Federal Circuit: No New Card Game Patents Unless you Also Invent a New Deck

In re Smith (Fed. Cir. 2016)

Ray and Amanda Smith’s patent applications claims a new method of playing Blackjack. The new approach offers ability to bet on the occurrence of “natural 0” hands as well as other potential side bets.  Claim 1 in particular requires a deck of ‘physical playing cards” that are shuffled and then dealt according to a defined pattern.  Bets are then taken with the potential of more dealing and eventually all wagers are resolved.

In reviewing the application, the Examiner Layno (Games art unit 3711) rejected these card games patents as ineligible under Section 101 – noting that the claim is “an attempt to claim a new set of rules for playing a card game [and thus] qualifies as an abstract idea.” The Patent Trial & Appeal Board affirmed that ruling – holding that “independent claim 1 is directed to a set of rules for conducting a wagering game which . . . constitutes a patent-ineligible abstract idea.”  The particular physical steps such as shuffling and dealing are conventional elements of card-gambling and therefore (according to the Board) insufficient to transform the claimed abstract idea into a patent eligible invention.[1]

On appeal, the Federal Circuit has affirmed – agreeing that the method of playing cards is an unpatentable abstract idea. The court held that a wagering game is roughly identical to fundamental economic practices that the Supreme Court held to be abstract ideas in Alice and Bilski. “Here, Applicants’ claimed ‘method of conducting a wagering game’ is drawn to an abstract idea much like Alice’s method of exchanging financial obligations and Bilski’s method of hedging risk.”[2]  Following the Board’s lead, the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.”  “Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.

In dicta, the court wrote that some card games will still be patent eligible – perhaps those claiming “a new or original deck of cards”

The applicant also asked the Federal Circuit to review the USPTO’s Interim Guidance on Patent Subject Matter Eligibility.  The court, however, refused to pass any judgment on those guidelines because they were not directly binding rules upon either the examiner or the Board.  The court’s conclusion makes sense here, but glosses over the fact that an examiner’s performance is judged according to whether that examiner follows the eligibility guidelines. This transforms the guidelines into de facto rules. Update: As “6” commented below and I have now confirmed, examiners are not required to follow the “eligibility guidelines” and are not formally reviewed using those guidelines as a measuring stick.

= = = = =

[1] The examiner did allow Smiths’ claim 21, that was directed to the same method with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor (rather than real cards and a dealer) to accomplish the methodological approach.

[2] See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (finding offer-based price optimization abstract), cert. denied, 136 S. Ct. 701 (2015); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014) (determining that methods of managing a game of bingo were abstract ideas).

About Dennis Crouch

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

417 thoughts on “Federal Circuit: No New Card Game Patents Unless you Also Invent a New Deck

  1. Could you please post some of the patent applications you’ve filed (or anyone else has filed) that are “non-junk”? I’d like to see those.

    1. Fix this: 20 more defendants in Texas; all of us will pay more for whatever as a result, and how many hundreds more people will see the patent system as an illegitimate racket for the rest of their lives?

      There are no teeth in Section 285 and no real disincentive for plaintiffs to stop shaking people down. For every one of these I post, how any “settlements” occurred that nobody will ever know of? Feel the innovation; see how it improves things for everyone…

      US 5,845,070 A1

      1. A method of authenticating a user’s confidential information and preserving the confidentiality against unauthorized use, said information being essential for conducting Internet transactions between a log-in and log-out session, comprising the steps of:
      accessing the Internet by the user entering a first data set into a computer based controller to control modems and communication protocols;

      establishing a data base containing confidential information subject to authentication with a user’s first data set;

      submitting said first data set to a tracking and authentication control module requesting authentication of the user, said tracking and authentication control module including a data base containing user’s confidential information, an authentication server for authenticating said first data set and a certification server, said certification server containing validation data for authenticating and internet entity approved for conducting internet transaction;

      comparing the user’s first data set input to the authentication server incident to accessing the internet with the I.D. and password in the data base and subject to a validating match;

      issuing a second data set in real time by the authentication server subject to a validation match of the I.D. and password with the data in the database usable for the instant transaction;

      submitting the second data set to the certification server upon the initiation of a transaction by the user;

      consummating the transaction subject to validation of the second data set by tying the confidential information in the data base to the user whereby the confidential information is retained undisclosed in the data base.

          1. I keep repeating it because it is germane and it IS a fact for this type of law.

            You may not like it – but that is your opinion.

            Also, this cuts to the chase as to why there are problems in the law (broken scoreboards), when people think that things are “opinion” when they are not, and cannot understand “what the big deal is.”

            This is also known as not understanding the terrain of the conversation. Note that you “don’t have to be an attorney” to understand the terrain (and even attorneys can get this “wrong,” sometimes on purpose), but coming to a realization that the ends do not justify the means is CRITICAL to understanding what the issues really are in this legal terrain.

            1. We will never abdicate. We will not go quietly into the night. We fight for our constitutional rights. We will fight for our dreams. And God so help us, we shall live them!

              The above quote was written by one of anon’s bffs in defense of one of the junkiest patents ever written.

              It’s still as funny as ever. The entitled class of rich whining attorneys: they never cease to amuse.

            1. Even non-lawyer me understands that the ends are, in fact, the more important part of a functioning civil justice system. Equity has been accepted as the superior of law for hundreds of years, and merely because we formally merged separate administration, the essence remains. To make a fetish of what amount to arbitrary means and dismiss certainly unjust ends is, IMO, unAmerican.

              The American creed is to adapt, overcome, and always seek improvement in the practical world.

              I’m not going to just sit here and let people badmouth the United States of America.

      1. I’m looking for something that’s “non junk” according to MM. He supposedly files such patents/applications all the time, yet I’ve never seen him say what those are.

        So, I have no comment on the claim you posted (unless you’re saying that this is a “non junk” patent according to MM).

        1. How about you post some of the cases you’ve filed that have been rejected under Alice but you don’t think should have been? Or some of the cases you feel have been unfairly rejected?

          Oh, wait, nobody is going to reveal themselves on the interwebs.

          1. I’m not asking for MM to post his own. I’m asking him to post ANY patents he thinks are good. Just one. I honestly have no idea what he thinks is a good patent, but he seems to think he knows.

            And I don’t have a problem with the modern patent system, other than the SC seems to be reading “new and useful” out of the law. For instance, under Alice most or all of these patents (for arithmetic coding) would be invalid:

            link to en.wikipedia.org

            Arithmetic coding is important. Assuming it’s new and useful, why does Alice now bar this?

  2. Malcolm calling someone else a hypocrite…?

    (and the ten year title is ALL yours, Malcolm)

    As to your “dredging” meme, as I have told you, the means to even honorable ends really do matter.

    You seem to not want to discuss the actual means, and only want to preach your desired ends.

    You want to talk about “knuckle-dragging”….?

  3. There’s only one person who uses zeros in place of the letter “o” on this page. Why would someone use one anonymous identity to lay cover for his other anonymous identity? It’s comic. An anonymous stranger feels the need to use _two_ anonymous identities in the same comments section. Why? Bizarre. Maybe they have a lot of emotional investment to protect.

    I’ve been participating in Internet discussions since the late 80s. Since at least then, and forever onward, people with behaviors that are not socially acceptable gravitate to this kind of forum. It’s the perfect outlet for embarrassing and shameful behavior. Mostly it’s funny, what people reveal about themselves through anonymity, but sometimes it’s ugli and creepy.

    1. Because some words prevent posting? And that seems like the best way to pass the filter without inserting a bunch of random capitalized letters with the vowels removed?

      But oh yeah, I’m def MM or whatever. You caught me. Good work, Inspector Clouseau.

    2. But wait! MM and anon both use spaces to bypass the filter!

      They’re the same person!!! ZOMG!

      Break out your tinfoil hats, everyone!

  4. I’m not defending/cheerleading anyone. I disagree with MM on plenty.

    Apparently being deliberately obtuse is so much better than calling names for establishing a healthy ecosystem or whatever you call it.

    1. disagree with MM on plenty.

      That’s funny, as I cannot recall even one single time that you have disagreed with Malcolm and taken him to task.

      Not once.

      (Doing so in your mind, and then cheerleading in the board just sends a different message)

    2. There is no “being deliberately obtuse” on my end – to wit, look who did (yet another) “look at me, look at me” by breaking the comment string and posting on top at post 26.

      Wake up son.

  5. To those of you who are interested in reading the comments on this Patently-O entry, or any other entry for that matter, below are representative comments from just one poster. These are examples of what Patently-O considers acceptable discourse on “America’s leading patent law source”.

    But before taking a look, think about the Preamble to Maryland’s Rules of Professional Conduct, which, like most ethics rules, mention “A lawyer should demonstrate respect for the legal system and for those who serve it, including judges, other lawyers and public officials.” How do the the lawyer’s comments below, made to other lawyers, measure up?

    MM: “Speaking of coke, RG, did you happen to stumble across some? I’m having quite a bit of difficulty following your ravings here.”

    MM: “Except that nobody is saying that so you are arguing with your mirror.”

    MM: “please try harder to keep up. Here it is in even plainer terms since you somehow missed it the first time:”

    MM: “Again we have to ask: are these people ign0rant, dishonest or both?”

    MM: “Does an ign0ramus low-rent attorney like you dissemble further and move the goalposts when he’s caught pitching pure b.s.? Of course you do.”

    MM: “What a pack of rich entitled cl0wns.”

    MM: “you are definitely l y ing to your clients.”

    MM: “So now we have at least four toxic lying f00ls in the thread.”

    MM: “says the bigtime l0ser who has been wrong about pretty much everything since forever”

    MM: “I’m not going to waste my time with a third grader. Grow up, man.”

    MM: “There’s way more to eligibility than “new and useful steps”, as every educated patent attorney knows.”

    MM: ” Translation: “I’m a braindead g00fball who will do and say anything.””

    MM: “Then you should apologize to your clients because you’re incompetent.”

    MM: “so here’s some friendly advice: get over yourself”

    MM: “Try harder to keep up. I know this is a difficult subject for you.”

    MM: “You lost, bigtime, just like Scalia and his fellow bigots lost, bigtime. Now try shutting your trap and stop making an a s s out of yourself. Good luck”

    1. The fact of the matter is that this is exactly what Malcolm has been doing – for ten years solid now.

      (and he his proud of it)

    2. You might actually have a point, HoPB, if all ideas were, in fact, equal.

      But they’re not.

      Pretending otherwise is a quick ticket to the shirthole.

      There’s some reasonable people out there who can actually follow a logical conversation about the law and have a productive intelligible conversation about it, even if they disagree with the conclusions. RG is one of those people (you’ll note that he’s not crying about my quip and we had an extensive discussion).

      Les and Night Writer and “anon” are simply incapable of having a rational discussion about subject matter eligibility and if you can’t see that, well, you might as well join their club. Oh wait: you already did.

      Here’s an itty bitty question for you:

      (1) why on earth, in 2016, should someone take seriously any patent lawyer who continues to discuss subject matter eligibility as if Bilski, Prometheus and Alice were decided oppositely from the way they were actually decided?

      (2) why on earth, in 2016, should anyone take seriously any patent lawyer who argues that “everything is ineligible under under Mayo” when Mayo is almost four years old, the PTO is presently granting three hundred thousand patents a year, and both the PTO/courts regularly uphold the validity/eligibility of well-drafted claims to perfectly acceptable inventions that everyone agrees deserves to be patented?

      Serious questions.

      Bear in mind that the self-entitled people in (1) and (2) invariably consider themselves the most civilized people on the planet, in spite of their incredibly cruddy arguments. They relentlessly slag on their critics as “communists” (or worse) and they are just so sure that everyone who disagrees with them is paid for by their “enemies” (usually ‘Big Corp’ — those bad ol’ companies who copy everything).

      So answer the questions I asked. You’re super serious so I know you’ll have awesome answers.

      1. Malcolm’s who knows no bounds and he clearly thinks that “rules” don’t apply to him.

        It is humorous to have to point this out as to why I will follow only the rules that I see enforced, and Malcolm skates free and clear of any “ecosystem” rules wantonly (and yes, has done so for the longest of ANY poster – he is quite proud of his Decade of Decadence).

        Of course, this was explained in great detail (on these boards, as I refused to have “back door” talks off the record) some four years ago in a previous “let’s get along and have a nice ecosystem” attempt.

        Instead, we have Echoes such as Ned, MaxDrei, DanH, and patentcat cheerleading Malcolm on – and the moderator asleep at the switch.

        “Go figure.”

      2. You kind of gloss over the fact that the scoreboard is broken (and all of the discussion points thereof).

        “Go figure.”

  6. Here we have another thread that will hit 300 comments, with many of the Usual Suspects arguing their positions.

    -MM is philosophically opposed to patents on any information/algos regardless of utility, novelty, non-obviousness, or complete description. He knows that abused patents on these things have cost too many people far too much money. He is feeling less inhibited than ever in being dismissive /aggressive.

    – anon is sure everyone is wrong about everything, except himself, the reanimated ghost of Judge Rich, and the sitting congress of 1952. He continues to make up his own law and doctrine as needed to “prove” he is right and decimate the opposition.

    -NWPA is sure that patents are the sole reason the USA has a vibrant software industry, and there is some scientific law regarding the conservation of information, or something…

    – Random observes that the CAFC is hopelessly muddled on how to apply Alice and how to handle information inventions generally.

    -6 is cynically aware of how things actually happen at the USPTO

    -Ned thinks if we just embraced Hotel Security, information patents would all clear themselves right up and we could cull the statutory from the non-statutory with ease.

    Les and Patent Bob et al. don’t have positions exactly, but they have questions. Lots and lots of questions. They appear to be questions that lead to more patents for more “inventions”.

    I believe I am the only regular here who is not a lawyer or examiner, so my view is from the actual trenches of small tech (i.e. “job creator”) who has experienced litigation.

    I have a firm position on Alice/101 and I have been stating it on various threads. I’m going to summarize it in this comment and link to an SSRN-posted paper I wrote that covers it in extensive detail. I’ll likely paste it into future threads as-is, so forgive me Usual Suspects for being repetitive in order to catch the attention of lurkers from time to time.

    In a nutshell: I disagree with MM that new, useful, fully described and non-obvious information/algos should not be eligible as “processes” under Section 101 merely because they are intangible. I don’t believe that “abstract” for legal purposes is limited to intangibility, although all abstractions are intangible.

    I believe that Alice is a flawed decision and that the core of the flaw is the fact that “abstract ideas” for legal purposes have two distinct, unrelated meanings. The first meaning affects eligibility, and the second meaning affects patentability, and the bifurcation is inherent because the patent act itself is bifurcated between eligibility and patentability.

    At eligibility, abstraction must be intrinsic to the invention, and cannot mean merely intangible. Looking at the root of the word and it’s meaning in the world, I conclude that an abstract idea is information consumed by a human being. Therefore, if the result of a process is information, and the utility of the information arises in human consumption, the invention should not be eligible for a patent.

    At patentibility, and abstract idea is an intangible expression of ideas in claims that may or may not be a patentable inventions based on a combination of lack of utility, lack of novelty, ability of one skilled in the art to come up with the idea, or failure to describe the idea with enough detail to enable an invention. As of now, eligibility is seen as a threshold issue, but in a proper procedure, a baseline of patentibility should also be a threshold issue, and a matter of law construed just as the terms of a claim are, ideally at the Markman stage.

    The link to the paper is here: link to papers.ssrn.com

    In the case at issue in this thread, the reason the invention is abstract is that it consists of information consumed by a human being (the rules of the game). The CAFC, not having the tools at hand that I suggest, muddles its way around on claim 21, which is directed to the same method, with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor rather than real cards and a dealer to accomplish the methodological approach. In that case, the invention would be eligible in my view, since the video machine is consuming the information comprising the rules, but abstract at patentibility as an obvious idea- being within the easy ability of one skilled in the art of creating card games to generate.

    1. The “ease to do” – but only with hindsight – is yet another flaw cropping up.

      Of course, your characterization of me is incorrect, as I have made up no law – all law I reference is readily available. Funny too, as you yourself merely want to apply your own admitted “made up” law (except you refuse to bother with understanding the terrain upon which you wish to do battle).

      1. KSR is the law, my point makes itself anon. You don’t like KSR, so you pretend it never happened.

        Hindsight or foresight; KSR says that if you don’t get unexpected results from a combination of known elements, you don’t have an invention.

      2. “Of course, your characterization of me is incorrect, as I have made up no law”

        After Martin calls anon out for thinking everyone is wrong, anon states that Martin is wrong (also).

        Lulz, anon, never stop being ocpd. It’s almost like a daily gift of comedy once you see it.

        “You’re wrong, and you’re wrong, and you’re wrong and you’re wrong, and they’re wrong and everybody’s wrong! And anybody that points out that I’m stating that everyone is wrong is also wrong!” – anon

        1. I do not think everyone is wrong.

          I do think that certain people are almost always wrong. I explain why and provide a path to NOT being wrong – and I am not timid about telling people that they are wrong when they insist on repeating themselves in being wrong.

          Your “meds/ill” line is C R P – and you know it.

          1. “I do think that certain people are almost always wrong”

            Yea I know, you don’t think you yourself is wrong.

            “I explain why and provide a path to NOT being wrong”

            Yeah, I know, that’s the socially controlling part of OCPD.

            Hilarious, you yourself state unequivocally that you’re doing exactly what people with OCPD do, but you’re all, “I’m not OCPD, you’re wrong, you’re wrong, here let me make you a list of why I’m not OCPD”. Lol.

            1. There is no “social control” 6.

              If anything, it is you that seeks to control my posting. Somehow you seek to discredit what I post, wanting to make my posts to be something that they are not, and thus employ ad hominem instead of addressing directly the things that I post.

              Such a move is simply C R P.

              1. “There is no “social control” 6.”

                I know, because you’re bad at it. You’re OCPD.

                “If anything,”

                If anything, if anything, if anything wah wah wah. Jesus, just go to the doctor dude.

                1. That is not a responsive reply 6.

                  Of course, you already knew that.

                  Maybe you want to stop your games (they do not f001 anyone)

    2. MS: In a nutshell: I disagree with MM that new, useful, fully described and non-obvious information/algos should not be eligible as “processes” under Section 101 merely because they are intangible.

      The “lack of intangibility” per se certainly isn’t the only justification for my position on info/algos, Martin (although it is certainly among the reasons). ‘Nuff said for now.

    3. …”is feeling less inhibited than ever in being dismissive/aggressive

      Wrong.

      Malcolm has been this way for a solid decade now – as was noted on the most recent “ecosystem” thread.

      The fact that his antics contain nothing new should not be lost on anyone actually wanting a place for dialogue.

          1. “Not sure why you are amused when people insist on being wrong ”

            I’m not amused by their being wrong jack ar se, I’m amused by you always posting that they are.

            1. So….

              Do you find the propaganda move of repeating a L I E often enough that it garners some semblance of truth (the items that I respond to) “amusing?

              Wake up son.

    4. MS: The CAFC, not having the tools at hand that I suggest, muddles its way around on claim 21

      No.

      In fact, the CAFC said nothing about claim 21 because the claim was not before the CAFC (applicants don’t typically appeal the PTO’s decision to grant the claims applicants asked for!).

      Based on the oral argument (not to mention plenty of solid case law, including this decision), we can all be 99% assured that claim 21 would never survive a motion to dismiss on the pleadings or any other well-argued effort to tank it.

      1. I didn’t hear the argument, instead depending on Prof. Crouch’s footnote [1].

        I’m listening to TC Heartland right now. So far, Texas is winning.

      1. I don’t care what you say about my paper- just keep saying it. Pile up the views is the name of the game on the Intertubes.

        6, it’s almost a guilty pleasure with anon….Can I be wrong about that?

        1. I don’t care what you say about my paper- just keep saying it. Pile up the views is the name of the game on the Intertubes.

          Lulz – Yay Ec(h)osystem !

    5. Just for the record:

      Arguably questions (mostly rhetorical) : 15.3.2, 15.3.2.1.1, 1.2.1.1, 17, 17.1.1
      Insightful Analysis 21.5
      Answers to Questions: 15.2.1, 15.3.1.1.1, 15.3.1.1.1.1.1, 3.2.1, 3.2.1.1.2, 1.1.2.1

      1. Concluding that the current state of subject matter eligibility precludes new drugs because a new drug starts with an abstract idea is not insightful Les- rather it’s a scare tactic based on a slippery slope argument that reasonable jurists would never, ever accommodate.

        Try going in and arguing that a patent uses protons and electrons and thus is an old combination- you will be laughed out of court and laughed off this page…I’d love to see someone try it someday.

        Meanwhile, back in Texas, more prices for more stuff we buy just went up, for a mid 8 million patent number that is the purest of pure junk.

        For an aperitif, see a nice design patent that is 100% functional – one of dozens of cases filed since Apple v. Samsung (as predicted), and which does not look good for cert this term. Anyone care to wonder what kind of design patent activity is going on at the office right now?

        US 8,429,005

        1. A method for providing to a user an interactive and electronic replication of at least a portion of a corresponding physical publication page, comprising:
        associating a page number of a physical publication page with an interactive and electronic replication of at least a portion of a physical publication page;

        the physical publication page having at least two different products appearing on the physical publication page;

        the page number appearing on the physical publication page along with the at least two different products;

        the page number and the two different products being visible on the physical publication page;

        receiving by a host computer comprising at least one computer processor an input representing the page number;

        providing from the host computer the interactive and electronic replication of the at least a portion of the physical publication page in response to receiving the input representing the page number;

        the interactive and electronic replication of the at least a portion of the physical publication page including duplications of the appearances of the at least two different products;

        the duplications of the appearances of the at least two different products being exact reproductions of the appearances of the at least two different products contained within the physical publication page;

        the interactive and electronic replication enabling the user to obtain additional information on the at least two different products contained within the interactive and electronic replication; and

        wherein the user is able to see the interactive and electronic replication and the at least two different products in the physical publication page and can obtain the additional information on the at least two different products contained within the interactive and electronic replication of the at least a portion of the physical publication page by receiving the interactive and electronic replication.

        USD535388S1 for the dessert: an aerodynamic fan blade- completely unadorned. Nice little racket for everyone involved, except the marks of course….

        1. You are misplacing both the laughing and the criticism.

          Open your eyes to the necessary implications that arise from the “logic” that is being used by the Anti’s.

          (Yes, that logic is indeed abysmal, but your barn aimed at Les is simply aimed at the wrong target)

        2. “Concluding that the current state of subject matter eligibility precludes new drugs because a new drug starts with an abstract idea is not insightful”

          I came to no such conclusion Martin. My remarks were :”directed to” METHODS of making drugs…

          1. A method that results in new composition of matter is not going to be found abstract via Alice- it’s a distinction without a difference because nobody is going to claim a method without the new composition.

            1. I wasn’t commenting on Alice. I was commenting on the reasoning applied in the subject card game case, which requires new hardware (cards) for the method to be allowable.

              Quoted from the article:

              “the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.” “Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are ‘purely conventional’ activities.”

              So, in any method of making a drug, the steps are going to be purely conventional, measuring, mixing, heating, stirring, cooling etc…

              Your argument that the courts will only apply the ridiculous rulings in Alice to patents you don’t like is no comfort.

        3. “Try going in and arguing that a patent uses protons and electrons and thus is an old combination- you will be laughed out of court and laughed off this page…I’d love to see someone try it someday. ”

          MM argues that using an old computer in a method makes the method ineligible, 5 times a day.

          Why are chemical reaction vessels any different? If the method is implemented using old reaction vessels it must not be patentable (according to the logic of MM).

    6. Personally, I think the issues are complex. There are claims that probably should not be issued. On the other hand, the current SC guidance has mucked things up enough that some things that should be patentable may not be.

      You also have to realize is that you can pontificate on what you believe the rules should be. As patent professionals (prosecutors/litigators), we cannot. We have to live with whatever the rules are. This is particularly true, as the Examiners have a difficult time with law, and the SC does not help this with their unreadable, opaque “guidance”. I was just speaking with someone who said the Examiners cannot articulate what the standard is for claims to be patentable under Alice and its progeny. The sad fact is that I cannot either. So, when I counsel my clients about claims and 35 USC 101, I basically have to say that I have no clue — except in rare instances — whether claims are patentable under 35 USC 101. We’ll have to wait until litigation. And that’s not a comfortable position to be in, and was not the position before Alice, when “concrete, useful, and tangible” or “machine or transformation” at least made sense.

      1. I admit you are stating a position, and I agree mostly with it.

        MM is correct that you can broadly predict which claims may be subject to an Alice challenge. However, the test is entirely random from there, including the auspices under which it will even be applied.

      2. “I was just speaking with someone who said the Examiners cannot articulate what the standard is for claims to be patentable under Alice and its progeny.”

        If you guys cannot articulate “Make sure the applicant is not trying to patent any of the judicial exceptions, or for all practical purposes be trying to do so” then all of you are bad at your job.

        1. 6, Standard? What standard?

          The central vice in Bilksi’s “Abstract” is its complete lack of any standards because the court neither explained what “abstract” was, nor explained why the claims in that case were abstract. Ever since then, courts have been determining things are abstract only by analogy.

          However, some of us believe that the problem with the Bilski claims is exactly that they failed the MOT, and where fact business methods. Alice helped quite a bit because it identified that at least the problem with the Bilski claims was not because they failed to recite generically the use of a general-purpose digital computer. That question had been left open by the court in the Bilski case. It was resolved with Alice.

          An application that transforms the abstract idea into a inventive application has to be some innovation in the areas that we would otherwise appreciate as being technological. This would include of course machines, manufactures, compositions and processes that otherwise pass the MOT. Beyond that the courts have not gone.

          As I have said before, by not siding with Stevens, Scalia may have made the biggest mistake of his legal career. He was always in favor of simple clear rules because the law is about rules and not about the balancing of factors. Equity is about balancing of factors.

          But Bilski really took the cake in terms of vagueness.

          1. Ned,

            There was NOTHING vague about the treatment of MoT in Bilski – that was one of the items that was 9-0.

            Forever and a day since then, you have been trying to resurrect MoT – all the while simply ignoring what the Court actually stated about it.

            And let me remind you (yet again), that Stevens having the majority would have been a disaster for separation of powers. Stevens would have had to nullify the direct words of Congress to get what he wanted.

  7. Over lunch I listened to the oral argument in this case (see here: link to cafc.uscourts.gov) and, according to the attorney for the PTO (shortest rebttal ever), the PTO has been nixing claims to “new” games using a standard card deck since shortly after Bilski was decided (according to the PTO’s attorney, the office had argued against the eligibility of such claims in its amicus briefing).

    Interestingly, the bitter and righteous attorney (Mark Litman) who argued this case admits during the argument to writing several patents on standard deck card games himself! Indeed, he is the named inventor on multiple gaming and gaming-related applications (see here: link to patents.justia.com).

    Totally shocking, I know! Who could have predicted?

    1. Man I almost feel bad for ol Mr. Litman, 50 years of prosecution and now in his twilight the patent system is just now coming out of the mini-dark ages that occurred. I also liked his argument about the shuffling (lol). I also liked the bit about using a “thermonuclear” device as a mouse-trap. “It’ll kill the mice, but it’s not going to be socially useful”. Lol. This guy. If he’s not too busy being retired soon he should definitely go into comedy.

      One other thing that’s rather odd is how he doesn’t seem to think other people “get” what he’s arguing, so he repeats the same thing 100 different ways. We all get it old timer.

      There is indeed AU’s that do playing card games though, that much I do know.

      Judges: “I want hear about this playing card group” lol.

      1. His clients should refuse to pay whatever bill he sends them. That was one of the worst oral arguments I’ve ever heard. And that’s no hyperbole. Shameful.

  8. At 11 below I discuss why I believe the Fed Cir botched the analysis here, but now I’d like to go the other route and consider the precedent this case sets. Here’s what the fed cir says:

    “We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”

    So here is their logic:
    1) Wagering is an abstract idea
    2) When conventional wagering implements are used (i.e. a conventional 52 card deck that has conventionally been used for wagering), presumably novel method steps which change the shuffling/dealing of cards is always insufficient to overcome Alice Step Two.
    3) Conversely, a product claim to novel wagering implements can be eligible (“a new or original deck of cards”)
    4) And the inclusion of a novel product in a novel method confers the method with eligibility (“claims directed to conducting a game…”)

    The reading of 3 and 4 together is that the method is essentially borrowing or piggybacking on the eligibility of the product to render itself eligible. I agree that this could happen. For example, in Alice the court had to take notice of the fact that generic computers are conventional. Thus if the Alice patentee *had invented the computer* then the computer would imbue its eligibility into the method of performing risk hedging on it.

    But the reasoning of 2 suggests that *the method cannot obtain eligibility in any other manner other than by reference to the novel product*.

    So for example – Computers exist. Google Maps, which is an application that resolving driving directions and estimates arrival time, exists as do many other similar applications. Google Maps uses an algorithm for determining which route to suggest and how long the route will take. Other algorithms certainly exist. In fact, better algorithms certainly exist, because Google Maps does not take into account every variable that may influence your travel. According to the logic of this claim, “Route Resolution” is an abstract idea. A computer is a conventionally used implement to perform route resolution. Therefore, by 2-3-4, no other algorithms for route resolution are eligible (algorithms are, after all, nothing more than a ruleset) for patenting on a computer, because the novelty in the method steps does not confer eligiblility and the computer is conventional and does not confer eligibility.

    Conversely, if one invents a new processor, and decides to package their route resolution *into a method with the same effective filing date as the new processor* the algorithm becomes eligible because it piggybacks off the eligible processor. Also conversely, if one does not claim the algorithm in software but instead claims a physical circuit or processor for the software, the claim is eligible.

    The conclusion, of course, is that software is generally never eligible. So long as anyone in the art has performed some calculation that shares any abstract idea with the algorithm you have, the overlapping abstraction renders the modified algorithm ineligible. Conversely, if the same thing is done in hardware form, it is generally eligible, as it is a novel structure.

    This appears to be the very distinction Alice was taken to correct.

    I am, of course, relieved to know that because I am in networking and because I never have new hardware (as opposed to conventional hardware with new software) in my claims I never need allow anything again.

    But its not just me – we can shut down anything where the claim is solely directed to a novel method uncoupled from novel machinery. So all of the arts that are technique based can largely be shut off right now.

    Let’s say I discover a method of removing impurities from gold. “Purification” is an abstract idea. Impure gold (the subject of the technique) is preexistent. Other methods (which may or may not be as good) of removing impurities exist. So unless I can show that my method achieves a different resulting level of impurities in the gold, my method is ineligible no matter how much more efficient, cheaper, easier it may be than currently used methods, right? How is the command to generate a novel deck before eligibility can be found any different than a command to generate a novel level of purity before eligibility can be found?

    I just want to know how far I can take this. The logic seems to suggest I should be issuing an abstract idea to every application before me so long as the sole distinction is in the algorithm performed by a processor. Is that what I should do?

    1. At the end of the day, you make a big mistake in trying to make sense out of the judicial activist anti-patent opinions. The way to organize the material is to start with elements of the claims and how they mapped elements of a claim to a witch.

    2. According to the logic of this claim, “Route Resolution” is an abstract idea.

      “Route resolution” is an abstraction according to logic, period.

      Here’s point A. Here’s point B. I figured out a new way to determine how to get from A to B that wasn’t disclosed before. It takes into account the species of trees on the route. It solves the problem of previous methods that don’t take into account the species of trees, which matters to tree lovers.

      Rince, recyle, repeat ad nauseum with the aid of an army of 7th graders. That’s the thing with abstractions: they are boundless with essentially zero energy required to innovate new ones.

      presumably novel method steps which change the shuffling/dealing of cards

      Do you “presume novelty” because people have been playing with 52 card decks for a mere 600 years?

      The shuffling in the claim is random. That’s not novel. The only required “dealing” recited in the claim is “dealing two cards”. That’s not novel. The combination of shuffling and dealing two cards is also not novel. The ineligible “wagering” is laid on top of that anticipated junk.

      RG software is [never] eligible. …hardware … is generally eligible, [if the claim protecting the hardware recites] novel structure.

      With those corrections, you are getting close to the reality that we are inevitably approaching. Note the beautiful elegance of the proposition in its correct form.

      1. Note the beautiful elegance of the proposition in its correct form.

        Note that this violates a fundamental principle in the specific Art field: the fact that software is equivalent** to hardware.

        **and yes, the difference here in equivalent versus “exactly the same as” is a critical difference when it comes to patent law.

        It is not shocking that the person who habitually makes it an issue to incorrectly suggest that one optional claim form must be the ONLY de facto legal claim form, also insists on clenching tight his eyes on equivalency as a patent concept in order to reach his desired ends that ALL software per se is patent ineligible.

    3. “We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”

      By the way – think of the implications for this for public use and on sale. Because the original-deck-less subject matter is ineligible, there is no invention. It is not ready for patenting and won’t be until it is modified to incorporate an original deck that is reduced to practice or its equivalent. Therefore actions taken solely with respect to the rules never trigger an on sale timer. One may utilize a novel technique for *any period of time whatsoever* so long as they do not make it ready for patenting by completing the invention by developing new implements to use the technique with.

      Under this logic Coca-Cola’s method of producing Coke is still patentable! They do not currently possess eligible subject matter: Any claim they could assert will be subject to some form of abstract idea analysis (“Beverage Preparation”) the machines being cited in the claim at the time of filing will be machines which are conventionally used in the art, and therefore the subject matter is not ready for patenting. According to this case, Coca-Cola is only in possession of an abstract idea for beverage preparation, not an invention. It is only when Coca-Cola *completes the invention by creating a new machine to implement beverage preparation for use with the method* that the Coca-Cola production method becomes ready for patenting and the timer starts to run. As long as Coca-Cola stays out of the machinery-invention business and keeps the method for making coca-cola out of printed publication, the method will remain in an ineligible-but-transitionable-to-patentable state in perpetuity! The actual Coca-Cola product will be the subject of an on sale bar but the method will never trigger the critical period because it turns out they never possessed a method invention.

      1. Speaking of coke, RG, did you happen to stumble across some? I’m having quite a bit of difficulty following your ravings here.

        One may utilize a novel technique for *any period of time whatsoever* so long as they do not make it ready for patenting by completing the invention by developing new implements to use the technique with.

        It’s true that I can use rules “for any period of time whatsoever”. That’s because rules aren’t eligible for patenting. But if I publicly use a “novel technique” that involves more than “rules” (i.e., actually transforming a physical object into something else in a manner that was previously unrealized) then I am definitely harming my prospects of obtaining a patent on that “novel technique”, regardless of the “implements” I use.

        abstract idea analysis (“Beverage Preparation”)

        Preparing a beverage isn’t an abstraction. Nice try, though.

        1. But if I publicly use a “novel technique” that involves more than “rules” (i.e., actually transforming a physical object into something else in a manner that was previously unrealized) then I am definitely harming my prospects of obtaining a patent on that “novel technique”, regardless of the “implements” I use.

          Why? Physically transforming the state of the cards according to the current method did not confer eligibility. How is mixing drink ingredients (a known conventional act) any more significant of a limitation than card shuffling?

          Preparing a beverage isn’t an abstraction. Nice try, though.

          That’s fine, I have others: How about Body Hydration? Is that enough of a fundamental human activity for you? If we’re going to say the method steps are always insufficient no matter how particular one gets I can go all day with this. Any number of abstract ideas apply. How about Carbonation? How about Shipping? Is that a fundamental business practice that triggers an abstract idea for you?

          1. RG: Physically transforming the state of the cards according to the current method did not confer eligibility.

            That’s because — as I noted already — the only “physical transformation” required by the method (shuffling the deck and dealing two cards) is in the prior art.

            How is mixing drink ingredients (a known conventional act) any more significant of a limitation than card shuffling?

            At that level of generality, it isn’t “more significant”. But in your Coke example you were (I have to assume) talking about a specific formulation that wasn’t previously disclosed. C’mon, RG. You can do better than this.

            If we’re going to say the method steps are always insufficient

            Except that nobody is saying that so you are arguing with your mirror.

            1. That’s because — as I noted already — the only “physical transformation” required by the method (shuffling the deck and dealing two cards) is in the prior art.

              But not these specific dealings and wagers. What you mean to say is that the same *type* of transformation is in the prior art. But that’s true of Coca-Cola too – the *type* of bottling is in the prior art, but this specific bottling procedure is not.

              But in your Coke example you were (I have to assume) talking about a specific formulation that wasn’t previously disclosed. C’mon, RG. You can do better than this.

              The specific formulation was no more disclosed by the prior art than the specific dealing and wagering of this claim was disclosed by the prior art. It’s the exact same situation.

              Coca-cola – Using standard industry implements (bottlers, mixers) in their usual way, but applied to a specific formulation of ingredients not previously known

              Claim – Using standard industry implements (card deck, shuffling, wagers) in their usual way, but applied to a specific formulation of betting not previously known

              1. RG: What you mean to say is that the same *type* of transformation is in the prior art.

                No. For the love of l0gic, RG, please try harder to keep up. Here it is in even plainer terms since you somehow missed it the first time:

                The same exact physical manipulations of the cards are in the prior art.

                Adding abstraction i.e., “wagering” on top of old art does not create a patent-eligible invention

                That’s all there is to this case. Deal with it (pun intended).

      2. RG, if you want to talk about “beverage preparation”, a more factually similar scenario that you may wish to consider is a claim to

        A method of beverage preparation, comprising

        accepting wagers from one or more participants as to whether the beverage, when poured into a cup, will reach a predetermined height;

        pouring a first portion of the beverage into the cup, wherein said portion is less than the amount required to reach the predetermined height,

        accepting revised wagers from said one or more participants;

        etc etc ad nauseum.

        Do you see any potential for problems if the door is open to the patenting of this kind of ridiculous junk? I do. Is there some non-trivial benefit to society that is obtained by leaving that door open? I’m not seeing one.

    4. Another great post. You are on a roll!

      It simply can’t be the case that software (with accompanying hardware) is not patentable.

      Cases in point:

      Tesla cars get software updates that (1) allow them to park themselves and (2) “Tesla Model S’ new ‘Summon’ feature lets drivers park and retrieve their cars with no one inside”

      See: link to bgr.com

      GE believes it needs to be one of the top 10 software producers. Yes, SOFTWARE, from that bastion of hardware like jet engines, medical equipment, and (formerly) refrigerators. See:

      link to businessinsider.com

      If the SC believes that “software” (with its accompanying hardware) is not patentable, they should come out and say that. None of this “abstract idea + significantly more” gar bage.

      1. Tesla cars get software updates that (1) allow them to park themselves and (2) “Tesla Model S’ new ‘Summon’ feature lets drivers park and retrieve their cars with no one inside”

        You hear about mindblowing advances like this and you start thinking “Gee, maybe in fifty or a hundred years people will use a computer to assist with space travel.”

        I know, I know. Wishful thinking! It’ll probably never happen.

      2. He is on a roll because he is (finally) seeing the things that I have been posting about for years.

        And what does Random get for his getting closer to a true understanding?

        The predictable ad hominem short script from Malcolm: the “drugs/ Vinnie Barbarino” meme:

        Speaking of coke, RG, did you happen to stumble across some? I’m having quite a bit of difficulty following your ravings here.

        Bland dismissive ad hominem.

        Great job Prof: happy Decade of Decadence.

    5. I’m pretty sure that most methods of making new drugs use old reaction vessels, heating and cooling equipment, shakers and stirrers.

      So, no more patenting of methods of making new drugs. (of course the elements that make up the molecules are old too and their reaction to form the drug is merely a natural phenomenon based on laws of nature).

      1. I’m pretty sure that most methods of making new drugs use old reaction vessels, heating and cooling equipment, shakers and stirrers. So, no more patenting of methods of making new drugs.

        Again we have to ask: are these people ign0rant, dishonest or both?

        I’ll wager on the last.

        1. The only one being dishonest here Malcolm is you and your clenching tight your eyes.

          Les, remember the WWII German film meme with the rant by the leader being met with a comment from the secretary outside of the room…? (Don’t worry business methods are not laws of nature)…

          😉

      2. In pieces (filter catching something)….

        I’m pretty sure that most methods of making new drugs use old reaction vessels, heating and cooling equipment, shakers and stirrers.

        Pretty much everything uses old things. Even if some new thing was first invented in order to carry out a new method, that new thing will assuredly use old things itself, and thus with the attempted logic here, must also “f a i 1.”

        1. And your comment on methods has an easy-to-grasp analogy with other statutory categories.

          For example, you have several times taken Ned to task with Ned’s attempt to repaint the law on eligibility. When Ned attempts his 1906 misapplication of a district court case (somehow elevating it to be a ‘law of the land’), you ask him about things made out of wood and point out that wood itself is not an eligible item.

          Ned of course never responds to your point. He wants to try to apply eligibility down to the claim elements, but only on a highly selective (and highly subjective) basis.

          1. Hence: What Ned (and the rest of the Echo anti’s) are doing is using the “logic” of my Big Box of protons, neutrons, and electrons, but refusing to accept all that such “logic” carries with it: the annihi lation of the statutory categories themselves (the exceptions swallowing the rules).

            Such is a necessary result of the lack of limits provided by the Court when the Court scrivened its “gift” in an attempt to reach a desired ends: the “Gist/Abstract” sword.

            Note how both Malcolm and 6 “balk” when I point out what 6 is doing on this thread with the extend “gist of the Gist of the claims” – while neither actually touch the very real implications of their actions.

            All you see is their retreat in a cloud of dust-kicking ad hominem.

    6. Great stuff. If you are looking for logical consistency in CAFC decisions, good luck. One little quibble: a machine with known parts that are rearranged in a new and useful way is a “new machine”. A generic CPU and memory with its gates reconfigured in a new and useful way is also a new machine. Just like if you mix some chemicals and get a new and useful compound, you have the same protons, electrons, and neutrons, just rearranged in a new way.

      1. A generic CPU and memory with its gates reconfigured in a new and useful way is also a new machine.

        Then all you need to do is describe the novel and non-obvious configuration of those “gates” in an objective structural manner that distinguishes them from all the “gate” configurations in the prior art “gates” and you won’t have an eligibility problem.

        if you mix some chemicals and get a new and useful compound, you have the same protons, electrons, and neutrons, just rearranged in a new way.

        Last time I checked every patent office on earth requires you to specify the arrangement of the molecules of your ‘new compound’ in the claim. Ah, details. Patent lawz is sooooo hard.

        1. “Then all you need to do is describe the novel and non-obvious configuration of those “gates” in an objective structural manner that distinguishes them from all the “gate” configurations in the prior art “gates” and you won’t have an eligibility problem.”

          I do it every day. Everyone involved – inventors, clients, PTAB judges, etc. – can and does understand the claims, compare them to prior art, and compare them to potential infringing products. As long as “the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” (Willamson v. Citrix), there’s not much difficulty. When a claim recites an “arithmetic logic unit”, or an “adder”, or an “associative array”, or a “network stack that implements a layer-two protocol”, or a “compiler”, or other well known things, there isn’t much of a problem. It’s not the _structure_ those terms connote that needs to be definite (that can vary infinitely), it’s the “sufficiently definite meaning” that is key. Do I need to cite CAFC decisions where structure described far above the layer of gates have been held patentable, not indefinite, infringed, etc.?

          1. “Then all you need to do is describe the novel and non-obvious configuration of those “gates” in an objective structural manner that distinguishes them from all the “gate” configurations in the prior art “gates” and you won’t have an eligibility problem.”

            I do it every day.

            No, you don’t.

            1. Does a “wheel” have structure? Does a “spring”?

              I claim an “adder”. Everyone knows what that is. One word describes the variety of gate arrangements that are adders. You claim an “aluminum compound”, everyone knows what that is. I claim a K-Means algorithm in a processor and memory, anyone can look at some gates and their states and see if the K-Means algorithm is present. Of course, you don’t have to examine individual gates, because the arrangement of those gates can be inferred in a number of ways.

              I’ve seen all of your arguments, and none of them hold up to scrutiny. When confronted with counter-proofs, you don’t refute (which is a concession). Instead you resort to insults and remarks like “no you don’t” (more concession).

              1. “I claim an “adder”. Everyone knows what that is. One word describes the variety of gate arrangements that are adders. You claim an “aluminum compound”, everyone knows what that is. I claim a K-Means algorithm in a processor and memory, anyone can look at some gates and their states and see if the K-Means algorithm is present.”

                That’s not what MM is talking about. Jesus christ, you people just talk past each other all day long.

                “Of course, you don’t have to examine individual gates, because the arrangement of those gates can be inferred in a number of ways.”

                If “you” a.k.a an examiner, doesn’t “have to” examine individual gates in an examination then you’re not talking about what MM is talking about.

                1. 6: Jesus christ, you people just talk past each other all day long.

                  I’m talking directly to HoPB in straightforward terms. The problem (and we’ve seen this before) is that HoPB simply lacks the intelligence to have the conversation, or he doesn’t want to have it (or both).

                  1. HoPB: the arrangement of those gates can be inferred in a number of ways

                    Correction: you and I can both “infer” that some “arrangement of gates exists” in your precious computer, just like I can “infer” that “some arrangement” of hydrogen molecules exists in the sun.

                    But that kind of inference is a trillion miles away from describing an actual arrangement of gates or molecules.

                    Your inference requires zero skill. The description I’m talking about requires vastly more skill (hence the infantile whining from you and your clients).

                2. I know quite well what Malcolm is talking about. I’m using examples to point out the absurdity of his position. Malcolm requires “describ[ing] the novel and non-obvious configuration of those “gates” in an objective structural manner that distinguishes them from all the “gate” configurations in the prior art “gates” and you won’t have an eligibility problem”. Claim 1 below does that. It does not mention any gates. It claims a “configuration” that can only exist with gates, which are therefore implied (just as a “spring” implies a body and mass of certain characteristics). Sufficient structural properties of those gates are present in the claim. Sufficient to distinguish from all other prior art gate configurations. It matters not if that is an infinite number of possible configurations. Nowhere does Malcolm require reciting gates or lines to connect them. This claim passes the “Malcolm Requirement” easily.

                  Someone claims a “spring”. Do they have to claim the material, the dimensions, the force curve, etc.? No, they don’t. It’s a functional limitation and an unquestionably acceptable claiming practice. When someone claims a spring as part of an apparatus, it covers an infinite variety of structures. Similarly, claims that recite any level of abstraction above a gate (or at or below) have long been acceptable. Architectural improvements to CPUs are claimed all the time. When someone claims an “aluminum compound” they are not reciting explicit molecules or atoms, and yet any infringer must have those things.

                  Here is claim 1 from US Patent 7949883:

                  “1. A cryptographic CPU architecture comprising:
                  an ALU;
                  a control flag;
                  a plurality of registers for normally receiving output of the ALU in response to an arithmetic instruction;
                  an additional register for receiving output of the ALU, in lieu of one of the plurality of registers, in response to an arithmetic instruction when the control flag is set;
                  a first program counter;
                  a second program counter;
                  wherein the first and second program counters are responsive to a state of said control flag so that the first program counter is enabled where said control flag is not set and so that the second program counter is enabled where said control flag is set;
                  wherein an enabled one of said first and second program counter fetches the arithmetic instructions;
                  wherein either [some other stuff].”

                  Where are the gates? They are there; they are what all ALUs and the like are made of. Go up a few levels of abstraction and you arrive at software. The idea is no different. There are still an infinite variety of gate arrangements that can read on the claim. Same thing with chemistry. If someone claims an “aluminum compound”, that is covering arguably an infinite variety of compounds, and they’re not describing individual atoms or molecules.

                  A patent claim is a communication between ordinary artisans. The meaning of a claim is mostly a matter of what the ordinary artisan would understand the claim to mean.

                  Malcolm, on the other hand, wants “picture claims” because he doesn’t like the subject matter. Malcolm lacks the ability to distinguish shades of color. In his black and white world, all software patents are black.

                  Malcolm is indeed putting a small dent in the number of software patents … by killing some of my time. Hah.

                  1. I have likewise pointed out to Malcolm that an exacting (and exhausting) “objective physical structure” description COULD be given for ANY (and every) software claim, and that the doctrine of equivalents would still make it so that those IN THE ART would still understand the same thing being claimed (but the actual such “objective physical structure” optional written claims would just be unrecognizable by the human eye – pages and pages and pages of “structure” changes.

                    Of course, trying to get Malcolm to actually recognize the law and the place of PHOSITA in anything remotely bearing on an inte11ectually honest dialogue simply will not happen.

                    Happy Decade of Decadence.

                  2. H, if a claim element uses a well understood term for well understood structure, that should be sufficient for 112(b) purposes.

                    When claiming software, however, there never is anything such as well known structure because software is being claimed functionally, in terms of what it does, not what it is.

                    If the specification only discloses an algorithm, it too is not disclosing any structure, but again, only function. The at best, the source code itself would be structure. We used to debate back in the day as to whether we had to attach source code. I still suggest registering the code and simply referencing the copyright registration. But that still might not be sufficient. Regardless, the claim covers that source code if one is claiming structure.

                    Now, one can claim software using a method claim. This form of claim only requires the computer to do something. Here the function is the invention, and the code is not.

                    I think the courts have really punted on the issue of claiming software as structure in terms of treating all programmed computer claims as method claims anyway. I software can be claimed as structure, but only with code that can be plugged into a compiler.

                  3. Now, one can claim software using a method claim.

                    Ned – stop f001ing yourself. Software is not the execution of software.

                    Yes, an invention can be claimed in any of the four statutory categories. But make no mistake, software and the execution of software are not the same things.

                    As to your (mere) desire for code, that is just not required, given the understanding Of The Art (that important part of PHOSITA).

                  4. “I’m using examples to point out the absurdity of his position. ”

                    Your examples are not on point brosefus.

                    “Malcolm requires “describ[ing] the novel and non-obvious configuration of those “gates” in an objective structural manner that distinguishes them from all the “gate” configurations in the prior art “gates” and you won’t have an eligibility problem”.”

                    He didn’t “require” it, he simply laid that out as the simplest path towards not having an eligibility problem. Though, in many cases, “the universe” might “require” that in order to avoid eligibility problems.

                    Remember, MM doesn’t issue patents. MM doesn’t enforce patents. He cannot “require” anything of you, so just chill.

                    “Claim 1 below does that.”

                    Ok? So what?

                    “Same thing with chemistry. ”

                    Nah bro, in chemistry you go up the ladder of generalization, usually not “abstraction”. You’re getting generalization and abstraction confused with each other.

                    “Malcolm, on the other hand, wants “picture claims” because he doesn’t like the subject matter.”

                    Nah, he just doesn’t like the things that go along with the patenting of such subject matter in the way it has been traditionally allowed. He doesn’t really care about the subject matter.

                    “Malcolm is indeed putting a small dent in the number of software patents … by killing some of my time.”

                    Lulz.

                  5. 6,

                    You are quite clearly and quite objectively wrong in regards to Malcolm. You get a “kick” out of my pointing out when people are wrong, and then post something like that?

                    Maybe you just need me…

              2. HoPB Does a “wheel” have structure? Does a “spring”?

                Does an ign0ramus low-rent attorney like you dissemble further and move the goalposts when he’s caught pitching pure b.s.?

                Of course you do.

                1. Sometimes, all you need to do is let people speak, and they say far more about themselves than anyone else possible could.

                  And, most people understand that when someone in a debate resorts to personal insults (which are ridiculous for unknown strangers), unproveable accusations of dishonesty, hyperbole, ad hominen attackes, etc. that person has lost. But I do thank you for the satisfaction of riling you enough to go low. Just don’t expect me to join you down in the gutter.

              3. HoPB: I claim an “adder”. Everyone knows what that is.

                It’s anticipated junk is what it is.

                Boy, I hope you don’t charge your fake clients for these classic bott0m-feeder “arguments” you’re making.

        2. Again with Malcolm trying to make an issue by (knowingly) falsely portraying one optional claim format as if it were the ONLY legal claim format.

          Prof. Crouch – why do you permit such an obvious L I E to be propagated on nearly every thread?

        3. No, they don’t require you to specify the arrangement.

          US Patent 8968440, claim 1:

          “1. A fertilizer comprising:
          biosolids; and
          a phosphorus binding agent selected from the group consisting of aluminum compounds and by-products containing aluminum.”

          This is just some stuff mixed together. Where is the structure? There is none. And “biosolids”?? That’s a functional limitation; a solid with the function of being biological. A “binding agent”. An agent that “binds”. Functional, no structure. “by-product”. What kind of hooey malarky mumbo jumbo is that? Anyone with a dimestore chemistry set could come up with that.

      2. One does not even need to arrive at a “pure” new machine, as 101 (the wide open part) also states as eligible “any new and useful improvement thereof”

        This reflects the Grand Hall experiment.

        Two completed computers without any software sitting next to each other. Completed being in the “objective physical” sense.

        Take one of the two, modify that one by adding the manufacture known as software, a component built explicitly to be a machine component, thereby reconfiguring that second machine.

        Is the changed second machine an improvement over the first software-less machine?

        Can you even “use”** that first machine in the manner of use of the second?***

        ** “use” in the sense of not being inventive in its use – if you attempt to broaden the menaing of “use” to include invention, that that definition of “use” likewise anni hilates patent law.

        *** this is to shine a spotlight on Ned’s obfuscations when he wants to portray software as software in execution, neglecting (knowingly) the critical first step in being able to “use” a machine in his sense – that critical step that a machine must first be changed with the addition of software before ANY such “use” as he would have it. He seems to think that the first machine sans software is every bit [pun intended] exactly the same as the changed machine, somehow having this change either occur “by magic” or that the new capability (and hence ALL new capabilities) are somehow “already in there” under the proper patent doctrine of inherency.

        Note as well, how often the Echo anti’s have actually addressed**** these points (that would be never, by the way).

        **** and by addressed, I do not mean mention them in reply, but do not discuss them fully in an inte11ectually honest manner. Mentioning them and then repeating their prior stated drive-by monologue is NOT addressing them in ANY meaningful sense.

        1. Good points. Gates (or smaller) are just the cogs and axes and sprockets of the modern machine. Just like purely mechanical machines are routinely claimed, solid-state machines are routinely claimed without regard for the cogs/gates.

        2. Another proof that goes unanswered. Shouldn’t even be necessary, since the case law leaves no doubt about the ground truth.

  9. I see a certain poster with the initials M. M. has got lots of free time on his hands today (kind of strange how he can know so much yet spend all of his time posting). He’s been beating the same drum for ten years. Check the statistics on filings and issuances. Check the statistics on resolved litigation. Check the legal systems of all major industrial nations. There’s a disconnect between what is happening in the real commercial world and what he espouses and predicts. As long as firms invest heavily in R&D, they will rightly pressure the legal system to protect the fruits of their R&D that merit ownership rights.

    A tightening up of the patent system has been in order for a long time. Even people like myself who make a living prosecuting software patents have long understood the problem and advocated a tightening up. This guy thinks attorneys only represent “grifting” patent-asserters? We also represent the assertees (defendants). For a long time we saw that the PTO had failed to hire appropriate personnel, perform competent searches, and read the claims they’ve allowed with a critical eye. How many times have I looked at a patent, in defense, and said “what the $%# does _that_ mean?” (and I know my field)? Too many.

    I’ve said this before. It’s a shame he has such a heavy bias. It clouds objective thinking, demeans himself, and undermines some of the legitimate points he raises.

    Sidebar: anyone notice how he uses the number “zero” and spaces to avoid Patently-O’s congeniality-filter (e.g. “f00l”)? Come on editors. Do your job. Is this a forum for serious discussion about IP issues, or a sports blog? Where is the decorum?

      1. It would be nice to discuss such things of how better searches could vastly improve patent quality.

        What’s stopping you?

        Maybe you can start be telling everybody how you propose to create a searchable database comprising a reasonable sample of all the logic and algorithms taught by the prior art. Then explain what restrictions you are going to put on the language that applicants can use to describe the “new” combinations of that logic in their claims (because without that the database won’t be of much use).

        The adults in the room will recognize that at least one of the grown-up art units managed to put in place quite quickly a rather strict (and some would say “onerous”) system to protect their turf from turning into a chaotic free-for-all. What exactly is keeping the software patent lovers from doing the same? Surely it’ s not that “the technology doesn’t exist”. There’s one obvious explanation, of course, that I’ve stated hundreds of times in the past, which is that the most diehard lovers of software patent lovers simply like the status quo (and why wouldn’t they? they’re the same folks who insist that “there is no troll problem”).

        1. More likely NW plans to file a claim for:

          A computer implemented expert system configured to receive claim information and identify relevant prior art.

          And then retire on the royalties of his ‘contribution’.

    1. HPB This guy thinks attorneys only represent “grifting” patent-asserters?

      Not at all. I’m a patent attorney myself and I don’t represent grifters. But the grifters are out there. Or haven’t you been paying attention? Is there a point to denying that?

      For a long time we saw that the PTO had failed to hire appropriate personnel, perform competent searches

      And what did you specifically propose to address those problems? Show everyone the effort you made to highlight those problems, the root causes for those problems, and your specific solutions.

      , and read the claims they’ve allowed with a critical eye.

      Is that something only Examiners can do? Or are you willing to permit members of the public to do that as well?

      There’s a disconnect between what is happening in the real commercial world and what he espouses and predicts.

      Actually my “espousals” and my predictions are pretty solid and this case lines up perfectly with what I’ve been saying for literally years.

      The “disconnect” that you’re seeing — and the one that you’ll continue to see — is the “disconnect” between the completely unsupported (and unsupportable) views of the increasingly discredited “patent everything!” crowd and reality. Specifically, this is the idea that without junky U.S. software patents that somehow people will stop writing new software and everybody in Silicon Valley will pack up and move to China. No doubt the death of software patents will represent the end of a cash cow for a certain class of patent attorneys (mostly the least skilled patent attorneys) but other than that absolutely nothing will change.

      Going back to the specific of the instant case, the relevant facts are that (1) handing out utility patents on “games” does zilcho to “promote progress” in that “art field”; (2) such patents are highly dubious in view of the statutes and case law already in place; (3) the system is already overloaded with endless amounts of junk so good riddance.

      Sidebar: anyone notice how he uses

      Sidebar: everybody notices that you are completely blind when it comes to the language that your junky software patent-loving cohorts use. Give us a break, Church Lady.

      1. I’ll answer you when you answer the question below from January 8th, which you avoided.

        What is the technical field? Chemistry, or computer science?

        ——–

        What technical field is this “Malcomized” claim from?

        1. A method of detecting unknown [things] from a [thing] of interest, the method comprising:

        a. collecting an unknown [type of thing] comprising the unknown [thing] on a [collector], wherein the collecting comprises [adding to the collector];

        b. initiating a [step performed on] the unknown [thing] collected [in the collector] … , wherein the [step] is initiated after coupling the [collector] with a [kind of] detection unit, and wherein the coupling of the [collector] with the [kind of] detection unit causes a [something to] flow to establish [a kind of] communication between the at least one [gizmo] and the [collector];

        c. stimulating the [step performed on] the unknown [thing] to generate at least one [kind of] pattern [], wherein the at least one [kind of] pattern of [] corresponds to the unknown [thing]; and

        d. associating the at least one [kind of] pattern [] with [other things] in a [doohicky] to determine the unknown [thing].

          1. You might as well say “I can’t answer the question, or if I did, I would be admitting that my arguments about the role of logic in patent claims is bogus”.

            1. You might as well say “I can’t answer the question

              Right, except that’s not accurate. “I didn’t finish reading the question because it was so silly” is more honest.

              Keep taking your client’s money and flushing it down the twahlet, HPB. You’re not a grifter! You’re a super serious attorney with big brains just popping out of your head. Everybody can see that.

              1. Whatever I am, I’m not a person who insults strangers.

                And I don’t flush my clients’ money down the toilet, I deposit it in the bank. Most of them are attorneys and are more than capable of deciding whether they are wasting money or not.

    2. Yay Ec(h)osystem!

      The blight that is Malcolm is celebrating its 10th anniversary this year – far longer than anyone else he wishes to “accuse” of ANY inappropriate behavior.

      Happy Decade of Decadence.

    3. Excellent post.

      I take umbrage particularly with the fact that all attorneys are assumed to have $5,000 suits and make “millions” from patents that apparently are horrible. There may be attorneys like that, and I assume some are, but I have one suit that cost quite a bit less than 1/10th of that, and we work for all large clients (not NPEs). I would say the vast majority of patent prosecutors fall into the same category. We’re not rich and we’re not trying to bamboozle anyone.

      1. attorneys are assumed to have $5,000 suits and make “millions” from patents that apparently are horrible. There may be attorneys like that, and I assume some are

        Love the waffling. LOVE IT.

  10. The most depressing thing about this opinion is that it was written by Stoll who appears to be taking a very anti-patent position in her analysis under Alice. I was worried about her appointment in that from very little personal experience with her I found her to be a person of low quality. She was mean spirited, petty, and arrogant. It makes me wonder if a telephone call didn’t come in the middle of the night from Google/Obama that said, now if you were appointed would you be willing to put those patent under control.

    1. NWPA It makes me wonder if a telephone call didn’t come in the middle of the night from Google/Obama

      Remember folks: the defenders of junky gaming and software patents are very serious people.

      1. The paid blogger denies the influence of Google on patent law–what a surprise. You defend your employer and would lose your job if you didn’t.

        1. The paid blogger denies the influence of Google on patent law

          Nobody’s paying me, and I don’t deny Google’s ability to “influence” patent law.

          The best way to influence law and policy is to have a reasonable defensible argument, articulated in a manner that is understandable by the widest number of people, including the widest number of intelligent people empowered to make the necessary decisions.

          The worst way is achieve the goal is to run around espousing conspiratorial nutsanity and screaming vacuous self-serving nonsense that falls apart upon the mildest scrutiny. Can you achieve a short term gain using these latter methods? Sure. But you’ll end up paying a huge price (and so will everyone else).

    2. She wasn’t too bright either. I’d bet she has an IQ of about 115 and she is pretty mean to people that she perceives as being smarter than her.

      1. Alexander that is not a conspiracy theory. And, you obviously have no idea have DC works. Ask real people in politics whether what I am saying is plausible. The answer will be yes. And even the presidential candidates are admitting that they are going to ask similar questions to their potential nominees to the SCOTUS.

        1. that is not a conspiracy theory

          Obama was just calling to wish Stoll a happy birthday. Then he casually mentioned the scene from The Godf@ther with the decapitated horse because, hey, who doesn’t love that movie?

          1. Wow has this blog devolved into a mud pit with MM and his gang. So, MM, you think that a president can’t call a potential nominee or a proxy of the president can’t vet them? Not even sure how to respond to this level of ignorance other than chalk it up to you just trying to be disruptive. (And, remember that Lee before being appointed to the PTO was vetted by Google and other business people at the PTO.)

  11. whatp Let’s kill the patent system altogether

    I love how the lovers of “game patents” and “software patents” truly believe they are The Most Important People Ever.

    Never mind the hundreds of thousands of perfectly patentable innovations outside of those fields. That stuff is just for the Amish!

    What a pack of rich entitled cl0wns. Where have we seen these people before?

    1. The paid blogger chimes in — again. In reality, the people that are paying you and trying to restrict the patent system are the large international corporations that are largely monopolies like Google. There has been repeatedly posted on this blog evidence of that.

      1. And yet again he engages the “class warfare” meme accusing others of “rich entitled” even as he attacks the form of innovation MOST accessible by the opposite of those selfsame “rich entitled.”

        The duplicity runs amuck – happy Decade of Decadence.

        1. the form of innovation MOST accessible

          At least we agree on that.

          accusing others of “rich entitled”

          If there’s a more accurate description of the Quinnbots, I’ve not seen it. I know you all think you are the Most Important People Ever and the world revolves around you. And you sit around and tell that to each other all the time. But to an objective observer outside your echo chamber “rich and entitled” sums up the lot of you perfectly.

          Please let me know when a significant number of impoverished people join together to demand the reversal of this decision or Alice because “access.”

          Rich creeps grifting off even richer creeps because “legal”, at the expense of everybody else, isn’t just a “meme”.

          But you knew that already.

          1. Hah, I love it when someone calls activity that conforms to the law “grifting”. As a fan of the English language, it’s sad to see a great word de-meaninged.

            1. I love it when someone calls activity that conforms to the law “grifting”.

              I love it when folks pretend that certain laws don’t promote or enable grifting on a massive scale.

              1. That’s subjective. You can read all about how Conservatives believe class-action attorneys are “grifting”, or how attorneys who help victims of medical malpractice or dangerously defective products or financial fraud are “grifting”. To each their own, but “grift” is a real word, and it implies acquisition through lying or deceit. So when you use that word, you are accusing me, and others, of lying to our clients. Ugli.

                1. HofPB: “grift” is a real word, and it implies acquisition through lying or deceit. So when you use that word, you are accusing me, and others, of lying to our clients.

                  If you’re telling your clients that “the software industry won’t let junky patents on logic shrink and d i e so just keep filing them!” then you are definitely l y ing to your clients.

                  You would be l ying to a huge swath of applicants/patentees if you had made that statement before Alice (which is never going to be overturned). And you’d be l y ing to them after Alice if you tell them that Alice represents the end of successful attacks on logic patents (because it doesn’t — it’s just the beginning).

                  Here’s my advice to you, HoPB: maybe try finding some good arguments, HoPB, instead of repeating the worst ones.

        1. Again, we have clear evidence of your trxll status. You do not address the substance of what I am saying. That Google et al. are the ones that lobbying hard to restrict patents.

          1. NWPA: Google et al. are the ones that lobbying hard to restrict patents.

            Google files and prosecutes an incredible amount of junk which makes Google a huge part of the ongoing problem.

            As for “lobbying hard to restrict patents”, they might want to hire some better lobbyists because they aren’t doing a very good job.

            Would you really like to see what I could do with the amount of money Google spends on lobbyists? I don’t think you’d like that at all. I doubt Google would like it either.

            1. Non sequitur from you Malcolm.

              It is very well known that an entity desiring to wreck a system can very well still use that system while they are going about wrecking it.

              Unclench those eyes son.

    2. Your ad hominem quite misses the point Malcolm.

      Maybe you want to try to understand the law under discussion (if you deign to get off your high falutin self-anointed pedestal and stop with the A.O.O.T.W.M.D. value judgements of what Arts merit protection and what Arts you can just sniff and dismiss wholesale.

      1. “anon” Maybe you want to try to understand the law under discussion

        …says the bigtime l0ser who has been wrong about pretty much everything since forever.

        I understand the law very, very, very well, “anon.”

          1. more baseless ad hominem

            Says the guy who screeched “no claim dissection!” in a zillion comments before and after the Supreme Court smashed his universe.

            1. Celebrating a broken scoreboard is not the legal acumen that shows that you “really really really know the law.”

              Maybe you should try engaging in the counterpoints presented instead…

              1. Celebrating a broken scoreboard

                LOL

                The game is over and you lost spectacularly. The crowd has left. The confetti is cleaned up. People got a good night sleep. They woke up and had a nice breakfast and went to the park. They had a swell dinner and went to the movies that night. Then they went to sleep again. And then they got up and went for a bike ride in the morning.

                That was years ago. Meanwhile you’re stumbling around the parking lot in a plastic g@rbage bag crying about the “scoreboard.” There’s a word for that.

                  1. “The game is over”

                    I was plainly referring specifically to the debate about “no claim dissection” (which you lost spectacularly — nobody could have predicted!).

                    Keep crying about the “broken scoreboard”, though. You totally don’t sound like a big crybaby l0ser.

                  2. Whatever you were talking about, you were not correct.

                    Even the broken scoreboard STILL does not engage in full claim dissection – lest you forget your embarrassment and the fiasco about you being the first to post the Office’s take-away on a certain Supreme Court decision (and the need for integration)….

                    Oopsie for you.

                  3. “anon” your embarrassment and the fiasco

                    LOL

                    Billy’s back to making up his little fantasies again. Next he’ll be crouching in the stairwell of the elementary school in his bathrobe again, waiting for the police to take him to the rubber room.

                  4. Who is Billy, and what is this fantasy (of yours) that you are projecting on p00r Billy?

                    Are you really trying to say that you were not the very first to post a link to the Office take-away on 101 claim integration analysis, and that this just was NOT your petty pet theory (which is nothing more than a bainul “no mere aggregation” statement?

                    Too funny. As if the record is not replete with your bleatings.

  12. “The court held that a wagering game is roughly identical to fundamental economic practices that the Supreme Court held to be abstract ideas in Alice and Bilski.”

    I guess if they can play fast and loose with 101, they can play fast and loose with the meaning of “identical” and they can play fast and loose with the meaning of “fundamental”.

    How can a card game that has never existed be a fundamental economic practice?

    1. How can a card game that has never existed be a fundamental economic practice?

      Estimating risk and wagering/trading/acquiring/shedding based on that estimated risk are fundamental economic practices. As most adults are aware, they are also fundamental aspects of many (all?) so-called “card games” (and many other games as well).

      1. So what? The claims aren’t directed to that. They are directed to betting on the occurrence of “natural 0” hands. They aren’t preemting all “Estimating risk and wagering/trading/acquiring/shedding based on that estimated risk”

        1. Les: They aren’t preemting all “Estimating risk and wagering/trading/acquiring/shedding based on that estimated risk”

          As the CAFC has already informed you, increasing the specificity of the abstraction will not fix the problem. Whether it’s specific or narrow, the abstraction remains ineligible subject matter and it’s the pre-emption of that specific ineligible subject matter that creates the problem.

          A simple example for you:

          1. A method of wagering with a card deck, comprising wagering on a card hand. (ineligible)

          2. A method of wagering in a card game, comprising calculating a likelihood that one card hand is better than another card hand based on information about the cards. (ineligible)

          3. The method claim 2, wherein said card game is played in [insert newly built house that never was disclosed before here]. (ineligible)

          4. The method of claim 2, wherein said card hard includes a nine, wherein said nine is identified by the players as a kongobongo. (ineliglble)

          5. The method of claim 2, wherein said game is played with exactly 2,291 players. (ineligible)

          6. The method of claim 4, wherein said wagering includes the use of an algorithm Y=(x/52) + 4, where x is the number of kongobongos in said card deck and Y is the number of squirrels in the nearest mango tree. (ineligible)

          I could go on. And on. And on. And on. And on. And that’s a big part of the problem.

        2. Les – Thank you for pointing this out for the zillionth time for MM. Classic switheroo by him to move the conversation into his corner.

      2. Everything has “fundamental aspects” to them.

        Everything.

        This is mirrored by what 6 attempts with his gist of the “Gist” of the claim.

        1. Everything has “fundamental aspects” to them.

          Right. But the analysis doesn’t end at identifying a “fundamental aspect.”

          This really isn’t that hard. It is kinda funny that you and your cohorts spend so much energy trying to make it seem so.

          1. LOL – Oh Noes – Malcolm has used the “cohorts” word…

            And while being his duplicitous self with “not so hard” – and yet you are the one not understanding what Random is saying….

            Malcolm the hypocrite – as usual.

            1. RG: you are the one not understanding what Random is saying….

              I understand exactly what RG is saying. RG’s problem is that he doesn’t have the facts straight. He’ll figure it out eventually, or he won’t.

              [shrugs]

  13. Looks like the courts are in the wrong section of the statute again – head to 102/103. If it’s under the sun and made by man then it’s patent eligible.

    1. Two requirements under that:
      1) can be fit (broadly) into one or more categories (see Chakrabarty)
      2) has utility within the Useful Arts (as opposed to the fine arts).

      That
      Is
      It

      101 is meant to be a wide open welcoming gate.

          1. Malcolm has anointed himself Lord of the Rye Fields and self-judge of what is and what is not “toxic.”

            Not at all. Rather, I closely observed the US patent system in realtime as it imploded and I identified the primary causes of that implosion.

            I don’t think there’s any serious disagreement about those causes among reasonable people who aren’t directly (or nearly directly) invested in inflating the patent bubble (again).

            1. MM – I’ve asked this of you before and I’ll ask it again, can you point to a single claim that you believe to be patent eligible under your own opinion of Sect. 101? If so, then please do so.

              1. iit: can you point to a single claim that you believe to be patent eligible under your own opinion of Sect. 101?

                I can point to thousands upon thousands of them but I’m not going to waste my time with a third grader. Grow up, man.

                1. Contrast he chuckles from Malcolm:

                  but I’m not going to waste my time

                  with

                  But the analysis doesn’t end at identifying a “fundamental aspect.”

                  So….

                  it doesn’t end there – except for Malcolm (as typical).

  14. Great. How does a game played with cards have anything to do to do with hedging risk, intermediary settlement, or creating contracts? There is no way a card game is a fundamental economic practice. Players can play for “free”, no money nor “financial obligations” need to be imposed. Moreover, I can’t see why having a “new” deck of cards would then allow the court come to a different conclusion. Here the claims are directed to a method that uses a deck of cards, not the deck of cards itself. If the court believes the present claims to be ineligible, then any method that that recites steps using a deck of cards, no matter how new the deck, should be also ineligible. It’s as if the court is recommended adding non-functional descriptive material to a set of cards, even though the claim is directed to a process using the cards and not the cards themselves.

    Why didn’t this case pass the second prong of Alice? Were the steps recited in the claim, when considered in ordered combination, not new and useful? The court said that the steps only required the steps of shuffling and “dealing cards” but the claims clearly recited more.

    Which”abstract idea” would the claims preempt here? Clearly one playing a to game with cards would not necessarily infringing this patent if the game they use a different set of steps as the one claimed. The abstract idea of making a card game having rules is clearly not being preempted.

    We need to stop treating method claims and apparatus claims as one-and-the same, each has their own purpose and claim different subject matter.

    1. Mike Which”abstract idea” would the claims preempt here?

      The rules that are recited in the claim.

      The abstract idea of making a card game having rules is clearly not being preempted.

      Right. But you are making the rookie mistake of assuming that a narrow abstraction is “more eligible” than a broad abstraction. Literally every other patentee arguing a 101 case before the CAFC makes this same mistake. I have no idea where the idea came up that an ineligible abstraction can become eligible by making it more specific but it simply does not work that way.

      Were the steps recited in the claim, when considered in ordered combination, not new and useful

      Now that you bring it up (although it has nothing to do with the Alice test), what’s the “utility”?

      We need to stop treating method claims and apparatus claims as one-and-the same

      If you stop reciting functions, steps and rules in your apparatus claims you wouldn’t have to worry about this.

      If the court believes the present claims to be ineligible, then any method that that recites steps using a deck of cards, no matter how new the deck, should be also ineligible.

      Why do you believe that? What’s your argument?

      1. ” I have no idea where the idea came up that an ineligible abstraction can become eligible by making it more specific but it simply does not work that way.”

        Have another glance at Bilski (Fed. Cir), for sure…. probably the Supreme Court too.

      2. The question under the second prong is whether there is substantially more than the alleged abstract idea being claimed. Thus the novelty of the application of the abstract idea should matter under the second prong of Alice. No evidence was provided showing that the steps recited in the claim, when considered in combination, would not be a novel application of the idea of having a wagering game based on rules. The concept of using rules for a card game would not be preempted by a patent claiming a process that recites steps for performing a new game. The fundamental build block here is the concept of a rules based game, the claims that they drafted are not an attempt to patent that concept itself, but rather recite a tangible application of that concept.

        The claims that were rejected were method claims, not apparatus claims. For a process claim to be patent eligible the steps themselves must be new and useful, not the tangible thing that is being manipulated or transformed. If one were to claim a process of creating a new deck, I can potentially see such a claim as being eligible under the courts rationale. But if you wish to claim the process performed in the game itself, the novelty of the deck shouldn’t matter. Meaning, if you have a known process being performed in a conventional way, if the only difference between the prior art process and the present process is the type of deck the process manipulates, the process itself would still be conventional.

        1. B-b-b-but according to Malcolm (and I quote from his post at 17.1.2.1:

          But the analysis doesn’t end at identifying a “fundamental aspect.”

          Never mind that he himself ended prematurely and all….

          Oopsie for him.

        2. Mike: For a process claim to be patent eligible the steps themselves must be new and useful,

          There’s way more to eligibility than “new and useful steps”, as every educated patent attorney knows.

          if you wish to claim the process performed in the game itself, the novelty of the deck shouldn’t matter

          Of course the novelty of the deck matters, just as the prior art always matters when a claim recites both ineligible subject matter and prior art.

          You are forgetting that “wagering” alone is ineligible subject matter. If the novelty of the deck didn’t matter, then what’s to prevent people from claiming “wagering” processes without a deck? Heck, just claim a game of “wagering” that involves people sitting around a table with newspapers and “wagering.”

          And why limit yourself to “wagering”? Just claim a game about “talking” about specific stuff, sitting around a table. Put the table in a room, wherein the room has at least one object purchased in 2016. That way you can avoid tons of prior art. Sure you can! Tell it to your clients — it’s the kind of super clever thing that you’re known for, right?

    2. “There is no way a card game is a fundamental economic practice.”

      Bro they’re talking about the betting. That is what is “new” in the claim.

      1. ^^^ not the claim, not even the “Gist” of the claim, but the gist of the “Gist” of the claim…

        (6, there is no claim ever written that would be eligible if one applies this gist of the “Gist” of the claim approach – think about what that means)

        1. “anon” there is no claim ever written that would be eligible if one applies this gist of the “Gist” of the claim approach

          “Everything is obvious after KSR!”

          Yes, we’ve heard this story before, “anon.” It’s a complete unadulterated l i e, of course, but that’s not a surprise coming from you.

          1. It’s not a surprise coming from you either. That’s what you are saying every time you roll your eyes and say suuuuper duppper compuuuuter… or “because shiney”.

            According to you (and KSR) everything is obvious.

            1. Les According to you (and KSR) everything is obvious.

              And another blatant l i e.

              So we have a pack of lying l i ars on the Internets relentlessly advocating for game and software patents and patent maximalism.

              And I only noticed that for the first time ten years ago.

              LOL

                1. anyone who reads your posts will so attest.

                  Anyone who reads my posts will know that I’ve stated over and over again that I don’t believe “everything is obvious”. In fact, when KSR was being decided I explained to everyone here why it didn’t represent the “death of the patent system” and I mocked the folks who suggested otherwise.

                  I don’t think a week goes by when I don’t remind people that presenting evidence of unexpected results is the key to getting a strong enforceable patent on a new combination.

                  So how long until you make the same false accusation again, Les? Another month? I predict one of your cohorts will be along in less than 24 hours to make the same inane accusation.

                  1. “Anyone who reads my posts will know that I’ve stated over and over again that I don’t believe “everything is obvious””

                    I wonder why you’ve done that. Is it just that you like repeating yourself.

                    Or could it be that everything else you say leads your readers to conclude the opposite?

                  2. Malcolm,

                    It is not a false accusation – it is merely you not being aware of the full ramifications of your position.

                    Unclench your eyes, son.

            1. Don’t imply that because I routinely disagree with MM that means I agree with you, please. I routinely disagree with you.

              The Federal Circuit applied the test wrong. I still believe the test is appropriate and necessary and when properly applied largely accomplishes what it is supposed to do.

              1. please. I routinely disagree with you.

                No doubt – but in context of this thread, Random, you ARE agreeing with me !

                (It’s OK – Malcolm’s insults do not hurt)

        2. Near all of the claims before me would be eligible if one applies “this” gist of the “Gist” of the claim approach. Indeed, patents issue over just that standard every single day.

        3. “anon” there is no claim ever written that would be eligible if one applies this gist of the “Gist” of the claim approach

          Translation: “I’m a braindead g00fball who will do and say anything.”

      2. Ok… if that’s what they are talking about, how is betting “on the occurrence of “natural 0” hands” a fundamental economic principle?

        1. how is betting “on the occurrence of “natural 0” hands” a fundamental economic principle

          “How is betting on the occurence of an increase in the price of corn a fundamental economic principle”?

          I hope the above paraphrase example helps you see why you’re missing the point in a huge way. Abstractions like “wagering methods” (and other logical exercises) are best barred from a sane patent system because granting patents on those abstractions inevitably corrode the public’s ability to freely employ the fundamental principles. They also cause the system to implode as they represent such an extremely low form of “innovation” that you and I can sit here all day and “innovate” hundreds if not thousands of such “processes.”

          Get it? I hope so. It’s incredibly straightforward. Most people don’t have a hard time with it. The only exceptions are this tiny tiny tiny group of patent attorneys who grew up with the mistaken idea that all this junk belongs in the system. It surely doesn’t.

          And we’re seeing the process of clean-up now. As predicted, there will be weeping among the entitled classes and their oh-so-serious mouthpieces.

          1. “Get it? ”

            No, I don’t think I do.

            I think you said you agree that betting “on the occurrence of “natural 0” hands” IS NOT a fundamental economic principle. But, that you think it could be categorized under some broader abstract concept such as wagering or commodities trading?.

            After that you lose me. Please explain.

            1. Les: you think it could be categorized under some broader abstract concept such as wagering

              Yes, Les. Betting on a specific thing can be categorized under a broader abstract concept such as wagering. But it’s still abstract.

              After that you lose me

              Then you should apologize to your clients because you’re incompetent.

                1. Why is this sort of thing allowed, but when I try to post three claims, each with a supporting link it is held for moderation?

                  1. The longer your post is the more likely you trip one of the completely arbitrary word restrictions. This happens no matter who is doing the writing. It happens to me quite a lot if I write a long post.

                  2. That cannot be a serious question, Les.

                    After all, we are “celebrating” Malcolm’s Decade of Decadence (this is just not a new, nor even a more pronounced type of thing from Malcolm).

                    For all of the noise about wanting a “better ecosystem” there is just far too much obvious actions (or more accurately LACK of actions) that scream otherwise.

      3. A wager doesn’t necessarily mean an exchange of real money. It’s a game. I bet (pun intended) the court would likely hit the original Monopoly game with the first prong of Alice because Monopoly has to do with people buying and selling (make believe) property.

        1. <iI bet (pun intended) the court would likely hit the original Monopoly game with the first prong of Alice because Monopoly has to do with people buying and selling (make believe) property.

          Oh noes! Imagine the suffering in a world without a patent on Monopoly.

          The horror … the horror …

          1. MM, from my view, the “deniers” either do not accept that information processing without more is not eligible, or that any claim to a computer implemented process is not eligible where the computer implementation is of the form where the computer is simply being used.

            Rules: a form of information processing.

            Also, when generic items are simply being used to implement an otherwise ineligible process, the process is not rendered eligible. The use must produce some new, physical transformation. The best example that I know of is the telephone signal in the Bell Telephone case where voice was transformed into a physical, electronic signal on a wire.

            1. of the form where the computer is simply being used.

              See the Grand Hall experiment Ned.
              See In re Nazomi.

              See the countless times you have tried to post your C R P and refused to be inte11ectually honest.

              1. Hey anon, let us try your grand hall experiment with two identical computers, one with an OS and one without. Next, let us place the claimed software next to the two computers.

                Now, can you tell me which computer is physically different from the other?

                1. Ned – next to…?

                  Please,

                  Let’s have you NOT omit the first step in ANY “use” of software: changing the machine by loading and configuring the machine WITH the software.

                  Unless you want to argue that you somehow can use the machine with the software merely nearby (but not changing the machine), your position is akin to waves of magic wands (or chants of witches).

    3. “If the court believes the present claims to be ineligible, then any method that that recites steps using a deck of cards, no matter how new the deck, should be also ineligible.”

      I am not so sure this is right. But let us drill down.

      I invent a new type of card, physically different from other cards. Where is the utility? In a new type of game.

      Now if I claim the new card, one that has three sides, the third only being visible to a wearer of special eye gear. Claiming the new card claims all possible games that can be used with the card. But does the claim to the card become ineligible if I limit my claim to one game?

      Viewed this way, there is something definitely amiss in the original proposition.

      1. Claiming the new card claims all possible games that can be used with the card.

        No it doesn’t. Claiming the new card claims the structure of the card. That’s like saying discovering the structure of a rubber band claims all things the rubber band could ever be used for. But we know that if someone else figures out a novel non obvious use of the rubber band, they can get a claim for that method of use. They may not be able to practice it absent a license (or absent the band patent running) but they have exclusionary rights when the rubber band is put to that particular configuration or purpose.

        A new card has no utility in itself. A new card coupled with a game to use it for has some utility I suppose. But finding a new game to play with the card, just like finding a new use for the rubber band, imparts new utility and is its own invention.

        1. Random, I think you understand what I meant – that the claim to the new card also effectively excludes others from using the card even if they discover new uses for it.

          1. To the extent that your post confuses the nature of a patent in positively practicing something as opposed to the exclusive negative right of preventing use (while not excluding the development and separate patenting of methods of use, your post Ned will cause more confusion and Random’s reply is especially apt.

            This is not a difference that should be glossed over.

        2. “But finding a new game to play with the card, just like finding a new use for the rubber band, imparts new utility and is its own invention.”

          I thought that was what this application was all about – trying to claim a new game to play with the card, just like finding a new use for the rubber band?

  15. I think this is a good plan. It’s obvious that these cards have already been invented and need to be credited to a company or an individual. Anyone can make a card game, so it’s not like this is a difficult patent law to get passed if you are going to create one.

  16. “deck of ‘physical playing cards” that are shuffled and then dealt according to a proscribed pattern”

    Recognizing we’re not supposed to mention typographical errors hereabouts; still, this one is fun.

  17. The real issue here with the Guidelines for subject matter eligibility being “optional” is that it necessarily creates a diffuse and highly variable application of law – i.e., each examiner is tasked with creating his or her own standard (ad hoc) using the vague decision handed down in Alice. My vote is for a uniform standard across all examiners for each rule and law that is being applied.

    1. “is that it necessarily creates a diffuse and highly variable application of law”

      Meh, the guidelines didn’t create that, the judicial exceptions did. And they were only implemented due to the carelessness of congress.

      Take the issue up with congress, not the courts or the guidelines.

      1. You almost have something here 6.

        This is most definitely a Court induced haze because of their attempt to (re) write statutory law.

        Separation of powers problems.
        Void for vagueness problems.

        You are also on to something in that Congress should take note and act (like they did in response to the 1930’s and 1940’s anti-patent Court; otherwise referenced as the Act of 1952).

        1. Congress should take note and act

          Maybe when junky game patents are expunged from the system we’ll see a massive public revolt. Right? Because patents on improved rules for playing pattycake are really, really important for promoting progress in the useful arts. Sure they are!

            1. Not sure what your point is

              My point is that neither the public at large or their representatives in Congress see any need for patents on games (card games or otherwise). To the extent the courts continue chopping away at their own flimsy excuses for the patentability of games, the patent system is improved and every beneficiary of the patent system will be better off as a result. Congress understands this (it’s pretty easy to understand, after all) and so they aren’t going to bother “checking” the courts.

              Put another way, the US patent system is presently waaaaaaay out of balance and to the extent the courts are trying to fix the mess of their own creaetion, Congress isn’t going to step in and stop them. Why would they bother?

              1. MM, I am not so sure that Congress does not see any need for patents in games. The sale of games games for consoles and the PC are not a big industry. Inventions can be in the hardware that makes these games work It can be in the game engines that allow game designers to do their thing. I of both are important.

                1. Ned: game engines

                  aka “logic”.

                  Inventions can be in the hardware

                  Then claim the hardware in structural terms. Hardware that has utility in a game is bound to have some other kind of substantial utility.

                  The sale of games games for consoles and the PC are a big industry.

                  Sure, but “big industry” alone doesn’t justify handing out patents, particularly when there is no coherent or rational system in place for examining the “innovations” relevant to that industry. The movie industry is huge, too, after all, but we don’t hand utility patents out to “plot developers” or actors or directors or cameraman unless they invent a new device or a process that physically transforms matter. That’s another reason to be concerned about methods for “using logic to determine when an animated character opens its mouth”.

                  1. MM, but I was speaking about game edges I was thinking about the virtual worlds they create through manipulating audio-visual creations. This is more than just logic in terms of what it does.

              2. You do know that it is NOT up to the courts to rewrite patent law (statutory law versus common law), right Malcolm?

                The means really do matter – no matter how noble you might like to think your ends are.

                1. “anon” it is NOT up to the courts to rewrite patent law

                  Well, we’re never going to back to pre-Alice or pre-Mayo or pre-Bilski or pre-KSR or pre-State Street so here’s some friendly advice: get over yourself.

                  1. There you go again, trying to “personalize” this as if this was an “anon” thing.

                    It is not.

                    This very much is a law thing.

                    Maybe you should change your focus from the personal (and personal attacks) to the substantive issue.

                    Just a thought.

                  2. Well,

                    Your reply is not on point.

                    Maybe instead you want to reply so that people can see that you do get the point.

                    Just a thought.

              3. The public at large doesn’t care about patents at all, so I’m not sure what you think you’re arguing here. The public doesn’t care about patents on lawnmowers, hair dryers, televisions, or strollers either. That’s what we’re relying on now to make patent policy? Brilliant. Industries, on the other hand, care about patents. Gaming is a multi-billion dollar industry, so certainly the gaming industry (or at least the big players) care about gaming patents.

                1. anonpl: certainly the gaming industry (or at least the big players) care about gaming patents.

                  Right, just like big oil companies care about access to deposits in natural parks. Let’s just let them decide what is best for them … because $$$! Great idea.

                  The public at large doesn’t care about patents at all

                  If you want to look at it that way, the “public at large” doesn’t care about anything except where to find cheap food, fresh water, drugs, guns, love, healthcare and maybe a church.

                  The fact is that if you tell some card players that you’re going to sue them because they’re infringing your patent on a card game, those players are going to be baffled and sorely disappointed with the patent system (to say the least). Given that fact, what’s the point of wasting the PTOs limited resources on that junk? Is there a shortage of video games? Is there any evidence at all that we’re promoting “progress” in the “art” of games by handing out patents on new games? What is that “progress” supposed to look like anyway?

                  1. That’s not an answer, it’s an attempt at obfuscation.

                    And you’re the one who brought up the “public at large” as if their opinion on patents in a particular industry is relevant at all.

                    Replace “games” and “gaming industry” with anything – soap and soap industry, tables and table industry, high chairs and high chair industry, etc. – and your comment doesn’t change. You’re advocating to kill the patent system. And that’s fine, but for some reason you refuse to admit that, even though you’ve never said one pro-patentee word in your life and want to, at the very least, neuter the system.

                  2. I have long pointed out that Malcolm IS anti-patent.

                    There are still those Echoes out there that ascribe to the same Ends, and thus also clench tight their eyes to the “whatever” means.

                  3. you’re the one who brought up the “public at large” as if their opinion on patents in a particular industry is relevant at all.

                    The public’s opinion on patents in a particular industry is always relevant. All that’s required is for the public to express it’s opinion which the public tends to do when it’s informed.

                    Hence this blog. Hence the people who tr0ll this blog relentlessly defending the patent industry and the worst patents ever granted by any system in the history of humankind.

                    You haven’t figured this out yet? Of course you have.

                  4. anonpl: You’re advocating to kill the patent system.

                    LOL

                    How odd, then, that I’ve never ever once suggesting anything remotely like “killing the patent system.” You think I don’t know how to express myself? You’re mistaking me for someone else.

        2. “This is most definitely a Court induced haze because of their attempt to (re) write statutory law.”

          It wasn’t their attempt to “rewrite it” anon, it was their attempt to save it.

      2. 6 – I think my point here is pretty clear that the PTO shouldn’t let this fall on the individual examiner to read and apply Alice in a vacuum. The fact that the guidelines are hundreds of pages of twisted logic shows the flaws in that decision.

        1. “I think my point here is pretty clear that the PTO shouldn’t let this fall on the individual examiner to read and apply Alice in a vacuum. ”

          A. They’re are bound by lawl, the oaths that examiners have to take, and administrative practice brosef.

          B. Who is determining this “should” (obligation”) of which you’re speaking? You? What authority do you have in the matter?

          And also it isn’t just “applying Alice”, the cases go way back, and what is being applied is a determination of whether the claims run afoul of claiming subject matter that is judicially excepted and is thus invalid under 101.

  18. I’m about to shock some people here, I’m sure: This is not an abstract idea.

    Less shocking: I think the CAFC screwed up again.

    I agree with the conclusion that the shuffling and dealing of cards is not significantly more, but the claim in the first instance doesn’t invoke an abstract idea. Unlike Bingo or hedging, those things were preeixstent prior to the claimed invention. The risk hedging method was known, therefore the act to apply the known thing to a known computer is not an invention. Similarly Bingo was known, and the act to apply it on a known computer is not an invention. Similarly Ultramercial (though this court doesn’t mention it) was applying a known act used on television to content delivered via computer.

    This court lets the tail wag the dog – they seem to think that because the subject is known that controls the issue (as they point out that a novel subject, such as a new deck, would confer eligibility). I agree that an entirely novel subject (as opposed to just switching the subject to a different, already known field) is one manner of reaching eligibility, because it constitutes significantly more limitations, but it is not the only manner.

    There is no finding that these particularly claimed rules were known, and therefore this is not a case of applying a known ruleset to a different preexisting medium. The rules themselves appear to be novel and non-obvious and therefore constitute eligible subject matter. There are probably plenty of ways of rejecting this claim, but abstract idea is not one of them, not on these grounds.

    A rare case where the CAFC misses against the applicant/patentee rather than in favor of him.

    1. The court’s logic applies such that so long as you are using, e.g. a known six sided die, you can’t make an eligible wagering ruleset with them. But there are clearly games that utilize only six sided die yet have completely different rulesets (such as the difference between Yahtzee and craps). Assuming craps came first, there’s no logical reason that Yahtzee would be eligible with 7 sided die but ineligible with 6 sided die.

      You can certainly make an argument that neither 7 sided yahtzee, nor 6 sided yahtzee, nor craps, were considered eligible subject matter because they fail to be useful arts as contemplated by the constitution (and therefore can’t have utility under 101) but there’s no real basis for discerning them from each other.

      1. “Assuming craps came first, there’s no logical reason that Yahtzee would be eligible with 7 sided die but ineligible with 6 sided die.”

        Nobody said there was. The court simply left open the possibility that some such similar differences might at some points in the future render a claim eligible. Though the difference would have to be larger than a 7 sided vs 6 sided dice difference imo.

            1. a seven aided die is an “objective physical structur[al” difference….

              Seven sided die are in the prior art.

              Try harder to keep up. I know this is a difficult subject for you.

                  1. “anon” It is not how Malcolm would have it. The Courts were pretty explicit about that too.

                    No idea what you’re talking about. 6 is absolutely correct that comparison of claim limitations to the prior art is mandated when the claim both implicates an abstract idea (e.g., logic) and recites additional elements that would otherwise be eligible if they were not in the prior art.

                    There is no other way to interpret the case law. This has been explained to you ten zillion times already, by the way, and pretty much the entire universe of non-braindead patent attorneys has moved on.

                  2. Non sequitur Malcolm to the immediate point here that your bleating of “objective physical structure” is just wrong.

                    Wrong that such is anything but one optional claim format, and wrong in that you attempt to have it both ways in the immediate thread.

                    Of course, such duplicity never seems to bother you.

                    “Go Figure.”

        1. The court simply left open the possibility that some such similar differences might at some points in the future render a claim eligible. Though the difference would have to be larger than a 7 sided vs 6 sided dice difference imo.

          But the difference in structure is independently eligible. The question is whether changing rules can ever impart eligibility on their own, no matter how detailed or novel the changes are. Here let me put it like this: If you buy that it wasn’t improper for the court to not analyze the particular rules claimed when deciding that this game is abstract “wagering”, then you necessarily have to buy that all games are abstract “play” or “recreation” because we don’t consider the rules specific to those games. So all games that lack a physical structure change from the prior art are ineligible.

          But why stop at games? Surgeries are an activity. Surgeries use the same physical implements. So clearly different rules ordering about conventional medical implements (what that art would call a procedure) for the class of “cutting into people” (a long known fundamental medical practice) is ineligible subject matter too, right?

          If we’ve both wagered and cut into people for thousands of years, what is the reason that changing the order and usage of known medical implements is eligible but changing the order and usage of known wagering implements is not?

          The answer, of course, has to be that the rules CAN impart eligibility. It’s simply a question of whether you are claiming particular rules in a particular order, or claiming the general concept of using rules to achieve an end (“follow any non-limited procedure to wager” = abstract wagering, “follow any non-limited procedure to cut into people” = abstract surgery). In this particular claim there were particular rules in a particular order.

          And like I say below – of course the other distinction is that wagering has no utility while surgeries do, and therefore one may be eligible and not the other, but that’s not the opinion of the federal circuit and that’s not what they’re resting their argument on here.

          1. In post 11 you say that the claims are not directed to an abstract idea. But post 11.1.1.2 makes it sound like you’re really saying that the specific rules of the game constitute significantly more.

            1. That’s true. I suppose the best way to say it is this: They identified the abstract idea as “wagering.” They then solely considered the deck and the shuffling/dealing during the significantly more analysis. They never overtly treat the “particular rules” of the claim in the analysis. If you view the particular rules as being bound up in their first step analysis, then you shouldn’t come to the conclusion that there is an abstract idea, because the claim wasn’t claiming broad, generic rules which result in money changing hands (which is the abstract idea of wagering). On the other hand, if you buy wagering as an initial step, then it was clearly improper to not consider the particularity of the rules in the significantly more analysis.

              So it’s true that I do kind of flip as I talk about it, because I’m not really sure if I should concede to the court whether their first step of the analysis was proper or not. I don’t disagree with either of what they explicitly said: Wagering is an abstract idea and the deck and playing it isn’t significantly more, but they left a part of the claim unanalyzed and whatever step they think that subject matter was treated under was done wrong.

              1. ^^^ the flaw of the “Gist/Abstract” sword approach is forgetting to go back and integrate those claim pieces that are cleaved off with the leading “Gist” edge.

                Oops.

                1. ^^^ the flaw of the “Gist/Abstract” sword approach is forgetting to go back and integrate those claim pieces that are cleaved off with the leading “Gist” edge.

                  Only in this case, not generally. They performed an incomplete analysis, and that’d be improper no matter what you’re doing. If you look at the spec and decide it doesn’t enable something, but fail to take the second step of asking if the art had previously enabled it, then you’re going to come to a lot of wrong enablement conclusions.

                  There is nothing wrong with pointing out that part of the claim is directed to a generic/abstract thing so long as you also consider the parts of the claim that limit that thing. Considering the claim as a whole does not mean you have to give the same analysis or equal weight to all parts.

          2. “But the difference in structure is independently eligible.”

            That’s correct. But when the claim, as a whole, is transparently an attempt to preempt the abstraction that is tacked onto the “difference in structure” then 101 still gets ya bro.

            Every time.

            Remember, the whole point of the exception is to prevent claims to abstractions. You can’t “get around” this prohibition by tacking on some tiny “difference” that is already old.

            I don’t understand why it is so hard for attorneys etc. to understand that the courts aren’t going to let them “game” their exceptions.

            1. It is plainly not within the authority of the Courts to write their “exceptions” into the statutory law.

              Leastwise, not in a common law manner. Not since 1952 when Congress acted to replace “invention” (read that as “gist of the invention” or any large number of like phrases) with 103 instead (and strip the courts of that common law ability to set the meaning of the word invention).

                1. MM, I read, and I will find the article if necessary, that reason why Cro-Magnon dominated and replaced Neanderthal was because of “marriage.” Apparently, Neanderthal men were not monogamous, and did not support any one woman or even care about whether a particular child was his or not. Children were raised exclusively by women.

                  With monogamy, the man provided not only for himself, but for his family. He also actively help raise his kids, and passed on to them his possessions, then later his property and titles: civilization.

                  Now, we need a word here to describe this central advance so that we might tailor our laws to protect and advance this fundamental relationship, one man, one woman in a family. What word would you use?

                2. Extremely odd of you to attempt to make this some sort of liberal political position – even as you have no c1ue what my views are on that side topic.

                  Maybe you want to actually stick to the topic…

                  1. you have no c1ue what my views are on that side topic.

                    That’s not the point, silly. The point is that your comment at 11.1.1.2.2.1 in response to six is an anachronism. The Supreme Court has already ruled (very reasonably, in nearly everyone’s opinion).

                    You lost, bigtime, just like Scalia and his fellow bigots lost, bigtime. Now try shutting your trap and stop making an a s s out of yourself. Good luck.

                  2. Your response here makes zero sense.

                    Try using those short declarative sentences that you are always on about to actually make a point.

                    Begin by NOT simply stating your opinion as some type of necessary conclusion without actually getting to that conclusion.

            2. But when the claim, as a whole, is transparently an attempt to preempt the abstraction that is tacked onto the “difference in structure” then 101 still gets ya bro.

              That’d be a great argument if it had any basis in the facts of this case. It’s not “transparently an attempt to preempt the abstraction” because there’s nothing in the claim that suggests it’s broadly applicable to “wagering” or even “wagering using a known 52 card deck” it’s related to a specific type of wager based upon a specific card dealing configuration.

              Five card stud is a concrete application of card deck wagering. So is five card draw. So is Omaha. So is Blackjack. Nobody would confuse a person playing blackjack as reading upon or preempting a game of five card stud. This is a specific game just as blackjack is, and the only game it is preempting is one that is dealt and wagered in the specific, particularly claimed 10 step manner of the claim. It’s not a claim that is broadly, vaguely, or functionally directed to “wagering upon dealt cards” (which would preempt all of the above games). That would be an abstract idea. This is just a specific game.

              1. RG: specific type of wager

                Specificity doesn’t rescue abstractions. Either does conventional structure.

                “Pre-emption” of a a large genus of fundamental practices by a claim may lead to the conclusion that a claim is ineligible, but the lack of such pre-emption does not mean that the claim is eligible. What matters is whether the claim pre-empts or protects any ineligible subject matter in a prior art context. If so, then the claim is ineligible.

                This is an extremely important point. The Supreme Court understands this. So does the CAFC.

                  1. Alexander: Have you ever given your definition of an abstract idea or abstraction?

                    Non-concrete, non-material, existing apart from the physical world.

                    It’s in the dictionary.

                    And, yes, “wagering” is an abstraction.

                  2. existing apart from the physical world.

                    LOL – and hos does [Old Box] come to have any new capability introduced by the manufacture and machine component known as software?

                    Must be “Magic”…!
                    (or witchcraft)

                    /off sardonic bemusement.

                1. Specificity doesn’t rescue abstractions. Either does conventional structure.

                  Specificity to non-conventional structure does though, and this claim has that. This isn’t like Ultramercial, where there were specific steps that described a conventional advertising-for-content method. This specifically claimed method is new. It’s a new method. The fact that the new method utilizes an old structure isn’t relevant. Most new methods utilize solely old structures.

                  What matters is whether the claim pre-empts or protects any ineligible subject matter in a prior art context. If so, then the claim is ineligible.

                  This sentence doesn’t mean anything. If “wagering” is ineligible subject matter, then a method claim to a new game using a new deck is *also ineligible*. The only thing that would be eligible under your logic would be a product claim directed solely to the new deck. But that is not what this court said. This court said that a new game could be claimed so long as it contained a new deck. That must mean that wagering itself is eligible.

                  You’re trying to turn this into a fight about whether wagering ever meets 101. I can agree with you that maybe that should be the case (i.e. wagering is a not a useful art) but that is not the logic this court is applying. The court is assuming wagering can be eligible. But then the court says it is only eligible when the novelty is a physical novelty rather than a method step novelty, and there is nothing in law that ever treats those two differently.

                  1. The more I think about this case the more I am disheartened that this won’t be a teachable moment for both the USPTO and the patent bar.

                    This case could have been used to clearly draw battle rules: there are multiple possible constructions for what the claims are directed to, and claiming the real details of the ‘invention’ is key to significantly-more.

                    Sure that basically just leaves us with another subjective inquiry like obviousness, but at least then it wouldn’t be a bunch of time-wasting stumbling in the dark by both sides.

                  2. RG: “What matters is whether the claim pre-empts or protects any ineligible subject matter in a prior art context. If so, then the claim is ineligible.”

                    This sentence doesn’t mean anything. If “wagering” is ineligible subject matter, then a method claim to a new game using a new deck is *also ineligible*.

                    RG, you are forgetting the fundamentals. Setting aside the utility problems (which I believe should be taken seriously and should be lethal in most instances of game patents), a new non-obvious physical object — described in objective structural terms — is *not* abstract subject matter. On the contrary, it’s the quintessential example of eligible subject matter.

                    Now, if I claim a method of physically manipulating that new deck, that method is also eligible subject matter. At that point, if I lay ineligible subject matter on top of the claim regarding players “wagering” on the results of those real-time physical manipulations, there is no protection of the otherwise ineligible “wagering” outside of the eligible physical steps also recited in the claim. That’s key.

                    Note that the “wagering” need not even be recited in the claim. For the same reason, if I invent a new method of synthesizing a plastic I don’t need to recite a step of “thinking about the results of a baseball game” to capture those infringers who practice my method while thinking about a baseball game. But I could if I wanted to! There is no eligibility problem because nobody in the prior art is turned into an infringer merely be practicing the ineligible step.

                    This is just basic logic. This is why Prometheus was a 9-0 grand slam that’s never going to be overturned, fyi.

                    The court is assuming wagering can be eligible.

                    No, they are not assuming that. They are assuming that a claim that recites “wagering”, which is ineligible subject matter, may yet be eligible in spite of that recitation. Huge difference!

                  3. — described in objective structural terms —

                    Once more into the fallacy of taking an optional claim format and making it the de facto ONLY legal claim format…

          3. “The question is whether changing rules can ever impart eligibility on their own,”

            I disagree that such is “the question”. The question is whether the claim runs afoul of the exceptions.

            But, even if it were the question, the answer is likely a simple “no”. Mayyyyybe if the new rules are applied in a traditional manufacturing context and are tacked onto an otherwise novel nonobvious method/device. Probably not even then.

            “then you necessarily have to buy that all games are abstract “play” or “recreation” because we don’t consider the rules specific to those games.”

            Yeah, I “bought” that a long time ago. It was pretty cheap, I got it at wally world. :)

            “So all games that lack a physical structure change from the prior art are ineligible.”

            Now you’re on to something.

            “But why stop at games? Surgeries are an activity.”

            He’s ON FIRE! Sinking 3 pointers from DOWNTOWN! But, surgical procedures might get saved as being a traditional useful art, idk, tough call, but using “different rules” for surgeries? Doubt it bro.

            1. might get saved as being a traditional useful art, idk,

              LOL – you do not know.

              I suggest that you focus on that aspect (utility) and come to understand the difference between the fine arts and the useful arts.

            2. He’s ON FIRE! Sinking 3 pointers from DOWNTOWN! But, surgical procedures might get saved as being a traditional useful art, idk, tough call, but using “different rules” for surgeries? Doubt it bro.

              Point to one case that suggests the Alice analysis is different for “traditional use arts” than arts of dubious utility.

              If you want to say the utility rules are too lax and all betting games shouldn’t be eligible because they are not useful, I’d probably agree with you. But that’s not the argument being advanced HERE. The argument being advanced here is that “so long as the same structures are being used, we don’t find different configurations of those structures, no matter how particularly claimed, eligible.” That is NOT the law, as the Supreme Court has explicitly allowed for combination patents – novel and non-obvious combinations of old things.

              1. … Use the “logic” that 6 advances and apply it to my Big Box of protons, neutrons, and electrons and see exactly why 6 and the rest of the anti’s that depend on that “logic” have been so off for so long.

                1. Use the “logic” that 6 advances and apply it to my Big Box of protons, neutrons, and electrons and see exactly why 6 and the rest of the anti’s that depend on that “logic” have been so off for so long.

                  No, you are wrong. I am saying this claim was eligible because an identifiable significantly more limitation exists. You want to remove the limitation and still find the claim eligible, and that is wrong.

                  If the claim says “a computer configured to perform a function” it is encompassing all manner of achieving a result. A claim to a result is fundamentally an abstract idea. The fact that it is applied to a conventional computer is mere field-of-use that is not significantly more. A claim where the only novelty is reconfiguring a computer to achieve a result, and there are no limitations as to how the reconfiguration is achieved, the claim is an abstract idea.

                  The same applies generally to PNE – saying “PNE configured to do X” without limiting, or only minorly or vaguely limiting the manner of the configuration is an abstract idea.

                  But this claim *particularly limits the configuration* and therefore contains significantly more limitations. This claim is eligible. Your generic argument that “well everything reduces to PNE” is not. A claim to “PNE configured to bear a person across water” is a claim to the abstract idea of a boat. A claim to PNE configured into wood, that is combined in a particular manner and held together by other PNE configured into nails to form a particularly claimed structure is concrete, and its not because you drilled down into the physical structure (PNE), it’s because you drilled down into the configuration.

                  The “anti” (and you’ve always lumped me in with them until this case, but you mistake my one-time push for eligibility for something more) position is generally the correct position, because generally we see overbroad claims lacking particular limitations. This claim has particular limitations. It’s not overbroad. It’s eligible.

                  1. You want to remove the limitation and still find the claim eligible, and that is wrong

                    No. That is not what I want to do.

                    You are getting much closer though with your writings of today to grasping what has been a long, long battle on these threads.

                    I suggest that you focus your energies on those elements that Malcolm and 6 are disagreeing with you about. You will see that such is the type of thing that runs rampant in their Belieb system.

              2. “Point to one case that suggests the Alice analysis is different for “traditional use arts” than arts of dubious utility.”

                A. We’re not talking about “utility”, set it out of your mind. We’re talking about just plain ol’ traditionally patent eligible arts.

                But the easy answer is Diehr, the whole determination in that case was “saved” by that, as a backup position enunciated by the court. And I think they actually said that explicitly in Alice itself. It may have been Mayo or one of the other decisions around that time, it’s been awhile since I crawled through them.

                1. talking about “utility”, set it out of your mind. We’re talking about just plain ol’ traditionally patent eligible arts.

                  If not based on utility, 6, what IS the distinction that you are making? What is the differentiator that merits “traditional[ ] arts”…?

                  You bring this up as some type of important difference, then you don’t explain what it is that you mean (while attempting to say that what you mean is not what you mean).

                  1. “If not based on utility, 6, what IS the distinction that you are making? What is the differentiator that merits “traditional[ ] arts”…?”

                    Da lawl.

                    “If not based on utility, 6, what IS the distinction that you are making? What is the differentiator that merits “traditional[ ] arts”…?”

                    If you don’t know what the traditional useful arts are, you can do advanced maneuvers like look up what they were traditionally. There was a book named an Encyclopedia that was all about the topic.

                  2. 6,

                    Your response of “Da lawl.” is meaningless.

                    That just does not answer the question put to you.

                    I already know what the Useful Arts includes. THAT was not the question. I am asking you to explain yourself and YOUR differentiation.

                    Yet, you just want to shuck and jive…

      2. there’s no logical reason that Yahtzee would be eligible with 7 sided die but ineligible with 6 sided die.

        7 sided die are in the prior art so you have the same problem.

        Remember: if your composition claim recites a new non-obvious structure and describes it in structural terms, you’re not in the subject matter eligibility pit anymore (absent some weird0 additional language beyond that recitation that no competent attorney would bother including*).

        As you point out, there might still be a utility argument but there is great reason that you a claim reciting a novel, non-obvious structure, described in structural terms distinguishing it from the prior art, is certainly not a claim that protects an “abstract idea.” The great (and logical) reason is that the word “abstract” loses all meaning if that conclusion is reached.

        *e.g., “A method comprising the step of gazing upon [novel non-obvious object]” is ineligible but only an incompetent attorney would draft such a claim

        1. recites a new non-obvious structure and describes it in structural terms, you’re not in the subject matter eligibility pit anymore

          But that’s not the question. The question is whether reciting a new non-obvious method step in structural terms gets you out of the eligibility pit. The court said “An eligible structure would have saved this system” of course it would have. The question is if there is ever anything non-structural you can do to maintain eligibility. The answer to that has to be yes, because the vast majority of method claims do not involve the use of new structures, they are simply changing the order and usage of old structures. Are all of them ineligible? What was this claim missing that every other method claim had that imparted eligibility to them but not this one here?

          You’re using the word “rule” as if it is means something other than “method step.” This claim was a series of concrete method steps, no different than any other method. The court characterized this as “changing the rules of a game” but its no different than modifying the method performed with respect to any other activity.

          1. RG: that’s not the question

            Agreed. “[R]ecite a new non-obvious structure and describe it in structural terms” is the most straightforward answer to the question of how to fix an ineligible claim. I agree that it’s not the only answer but it sure is easy to remember and there’s no reason that answer (at least) shouldn’t be given every time the issue comes up.

            The question is if there is ever anything non-structural you can do to maintain eligibility. The answer to that has to be yes

            For method claims, that is absolutely true. For method/process steps, the golden key to eligibility is a physical transformation of matter that was previously unrealized by the prior art (that transformation will additionally need to be unexpected in order to be pass 103).

            If all your “modification” to the prior art process does is introduce some ineligible logic or information or “meaning” onto an exisiting method, you are necessarily going to have an eligibility issue (which may or may not be characterized as a 102/103 issue according to some 101-derived “doctrine”; and you will probably also have a 103 issue with the logic, given the ancient and ubiquitous nature of logic).

            The court characterized this as “changing the rules of a game” but its no different than modifying the method performed with respect to any other activity.

            In fact, “changing rules of a card game” is fundamentally different from modifying the method steps of the sorts of activities which definitely belong in the patent system because those sorts of activities result in physical transformations of matter as opposed to abstractions such as “new” information (“this hand is worth two points instead of three”; “you won the game!”).

            As I pointed out elsewhere in the thread, the granting of utility patents on both games and what I’ll refer to as “fantasy objects” (e.g., dolls) is one of the more bizarre quirks in the US patent system. Those patents don’t make sense from a number of angles and yet … there they are. Consider: you’d probably have a hard time getting a utility patent on a sculpture because, hey, that’s just art (never mind the inherent “educational” aspects). But put some hinges/springs in it or a motor or (OMG!) a computer that makes it “talk” or “interact” and suddenly voila! it’s a “toy” with guaranteed “entertainment” and “educational” utility. Very silly.

            1. Except I just pointed out your own “mistake” of saying the objective physical structure of the seven die is “not enough.”

              You cannot have it both ways.

              1. MM requires novel “objective physical structure” for eligibility. But why one would ever claim novel “objective physical structure” + (alleged) ineligible functional elements is beyond me, since claiming the novel “objective physical structure” on its own would preempt all uses of that “objective physical structure” going forward.

                MM wants all software patents dead. Novel “objective physical structure” is his way of getting there.

                1. Except for the fact that it does not.

                  Hence, his refusal to engage in an inte11ectually honest discussion or bother to understand (let alone acknowledge) the equivalency (and to stop the goalposts from being moved yet again, this is not “exactly the same as”) of hardware and software.

                  A software claim could be entirely rewritten in exacting “objective physical structure” of pits and grooves of location and depth in a mind-numbing recitation that could span tens or hundreds of pages – and be equivalent to the claims that he sniffs at with disdain (but that are entirely geared To The Art as claims are meant to be geared).

                  He just does not care. He is NOT here to actually engage in a dialogue. He is ONLY here to post his drive-by monologue, ad infinitum, ad nauseum.

                2. anonpl But why one would ever claim novel “objective physical structure” + (alleged) ineligible functional elements is beyond me

                  I already made the same point (five years ago, at least, and a hundred times since then). Keep working on trying to catch up! You might get there eventually.

                  Novel “objective physical structure” is his way of getting there.

                  Reciting novel objective physical structure was always the way of “getting there” until some ignoramuses on the CAFC drove a truck through the patent system.

                  MM wants all software patents dead.

                  Huge numbers of people want that, for perfectly logical reasons. You want junky software patents to not be dead. So we disagree. Welcome to the world.

                  1. until some ignoramuses on the CAFC drove a truck through the patent system.

                    You do realize that it was Congress that wrote the law (and not some “ ignoramuses on the CAFC“, right?

                    Or are you still trying to pretend that the optional claim format is somehow more than just an option?

            2. In fact, “changing rules of a card game” is fundamentally different from modifying the method steps of the sorts of activities which definitely belong in the patent system because those sorts of activities result in physical transformations of matter as opposed to abstractions such as “new” information (“this hand is worth two points instead of three”; “you won the game!”).

              This is similar to what 6 says, and its conflating different issues. If the court said “we’re reversing course, wagering games lack utility” I would agree with them. But that is not this holding. This holding is that wagering games can have utility, but this game lacks eligibility, and the eligibility is lacking because the changes to the order in which cards are dealt is and wagers are made is not significantly more than the abstract idea of wagering.

              All I am pointing out is the clear fact that 1) wagering is not the only abstract idea and 2) for other abstract ideas, if we applied the same logic that the order in which known implements are used is irrelevant we wouldn’t have any patents in many fields, because many fields are not fields where the thrust of innovation turns upon developing new structures as it does developing new techniques for applying old structures.

              That is ultimately the holding of this case: New techniques for old structures are ineligible subject matter, because those techniques always fall within a field (like “surgery”) and they all use old implements, and they simply change the “rules” of when to use their implements. That is the only reasonable end point of the logic the court uses in this case. That obviously isn’t the law, because the Supreme’s have upheld new configurations (assuming they are particularly claimed) of old things as eligible and patentable.

              1. “2) for other abstract ideas, if we applied the same logic that the order in which known implements are used is irrelevant we wouldn’t have any patents in many fields, because many fields are not fields where the thrust of innovation turns upon developing new structures as it does developing new techniques for applying old structures.”

                You’re right about that, and nobody will miss all those gov. entitlements no longer being handed out. Though if the given field in question is actually developing different “techniques” rather than say “rules” or other complete abstractions, then that field will probably be fine in terms of eligibility. If they’re just developing abstractions then yes, practically no patents shall issue. For instance, the field of card games just took a big hit.

                “New techniques for old structures are ineligible subject matter”

                You’re conflating “techniques” with abstractions bro. If it’s a legit new “technique” then you’ll probably be fine.

                “and they simply change the “rules” of when to use their implements”

                If you’re talking about “when” to use a physical implement in something transformative like surgery it’s probably a legit new method and eligible. That’s not really a “rule”. You’re extending the holding way beyond what it is. I don’t get how you don’t understand this. It’s super easy.

                “That is the only reasonable end point of the logic the court uses in this case.”

                Yeah well me, the supremes, and other perfectly reasonable people dare disagree with you.

    2. There is no finding that these particularly claimed rules were known

      Irrelevant.

      Rules are abstractions. They are ineligible. You can’t save ineligible rules by salting in a conventional card deck.

      That’s why this junk was tanked.

      1. Rules are abstractions. They are ineligible. You can’t save ineligible rules by salting in a conventional card deck.

        I agree that you could not save something ineligible by salting in the conventional deck. I also agree that the concept of applying a rule is abstract. I disagree that the claim is directed toward “rules.” If the claim said “Apply rules to a 52 card deck and wager therefrom” I would agree with you it is abstract. But it is saying “Apply these particular rules to the deck and wager in this particular way.” The particular rules are not abstract, and if you view the abstract idea as “applying rules” then the limitation to *particular rules in a particular order* constitutes significantly more limitations.

        It’s the same thing as software. Saying “apply software/code to achieve this result” is an abstract concept – you’re claiming a result with a mere field of use limitation, which is not significantly more. But saying “apply this particular algorithm such that a result is achieved” is a concrete means of getting to the end.

        You could read it your way, i.e. you could come to the conclusion that Parker v. Flook is broad enough to inherently end all rules-based claims. But that would necessarily require the conclusion that all software is invalid, which the courts have not done. The dividing line is whether there is a particular rule (Flook had an alarm limit that was updated based upon a design choice and therefore was not particular). If we apply that particular rule standard, these claims have met it.

        1. RG: If the claim said “Apply rules to a 52 card deck and wager therefrom” I would agree with you it is abstract. But it is saying “Apply these particular rules to the deck and wager in this particular way.”

          “Wagering” is itself an abstraction. “Betting” on a thing doesn’t change the thing. You might as well claim a step of “call this thing a new name” or “think about this thing in a new way” or “assign a new value to this things.” It’s all abstract junk.

          you could come to the conclusion that Parker v. Flook is broad enough to inherently end all rules-based claims. But that would necessarily require the conclusion that all software is invalid, which the courts have not done.

          I agree that the courts have not done what is logically and reasonably necessary to do … yet. But eventually it’s going to happen, preferably sooner rather than later, unless Congress steps in and creates a separate system for the patenting logic. Congress is going to need a lot of help with that, unfortunately. To date I see precisely zero effort being made in that direction and that’s mainly because the tiny tiny group of self-interested people who wish to preserve patent protection for software are betting on the CAFC slowly creating an incomprehensible rats nest of case law (“we feel that this logic should be patentable but not that other logic because … feelings!”) instead of doing the right thing and just pulling the band-aid off.

          1. Or better yet Malcolm, we stop pretending that the law as ALREADY written by Congress does not somehow include manufactures by the hand of man to be machine components – that which software is defined to be.

      2. All rules are ineligible abstractions? How does that jive with SCOTUS’s statement in Alice that many computer-implemented inventions are still patentable? All functional claim elements (at least talking software patents) are “rules.”

      1. Random, cards are patentable. Rules are not.

        So glib. Did you read Claim 1? Is it directed to “rules” or is it directed to a novel procedure of performing betting?

        To reiterate what I say elsewhere: I invent a new surgical procedure that uses the same implements the art conventionally uses. But I make the mistake of labelling my new procedure “Random’s New Rules for Surgerizing.” Is my new method now ineligible? Wagering is fundamental activity. So is surgery. Do I need to invent a new medical implement in order to claim an eligible surgical method, or is it sufficient that I use conventional implements in a novel and non-obvious manner?

        Essentially what you just said is: New structures are patentable. New uses relating to old structures are not. Simple.

        You sure you want to make that statement?

        1. Random, the claim here recites a card game/wagering procedure, but the procedure is defined by rules. They two are indistinguishable.

          A surgical procedure does something to patient — transformation of a patient into a new state or thing. The underlying process is patentable. It is not made unpatentable, pursuant to Diehr, by including some new rules to control the procedure.

          1. Random, the claim here recites a card game/wagering procedure, but the procedure is defined by rules. They two are indistinguishable.

            The procedure is defined by concrete action steps. The fact that those steps can be summarized succinctly as “rules” does not change the fact that they are action steps.

            But lets set that to the side a moment: So what? Let’s assume that “rules” is a proper characterization. The function of rules is to restrict action, so why is it that rules are not considered under the significantly more analysis?

            A surgical procedure does something to patient — transformation of a patient into a new state or thing. The underlying process is patentable. It is not made unpatentable, pursuant to Diehr, by including some new rules to control the procedure.

            That’s backwards analysis. “Surgery” is an abstract concept. The particular procedure that is applied are the “significantly more” limitations that render it concrete. After all, we don’t know what, if any, transformation there will be in the patient until we know the concrete procedure that is going to be applied.

            But the exact same analogy holds for the cards: A [dealing and wagering] procedure does something to the [deck and bank accounts] – transformation of the [deck and bank accounts] into a new state or thing.

            If you were to say “wager with this deck” it would be a mere field of use (the conventional deck) of an abstract idea (betting). Similarly, if you were to say “operate on this patient” it would be a field of use (the patient) of an abstract idea (perform surgery). The surgery only becomes concrete, and eligible, when a particular procedure is nominated to limit the “operate” command. Same thing with wagering – it only becomes concrete when a particular procedure limits the “wager” command. *But this claim is claiming such a particular procedure.*

            Look you seem to be on board with the idea that different procedures in a surgical room can be independently eligible despite not changing any of the underlying medical tools. Why is different wagering procedures different? You seem to imply that removing a leg is a worthy transformation while removing money from a wallet is not. But this isn’t a case that suggests wagering lacks *utility* under the law so for the purposes of this case the acts are both transformations of equal dignity.

            1. Random, rules per se are not patentable but they can be applied to produce new or improved physical results, such as we saw in Diehr. But if the use of the commonplace items were all that were necessary to transform the rules into a patentable application, then Bilski would have been patentable simply by offering fixed-price contracts through the Internet to balance of risk.

            2. Random, the transformation of a number from one state to another is not physical. Thus that wagering might reduce or perhaps increase the number in a ledger of a bank account associated with a user does not transform that number change into a patentable application.

              If the transformation of numbers from one state to another were at all patentable, Benson would have had a different result.

        2. RG: is it sufficient that I use conventional implements in a novel and non-obvious manner?

          If the practice of the method necessarily involves a previously unrealized physical transformation of matter, then you shouldn’t have a problem.

          If, on the other hand, you are merely introducing some “rule” (“if X, then Y, otherwise Z”) into a method, and following that rule in some instances leads one to practice the prior art (in this example, let’s say the prior art method is “Z”), then you’ve got either a f@tal eligibility problem or a f@tal inherent anticipation problem depending on how the defendant chooses to frame it (I would suggest framing it both ways but the analysis and the underlying logic aren’t distinguishable).

          Why is that the case? The answer goes right back to Mayo v. Prometheus: you can’t turn people (e.g., surgeons) who are practicing the prior art (“Z”) into infringers because they are using your logic to arrive at “Z”. Now, if you claimed properly a new physically transformative step by positively reciting only the steps that are both inventive and eligible without the problematic cul de sac created by the introduction of logic/”rules” into the claim, then we have a different story — and a different outcome.

          1. but the analysis and the underlying logic aren’t distinguishable

            Then you are most definitely doing it wrong.

            Even the Court has said that the two are not interchangeable as you would have it.

          2. The answer goes right back to Mayo v. Prometheus: you can’t turn people (e.g., surgeons) who are practicing the prior art (“Z”) into infringers because they are using your logic to arrive at “Z”.

            I’m not on board with your interpretation of Mayo, but its irrelevant because *that is not the fact situation here*. Nobody is suggesting that this procedure leads to conventional dealing and wagering rules. The only statement is that card decks have conventionally been wagered with and this claim wagers with a card deck.

            1. I’m not on board with your interpretation of Mayo

              It’s not an “interpretation.” Those are the exact facts in play in Prometheus v. Mayo and every time those facts are presented to any court in a manner that permits the court to understand the facts, the result is going to be the same.

              wagering rules

              Ineligible. Irrelevant.

              conventional dealing

              What’s “conventional” dealing? You know how many card games are in the prior art?

                1. RG: The court in Mayo did not find it ineligible because it would have “turned people who are practicing the prior art into infringers.”

                  You are taking my quote of context, RG.

                  I wrote this: “you can’t turn people (e.g., surgeons) who are practicing the prior art (“Z”) into infringers because they are using your logic to arrive at “Z”. (emphasis in original).

                  The briefs were explicit about Prometheus’ infringement theory: if you looked at the data, which was obtained using prior art methods, and you thought about the “new” correlation, you were an infringer. End of analysis. Once you understand that, then you understand that the 9-0 decision pretty much wrote itself because there was no way the Supremes were going to let people protect “thinking about correlations” based on prior art data, just as there is no way — ever — that the Supremes would ever let people protect “wagering” based on prior art card shuffling/dealing.

                  Seriously, iyou don’t understand the facts and the issues before the court in Prometheus v. Mayo, you are missing a huge aspect of what subject matter eligibility is all about. That lack of understanding is why you were suprised by the result in this case, a result which isn’t surprising at all.

                  1. You are taking my quote of context, RG.

                    LOL _ says the “master” of spin, deception, and taking what others say out of context…

                    (Random is slowly coming into understanding Malcolm – and seeing the absolute redunkulousness of your spin)

        1. yowza, DDR was not about patenting rules, but about creating a look and feel, and look and feel is caused by physically transforming a physical object into a new state.

          1. DDR is junk.

            Can I protect a new class of designs with a utility patent by claiming the logic I used to come up that class of designs?

            Of course I can’t.

            Shiny comp00ters don’t change anything except in the infantile minds of born-yesterday CAFC. Their lack of knowledge of the history of computing, even the recent history, is a joke.

  19. So, if the “USPTO’s Interim Guidance on Patent Subject Matter Eligibility” are not binding on the Examiners or the Board, then what good are they? Can I simply ignore these? (The answer to that is NO, since the Examiners use the flowcharts and reasoning from the guidelines/Guidance all the time.)

    1. “So, if the “USPTO’s Interim Guidance on Patent Subject Matter Eligibility” are not binding on the Examiners or the Board, then what good are they? ”

      They help everyday shmoes understand the law without them having to go read 10 decisions, and give people an overall general impression of what to expect at the office.

      “Can I simply ignore these? ”

      If you really really want to you could, just file an appeal if you feel like your claims are eligible and not properly held invalid by the office.

    2. Can I simply ignore these? (The answer to that is NO, since the Examiners use the flowcharts and reasoning from the guidelines/Guidance all the time.)

      The only thing you ever have to do is convince the examiner that either the legal or factual basis for the rejection is unsupported. If an examiner relies closely on the guidelines then it would be more convincing to use them. If the examiner relies more closely on the language of alice (which is all they are required to do, rather than meet the more stringent guidelines) then you probably have to argue on those grounds.

    3. I have a case presently in front of the CAFC where the Solicitor argued the validity of said guidelines. Go figure!

  20. Hypothetical:

    My specification discloses and claims a piece of paper printed with information comprising a new sequence of letters.

    Question 1: Can I patent a method of playing a new non-obvious game using only that new piece of paper (scoring can be achieved in the mind)?

    Question 2: Does the answer to 1 change if I call the piece of paper a “card” or a “token” (which could be made of anything, including paper, or could be displayed on a screen)?

    Question 3: Does the answer to 1 or 2 change if I use mutiple pieces of paper instead of just one piece of paper, and the game requires sorting the pieces in some manner?

    Question 4: Does the answer to 1, 2 or 3 change if the new sequences of letters are identical to a naturally occuring DNA sequence (an expressed sequence tag, for instance)?

    I find it amazing that the eligibility of games has not been challenged to date at least on the basis of failing to meet the substantial utility requirement. Is there any case law on what sort of minimal level of entertainment is required for a game to be deemed to possess an eligible utility?

    1. The utility, of course, depends on whether you are claiming the unique cards or the game. If you are claiming the cards, then the obvious utility is to play the game. If you are claiming the game, the utility is that it gives you something to do with the cards.

      Just being flippant. Back to the serious discussion…

  21. This may be me being a fool, but can’t you copyright rules to a game, or an arrangement of playing cards and thus have 75+life years of protection instead?

    1. You copyright the rules, but you couldn’t sue someone for playing the game based on those rules. Copyright only extends to the original document and its copies.

      1. Well, certainly you would go after Grandma (you wouldn’t if she was playing your patented game either), but if a casino or internet gambling site used your game, certainly their rulebook would necessarily infringe your copyright. Also, you would have a copyright the arrangements of cards that uniquely come out of that set of rules, so when people orient the cards they are infringing your copyright.

        1. Alex: ertainly you would go after Grandma (you wouldn’t if she was playing your patented game either)

          You wouldn’t hesitate to go after Grandma if Grandma had money and you were a patent tr0ll.

  22. No New Card Game Patents Unless you Also Invent a New Deck

    Here’s an indisputable fact: pretty much any ten year old can “invent” a “new” set of cards given some slips of paper, a magic marker, and an hour or two. And everyone knows that (1) playing new games with cards is the super funnest thing ever; (2) games can be entertaining or not; (3) games can last any length of time; and (4) games can have vastly different ranges of difficulty.

    In light of that, what distinguishes an obvious deck from a non-obvious deck? The unexpected degree of amusement?

    1. games can be entertaining or not

      I meant to write “educational”, not “entertaining”. But “entertaining or not” is also true, I suppose.

        1. I’m not seeing why a ten year old cannot be a valid inventor.

          I’m not seeing where anybody suggested that a ten year old can’t be a “valid inventor.”

          The point is that the level of skill in the “technical” art of “making up a new game” is so low that you’d have to live under a rock to look up to it.

          1. You appear to want to disparage “level of skill,” as if they alone determines what “should be” eligible for patenting….

            Your ego is misplaced.

            (this also explains why you never seem to even be aware of your dichotomy against “G-g-grifters” and the fact that the path to innovation through software is opposite that “one-percenters” class you so desp1se)

  23. The examiner did allow Smiths’ claim 21, that was directed to the same method with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor (rather than real cards and a dealer) to accomplish the methodological approach.

    Beyond absurd.

    1. For starters, the existence of identical “virtual cards” in the prior art should be treated exactly the same as the existence of identical physical cards in the prior art.

      Not sure why that was so difficult for the PTO. Oh wait — “comp00ters is shiny”! I forgot.

      1. ‘For starters, the existence of identical “virtual cards” in the prior art should be treated exactly the same as the existence of identical physical cards in the prior art.’

        Da’ SCOTUS did tell us that using a computer didn’t cure abstractness

    2. Truly — but that was then, before Alice, this is now. That claim 21 will have to be disallowed by the PTO on remand. I am not sure how the PTO can suffer the embarrassment otherwise.

  24. This shouldn’t have gotten to an abstract idea rejection. It’s a pretty straightforward printed matter rejection for lack of utility. I write about game rule patents in my article A Surprisingly Useful Requirement” link to papers.ssrn.com

    1. Michael This shouldn’t have gotten to an abstract idea rejection. It’s a pretty straightforward printed matter rejection for lack of utility.

      Printed matter rejections are subject matter eligibility rejections, Michael. There’s no distinctions to be made.

      Pretending otherwise is a l0ser’s game.

      1. RandomGuy – agreed. At first blush (should have read the case), I was thinking more of a “game package” like In re Ngai because of the discussion about a new deck of cards.

        MM – the type of subject matter rejection matters, for a variety of reasons.

      2. Random, see claim 2 of Hotel Security Checking v. Lorraine, 160 F. 467 (2nd Cir. 1908):

        2. The herein-described improvement in the art of securing hotel or restaurant proprietors and others from losses by the peculations of waiters, cashiers or other employees, which consists in providing separate slips for the waiters, each so marked as to indicate the waiter using it, and in entering upon the slip belonging to each waiter the amount of each sale that he makes, and also in providing a main sheet having separate spaces for the different waiters and suitably marked to correspond with the numbers of the waiters and of their slips, and in entering upon said main sheet all the amounts marked upon the waiters’ slips so that there may thus be a duplication of the entries, substantially in the manner and for the purpose specified.”

    2. Michael, simply based on your abstract, I take that your argument is that if a claimed invention is new (or improved) and useful that it should be patentable subject matter – almost as if the categories of machines, manufactures, and compositions did not exist.

      1. Ned – no, of course you have to fit into a patentable category. This is just an extension of how we find certain things (like art or music) unpatentable when they seem to be methods and compositions of matter useful for entertainment. You’d have to read my article Everything is Patentable to get the full flavor of this long arc of work.

        1. Well, Michael, I saw Richard Stern struggling with this issue as well in his amicus brief in Bilski. Even if there was no modification of anything, he still argued that a process that produced a useful result might still be a patentable process. But, useful in what way?

          Now you say, useful for entertainment might be not the kind of utility the we are seeking. I would think a new piano might still be patentable — a way of mounting the strings for example. But you would exclude a new way of playing the piano that produced new sounds if the sole utility was entertainment?

          Still, I will read your article with interest.

          1. Ned – the clear distinction is fine arts versus useful arts.

            And let’s not forget: software is a manufacture by the hand of man expressly to be a machine component, and (almost) always for a utilitarian (i.e. Useful Arts) purpose.

            It really really really is THAT simple.

      2. almost as if machines, manufactures, and compositions did not exist.

        The irony Ned is that is exactly what happens because of the Supreme Court “Gist/Abstract” sword.

        To this day, you have yet to approach this with any sense of inte11ectual honesty.

        That sword that you want for your desired ends just eviscerates the very words of Congress themselves. Your mantra about the so-called “Rich” mere form (it’s a machine or manufacture, dammit Gumby), has nothing left if you follow what the Court has actually done.

  25. Next up: no new molecules unless you invent new elementary particles.

    The “deck of cards” of the proton, neutron, and electron will no longer be allowed to be used.

    /off sardonic bemusement

  26. Just as the recitation of computer implementation fell short in Alice,

    In other words: the fact that an actual physical thing was claimed, that physical thing is deemed to be “abstract.”

    The exception swallows the rule and the Judicial branch erases the actual words used by Congress.

    More things like this to stomp on the gas pedal, please.

    (Maybe even Ned will notice what actually happened in Alice with the “gift” of the “Gist/Abstract” sword…)

    1. In other words: the fact that an actual physical thing was claimed, that physical thing is deemed to be “abstract.”

      LOL

      Sure, “anon.” Keep making ridiculous stuff up and pretending that you aren’t completely full of b.s.! Nobody notices.

      1. You say “make things up,” but here, what exactly did I make up?

        (Straight up question – let’s see you answer without snark)

    2. In other words: the fact that an actual physical thing was claimed, that physical thing is deemed to be “abstract.”

      A *preexisting* physical thing was claimed, which was neither new nor improved. Had this person invented the actual deck, as the court pointed out, it would have been eligible. The *invention* was a new set of rules. The Federal Circuit declared Lincoln Engineering overruled, the Supreme Court did not.

        1. Conventional activity is a partial justification under 101. This guy didn’t invent a 52 card deck or the act of shuffling or dealing, so he doesn’t get to rely upon them to say that his invention is concrete. They weren’t invented by him.

          Again, when you go to the store and buy paper and write a story on it, you might claim a system that comprises both the story and the paper, but you can’t argue you invented the paper, and we don’t consider it for determining eligibility. The thing you invented is the story, and any attempt to hide or glorify that by claiming the paper as well will be seen through by the court.

          1. Oh my God. Inventions are COMBINATIONS of elements. Old elements can and do make up almost every invention.

            The Wright Flyer was made from lumber, rope and cloth. Are you saying it should not have been patented because it was just an attempt to patent the ancient abstract idea of changing the shape of a wing to control flight (like pterodactyls did) combined with old lumber?

            Plleeeeeeeease

            1. The Wright Flyer was made from lumber, rope and cloth. Are you saying it should not have been patented because it was just an attempt to patent the ancient abstract idea of changing the shape of a wing to control flight (like pterodactyls did) combined with old lumber?

              Again you discuss something without saying how particularly it is claimed.

              The claim “A system comprising a flying machine configured to change the shape of the wing to control flight” is an abstract idea. If you want to claim the particular pulley system they used (which was not conventional) then it is not an abstract idea. This situation is exactly the same as Morse – the claim I just made is stating a principle of nature and saying you’re claiming any machine that captures use of the principle. The allowable claim is the claim to the particular Morse telegraph or the particular Wright flier.

              You can’t ignore how broad the claims are when we’re talking about a test that is designed to prevent over-preemption.

  27. “he examiner did allow Smiths’ claim 21, that was directed to the same method with the exception that instead of being a ‘physical’ card game, it required a ‘video gaming system’ that used a processor (rather than real cards and a dealer) to accomplish the methodological approach.”

    Lol, so he done messed up, wamph waaah.

  28. “The court’s conclusion makes some sense here, but glosses over the fact that an examiner’s performance is judged according to whether that examiner follows the eligibility guidelines. This transforms the guidelines into de facto rules.”

    No we aren’t. And no it doesn’t.

    There is nothing in the quality guidelines that states that we must follow the “eligibility guidelines” what so ever. We have to apply the law, as always. And any attempt by management to “judge performance” based upon the “eligibility guidelines” would be illegal and subject to having a grievance filed.

    1. So, are you saying I can just ignore the eligibility guidelines? What good are “guidelines” if they can be ignored?

      Personally, I’d rather follow guidelines, because these at least attempt to make sense. The SC’s cases do not.

      1. these at least attempt to make sense.

        A lot of the “guidelines” make no sense whatsoever, whether they “attempt” to or not. The purpose in many instances is simply to coddle low performing applicants who need to know the latest “magic words” because they can’t independently reason their way out of a wet paper bag.*

        *or understand how to apply a simple Supreme Court case

      2. “Personally, I’d rather follow guidelines, because these at least attempt to make sense.”

        Sir – respectively you can’t be speaking about USPTO guidelines!

        1. Well, they make more sense than Alice. At least the people drafting the guidelines have some logic.

          As for what’s in the actual guidelines, it’s difficult to fault the PTO, since Alice and the rest of the SC guidance is so bad, it’s impossible to decipher what the guidelines should be.

    2. subject to having a greivance filed

      This the same 6 that fought tooth and nail against that same “file a greivance” path when a certain someone else suggested it…?

      1. I told you that you can file grievances only for certain things anon. This would be one of those. Learn something about what grievances are for before you open your mouth.

        1. Is there a multi-thousand dollar fee for filing a grievance, as there is for filing an appeal? There should be. Karma demands it.

      2. And I should add, filing a grievance is not always suggested. Management could very well decide they want to retaliate against the individual, thus doubling down on the illegality, but also doubling down on the stress on the examiner filing the grievance.

        Unless this issue was make or break for someone’s rating then I certainly suggest just letting management do what they want. If an individual examiner wants then I suggest simply voicing objection rather than going the formal grievance route, they take a long time and cause a lot of headache.

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