Anonymous Loan Shopping — An Unpatentable Abstract Idea

By Dennis Crouch

On summary judgment, Judge Guilford (C.D.Cal) found Mortgage Grader’s asserted patents[1] ineligible under 35 U.S.C. § 101.[2]  On appeal, the Federal Circuit has affirmed this substantive holding as well as the district court’s procedural decision to allow the defendant (First Choice) to re-add its Section 101 contention after first dropping it.[3]  The appellate decision here was authored by Chief Judge Stark (D.Del) who was sitting by designation.  Judges O’Malley and Taranto joined the unanimous opinion.

A patent is not permitted to effectively claim an abstract idea.  In Mayo/Alice, the Supreme Court outlined a two-step process for determining whether this exception applies to Section 101’s otherwise broad eligibility principles: (1) is the claim at issue directed to a patent-ineligible concept and (2) if so, does the claim include an “inventive concept … sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”[4]

Here, the district court found that the claims-at-issue were generally directed to “anonymous loan shopping” which is an unpatentable abstract idea.[5]  According to the court and apart from the computerization claim limits, the “series of steps covered by the asserted claims—borrower applies for a loan, a third party calculates the borrower’s credit grading, lenders provide loan pricing information to the third party based on the borrower’s credit grading, and only thereafter (at the election of the borrower) the borrower discloses its identity to a lender—could all be performed by humans without a computer.”  These human-mind-potentials cannot be claimed in the abstract.  In step two of Mayo/Alice, the court considered the computerization elements of the claims, but found only “generic computer components such as an ‘interface,’ ‘network,’ and ‘database.’ These generic computer components do not satisfy the inventive concept requirement.”

In the appeal, the patentee argued a factual dispute regarding the history of loan processing in an attempt to show that the process here was not “old.”  The appellate panel, however, found the testimony essentially irrelevant to the legal question of whether claim is directed to an abstract idea.

====

On the procedural point, the defendant had dropped its eligibility defense from its contentions. However, following the Supreme Court’s Alice decision added the contention back into place – but well after the court appointed deadline.  On appeal, the appellate panel confirmed that the district court did not abuse its discretion in allowing that procedural anomaly because of the significance of the decision:

In Alice, the Supreme Court held that “merely requiring generic computer implementation fails to transform [an] abstract idea into a patent-eligible invention.” 134 S. Ct. at 2352. We recognized the significance of Alice in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014), in which we stated that Alice “made clear that a claim directed to an abstract idea does not move into § 101 eligibility territory by merely requiring generic computer implementation” (internal quotation marks omitted). The impact of Alice is also illustrated by our decision in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (“Ultramercial III”). Ultramercial had sued WildTangent for infringement of U.S. Patent No. 7,346,545, a patent directed to allowing consumers to view copyrighted media products on the Internet at no cost in exchange for viewing an advertisement. See id. at 712. When the case was first before us, in 2011, we reversed the district court’s grant of WildTangent’s Rule 12(b)(6) motion to dismiss, holding that “as a practical application of the general concept of advertising as currency and an improvement to prior art technology, the claimed invention is not so manifestly abstract as to override the statutory language of § 101.” Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1330 (Fed. Cir. 2011) (“Ultramercial I”) (internal quotation marks omitted). The Supreme Court granted WildTangent’s petition for certiorari, vacated our order, and remanded for further consideration in light of Mayo. Ultramercial III, 772 F.3d at 713. On remand, we again reversed the district court, holding yet again that the claims were patent-eligible. Ultramercial v. Hulu, 722 F.3d 1335, 1354 (Fed. Cir. 2013) (“Ultramercial II”). Once more, the Supreme Court granted WildTangent’s petition for certiorari, vacated our order, and remanded, this time for further consideration in light of Alice. Id. On this further remand, with the “added benefit of the Supreme Court’s reasoning in Alice,” we affirmed the district court and found the claims to be not patent-eligible. Id. Our conclusion was expressly based on Alice’s holding that “adding a computer to otherwise conventional steps does not make an invention patent-eligible.” Id. at 713, 716–17.

Ultramercial III demonstrates that a § 101 defense previously lacking in merit may be meritorious after Alice. This scenario is most likely to occur with respect to patent claims that involve implementations of economic arrangements using generic computer technology, as the claims do here. For example, the asserted claims of the ’694 patent require use of a “computer system” or “computer network” for facilitating anonymous loan shopping and the asserted claim of the ’728 patent requires “programmatically generating” and uses a “network” for shopping for loans. In this context, it was not an abuse of discretion to allow Appellees to inject a § 101 defense into the case after Alice.

= = = = =

[1] U.S. Patent Nos. 7,366,694 (“’694 patent”) and 7,680,728 (“’728 patent”).

[2] Mortgage Grader, Inc. v. Costco Wholesale Corp., 89 F. Supp. 3d 1055, 1065 (C.D. Cal. 2015) (Costco was later dismissed as a party).

[3] Mortgage Grade, Inc. v. First Choice Loan Services, ___ F.3d ___, App. No. 15-1415 (Fed. Cir. 2016) available at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1415.Opinion.1-15-2016.1.PDF.

[4] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) (as clarified by Alice).

[5] Claim 1 of the ‘694 patent, that the court found sufficiently representative is listed as follows:

1. A computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, the system comprising:

a database that stores loan package data specifying loan packages for home loans offered by the lenders, the loan package data specifying, for each of the loan packages, at least a loan type, an interest rate, and a required borrower credit grading; and

a computer system that provides:

a first interface that allows the lenders to securely upload at least some of the loan package data for their respective loan packages to the database over a computer network; and

a second interface that prompts a borrower to enter personal loan evaluation information, and invokes, on a computer, a borrower grading module which uses at least the entered personal loan evaluation information to calculate a credit grading for the borrower, said credit grading being distinct from a credit score of the borrower, and being based on underwriting criteria used by at least some of said lenders;

wherein the second interface provides functionality for the borrower to search the database to identify a set of loan packages for which the borrower qualifies based on the credit grading, and to compare the loan packages within the set, including loan type and interest rate, while remaining anonymous to each of the lenders and without having to post a request to any of the lenders, said second interface configured to display to the borrower an indication of a total cost of each loan package in the set, said total cost including costs of closing services not provided by corresponding lenders;

and wherein the computer-implemented system further enables the borrower to selectively expose at least the personal loan evaluation information to a lender corresponding to a selected loan package.

About Dennis Crouch

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

278 thoughts on “Anonymous Loan Shopping — An Unpatentable Abstract Idea

  1. “nor did they patent the logic of how to pick cotton (pull cotton from plant, put cotton in storage device, deliver storage device to destination, repeat process until field picked).”

    PART I By “logic” I presume you mean the mental process. For example, thinking about it, and/or verbally reciting the steps. No one here has argued you can patent a complete series of thinking or reciting steps.

    However, according to the 1952 patent act, you can patent a “process” of how to pick cotton. Process in patent law goes beyond thinking and/or verbally reciting steps, it requires a physical application of the steps. (See Diehr).

    1. T-101-E,

      All that you are seeing there is the trite attempt to move the goalposts to something that is entirely in the mind, from the actual discussion of things that clearly fall to what Prof. Crouch coined as the Vast Middle Ground.

      Clarity is again reached if one remembers the simple adage: software is not the thought of software.

      When one realize that even Malcolm’s favorite pet theory of [Old Step]+[New Thought] boils down to nothing more than what is already present in the “Claim as a Whole” doctrine of “no mere aggregations,” one can readily see that all that is going on with such (purposeful) obfuscations and deceptions is the attempted advance of a particular agenda through the same old propaganda.

    2. PART II So according to the law the following process is indeed eligible.

      A process for picking cotton comprising:

      1. Pulling cotton from plant
      2. Putting cotton in storage device
      3. Delivering storage device to destination

      Whereby said process is repeated until field is picked

  2. At 12.3.2 MM writes:

    The question is : should a claim to a device that “encrypts data” be eligible for patenting if the only recited difference between the new device and the prior art encryption devices is the “new” functionality, i.e., the specific “new” logic used to “encrypt” the data.

    But as far as I’m concerned, he hasn’t quite nailed yet what is or is not “abstract”.

    More particularly, I doubt he means a claim of the form:

    Data processor, characterized in that it is capable of encrypting data.

    I suspect he means instead subject matter a bit less “abstract” perhaps like the following:

    Process for transmitting and receiving encrypted data, using a first processor for encrypting the data using an algorithm, and a second processor for de-crypting the encrpted data using the same algorithm, characterized in that the algorithm is…..XYZ.

    MM am I anywhere near it? Everybody, is this sort of subject matter eligible in the USA, or is it not?

    1. MaxDrei,

      The question is NOT just “Is?”

      The question ,I.necessarily also involves “why?” – as in, why is that the answer under the law as written by Congress?

      Focusing on just “is?” will lead you directly into the trap of “Ends justify the Means.”

      You have to be able to get to the answer of “is?” through the appropriate means. Don’t skip that step.

    2. eligible, or not eligible–that is the question:
      Whether to argue thoughts thinkable in the mind can be patented and to suffer
      The slings and arrows of outrageous posters
      Or to take arms against a sea of troubles
      And by opposing end them…..

      If only wishing would make it so

    3. In Ariosa, the fed circuit held that for process claims that recite an abstract idea, the steps themselves must be new and useful. They didn’t ask whether a device that applies the steps are new and useful, or a device that is worked on by steps new and useful.

      We need to stop treating system claims and process claims the same way under 101. A system has to be new and useful, regardless of it’s intended use.

      If novelty is a question under prong two of Alice, then wouldn’t a business method be patentable if it recites “steps” that are more than mere “fundamental” economic practices? The Supreme Court said that adding a generic computer is not sufficient to make a claim directed to an abstract idea patentable, but they did not hold that a new tangible device is needed. A new set of steps should be sufficient to establish a new and useful process so long as they cannot be performed solely by mental processes.

      I think the case above does the U.S. Patent system a great disservice. The court expanded the doctrine against patenting mental processes to now include any process that can be performed by humans. In other words, process that are tangible and outside the scope of being performed mentally now fail under 101.

      1. Mike,

        It’s worse than that.

        It had been long understood that even steps of a claim – as long as those steps were integrated into the claim as a whole [note: not a mere aggregation] could be mental steps with NO “injury” to – or in other words, infringement could not happen solely “in the mind” – those things outside of the proper domain of patent law.

        However, enough conflation (purposeful) and confusion has been gen erated in the kicking of dust to obscure this, and we have now arrived at a broken scoreboard state of affairs.

        Of course, this (il)logic is NOT sustainable, and the very thing that raised the ire of Congress in the anti-patent pre-1952 era is once again loosed upon society. The fact that there is NO limit in the new (old) t001 of the “Gist/Abstract” sword, and the fact that such a sword obliterates the very words of Congress by giving the judicial branch the ability to remove the statutory category provision of 101 is – and should be – troubling.

        You will here pleas from those who think that software per se should not be protected to those who think that software as a manufacture and machine component in its own right squarely falls within the law to come up with some “fall back’ position.

        This is a trap to be avoided.

        There is NO such logically consistent “fall back” position to be had.

        This is due – in part – to the fact of equivalence (and to the naysayers, yet again , equivalence is NOT “exactly the same as”) of software with hardware.

        Instead of “falling back,” what we SHOULD be doing is bringing everyone forward to an understanding of the basics of what software really is.

  3. “Abstract idea” jurisprudence is third world primitive stuff. No one knows what is abstract and what is not until the oracle (equivalently, the paid troll charlatan known as MM) tells them. This is medieval superstition, which frankly raises doubts about evolution. If evolution is valid, why are people getting stupider?

    1. Exactly. It is really an equity test with 102/103/112/101 all rolled into one with a judge making findings of fact and taking judicial notice without a trial. It is really against our Constitution and rights.

  4. This patent claim and this Fed. Cir. decision are simply not worth the more than these 104 comments on it here. It appears to be just another example of a claim that should never have issued if it had had a decent 103 examination, and would not survive a valid IPR . So the objections here are actually mostly procedural rather than substantive. That is, objecting to killing such claims based on the Alice-101 ambiguous “abstraction plus nothing new” test instead of 103 or 112. But that rejection will continue to be used because summary judgments based on 103 are extremely difficult to get in a D.C. and be sustained by the Fed. Cir. What is needed is sustained legal challenges to Alice-101 decisions from patents with claims and specifications that could pass a 103 test and might draw some boundaries around “abstract.” Not just more useless complaints or denials about unanimous Sup. Ct. decisions that are not going to get reversed.

    1. are simply not worth the more than these 104 comments on it here.

      Great. Now maybe pay attention to the comments and the fact that more than just a few are dealing with larger issues of the law itself.

      You know, the types of things that you don’t want to comment on but are in fact pertinent to the issues of today. And in contrast to your bald assertions (probably because you don’t “like” the possible conclusions), these are NOT “useless.”

      1. Since no comments here that are mere personal attacks on decisions of the Sup. Ct. or Congress are from anyone with any real influence over Congress or the Sup. Ct., that is definitely not “DEALING with larger issues of the law itself.”

        As for the argument by your doppelganger that it is perfectly clear what claim elements are”abstractions” or not, several members of the Fed. Cir. clearly do not find it that clear. I also hear that numerous strange 101 application rejections from confused examiners are headed to the Board and then to the Fed. Cir. That, as indicated, may establish some boundaries?

        1. Paul several members of the Fed. Cir. clearly do not find it that clear.

          It’s clear enough, at least, for a steady stream of Rule 36 affirmances, and clear enough for most reasonable attorneys to accurately predict the outcomes for challenged patents based on a quick review of the claims.

          As for “confused examiners,” that’s a problem that’s never going to go away. The law is always changing and there are always going to be folks who have a harder time keeping up with the changes than others. That’s one of the reasons it’s good to step back and try to understand why those changes are occurring.

          The biggest source of “confusion” in the 101 world right now is DDR Holdings. The opinion, of course, was the CAFC putting its thumb in the Supreme Court’s eye on behalf of its favorite stakeholders. The same judges who foisted that decision upon the world are going to try to shoehorn it into greater protection. But all of that dancing is taking place in a surreal vacuum where the major corrosive issue — the ineligibility of logic — is simply ignored. Golly, I wonder how it will all turn out.

          Just kidding. I know how it’s going to turn out. The only question is how long will the screaming last.

          1. What’s the difference between a process and logic? If 101 didn’t include processes as a statutory category I would understand the argument that a series of steps (i.e. logic) is not patentable per se. A process is not something tangible, it’s an action, but processes are statutory under 101. I’m just having trouble seeing how any and all processes wouldn’t necessarily fail Alice.

            1. mike A process is not something tangible, it’s an action, but processes are statutory under 101.

              Here on planet earth, the Supreme Court interprets statutes and you need to read the cases and try to understand them instead of spewing some kindergarten script you picked up from a professional patent apologists. It’s 2016, not 1792. Check your calendar if you’re confused.

              What’s the difference between a process and logic?

              Logical processes are a sub-category of processes, for starters. You didn’t know that? Really?

              I can hardly wait for the next question.

            2. mike I’m just having trouble seeing how any and all processes wouldn’t necessarily fail Alice.

              And I have to assume you are not an attorney and you’re not practicing patent law. If so, you are likely committing malpractice.

              Send that comment to your clients. Probably one of them is smart enough to help you out and hopefully smart enough to dump you.

                1. mike,

                  Your question is the type of question that Malcolm (“MM”) has always been rude to.

                  It is part and parcel of the “swagger” that he has foisted on this “ecosystem” for nearing a full decade (February).

                  And you can see by his nonsense answer (“Logical processes are a sub-category of processes, for starters. You didn’t know that? Really?“) that he really does not have any answers to your question. A “sub-category” does not explain how the so-called “sub” is different in a patent law sense. He gives a non-answer and then immediately jumps to ad hominem – and you are new here and have shown no reason to have been rude to (other than you apparently do not Belieb what he Beliebs).

                  Then again, he wrote that software IS logic, and by deduction from his direct statement, he must believe that one can then copyright logic (he has never shown an ability to grasp copyright law either).

            3. mike –

              logic is a set of rules.

              apply logic in a sequence to solve a particular class of problems, now you do have a process…

              also:
              process encompasses things like: A process for making Crestor; A process for making sliced bread (as in the greatest thing since sliced bread) on an industrial scale; A process for rolling cigarettes (on an industrial scale) etc…

              link to patents.google.com

              …alas, you are correct…any process described in claim format can be declared to be directed to an abstract idea and fail Alice.

        2. Is “doppelganger” anything like “cohort”…?

          Or do you have to be a “Paul F. Morgan – not registered patent attorney to “have any real influence.”

          Can you say “pretentious overblown w1ndbag” Paul?

    2. What is needed is sustained legal challenges to Alice-101 decisions from patents with claims and specifications that could pass a 103 test and might draw some boundaries around “abstract.”

      Boundaries? Gee, Paul, that would assume that the term “abstract” is nothing more than a nonsense word.

      But the Super Serious People here who never saw a junk patent they couldn’t defend have assured us that “abstract” is a meaningless term that can be applied to everything under the sun. That’s right: everything is abstract! Up is equal to down and black is equal to white and the structure of a physical object is just like the structure of a logical argument. They told us so!

      Yes, the term “abstract” is in the dictionary but that would require an actual attempt to understand what’s going on, rather than an attempt to simply shriek endlessly about how technology will stop evolving unless we grant patents on “new” logic, “new” methods of shoving ads in your face, and “new” methods of making a profit. On top of knowing how to use a dictionary, you also have to be able to use basic logic to understand how the prior art affects the subject matter eligibility analysis. Its really really really hard to do that! Like you have to be able to reason at a ninth grade level. Maybe tenth grade even!

      1. Yes, the term “abstract” is in the dictionary

        You have said this before, and like last time, this is a non sequitur.

        READ what the Justices said in their decision. They did NOT say “we are using the dictionary definition.” You do not get to change their words into something that you feel that they should have said.

    3. Paul, the subject matter here is not eligible. The PTO should not have wasted its time and our fees on this junk.

  5. A great many people find fault with an eligibility test built around the notion of “abstract”. They say it is hard to tell, in borderline cases, whether the subject matter of any particular claim is or is not significantly more than “abstract”. So the test is fuzzy rather than a bright line of zero width.

    Perhaps SCOTUS chose deliberately to make it fuzzy, so as not to foreclose unfairly the chances for deserving inventors to get patents on their new useful and unobvious inventive concepts.

    But if we just set aside the fuzziness issue, does anybody quarrel with the notion that, if the subject matter of a claim is indeed abstract, or insignificantly different from abstract, then it is not fit subject matter to issue as a patent?

    Nobody is urging that the PTO grant patents on abstract ideas. Or are they?

    1. One of the things “said,” is that “hard to tell” is more than just at the borderline cases because the Court expressly refused to define “abstract.”

      Note that Malcolm’s comment about “use the dictionary” is NOT pertinent as that option available to the Court was not one taken by the Court.

      The notion of “not to foreclose unfairly… deserving inventors” is unjustly polly-annaistic all sunshine and goodness. There is nothing “positive” about the Court’s actions as they are written, and as they applied by the lower courts.

      Ideas – in and of themselves are not on the table – let alone abstract ones. These are claims to items within the statutory categories and that have the utility as inclusive within the Useful Arts. ALL other uses of 101 to ploy some non-Congressional “policy,” agenda, or philosophy is ultra vires.

    2. I guess it depends on what you mean by “abstract”.

      In Europe, would a claim directed to a device for encrypting data using a “new” (or being novel and having inventive step) and “useful” encryption scheme be patentable? In the US, it might not be, as an encryption scheme is arguably “abstract” and the device does nothing that’s “significantly more” than the abstract idea. Yet, should a device encrypting data not be allowed patentability?

      There are many more examples we could posit.

      1. PB should a device encrypting data not be allowed patentability

        Wrong question.

        The question is : should a claim to a device that “encrypts data” be eligible for patenting if the only recited difference between the new device and the prior art encryption devices is the “new” functionality, i.e., the specific “new” logic used to “encrypt” the data.

        That’s the question. Nobody is suggesting that a claim to a new structurally distinct device, claimed in structural terms, and useful for encrypting data would not be eligible for patenting.

        Do you understand this distinction, PB? A simple yes or no answer will suffice. If you can’t understand the distinction, you’re not up the task of participating in the conversation in a meaningful way. You’re just contributing noise.

        1. Because the notion of inherency doctrine is like totally absent from Malcolm’s mind and it is only “magic” that [Old box} has all such future innovations “already in there.”

          Talk about being W A Y back deep in the cave….

      2. PatentBob, may I conjecture that what the court means by “abstract” is the same thing as the printed matter doctrine: the claimed subject matter depends upon the meaning, and that is inherently abstract.

        Also, the court is using it to refer to subject matter that is claimed at the level of an idea.

        1. same thing as the printed matter doctrine

          Ned,

          I am STILL waiting for your inte11ectually honest treatment of the exeptions to the judicial doctrine of printed matter and some meaningful rebuttal to my very direct and simple explanation to you using simple set theory.

      3. PatentBob, a claim to a device, having digital signal inputs and digital signal outputs where a circuit/programmed computer or the like encrypts the input and provides it to an output — well that should be patentable.

        But claiming the math alone?

        1. You do know that applied math is not the same as “Math$ or even maths, right Ned?

          Let’s use a ready analogy:

          Can you patent electrons?
          Can you patent protons?
          Can you patent neutrons?

          Ah now, can you patents configurations of these things?

      1. Ned,

        Styevens lost his majority writing position – and we both know why.

        Further the dissent dressed as a concurrence further lost ground in a subsequent decision dropping from 4 to 3.

        And yet, we continue to have act otherwise.

        Why is that?

    3. I object to 35 USC 101 being interpreted as saying something about abstractness, when it does not.

      I’m also not sure what the difference is between being abstract and being overly broad. If they are then same (and I think they are) then we have tools to deal with overly broad. They are 35 USC 102 and 103. I object to using 101 in their stead.

  6. ““anonymous loan shopping” is an unpatentable abstract idea.”

    Why? Other than a single human declared that it was. Only possible conclusion. There being no definition of “abstract idea”.

    The opinion is pornography, because I know it when I see it.

    1. Yup. This is why we need Congress to amend 101 to expressly prohibit patents that are primarily made used or sold in cyberspace.

      Fundamental differences between IP in meatspace and cyberspace exist. Patent protection works in the former, not the latter

      1. Ryan, how about reality. Reality: the US has the strongest IP in Cyberspace and has the strongest Cyberspace by about a factor of 10. All of this was built under strong IP for software.

        That is reality. Your nonsense is K Street propaganda that fires up the ignorant. Anyone, like me, that has worked in this field for many years knows that patents are what have made this country so great in software.

          1. What numbers?

            Could you also define what you mean by “software”? For instance, is the “software” that was recently sent to Tesla cars that allows those cars to park themselves when they couldn’t previously do so what you think of for “software”?

            link to cbsnews.com

            Or since it’s being added to an engine control unit and controls a car, it’s not “software”?

            I think the Supreme Court does everyone a disservice when they don’t clearly delineate their reasoning and their rules. For instance, is encryption performed by a single entity no longer patentable? Encryption, at some level, is just “math” applied to data. You take data in, you encrypt it, you get data out. It’s abstract at some level. Assuming an encryption scheme is “new” and “useful”, then why is a claim directed to performing encryption on a machine such as a smartphone not patentable under Alice? I don’t know about you, but I’d love to have all of my data I send be encrypted. It’s incredibly useful to me. Or is it patentable under Alice? It’s unclear, and reading Alice provides no clear guidance.

            1. PatentBob is really really really impressed by “smart cars”.

              Never mind that people have been using computers to control vehicles for half a century. Cars are c00l! PatentBob loves them so he’s going to keep bringing them up as if somehow it changes the discussion.

            2. The CBO report for one. Not to mention countless empirical studies from both economics and law professors.

              Software is easy to distinguish from hardware.

              Software is something that runs hardware but does not exist (as a ‘thing’) independently of the hardware.

              Hardware is a physical object that may or may not be acted on by software.

              1. Here in the domain of law we have this important concept called equivalence.

                That concept is NOT called “exactly equal” for a reason.

                Ryan, your logic is flawed because you want to address “exactly” equal” when you need to be addressing “equivalence.”

              2. Ryan, software is not easy to distinguish from hardware. Reason? Because I can take any part of hardware (almost) and make it software. And I can take any part of software and make it hardware.

                So, what you said is typical nonsense from people that are ignorant of the art field and the actual practice. I’ve written patent application for real consumer devices that are licensed for many millions. The problem is that any part of it except for generic sensors could be moved from hardware to software or visa-versa.
                That is reality boys and girls. The little horrible judicial activist can continue to spout nonsense that is not reality and get their way in court and Congress, but science and reality won’t change. Your warped little minds may, but not reality and science.

                1. Ryan also quips about still needing hardware to be able to use software – as opposed to some difference of having hardware without software…

                  This is error in multiple ways.

                  First, it is an implicit admission that software is in fact a machine component. Software is ONLY created for the utility of being a machine component. Show me “software” that is not so and I will show you someone who does not understand what software is.

                  Second, many machines without software CANNOT obtain any utility (other than perhaps as a paperweight or as a heat generator) – those utilities decidedly not the “intended” utility of the machine.

                  Third, the embraces the logical error of mistaking the “use of software” with software. Software is not “the use of software.” It can be readily recognized that due to limitation of language, it is far easier to understand software in terms of “action,” but there is still a very clear and real difference between the description in terms of action for a manufacture, and the different statutory category of actual “in use” (process).

                  Fourth, machines without software do NOT have the utility of machines with software. This point of FACT has been well established in many ways, from the Grand Hall experiment to In re Nazomi. Not a single anti-patent Belieber has overcome this fact.

                  1. Anon.

                    First, you are the one who claims software is a “machine component.” And so what if it is?

                    Second, nothing has utility unless it is used. The means of operating the invention, whether it be a human or source code, does not render the invention itself useless. This point is also irrelevant.

                    Third software is the use of hardware. More specifically it is one means of using hardware.

                    Fourth you repeated your second point.

                    Good stuff anon.

                  2. And so what if it is?

                    It then meets one of the two parts of 101.

                    You new here?

                    Second, nothing has utility unless it is used.

                    Please be aware that you are on a legal blog, with terms of art that have legal meanings. You are slipping into a “colloquialism” that shows a lack of understanding on basic principles – I suggest that you obtain some basic understanding and then come back and attempt your “battle” in this terrain. For all of your attempted “ontological” desires, you seem to lack a basic understanding of the context here.

                    Software is most definitely NOT “the use of” – you are imbibing in the very error that I am pointing out.

                    My fourth point is not a mere repeat – again, when you understand the terrain, you can pick up on the nuances.

                  3. Let me point out Prof – that this is one reason why the blight of Malcolm is unhealthy.

                    Clearly, we have people with a lack of understanding of the legal context involved in patent law. Malcolm should know better (having professed to being an attorney – of course, you know whether that is a falsehood or not).

                    And yet, Malcolm will “play” to the lack of understanding of patent law in his advocacy attempts on this blog, knowing full well how misleading that is.

                    You want a better “ecosystem” Prof?

                    Really?

                    Your “rules” are what you allow – and you have been allowing the Malcolm type of advocacy for nigh a decade.

                    If what you “want” is not congruent with what you persistently allow, please do not feign surprise that you have the “ecosystem” that you have.

                2. You mad lol?

                  You are also wrong. You can’t make hardware into software or vice versa.

                  You can make hardware run software. But you can’t make it into software.

                  It is impossible to make software into hardware because software is for all PRACTICAL purposes, immaterial.

                  You can have as much technical experience as you want, but your unwillingness to understand simple ontological distinctions is easy to see.

          2. Well I don’t know if Night Writer would agree but, I think most people with industry experience would agree that Adobe Systems, Inc. would be good example of a company that would not exist today but for software patents.

            1. Adobe Systems, Inc. would be good example of a company that would not exist today but for software patents.

              Don’t forget Pets.com! They sold pet food. Over the Internet.

              If only the PTO had granted them more patents and made them easier to enforce! Can you imagine how easy it would buy pet food online in that case? It’d be like some kind of incredible miracle, even more astonishing than the technology that keeps the ad right in your face when you try to scroll past it.

        1. Nobody ever said a little protectionism couldn’t make a sector strong NWPA. Protectionism could most likely, right at this very moment, bring back manufacturing to the US in a strong roaring way.

          The issue is not that protectionism doesn’t necessarily lead to strong sectors. The issue is what sort of protectionism is being engaged in, and what is the overall effect of the protectionism?

          1. The issue is what sort of protectionism is being engaged in, and what is the overall effect of the protectionism?

            And maybe there’s some other areas vastly more deserving of the sort of “protectionism” that patents provide.

            Nah. What am I saying? A website that allows NWPA to confirm that his mommy’s face really is his mommy’s face and not just someone pretending to be his mommy probably is the most important thing ever.

            Infrastructure? That’s iron age stuff. Let the Amish figure it out.

      2. Ryan,

        I don’t nothing that you have the “in cyberspace” thing quite right.

        The distinction, based properly in the utility aspect of 101, is directly related to the proper understanding that software is not the thought of software.

        Even your “in cyberspace” deals with being functionally related to your “meatspace.”

        Far far too often this aspect of the law is (willfully) ig nored on these boards, rendering views that are not inte11ectually honest, nor helpful to any meaningful dialogue.

        1. anon. Are you talking about the law as currently written? If so, then you are making a blatantly obvious point.

          Of course the law, as written and interpreted currently, makes no meaningful distinction between cyberspace and meatspace. My point is that this is the implicit policy motivation behind 101.

          Congress should just codify it already and end the confusion.

          1. Ryan, there is no meaningful way to make a distinction between software and hardware. Anyone that knows the field knows that. All software is really hardware and all CPUs are really simulators of other hardware.

            That is just reality. I can make a special purpose computer for any software system. It will be more expensive, but much faster. Again, K Street now owns the paper headlines.

            1. NW there is no meaningful way to make a distinction between software and hardware.

              ROTFLMAO

              Meet the Super Serious People who think know everything about computers. You gotta love the conclusory b.s. Has there ever been a time in the miserable history of US software patenting when its defenders were not willing to say anything, no matter how ridiculous, if they thought it served their purposes.

              Yes, folks, you can’t distinguish between hardware and software. Impossible! You heard it here first and you’ll keep hearing it probably forever, years after the issue was laughed out of the courtrooms.

                1. Hardware with new software has new utility it did not previously have.

                  A book with instructions on how to apply logic to a problem has new utility compared to the same book with blank pages.

                  And guess what? The former isn’t eligible for patenting because the prior art includes the latter.

                  See how that works? Gosh I hope so.

                  1. Nice dust kicking.

                    You want to try again with measuring cups or magic hat bands or treat the “functionally related” aspect as it is done in reality?

                    You keep on trying to NOT portray the exceptions to the judicial doctrine of printed matter in the proper way – in the way that you have volunteered an admission as to knowing and understanding – this is HIGHLY unethical of you and yet the good professor simply continuously turns a blind eye to this utter nonsense of yours.

                    Hey Prof – guess what “rule” of yours I see here !

                    “See how that works? Gosh I hope so.”

                  2. Malcolm, if that is your best argument, you are in deep Kim Chi.

                    A computer that has software instructions for a process actually performs the process.

                    A paper book with ink on its pages spelling out those exact same instructions does not perform the process.

                    See how that works? Gosh I hope so.

                2. svg: I agree that software is really hardware is a bit of an overstatement.

                  More accurately, it’s simply wrong on its face and everybody knows it.

                3. svg,

                  NO ONE (who is trying to have an inte11ectually honest conversation) is using “is” in the sense of “exactly the same as.”

                  The law just does not require “exactly the same as.”

                  Unfortunately, the “ec(h)osystem” here is so rife with those pushing a certain propaganda that the ad nauseum ad infinitum C R P is leaving its stain all over the place.

            2. “All software is really hardware”

              Precisely. The only thing is, we give you guys special permissions in the claiming of that “hardware” instead of going hard on you like other hardware fields. All in the name of imaginary people, and ensuring that you can get your entitlement under the entitlement program.

              1. and 6 “chimes in” with his word play on “entitlement” neglecting of course the basic deal of Quid Pro Quo and why that makes patents different than the (oh-NOT-so-polite) implication that he wishes to make.

                Great job Prof.

          2. It is not Congress that is causing that “confusion.”

            It is not even confusing if you understand the actual policy involved.

            It is only when you attempt to make a “philosophical” opinionated distinction NOT supported by the fundamental principles of law (and facts) to try to deny protection to a particular art that you induce “confusion.”

            And yes, this ultra vires activity is “blatantly obvious,” as is the level of inte11ectual DIShonesty in discussing law and facts that so often come from the anti’s.

            Hey, I do “get” the different philosophy – I really do. My issue though is the blatantly poor Means being attempted to get to that different Ends.

              1. The point Ryan is most definitely NOT “nothing.”

                You want a change in law?

                I have no problem with such a change being discussed in inte11ectually honest ways.

                Look around you at this ecosystem – That’s just not happening.

                You need to pay better attention.

                  1. Ryan,

                    Read what several supposed lawyers actually write – as if the law right now were something different.

                    I have been exceedingly clear on my position, my vantage point.

                    No. I do not need to “do a better job” – as I am not the one misrepresenting what the law IS.

                  2. Ryan,

                    You employ a a fallacy.

                    I never stated the law is because I said it is – never claimed a “monopoly”.

                    I say what the law is because that is what the law is.

                    You think differently? Fine – provide a better (and better grounded ) idea of what the law IS.

                    You have not done this – because you cannot do this.

                    You have now danced around “what you want the law to be,” and “not what the law is, while neglecting the actual points that I have presented. You seem unable – or unwilling to hew to the points presented. You have no answer, because the answer of what IS does not match what you want it to be and you are unwilling to recognize that what you want would in fact need legislative change.

                    As I said, I “get” what you want the law to be. I really do. But in the here and now, your “wants” just are not pertinent to what IS.

      3. Ryan, are you saying that ideas that people come up with for commercialization in cyberspace should be in the public domain, so I can steal Google software, and Oracle trademarks and Apple trade secrets with no liability?

        Or are those types of IP legitimate in cyberspace, but it is only patents that do not fit? If that is your contention, please explain why you come to that conclusion, so that someone who has always thought that the founders had good idea in allowing for patents can see why they don’t fit in cyberspace?

        1. silicon valley: Ryan, are you saying that ideas that people come up with for commercialization in cyberspace should be in the public domain, so I can steal Google software, and Oracle trademarks and Apple trade secrets with no liability?

          No, I think he’s saying that he should be able walk into your house, flush your cat down the t 0ilet, turn off the fridge and steal your Princess Leia costume with impunity.

          Geebus, the defenders of software patents are truly a joke.

        2. The problem is that you can infringe a patent in cyberspace without notice merely by using a computer.

          Copyrights get designated with a little (c) and trade secrets are…well…. secret. You would need to know the secret (which wouldn’t be online) to misappropriate it.

          In the past you actually needed to buy or make a patented article; Or perform a process using raw materials and process equipment.

          It isn’t good policy to make merely using the Internet an act of infringement.

          Copyrights can easily be enforced online because the act of copying can be tracked.

          Patents are more complex because a variety of different “acts” other than the act of copying are prohibited.

          Trying to shop online–infringer. Exchange currency–infringer. Watch Netflix–infringer. Click an ad… I could go on.

          1. Ryan your statement “It isn’t good policy to make merely using the Internet an act of infringement.” is a conclusion, but not a statement of facts or logic.

            The surprise infringement situations that you lament can happen on the internet also happen in meatspace, as you call it.

            1. The surprise infringement situations that you lament can happen on the internet also happen in meatspace, as you call it.

              I’m not aware of a single non-“cyberspace” patent ever being successfully enforced against someone whose only act was to type instructions into or onto an old article.

              Are you of such an example? If so, please share.

              1. Where in the statute does it list “ignorance” as an affirmative defense to infringement?

                A similar situation happens all the time in the chemical arts in laboratory setting – researches mixing two old chemicals together. MM you should know this.

          2. Ryan,

            You are way behind the times if you think that anything without that little circle C is fair game for copying.

            As for “mere use” – that “mere use” of ANYTHING patented is still called infringement. Your “argument” cannot be constrained just to your little “pet” area. It is an anti-patent argument and nothing more.

      1. Ned,

        Once again your dishonesty at work.

        Why are you pretending that MoT is anything but a clue?

        Even your beloved Supreme Court was 9-0 saying so.

    2. ““anonymous loan shopping” is an unpatentable abstract idea.”

      Why? Other than a single human declared that it was. Only possible conclusion.

      Or you could read the decision and try to understand it. I read it. I understood it. It wasn’t particularly difficult.

      Here’s how it goes in a nutshell. Shopping is old. Shopping for loans is old. Shopping for loans anonymously old. The concept of using a computer to mediate any kind of transaction is really really really old. What else is in the claim? Layers of abstract junk. It doesn’t matter if those layers of abstract junk are new or old. Those layers are ineligible subject matter. Just as the super useful text in a non-obvious contract doesn’t transform the “piece of paper” comprising that contract into eligible subject matter, the abstractions here are also blocked out of the patent system for similarly great reasons.

      Hope that helps. Or you can keep sticking your head in the sand and pretending that this is oh-so-difficult.

      1. Electrons are like really really old.
        Protons are like really really old.
        Neutrons are like really really old.

        Oh wait, you want to talk about configurations of these things….

        Sort of like the difference between three resistors in series versus three resistors in parallel.

        Your “logic” boils down to “but it’s just three resistors and resistors are old

  7. On a related-but-not-related note, here’s a question for you all:

    The invention, if any, which Butler made was an improvement in what he styles in his specifications the “chuck” and in his claim a “coupling member.” It is not denied that multi-jawed chucks had been used in industry and as couplers in lubricating apparatus. Butler may have devised a patentable improvement in such a chuck in the respect that the multiple jaws in his device are closed over the nipple by the pressure of the grease, but we think he did no more than this. As we said of Gullborg in the Rogers case, having hit upon this improvement he did not patent it as such but attempted to claim it in combination with other old elements which performed no new function in his claimed combination. The patent is therefore void as claiming more than the applicant invented. The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention. And the improvement of one part of an old combination gives no right to claim that improvement in combination with other old parts which perform no new function in the combination.

    – Lincoln Engineering Co. v. Stewart-Warner Corp., 303 US 545 – Supreme Court 1938

    Question 1 – Does this rule still apply? Can one violate 112(b) by including within the claim limitations unchanged by the invention?

    Question 2 – Do you see the parallel to 101? Notice how the court identifies what the “real” invention is, and proceeds to toss the other limitations. The difference is that Butler had a novel thing at the heart of the combination. What if one had an ancient, fundamental, or abstract thing at the heart of their combination?

    1. As an application of the principle in Question 1, consider the following: A person invents a car battery that is improved by lasting 100% longer but otherwise is functionally unchanged.

      Claim 1. A manufacture comprising: (elements of the battery and how they are put together)

      Claim 2. A system comprising: (elements of the battery and how they are put together) and a car; wherein the battery powers the car.

      Absent some sort of statement that the car would draw power from this battery differently than previous batteries, is Claim 2 subject to a 112(b) rejection? Can the office force the applicant to remove the car element and the wherein clause from the system?

      Now in fact I see Claim 2s all the time, but that’s because the office traditionally hasnt had its non-102/103 rejections together. The plain meaning of 112(b) would certainly seem to empower the office to demand the removal of the limitation – it’s not particularly pointing out and distinctly claiming the invention (the new battery) to put it in a conventional system to do what batteries conventionally do – power cars. That seems like it is intentionally obfuscating the invention with what everyone knows to be conventional act.

      1. Since when does the examiner get to decide what the invention is? You might want to read 112(b) again – it clearly refers to what the inventor regards as his invention.

        The examiner’s job with respect to 112(b) is to (1) ensure that the claims’ boundaries are sufficiently clear and specific, and (2) ensure that the claims don’t contradict any explicit statements in the specification as to what the invention is.

        Ned cites In re Bernhart; I assume he’s talking about the 1969 CCPA case. I’m not sure what Ned is trying to say (since the case overturned the 112(b) rejections), but the court in that case clearly and convincingly rejects your argument. As the court pointed out, adding those additional “conventional” features makes the claims narrower and thus more particular – so how can it be that they fail to meet the “particularly” requirement of 112(b)?

        1. DanH, 112(b) is the statute.

          Regarding particularity:

          We all know the game being played here, Dan. If I improve the carburetor, claiming it in combo with the car enlarges the royalty base. But the invention is the carburetor, not the car.

          As to “regarding,” it cannot erase the requirement for particularity. That is what Bernhart effectively did — overrule the Supreme Court one more time.

          1. We all know the game being played here, Dan. If I improve the carburetor, claiming it in combo with the car enlarges the royalty base. But the invention is the carburetor, not the car.

            Right, presumably the principle is that “since I have a new X I can repatent all the things traditionally done with the class of X” for example – my new battery (or carburetor in Ned’s example) needs to be installed, needs to be serviced, etc. Are you suggesting DanH that I can claim

            Claim 3 – A conventional method of servicing car batteries, wherein the particular battery being serviced is my new battery.

            Now if someone infringes by installing your battery into the car, they’re an infringer of the battery claim. But Claim 3 also attaches liability to the mechanic’s shop for doing nothing more than a conventional act which might a) also be patented by another or b) dedicated to the public.

            1. Ned’s complaint is about how to measure damages, not 112(b).

              RG, nice try. No, I’m not suggesting that you can have your claim 3, but that’s because of how the claim is properly constructed, not because of 112(b). A recitation of the target of a method in a method claim isn’t limiting if it is nothing more than the intended use of the method. See, e.g., Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003).

              1. I’m not trying to play gotcha here, I’m serious.

                I do wholeheartedly disagree about what Minton says and your conclusion though. Minton doesn’t say that a recitation of a “target” (i.e. subject) of a method is given no weight. Minton says that recitation of a *result* of using a method is given no weight.

                Just a few months ago this blog discussed Ariosa. The invention in Ariosa was the command to apply a conventional dna test to a different subject (testing the mother’s blood rather than the fetus for dna because testing the fetus was dangerous). The court continually pointed out how useful and non-obvious it was, which would not be possible if the subject of the test was given no weight.

                But fine, I will change the hypo to avoid your complaint just so we can get at the underlying issue. A invents a new arrow.

                Claim 1 – My new arrow

                Claim 2 – a system comprising my new arrow and a conventional bow

                Claim 3 – shooting my new arrow in the conventional manner from the conventional bow

                B builds the new arrow and brings it to an arrow range. C, with knowledge of the patent, loans his bow to B to let him shoot the arrow. Everyone agrees that C never used the arrow, so Claim 1 liability does not attach to C. A sues C under Claims 2 and 3. Is it your argument that liability should attach to C even though the bow C was using was in the public domain and the act of shooting an arrow with a bow is ancient?

        2. As the court pointed out, adding those additional “conventional” features makes the claims narrower and thus more particular – so how can it be that they fail to meet the “particularly” requirement of 112(b)?

          Making the claims narrower does not necessarily more particularly define the invention because the limitations have nothing to do with the advancement contributed by the inventor.

          Let’s make it extreme – The applicant states he invents a new song. Applicant states it is conventional to annotate the song on a metal roller, it is conventional to place that metal roller within a player piano, and it is conventional to have the player piano interpret the metal roller to play the music.

          Applicant claims in Claim 1 his new song. Applicant claims in Claim 2 the conventional relationships of a player piano playing the roller which is a conventional annotation of the new song.

          Ignore utility under 101 for the moment. Claims 1 and 2 pass obviousness because there is a new song. Claims 1 and 2 pass enablement because the acts performed in Claim 2 are all conventionally achievable acts. Claims 1 certainly passes 112b. But does Claim 2, especially in light of Claim 1? The only difference between Claims 1 and 2 is to use admittedly non-new acts to place the novelty into an admittedly non-new context.

          The examiner’s job with respect to 112(b) is to (1) ensure that the claims’ boundaries are sufficiently clear and specific, and (2) ensure that the claims don’t contradict any explicit statements in the specification as to what the invention is.

          Well I take issue with your (2) there, but lets assume your facts – the applicant states that what he invented is the new song, and that he need not enable the act of transferring it to the player piano because that act is conventional.

          Since when does the examiner get to decide what the invention is? You might want to read 112(b) again – it clearly refers to what the inventor regards as his invention.

          Well I suppose that the examiner could look at the specification and say “you haven’t enabled transferring this song to the player piano” and in response the applicant would have to admit that he doesn’t need to enable it because the art could already do it (i.e. he didn’t invent that). Plus you seem to admit the office can issue a 112b rejection when you say the examiners job is to ensure the claims’ boundaries are sufficiently clear AND SPECIFIC, which necessarily requires the office to decide on its own what the contribution is.

          Is your argument here that absent a statement by the inventor what the invention is or some other vaguery that the office has no power under 112b to demand the applicant modify scope? How do you square that with the Lincoln holding?

          1. Making the claims narrower does not necessarily more particularly define the invention because the limitations have nothing to do with the advancement contributed by the inventor.

            Where do you get your definition of “particularly”? I disagree with your premise in any case – the car with the improved battery is an improved car. The relative importance of the improved battery to the car as a whole is a separate discussion, and may well bear on damages, but I don’t see how it has anything to do with 112(b).

            Well I take issue with your (2) there, but lets assume your facts – the applicant states that what he invented is the new song, and that he need not enable the act of transferring it to the player piano because that act is conventional.

            My facts? I have no idea what you’re talking about. In any case, I don’t see anything to be gained by confusing the issue with a discussion of ineligible subject matter.

            Plus you seem to admit the office can issue a 112b rejection when you say the examiners job is to ensure the claims’ boundaries are sufficiently clear AND SPECIFIC, which necessarily requires the office to decide on its own what the contribution is.

            Of course the office can issue a 112(b) rejection, under appropriate circumstances. But you’ve produced another non sequitur here. Determining whether the boundaries are sufficiently specific has nothing to do with what the “inventive contribution” is. The question instead is whether the claim gives a sufficiently clear indication of which things (or processes) fall within the boundaries of the claim and which don’t. There are dozens of cases that cover this, plus you’ve got a pretty well written manual that covers this stuff, written just for you. I don’t understand why you think it’s necessary to go and make up new rules on your own.

            Is your argument here that absent a statement by the inventor what the invention is or some other vaguery that the office has no power under 112b to demand the applicant modify scope? How do you square that with the Lincoln holding?

            Yes, pretty much. And I don’t. The Lincoln holding is quite clearly nonsensical. Consider the part you quoted: “having hit upon this improvement he did not patent it as such but attempted to claim it in combination with other old elements which performed no new function in his claimed combination. The patent is therefore void as claiming more than the applicant invented.” The court is obviously wrong, as the CCPA noted in In re Bernhart: by adding the old elements, the inventor actually claimed a scope that was less than what he invented. In any case, as the CCPA also noted, if that’s the rule you want then you’re going to have to find some other statute to back it up, because that rule certainly doesn’t appear to flow from the plain language of 112(b).

            1. There is an intereting issue here, DanH, and probably one that a court could find a foothold for somewhere in the statutes or case law.

              A clever scrivener could very easily take his innovation and bury it inside a claim several pages long, where that claim recites hundreds of “limitations” that aren’t really limitations at all. In other words, this 1ooo – 10,000 word claim will capture virtually every practitioner of the bona fide “innovation” as a practical matter (maybe excluding infringers in space or in the center of the earth) but 99 – 99.9% of those words apply to everyone.

              Seems to me the PTO should be able to simply say, “For the public’s sake, we’re not going to let you get away with this kind of crxp. We read through 900 words and we didn’t see anything new. Show us what your innovation is or we’re throwing this claim in the trash.”

              Why not?

              1. That’s a different scenario than the improved battery in a car scenario.

                In your scenario, I think the necessary tools are already there, and 112(b) is probably one of them. If there is a bunch of fluff that is not really limiting, then the claim is not clear. Plus, there is plenty of case law that explains that non-limiting limitations can be ignored. My experience has been that many examiners have trouble understanding that case law, but it’s there.

                1. DanH,

                  For shame – you want to have a proper Means.

                  How dare you crash the party of “The Ends Justify The Means.”

                2. If there is a bunch of fluff that is not really limiting, then the claim is not clear. Plus, there is plenty of case law that explains that non-limiting limitations can be ignored.

                  Limiting something to every known use is limiting, as it excludes unknown uses. Particularly deliniating what those known uses are is just as limiting and more clear than the phrase “known uses”.

            2. I disagree with your premise in any case – the car with the improved battery is an improved car.

              How so? The system (car + battery) is an improved system, but the car itself is the exact same machine regardless of whether it has a conventional battery or a new battery in it because the power from the battery is being used in exactly the same way.

              Determining whether the boundaries are sufficiently specific has nothing to do with what the “inventive contribution” is.

              What do you think cases like Nautilus or General Electric v. Wabash or Halliburton are about? Are you suggesting that so long as 112(b) is clear about the scope that the sole manner of determining if that scope is too broad is under 112(a)?

              There are dozens of cases that cover this, plus you’ve got a pretty well written manual that covers this stuff, written just for you. I don’t understand why you think it’s necessary to go and make up new rules on your own.

              Here’s MPEP 2172 on 112(b) – “Evidence that shows that a claim does not correspond in scope with that which an inventor regards as an inventor’s invention may be found, for example, in contentions or admissions contained in briefs or remarks filed by applicant “

              So I ask again – Let’s say that Applicant claims “My new widget being used by a conventional method” and I issue a 112(a) rejection and say “You didn’t teach how to perform the method” and he responds “I do not need to teach how to perform the method, that method was well known to the art at the time of filing”

              Do I or do I not have an admission that the method, apart from the widget (which he will undoubtably have been singly claimed in a manufacture claim), was not invented by this inventor?

              The court is obviously wrong, as the CCPA noted in In re Bernhart: by adding the old elements, the inventor actually claimed a scope that was less than what he invented.

              First, the CCPA can’t overrule the Supreme Court. It doesn’t matter whether they find it nonsensical, they’re an inferior court. Second, its not nonsensical because the Lincoln case is a perfect example – The defendant was not an infringer of the novel widget, and if the claim was limited to the novel widget there would have been no liability. The infringer was a contributory infringer of the claimed system because they dealt in the previously-existing and unpatented elements of the system. By including the conventional limitations in a system the patentee was able to create liability where it didn’t exist. I’ve given two examples of this already – the car battery that someone performs a conventional service method on and the bow owner who completes a bow and arrow system.

              Ned has advanced a similar quantitative difference – If you patent a battery and put it in a car, a claim to the battery attaches the value of the battery, but a system claim which includes the car attaches the value of the car.

      1. Gustafson isn’t this issue. Gustafson dealt with aggregation, which could be an indefiniteness issue, but it would be the opposite of what I’m talking about.

        Say the spec states that A and B and C when brought together cause each to function 5x better than they do alone. Applicant writes a system claim directed to ABC. That’s an aggregation issue – it’s either obvious because it’s just claiming three things without a limitation that deals with their interrelationship, or it’s a 112 issue because it’s missing the interrelationship limitation and fails to particularly claim the invention.

        My question is the opposite – not that you’re missing a limitation but that you have too many. Suppose I invent a new arrow. I describe the arrow and claim it, fine. But then assume I have a claim to my new arrow being shot out of a bow in the standard way that people have shot arrows out of bows for centuries. Is a claim to the conventional shooting of the new arrow overbroad of what I invented?

        Also, even if your argument were true, under what basis could the CCPA overrule the Supremes from Lincoln Engineering? The ’52 Act brought in obviousness but indefiniteness was largely unchanged.

        Clarification please.

        1. RG: then assume I have a claim to my new arrow being shot out of a bow in the standard way that people have shot arrows out of bows for centuries. Is a claim to the conventional shooting of the new arrow overbroad of what I invented?

          It’s not “overbroad” but if you spend 1,500 words in the claim describing the prior art steps of shooting that arrow I think there’s a very good argument to be made that you aren’t “particularly” describing your invention in a manner that would satisfy 112.

          112 exists for a reason. It exists so the PTO can efficiently search the relevant prior art and not waste time with junk the applicant has backloaded into the claim, and likewise it exists so the public doesn’t have to wonder what the heck was actually innovated.

          But people in the computer-related arts will cry about this and we all know why.

          1. It’s not “overbroad”

            That’s a conclusion, I want to know what the logic to get there is. My argument is: the act of firing an arrow is known. The new arrow is fired in the exact same way. Therefore the combination (i.e. the interaction between bow and arrow) was not invented by this inventor. The particular arrow being shot was, but the interaction between the arrow and the bow is old, and therefore a claim that includes the interaction (especially given that there is a different claim drawn solely to the arrow) was not the subject of this inventor’s act.

            Here’s a similar related question:

            Claim 1 – a novel and non-obvious arrow

            Claim 2 – a system that contains 100 elements, wherein 99 of them are conventional and the last element is the non-obvious arrow; and further the non-obvious arrow is used in the exact same way that a conventional arrow would be used, to achieve (in this context) the exact same effect a conventional arrow would achieve.

            Is Claim 2 NECESSARILY non-obvious in light of Claim 1 being non-obvious, or can it still be obvious? What is the test for obviousness again? Can the test for obvious be met even if some subsection of the claim is non-obvious?

            I’d submit to you that Claim 2 can be obvious, and its for the exact same reason that Claim 2 is subject to a 112(b) rejection – the addition of so much conventional matter has hidden a distinction which, standing alone, would be pronounced.

            You’ve used similar logic before – shining an old flashlight on a new subject widget. Its an attempt to withdraw the flashlight use (which has passed to the public) into the exclusive use of someone who invented the widget.

    2. Random, it applies, but what statute? Therein lies the problem with aggregation.

      If 103, then claim as a whole will prevent summary disposition.

      112(b) seems right.

    3. As noted in the prior blog, this is the traditional and logical “aggregation” or a “a mere parts list” claim rejection, which the PTO for some reason several years ago decided to stop using. [One result is confusion in infringement damages calculations.]
      A typical criticism of the elimination of this rejection is this imaginary claim:
      I claim an automobile comprising parts A, B, C. D, E and a body, wherein the interior of said automobile body has a cup holder with alleged novel features X, Y. Z.

      1. NewbieExaminer, in a post no longer there, also called this aggregation. I don’t see why that is? My complaint is not that it’s a mere parts list – that certainly can have problems such as not enabling the interrelationship or being an obvious combination. My complaint is that once one has established novelty/non-obviousness to a sub-part (your cup holder) they use that cup holder in a conventional system to do what other cup holders do.

        Aggregation would seem to be fixed by placing a linking phrase between A-E and XYZ (such as, wherein the cup holder is used by the automobile driver to hold cups). Now you have drawn a link between the two sets and it’s not a mere parts list. My problem is that that link is entirely conventional, everyone knows its entirely conventional, and that link and conventional elements A-E shouldn’t be allowed to be repatented especially considering that you probably have a different claim directed solely to XYZ (the novel thing you did invent).

        I’ve always considered “aggregation” (as I understand it) to be an obviousness issue (i.e. putting pre-existing things together absent a limitation to make them work differently is per se obvious) or an enablement issue (i.e. list parts, claim result, fail to limit claim to the posited manner that enables the result). But I certainly haven’t studied the issue much. Where am I wrong on this?

        1. Random: Combination A + B + C is known. The invention lies in improving C.

          In Lincoln Engineering, the lower courts had found a seller of A to be a contributory infringer of a combination patent to A + B + C, a known combination, where the improvement was in C. The Supreme Court held the claim invalid as an attempt to extent the monoploy:

          “We conclude that Butler’s effort, by the use of a combination claim, to extend the monopoly of his invention of an improved form of chuck or coupler to old parts or elements having no new function when operated in connection with the coupler renders the claim void.”

          Why is this not relevant today even in view of 271(c)? If one keeps adding more and more conventional elements, the claim gets narrower from one point of view, but it also expands the coverage of the patent to subject matter well beyond the invention and this does cause a lot of problems regarding a proper royalty rate and damages. Trust me.

    4. Wow what a cool case. Thanks for finding that. Isn’t this exactly the – gist or ‘heart of the invention’ that was specifically overturned in the ’52 Act? Yes, the 101 test has the same failing IMHO – identify strawman (attract idea) and strike down. Really just the same ipse dixit reasoning overturned in the ’52 Act now back again under the guise of 101.

      1. iwt Yes, the 101 test has the same failing IMHO – identify strawman (attract idea)

        Ineligible abstractions aren’t “strawmen”.

        Maybe you forgot what Prometheus was trying to do with its claim?

        Of course you did.

      2. “cool cases” from the anti-patent Supreme era of the ’30’s are automatically suspect for a number of reasons.

        Chief among them is that such decisions are what prompted Congress to wake up and write the Act of 1952.

        Here’s to history continuing to repeat and having Congress rebuff this Court.

      3. Isn’t this exactly the – gist or ‘heart of the invention’ that was specifically overturned in the ’52 Act?

        I’m not aware of that being an intent of the ’52 act. In fact that only use of heart of the invention in the ’52 act commentary is used approvingly with respect to 35 USC 271.

        Are you suggesting the concern voiced by the Supreme Court is not a bug but a feature – in other words, Congress intended to allow someone to add conventional limitations into a system claim so that an inventor could capture subject matter previously dedicated to the public?

        1. I’m not aware of that being an intent

          Your lack of awareness is a “you” problem.

          This has been discussed plenty of times with references aplenty given.

          Pay attention.

          Are you suggesting the concern voiced by the Supreme Court is not a bug but a feature –

          I am suggesting that you understand the Act of 1952.
          I am suggesting that you understand history on how anti-patent the Court was prior to that time and why Congress reacted against that Court.

          Of course, if you are insistent on “not being aware,” there is little good in continuing to ask you to understand such history and such facts. Again – this is a “you” problem.

  8. “…well after the court appointed deadline.” Courts appoint people to various tasks – special masters, guardians, etc. But courts don’t appoint deadlines, they *set* deadlines.

    Otherwise a good summary.

  9. This looks like another poorly drafted claim.

    Why is it that every litigated 101-ized claim looks poorly drafted? Is this how these things were actually taught to be written?

    1. Alex, the claim seems typical — simply claiming results. The claim never actually describes what actually has to be done to achieve the results.

      I first saw a claim like this circa 1990 in the disk drive field. Companies were getting claims to disk drives of a particular size, track density, or number of tracks without actually specifying in the claim what structure or steps was able to achieve the new result. During prosecution the claims were distinguished over the prior art in that the prior art disk drives did not have the particular size or track density or number tracks or the like. These “form factor” claims flummoxed me and many others. But now they are common. The PTO never seemed understand the issue with these kind of claims.

      Personally I think they are all indefinite, but they seem to be authorized by 112(f), and are construed to cover the corresponding structure, steps, or materials described the specification and equivalents.

      1. Ned Heller: The claim never actually describes what actually has to be done to achieve the results.

        You just have to build that “grading module”, man. With rules. Don’t forget the rules!

        Rules are super important, especially in new computer-related contexts where nobody ever expects people to use them. Wait and see.

        1. MM, the wisdom of the Supreme Court in Halliburton is being forever vindicated. All these claims to results are indefinite even if they are construed to cover whatever means or steps disclosed that might achieve the claimed result.

          1. Vindicated?

            An abbrogated case being “brought back to life” after Congress reacted against an anti-patent Court is NOT a cause for celebration, Mr.-I-want-respect-for-separation-of-powers-but-only-against-the-executive-branch-never-mind-the-judicial-branch-stepping-into-the-legislative-powers-area.

            Can you smell your hypocrisy, Ned?

    2. Alex, is it really the poorly drafted claim or is it the poorly nominated judges. I’d say the latter. (And, Ned, the nonsense you and MM peddle regarding 101 is shameful. Seriously? Music and software are the same. Sure. Why don’t you just use your radio to drive your car?)

      The facts are: a machine that processes information. It takes time, space, and energy. Conservation of information is the most important law in physics. The machines are transforming information. That is the reality of the science.

      The nonsense you guys spout is just that. It is like arguing with someone that says a woman is a witch. No science. No logic. The judges should be ashamed of themselves.

      (In answer to a question below about why I bring money into the mix, well, because Google spends more money than any other corporation in lobbying the President and Congress and Google doesn’t want patents. Google vetted every Fed. Cir. judge after O’Malley –you can see the result of anti-patent science illiterate hacks. Google also vetted and approved Lee. So, you see, my friend, these people were bought and paid for by Google. They aren’t taking kick-backs now, but their twisted beliefs on patents were selected for and the likelihood of them educating themselves at this late point in their lives is slim to none.)

      1. >(In answer to a question below about why I bring money into the mix, well, because Google spends more money than any other corporation in lobbying the President and Congress and Google doesn’t want patents. Google vetted every Fed. Cir. judge after O’Malley –you can see the result of anti-patent science illiterate hacks. Google also vetted and approved Lee. So, you see, my friend, these people were bought and paid for by Google. They aren’t taking kick-backs now, but their twisted beliefs on patents were selected for and the likelihood of them educating themselves at this late point in their lives is slim to none.)

        I mean, this is so effing stupid. One could just as likely argue that patent attorneys, like yourself, want to keep the status quo in order to keep patent filings up/patents getting issued because you get fees, and you could care less whether ineligible patents get issued (and some issued patents *will* be ineligible, and many are not eligible solely because of §101, but also §102/103, but again, attorneys know patent examiners don’t get enough time, so ineligible patents unfortunately do slip through), because ineligible patents will ensure more litigation, etc.

        Also, one could argue patent attorneys could care less whether the patent system promotes the progress of arts and sciences; you guys just want high numbers of applications in order to collect fees on them.

        Just quit with the paranoia, because patent attorneys likely have a financial incentive to keep the system the way it is.

        1. >(In answer to a question below about why I bring money into the mix, well, because Google spends more money than any other corporation in lobbying the President and Congress and Google doesn’t want patents. Google vetted every Fed. Cir. judge after O’Malley –you can see the result of anti-patent science illiterate hacks. Google also vetted and approved Lee. So, you see, my friend, these people were bought and paid for by Google. They aren’t taking kick-backs now, but their twisted beliefs on patents were selected for and the likelihood of them educating themselves at this late point in their lives is slim to none.)

          One could just as likely argue that patent attorneys, like yourself, want to keep the status quo in order to keep patent filings up/patents getting issued because you get fees, and you could care less whether ineligible patents get issued (and some issued patents *will* be ineligible, and many are not eligible solely because of §101, but also §102/103, but again, attorneys know patent examiners don’t get enough time, so ineligible patents unfortunately do slip through), because ineligible patents will ensure more litigation, etc.

          Also, one could argue patent attorneys could care less whether the patent system promotes the progress of arts and sciences; you guys just want high numbers of applications in order to collect fees on them.

          Just quit with the paranoia, because patent attorneys likely have a financial incentive to keep the system the way it is.

          Reposted because moderation.

  10. As of the time I’m writing this, there are 27 comments, of which 9 are MM’s. That’s 33% of the comments from one person. I thought there was a rule against people posting too much too quickly?

    1. It’s not the quantity, but the (lack of) quality.

      What part of his class-related-struggle “G-g-grifters” rant is new or simply not opinion/philosophy based?

      (hint: none)

      1. his class-related-struggle

        The worst thing ever!

        Better that we all pretend that there’s a microscopic class of sooper dooper important but otherwise impoverished geniuses who require absurdly broad patents and a draconian enforcement regime to survive. Without them, we’ll be living in caves! Because “Big Corp doesn’t innovate.”

        Nothing “class-related” about that story line. Nope. And it’s all true.

        Sure it is.

        1. WOW did you miss the point there.

          You attempted to spin that a full 360 and Still talk about your class divides.

          Here’s an idea.

          Talk about the law.

          Leave out your political philosophy/opinion/fantasies.

          1. Here’s an idea.

            Talk about the law.

            Here’s an idea: tell it to PB, you ridiculous hypocrite. I’m just responding to the non-legal baloney that you two wrote. Too hard to follow all this? Learn to read.

  11. Wonderful, the Federal Circuit now says we can dispense with having any factual record in resolving patent-eligibility under 35 USC 101. How in the name of the “rule of law” does that comply with “due process” under the 5th Amendment?

    1. EG: the Federal Circuit now says we can dispense with having any factual record in resolving patent-eligibility under 35 USC 101

      That’s not what the Federal Circuit said. They specifically pointed out that the claims and the specification — in the record and discussed by the district court judge — provided more than sufficient facts to be relied upon in this instance.

      Also, the “expert” testimony offered by the patentee failed to address the eligilbity problems. That was also in the record. The CAFC reminded everyone again that you can’t create an SJ-defeating factual dispute merely by presenting the testimony of some paid expert who says “I disagree!”.

      1. MM, perhaps we need to point out to EG that there was no dispute of fact that the computer implement part of the claim was generic.

        If X is non statutory and Y statutory, the claim is eligible if invention lies in Y or if X is applied to improve Y. If there is no dispute on the Y or the application of X to Y to improve Y, then any factual disputes about X are irrelevant.

        1. Ned,

          What part of a new molecule configured fully from “generic” electrons, protons and neutrons would you have trouble with if the exact same logic you are attempting to use with configurations of computer elements was applied in a different art field?

          1. “anon” What part of a new molecule configured fully from “generic” electrons, protons and neutrons would you have trouble with if the exact same logic you are attempting to use with configurations of computer elements was applied in a different art field?

            Meanwhile EG remains corrected. But “anon” is a super serious person and all about the “content.” Sure he is.

            1. Malcolm/Ned,

              Sorry but you stand “corrected” for (again) missing my point about the Federal Circuit disregarding the factual record. Or did you forget what Dennis noted above:

              “The appellate panel, however, found the testimony essentially irrelevant to the legal question of whether claim is directed to an abstract idea.”

              How can disregarding such “testimony” not be disregarding the factual record? How can you establish that the claimed invention allegedly lacks a “novel concept” without such “testimony”? The patent specification alone, which all that district court and the Federal Circuit apparently considered, isn’t enough.

            2. But “anon” is a super serious person and all about the “content.” Sure he is.

              You think that “polite” Prof?

              Really?

              So much for your “rules.”

          2. A claim to a structure is a claim to a structure. A claim to “something that performs this function” is a claim to many structures with no proof you possess them all.

            1. Wh ich is why I’m a fan of 112 1st in many rela ted instances. But the PTO and the co urts tend to just pres ume po sse ssion because: Imaginary man (all caps)!

              Also filter.

      1. Ned,

        For the umpteenth time, the printed matter doctrine is NOT statutory – it is a judge made doctrine.

        Further, that doctrine was critically revised and pulled back with the exceptions to the judicial doctrine of printed matter.

        I have explained this to you many times now – even with easy to understand set theory.

        Why must you continue to purposefully misrepresent this?

          1. Your post does not make any sense Ned.

            Are you somehow denying the history of the written matter doctrine (and its important clawback exceptions)…?

            I explained ALL of this to you with the simple set theory explication. at that time (and periodically later, as you tried and tried again to foist misconceptions about), I invited you to show where I was in error in my explication. You refused to do so (most likely because you know that I am NOT in error).

  12. “This scenario is most likely to occur with respect to patent claims that involve implementations of economic arrangements using generic computer technology, as the claims do here.”

    General question: Is a novel method involving an economic arrangement, if not a FUNDAMENTAL economic practice, eligible?

    Specific question: Are we at the place now that the only method claims that are eligible are product-by-process claims that result in the production of a new structure?

    Given the silly human/computer analysis, are cryptographic methods now ineligible? A human technically can encode and decode any known cryptographic method using pen and paper if given enough time.

    1. That could be more time than humans have on earth. Some of the keys being used are gigabytes long. It would take a human years just to write down the key, let alone perform any function with it.

      I do think Alice has rendered many useful and new inventions such as encryption invalid. It’s unclear how much is invalid, though, since the Alice rules are so unclear.

      1. even if (and that’s a mighty big if) we allow for common law in place of statutory law, law still must not suffer from being so vague as to be void for vagueness

        Just saying.

    2. BB: Is a novel method involving an economic arrangement, if not a FUNDAMENTAL economic practice, eligible?

      Nope.

      “Economic arrangements” are abstractions all the way down.

      Are we at the place now that the only method claims that are eligible are product-by-process claims that result in the production of a new structure?

      You mean the place where we were at before the “do it on a computer junk” began flooding the system? We’re not at that place yet, unfortunately. But we’ll get there soon enough. Yes, some rich people will weep. Boo hoo!

      are cryptographic methods now ineligible?

      Many of them have always been ineligible. All that was needed was for a reasonable person to open the window and let some air into the echo chamber.

      A human technically can encode and decode any known cryptographic method using pen and paper if given enough time.

      Right. And according to the PTO’s non-existent criteria for examining cryptographic logic, any person with half a brain can “innovate” hundreds of new and non-obvious “cryptographic methods” day after day. Then all you need is one clever attorney to wordsmith them into something barely comprehensible, a “cryptographic expert” who will say anything you pay him to say, and a bulldog litigator and voila! Let the “monetization” begin.

      1. ““Economic arrangements” are abstractions all the way down.”

        Why? Assume the economic arrangement, like a trading strategy, requires the performance of several steps and produce a result, hopefully, in the form of money, which is object/asset.

        Why are those steps any more ineligible from a patent perspective than a method for manufacturing a known widget with a new and improved process. The steps are humans or systems doing X, Y, and Z to create the widget, but widget is not new. It’s just an object or asset.

        How is that manufacturing method any more eligible than the trading strategy?

        1. Economic arrangements do not “produce money”. They shift it. In any case, money is an abstraction that represents the ability to obtain goods and services in trade. Although people use the expression “make money,” they really mean obtain it. In contrast, cash is an object without regard to its status as a representation of money.

          As for why should making widgets and obtaining money be treated differently, why have patents at all? There is no reason to assume that economic arrangements and widget manufacture have the same rationale. The copyright to a song is an asset, but songs cannot be patented.

        2. BB: ““Economic arrangements” are abstractions all the way down.”

          Why?

          Because they have no objective physical structure that would distinguish them from the “economic arrangements” in the prior art (“art”, by the way, that the PTO has never bothered to even attempt to collect or organize in any useful fashion — and for easily understood reasons).

          Assume the economic arrangement, like a trading strategy, requires the performance of several steps and produce a result, hopefully, in the form of money, which is object/asset.

          “Money” is an abstraction. A useful abstraction? Sure. An abstraction that can have practical consequences in a society which has collectively agreed to recognize the abstraction as a representation of power? Sure. Neverthless: it’s an abstraction.

          Here’s an easy example in case you’re still struggling with this (it’s not too difficult). I just created a unit of currency. It’s called a marthblat. I assign you 1,000 marthblats. Enjoy! You can add and substract and multiply and divide those marthblats. You can put them in a special marthblat account I just created and accumulate interest. You can transfer them to other people. Aaaaand …. POOF! they’re gone. Because I said so. Ah, so much “innovating”! I create. I destroy. Do you want more? I can do this all day. Anybody can.

          Why are those steps any more ineligible from a patent perspective than a method for manufacturing a known widget with a new and improved process.

          I assume this question has answered itself for you by now. Suffice it to say that if you can’t recognize some fundamental and important differences between an objectively structurally defined new composition of matter and a method for altering the value or quantity of a legal agreement between you and another person or the government, then there isn’t much that can be done to help you.

          1. Money is not an abstraction. I am holding a $20 bill right now. It exists. The fundamental economic practice doctrine was originally directed to cases where claims recited the creation of a contract, entering into a contract is a legal fiction, it’s a point in time where parties has a meeting of the minds with an exchange of consideration. That is why one cannot claim teh creation of a contract.

            1. Mike Money is not an abstraction. I am holding a $20 bill right now.

              Good grief.

              Is this the best you got, people? No wonder you’re losing all the time.

            2. “Money is not an abstraction. I am holding a $20 bill right now. It exists.”

              The only reason the piece of paper marked 20 in your hand is “money” is because people around you agree with you that it is. That is because “money” has always been and always will be an abstraction. Which is also why “money” is now something like 93% digital in the US. That is, most of the “money” is nothing but 1’s and 0’s in computers in banks.

              1. The only reason the piece of bologna in your hand is “bologna” is because people around you agree with you that it is.

                Is THAT because “bologna” has always been and always will be an abstraction?

    3. Bluto, novelty has nothing to do with whether something is “abstract,” meaning, statutory.

      Music is non statutory.

      New music does not become statutory because it is new.

      1. Ned,

        You are confusing and conflating your “version” of “statutory” with how the term is actually used in this area of law.

        I noted this when you first attempted to digest the Alice decision and had to “transform” all of your “pet” legal theories from the statutory categories discussions that you had used ad infinitum.

        Rather than admit that something squarely within a statutory category was nonetheless removed by the Court (thereby obviating the words of Congress), you attempt to muddle the OTHER PART of 101 – that of having the proper utility.

        Your “legal logic” house of cards simply cannot stand on its own.

        So please, stop trying to force fit canards such as music into your “version” of statutory. Please try to keep clear what the words of Congress in 101 actually state.

      2. Music is not analogous to performing an economic practice like a trading method. Performing the music is closer to analogous, but even that is different.

        1. BB: Music is not analogous to performing an economic practice like a trading method.

          In the context of this discussion, BB, they’re perfectly analogous because they’re both examples of ineligible subject matter.

            1. BB: That’s cute, but avoids the real question.

              Oh, then please tell everyone the “real question”, BB.

              After all, you’re a very serious person and you’ve thought about this a lot. It’s easy to see that.

    4. General question: Is a novel method involving an economic arrangement, if not a FUNDAMENTAL economic practice, eligible?

      I know why you’re saying fundamental, but that’s not the right way to think about it.

      If someone says “Oh here’s a known or common economic practice, I’m going to implement it on a computer” that is not an invention. Then it’s only a question of whether someone who doesn’t admit that something is known or common should otherwise be imputed with the knowledge anyway.

      So the answer is: If you know of a method and want to perform the method on a computer, absent special circumstances you have not invented, because translating into computer coding is the only thing you have done and it is not an inventive action. If you don’t know (or want to pretend you don’t know) of a method, but that method is so widespread or commonplace that we can assume you knew, then it’s not an invention.

      In a sense (and contrary to what some of the others on here say) it IS kind of a 102/103 being rolled into 101, but not really. Lack of novelty in 102 is when the applicant is plausibly asserting he did something new, and he was wrong. The lack of novelty in 101 is more of “that’s not even a plausible assertion you did something new.”

      1. What if the method does not need a computer nor does it require a computer. It’s a novel non fundamental economic practice that is performable by people through interactions with people. Person A does X, person b does y, then person c does z. If those steps have never been performed before, is that not a “new and useful” process?

        1. Mike: If those steps have never been performed before, is that not a “new and useful” process?

          That’s the wrong question. Why? Because new mental steps are useful and they certainly aren’t eligible for patenting. In other words, answering your question “yes” doesn’t end the subject matter eligibility analysis. I hope you can follow this much or else there’s no point in going on.

          What if the method does not need a computer nor does it require a computer. It’s a novel non fundamental economic practice that is performable by people through interactions with people.

          Relationships between people (e.g., financial obligations) are quinessential examples of ineligible abstractions. Process of “establishing” or “determining” those relationships are likewise ineligible abstractions, at least absent a new and structurally distinguished device recited in the claim.

          There really isn’t much debate on this issue outside of the ritual debunking of the recycled talking points floated here and there by the defenders of worst bizmethod junk patents ever written.

          1. none of the steps in my hypothetical are mental processes, they are interactions that occur between people. Person A passes x item to person B, and so forth. The process accord in the tangible word, not in the intangible world of mental processes.

        2. Mike,

          Your question rings to the notion of methods not entirely in the mind.

          Prof. Crouch coined a term that fits (albeit not directly applied to your notion): Vast Middle Ground.

          When claim – and including combination claims that are not mere aggregations (already covered by the patent doctrine of “Claim as a whole”) include portions within the mind – but are not entirely within the mind – your claim as a whole cannot be abstract.

          This too has been highlighted on theses threads multiple times whenever I shine a spotlight on Malcolm’s attempt to move the goalposts and try to move a claim that contains portions outside of the mind into some type of claim solely concerned with things entirely within the mind.

          Sadly, the censors don’t seem to mind that type of rude behavior in this “ecosystem,” even though it is clearly rude and deceptive (and repeated by the sAme ones). When faced with this proper view of the law, those very sAme ones do nothing but insult (much like – no, exactly like – the insults thrown your way here).

  13. “The Honorable Leonard P. Stark, Chief District Judge, United States District Court for the District of Delaware, sitting by designation.”

    What does this mean? Should a judge not appointed to the CAFC be authoring precedential decisions?

      1. There was the case, Ex parte Bakelite Corp’n., 279 U.S. 438, 49 S. Ct. 411, 73 L. Ed. 789 (1929), where the Supreme Court held the CCPA to be an Article I court.

        Then there was the problem when a member of that court was on the panel in another circuit and cast the deciding vote. Glidden Co. v. Zdanok, 370 US 530 – Supreme Court 1962 link to scholar.google.com

        As explained by Douglas in dissent in Glidden, the CCPA was an administrative court from the beginning.

        1. Ned, are you saying that when Congress created the CFAC that they somehow “violated” the wishes of the Supreme Court?

          Last I checked it was not the Supreme Court that determined inferior courts of the Article III nature.

          Did that change?

          1. anon, the Supreme decided that even though the CCPA could remain constitutionally a legislative court, that Congress could make it an Article III court. It upheld the legislation making it such.

  14. >>could all be performed by humans without a computer.

    This must be one of the most ignorant statements every to prevail in America. A machine that is doing what a human can do. So according to this logic, if we build a machine to write the opinions of the Fed. Cir. that won’t be eligible because it could be done without a computer, but by a human.

    (Note that many iron age inventions could be performed by a human’s body, but that didn’t make the invention ineligible. For example, Deener.

    Oh well, the nightmare of the judicial activist continues. Must be weird to have your mind controlled by K street’s money. One must loose a lot of self respect, which is consistent with the meanness I’ve seen in the judicial activist 101 Fed. Cir. judges.

    1. NWPA: A machine that is doing what a human can do. So according to this logic

      You’re ignoring a critical and fundamental part of the “logic” that is being used.

      Specifically, you’re ignoring the fact that logic itself is ineligible for patenting.

      One more time in case you missed it: logic itself is ineligible for patenting.

      That’s the starting point (and it’s a premise that’s accepted by nearly every reasonable person on earth who has ever studied a patent system). From that starting point, it’s a tiny tiny tiny logical step to the conclusion that a claim to ineligible logic does not become eligible merely by folding in old technology whose sole purpose is to carry out logical data processing.

      This is simple stuff. The CAFC judges are mostly getting it now. They struggled with it only because they were drunk on their own kool-aid and their absurd belief that patents on logic were somehow necessary to promote the development of new logical processes (in fact, patents are counterproductive to that goal — another simple fact that it takes about two seconds to appreciate).

      1. In case you missed it, a machine that takes time, energy, and space to perform functions is not logic. In case you missed it all inventions can be described by some form of math or logic and it doesn’t make the invention that math or logic. Like a chair can be described in such a manner, but that doesn’t make the physical chair equations.

        Yes it is simple stuff.

        1. NWPA: a machine that takes time, energy, and space to perform functions is not logic

          Nobody is arguing that.

          So we’re left with that old question: are you too ign0rant to understand the simple reasoning that’s been set forth for you (and others) for nearly a decade now, or are you just a dishonest hack?

          It was one thing to cling to “I can drop it on my foot so it must be eligible”-style arguments five or six years ago. They were terrible arguments back then but you had some judges struggling along with you.

          Those days are over. Grow up.

          1. is not logic

            Nobody is arguing that.

            You are being purposefully deceptive or just employing your same-old AccuseOthersOfThatWhichMalcolmDoes C R P as what you are trying to do is argue the machine component and manufacture in its own right (software) IS logic.

            Software is not logic.

            Try a little honesty Malcolm.

            .

            Prof, Can we have at least that much?

            1. “anon” Software is not logic.

              Too bad you’re just a hack on the Intertubes who truly believes in the awesomeness of software patents. People might actually believe your silly conclusory musings.

              Here on planet earth everyone knows that software is logic. The Supreme Court knows. The Federal Circuit knows it. The PTO knows it. Literally everybody knows it and nobody except you and your cohorts would question the statement.

              what you are trying to do is argue the machine component and manufacture in its own right (software) IS logic

              Not at all. That’s just you putting your inane words into my mouth. You see, I actually write down my arguments in plain English. I did so many times in this thread, in fact. Ordinary people can read the arguments and understand them, unless they’re too ign0rant or they will themselves into incomprehension.

              That’s not true of 99% of what you write, “anon”. We could discuss why that’s the case but that would only be re-opening old wounds.

              The important point for you and your cohorts to remember is that if you claim the structures that impart your wonderful machines with new logic processing capabilities in objective structural terms then the eligibility issues will disappear.

              That’s going to require some time and money, of course. And you’ll still have to deal with novelty and obviousness. And you’re claim will be much narrower than the claims you are used to.

              Boo hoo hoo.

              1. Believing in “awesomeness” off anything is not addressing the plain fact that software is not logic.

                Can you have a copyright on logic?

                Please stop being disingenuous.

        2. NWPA: all inventions can be described by some form of math or logic

          This is just another variation on the “if my favorite invention is ineligible then everything is ineligible because I say so!” malarkey.

          a chair can be described in such a manner

          Go nuts. Maybe you can “monetize” your awesome claim by threatening to sue every fortune 500 company that uses chairs.

          1. Hyptothetical, assumign you are the first to come up with an idea of a wooden chair with legs. I claim a chair. Court says that a chair is directed to the abstract idea of supporting a human in a sitting position. People have been siting on objects since the beinging of time. So the claim fails step one of alice. Next step two, here you are merely tieying the idea of sitting to a specific technological environment, i.e. a chair. Hores have legs, people have sat on horses, wood cabinets exist, so using wood and having legs is conventional practice. So claiming a wooden chair with legs is not substantially more that the abstract idea of supporting a human in a sitting position.

            Can’t patent a chair…

        3. Night, I claim,

          1. Novel music played with a baton on a drum.

          Does the argument that a baton or a drum is a physical thing carry any weight in the eligibility analysis where the prior art shows music played with baton and a drum?

            1. anon, not cr p. Not at all. It illustrates a proper rebuttal of Night’s central argument.

              Initially the baton/drum to play music was eminently patentable. But when the sole novelty is in the music?

            1. Mike, we can all agree that music is not one of the categories. Neither is printed matter — where the difference is in meaning. But surely if the difference over the prior art is in something clearly not withing the four categories, then whether or not it is new is irrelevant.

              1. Once again Nerd – please finish the legal thought here and address the exceptions to the judicial doctrine of printed matter.

                Why is it that you never do so?

      2. “You’re ignoring a critical and fundamental part of the “logic” that is being used.

        Specifically, you’re ignoring the fact that logic itself is ineligible for patenting. ”

        You are ignoring the fact that all machines apply logic.

        In the case of the cotton gin they logic is applied in the form of particular shapes and materials. Nevertheless logic is applied and manifest in the shape, length, width and thickness of the teeth of the comb, the length of the comb, the size of the crank handle and the size of the hopper…and if not size, then at least the ratio of these parameters to one another.

        Perhaps more clearly, the logic of an adding machine was implemented in gears, levers and springs.

        All machines involve the implementation of logic and they are patentable.

        The fact that logic is not implemented in the states of transistors instead of the alignment of gears should and does not have a bearing on the patentablity of the invented machines.

        1. Les: You are ignoring the fact that all machines apply logic.

          Even if I accept that “fact” (and I don’t), it doesn’t change the reasoning that the courts and I are using to quickly and easily (and reasonably) tank all these junky “do it on a computer” claims.

          It doesn’t change the reasoning because there’s a huge difference between describing, in objective structural terms, a new machine that “applies logic” (on one hand) and claiming “doing logic” on an old machine that exists for exactly that purpose.

          Why is that such a huge difference? Because new, non-obvious structurally distinguished machines and compositions are exactly what our patent system was intended to promote. Absent the introduction of easily avoidable weirdness, there are zero eligiblity issues raised by such claims.

          For the reasons I’ve already explained, that’s simply not the case when logic and other abstractions are layered on top of old data-processing, data-storage, or data-acquisition technology. The simplest way to appreciate that is to recognize (as everyone does) that you can’t claim a method of using a pair of eyeglasses (technology!) to “look at Johnny Grebwiler, Jr” or “look at real estate listing in Notty Pines, Oklahoma”, regardless of whether Johnny or Notty Pines are utterly new to the world and known only to the patent applicant on the date of filing.

          1. in objective structural terms,

            And yet again the C R P attempt of making an optional claim format into a de facto ONLY legal claim format….

            PLEASE STOP THE DECEPTIONS

            1. “anon” de facto ONLY legal claim format

              Remember when “anon” spent years here using dozens of s0ckpuppets every day to squelch the common sense notion that claims in the form [oldstep]+[newthought] were ineligible?

              I do. Fun times. This new obsession of yours isn’t much different “anon.”

              What I’m saying is that the “optional” format of claiming your new machine in objectively structural terms that distinguish it from the prior art is a format that will ensure your claim survive an eligibility challenge.

              Go ahead and stray off the reservation if it makes you feel proud and happy. Maybe you have money and time to waste prosecuting junk patents that will be quickly sent to the cleaners if they are ever asserted. Not everybody does.

              1. More mindless dust kicking.

                As I recall, you whined the most and yet STILL have your army of sockpuppets at PatentDocs.

                How is your “transparency” challenge coming along with Dr. Noonan?

                Yeah.

                Thought so.

                What a schmuck.

        2. For that last paragraph, is there an extra “not” somewhere in there? For instance, don’t the states of transistors implement logic? (To me, the paragraph makes sense if the first “not” is taken out.)

          1. Thanks PatentBob, that was a typo. “not” should have been –now–.

            For those just tuning in, 3.1.2 should have concluded:

            The fact that logic is now implemented in the states of transistors instead of the alignment of gears should and does not have a bearing on the patentablity of the invented machines.

            1. oops

              The fact that logic is now implemented in the states of transistors instead of the alignment of gears should not and does not have a bearing on the patentablity of the invented machines.

              1. Les The fact that logic is now implemented in the states of transistors

                And those novel transistor states are set forth in the claims, right?

                Because your beloved novel gear alignments surely were. And for good reasons.

                1. No. Since there are millions of states involved, that is not practical. Accordingly, the machines are usually claimed functionally. This is a perfectly legitimate way of claiming a machine that has evolved to address just such a problem.

                2. MM said:

                  “And those novel transistor states are set forth in the claims, right?

                  Because your beloved novel gear alignments surely were. And for good reasons.

                  Were they?

                  Does this claim set forth the gear alignments to your satisfaction? Given that explanation, could you build an adding machine?

                  1. A calculating device comprising: an assembly of a plurality of counterwheels rotatable about a common axis, said wheels being of progressively varying diameter, said wheels being in a position overlying each other; transfer means between the wheels whereby a predetermined revolution of a wheel imparts a step movement to an adjacent wheel; means for manually feeding numerical inputs selectively to individual wheels comprising a member selectively engageable with the periphery of any one of the wheels; and means for rotating said member about the axis of said wheels to impart predetermined angular rotation to the selected wheel.

                  link to patents.google.com

                  1. Les Does this claim set forth the gear alignments to your satisfaction?

                    My “satisfaction” is not the point, Les. The point is that there is infinitely more objective physical structure in that claim than there is in the term “personal loan.”

                    I know it’s impossible for you to follow this super nuanced stuff, Les. Take a vacation.

                  2. Infinitely more objective physical structure?

                    1. Not there isn’t. There is more objective physical structure in “computer” than there is in plurality of counterwheels rotatable about a common axis. Is the axis even included in this device? or is this just a set of wheels that could be rotated about a common axis, if one wandered by?

                    2. Where is recitation of objective physical structure listed as a requirement?

        3. Perhaps more clearly, the logic of an adding machine was implemented in gears, levers and springs.

          Sounds fair Les.

          How many different patents could be obtained on the different calculations that this particular adding machine could do? ( bearing in mind that the only differences between the calculations are the different inputs that are entered in operating the machine).

          Please give examples.

          1. I’m quite sure that a machine geared for base 3 calculations could be patented even in view of a base 10 adding machine, for example.

            Still further, a geared machine for calculating Fast Fourier Transforms would also have been patentable over a base 10 adding machine.

            Still yet further a geared machine for receiving spoken speech and by turn of a crank handle producing printed text corresponding to the speech would be patentable over the base 10 adding machine and the FFT machine.

            Don’t ya think?

            1. Les a geared machine for receiving spoken speech and by turn of a crank handle producing printed text corresponding to the speech

              See the game that Les plays?

              We’re talking about patent claims and the types of words used to describe machines. Would Les’ claim be patentable? Of course not.

              And Les knows what’s missing, too. But shhhhhh! We must pretend to be born yesterday and not see through the game.

              1. I’m not playing a game. Bert (and you) is. I’m arguing that different software is like different gear configurations and like different gear configurations different software (and a computer) is patentable. Bert’s question is unrelated to that argument.

            2. Les, I’m not playing games.

              You gave 3 examples of 3 different machines when you should have been giving 3 examples for 1 machine.

              I’m giving you one machine which will accept inputs and give outputs. It’s called an adding machine (though it can do more than just add) and using it’s gears, levers and springs it can do calculations.

              Software is not like different gear configurations. Software is the input to a machine. The different “gear configurations” are inherent to the computer.

              The computer adjusts its “gear configurations” according to the nature of the software inputs.

              1. bert,

                Your analogy breaks down at “Software is not like different gear configurations. Software is the input to a machine.“:

                That’s just not so.

                You are imbibing in the fallacy of “just use it” when you first must change the machine in order to “just use it.”

                Your version would have software merely created on the fly as you are using an [old box]. That is just not reality.

              2. The different “gear configurations” are inherent to the computer.

                That’s the fallacy of “all inventions and future changes of configurations are “already in there.”

                Sorry, but you are simply wrong.

              3. “Software is not like different gear configurations. Software is the input to a machine. The different “gear configurations” are inherent to the computer.”

                No bert. Software is like different gear configurations.

              4. “Software is not like different gear configurations. Software is the input to a machine. The different “gear configurations” are inherent to the computer.”

                That’s like saying that the cotton gin, internal combustion engine and the Wright Flyer were inherent to the hardware store.

    2. Why do you constantly need to assign profit-motives to your ideological adversaries?

      Is it because profit is your primary driver, or because you don’t think your arguments can stand on their own?

      1. MM likes to fight against the “ev il” people, who apparently make gobs and gobs of money filing patents with which MM disagrees. It’s a typical strawman argument — make the strawman some kind of ev il entity, and this shifts focus to that entity instead of the actual, underlying argument.

        1. PB, I’m pretty sure “Newbie” was responding to NWPA’s comment at 3 and not my response to NWPA (which contained no reference to “profit motives”).

          Likewise, if you were really concerned about “strawman” you should start by looking in the mirror and reading your own comments in this thread.

          The fact is we all know that it’s not the “strawman arguments” that bother you or your software patent loving friends who hang out here. Nope. It’s the other arguments that really drive you up the wall.

          You’re going to keep losing so maybe it’s time to come up with a decent fall back position? Just saying.

  15. Les: Yes and picking seeds out of cotton can be done by humans without a computer too. What of it?

    1) Picking seeds out of cotton isn’t abstract logic.

    2) A claim to “A machine that picks seeds out of cotton” has never been patentable but somehow the PTO (with the pre-corrected CAFC’s help) convinced itself that “do it on a computer” applicants needed special help. Why? Because “shiny”.

    1. The very patent able machine for picking seeds out of cotton was comprised of a set of generic components with a novel configuration.

      Claimed machines such as the one described above are comprised of a generic component with a novel (perhaps, but as you stipulated below irrelevant) configuration.

      Not because shiny. Because novel.

      1. Les: The very patent able machine for picking seeds out of cotton was comprised of a set of generic components with a novel configuration.

        Was that “novel configuration” recited in the claim in objective structural terms? Of course it was. Whitney even provided a detailed drawing depicting the physical structure of a working embodiment. I wouldn’t be surprised if he provided a working model to the PTO.

        Not because shiny.

        Wrong. Exactly “because shiny”. The CAFC decided that computers needed to be treated with special coddling care and they chucked the patent statutes out the window to achieve that coddling. The fall-out was entirely predictable: f00ls and grifters rushing in to capitalize on the non-existant standards, a lowering of patent quality across the broad in all areas, and rampant litigation abuse.

        Also predictable was the inevitable retraction and reform to correct the silly and totally avoidable blunder. And yes there’s more retraction to come. Much more.

      2. Samuel S. Rembert and Jedediah Prescott got the first patent for a cotton picker in 1850.

        John Rust eventually got the patent for the first commercially sold cotton picker in 1930.

        Had Rembert & Prescott patented ‘machine to pick cotton’ in 1850, Rust could not have patented his machine in 1930. It would have already had an expired patent against it.

        Rembert & Prescott patented a specific machine that did a specific job in a specific way, with specific components that were outlined in the patent, both the component and what the component did.

        John Rust, as well, patented a different specific machine that did a specific job in a specific way, with specific components that were outlined in the patent, both the component and what the component did.

        Neither patent patented the concept of picking cotton, nor did they patent the logic of how to pick cotton (pull cotton from plant, put cotton in storage device, deliver storage device to destination, repeat process until field picked).

        1. Thanks for the history lesson, MDT.

          To my knowledge, in the wake of the development of the cotton picking machine there wasn’t a massive bubble of attorneys trying to “get rich off the picking” by flooding the PTO with claims to, e.g., methods of presenting a list of prices for the machines, methods of purchasing the machines anonymously, methods of using the machines to pick cotton wherein the cotton is owned by a third party, etc. etc.

          That sort of awesome “innovation” didn’t begin flooding the US patent system until those cheap shiny computers showed up.

        2. MDT,

          What exactly was the improvement of the 1930 patent over the 1850 patent?

          Your “argument” so quickly celebrated by Malcolm, is a logical fallacy.

            1. Asked and answered Malcolm.

              Of course, you already knew that.

              The immediate point is that MDT’s argument is flawed – a logical fallacy.

              I said so in direct and short affirmative statements even.

  16. “—borrower applies for a loan, a third party calculates the borrower’s credit grading, lenders provide loan pricing information to the third party based on the borrower’s credit grading, and only thereafter (at the election of the borrower) the borrower discloses its identity to a lender—could all be performed by humans without a computer.””

    Yes and picking seeds out of cotton can be done by humans without a computer too. What of it?

    ” These human-mind-potentials cannot be claimed in the abstract. In step two of Mayo/Alice, the court considered the computerization elements of the claims, but found only “generic computer components such as an ‘interface,’ ‘network,’ and ‘database.’ These generic computer components do not satisfy the inventive concept requirement.””

    Yes, and the cotton gin is made of generic hardware components: box, hopper, comb and crank handle. Do those generic hardware components not satisfy the inventive concept requirement?

    In the appeal, the patentee argued a factual dispute regarding the history of loan processing in an attempt to show that the process here was not “old.” The appellate panel, however, found the testimony essentially irrelevant to the legal question of whether claim is directed to an abstract idea.

    Say WHAT? I’m quite sure every 101 ruling since and including Bilski decreed that the claimed methods were abstract precisely because they were, not just old, but ancient!!!!

    Now age is irrelevant? Are we through a second looking glass now?

    1. Les: Do those generic hardware components not satisfy the inventive concept requirement

      A list of generic hardware components is not an inventive concept.

      I’m quite sure every 101 ruling since and including Bilski decreed that the claimed methods were abstract precisely because they were, not just old, but ancient

      You’re wrong about that. The novelty and “non-obviousness of the abstract logic steps are irrelevant to the eligibility analysis. That’s a very very important point to remember.

      It is worth noting, however, that reams of granted “do it on a computer” claims in fact do nothing more than implement ancient logic … “on a computer”. Why is that fact worth noting? It’s a reminder of how far off the rails the patent system was heading before the Supreme Court stepped in. And the PTO is still struggling to find its legs. Let’s hope they get their act together soon.

      1. MM said:

        “You’re wrong about that. The novelty and “non-obviousness of the abstract logic steps are irrelevant to the eligibility analysis. That’s a very very important point to remember.”

        I agree that is novelty and “non-obviousness” SHOULD BE irrelevant to the eligibility analysis. Yet you, the Federal Circut and the Supremes have been considering novelty in the analysis at every turn.

        For example, see this snippet from the Supreme Court’s Bilski opinion:

        “In light of these precedents, it is clear that petitioners’ application is not a
        patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.”
        545 F. 3d, at 1013 (Rader, J., dissenting); see, e.g., D. Chorafas, Introduction to Derivative Financial Instruments 75–94 (2008); C. Stickney, R. Weil, K. Schipper, & J. Francis, Financial Accounting: An Introduction to Concepts, Methods, and Uses 581–582 (13th ed. 2010); S.
        Ross, R. Westerfield, & B. Jordan, Fundamentals of Corporate Finance 743–744 (8th ed. 2008). The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly
        over an abstract idea. ”

        Distilling this down to a gist, if I may, they court says its abstract because its old.

        1. Les: Yet you, the Federal Circut and the Supremes have been considering novelty in the analysis at every turn.

          Once again: your statement is plainly false.

          As I already explained, it’s unquestionably true that in many instances the courts (and myself) have recognized the lack of novelty in either or both of the following: (1) the generic concept underlying the ineligible abstract process (e.g., “hedging”) and (2) the specific logic steps recited in the claim.

          With respect to (1), that finding is typically followed by the recognition that what is allegedy being added to the ineligible concept is nothing (i.e., the claim is just wordsmithing the ancient ineligible abstraction to disguise the lack of innovation) or further layers of ineligible abstraction (i.e., assigning more specific — but still abstract — titles and relationships to the ineligible concept).

          But this is the key point (again): that’s not always the case, as you have mistakenly asserted. The most glaring counterexample is Mayo. The disclosured correlation (more specifically, the step of thinking about the correlation) was treated as if it was new and non-obvious. It didn’t matter. What did matter was that (1) thinking about a correlation is a form of logic; (2) logic is an eligible abstraction; and (3) regardless of how awesome or useful that logic is, you can’t protect it with a patent by reciting an old data-gathering step prior to the ineligible logic step.

          This isn’t rocket science, Les. This is about as straightforward as reasoning gets in patent law and if you can’t come to terms with it you need to get out of the biz or you’ll end up wasting a lot of your own money or — worse — a lot of someone else’s money.

          1. “But this is the key point (again): that’s not always the case, as you have mistakenly asserted. The most glaring counterexample is Mayo. The disclosured correlation (more specifically, the step of thinking about the correlation) was treated as if it was new and non-obvious. It didn’t matter. What did matter was that (1) thinking about a correlation is a form of logic; (2) logic is an eligible abstraction; and (3) regardless of how awesome or useful that logic is, you can’t protect it with a patent by reciting an old data-gathering step prior to the ineligible logic step.”

            Hoisted on your own petard.

            1. Les,

              Malcolm is so 0bsessed with his short script that he is incapable of seeing your point here.

              Even drawing dots that any child could connect does not work for him.

            2. Les Hoisted on your own petard.

              Not at all. We’re talking past each other because you apparently don’t understand the different questions that can arise when determining the subject matter eligibility of a particular claim.

              The specific issue I’m referring to is the relevance to the eligibility analysis of the newness of the ineligible abstraction that is protected by the claim.

              Do you think the isolated step of “thinking about non-obvious correlation X” would be eligible on its own? Of course not. Would it matter if the correlation was sooper dooper triple gooper non-obvious? Nope.

              Those kinds of claims, thankfully, don’t usually get through the PTO, at least not when drafted transparently.

              The quote you copied in your attempt to “hoist me” is further proof of this point. Of course it doesn’t change the ineligible status if you simply attach the words “do it on a computer” or “collect the data you want to think about with a machine” to the ineligible process of “correlate”. That’s what Mayo was all about. And it’s never ever going to be reversed.

              1. a new mental process is still a mental process, a new natural phenomena is still a natural phenomena , but a new economic practice is not a fundamental economic long prevalent in our system of commerce.

                1. Mike, no it is not because it is a form of printed matter where the ideas, the meaning of things, is being manipulated.

                  1. Ned,

                    What is the “objective physical structure” of the “spaces” in Morse’s allowed claim?

                    Please stop your “1’s” nonsense before you begin on that (again).

                  2. Ned,

                    I am not asking you define by defining something else. – May be you can connect the dots with the other part of my mesage to you and drop the “1’s” C R P….

                    If not, then please ANSWER:

                    Once again – what is the “objective physical structure?”

                2. Mike new economic practice is not a fundamental economic long prevalent in our system of commerce

                  “Economic practices” are, in fact, abstractions, just like “legal practices” are abstractions.

                  Now, if there’s some new structurally defined and structurally distinguished machine recited somewhere in your “economic practies” application, you are free to claim them.

                3. A kiss is still a kiss,
                  A sigh is just a sigh
                  The fundamental things apply
                  As time goes by

                  …I see what you did there…

              2. ” Of course it doesn’t change the ineligible status if you simply attach the words “do it on a computer” or “collect the data you want to think about with a machine” to the ineligible process of “correlate”. ”

                Nonsense.

                Picking seeds out of cotton isn’t patentable on its own.

                But get a machine to do it 1000 time faster than a human could now it, now your talkin’.

                We are talking past each other because you cant get past your bugaboo about computer based machines.

    2. An apparatus comprising:
      A box
      A crank
      A collection unit configured to collect cotton.

      Should this be eligible, Les?

        1. Of course it’s eligible.

          Why do you say “of course”?

          Because “apparatus”? Because “box”? Because “crank”?

          Surely not. Claims can recite those components and still be ineligible.

          Because “apparatus comprising box and crank”?

          Surely not.

          Because “a collection unit configured to collect cotton”?

          Surely not.

          So why is the claim “eligible of course”? Assume that the claim reads on the prior art when you answer (i.e., it’s not new).

          Note that I’m not suggesting one way or the other that the claim is, in fact, ineligible subject matter. I’m just curious about your reasoning. Thinking in more detail about why you came to your conclusion (i.e., “eligible of course”) may be useful to everyone grappling with 101.

          1. You’ve tripled down on the very thing that you would find fault with.

            Maybe you want o share that “awesome reasoning” for each of your “Surely nots…

            (And your short script “I feel” does not count)

            OH NOES – Malcolm is being asked to supply actual legal reasoning.

            1. “anon” Maybe you want o share that “awesome reasoning” for each of your “Surely nots…

              As if I haven’t done that a trillion times already.

              You’re a real piece of work, “anon.”

            1. AAA JJ And your argument that the claim is not eligible is…what?

              I don’t see where I made any such “argument”. I do see where I expressly went out of my way to point that out to you, however.

              I’m looking forward to hearing your answer to the questions I asked.

              1. Which of the oh-so-narrow judicial exceptions to section 101 is even remotely implicated by the claim?

                “I’m looking forward to hearing your answer to the questions I asked.”

                Right back at you.

      1. This is a classic example of an “aggregation” claim, in which there is no claimed relationship between the claim-listed parts, much less a functional and novel relationship. Historically and logically it was unpatentable because a mere parts list is clearly not a claimed invention. Bizarrely the PTO stopped enforcing rejections of aggregation claims some years ago.

        1. The classic mere aggregation claim is ALREADY handled by the principle of “Claim as a Whole.”

          And yes, Paul, you can be guaranteed that that item you mention (functionally related) will NOT be given a truly honest appreciation by the anti’s.

        2. Paul, bizarrely? I think there was some concern about what the proper statute was to reject aggregations. I think the issue is 112(b).

          There is a lot of those kinds of cases back during the Rich era where the CCPA and the Federal Circuit were both trying to find a statutory basis for pre-1952 doctrines. At some point the patent office got the message as well

      2. Its a poorly claimed apparatus. It is eligible. That is, it passes 101.
        It will clearly fail other hurdles. But those are not the eligibility question.

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