some judgement while what was said was the unthinking blanket approach.

          1. 22.1.3.1.1

            If he handpicked the Examiner’s docket so he had read the claimsets, he could have decided that each of those cases merited a 101 and told the examiner to make a 101 in every case.

            There’s dozens of examples like this. The fact is that telling someone to do something when you are ultimately responsible for their work neither suggests impropriety (as you may decide to act as a gatekeeper later) nor a situation that wouldn’t fix itself (a rogue SPE would be caught by QC).

                1. You may have a point there, Malcolm.

                  After all, we both know that Quality does not mean Reject-Reject-Reject.

                  Remember who said that? Remember why he said that?

                2. link to arstechnica.com

                  Wherein CEO meets tr0ll with junk patent:

                  “I asked [Chovanes], ‘What do you mean by ‘message broker?’ and she said, ‘We’ll make it mean whatever it needs to mean for us to win this case,'” he said.

                  LOLOLOLOLOL

                  This is what the patent system is dealing with because it opened its doors to the worst bottom feeders on the planet. And guess what their favorite blog is? LOLOLOL

                3. Nice non-sequitor.

                  Maybe Arsetechnica can follow up on Ron Katznelson’s still missing Executive response about the “Tr011” propaganda piece…

      4. 22.1.4

        “I wonder if examiners an demand to see any such “direction” in writing, lest they have an action against anyone giving them such “deficiencies”… I also wonder if the examiner’s Union and the patent office ombudsman are aware of this…”

        It’s hard a f to get such “instructions” in writing. Most of the under the table stuff stays under the table. Though imo most managers would probably follow through with their “threat” of filing a “deficiency” aka clear error. Even though such “threats” are technically grounds for immediate dismissal, they don’t even know that it is grounds for dismissal, but they do know to keep the “threat” out of writing, thus making the examiner swear to it having happened if they want to report it. Even in the face of the fact that all examiners have the right under the CBA (collective bargaining agreement) to receive instructions in writing.

        I should note, I don’t think most SPEs have even read the CBA, and most of them barely seem to have even glanced at the PAP guidelines and/or don’t even think the guidelines matter and/or they’re not a part of the PAP. Some seem vaguely familiar with such, but by no means all of them. It just doesn’t seem like they’re required reading. They’re certainly not required reading for examiners even though they’re probably technically just as important as the entire MPEP and they’re much shorter.

        1. 22.1.4.1

          It’s hard a f to get such “instructions” in writing.

          Why? What is to stop you from asking and not doing “as told” until you have the marching orders in writing?

          Most of the under the table stuff stays under the table.

          And you are “OK” with that? Are you playing the “good soldier” route? Why then do you think that I posted about your own “ethics” post…?

          1. 22.1.4.1.1

            “Why? What is to stop you from asking and not doing “as told” until you have the marching orders in writing?”

            This new thing called “stress”, “pressure” etc. resulting from production (also workflow) and bureaucratic say so. Every week that something gets pushed back you get slightly less “real” credit for it btw under the production calculation. Not to mention simply not wanting to get your boss all riled up. If an examiner gets them all riled up then more than just that one applicant may pay a more dear price in the future than the single applicant payed right now. It’s called “retaliation” and apparently in real life its basically assured to happen, even from really nice everyday folks, and it won’t always be just towards the examiner and its effects won’t be limited to just the one examiner.

            “And you are “OK” with that?”

            I try my best to bring it out over the table since ol barry Obama signed the thing about transparency. But there are some folks still dedicated to non-transparency (they may have just missed the memo or didn’t understand how it impacts them).

            And again, let’s be honest anon, there’s a whole sht ton of tomfoolery going on at the PTO. Sorting out which is the worst or which needs “cleaning up” the most at a given moment in time is a fools errand. There aren’t enough hours in the day. And it technically isn’t my job to have to teach the people that are supposed to be “teaching” me. There are a lot of people running around that think, in their view, that all of these things we discuss on here are “a matter of opinion” rather than “matters of fact/law”. Thus when someone challenges them on something they take it as a personal conflict.

            1. 22.1.4.1.1.1

              Sounds like nothing but excuses from you 6 – and very much NOT in line with your very own contribution of the rule that governs your ETHICAL behavior that Lee so recently reminded you of.

              It is more than apparent that you are failing to live up tot he required standards.

              This type of “Chamberlain” acquiescence will only lead to an emboldening of the poor “management” behavior that makes you so inconveniently “uncomfortable.”

              The notion of “well, there’s a lot worse stuff going on” is – and should be – ALARMING: just what ELSE is there that you “insiders” know about (and are apparently also doing NOTHING about)…?

              Instead of the phantasy-make-up-laws-based-on-ends-desired C R P we see posted here, let’s focus on the very real malfeasance in your own house guys. Air those grievances. Get the ball rolling on making some real changes that have real affect not just for you, but sadly make you guys take out your frustrations on my clients.

    2. 22.2

      They do realize that only a very select few companies would spend the time, vast sums of money, and energy to take a case to the Supreme Court, right? Thus, 99.9999999 percent of their rejections will be useless in terms of this goal.

    3. 22.3

      This is not a global policy. It is clearly coming from his SPE who is doing it for his/her own personal agenda to meet the demands of the Directors.

      “the PTO has decided to try to fill as many 101 cases into the pipeline that eventually leads to the Supreme Court, in an effort to get the Court to provide more clarity.”

      This may be the effect but not the intent.

      1. 22.3.1

        It is clearly coming from his SPE who is doing it for his/her own personal agenda to meet the demands of the Directors.

        A signatory demanding his juniors pre-write rejections that he will exercise editorial control is neither new nor a story.

        I suppose you would argue “well of course he’s not exercising editorial control.” To which I would say 1) there’s no evidence of that and 2) if it happened there are mechanisms in place to stop it.

          1. 22.3.1.1.1

            Random’s comments speak for themselves.

            Do you have a “point” you wish to make, “anon”? Not that anybody cares ….

            1. 22.3.1.1.1.1

              Your statement does not mean anything Malcolm.

              Maybe you want to read the entire line of thought and try again.

              Focus on “in every case, no matter what

              That’s a lot but different than where the goalposts are being attempted to be moved to.

              And oh yeah, this too is an apt place for the adage of “the ends do not justify the means.”

              Funny how often that phrase fits when some anti-patentee action is being discussed, and you jump at the chance to be against the patentee.

              1. 22.3.1.1.1.1.1

                Your boss telling you to write a rejection so that he can see that you understand the thought process and know how to write the rejection is not the same thing as the boss allowing every rejection written to actually be in the final version that is made part of the record.

                i.e. Just cause he tells someone who cannot legally speak for the office to make a rejection in every case does not mean that the office makes a rejection in every case.

                Assuming he WERE to let every rejection you wrote through, without any thought or analysis (again something the story has no evidence of), that would be his error (because he is signing your cases) and the quality control would put the error on him. In either case, ordering someone who doesn’t have discretion to do things is not news – the junior was always subject to the whims of the signatory, that’s what makes him a junior.

                The only way this is a story is if there is systemic abuse of discretion without reprisal, which would require quality control to completely fall down. That’s certainly not evidenced by an examiner saying he was told to write a 101 in every case.

                I’ll tell you what likely actually happened – his boss told him to write a rejection that he didn’t understand, and he couldn’t defend it in an interview without his boss there to tell him the reasoning, so he said that his boss tells him to make rejections and he doesn’t know why. I suspect the “in every case” is fibbing on someone’s part.

                Unless it’s software, then you probably should make a 101 in every case. That’s because every original claimset in fact deserves a 101 in software.

    4. 22.4

      Examiner: He has been instructed to levy an Alice rejection in every case no matter what.

      Depending on the type of applications this Examiner has on his docket, that’s an entirely reasonable instruction.

    5. 22.5

      1. He has been instructed to levy an Alice rejection in every case no matter what. He will be given a deficiency if he does not.

      No you didn’t or he was lying. What constitutes a “deficiency” is defined by rule on a yearly basis, signed by both parties, and is core-wide. What he might have been told is that his primary (the one signing his cases) wants him to make a 101 in every case. Depending on what area being practiced in, that may be an entirely proper move.

      2. Because…the PTO has decided to try to fill as many 101 cases into the pipeline that eventually leads to the Supreme Court, in an effort to get the Court to provide more clarity.

      The Examiner core is very keen not to further overload our PTAB, which would bear the brunt of this, so probably also not true.

      If the office wanted to engage a policy of 101 clarification they would hand pick cases under PTAB review and order them to sua sponte raise 101, so the Examiner couldn’t remove the rejection on remand even if he wanted to. Then if the applicant appeals again it would signal that this guy is ready to take it to district court.

      1. 22.5.1

        You do realize that this suggestion of yours “proves too much” in regards to the PTAB being captured by the head of the Article I agency, thus failing a key point of impartiality that certain other agency Article I type courts enjoy, right?

        Ned might be interested in this angle, as it strengthens his case ( it’s a lovely wrinkle in Admin Law).

          1. 22.5.1.1.1

            What OBJECTIVELY is wrong with noting that Malcolm’s understanding of Admin Law is seriously deficient, when that deficiency is so evident at his post of 22.5.1.1?

            One set of rules – evenly applied Prof.

        1. 22.5.1.2

          anon, I assume that what Random was saying is correct in that the PTAB takes orders from the Director or indirectly from General Counsel or the Solicitor as to the what and how to decide its cases. The PTAB is not an independent administrative court, but a functional part of the USPTO, thereby, ultimately, part of the Executive. We all have heard reports that the PTAB has been taking instructions regarding IPRs directly from the White House — an one person in particular.

          1. 22.5.1.2.1

            “We all have heard reports that the PTAB has been taking instructions regarding IPRs directly from the White House — an one person in particular.”

            Interesting that Mooney doesn’t respond to you Ned and demand that you name names. Tell us who is issuing these instructions. Tell us who at the PTAB is receiving, and following, these instructions.

            1. 22.5.1.2.1.1

              AAA JJ, I cannot say who as I have no direct knowledge myself and I have no idea whether it is true or not. I have heard others say it, though, and not just one person.

              Walk about Washington just a bit, talk to the movers and shakers, the lobbyists and their ilk. They seem to have a lot of inside information about how things really work in the PTO and in Congress.

              I was struck by a poster in another thread that higher ups in the PTO were seriously about a serious constitutional challenged to IPRs. That is why they the right to “move” to amend in – which motion is all but never granted. They seemed to recognize that IPRs were validity trials and that validity trials had a right to trial by jury in an Article III court. (That is what Lockwood held, and Judge Nies and two others said that Lockwood must have overturned Patlex.)

        1. 22.5.2.1

          I dunno, I’m not sure what the command structure is over there, but they’re part of the office they’re not an independent agency.

          1. 22.5.2.1.1

            ^^^ great “teaching opportunity” here for explicating the range of independence of Article I court functions among the various administrative agencies….

            Or maybe we don’t want that narrative here…..

      2. 22.5.3

        “The Examiner core [sic] is very keen not to further overload our PTAB, which would bear the brunt of this, so probably also not true.”

        I doubt the 8,000+ folks in the examining corps give a moment’s thought to the PTAB ex parte appeal backlog. It’s probably the TC Directors, on orders from one or more of the deputy dawg commissioners, telling SPE’s, QAS’s, and other knownothingdonothinguselessGS-15’s to use a little finer filter in the stream of awful rejections that are appealed to lower the numbers that actually get docketed to PTAB. I have two briefs waiting answers now, and it’s clear that the true rancidness of the Actions are causing reevaluation of the rejections. Probably will see re-opened prosecution with no real improvement in the rejections. Just different nonsense.

          1. 22.5.3.1.2

            Anytime you want to lead by example and “out” yourself first, go right ahead Malcolm.

            Oh wait, this is the same “information for others wants to be FREE” guy who – for no apparent reason – maximized the privacy settings during the DISQUS days….

            Oops.

          2. 22.5.3.1.3

            Wouldn’t you rather have Ned tell you who from the White House is instructing the PTAB on IPR’s? And who at the PTAB is following those instructions? Why aren’t you demanding that Ned name names? Are you two hours of posting up this week?

  10. 21

    There was this guy called Oliver Wendell Holmes. He said something in the 1880’s which I think it apposite for today’s anguish over how 35 USC 101 should be understood. He said:

    “The life of the law has not been logic; it has been experience… The law embodies the story of a nation’s development through many centuries, and it cannot be dealt with as if it contained only the axioms and corollaries of a book of mathematics.”

    It is indeed society’s recent experience that informs the judges, and in particular motivated SCOTUS in the very recent past, when it mulled over what subject matter is eligible for a patent, and what is simply not constitutional. There is more to this than mathematical axioms, boxes of protons or mental acts.

    1. 21.1

      Have you heard of this thing (here in the States) called separation of powers?

      Your little ditty of Oliver Wendell Holmes proves too much, for if in fact your view were to be on point, that only means that the Court has violated the separation of powers and made changes to the statutory law that (again, here in the States) they simply do not have proper authority to do.

      “The scoreboard is broken” is a point that you would do well to realize is part of the problem here.

    2. 21.2

      MD,

      I know Justice Holmes well, and I’m not a fan of his judicial philosophy, including for the quote you noted. One glaring example is where Holmes wrote the SCOTUS opinion in 1922 that baseball wasn’t subject to anti-trust because it was a “profession, not a business.” That sort of Holmesian “logic” doesn’t fly with me.

      1. 21.2.1

        EG your point eludes me. Perhaps I’m missing something but it certainly isn’t glaring at me. You’ll need to say more.

        Other than that, how did his “logic” or “philosophy” strike the other Justices at the time? When it came to the game of baseball, was he in a minority of one?

        How can I know whether, back in 1922, under the law as it was then, it was more proper to categorize “baseball” as a business rather than a profession? Before passing judgement on whether OWH possessed any reliable feel for “logic” I would need to read his judgement in full, to discover how great were the (separation of powers) constraints imposed on him by the legislator, and the reasoning he used, within those constraints, to get to the result he got.

        1. 21.2.1.1

          MD,

          You completely overreacted to my comment which was my jaded view of Justice Holmes’ legal philosophy, not necessarily a criticism of yours. “Logic” is required for consistency in legal jurisprudence, not simply “experience” as Justice Holmes suggests.

          But as anon has suggested, be careful when treading in areas of jurisprudence, and especially those in other jurisdictions, that you’re not as familiar with as those of us in the States. I certainly do so when it comes to commenting on IP law/practice in Europe and especially that of the EPO.

          1. 21.2.1.1.1

            Thanks for reminding me to be “careful” round here. But I still don’t understand what lesson I’m to learn, whether about experience or about logic, from your “glaring” baseball case.

            Is it baseball then, where my knowledge, logic or experience is most lacking?

            1. 21.2.1.1.1.1

              MD,

              Let me further clarify my comment: for one who is supposedly sitting on the Highest Court of our land, Holmes could express “experience” that defied even common sense. His ruling in the 1922 anti-trust case on baseball being a “profession not a business” has been extensively and widely criticized as nonsense as organized baseball, even in 1922, was most definitely a “business.” In fact, Holmes’ “logic” was so poor that U.S. courts and even SCOTUS refused to exempt any other sport (besides baseball) from anti-trust scrutiny.

              1. 21.2.1.1.1.1.1

                OK. That helps. Thanks. But I’m still curious. Tell me, did Holmes deliver the unanimous opinion of the court, or was he in a minority of one, or does that sort of thing not matter?

                How could he stray so far? Was it for him perhaps a higher public policy goal, to stop any encroach of anti-trust law into sports law?

                1. MD,

                  Federal Baseball Club v. National League (1922) was a unanimous decision. But as SCOTUS noted in the later case of Flood v. Kuhn n(per Wikipedia):

                  Although the Court ruled in baseball’s favor 5-3, it admitted the original grounds for the antitrust exemption were tenuous at best, that baseball was indeed interstate commerce for purposes of the act and the exemption was an “anomaly”[1] it had explicitly refused to extend to other professional sports or entertainment.

                  Hope that does it for you.

                2. MD,

                  Let me also state I’ve got more than passing familiarity with baseball’s exemption from anti-trust in 1922. While in law school, each of us in our moot court class had to argue, based on the case of Goldfarb v. Virginia State Bar whether a local bar’s real estate title examination fee schedule was or was not an illegal price-fixing arrangement under the U.S. Sherman Antitrust Act. One potential argument we had was that the practice of real estate law was a “profession not a business” by analogy to the 1922 baseball case. I can tell you it was one of the weakest arguments (of four of weak arguments) we could offer in what later turned out to be a 8-0 by SCOTUS (Justice Powell took no part in the case) holding such fee schedules to be an illegal price fixing arrangement under the U.S. Sherman Antitrust Act.

    3. 21.3

      Morse was decided in 1853. The fact that certain technologies and bad prosecution modus operandi have made the problem more COMMON in recent years doesn’t make anything new.

  11. 20

    Re: the video encoding case:

    Seems to me that the Board just didn’t like that there wasn’t any hardware in the claims. And rightly so–as written, the subject matter of those claims are “abstract” (in the normal sense of the word).

    That being said, Siemens should be able to re-open, add some hardware (and explicitly recite that the hardware transmits the data, for good measure), and be good to go. Seems to me like there could be “an advancement in a technical field” there, so as to constitute “something more” and pass the Alice test.

    (The Notice of Appeal in that case was filed in December 2012 – almost three years ago! Though I think people already knew in 2012 that they needed to get some hardware in the claims.)

    1. 20.1

      What a perspicaceous comment from a poster whose pseudonym I don’t remember. It this a newbie here?

      Anyway, the comment is another reminder how long it takes, to change attorney habits. It took about 30 years, in Europe, following the promulgation of the EPC.

      Here, the US attorney for Siemens AG drafted the Appeal at least 3 years ago, and only now are the consequences visited upon his or her Client. Of course Siemens knows what to do in Europe, to get past the eligibility and patentability hurdles in Europe but depends on advice from US patent attorneys what to do in the USA. It takes years and years to adjust to a new SCOTUS precedent.

      I haven’t gone to the time and trouble to research what family patents on this invention Siemens have in Europe, but that might give us all a clue what claims Siemens will run at the USPTO now.

      1. 20.1.1

        Max, where is the video coming from? I don’t know if transmission by itself is sufficient. The encoding machine must be effectively substituted for a circuit.

    2. 20.2

      That being said, Siemens should be able to re-open, add some hardware (and explicitly recite that the hardware transmits the data, for good measure), and be good to go.

      That would be conventional hardware used for its well-known purpose, right?

      Reciting that hardware won’t save the claim. That’s not to say that Siemens won’t manage to get some of this symbol manipulation junk out of the PTO, however, which is all Siemens cares about.

      1. 20.2.1

        Ha! Touche! I had in mind that Siemens could claim subject matter that “codes video” snappier than the convention procedures do. Then I could assert (at least in Europe) that the claim uses technical features to solve a technical Problem, and in a way that wasn’t technically obvious. In other words, good patentable stuff.

        1. 20.2.1.1

          ubject matter that “codes video”

          That subject matter would be “math”, absent some novel structure. Is math eligible?

          The last time I checked it wasn’t.

          at least in Europe

          Whether Europe follows or leads, the destination is already written on the wall. Would you rather lead or follow, MD? I suppose it depends on the degree of your investment in the status quo.

          1. 20.2.1.1.1

            You realize (of course) that software is not math, right?

            You cannot obtain a copyright on math – you do know that, right?

            Of course you do. But does that stop you from knowingly mis-portraying something basic in your advocacy efforts here?

            That answer is also known.

  12. 19

    Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”).

    That from Alice is the problem. What happened?

    (1) The SCOTUS made a finding of fact that anything that is abstract “might tend to impede innovation more than it would tend to promote it” and is thus unconstitutional.

    (2) The SCOTUS also created a test in Alice saying anything that fits the test is abstract.

    One should pause and realize that each time a claim is invalidated under Alice that the tribunal has found that the claim was granted unconstitutionally.

    The power exerted in Alice is surely outside the bounds of what the SCOTUS was granted by the Constitution. If for no other reason, the SCOTUS has made a clear finding of fact.

    But, I’ve noticed that most commentators seem to write about Alice as if it is a statutory interpretation of 35 U.S.C. 101. It is not. It is a finding of fact by the SCOTUS and a finding that granting claims that are “abstract” as defined by the method prescribed in Alice to be unconstitutional.

    This means, by the way, according to Constitutional law (no cite now sorry) that Congress cannot pass a law to change Alice. Alice stands forever or until the SCOTUS changes it (or the Constitution is amended or Congress removes the SCOTUS from patent jurisdiction.)

    1. 19.1

      By the way, technically, I think that holding in these cases is being misstated. I think the holding should be, “the claims are found to unconstitutional and thus not eligible under 101.” But, however it is stated, each holding should include the word “unconstitutional” as the basis for invaliding the claim.

      1. 19.1.1

        Isn’t it simpler, under your theory, to think that they:
        1. Interpreted 101 under the doctrine of constitutional avoidance using a logic similar to how you stated; thus
        2. Under the more narrow 101 (as interpreted through the Constitution) those patents not in accordance with a narrower 101 are not statutory?

        This would simply mean that instead of saying 101 is unconstitutional (and clearly unseverable from the statute) they prevented all post 1952 patents from being invalidated.

        1. 19.1.1.1

          I don’t think that the doctrine of constitutional avoidance works here.

          Much like MaxDrie’s post, such would prove too much and if followed would show that the Court is violating other Constitutional doctrines (such as separation of powers, or even no advisory opinions, given the conjectural nature of what only “may” happen)

          The scoreboard is broken “folks” – that’s the elephant in the room.

          1. 19.1.1.1.1

            Anon, I tend to agree with you that the way the Kennedy majority opinion in Bilski framed the issue there is that the claims were otherwise statutory but were held unpatentable because of a judicial exception. That is beyond the pale.

            That is why I think the Stevens opinion is the only opinion that is otherwise constitutional.

            You will note that the later case of Myriad said that the “exceptions” were being used to interpret 101 as opposed to being exceptions. I think they must have realized that they stepped in it.

            1. 19.1.1.1.1.1

              As we have discussed over the course of several years, the Supreme Court’s own “scrivining” on matters of 101 have evolved, tousled back and forth (look at the “who” in the trilogy cases), and have become more and more emboldened (with Alice even explicitly rather than merely implicitly re-writing the words of Congress (the insertion of “technological”).

              Clearly – and amazingly not a wisp of academic interest – the actions of Congress in 1952 to curb the excesses of an anti-patent Court are having a “blind eye” effect being pursued.

    2. 19.2

      Night, below also from the Supreme Court, but a slightly different explanation, and it has nothing to do with the way the Supreme Court is applying the term. Abstractions are simply claims to results. But, truly, many claims to information processing are not claims to results and are not abstract under the original definition.

      “The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted, 175*175 that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.

      In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.

      A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures, against the avowed policy of the patent laws.”

      Now, I agree that claims to results are unconstitutional because they monopolize too much. But claims to business methods and information processing that are not claims to results cannot be condemned on this basis.

    3. 19.3

      The SCOTUS made a finding of fact that anything that is abstract “might tend to impede innovation more than it would tend to promote it” and is thus unconstitutional.

      Pretty much every reasonable human being on earth made “that finding” which is why no sane patent system — including our own — has ever approved of the patenting of abstractions (including the patenting of useful facts and other kinds of information).

      1. 19.3.1

        MM, I continue to believe that Stevens was entirely right in Bilski and that Kennedy was wrong in his “reasoning.” The reason business methods and their ilk are ineligible is because they are non statutory, not because the subject matter is claimed at the level of an abstraction — at the idea level — a result.

        Kennedy’s opinion is atrocious in its reasoning.

        1. 19.3.1.2

          The reason business methods and their ilk are ineligible is because they are non statutory, not because the subject matter is claimed at the level of an abstraction — at the idea level — a result.

          Abstractions are non-statutory so this seems to be a distinction without a difference.

        2. 19.3.1.3

          The reason business methods and their ilk are ineligible is because they are non statutory, not because the subject matter is claimed at the level of an abstraction — at the idea level — a result.

          A claim to a novel result absent limitations how to get there is not an invention and cannot be patented. Whether you want to say that the court stated that in Morse and Congress incorporated it implicitly when it wrote 101 or whether you want to say that 101 is unconstitutional without it, the practical effect is the same.

            1. 19.3.1.3.1.1

              The means to the end is critical.

              If only applicants understood this we would have no problems about abstract ideas whatsoever 🙂

              1. 19.3.1.3.1.1.1

                Now take that nest step and realize the difference between things TOTALLY in the mind and things NOT totally in the mind.

                One you have that down, then we can explore the concept of ladders of abstraction – which you clearly do not grasp yet: you still appear to think that all ladders have one rung, and that anything not on the one rung are “reaching too high.”

                Plain fact: ladders of abstraction are used in more than 95% of any claims that have any meaningful value. It is indeed the rarity that an absolute picture claim has meaningful value.

                Also, you evidence the lack of appreciation of the philosophy of MathS – clearly, you have not yet visited the Techdirt/Slashdot domain, and looked up the writings of the individual known as PoIR. The breadth of equivalences is greater than you realize.

    4. 19.4

      One should pause and realize that each time a claim is invalidated under Alice that the tribunal has found that the claim was granted unconstitutionally.

      Pretty much, yep.

      The power exerted in Alice is surely outside the bounds of what the SCOTUS was granted by the Constitution. If for no other reason, the SCOTUS has made a clear finding of fact.

      The latter does not suggest the former. Of course they have found facts. Who would you expect to make the finding of fact? Congress? Does Congress have the authority to say what constitutes the scope of their jurisdictional grant, or is that the judiciary’s power? The Constitution says “Congress can do A, except in circumstance B” and you want to give Congress the power to determine when circumstance B occurs? Its the judiciary who decides when the legislative acts outside their power, and that often entails finding facts.

      This means, by the way, according to Constitutional law (no cite now sorry) that Congress cannot pass a law to change Alice.

      That’s correct, Congress lacks the ability to grant exclusive rights over ideas. That’s kind of clear from the first amendment if not the Constitution itself. It WILL take a Constitutional amendment to overrule Alice.

      most commentators seem to write about Alice as if it is a statutory interpretation of 35 U.S.C. 101. It is not.

      It is a statutory interpretation in that the rule was made and then 101 was designed to incorporate prior law. So the judicial exceptions are removed from 101 to save the validity of the statute. If Congress were to amend 101 to specifically allow for the patenting of abstract ideas (to overcome Alice), that statute would be unconstitutional.

      1. 19.4.1

        You do not comprehend the full extent of the Act of 1952 – as I have put on the table many times, you have to look at how that single paragraph was divided up – the reason (see Cornell law and the exposition of Judge Rich) of WHY 103 was created, the fact of the matter that this happened in opposition of an anti-patent Supreme Court, the removal of the ability of the Court to set the definition of “invention” by common law authority.

        Your views are wrong in their incompleteness.

        1. 19.4.1.1

          the removal of the ability of the Court to set the definition of “invention” by common law authority.

          The word “invention” appears in the Constitution. It is for the court to define what that word means. The fact that they give considerable leeway to Congress does not mean they don’t ultimately retain control. Congress cannot statutorily remove the authority of the Court to determine what constitutes an invention.

          Suppose Congress wanted to say that a non-novel work of fiction was an invention. I suppose you think Congress can define invention however it wants and summarily issue a patent on it. For that matter, I bet you think they can define “patent” however they want too. I suppose your view is that so long as Congress calls the subject of the grant “an invention” and the rights granted (whatever they choose them to be) as “a patent” that they can do whatever they want under the patent clause. As if the Court has no role in saying what powers the Constitution grants to Congress. That’s laughable in how bad it is. There are first year law students who can outthink you.

          Congress’ statutory scheme, as originally made, was incomplete, allowing for patents over non-inventions or overly-broad patents on inventions. The court carved out exceptions. Either the 52 Act incorporated those exceptions, in which case the court properly construes 101 as having them, or the act did not, in which case the court either carves them out again or declares the scheme unconstitutional.

          Congress is presumed to have notice of the actions of the court. The court issued judicial exception rejections since the 52 act, stating that Congress intended to include the exceptions in the 52 act. Congress chose not to correct the court in the AIA, and therefore has blessed the Court’s conclusion. And if Congress didn’t, the only result would be that the statutory scheme is unconstitutional, because it is for the court to decide if Congress was granted the power to issue a patent for something.

          1. 19.4.1.1.1

            Random, Article I, Section 8, No. 8,

            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.

            1. 19.4.1.1.1.1

              Ah sorry, “discoveries” appears in the constitution. The point is that, just like in every other situation, it is for the Supreme Court to be the final arbiter on what powers were granted to Congress. Congress cannot call some random person who did something “an inventor” and what he did “a discovery” without limitation.

              As I said last time Graham was discussed, Section II of that case is a statement of Constitutional requirement – Congress cannot constitutionally remove the novelty requirement. If Congress tried to call something old “a discovery” it would be struck down. Ditto attempting to avoid the purpose of the clause (to promote the progress of science and useful arts), ditto enablement, ditto some form of written description (i.e. there must be some proof THIS grantee is “the inventor” which may cause some AIA problems one day). Ditto some form of particularity requirement (“Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby.”).

              The court is all up in that business. Congress can’t take it away.

              1. 19.4.1.1.1.1.1

                You rally have no clue as to the constitution and the delegation of powers.

                The Court is NOT above the law – above the Constitution itself.

              2. 19.4.1.1.1.1.2

                Random, a lot of people do not understand why Congress could not constitutionally grant patents on the discovery of preexisting, but previously unknown, products of nature. (Gene is one of them.)

                Do you care to take a bite at that apple?

                1. Tell me Ned of this “constitutional” limitation, and I will show you where the Court is violating its “No Advisory Opinion” – “lack of present case or controversy, mere conjectural speculative future “may” or “might tend to” improper basis for its nose-of-wax mashing statutory law re-writing.

                  Point blank guys: the only Constitutional tie is in the allocation of power. It is NOT in any of the statutorial discretion afforded to what Congress does with that power. Read again Golan v. Holder: same clause. Note that the Court there had no problem with taking things out of the public domain!

                2. anon, IF congress does have the power…

                  But, as to Golan, it did seem to suggest that one could not withdraw something from the public domain not put there in there first place by the person reclaiming it.

                  So what about products of nature?

                3. First, Golan stands for more than just that.

                  Second, notwithstanding other arguments, there is a notion that multiple inventors may exist, and that the inchoate-right-made-full merely goes to the first person that “runs the race” set by Congress.

                  Both of these concepts – notably – have NO tie to the actual constitutional aspect of (statutory) patent law — primarily because the constitutional element is the allocation of authority to write the statutory law.

                4. Actually anon, there is a limit: what can be withdrawn from the public domain is a work of authorship and an invention: from Golan, citing Story:

                  “See also Blanchard v. Sprague, 3 F.Cas. 648, 650 (No. 1,518) (C.C.D.Mass.1839) (Story, J.) (“I never have entertained any doubt of the constitutional authority of congress” to “give a patent for an invention, which … was in public use and enjoyed by the community at the time of the passage of the act.”).

                  One cannot grant a copyright to an non author, nor a patent to a non inventor.

                  Do we agree on this?

                5. Do you care to take a bite at that apple?

                  The patent clause is relatively unique in that the court has given weight to the purpose of the clause – i.e. Congress may only do things which promote the progress. The court therefore has to pass on whether a particular class of patents promote the art. A patent on already-publicly-known information does not promote the art.

                  The question changes where the initial creation is publicly unknown, because now the question becomes what the word “Inventor” meant in the Constitution. That question is whether disclosure to others is an inherent requirement of what an Inventor is. If no, there can only be one true inventor of something, and all others cannot obtain a patent. If yes, there may be multiple “discoverers” and even multiple “disclosers” but only one “first disclosing inventor.”

                  I am aware of no definition of inventor that mentions “disclosure” as a definition rather than “creation.” I obviously have not searched the texts of the time, but I assume there is an answer there. Because no human is the creator of naturally-occurring products, no human can invent them.

                6. Well, Random, one can invent before the invention goes into public use. I think that is what Story was talking about in Blanchard.

                  Also consider that, with a grace period, applications are filed all the time for inventions that have gone into public use.

                  But with products of nature, discoveries of them are not inventions within any meaning of that term. Granting patents on things of nature is like granting patents on things in the public domain to one who is not an inventor. That was the very vice that inspired the Statute of Monopolies, and which inspired the limitations to “Inventors” and “Authors” in our constitution.

                  The purpose for the limitation must teach its construction.

                7. Also consider that, with a grace period, applications are filed all the time for inventions that have gone into public use.

                  But that has particular purposes – it is not clear when testing ends and commercial exploitation begins sometimes, and it takes time to prepare an application in any event. Obviously you couldn’t require disclosure the same day the invention is created.

                  If the grace period were extended beyond a reasonable time to actually ascertain and prepare an application, the grace period would become unconstitutional, because then its just an attempt to avoid the novelty requirement.

                8. Random, if the grace period were to be extended for example to allow a somewhat long period of bona fide experimental use, then I think the law might grant prior users prior user rights.

                  Still not unconstitutional.

                9. if the grace period were to be extended for example to allow a somewhat long period of bona fide experimental use,

                  I agree, but only because it isn’t clear that invention has occurred if experimental use is still going on.

      1. 17.1.1

        He thinks people are selectively deleting comments to encourage a particular viewpoint (by deleting his comments/the comments of his other accounts).

        But in reality, posts that add nothing of value are getting deleted (including a few of mine, heh). It’s just that the overwhelming majority of comments that add nothing of value are his (and his other accounts).

        1. 17.1.1.1

          Wow really? There is a very low bar for stuff getting deleted. I’ve rarely had any of mine deleted. Jeez.

          1. 17.1.1.1.1

            Neither of you are paying enough attention to the content aim of what is being shaped by the editorial choices.

            There is a certain “desired” narrative that is being shaped through the editorial controls and LACK of objective application of “whatever” rules are (or are not) in place.

            My stand always has been the same: I am more than willing to abide by any set of rules that I see uniformly enforced.

            I will NOT be bound by rules that are NOT uniformly enforced. Such subjectivity nullifies the “rules” in this advocacy forum (and make NO mistake: this forum is a batt1efront of advocacy).

            I do ascribe to the notion that the use of ad hominem CAN BE a powerful rhetorical tool. Those “cry1ng” for an absolute ban of ad hominem simply do not understand rhetoric.

            My use is NOT meaningless use though.

            There is a world of difference in how I wield that rhetorical t001 and how the short script of those merely pushing a philosophical agenda use that t001.

            I am all for meaningful dialogue. I am not for any sense of subjective monologue. Don’t cry that “I am picking on you” if all that you want is subjective drive-by monologue. Toughen up and be able to defend your views. IF all that you are doing is playing make-believe and “I wish law were like how I want it to be” then be prepared to have that “game” exp0sed for what it is.

            Why would you want anything less? Were you not exposed at all to the Socratic Method in law school? Did you not have to defend the insertion of tangential “philosophies?” Are you that afraid to engage in critical thinking?

            1. 17.1.1.1.1.1

              I am acutely aware of the process you describe. But the Socratic process is not something you force on people either. For all you know they may have applied it internally and come to a different conclusion.

                1. “My stand always has been the same: I am more than willing to abide by any set of rules that I see uniformly enforced.

                  I will NOT be bound by rules that are NOT uniformly enforced. Such subjectivity nullifies the “rules” in this advocacy forum (and make NO mistake: this forum is a batt1efront of advocacy).”

                  I do not believe rules need to be uniformly enforced in all cases. This is a difference in metaphysics. Belief vs. Belief. We will never reconcile it.

                2. You are doing that “leaving key parts of your argument on your mind” thing again.

                  As to what you have actually put on the board, maybe you should refresh yourself as to Due Process.

              1. 17.1.1.1.1.1.2

                This is funny. You accuse me of everything that you do.

                I haven’t seen one substantive point out of you since I have started reading your posts.

                You are amazing at projection. Better than you must be at lawyering.

              2. 17.1.1.1.1.1.4

                You need to open your eyes.

                Your Malcolm-like accusations fall flat, as you apparently think that “making things up” is the only measure of “substantive.”

                Just look at all of the points I make that you don’t answer. For a start.

              3. 17.1.1.1.1.1.5

                I take being compared to
                Malcolm as a compliment. He is the most intelligent poster on here.

              4. 17.1.1.1.1.1.6

                Topce: You are amazing at projection.

                That’s been observed before.

                But your observation, Topce, is obviously just an illusion created by your inherent “bias” against patents and YOUR jealousy over the ability of others to make devastating arguments. If only you were as pure and unbiased and as OPEN to true dialogue like “anon”, you would understand this.

                Alas …

              5. 17.1.1.1.1.1.7

                The problem is that you don’t agree with the ends so you argue the means. That is sophistry not the Socratic method. I think you got your Greek philosophers
                mixed up.

              6. 17.1.1.1.1.1.8

                I have nothing mixed up – and you do not know whether or not I agree with the ends, because the point of the conversation is NOT whether or not the ends are “good.”

                Your logic is abysmal.

                Your “choice” of taking being compared to Malcolm as a compliment is worse than any “personal attack” that I could launch against you.

            2. 17.1.1.1.1.2

              “I do ascribe to the notion that the use of ad hominem CAN BE a powerful rhetorical tool”.

              bbwwhahahahwhwhahahhahaha

  13. 16

    As I write, 146 comments, and only #4 (dialogue MM/Stein) hold my attention.

    No wonder so many in the profession decline to go into the Bandit Country of the Comments threads, however avidly they follow the blog as such.

    MM attracts a chorus of assertions that some mysterious force is paying for his time here. He should take it as a compliment, that his postings are seen as cogent and penetrating enough to attract payment. Nobody could come to the idea that anybody would dream of paying the “box of protons” man for all his hours of work he puts in here.

    As MM has pointed out, however sharp and clear the eligibility test is, there will always be cases at the margin. As I see it, pushing the envelope is what lawyers (like those who are representing Siemens AG) are paid to do.

    As information processing becomes ever more central to progress, eligibility in the USA of the EPC-ineligible categories (mental steps, programs for computers, the presentation of information, ways of playing games and doing business) is inevitably a Hot Spot. How can it ever not be?

    The solution the EPO found was to tackle the hard questions under the obviousness test. But that is not an option for the USA, it seems. What is an option, workable, I have no idea. I await, with dispassionate interest, a decline in the current turbulence, when a workable rationale emerges. But I don’t yet see it coming over the horizon.

    1. 16.1

      I think it will just take time.

      The problem with 103 is we are obsessed with written references here in the U.S. This became a problem because one could not merely say that something was well known in the art and build up a logical case for it with the computer junk that was out there. Everyone knew it was obvious but nobody could prove it

      At the PTO if there is no reference it is allowable. Hence 101 as a “gap filler”

      There are more written references out there now so expect more 103 instead of 101.

      This does not solve the larger problem. Examiners in the U.S. need more freedom to both reject and allow cases without needing to overly rely on written references.

      1. 16.1.1

        What Topce “wants” is a “Gist/Abstract” sword for 103.

        If only the plain “word” of an examiner would be that “magic wand,” the doors to the patent office could finally be closed.

        1. 16.1.1.1

          No I want examiners to be treated as the technical experts they are and get deference like every other agency employee.

          1. 16.1.1.1.1

            Examiners still need substantial evidence to justify rejections. By using a preponderance standard the PTO is acting illegally. Yes illegally by ignoring the Zurko decision.

            1. 16.1.1.1.1.1

              Illegally was a bit extreme. But the Court says that the PTOs factual findings get substantial evidence and the PTO has not adopted that standard. It brushed off the decision in the relevant sections of the MPEP.

              1. 16.1.1.1.1.1.1

                I corrected you on this yesterday. Patent examiners do not get “deference.” They either provide objective evidence (e.g. written, published references) to support their conclusions by a preponderance or they get reversed. Plain and simple.

          2. 16.1.1.1.2

            That’s just not how the government agencies work.

            The IRS is full of tax experts. They don’t arbitrarily look at your circumstances and declare how much that they think is fair. Why? Because the results would be completely inconsistent, unfair, difficult to assess, and ripe for abuse.

            The DMV does not hop into your car, watch you drive, and arbitrarily declare whether or not you’re due a license – for the same reason.

            There is no agency in the federal government where “experts” have “discretion” to determine your rights. That’s not the world we live in.

      2. 16.1.2

        >The problem with 103 is we are obsessed with written references here in the U.S. This became a problem because one could not merely say that something was well known in the art and build up a logical case for it with the computer junk that was out there. Everyone knew it was obvious but nobody could prove it

        I agree. It’s infuriating in any art with things that are inherent/everybody knows but nobody talks about.

        1. 16.1.2.1

          Maybe you have not paid attention to my own comments on inherency….

          I would LOVE for the likes of Malcolm and Ned to defend their views with that patent doctrine.

          Absolutely LOVE it.

          Ask yourself though: why is it that neither EVER do so?

          1. 16.1.2.1.1

            >Maybe you have not paid attention to my own comments on inherency….

            Nope, haven’t ever seen you post anything on inherency. What are your views on inherency?

            With respect to what I said above, I strongly dislike that a few big name companies love to add inherent limitations into the independent claim in order to try to arrive at something patentable. If the independent claim wasn’t allowable, adding inherent limitations isn’t going to change that. But this happens over and over again.

            Sometimes I find it is easier to write a convoluted TSM than to write an inherency rejection (because in my art inherency is usually method-based, and if you have a sparse spec in your ref, going for inherency just seems like a PITA).

            I’m not really sure why you decided to derail the conversation by posting about Ned and MM, though.

            1. 16.1.2.1.1.1

              patentcat: I’m not really sure why you decided to derail the conversation by posting about Ned and MM, though.

              It’s because he can’t help himself, patentcat. He’s more than a little bit kookoobananas, in case you haven’t noticed.

            2. 16.1.2.1.1.2

              I derailed NOTHING by pointing out that the two main writers here that you seem to align with won’t touch the proper doctrine in their rants.

              Quite the opposite though is Malcolm’s meaningless ad hominem throw in – with a meaningless insult of “meds/crazy” (from his short script) and all the while knowing full well that the substantive part of the comment (his NOT ever using the patent doctrine of inherency) is dead on accurate.

              It’s uncanny how he cannot help himself from proving my point for me.

              1. 16.1.2.1.1.2.1

                I really don’t see anything you’ve mentioned about inherent in this comment section.

                What is your comment about inerrancy?

                1. You do realize that the main conversations (or to be more precise, attempts to hold conversations) spans many threads and has occurred across several years now, right?

                  It would be beyond ridiculous to think that a full exposition of the salient points would need to be RE-established for every thread.

                  You really do need to pay attention.

                2. So because I’m relatively new here you won’t even attempt to answer my question. Got it.

                  Thanks!

                3. For what it’s worth, patentcat, I’ve been here the entire time that “anon” has been posting and 90% of the time (including this time) I have no idea what he’s talking about.

                  But that’s just one of his methods of sheilding his super serious and awesome beliefs from criticism: he simply alludes to his alleged “previous explanations” as if everyone surely remembers those explanations. But nobody does. And that’s not “anon”‘s fault, of course. That’s your fault.

                4. Let’s try this portion:

                  I have no need of “shielding” anything Malcolm.

                  On the other hand, I do notice that you kick up dust with the “med/crazy” line while not addressing the truth of my statement that you do not use the proper patent doctrine of inherency when you glibly talk about [old box].

                  How is it again that [old box] can have a new capability with the addition of the manufacture and machine component of software? In relation to inherency, your position resolves down to the notion that ALL software must be inherently “already in there.”

        2. 16.1.2.2

          “I agree. It’s infuriating in any art with things that are inherent/everybody knows but nobody talks about.”

          Ah yes, it’s the old examiner lament of “It’s so notoriously old and well known that nobody ever bothered to write it down!!!!!!!!!”

          Too funny.

  14. 15

    Regarding Ex Parte Shideler, did anyone notice how the apparatus claims to the card game (including a set of cards, a board, and tokens) were rejected as obvious from a prior art card game having the same structures. In making that rejection, the board discounted the language “associated with a predetermined story and having a series of locations associated with the predetermined story,” “location cards” and “correct location cards” as a statements of intended use merely providing information to the players and adding no structure to the cards (or board). Since this “printed matter” comprised the only distinction over a multitude of card games using boards, cards and tokens (only one reference was applied), the apparatus claims were found to be obvious. The board did not state the three pronged obviousness test and I wonder why these claims were simply not rejected as anticipated?

    Compare the Board’s 103 rejection language to its 112 rejection of the method claims. Again the “associated with” language is discounted on the grounds that it is “well known” in board games that the indicia on the cards determine how the game is played. I think that cases like this illustrate the unspoken but clear merger of 112 and 102/103 analysis implicit if not explicit in recent SCOTUS eligible subject matter opinions to the effect that “if the invention looks obvious to me, I’ll be damned to find it patent eligible under 112”.

    This obviousness rejection in Shideler reminds me of the jack-o’- lantern leaf bag decision of the CAFC
    (link to e-foia.uspto.gov) where the jack-o’- lantern image leaf bag claims were held not obvious from a wide variety of other jack-o’-lantern image toys and bags that might have provided the motivation to imprint a leaf bag with that image so that it looked like a jack-o’-lantern when filled with leaves. (Note the classic three prong obviousness analysis and the heavy reliance on strong commercial success by the CAFC panel in reversing the Board’s 103 rejection) The Board of Appeals did not use a “printed matter” exclusion from consideration of the claim language to the image on the bag in making its straightforward obviousness rejection. (I have always wondered why that was the case.) If it had done so in the manner of the Board in this Shideler decision, that is finding that the image provided no structure to the bag and therefore the claim was obvious from any leaf bag, would the CAFC have affirmed that exclusion and finding of obviousness or anticipation? Will the CAFC affirm this Board’s obviousness decision since it does not state a classic 103 analysis in the rejection of the game claims? Or will it reverse requiring the Board to consider the excluded language and/or present a full 103 analysis?

    1. 15.1

      Oops – substitute 101 for 112 in the above comments. I see that other commentators have noted the blurring of 101 analysis with 102/103 biases.

      1. 15.1.1

        There is a nexus between 103 and 101 when printed matter is concerned though, because if you allowed non-useful printed matter to be recognized, you would be granting patents on things that are not the subject of patent law (i.e. a book with a different story in it, which is the function of copyright).

        So when your only distinction is not a recognized distinction, you’re going to be making both 103 rejections (as there are only obvious, non-useful changes) and 101 rejections (as those changes, being non-useful, can’t be the “significantly more” limitations that get you past the abstract idea).

        1. 15.1.1.1

          Did you miss my very easy to understand explication of the exceptions to the judicial doctrine of printed matter…?

          Easy Set Theory.

          Posted on the Hricik side of the blog, numerous links to that explication on this side of the blog. Numerous invites to Ned and Malcolm to do their very best in “discrediting” the explication (and noteworthy that both refused to even attempt to do so).

    2. 15.2

      Joe, the way the printed matter doctrine is applied is exactly the way you described — the printed matter is given no weight. The why of it as stated by the PTAB is wrong. Printed matter is non statutory under 101. Viz, In re Russell that traces its holding back to Hotel Security.

      As to “bleeding,” one can decide a case on 101 only if the otherwise eligible subject matter is not new. One determine this from the claims if that subject matter is generically claimed and admittedly old.

      Alternatively, if novelty is in the ineligible subject matter, the ineligible subject matter must transform the eligible into an otherwise eligible application. This has nothing to do with prior art.

      The bottom line, there is no bleeding at all.

      1. 15.2.1

        Ned,

        My perfectly objectively “polite” comment to you was for some inexplicable reason removed.

        Please do not advocate with less than all material points of law.

        In this instance, you (knowingly) are omitting the exceptions to the judicial doctrine of printed matter.

        Please make note that I have explained these exceptions to you on the Hricik side of this blog with very easy to understand Set Theory, and that there is absolutely no reason for you to continue to advocate with omitting a full and fair treatment of what “printed matter” actually means under patent law.

        Shall I also remind you that this full treatment of patent law extends beyond just “software” as a manufacture and machine component? Shall I again remind you of the measuring cup case or the magic hat band case? Both of which do NOT stand for your “version” of “what the “printed matter” doctrine portend as to its meaning in patent law.

        Is this “polite” enough to withstand censorship, and yet be firm enough to set the meaningful floor for dialogue on this important topic?

    3. 15.3

      Joe: The board did not state the three pronged obviousness test and I wonder why these claims were simply not rejected as anticipated?

      They weren’t simply rejected as anticipated because the claim wasn’t simply anticipated. It appears to have been rejected as obviousness by application of the “printed matter doctrine”, which is (and always has been) a thinly disguised version of 101. See, e.g., this excellent article by Kevin Collins which goes into much more detail: link to papers.ssrn.com

      Also, with respect to In re Dembiczak, you’re not the first person to wonder why Dembiczak”s “Buy My Pumpkin Statue is Filled with Trash!” patent didn’t get tanked under 101 or “the printed matter doctrine” or, for that matter, as obvious garbage in both the legal and literal sense. Search the achives here and you’ll find many discussions of the case in the comments (many of them by yours truly). It certainly ranks among the very worst CAFC decisions written in the era of leaden reasoning. Can anyone imagine that opinion being published today? The money quote: “[T]he invention solves the long-standing problem of unsightly trash bags placed on the curbs of America, and, by fortuitous happenstance, allows users to express their whimsical or festive nature while properly storing garbage, leaves, or other household debris awaiting collection.”

      My trash bags have a picture of Dave Kappos’ face on them. Totally different (and preumably patentable) over Dembiczak’s bags because they solve the problem of lack of visual variety in trash receptacles and, “fortuitously”the bags also “allow” me to express my views about the patent system “in a whimsical nature” while storing leaves or debris.

    4. 15.4

      Joe: I think that cases like this illustrate the unspoken but clear merger of 101 and 102/103 analysis implicit if not explicit in recent SCOTUS eligible subject matter opinions to the effect that “if the invention looks obvious to me, I’ll be damned to find it patent eligible under 101.”

      Gosh, Joe, I hope you aren’t a patent attorney or agent because you’ll be doing your clients a grave disservice if you can’t understand the basics.

      For most claims, a proper eligibility analysis requires comparison of the claimed elements to the elements in the prior art. That’s the only logcal way to determine whether ineligible subject matter is being protected by the granting of the claim.

      This fundamental fact is why Mayo and Alice were 9-0 decisions and the arguments that folks like you are making (“This is just obviousness in disguise!” and “No claim dissection ever!”) are gaining zero traction. You need to understand and accept this because there is no “going back”. That’s because there never was any “back” to begin with. There were only some very poorly reasoned CAFC decisions that are now part of the dustbin of history.

      1. 15.4.1

        Your “mere aggregation” pet theory is showing again (the one that does not even need [new thought] as a claim element).

      2. 15.4.2

        Ned, you read your own bias into what I stated and that you quoted. The comments you made are not applicable to my comments.

        1. 15.4.2.1

          Joe, Really?

          Note the relationship of the printed matter to the cards is physically unchanged. What changes are the rules of the game.

          If this is correct, there is nothing new here, let alone obvious, if one does not give weight to the meaning of the printed matter.

          But this is the traditional printed matter doctrine. It is being followed today under Alice.

  15. 14

    While I am not in the controller/computer arts, here is where the issue lies in the typical 101’d claim:

    Claim at issue: 12. A method of playing a story based card game associated with a predetermined story and having a series of locations associated with the predetermined story and wherein the game includes a preset number of sequential rounds, the card game comprising: a plurality of sets of location cards, one set of location cards for each of the plurality of locations associated with an aspect of the predetermined story, each set of location cards including one card for each round of the game, wherein each round includes at least one correct location card for that round, wherein each correct location card for each round includes indicia indicating that it is the correct card for that round and including a continuation of the story, whereby a series of correct locations cards for the rounds of the game combine to form a story summary, the method comprising the steps of having the players selectively choose a location card for each round and having the players repeat the selection process until one player can identify all of the correct location cards in the series of correct location cards.

    The bold is what the method sets out to do, the italics are things that are things that every person performing this method (in the real world by hand) would do. While this one does not, often they also recite steps that every computer would do. I would say, its necessary to have something in addition to these things to have an operable computer claim that uniquely ties the claim itself to your particular solution for “playing a story based card game” or the like.

    1. 14.1

      Alex,

      Where in your quote is the “controller/computer” that makes you think this is an issue in “controller/computer” arts?

      1. 14.1.1

        Here, I think I am getting better at the HTML:

        In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:
        Here is what must be done by our method.

        prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;

        enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and

        enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee’s calendar.

        Italics: Necessary to perform the method function in the real world. In other words, this must be done to optimize a group of people’s calendars, just said in obtuse language.
        Bold: Computer monitor. This anchors it to the real world.

        Not shown: Something that differentiates this claimed method in such a way that I could write a competing calendaring software.

        Here is a hypothetical claim I, not a computer software engineer, could write to prevent any person from ever depicting the making of a PB&J in a kitchen:

        A method of displaying the creation of a Peanut Butter and Jelly sandwich comprising:

        rendering at least one loaf of bread, at least one knife, at least one jar of peanut butter, at least one jar of jelly;
        displaying on a computerized display said at least one loaf of bread, at least one knife, at least one jar of peanut butter, at least one jar of jelly;
        rending opening the at least one loaf of bread, opening the at least one jar of peanut butter …describe the entire process of making pb&j here in as many steps while conveying the fewest possible actual requirements…
        displaying on the computerized display: opening the at least one loaf of bread, opening the at least one jar of peanut butter …describe the entire process of making pb&j here in as many steps while conveying the fewest possible actual requirements…
        thereby displaying the creation of a Peanut Butter and Jelly sandwich.

        And once again, the problem is if my idea is slightly better than putting PB&J on a screen (i.e. playing cards, group calendars) such that its hard for the examiner to find all the steps without going to 3000 publications. I have a patent.

        1. 14.1.1.2

          Last try:

          In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:
          Here is what must be done by our method.

          prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;

          enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and

          enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee’s calendar.

          Italics: Necessary to perform the method function in the real world. In other words, this must be done to optimize a group of people’s calendars, just said in obtuse language.
          Bold: Computer monitor. This anchors it to the real world.

          Not shown: Something that differentiates this claimed method in such a way that I could write a competing calendaring software.

          1. 14.1.1.2.1

            Where does the notion of:

            Not shown: Something that differentiates this claimed method in such a way that I could write a competing calendaring software.

            Come from? What legal point are you trying to get at?

            I am not sure that I am following your legal view here…

          2. 14.1.1.2.2

            Not shown: Something that differentiates this claimed method in such a way that I could write a competing calendaring software.

            True, though it’s not limited to a software implementation issue. The claim is talking only about generalized, abstract functions. There is no way to “compete” with another manner against the claim because the claim isn’t claiming “acts” it’s claiming “results.” Because it’s not claiming “acts” that someone else could design around, it’s directed to an entire field.

            Now it’s true that if you limited yourself to a particular software limitations it would have the effect of reducing the “results” down to “acts” which could be competed against, but the problem is not purely a computer-specific problem, as taking out the display station would still leave an abstract idea method.

            1. 14.1.1.2.2.1

              The “Gist/Abstract” sword is so wonderful when you can eliminate claim elements that are inconveniently in the physical world…

    2. 14.2

      The problem with “game” claims in general is that what is being claimed is abstract “rules” relating to an otherwise unpatentable collection of doohickies (cards, “pieces”, “icons”) onto which other abstractions (“wizard” “taffy swamp” “get out of jail”) are overlaid.

      Why in the world would any society want their government to waste resources trying to evaluate the patentability of new “rules” for games in view of the zillions of games in the prior art and in view of the fact that (1) there is precisely zilcho “risk” in creating game rules that requires patent protection and (2) there is no “progress” in any useful art being promoted by granting patents on “new rules” for games? I’d love to see a compelling answer.

      1. 14.2.1

        Your point here Malcolm is an interesting one – but one that remains unclear given the plain fact that for decades extending at least back to the 1910’s (as I have shown in a previous discussion with Ned), the Patent Office has seen fit to find some substantial utility in games.

        We probably should take note that an EXTREMELY large segment of the US economy deals with games (with all of its attached accoutrements of jobs, functions, and meaningful utility).

        It might be a better argument that all of this is outside of the Useful Arts as opposed to the argument of “needing patent protection” though. As I have (many times) indicated to you, the argument of “need” is a shallow and eventually fallacious argument. Patent law does not exist for any sense of ONLY “but for.” The argument you want to use on a “needs” basis resolves to such a “ONLY ‘but for”” view. TO that extent, the argument is a non-starter and better off not even engaged.

        1. 14.2.1.1

          “anon”: the Patent Office has seen fit to find some substantial utility in games

          That’s nice.

          Note that I specifically referred to “new rules” layered on top of existing or obvious collections of game pieces. Whether there is substantial utility in some “game” is irrelevant to the 101 issue, just as it’s irrelevant that a correlation has “substantial utility.”

          the argument of “need” is a shallow and eventually fallacious argument.

          It’s neither and you might as get used to “need” being a part of the discussion because it’s never going to go away.

          an EXTREMELY large segment of the US economy deals with games

          That’s completely false but go ahead and pretend otherwise if it makes you happy. Or just show everyone what you mean by “extremely large segment” by presenting the numbers to everyone. Apparently you have little idea of the actual size of the US economy.

          1. 14.2.1.1.1

            Instead of clarity, your reply only makes your position more obscure.

            As to the “need” argument – your position is groundless for the reasons already given: “but for” has always been but one of several reasons – and no single reason rules. You are just trying too hard for a position that cannot be made. Not only that, it need not even be attempted to be made, which makes your efforts to elevate it rather peculiar.

            It does remind me though of your (perpetual) difficulties in patent law in which options come into play – like for example, the Vast Middle Ground and your attempted elevation of all terms in “objective physical structure.

            You do realize that being strident – but wrong – makes you out of be even more of an arse and lessens your arguments, right?

            As to my statement of EXTREMELY large segment, it is not at all “completely false,” even if I did use a bit of hyperbole. EXTREMELY large segment need not be a MAJORITY size segment. Maybe you don’t understand that…

  16. 13

    siemens: the encoding includes for a symbol being encoded, selecting from different predetermined distributions of symbol frequencies a particular predetermined distribution of symbol frequencies based on the symbol encoded immediately beforehand, the predetermined distribution of symbol frequencies indicating the likelihood of different types of symbols occurring immediately following the type of the symbol encoded immediately beforehand based on known statistical interdependencies between different types of symbols occurring in succession

    In other words: use logic to select information from a list of (oh my goodness how surprising!) statistically likely possibilities. Brilliant.

    Note that the claim covers the transmission of two symbols. And it fails to explain how the first encoded symbol is treated (there being no symbol “immediately beforehand”).

    I’ll go waaaaay out on a limb here and guess that every concept in this claim is in the prior art and is taught as being applicable to data. Whether it’s “video data” or any other kind of data doesn’t make a hill of beans of difference, course, since the math could care less.

    1. 13.1

      Sounds suspiciously like a project i did in college, on a mainframe, with a 9 bit byte (Honeywell CP6) about 25 years ago in college.

      I had to program in a statistics table into a linked list grid (a linked list of linked lists), first symbol determined which statistics ‘stack’ you went into, and then the second which symbol in that stack you looked up.

  17. 12

    Question: Is a result inherent to a process? Must every process have a result in order to be a process ? Does a process without end make sense as a process?

    Shouldn’t that result be construed as a matter of law prior to analysis as an abstract idea or not?

    1. 12.1

      Is there utility in only obtaining a result, or can there be utility without obtaining a result?

      How one defines “result” will of course impact both the question and the answer.

        1. 12.1.1.1

          Process have results. However, there is sometime an argument that if you cant see the result, then it isn’t real.

          For example, a process might sharpen a digital image. There is no reason for a claim to such a process to recite printing or displaying the image. Such a recitation can sometimes blur the issue of infringement from,by for example, shifting the infringement from for example the owners of an image sharing service toward the individual users.
          Furthermore, the displaying or printing is insignificant post solution activity. The invention was in method by which the image data was improved or processed and the claim should not be burdened with recitation of the insignificant activity.

          Nevertheless, there are court rulings that can be interpreted as declaring that if the image isn’t printed or displayed the method is not useful.

          This is absurd of course, but there it is.

          1. 12.1.1.1.1

            For example, a process might sharpen a digital image. There is no reason for a claim to such a process to recite printing or displaying the image.

            Well, there’s one great reason: your process claim is far more likely to be deemed eligible if you can point to an improved physical transformation necessarily resulting from practicing the process.

            “Might” doesn’t really cut the mustard. I “might” use my super important correlation to cure your cancer. So what? I don’t get a patent on the correlation or a “process” of thinking about it or a “process” of “automatically making the correlation” with a computer.

            1. 12.1.1.1.1.1

              It’s easy to tear down examples, but you can’t provide an example claim of your own that is patent eligible under your own idea of 101. Describing theoretical concepts is not providing an example claim. Until you provide such an example, your words are meaningless, and so are your personal attacks.

            2. 12.1.1.1.1.2

              Dial back the rant mode. Why are you attacking my use of the word “might”. It had nothing to do with the example.

              Pretend I said: For example, lets say there’s a process that sharpens a digital image….

              Now what will you attack?

              1. 12.1.1.1.1.2.1

                Les: Why are you attacking my use of the word “might”.

                You misunderstand. I’m not attacking your use of the term “might”. I’m attacking the supposed failure to claim a process that, in fact, produces a “sharpened image” relative to a similar image-producing process in the prior art, as opposed to claiming mere data manipulation through the application of math.

                lets say there’s a process that sharpens a digital image…. Now what will you attack?

                If it’s a process for sharpening an image, it had better include the outputting of that image and a recitation of the mechanical means by which that image is produced or you’re going to be looking at some eligibility issues.

                There’s great reasons for that, by the way, having to do with (1) the prior art, (2) basic logic and (3) the long-recognized unavailability of patent protection for math and logic in our patent system. Happy to go into detail for the zillionth time.

                1. Software is not math.
                  Software is not the thought of software.

                  Let’s show some understanding of basics here.

                  Software is a manufacture and a machine component.

                  Show me someone who believes that they have software that is not built by the hand of man as a machine component and I will show you someone who does not understand what software is.

                  Dialogue on this important topic MUST start with some basic understanding (and yes, some inte11ectual honesty).

                2. The image is there. In the memory of the device that did the sharpening. It is available to be printed, displayed or processed further. If you like, I’ll amend the preamble to recite sharpening image data.

            3. 12.1.1.1.1.3

              “Well, there’s one great reason: your process claim is far more likely to be deemed eligible if you can point to an improved physical transformation necessarily resulting from practicing the process.”

              That’s the point. The invention has nothing to do with printing. Printing is not important. The claim should not have to be burdened with recitation of insignificant post solution activity.

      1. 12.1.2

        Yes MM, it is. The fact that the identifiable result of a method is not construed as a matter of law prior to any analysis of eligibility or patentability renders reliability of those analyses much more difficult.

        That’s where the Bilski court failed to take the needed step; a process should have a result, one per patent, and the inventor should say what that result is as a starting point.

        A result is inherent in the word process- without an end, how can something be a method?

        1. 12.1.2.1

          Try encryption Mr. Snyder.

          The “result” is simply not germane to what the process is about.

          At least in one “definition” of “result.”

          1. 12.1.2.1.1

            wut? if you dont finish the encryption it cant be decrypted so whats the point? claiming a method of half decrypting something?

            The result of a method to encrypt data is a set of data that is encrypted. I assume your method includes some means of encryption that is new and non obvious?

            1. 12.1.2.1.1.1

              You are not paying attention, Mr. Snyder.

              What is the end “result” of a full cycle of encryption and decryption?

              That’s right – the starting point.

              1. 12.1.2.1.1.1.1

                Then nothing happened useful for patenting purposes? The result was a set of encrypted/decrypted data for use by someone.

                1. Mr. Snyder,

                  You are not paying attention to the point at hand.

                  That point is the defining” of “result” and your implication that “process” MUST necessarily END with a “new result.”

                  CLEARLY – (unless you want to not enjoy the very real benefits of encryption and ALL things so enable – think online banking, personal privacy and all manners of very real and useful results), encryption – yes, the FULL cycle of encrypting, sending and decrypting – is a process (as among several possible statutory categories) fully meant to be covered by patent law.

                  Do you have a meaningful, cogent, legal reply?

  18. 11

    anon’s post count seems similar to MM’s, but people don’t mock him for it or call him an AIPLA shill. Why is that?

    1. 11.1

      “Bob”

      For some inexplicable reason, my direct question to you on what you might consider “fair” did not survive the censor’s blot.

      Let’s see if I can post the PURE objective portions:

      I posted how my use of ad hominem differentiates from Malcolm’s posts. That objective statement was censored.

      I posted the truism that not ALL ad hominem is the same (nor should be treated the same).

      I posted that if the written – and equally enforced rules were to be “NO AD HOMINEM” and – critically – I were to see this, then I stand by what I have ALWAYS stood by: my willingness to engage in this forum’s dialogue of advocacy on constructively equal terms.

      I then asked if this type of equal rules is not the epitome of fairness.

      1. 11.1.1

        Masterfully irrelevant.

        In any case, the question was not directed to you, unless you use several other names.

        1. 11.1.1.1

          “Bob,”

          Whether or not “directed to me,” is what is irrelevant, as the comment was about me, and my post is entirely on point and accurate.

          You “not liking” this, or whatever else gets you in a twist, is also not relevant to your question asked – and answered.

          1. 11.1.1.1.1

            A rant about ad hominems is not “on point” regarding post QUANTITY. The more I read your posts the more I’m embarrassed for you.

            1. 11.1.1.1.1.1

              First – it is no “rant.”
              Second – a direct answer to your question is – in fact – on point.

              Whether or not you are “embarrassed for me” is also totally irrelevant. What constitutes “embarrassment” for you is easily seen as not in accord with real law (and yes, I do remember your echochamber-like “up-voting” of any and all nonsense posted by Malcolm in the DISQUS days).

              Such mindlessness is simply more of the same blight.

              1. 11.1.1.1.1.1.1

                That was a direct response you say? No wonder there’s an RCE backlog.

                And you must be thinking of another Bob.

                1. You asked a specific question (concerning me) and I gave you a direct answer to that question.

                  What part of the direct response is confusing you?

  19. 10

    Malcolm is on record here that he believes that ALL software claims are PER SE not eligible.

    His immediate claims as to somehow doing anything otherwise are what are “disingenuous.”

    1. 10.1

      MM is either unwilling or unable to provide a single example of a patent eligible claim in the computing / controller arts. He’s also unwilling to indicate whether, in his view, my example claim is patent eligible:

      A method, comprising:
      receiving an indication of engine temperature via a temperature sensor; and
      advancing spark timing at a spark plug responsive to an increase in engine temperature.

      1. 10.1.1

        For the readers of this blog, MM continues to dodge this question throughout the earlier comments by dragging the discussion of my example into section 102 / anticipation rather than answering the question on the basis of 101 in view of Alice.

        1. 10.1.1.1

          IIT dragging the discussion of my example into section 102 / anticipation rather than answering the question on the basis of 101 in view of Alice.

          There’s no “dragging” involved. In most cases, 101 analysis requires an understanding of what was in the prior art and what wasn’t. Did you somehow miss that important aspect of the Supreme Court’s recent 9-0 decisions? Gosh, I hope not.

          Recall: I didn’t come up with the hypothetical. You did. Maybe come up with a better one if you’re displeased with the results.

          I’ll also give you this general advice, IIT: it’s true that some people can be persuaded occasionally by arguments along the lines of “This sooper dooper important patent claim would fail under your test”. In order for such an argument to gain traction upon closer examination, however, you should make sure that the patent claim in question is one that (1) was otherwise worthy of a patent; (2) covers something that wouldn’t have been invented two seconds later without the patent.

          In case you haven’t noticed, you’ve got two fellow believers in software patenting here, one of whom regularly talks about patenting “boxes of protons” and the other who argues that the first airplane was ineligible under Mayo/Alice. It’s not as if your gambit hasn’t been observed before.

          I’ll also note, in case you are getting ready to be confused about this as well, that the existence of claims that are “close” or “on the margins” of some test for patentability or eligibility doesn’t mean that the test is “unworkable”. There’s always going to be such cases.

          You want to have a discussion about an “important” issue relating to the subject matter eligibility of a particular claim, then describe the claim and the relevant art and highlight the issue for everyone. Think you can handle that? I doubt it, frankly, but there’s always a chance I’ll be surprised.

          1. 10.1.1.1.1

            you believe that software-based inventions are per-se ineligible

            Software itself is “per se ineligble” (try claiming “New software, wherein software comprises….” and see what happens). If we start from there and use basic logic the arguments for the ineligibility of most “software based inventions” are pretty straightforward.* You want to go to the Supreme Court armed with your “spark plug timer” claim and we’ll argue it out? I’m up for it.

            *assuming you are referring to the situations where the only innovation in the claim is in the encoded information processing logic and/or the information being processed; as I’ve already explained, the mere recitation of a computer or software in a claim does not (and should not) lead to ineligibility per se. The law recognizes, of course, that the general concept of using a computer, including programmable computers, to improve a process is obvious and has been pretty much irrebuttably so for many, many decades. But no robot chef has ever taken into account the Zorastrian Leap Year for determining the thickness of peanut butter to spread on that sandwich so obviousness isnt always going to be the end of the story.

          2. 10.1.1.1.2

            I’m giving you an opportunity to provide an example

            In fact, you had asked for an example of eligible subject matter “in the computer-implemented / controller arts” and I described for you an infinite number of theoretical and existing examples. They exist.

            But you weren’t happy with that answer. Maybe take some time to learn how to ask better questions.

          3. 10.1.1.1.3

            should make sure that the patent claim in question is one that (1) was otherwise worthy of a patent; (2) covers something that wouldn’t have been invented two seconds later without the patent.

            More opinion/feeling/philosophy untethered to any actual law.

            And untethered to any actual understanding of innovation.

            Go figure.

          4. 10.1.1.1.4

            It is the same logic

            No, it’s not. If it were the same logic, then claims to novel combinations of structures/matter that lead to unexpected results would be ineligible for patenting.

            But nothing about “my logic” leads to that result and I’ve expressly addressed and explained why such claims are (and should be) immunized against eligibility attacks many hundreds of times. To you. Directly.

            Of course, if you want to create an imaginary strawman version of my logic and beat on that, well, then anything is possible. Might as well blame my logic for the attack on Bengha zi while you’re at it. You’ll probably find someone who agrees with that. Another traveller on the same, er, “journey.”

            1. 10.1.1.1.4.1

              It is the same logic. In the example you give, you just have not taken it to the same degree that you “apply” to the form of innovation most accessible to the common man.

              That’s part of the slam against you.

              It’s not that subtle – you should be able to pick it up.

  20. 9

    I think it is clear that 101 is becoming their new replacement for 103 rejections. How is that card game (Ex parte Shideler) not obvious? Although there may not be a combination of references that discloses the order recited in the claims, would that not simply be considered a design choice with no real significance? One looks at so many of these claims and, except for the isolated gene cases, they could have all been taken care of with obviousness rejections with a little effort. I realize suggesting effort by the USPTO is a dream that will never come true, but we would be in a lot better place understanding the boundaries of what is patentable and what is not. In the meantime, the law is hurting diagnostic companies ability to raise money-and we know congress is too stupid to fix anything. Done with my rant of the day.

  21. 8

    I’ve asked him to provide a single example of a claim in the computing / controller arts that he believes passes muster under 101 in view of Alice. So far he refuses to do so.

    Right. Instead I’ve described in clear terms an infiniite number of actual and theoretical claims that would pass Alice.

    And there’s nothing remotely disengenuous about failing to recognize that I did so. Nope. Not in IIT’s world, anyway. What a surprise.

    1. 8.1

      The longer MM resists providing a single example of a claim that satisfies 101 in his view, the more evident it becomes that his standard is unworkable and subjective. Provide an example MM.

  22. 7

    Ex parte Shideler, Application 11/779,876 (PTAB 2015)

    Claim at issue: 12.

    It’s about time the system starts recognizing the abstract nature of “games” involving printed cards and other old matter that “overlaid” with “new information” and abstract reasoning about the “meaning” of that information. Examining this baloney is a complete waste of government resources and promotes precisely nothing that is “useful” in the patent sense of the term.

      1. 7.1.1

        Please provide an example claim that is not junk or boloney.

        Can anyone predict what will happen when I present such an “example” to IIT?

        I sure can. Seems to me that IIT can help everyone along by just picking a few random claims from the PTO database and performing his awesome “Alice analysis” on those claims, thereby “proving” how “subjective” the “Alice test” is … in his own mind, anyway.

    1. 7.2

      Patent law has some inexplicable exceptions in 101.

      As far as gaming, the one that sticks out in my mind is U.S. Patent No. 6,410,835 – covering the old Dance Dance Revolution games. The apparatus claims may make sense – it’s a device, after all – but claims 28 and up cover “a method for directing a person to dance” and a “dance game method.” Very weird.

      On the other side, I recall reading somewhere that there is, or at least at one point was, a patent-eligibility exception for substances comprising food products. Very strange, since food is by definition a “composition of matter” and nutritious edibility is by definition a “useful” property.

      And then there’s 35 USC 287(c)(1): “A medical practitioner’s performance of a medical activity that constitutes an infringement… shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.” In 1996, the medical community basically won a blanket get-out-of-infringement-free card, ostensibly for international harmonization purposes.

      1. 7.2.1

        And then there’s 35 USC 287(c)(1): “A medical practitioner’s performance of a medical activity that constitutes an infringement… shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity.” In 1996, the medical community basically won a blanket get-out-of-infringement-free card, ostensibly for international harmonization purposes.

        Not at all. Read (c)(2). What’s “free” is only a narrow class of medical and surgical procedures, basically only those proecedures that do not involve patented devices or compositions or biotech process patents. Try to parse (c)(2)(F) without a headache. I think there’s a triple negative there. Maybe a quadruple.

        1. 7.2.1.1

          You say “not at all” but that doe snot come across as what the rest of your paragraph indicates – which is just the opposite of “not at all“.

  23. 6

    PM: One also hopes the Fed. Cir. will find some cases to put some practical comprehensible limits on what is “abstract”

    There already is a practical comprehensible limit: a thing described in objective structural terms which distinguish that thing from structures in the prior art is not an “abstraction”.

    You may not like that limit, but it is both (1) comprehensible and (2) practical and in the history of our patent system (indeed, any patent system on earth) nothing that meets those criteria has ever been deemed “abstract” (happy to be wrong about this if anyone knows of counter-examples; of course, that just means the test will need to be modified).

    I’ll also go waaaaaay out on a limb and suggest that nothing that meets those criteria will ever be deemed “abstract”.

    1. 6.1

      MM – Can you provide an example of a claim that you believe passes Alice in the computing / electronic controller arts? This is an honest question.

      1. 6.1.1

        IIT Can you provide an example of a claim that you believe passes Alice in the computing / electronic controller arts?

        Such claims exist (both in theory and in fact) because the mere existence of a “computing” or “electronic controller” limitation isn’t going to render a claim comprising that limitation ineligible. If the claim additionally recites some novel non-obvious structure in objective structural terms, or if there is a novel transformation of matter that occurs (as opposed to mere data processing), then there’s a very strong chance that the claim is eligible or — more accurately — eligibility is likely to be the least of the applicant/patentee’s worries.

        In anticipation of your shrieking, I’ll just remind everyone that this leaves a vast amount of patent-eligible subject matter on the table. But yes many unqualified attorneys and wannabe “innovators” will find themselves scrambling for a new grift.

        [shrugs]

        1. 6.1.1.1

          But… Can you provide 1 example. Again, I’m not attacking you, but rather I’m interested if your example would pass Alice.

          1. 6.1.1.1.1

            IIT: I’m not attacking you, but rather I’m interested if your example would pass Alice.

            I just described for you examples that would pass Alice.

            If you think that everything is ineligible under Alice that is your problem, not mine. Educate yourself.

              1. 6.1.1.1.1.1.1

                I’m asking you to provide an example

                Golly, I guess you’re out of luck then. Too bad it doesn’t make your beliefs about Alice any less wrong.

                1. I think you are afraid to provide an example in the computing / controller arts, because it might demonstrate that the standard currently being applied is arbitrary and subjective. Either provide an example or concede the point.

                2. Either provide an example or concede the point.

                  LOLOLOL

                  Again: I plainly described for you many existing and theoretical examples of such claims. There is nothing at all “arbitrary” or “subjective” about my description of those claims.

                  And in case you’re confused, my “failure” to perform for you is not a “concession” of anything. It’s funny that you’d think so, however. That’s why I laughed.

                1. Les: What is the difference between structure and objective structure?

                  Great question (albeit one that I’ve certainly answered for you before since we’ve been discussing this issue for years now). The difference is that it’s trivial for an applicant to note that a claimed invention has some “structure”. That’s not the issue.

                  The issue is that an eligible claim to a new composition or article will describe in structural terms what distinguishes that thing from the prior art things. In other words, it must be the case that skilled artisans reading the claim can identify what that distinguishing structure is on the basis of (wait for it) its described structure (not the function of the structure) such that one could, e.g., draw it upon reading the claim or (conversely) see a picture of the claimed invention and recognize it as the claimed invention. That’s different than some guy testifying, e.g., “I can imagine that some structure exists that could be developed to achieve the function recited in the claim.”

                  The purpose of this requirement is to prevent the claiming of ineligible “functionalities” either as a pure “functionality” or a pure “result” or as a functionality/result appended to an old structure that is magically “configured” (via hand-waving or by some worthy person capable of writing down the structural solution in English) to achieve the recited/function result.

                2. You are aware (of course) that “some structure” is all that is actually required under the law as written by Congress, right?

                  Shall I (again) remind you of the phrase that Prof. Crouch coined?

                  (That would be Vast Middle Ground)

                  Shall I also remind you of how often I had to tell you to move the goalposts back when you wanted to insert strawmen of claims “TOTALLY in the mind”…?

                  Once again, your utter lack of inte11ectual honesty removes your ability to actually (and meaningfully) partake in a dialogue.

                3. But the issue isn’t hardware claims. The issue is method claims.

                  Method claims do not need to recite structure, objective or otherwise.

                  A method for making a blanket need not be limited to a particular type of thread or yarn, needle or loom, etc. It is enough to recite threading, weaving and sewing. Why do you continually insist that method claims recite “objective structure”?

                4. Why do you continually insist that method claims recite “objective structure”?

                  I’ve never insisted that all method claims need to recite “objective structure” so you must be thinking of someone else.

                  Generally speaking, method claims raise different issues. Everybody knows that and I’ve stated as much thousands of times.

                  Now, when the method in question is one that is to be carried out by some “new” machine we are, of course, right back where we were when we were discussing machine and apparatus claims. This may be too much nuance for you, however.

                5. In the present case, adaptations of a machine are recited functionally as there are a large number of ways the new combinations of functions of the machine might implemented and the details of the implementations are not particularly important to the novelty/non-obviousness of the claimed machine.

                  In this way a class of machines is claimed, much the way a class of drugs is claimed. In neither case is the claimed entity “abstract”, though it might be broad.

                6. the details of the implementations are not particularly important to the novelty/non-obviousness of the claimed machine

                  ROTFLMAO

                7. In the present case, adaptations of a machine are recited functionally as there are a large number of ways the new combinations of functions of the machine might implemented and the details of the implementations are not particularly important to the novelty/non-obviousness of the claimed machine.

                  No offense, but this is kind of textbook failure to understand 101 or 112b.

                  What you are saying can never be an invention.

                8. You are aware (of course) that “some structure” is all that is actually required under the law as written by Congress, right?

                  Shall I (again) remind you of the phrase that Prof. Crouch coined?

                  (That would be Vast Middle Ground)

                  I was under the impression that the claims had to be reasonably certain to be definite, and “some structure” doesn’t seem to always pass the “reasonable” test.

                  I also believe the VMG statement was made pre-Nautilus.

                9. Random – completely different issue and not at all anywhere near on point to the current discussion.

                  Maybe you want to take some time to catch up….

                10. “anon” completely different issue

                  In fact functional claiming can raise both eligibility and enablement issues.

                  vadaptations of a machine are recited functionally …In this way a class of machines is claimed, much the way a class of drugs is claimed

                  If you try to claim a class of drugs on the basis of some new functionality — as opposed to some shared novel objective structural feature — you are basically screaming for a malpractice lawsuit. This was settled quite a while back and the Supreme Court didn’t even have to get involved. And the biotech community rolled with it because it was the right result.

                11. I also believe the VMG statement was made pre-Nautilus.

                  Completely immaterial as to what that statement means.

                12. Completely immaterial as to what that statement means.

                  Hahaha well of course, but it’s of paramount importance as to whether that statement is still USEFUL. When the standard was one of being wholly immune to construction then SOME structure is obviously enough to meet that standard. Now the standard is reasonable definiteness, and saying that there is a vast middle ground between purely functional and purely structural still MEANS the same thing, but is relatively unimportant now as it is no longer an influence on the actual standard.

                  I’ll make this very simple for you: “some structure” appears nowhere in the statutes enacted by congress. The standard of “some structure” was a misinterpretation by the federal circuit that the supreme court has since put right. So when you say Prof. Crouch coined VMG, that’s nice and all, but it is no longer (if it ever was) reflective of the standard by which the courts operate, because it is no longer a correct statement of law to say “You are aware (of course) that ‘some structure’ is all that is actually required under the law.” What is actually required under the law is reasonable certainty, and reaching the VMG certainly does not guarantee you have reached reasonable certainty. There is still a Vast Middle Ground, but you can’t say that it is a Vast Middle Ground necessarily comprising allowable scopes.

                13. Random – completely different issue and not at all anywhere near on point to the current discussion.

                  This post and this thread are about 101. Les clearly doesn’t understand 101, or even 112.

                  adaptations of a machine are recited functionally as there are a large number of ways the new combinations of functions of the machine might implemented and the details of the implementations are not particularly important to the novelty/non-obviousness of the claimed machine.

                  That is an admission of a 101 violation. What he calls a “functional recitation” the Supreme Court calls “an original cause” or “a motive” which leads to an “abstract idea.” By saying the manner of implementation is not important he is specifically admitting there are not significantly more limitations beyond the abstract idea. It’s a basic misunderstanding of the law. If Les said that in court it would be malpractice.

                  adaptations of a machine are recited functionally as there are a large number of ways the new combinations of functions of the machine might implemented and the details of the implementations are not particularly important to the novelty/non-obviousness of the claimed machine.

                  That is an admission of a 112 violation unless the specification describes all the manner in which the combinations of functions might be implemented (spoiler alert, it does not, because he’s claiming an entire field). You can’t give one example of something and claim “every other way to achieve the result.”

                14. I must have touched a nerve.

                  Is it also a violation of 101 and 112 if a claim recites:

                  an attachment member

                  when it doesn’t matter if its a screw, nail, glue, adhesive, velcro, clip or clamp?

                  ladders of abstraction….ladders of abstraction

                  If I invent a flying machine, my claim can read on a Wright Flyer type contraption right on threw to an F15, F22, F35, SR71 and space shuttle if it happens to recite elements they all have in common.

                15. If I invent a flying machine, my claim can read on a Wright Flyer type contraption right on threw to an F15, F22, F35, SR71 and space shuttle if it happens to recite elements they all have in common.

                  Your claim can read on whatever you like. You can invent a flying machine and craft a scope that covers a baby stroller. It’s only going to be valid if they use the same structure in the same manner your machine does. If you invent the Wright Flyer and claim “a flying machine”, a person who invents the F22 during the pendancy of your patent doesn’t have to worry a lick, as their infringement proves the invalidity of the claim.

                  Is it also a violation of 101 and 112 if a claim recites:
                  an attachment member
                  when it doesn’t matter if its a screw, nail, glue, adhesive, velcro, clip or clamp?

                  When the novelty of your invention is the attachment member, the answer is yes. You can’t invent the first screw and expect to be able to craft a scope that covers your screw, other screws, nail, glue, adhesive, velcro, clip or clamp. Your invention was the particular screw. Your claim to “anything that attaches things” or “an attachment member” violates both 101 and 112.

                  ladders of abstraction….ladders of abstraction

                  I don’t think even anon is bad enough to toss this around anymore. Nautilus specifically said that you need reasonable certainty, which means you can’t go around making terms vague anymore. Further, when you make things vague you increase your scope (thats your point, after all) which means you increase your WD/enablement burden. Further still, you get too abstract and you’re only claiming an abstract idea and it doesn’t matter how much disclosure you have, your claim still fails.

                16. That’s right random. And “too” abstract is in the eye of the beholder isn’t it.

                  In my example, the novelty is in the COMBINATION of broadly recited elements. I disclosed the broadly described elements in the claimed combination.

                  Fuselage, thrust source, control surfaces. No one has made that combination before. For 20 years anyone who wants to make that combination, whether the thrust source is a bicycle pedal driven propeller, internal combustion engine, jet engine or ion drive needs my permission as those are obvious variations once the thrust producer itself is known. If they are obvious variations, then they are disclosed by my spec well enough that one of ordinary skill in the art could make and use them.

                17. Fuselage, thrust source, control surfaces. No one has made that combination before.

                  Ignoring the fact that if you admit that you have 3 old things, a system claim is per se obvious because Earth is ‘a system’ (and therefore you’d need a fourth limitation describing the interaction in some manner) – Halliburton is directly on point that you can’t do that. “in cases where the invention is a new combination of old devices, he [the patentee] is bound to describe with particularity all these old devices, and then the new mode of combining them, for which he desires a patent.” Halliburton is a case where the applicant took just ONE element and made it a vague, functionally-defined term. You want to do it with three. See you seem to think that you can just throw three old items into a system and get a patent. You can’t. You need limitations that describe the elements, the interactions and the structural combination with particularity. You can’t just say “My novelty is in the combination” and expect that to carry you through your 112 requirements. A statement of novelty (if true) carries you through 102. It harms you with respect to 112.

                  For 20 years anyone who wants to make that combination, whether the thrust source is a bicycle pedal driven propeller, internal combustion engine, jet engine or ion drive needs my permission as those are obvious variations once the thrust producer itself is known.

                  hahaha Nope. Not even close. Textbook 101 and 112. Seriously, this is basic stuff man. First, the fact that the claim covers all these structurally different devices means you have a 112b issue. Second, either you have to claim the manner of combining them with particularity (which would be necessary to get past obviousness anyway) which would necessarily knock out i.e. a bicycle pedal versus a jet engine, or you don’t and then you have a 112a problem. There exists no teaching that could be made which would say “the art couldn’t have combined these three vast fields of items before, and now they can combine everything from each of them.”

                  If they are obvious variations, then they are disclosed by my spec well enough that one of ordinary skill in the art could make and use them.

                  There is no logic in this statement at all. Even a lay person may understand that both a jet engine and an internal combustion engine generate motive power (i.e. they obviously can both be thrust sources), but that does not mean that one who works on automobiles can either make a jet engine, nor combine it with a fuselage and control interfaces in the same way that an ICE can. A PHOSITA in bicycles couldn’t even USE an ion drive, let alone make it, let alone make it in combination with other things. The fact that your “invention” can jump so many fields shows that really what you’re claiming is an idea, not an application of one.

                  I’m not even sure how you would set about trying to prove your assertion, other than nakedly saying that it must be enabled with no evidence. Lets say you prove enablement of a Model T, which would be an early ICE/gas tank/steering mechanism. That enablement isn’t going to apply to a F22, or the space shuttle. Teaching someone how to make the engine/steering of a car, even with particularity, doesn’t enable the engine/steering of a F22, and all I need to prove that is the amount of time that ran between the Model T and the F22. So lets take your assertion – you teach them the Model T, and then claim any combination of those three elements. Within 20 years I make a F22. Explain to me how you would prove that one of skill could have made a F22 based on your disclosure to the art.

                18. I do have to thank people like you Les. You give me hope that I will never have a want of free RCE credit. I could take those paragraphs and turn them around for about 20 hours work credit in about 15 minutes.

                19. 1. I didn’t say the components were old. They are new and described in a manner that encompasses the various variations involved from the Wright Flyer type through to the Ion drive.

                  For example, the thrust producer we describe the appropriate thrust to weight ratios and give as example, the man powered and internal combustion powered propeller and indicate that other sorts are contemplated. Embodiments can include other kinds of thrust producers, including those not yet know.

                  I’m not saying others need my permission to make ion drives. I’m saying they need my permission to combine an ion drive with the other elements of my claim as my invention and allowable claim is to any sort of thrust producer combined with the other elements and that is a valid claim, unless of course the examiner is able to show the combination was known or obvious.

                  And if it was known or obvious, this should be easy to show, since I have claimed it in (in your view) such an outrageously broad manner.

                20. 20 hours for an RCE? That kind of pegs you as a GS-9 in a high BD AU, eh?

                  I’m counting the 1/1.25 first action (to respond to his 101/112 arguments) of the RCE as well as the .5 RCE disposal count itself 🙂 It’s 7/8ths of a full round of credit.

                21. They are new and described in a manner that encompasses the various variations involved from the Wright Flyer type through to the Ion drive.

                  What about particular description do you not understand? In Wabash the guy claimed a function and limited his structures to shaped crystals and the court said it still wasn’t enough, and you think you’re allowed to claim any structure from bikes to ion drives?

                  For example, the thrust producer we describe the appropriate thrust to weight ratios and give as example, the man powered and internal combustion powered propeller and indicate that other sorts are contemplated. Embodiments can include other kinds of thrust producers, including those not yet know.

                  That’s a Written Description rejection admission. You are admitting your scope contemplates unknown things. And how can you even argue that one was enabled to do the thrust/weight ratio of a non-existent jet engine when someone else (at a later date) is going to get a patent for enabling a jet engine. I’m not saying you can’t cover a jet engine, but the mechanism for doing so is through the doctrine of equivalents (assuming it is an equivalent), not through your straight claim scope.

                  I’m not saying others need my permission to make ion drives. I’m saying they need my permission to combine an ion drive with the other elements of my claim as my invention and allowable claim is to any sort of thrust producer combined with the other elements and that is a valid claim, unless of course the examiner is able to show the combination was known or obvious.

                  No, you ARE saying that people can’t use an Ion drive, because you are taking away the mechanism that would allow an ion drive to be used. Similar example: You invent the first pencil and claim a system “comprising a writing utensil and a medium to write upon.” Your argument would be that you haven’t claimed a pen, and yet your “invention” would give you exclusive control over the pen because the pen could not be used without infringing. That’s because a claim to that system is really a claim to the abstract idea/function of “writing” just like your claim is a claim to the abstract idea of locomotion.

                  And if it was known or obvious, this should be easy to show, since I have claimed it in (in your view) such an outrageously broad manner.

                  This is the ultimate problem with your thinking. You think that because something is new it allows you to claim the scope as far as you want. Morse undeniably had a new machine, he was not allowed to claim it however he wanted. Someone invented the first car. He was not allowed to claim all cars, same with all trains and all planes, because the law wants to encourage improving disclosures on the base items. 103 is a requirement. So is 112a/b, so is 101. They are substantive limitations on the scope that can be claimed from a given advancement.

                  Les honestly believes that one could find one point within a giant scope and summarily claim the entire scope, so long as the boundary is definable. He completely ignores written description, scope of enablement, particularly pointing out, or abstract ideas as if the laws simply don’t exist. He ignores Ariad, Lizardtech, Morse, Perkin’s Glue, Wabash, Nautilus…It makes you wonder what kind of law he DOES know other than reflexively parroting some incorrect teaching he’s been given at some point. He’s the kind of applicant you could do no search on, make no 103, and still rack up hours and hours of credit time quoting the MPEP and law to tell him he’s wrong. Its an unfortunate symptom of the PTO employing non-lawyers who are perfectly happy to kill themselves over 103 research so long as they don’t have to get into an argument even though the claim is invalid on its face.

                22. “And how can you even argue that one was enabled to do the thrust/weight ratio of a non-existent jet engine when someone else (at a later date) is going to get a patent for enabling a jet engine. ”

                  I disclosed the parameters (e.g., thrust to weight ratio) that work. I acknowledged that there were many ways to achieve workable thrust to weight ratios.

                  I claimed a thrust producer in combination with the other elements.

                  That claim reads on the F35.

                  Sorry, I invented that.

                  We are not required to draft picture claims unless the prior art demands it. We are required to disclose the preferred embodiment, not every embodiment.

                  If the jet engine or ion engine fits the description of my claimed thrust producer it IS an equivalent thereof.

                  That reads on a Jet engine.

                23. Random :

                  1. A user equipment (UE) comprising:
                  a processor; and
                  a transceiver; wherein the processor is arranged to:
                  receive a request to send a small data payload to the UE from the transceiver;
                  instruct the transceiver to send a Radio Resource Control (RRC) Connection Request message to an evolved Node B (eNB) to establish a connection, wherein the RRC Connection Request message comprises a small data indicator arranged to indicate that the UE has a second small data payload to send to the eNB;
                  receive an RRC Connection Setup message from the eNB from the transceiver;
                  instruct the transceiver to send an RRC Connection Setup Complete message to the eNB; and
                  receive an RRC Connection Release message from the eNB the transceiver; wherein:
                  the RRC Connection Setup message comprises the small data payload;
                  the RRC Connection Setup Complete message comprises a Small Data Acknowledgment (ACK) message arranged to indicate the receipt of the small data payload, and wherein the RRC Connection Setup Complete message comprises the second small data payload;
                  wherein the RRC Connection Setup Complete message further includes a connection release indicator when the UE determines that the UE shall not transmit on the uplink for the connection.

                  That claim reads on embodiments including a silicon based processor, I’m sure you will agree.

                  Additionally, it reads on embodiments that use a gallium arsenide based processor and embodiments that use an unobtainium based processor.

                  Likewise, the transceiver is not limited to radio transceiver, it could be an optical transceiver, a subspace transceiver or an audio transceiver.

                  The only required limitations are those recited in the claim

                  link to google.com

                24. I disclosed the parameters (e.g., thrust to weight ratio) that work. I acknowledged that there were many ways to achieve workable thrust to weight ratios.

                  Yep, you disclosed a functional result (achieving a thrust to weight ratio) and opined that there are many ways of getting to that functional result without describing what the other ways are. That is precisely what was done in each of the following cases: Morse, Wabash, Perkin’s Glue, Ariad, Lizardtech, and Abbvie. All of those claims fell. I understand what you did, I want to know why you think it is sufficient to meet the requirements of the patent statutes. Is it because you think that your “acknowledgement” is sufficient to meet your 112a requirements? Is it because once you have one example you are allowed to claim any scope that does not wander into 103 territory? Why?

                  That claim reads on the F35. Sorry, I invented that.

                  Well I agree the claim reads on the F35. Whether you invented that is a question of whether your claim is valid. I can write a claim on a machine that spins straw into gold, that doesn’t mean I invented that.

                  We are not required to draft picture claims unless the prior art demands it. We are required to disclose the preferred embodiment, not every embodiment.

                  You are required to draft claims of a scope commensurate with what you enabled and possessed at the time of filing. 101 and 112a/b affect the scope of your valid claim, not just 103. You just seem to not want to admit that 101 or 112 do anything. For example, you didn’t respond to Wabash citation, even though that was significantly more particular than the scope you’re suggesting and was found to be insufficient. Here is a direct quote from Lizardtech:

                  suppose that an inventor created a particular fuel-efficient automobile engine and described the engine in such detail in the specification that a person of ordinary skill in the art would be able to build the engine. Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine.

                  Yet that is precisely what you’re arguing for here – disclose an embodiment, then claim anything else that achieves the function, you’re just substituting “achieve a thrust to weight ratio” for “achieve a level of fuel efficiency.” Explain why Lizardtech is wrong and you are right.

                  Here is a direct quote from Perkin’s Glue:

                  But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions,

                  Again, you described one method of performing a function (getting a thrust to weight ratio) and want to claim every other way of getting that function.

                  Here is a quote from Merrill v. Yeomans:

                  in cases where the invention is a new combination of old devices, he is bound to describe with particularity all these old devices, and then the new mode of combining them, for which he desires a patent.

                  Explain how you think giving a large general class of things is “describing with particularity.”

                  Here is Abbvie:

                  analogizing the genus to a plot of land, if the disclosed species only abide in a corner of the genus, one has not described the genus sufficiently to show that the inventor invented, or had possession of, the genus. He only described a portion of it…With the written description of a genus, however, merely drawing a fence around a perceived genus is not a description of the genus. One needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus. Otherwise, one has only a research plan, leaving it to others to explore the unknown contours of the claimed genus.

                  That’s precisely what you’re trafficking in here. You have one species in the corner of a genus and want to claim the full breadth of something you ADMIT you don’t have. When you say you acknowledge that there are other unknown ways of doing something you are leaving it to others to implement your research plan.

                25. Random –

                  I’m not claiming the glue or the jet engine. I’m claiming a device that includes glue or a device that includes a thrust producer wherein the Perkins glue might be used or wherein the Jet engine might be used.

                  I don’t have to list every known glue. I don’t have to list every known screw or fastener. I don’t have to list every known thrust producer.

                26. I don’t know what you’re expecting me to do with the claim you gave me. I don’t know when its from, I don’t know what the prior art is, I don’t know what the novelty of the claim is. It’s computer software, so if all those parts are old it is invalid under 103 because its obvious. So one of the parts is new. If it’s functionally described, the claim is invalid under 112b. If the new part is structurally claimed (the inclusion of the second payload for example) then the invention is going to be valid and someone else who includes a payload based on the novel teachings in the spec is going to be infringing.

                  That claim reads on embodiments including a silicon based processor, I’m sure you will agree. Additionally, it reads on embodiments that use a gallium arsenide based processor and embodiments that use an unobtainium based processor.

                  If the novelty in the claim (and I’m sure it isn’t) was the invention of the first processor, a description of it as “a processor” violates 101 and 112a/b. If you’re agreeing that processors pre-exist the invention, the type of processor included PRESUMABLY does not affect how the novelty of including a second payload is performed. Infringing.

                  That is NOT the case in the other claim though, because what a processor is made out of does not affect HOW the processor performs processing vis-a-vis the novelty. But the structural difference in thrust sources is directly related to the novel manner of combining the items. It is also directly related to achieving the thrust/weight ratio you keep talking about (not sure if that is a limitation or not).

                  So lets make the situation analogous so you can see how it works: You have the claim above and teach it using a silicon processor. Later, an unobtainium processor is invented. The nature of unobtainium processors is that they cannot process RRC connections in the same manner that silicon processors can. The teaching of the specification, while enabling for a standard silicon processor, is completely unenabling for an unobtainium processor. One eventually obtains a second payload with an unobtainium processor, but through an entirely different means than the example of the silicon processor in the spec. You file suit.

                  One of two things will happen:

                  1) The court will construe the phrase “a processor” in a manner that limits it to only processors known by one of skill in the art at the time (likely because the specification states that processors are structures conventionally known in the art) and its equivalents. In this case, the unobtainium is not infringing because it was not known at the time nor is it an equivalent.

                  2) The court will construe the phrase “a processor” to cover “anything that performs processing in a computer.” This WILL cover the unobtainium processor. The claim will be found to be unenabled because the teaching does not teach someone of skill how to get an unobtainium processor to attach a second payload. This is a scope of enablement and WD failure. You have taught some subset of the claim, but not the whole claim.

                  See your second example with the computers here contains an unstated fact – the assumption that an unobtainium processor will perform equivalently to the silicon one. If the unobtainium processor is equivalent, it doesn’t matter whether the claim says “a processor” or “a silicon processor” or whether the unobtainium processor was in existence at the time of filing, as both are covered by the claim under the doctrine of equivalents.

                  In your first example it was more clear that a bicycle and an ion drive are not equivalent and do not perform in the same way. The fact that things can achieve the same result is insufficient for you to cover both of them. Things must achieve the same result in substantially the same way such that your example can provide a teaching for both of them. It is only in that case – an equivalent structure that allows for the teaching to apply to both, that the claim is valid.

                  If your first example has a spec that discloses a structure powered by a bicycle, the base invention is a structure powered by a bicycle. The outer reaches of that scope (i.e. the furthest you can apply ladders of abstraction) is thrust sources that are substantially similar (i.e. equivalent) to a bicycle. An ion drive, while performing the same ultimate function, is not equivalent, and therefore the teaching relating to the bike does not apply to the ion drive, and to the extent the scope is argued or construed to cover an ion drive, the only thing you are doing is making the scope invalid. One enabling example does not enable a more abstract genus unless you can provide some sort of teaching that would make it apply to the entire genus. There is no structural teaching that applies, as you’re outright saying you’re not limiting it to any structure. So you must be talking about the command to achieve a certain result. Saying “achieve this result” does not enable any, let alone every, method of doing it.

                  Especially because some structures would cause very obvious enablement problems – you cant have an ICE power a plane without bringing gas. Gas increases your weight, which affects the thrust/weight ratio. An embodiment to an ICE would have to account for the additional weight of the gas, whereas the bicycle only had to account for the weight of the person. Therefore ICE embodiments have a particular enablement issue that bicycle embodiments do not. That enablement issue has to be solved by the specification, or it can’t be claimed.

                  All of this ignores the fact that if you give an example of a bike-powered plane and I make a 112b rejection because the limitation “thrust source” does not reasonably describe a person on a bike, you have no response that it is reasonable, while I have a very strong argument it isn’t reasonable – person on a bike is a more particular description and does not exclude any other examples you have proven to possess.

                27. I’m not claiming the glue or the jet engine. I’m claiming a device that includes glue or a device that includes a thrust producer wherein the Perkins glue might be used or wherein the Jet engine might be used.

                  The glue was undescribed because it was specifically said that it could be anything that achieved the function of being as good as animal glue. You have an undescribed element because it was specifically said that it could be anything that achieved the function of generating thrust. An undescribed element is undescribed. Your claim doesn’t become valid because its 2/3rds described, it is still undescribed because it has an undescribed element. That’s how description works.

                  You are NOT saying “it could be glue or it could be a jet engine” (i.e. you’re not limiting it to known structures), you are SPECIFICALLY arguing that it can be things you don’t know about and indeed haven’t been invented yet so long as they also perform the function. Same thing with the glue – he said it could be anything, even stuff he didn’t know about, so long as it results in the function being performed.

                28. “That is NOT the case in the other claim though, because what a processor is made out of does not affect HOW the processor performs processing vis-a-vis the novelty. But the structural difference in thrust sources is directly related to the novel manner of combining the items. It is also directly related to achieving the thrust/weight ratio you keep talking about (not sure if that is a limitation or not).”

                  The structural difference in thrust sources can in some instances have a bearing on novelty, sure. But in my example, what is claimed is novel without that level of detail. No one has ever combined a thrust producer of any kind with the other elements. I am a true innovator. Therefore I am entitled to broad coverage.

                  You can later invent/patent an ion drive… and maybe even include a dependent claim with the ion drive combined with the other elements of my claim.

                  If my patent is still enforceable, you will have to pay me a royalty to make, use or sell embodiments of that dependent claim.

                29. “I don’t know what you’re expecting me to do with the claim you gave me. I don’t know when its from, I don’t know what the prior art is, I don’t know what the novelty of the claim is. ”

                  Random – I certainly don’t expect you to do anything with the claim more than you already have.

                  However, just FYI, I provided a link to google at the bottom of that post that provides all of the information you said you don’t know.

                30. Ah, I see what the problem is, you created an improper assumption. You assumed from the beginning that it passed 103.

                  No one has ever combined a thrust producer of any kind with the other elements.

                  So lets say your claim is, literally:

                  Claim 1. A system comprising: a thrust source, a fuselage and a control surface.

                  You then admit or I can show that a thrust source, fuselage and control surface all preexisted your filing, correct?

                  That claim is per se obvious. By definition it is mere aggregation. See Anderson’s-Black Rock, Inc. v. Pavement Salvage Co, MPEP 2143(A) and 2144.04 (Making Integral). It also causes a 112a/b rejection, See MPEP 2173.05(k) pointing to MPEP 2172.01.

                  The claim must have SOME manner of interrelationship of the pieces, you can’t just tick off a list of pieces like you have an inventory of Lego blocks. So at a minimum what you would need would be:

                  Claim 2. A system comprising: a thrust source, a fuselage and a control surface wherein the thrust source creates a thrust/weight ratio of X.

                  Claim 2, through the weight limitation, has at least some interrelationship of its parts. This claim is invalid under 112a/b because it describes a novelty (the thrust/weight ratio) as a function rather than a structure, which makes it overbroad and indefinite. Wabash, Perkin’s Glue.

                  Further, your specification will give only one example, but your scope will be generic without any proof that you posited a generic solution. 112a WD rejection under Lizardtech.

                  Now let’s go back to Claim 1, and instead say that you are the first to invent, e.g. a thrust source. Lets say you invent the ICE. Now you have a novelty in an element. Calling it a thrust source when you invented a particular structure violates 112a (as you neither enabled nor described all thrust sources) and 112b (as there is a reasonable structural manner of describing it).

                31. No. Assume instead that the claim recites those elements with additional interrelationship detail at least sufficient to get it out of aggregation allegation territory while still reading on Wright Fliers and F35s.

                  Ya know, every claim in every patent reads on subject matter that isn’t literally disclosed.

                  For example, consider that claim with the processor and the transmitter. In addition to glossing over the details of processor and transmitter design, there was no mention of a circuit board. Was it green fiberglass? how thick? how many layers? surface mount technology or through hole? What about embodiment on flexible circuit boards?

                  Your interpretation of 101 and 112 is unreasonable and unworkable.

                32. Assume instead that the claim recites those elements with additional interrelationship detail at least sufficient to get it out of aggregation allegation territory while still reading on Wright Fliers and F35s.

                  Let’s not talk in hypotheticals, because that is what got us into trouble to begin with. There’s the 3 elements in my claim 1, now create a fourth limitation.

                  I will tell you that generally if the fourth limitation is functional in nature, it will draw 101/112 rejections, and if it is structural in nature but fails to be particularly drawn, you’re going to create 112a/b rejections. Yet the only way you could capture both a wright flier or a F22 is either to use functional language or to use vague structural language, because both you and I know that if you used particular structural language there isn’t similar structure between the Wright Flier and the F22. There’s no amount of fancy word play that will take two things that are different and make them the same other than to engage in the pure vaguery/obfuscation that the law prohibits.

                  Ya know, every claim in every patent reads on subject matter that isn’t literally disclosed.

                  Of course that’s true, but failing to disclose things that are not the novelty can be excused or allowed due to the preexisting knowledge of the PHOSITA. Being vague or broad at the point of novelty is precisely the thing that any number of cases are against, because your claim can only be to what you invent and teach the art, not whatever you want to say it.

                  That’s ultimately why it’s clear that I win this argument. Nobody in the art of flying would think that that the Wright Flyer and a F22 are even remotely the same thing other than they are both members of the same field of flying machines, which is why it is impossible to craft a valid scope that contains both items. Either you’re essentially claiming the field of “flying machines” which you can’t do under 101 Alice or 112a Perkin’s Glue, or you’re using vague language in an effort to expand your Wright Flier discovery to also include F22s, which is Wabash/Halliburton 112b issue. You’re trying to apply rules as you (incorrectly) understand them when you can simply work backwards from the result – no flight machine PHOSITA would call the F22 and the Wright Flier the same invention, therefore no claim scope (which defines an invention) can validly cover both.

                  For example, consider that claim with the processor and the transmitter. In addition to glossing over the details of processor and transmitter design, there was no mention of a circuit board. Was it green fiberglass? how thick? how many layers? surface mount technology or through hole? What about embodiment on flexible circuit boards?

                  But that’s all because the inner workings of a processor are already known. The relationship between the processor and transmitter and circuit board were already known. For your claim to issue it must include something that was NOT known. That thing cannot be glossed over. Simply because all limitations in a claim are considered does not mean that all limitations in a claim are equal. The amount of detail (both in the spec and the claims) that must be applied to elements and relationships that are well understood is significantly less than the amount of detail that must be applied to whatever is new.

                  Your interpretation of 101 and 112 is unreasonable and unworkable.

                  It’s not only reasonable, it IS the law. You haven’t challenged any of those cases at all, and for good reason – they’re all still followed. You keep asserting that you can do things and then I point to cases where they say you can’t. You made one effort to distinguish your claim (with respect to perkin’s glue) and had no response to my statement that it doesn’t matter whether its the whole machine or simply a sub-element is undescribed as they both lead to invalidity.

                  What IS unworkable is the idea that Morse could summarily prevent the usage of the cell phone text, the fax machine, the television displaying text, the networked computer because he invented the telegraph (which is, at best, an extremely early version of a fax machine). It was clear Morse neither invented nor enabled the cell phone text for at least the reason that it is vastly superior to the telegraph in every manner yet failed to appear anywhere in the world for over 100 years after his disclosure.

                  Yet despite the fact that we have a very clear example of using vague language in an attempt to claim an entire field of communication that the inventor clearly didn’t enable even most of, you want to create the exact same example in the field of flying machines and argue that you can validly do what the Supreme Court has said (and repeatedly affirmed in multiple contexts) that Morse could not. The cell phone text is not the telegraph. The F22 is not the Wright Flier. That is not to say that Morse didn’t get a claim to his telegraph, or that both the Wright Flier and the F22 are not inventions. It is simply a statement that one claim cannot cover both, because they are not the SAME invention, nor are they embodiments of some sort of valid super-genus of invention.

                  You CAN claim the Wright flier, and you can even expand your scope to equivalents of the Wright flier, things that a PHOSITA would consider to be essentially the same thing as the Wright Flier with only insubstantial changes. The F22 is not that. The fact that you can be extremely vague and use language that “captures” the F22 just means your scope is invalid, not that the Wright Brothers invented the F22.

                33. By the way, when I say: “The fact that you can be extremely vague and use language that “captures” the F22 just means your scope is invalid, not that the Wright Brothers invented the F22.” and you alternately argue:

                  I claimed a thrust producer in combination with the other elements. That claim reads on the F35. Sorry, I invented that.

                  What you’re suggesting is that the Wright Brothers in fact invented every flying machine, since one can describe what they invented by saying it was a thrust source and a fuselage that was capable of flight. Do you have any authority by anyone in the field of man-made flight that suggests that every airplane in existence was invented by the Wright Brothers? Does anyone share that view?

                  If nobody would consider the Wright Brothers the inventors of these planes, by what authority can Congress grant an exclusionary right to them? Assume the term of a patent was 150 years (still a “limited time”) instead of whatever it was back then – under what logic does Congress have the jurisdiction to grant them this exclusion? The only way would be frighten the words “inventor” and “their discovery” out of any semblance of meaning.

                34. “failing to disclose things that are not the novelty can be excused or allowed due to the preexisting knowledge of the PHOSITA”

                  Well then we agree. The novelty in my claims is in the combination of the recited components. The details of how the thrust producer works are not required for novelty.

                  Regarding your second post. The Wrights invented winged flying machines wherein a portion of the wings can be moved out of the plane of the wing. So, yeah, if an F22 has that kind of feature, the Wrights invented that aspect. They did not invent the jet engine or the stealth features or the computer control or 1000 other aspects I’m sure.

        2. 6.1.1.2

          Once again Malcolm chooses to “make an issue” of his propensity for misstating what is an optional claim format as if it is a de facto ONLY legal claim format.

          That “[shrugs]” is NOT a good thing, son.

          1. 6.1.1.2.1

            Let us not forget that in “anon”s world, reciting some old data and a new thought was an “optional” method of claiming that new thought as applied to the old data.

            Everyone knows, however, that something happened to “anon’s” beloved “option.”

            Yes, something very predictable and very rational happened to that option: it disappeared back into the swamp where it belongs.

            Go figure.

            1. 6.1.1.2.1.1

              And yet again your misrepresentations fall far short of reality.

              Try some inte11ectual honesty.

              For a change.

      2. 6.1.2

        MM – Do you think this type of claim should be patentable?

        A method, comprising:
        receiving an indication of engine temperature via a temperature sensor; and
        advancing spark timing at a spark plug responsive to an increase in engine temperature.

        1. 6.1.2.1

          IIT: Do you think this type of claim should be patentable?

          Please define what you mean by “this type of claim.” In general, the answer to your question (“patentable?”) is going to depend on the prior art.

          Assuming the prior art includes temperature sensors and spark plugs whose timing can be adjusted (this is 2015, after all), the claim doesn’t seem likely to be patentable unless there’s some unexpected (and beneficial) result associated with “advancing” the plug timing under those conditions. Note that, on its face, the claim would cover holding a thermometer above the engine and manually adjusting the spark timing.

          I think your claim is probably anticipated and therefore unpatentable.

          1. 6.1.2.1.1

            We are clearly talking about patent eligibility under 101 here. Do you think my example claim is patent eligible under 101 / Alice. Yes or no.

            1. 6.1.2.1.1.1

              IIT: Do you think my example claim is patent eligible under 101 / Alice.

              Unless I’m mistaken about the facts, the claim is anticipated so it’s not an invention. And the last I checked, section 101 does require some invention.

              So: it’s both anticipated and ineligible. Please explain why you believe that anybody should be concerned about this result.

              1. 6.1.2.1.1.1.2

                Why is the claim anticipated? Has someone previous advanced spark timing responsive to increasing engine temperature? I’m not aware of it.

                1. Again, MM appears unwilling to answer the question with his “anticipation” dodge. It’s getting really awkward for you here on this blog.

                2. Why is the claim anticipated?

                  I explained that to you.

                  Has someone previous advanced spark timing responsive to increasing engine temperature? I’m not aware of it.

                  Okay, let’s assume that hasn’t happened (seems unlikely in 2015 given the number of mechanics out there who have adjusted and experimented with spark plug timing over the last century but, hey, let’s pretend we were born yesterday — it’s what you guys love to do, after all).

                  Please tell everyone what the unexpected and beneficial result of performing that method is just so we’re clear on the hugely important issue created by “this type of claim” (whatever that’s supposed to mean). You seem to know quite a bit about engines, given your comfort level about what hasn’t been taught before in this very old field.

                  It’s getting really awkward for you here on this blog.

                  Not at all. Thanks for your concern though.

                3. Why are you afraid to do so?

                  I’m not afraid at all.

                  I’m trying to understand the invention. In order to do that, I need to understand what’s in the prior art and I need to understand the claim scope.

                  This is how the law works.

                4. Prior art is not part of the 101 analysis. 101 is about categories. Is the invention a process, machine, manufacture or composition of matter, that’s all. Newness is evaluated under 102. That is a separate question. Why are you being obtuse?

  24. 5

    I can’t wait until Alice is stretched to the point of invalidating machines that don’t include any computer elements. “These are mental process steps which can be performed in the human mind, or by a human using a pen and paper.” Sure they “can be performed” by humans, and the tasks performed by virtually any piece of machinery can also be performed by humans – hence also abstract. The mental process exception to 101 is simply not needed. People should be rejecting pure mental processes under 112.

    1. 5.1

      IIT: People should be rejecting pure mental processes under 112

      Please explain how that is supposed to work, given the plain language of 112 and the case law explaining it.

      I can’t wait until Alice is stretched to the point of invalidating machines that don’t include any computer elements.

      I can’t wait until some incredibly greedy patentee tries to claim a method of thinking a new thought about old data. Oh wait. That already happened. And surely you were here complaining about it in real time, right? Riiiiiiiiight.

      1. 5.1.1

        You can certainly reject pure mental processes under 112. You can also reject laws of nature under 102(b) (pre-AIA). You can also reject the typical “junk” data claim that you hate so much under 103 by saying: The process “X” is old, and computers are programmable to perform these types of processes. Bilski should carry the day for you on this one. No need for Alice / 101 at all beyond naming the statutory categories. The statute was well drafted and didn’t not require a mountain of judicial doctrines.

        1. 5.1.1.1

          You can certainly reject pure mental processes under 112.

          LOL. Please answer the question I asked you. Don’t just repeat your conclusion as if it that magically makes your conclusion reasonable.

            1. 5.1.1.1.1.1

              IIT: It’s indefinite.

              LOL. They’re all “indefinite”? Because you say so? Please explain to everyone why a “pure” mental process claim is “indefinite” under 112.

              I’ll just note for your education that similar hypothetical arguments were made recently before the CAFC and the judges swatted them away in two seconds.

        2. 5.1.1.2

          IIT: You can also reject the typical “junk” data claim that you hate so much under 103 by saying: The process “X” is old, and computers are programmable to perform these types of processes.

          That’s true of only fraction of ineligible information-processing claims, unless you wish to introduce some principles into the system that have thus far been strongly resisted by those who favor software patenting.

          mountain of judicial doctrines.

          There is no “mountain” of judicial doctrines associated with subject matter eligibility. It’s pretty straightforward stuff. You just don’t like it because your favorite junk is threatened. That’s not my problem. That’s not the public’s problem. That’s not the patent system’s problem. That’s your personal problem. And let me guess: you aren’t starving. You aren’t homeless. You’re college educated. So go ahead and cry me a river.

          And I’ll continue to ask you this question: where were you and your cohorts complaining when a much larger mountain of judicial doctrines was judge-shoveled into 103 for the purpose of insulating patentees? I mean if you are so seriously concerned about “judicial doctrines” (which you aren’t).

          1. 5.1.1.2.1

            MM – Please, enough with the annoying personal attacks. I don’t disagree with you that there are junk patents. I simply believe that the line that you have drawn is too far. There’s absolutely no need for you to mouth off.

            1. 5.1.1.2.1.1

              I simply believe that the line that you have drawn is too far.

              In fact, you plainly lack the ability to understand or admit the truth of quite a few things. And I’m not going to stop correcting you and I’m not going to pretend that you are some naive and delicate flower who isn’t aware of these basic concepts. If you want to be taken seriously and you want me to respect your deep thoughts about this subject, then start demonstrating some real understanding of the subject.

              1. 5.1.1.2.1.1.1

                If you want to be taken seriously, then stop stamping your feet, huffing and puffing, and issuing personal attacks. Stick to discussion of the topic.

                1. IIT: If you want to be taken seriously

                  My views are already being taken seriously. If they weren’t, you wouldn’t be here crying about them.

                2. You are indeed a legend

                  It’s not about “me”, “anon.”

                  It’s the strength of the arguments and the reasoning that matter.

                  And that’s why you and your cohorts are going to keep losing: most intelligent patent attorneys understand what I’m talking about, even if they are uncomfortable with where those conclusions might lead (because, e.g., they are directly invested in the status quo where information processing “on a computer” must be eligible — it must be! — just because some patent lawyers and grifters want it that way).

                  But the smart folks out there know that my arguments certainly don’t lead to your imaginary world where “nothing is eligible for patenting.” Not even close.

                  Maybe time to admit that for a change instead of insisting that patents on software are a necessary or beneficial aspect of any sane patent system, much less the quaint patent system that we presently have.

                3. strength of the arguments and the reasoning that matter.

                  You have not shown any of that – not in any legal or factual way. All you keep on doing is using your usual “feelings/opinions/policies/philosophies” and your short script of empty ad hominem.

                  Otherwise, you would answer the counterpoints on the table of dialogue.

                  You just don’t seem able to do that.

                4. I’ve answered more questions than any other commenter on this blog. A zillion of those questions were questions raised by drive-by software patentees and their attorneys and patent agents like you who were reciting a stale script.

                  I’ve also posed more questions — and more important questions — than any other commenter on this blog.

                  And the courts have been increasingly inclined to agree with me with every passing year I’ve doing so, starting from the very top.

                  IMPORTANT NOTE: I’m not pointing out these facts to brag about them. I’m pointing them out in the hopes that you’ll clam up with your silly insinuations that I’m not “dialoguing” or that my views are coming out of left-field without rational support.

                  Go sit in your echo chamber and complain about me if you don’t like it (and, yes, I know that already happens fairly often). The arguments and issues I’m raising are never going away until either (1) patents on logic and information processing are expunged from the system or (2) the system is completely re-designed to accomodate such patents. Even then the issues are going to be out there and people like me are going to be paying attention. The days when only those who owned patents get to decide what a worthy patent looks like are over, forever.

                5. ^^^ that is some seriously delusional stuff on every one of your claims Malcolm.

                  Come back to this reality.

        3. 5.1.1.3

          You can also reject laws of nature under 102(b) (pre-AIA). You can also reject the typical “junk” data claim that you hate so much under 103 by saying: The process “X” is old, and computers are programmable to perform these types of processes. Bilski should carry the day for you on this one. No need for Alice / 101 at all beyond naming the statutory categories.

          What was the proper means to reject Morse’s claim, given that everyone agrees that his telegraph was a novel, non-obvious machine?

            1. 5.1.1.3.1.1

              He was entitled to several, but not the overbroad one, and I want to know how IIT expects to defeat the overbroad one from a practical standpoint without the judicial exceptions when it is very clear that Morse in fact taught the art how to print at a distance.

            2. 5.1.1.3.1.2

              What I’m getting at, of course, is that the court didn’t utilize judicial exceptions on a whim. If the statutes provided for the same outcome they would have just knocked down the claims under the statutes.

              IIT isn’t suggesting that the claims should actually be allowable, he’s saying the statute was well-drafted and didn’t require judicial doctrines to reach the correct outcomes. So he must have an answer for “How would one reject the claims the court invented the exceptions for?” by using just the statutes. I’m always interested in listening to people that may be smarter than the collective Supreme Court, so I am interested in his answer.

  25. 4

    Claim 1. A method … comprising … prompting … enabling … enabling ….

    Along with the verbs “determining” and “displaying” and “entering” and “sending” and “storing”, anytime these verbs show up in a claim that is otherwise devoid of a new physical transformation or the recitation of new objective structure, there are going to be some serious eligibility problems.

    Never forget this basic fact: information processing is legally different from other kinds of processing. That fact is never going to change, at least not until we completely stop caring about fixing our broken patent system.

    1. 4.1

      It’s reasonable to invalidate/reject a subset of patents that are truly abstract junk. However, the current standard by which patents are judged eligible under 101 is simply unworkable and exceedingly subjective, particularly within the context of examination by an administrative body such as the PTO. In virtually every case where there is any recitation of a computer or electronic controller, the argument is the same: “The idea is abstract. The hardware is known. Hence, not patentable.” – whether or not the claim is junk or not.

      1. 4.1.1

        the current standard by which patents are judged eligible under 101 is simply unworkable and exceedingly subjective,

        Because you say so? It doesn’t seem unworkable or exceedingly subjective to me, nor does it seem that way to a lot of other people who PREDICTED exactly what’s taking place right now as a necessary and inevitable correction to a completely i n s a n e scenario that began forming in the early 90s. And, yes, there’s much more to come.

        By the way, where’s your evidence that all these patent-worthy “innovations” are being tanked right and left?

        In virtually every case where there is any recitation of a computer or electronic controller, the argument is the same: “The idea is abstract. The hardware is known. Hence, not patentable.” – whether or not the claim is junk or not.

        Show us all these examples of non-junk claims being tanked. You seem to be aware of a great many of them so it should be incredibly easy for you to do that. The burden is on you.

        Last time I checked the PTO was still cranking out patents like there was no tomorrow.

    2. 4.2

      For once, MM, I’m compelled to say that you’re right on point.

      For many cases that I encounter with 101 issues, the claims have no positive step that achieves a meaningful result. There’s some data intake, and data processing (“determining”), and… that’s it.

      This issue long predates Alice. It was at the heart of Bilski, and In re Walter, and even Gottschalk. It’s frustrating that we need to keep having this conversation.

      Ex parte Base, above, is particularly frustrating. Siemens is a legitimate company with legitimate technical problems, including data encoding, to which this case is directed. Unfortunately, the claims the claims are completely focused on the computation, without sufficiently describing it as an encoding process: the actual use of the technique is reduced to a wherein clause. I get the sense that this case could have been salvaged with some modest claim amendments.

      But in Ex parte Base, I’m also frustrated with the PTAB’s opinion. The PTAB reversed on 102, and then spontaneously raised this 101 issue as an issue of “mental steps.” That is not an accurate description of the deficiency in these claims! The flaw here is preemption: the claim describes a specific technique, but does not adequately characterize it as solving a particular problem. It’s a Gottschalk type of issue.

      Contrast this with Veracode v. Appthority, where the patent in question (U.S. Patent No. 5,854,924) is even less specific on detail (perhaps dangerously so), but recites the use of the technique for a specific purpose – and so survived 101 review.

      1. 4.2.1

        “but recites the use of the technique for a specific purpose – and so survived 101 review.”

        Recitation of a specific purpose no longer provides a 101 life jacket. The claims in Alice had a specific purpose, “intermediate settlement”. That didn’t save them. The claims in Benson had a specific purpose, binary coding decimals, as I recall….

        1. 4.2.1.1

          Oh, I agree that it’s not sufficient on its own – the solution needs to be technical. Alice’s was not.

          My point is the converse: not having any context is problematic.

  26. 3

    ” A method for video coding using symbols”

    Had this method actually been tied to receiving video signals and transmitting video signals rather than this simply the mathematics performed on a computer limited to the field of use of video encoding, I think the claim would’ve been eligible. As it is, this is Flook all over again.

    1. 3.1

      Ned, we both know that we could easily make arguments to invalidate your hypo under Alice. Here’s how it goes: “The concept of [insert concept] is abstract. All other elements are post solution activity. Hence, the claim is abstract.”

    2. 3.2

      The involvement of video signals at the beginning and end is immaterial and nothing but a distinction without a difference. After all, I could say that video data on a ROM is a physical object and video displayed on a terminal is a physical, tangible output.

      And that is why Diehr is grossly in error and will eventually be overturned much to the benefit of the patent system and inventors.

        1. 3.2.2.1

          Video displayed on a terminal is a physical output.

          Also older than the hills. But let’s just set that fact aside because it’s so inconvenient when we are talking about patents.

          1. 3.2.2.1.1

            The age of the prior art of a physical output does not make it any less so. The simple fact is that displaying video via a display device is an example of a machine providing a physical output.

          2. 3.2.2.1.2

            The PTO Board says that the subject claims are directed to methods of video coding using symbols with three steps: providing a prediction error matrix; converting the prediction into a series of symbols; and performing context-adaptive arithmetic encoding of the symbols, and that these are mental process steps which can be performed in the human mind, or by a human using a pen and paper.

            Perhaps one really ought to be asking whether anyone in their right mind (includin presumably persons having ordinary skill in the art) would, in the context of video coding, ever actually perform these recited operations in their mind or using pen and paper, and, if so, whether they could be completed within the age of the universe. The legal test for so-called “mental” steps needs some real grounding in reality.

            1. 3.2.2.1.2.1

              How do you suppose video codecs are created? A person has encoded video by hand and mental process to produce every video encoding scheme that has ever been widely deployed. That is how humans developed those processes. The machines that implement them were always built to replicate the original human version.

              1. 3.2.2.1.2.1.1

                Owen.

                May I remind you of the patent law definition of “manufacture” includes those things made by the hand of man…

                The lack of appreciation here of exactly what the “pen and paper” analogy means in regards to the mental steps doctrine is one of those things that the “I slept at a Holiday Inn last night” version of patent law analysis breeds.

                Prof – perhaps an expose of exactly what that doctrine was originally created for would provide the proper context for the larger audience here (and stem much of the modern “philosophical” dissembling).

              2. 3.2.2.1.2.1.2

                The software code for the video codec may be created by hand, but the coded calculationsthemselves: Fast Fourier transforms, series summations, sine and cosine calculations etc. for each pixel or group of pixels is not done by hand; it would take seemingly forever to complete even one such calculation by hand. That’s what the software is for. You try to performing a prediction error matrix conversion by coefficient sampling by pencil-and-paper (or in your mind) and see if can be done in any realistic time frame for a real-time codec operation.

                The current judicial interpretation appears to be itself an abstract principle, such that if any operation “could” theoretically be performed mentally, given an infinite amount of time and resources, then it fails the mental steps test. I would suggest a more realistic approach wherein, if an operation “would” be performed (or has been done) in the art with pencil-and-paper or mentally, then merely converting that into computer software is ineligible for patent protection.

                1. ^^^ another (non-taken) great opportunity for a learning lesson: what was that Mental Steps Doctrine originally geared to, and how has that doctrine been attempted to be morphed to fit some other nose-of-wax desired ends type of philosophy….

                2. I have in the past provided comments along some of the critical points.

                  However, I think that YOU (or perhaps an academic fiend of yours) providing the story would be both
                  a) more in line with the “teaching” role that you have,
                  b) more “accepted” by the readers – especially those readers who too readily glom onto the identity of the poster, as opposed to the content shared.

                  Are you up for that?

                3. I take it that this topic (even [em]ployed as often as it is on these pages) does not “grab your fancy”…

                  Too bad.

                  This is one of three or four major fallacies affecting the ongoing discussions that drive such much “philosophical muckraking” here.

                  (others include understanding that Manufactures include those things made by the hand of man coupled with the exceptions to the judicial doctrine of printed matter coupled with the fact that software is defined to be a machine component [there is no such thing a s software that is NOT meant to be a machine component]; and also include the patent doctrine of inherency, and how that doctrine is violated by the (merely implied) notion that computers sans software are the same from an invention protection standpoint of computers with software (which is the point presented first long ago by the Grand Hall experiment, then confirmed in the courts with the Nazomi case – and also directly tie into the full understanding of the holdings of the Alappat case.

                  Maybe (just maybe) if these points were made more crystal clear by a person other than I, the “raging battles” might subside with the points that I raise accepted and integrated into the ongoing dialogues.

                  Well, one can dream optimistically….

    3. 3.4

      Ned (and David Stein),

      Let’s NOT forget that Flook was cabined by Diehr (see Bilski).

      Think the art field of encryption…

      1. 3.4.1

        anon: I agree that Diehr reverses Flook, and that’s not really the part of Ned’s comment that I wrote to support (actually, I wanted to support everything but that part!)

        I think there’s something of a spectrum of the degree of application. Encryption – as well as codecs, data compression, search techniques, etc. – has intrinsic technical value, so it’s fine to claim their use within the broad domain to which PHOSITA would ordinarily apply it. On the other hand, the claims at issue in DDR Holdings were patent-eligible only because they recited a very specific scenario and a very specific problem.

        But even for cases in the “definitely technology” end of the spectrum, there needs to be a modest, positive recitation of the use of the technology. For example, this should be patent-eligible:

        A method of encrypting messages for delivery by a device to a recipient, comprising:

        executing, on the device, instructions that cause the device to:

        (a) receive a plaintext message;

        (b) apply (specific cryptographic technique) to the plaintext message to produce an encrypted message; and

        (c) transmit the encrypted message to the recipient.

        That claim should cover every conceivable scenario where messages should be encrypted – every protocol, every type of data, and machine-to-machine and person-to-person. But it’s still centrally about transmitting messages.

        Contrasting example:

        A method of encrypting a plaintext message, comprising:

        applying (specific cryptographic technique) to the plaintext message to produce an encrypted message.

        It’s just the encryption technique recited in the abstract, right? The data is processed… The End. No use at all.

        This is the deficiency in Ex parte Base. You can’t just recite the only use of the data inferentially in a “wherein” clause – may as well just state: “wherein the result is used for a useful result that satisfies 35 USC 101.”

    4. 3.5

      I don’t think so Ned. How does one perform a method of “video coding” without video? It was a hack job.

      1. 3.5.1

        hierarchy of pontification buckets, I said,

        “Had this method actually been tied to receiving video signals and transmitting video signals rather than this simply the mathematics performed on a computer limited to the field of use of video encoding, I think the claim would’ve been eligible. As it is, this is Flook all over again.”

        and

        “The tie to physical signals in and out brings it within American Bell.”

        Well, H, is this a field of use issue? How specific must be the field before the courts can give it weight? We have a comparison between Flook and Alappat. The two were different because one was too broad and the other one was to a specific component in a specific machine.

        Also I hear you to say that simply tying the claims to video signals in and out is not sufficient. Do I understand you correctly?

        1. 3.5.1.1

          “Field of use” is just another thing that can be “Gisted” away.

          Now, with Alice, this “Gisting” includes those things stipulated by both parties (like meeting the statutory category aspect of 101).

          The thing is – and the elephant in the room – the Court did not put ANY limit on the “Gist/Abstract” sword.

          They simply did not do so.

          And in so scrivining, they have eliminated the very words that Congress used. Statutory categories really don’t mean anything anymore, if one is allowed to “Gist” and remove actual claim elements.

          It simply does not matter if those claim elements are new or not, are novel or not, are “the point of novelty” or not. The Court did not set ANY limits along any of those things and ALL of the post-decision chinwacking will not – and cannot – change that.

          1. 3.5.1.1.1

            Anon, well a point of distinction can be made between Flook and Alappat. It has to do with the specificity of the field of use. In the one, the claims were held to be unpatentable under 101. In the other, patentable.

            1. 3.5.1.1.1.1

              “Field of use” Ned – really?

              That would be an extreme negative.

              Besides which, you do know that Flook was cabined by Diehr, right? See Bilski.

              1. 3.5.1.1.1.1.1

                Anon, Flook is not been overturned on its principal point that the calculation ended a number, and the field of use was not specific enough. Alappat as well ended in a number, but the court held that the use was specific enough, namely, its us was in a rasterizer of graphics unit for a display.

                1. Ned,

                  Did I say “overturned” or did I say “cabined?

                  Please move the goalpost back.

                  As for Alappat, well, you still apparently do not understand ALL of the holdings in that case.

  27. 2

    My thoughts on the first and third cases:

    Ex parte Bak – the claim appears to be missing the final step. It recites (1) setting up an invitation with characteristics, and (2) having recipients set up filter/sort characteristics for meeting requests, but not (3) sending and receiving and sorting and/or displaying the invitations based on those characteristics. None of the claimed steps transform anything on any level.

    Ex parte Shideler – isn’t that claiming the Carmen Sandiego computer games, but not on a computer?

  28. 1

    Thanks.

    It might be even more useful to ex parte practitioners to see cases, and data on the number of, PTAB ex parte application examination decisions overruling [rather than sustaining] examiner Alice-101 “abstraction” claim rejections? Also, to note decisions in which other, more specific, claims were allowed even though the broader claims were rejected. Have any occurred yet?
    [One also hopes the Fed. Cir. will find some cases to put some practical comprehensible limits on what is “abstract” since that should give some guidance to the PTAB.]

    1. 1.1

      A couple of days ago, J. Michel said that Alice means whatever a District Court judge needs it to mean in order to manage his/her docket. Here is the quote: “The options the trial judge has are very great in range, and second-guessing is going to be extremely limited. I hope trial judges will take advantage of the great discretion they have in the timing and style they adjudicate these 101 issues.”
      Here is the citation: link to law360.com

      1. 1.1.2

        Cynical.

        Essentially, what can be abused, will be abused.

        While this is certainly true of litigators, and the PTO, it is not true of Federal Judges as a category.

        1. 1.1.2.1

          It’s true of humans as a category, so then its true of federal judges to the extent they are humans.

        2. 1.1.2.2

          it is not true of Federal Judges as a category

          There is a TOTAL lack of rationality in that statement.

        3. 1.1.2.3

          It’s surprising to see that the layer of the review process that’s done the most to identify patent-eligible subject matter is the district court layer.

          The PTAB has been brutal. The Federal Circuit’s record needs no explanation, although its habit of affirming without even the courtesy of an explanation is problematic. And the last time the Supreme Court found any claim to be 101 patent-eligible was in 1981.

          So it’s weird to see the district courts “leading from behind” on these issues – as in Google v. SimpleAir, and Message Gateway Solutions v. mGage, and Veracode v. Appthority. I don’t know why all of these other bodies are content to pile up cases on one side of the issue, and to allow patent-eligible claims to start looking mythical.

          1. 1.1.2.3.1

            David, we all know that the PTO for decades was allowing claims that simply recited a computer or CRM to pass its test of 101. This was at least in part the result of State Street Bank. There a lot of patents with those kind of claims out there now, perhaps millions. Alice caught a lot of these while they were being enforced. That explains the spate of cases holding claims that do no more that recite computers, etc., holding such claims invalid under 101. It will not be long before none of these kinds of patents are asserted — law firms simply will not take such cases to court. Sanctions will be imposed on their clients and they will not get paid.

            The time of State Street Bank has ended.

            1. 1.1.2.3.1.1

              State Street is – and always was – immaterial to my position and the law as passed by Congress in 1952, Ned.

        4. 1.1.2.4

          It’s surprising to see that the layer of the review process that’s done the most to identify patent-eligible subject matter is the district courts.

          The PTAB’s record on 101 is extremely lopsided. The Federal Circuit’s record needs no explanation, although its habit of affirming without even the courtesy of an explanation is problematic. And the last time the Supreme Court found any claim to be 101 patent-eligible was in 1981.

          So it’s surprising to see the district courts “leading from behind” on these issues – as in Google v. SimpleAir, and Message Gateway Solutions v. mGage, and Veracode v. Appthority. I don’t know why all of these other bodies are content to pile up cases on one side of the issue, and to allow patent-eligible claims to look like chasing phantoms.

          1. 1.1.2.4.1

            it’s surprising to see the district courts “leading from behind”

            That’s an interesting phrase. Not sure about the “leading” part…

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