by Dennis Crouch
The Enfish case is important in the way that it gives teeth to step-one of the Alice/Mayo test for subject matter eligibility. Notably, the unanimous panel of Judges Moore, Taranto, and Hughes (author) held that neither the software-implemented data structure nor its method of creation were “directed to a patent-ineligible abstract idea” and thus did not pass Step-1 of Alice/Mayo. Prior courts usage of the “gist” analysis for Step-1 left many of us with the feeling that almost all inventions could be boiled-down to an ineligible concept. Enfish rejects that conclusion and instead held that that Step-1 is designed as a meaningful test.
With quick-response, the USPTO has issued a set of examiner guidance – asking examiners to immediately begin implementing the Federal Circuit’s re-interpretation of Alice/Mayo. The guidance also highlights the contrasting May 17 decision in TLI. The challenged claims in TLI involved recording, administration and archiving of digital images, and the appellate panel (again with Hughes as author) held that the claims were directed to the abstract idea of classifying and storing digital images in an organized manner.
The guidance is copied in full below, but I thought I would begin with the conclusion:
In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.
I would suggest that the PTO would have more accurately followed the Enfish guidance by affirmatively stating in its summary that an “improvement in computer-related technology” can include a software implementation as well as a new data structure.
In any event, these cases are tough ones for the Federal Circuit because they require line-drawing that is inherently policy based and that lack full guidance from the USPTO. However, it appears that the court is endeavoring to accomplish its task of providing improved guidance to the USPTO while simultaneously fully following binding Supreme Court precedent.
The holding in Enfish also offers additional support to the PTO’s initially questionable call of suggesting that examiners limit their abstract idea constructs to only concepts “similar to concepts previously found abstract by the courts.”
The Guidance in full:
On May 12, 2016, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Enfish, LLC v. Microsoft Corp. held that the claimed database software designed as a “self-referential” table is patent eligible under 35 U.S.C. § 101 because it is not directed to an abstract idea. While the decision does not change the subject matter eligibility framework, it provides additional information and clarification on the inquiry for identifying abstract ideas (Step 2A of the subject matter eligibility examination guidelines).
In reaching its conclusion, the Federal Circuit highlighted several important points regarding the subject matter eligibility analysis, in particular regarding whether a claim is directed to an abstract idea (Step 2A). First, the court noted that when determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision. Second, the court emphasized that the “directed to” inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept. Third, the Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention. Fourth, the court stated that an invention’s ability to run on a general purpose computer does not automatically doom the claim. The subject matter eligibility examination instructions, as set out in the 2014 Interim Eligibility Guidance, July 2015 Update, and May 4, 2016 memorandum to examiners, are consistent with these points.
The Federal Circuit in Enfish stated that certain claims directed to improvements in computerrelated technology, including claims directed to software, are not necessarily abstract (Step 2A). The court specifically noted that some improvements in computer-related technology, such as chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract. Explaining that software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract. Therefore, an examiner may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B. In particular, a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts.
The claims of the patents at issue in this case describe the steps of configuring a computer memory in accordance with a self-referential table, in both method claims and system claims that invoke 35 U.S.C. § 112(t). The court asked whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database), or instead on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. To make the determination of whether these claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification. Specifically, the court identified the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. It was noted that the improvement does not need to be defined by reference to “physical” components. Instead, the improvement here is defined by logical structures and processes, rather than particular physical features. The Federal Circuit stated that the Enfish claims were not ones in which general-purpose computer components are added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea (under Step 2A).
Closely following Enfish, the Federal Circuit decided TLI Communications LLC v. A. V. Automotive, LLC on May 17, 2016, which provides a contrast between non-abstract claims directed to an improvement to computer functionality and abstract claims that are directed, for example, to generalized steps to be performed on a computer using conventional computer activity. Specifically, the court stated that the TLI claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner (Step 2A). The court then found that the additional elements of performing these functions using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities (Step 2B).
In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.
We will continue to cover these issues in some depth over the next few weeks.
When the “abstract idea” is clearly provably obvious, that should end the matter. Take it from one who patented a data base structure in the 80’s. The patent system is disfunctional.
“ clearly provably obvious”
For the second time on this thread, that’s 103 – not 101.
“that should end the matter”
…the “matter” will not end unless the proper means to that end are engaged.
Employing 101 for a proxy for any other section of law debases the law. Those who care about the law should care about such things and not embrace the “whatever misuse of law.
Obviously, obvious is the rubber nose of patent law. But now, 101 which is a very broad gate is now used to reject anything that is a system including a general purpose computer.
Perhaps, I should have used a new term, “patently known.” Patents were once used as the best database to gauge the worthiness of an invention. Now? “gist,” “inventive concept,” in the face of “motivation,” “suggestion,” “common sense,” “obvious to try?” in a reconstructed hindsight using all the published useful art in the world?
Tough road.
Into the weeds is indeed akin to a “tough road.”
But “tough road” (even one driven to by a wayward Supreme Court) does not mean “right path,” or that a proper course correction is not in order.
Recall that when Alice first came out that I mentioned that stomping on the gas pedal of that decision may be the fastest way to make a long overdue and necessary change. ALL the accelerating mess that you see about you can be seen to be a part of that “stomping on the gas pedal.”
“anon” Recall that when Alice first came out that I mentioned that stomping on the gas pedal of that decision may be the fastest way to make a long overdue and necessary change.
Then computer implemented jun will be eligible forevah! Because 1952.
The patent maximalists never cease to amuse.
Just because you do not like the law as it is written by Congress – your “Because 1952” reference – does not mean that you do not have to address that law in an inte11ectually honest manner to deal with your rants of “computer implemented” whatever.
The mindless “maximalist” CR@P is, well, mindless.
Try something different.
Richard, I am uneasy about invoking “obvious” in the context of 101, but for another reason.
I think it is OK (inherent and necessary) to debate (if and when you get to 103) whether something in a field of technology would have been “obvious” as of a specific date. At the EPO, that process runs economically, predictably and fairly. It is when one strays away from technology that the obviousness issue becomes hopelessly fuzzy.
Take design patents. Who is to say whether on any given date a design was or was not obvious? Now I know you have to do that in the booming recent field of design patent litigation in the USA, but can you name me another jurisdiction in the world that has taken that path when it comes to assessing the validity of Design Registration IPR? That’s because the notion of “obvious” does not “fit” with the notion of registering designs with a new character and identity. What are the leading cases that help us to decide whether a new design is or is not “obvious”? Are they models of clarity?
Take abstract ideas. Assume you have paintakingly drafted a super Goldilocks (not too wide not too narrow) claim with exactly the scope needed to define your cherished “Abstract Idea” who is to say whether on any given date that particular abstract idea, as claimed, was “obvious”? A patent attorney perhaps? An academic? A judge?
As bizarre as MaxDrei is (take an abstract idea…?), he does raise an interesting point vis a vis design patents – and while (in reality) design patents should be written separately from utility patents, US law does try to shoe-horn design patents into utility law concepts.
Are design patents then fundamentally problematic under a 101 analysis? Is not the very basis of a design “abstract” (admittedly reading that undefined term here to be a bit circular in “not having utility in a real world application” sense)…?
Does either (or both) Congress and the Court views on what “101 means” unravel with the attempt to shoe-horn design patent law into the utility patent law regime?
The patent system is disfunctional thanks to SCOTUS and the Fed Cir issuing incoherent, illogical and contradictory decisions. They are trying to mend a dam that burst with wood boards – oh we said that… oh let’s try to fix it by saying this… oh wait… that did not work… let’s try this…. and around and around it goes, where it stops, no one knows. The latest nonsense is to look at what we found patent ineligible and if it passes that, then go to step 2A and then X.1, subparagraph 1.0001.11 and if that is not enough, ohhh, try step 2B, with this new test, but wait, that “looks” like it has been done before, and presto, magic… what will they dream up next? I thought judges were more attuned to issuing decisions where certain words mattered, but as the last 2 years showed, they have lost their way issuing gibberish for federal decisions. Glad no one will be reading my rant because it is posted 3 days too late to matter any way.
Now me, I think it is beyond the competence of any PTO or Court to interpret reasonably the 150 year old corpus of the law of patents in the USA. Europe made a fresh start in 1978 with the 1973-text of the European Patent Convention, and since then its basic scheme of substantive law has been adopted all round the world (except in the USA). Why? Because the corpus of EPC caselaw that continues to develop constantly the basic rigor and simplicity of what the EPC provides on novelty, obviousness, utility, written description and enablement.
That should come as no surprise to anybody. The EPC is a fusion of the patent law of England and Germany, informed (where relevant) by the pre-1973 caselaw of the USA. While the patent law of the USA has its roots in England, that of Japan, China and Korea always was more or less a straight copy of pre-EPC German law. So with the EPC the world got a harmonised patent law for all. Such a shame the USA couldn’t bring itself to adopt the same model when it switched to First to File. If it had done, SCOTUS and the Federal Circuit would have been able once again to lead the development of the patent law of the whole world.
MaxDrei quips: “beyond the competence of any PTO or Court to interpret reasonably the 150 year old corpus of the law of patents in the USA.”
Is that a vote for “Void for Vagueness”…?
😉
Max, the problem is that the CCPA and the Federal Circuit for a very long time acted as if the case before 1952 were to be ignored.
And Ned – you have the opposite problem – pretending that the Act of 1952 did not happen.
It did.
Let me add one thing. If SCOTUS said to property owners that their deeds were invalid because deeds are an abstract idea (which they are – property is real, deeds are figment of our imagination), and because they failed to follow such and such test in the language of the deed, that all the deeds are now void! Well, that is what has happened here with software patents. SCOTUS et al. voided a significant chunk of software patents because they supposedly did not follow such and such test which occurred post-issuance of the patent. Instead of offering patent owners the right to amend the claims to conform with the new tests (which would have been something new and a challenge for patent attorneys), they just keep voiding software patents by the droves. The patent attorneys should have revolted but sadly, our profession is mostly made up of geeks and nerds and getting them to do anything in concert is like trying to teach tricks to a cat…
…post facto statutory laws written by the wrong branch of the government…
The subject of a deed is real property on which you can trespass. You cannot change the property, the subject of the deed, by re-working the wording of the deed.
It’s different with a patent. I can’t drive you out in my car so you can walk the bounds of the property which is the subject of the patent.
If the subject of the patent is a machine or a manner of new manufacture, or a composition, we can look at embodiments of it together. But if it’s nothing more than an abstract idea, we can’t, can we?
Patents are not “positive” rights MaxDrei.
This is not a pipe.
The problem with the judicially-created ban on patenting “abstract ideas” is obvious: it has no limiting principle. There is no standard as to what makes claim A abstract and claim B not abstract, except the Court knows it when they see it.
The only thing close is “don’t go beyond what courts have decided looks like porn.”
But I believe the issue was “swallowing”. Patent law, of course, quoting Justice Thomas.
tour, “The problem with the judicially-created ban on patenting “abstract ideas” is obvious: it has no limiting principle.”
Bingo.
I think that is why Scalia had such a problem signing on with the Kennedy majority rather than with Stevens. Scalia abhorred vagueness in the law — such as one gets with “totality of circumstances,” which Scalia correctly argued was not law at all, but equity.
Steven’s path was even worse, Ned: the direct and overt violation of the separation of powers.
anon, you keep saying this when it completely obvious to anyone that business methods are nonstatutory.
I keep saying this – and more – but you never seem able to reply to and address the ‘and more.’
Your “version” of business methods are not statutory has been thoroughly debunked.
If not statutory, then there would be NO need to have a limited exception or review – all Congress would have need to have done would have been to simply reiterate the line that you are force feeding.
They did not.
Why was that?
…and once again Ned’s silence screams volumes.
What is the matter Ned? This counter point just too inconvenient for you?
You might as well man up and face it – it is not going anywhere and your attempts to ignore it will not make it disappear.
Why is that Ned, because the methods are not “useful”? If they are not useful, then no one will want to use them and any patent causes no harm… So, whats the problem?
New and useful methods that relate to machines, manufactures and compositions are statutory and within the useful arts.
Process is NOT a sub-category of the hard goods categories Ned.
Your error is reflected in your “MoT is more than a clue” bias.
Repeating your mistake ad nauseum and ad infinitum won’t make your mistake into a non-mistake.
(See – again – 35 USC 100(b))
Yes, yes they are. And so are new and useful methos that do not relate to machines, manufactures and compositions of matter. The phrase “useful arts” has been deleted from 101. Why are you referring to what 101 said 220 years ago?
Will you be arguing that 102 used to let you swear behind a reference too?
Les, you do not seem to know what you are talking about. Do you want me to give you the language of the various statutes over the years?
Ned – YOU do not know what you are talking about – the
word for word” misses the HUGE change that happened. Breaking a single paragraph into complete different sections of law was a HUGE change.
tourbillion,
That obvious problem is denied by the usual sAmeones on these boards.
There is a dichotomy here that remains little discussed: The Court has refused to define key terms, but brow beats lower court decisions not in line with the desired philosophical ends, AND wants the lower court to do a “better job” of developing the law that the Court itself refuses to draw the “bright lines” for.
How do lower courts “develop” anything with the heavy hand ready to smack them down? The natural answer is EXACTLY what we are seeing: NO development, and only retreating to the examples already decided upon (but decided upon with faulty and conflicting ratio decidendi) that offer NO clarity or development, no possible a priori understanding (from the wiki: “A statute is also void for vagueness if the legislature’s delegation of authority to judges and/or administrators is so extensive that it would lead to arbitrary prosecutions” – Vagueness doctrine definition, Cornell University Law School Legal Information Institute 30 December 2012.
And this is even IF we “permit” the Court the power to mash the wax nose of 101.
ALL of this on top of the fact that what is going on is NOT interpretation of what necessarily is an open gate (as 101 must be, given the nature of innovation), but is instead the Court attempting to write the (statutory) patent law that it wants in place (hence, they do so only obliquely, as they attempt to avoid what Justice Stevens would have had done overtly in Bilski: a direct overwrite of the words of Congress).
Among the multiple problems here (there are others, such as violation of the separation of powers) is that such a tactic results in the fore-noted Constitutional problem of Void for Vagueness.
The imprimatur of the desired Ends is clear (the firehose packs a wallop), and the problem we see unfolding – the contradictions, chaos and confusion [the denial of which still runs rampant from those who want a desired ends no matter what the means] – necessarily lead one back to the driving problem, identified by no less than the same Justice Stevens: the addiction of the Supreme Court to sticking their fingers into the wax nose of 101.
The Court addicted to its own “power” refuses to recognize that such power was stripped in 1952. Congress had reacted then to the SAME lack of evolution and nose mashing, but the Court blinds itself out of its own addictions (with so-called “friends of the Court” asking the Court to “take another hit”) but the Court cannot – and will not – see its own transgressions (nemo judex in sua causa).
In other words, in order to “get their way,” the Court has to make the words of 101 to be “ambiguous” in order to even insert their “interpretation.”
But bulldozing that path of “ambiguity” as they have done in order to arrive at the desired Ends has left any sense of the “original words” simply TOO ambiguous for mere mortals to know the meaning a priori,
You have the ENTIRE inferior court system along with the ENTIRE executive branch system NOT KNOWING how to move forward and retreating to ONLY those things that the Supreme Court itself has already delved upon (and even there, the contradictions are not – and cannot – decipherable in any sense of certainty).
Avoiding certainty (which certainly would have invoked the separation of powers violation) has created its own separation violation.
The answer of course is what the power-addicted body cannot seem to do: keep its fingers out of the wax nose of 101 and respect the fact that Congress has revoked its former grant of common law ability to define the term “invention.”
…and let me add add yet another wrinkle tied to the Court’s nose mashing: the very “harm” – the “hook” as it were to its tie to authority is improper.
This can be seen by carefully reading what they write: they write of things that only MAY come – that are conjectural projections into the future.
One problem with this is that they have no authority under the present case or controversy limitation on their power to reach into some merely possible future harm.
Further, their “future reach” is a reach into the unknown – and unknowable. They necessarily must view any present invention as being the final rung on a ladder of innovation – and there is no such ability to know whether any one rung IS a final rung.
Further yet, they evidence an abject misunderstanding of what “to block” means. As already discussed in a parallel manner, ALL claims “preempt,” as that is what claims do.
The Court misses though in thinking that this “preempt” – or blocking – is bad and does not promote the progress. They are clearly wrong when one considers the historical context of the exclusive right and how that very exclusivity – or blocking – PROMOTES progress by forcing others to invent around the blocked item.
The adage “necessity is the mother of invention” appears lost on the Court in their philosophical ends desires. They have the hubris (or the lack of awareness – or both) to think that they know what the top rung is and that ANY claim is a claim to the top rung and that NO further invention is possible if a momentary block is placed in the way of inventors.
Can you be more (wrongly) paternalistic and condescending at the same time?
And that “wrongness” is not even touching on the proper authority aspect of current case or controversy.
IF the Court wants to “depend on” the argument of “blocked progress” – quite apart from the fact of the matter that ALL patents block that which is claimed – then the Court needs to have a present (albeit future) blocked progress. Since this is inherently impossible, the very basis of their claim of harm (to which they may even evoke “authority”) can be seen to be the stuff of smoke and mirrors, bellowing horns and light projections, made by the proverbial Wizard of Oz, standing behind the curtain that Toto has just pulled to the side.
There are plenty of “Friends of the Court” who bellow “pay no attention to the man behind the curtain,” but as those of us who recognize exactly what our oaths of office contain – and NOT placing the Court above the Constitution – it is our duty to pay attention to the “man behind the curtain.”
I’d agree with that screed. The practical effect is that the main street practitioner for the little guy can no longer play in this sandbox where the bullies are kicking up so much sand we can no longer see a way for monetary gain through patent law. It is now all about trade secrets, copyrights and branding.
The unintended consequence is that field leaders are reluctant to talk to each other.
Tour, I hardly think that Stevens was going to override anything. A method of doing business clearly and unambiguously was and is non statutory. Nobody ever had a problem with this until Rich overruled Hotel Security. Why, because they do not have anything to do with manufactures, machines or compositions.
Ned – re-read his “concurrence” (really a dissent) in Bilski – the case for which he was slated to write the majority – bit lost that majority position.
Further, other items that have been brought to your attention (to which you only run away from) include the fact that throughout the history of the patent office there have been grants to business methods (Prof. Crouch even had a guest post detailing these).
Further, even Prof Crouch (and David Stein) have ripped apart your errant attempts to elevate the Hotel Security case. You blithely do not care about any of that and you engage your internet-style “shout down” by merely repeating your debunked views ad nauesum and ad infinitum.
Please stop your drive-by monologues.
What does it mean for a claim to include an “inventive concept”? This seems to be like the “inventive step” requirement at the EPO. My understanding is that under U.S. Patent law a claim recites an “inventive concept” if the claimed invention is novel and non-obvious. If old or obvious then there is no “inventive concept.”
I am having trouble seeing why 101 must include a search for an inventive concept. Since a “concept” is an idea aren’t all “inventive concepts” by definition abstract?
Lemme see if I can summarize the situation:
Since TLI is specific about the intended use (pictures) its claims are not directed to improving “the computer itself” but rather a method of storing pictures USING a computer.
Since the claim in Enfish is vague and NOT directed to a particular use but instead preempts ALL uses of the abstract idea of a self referential table, it IS directed to an improvement to the computer itself and is therefore NOT directed to an abstract idea.
Is that it?
Preempts?
That language has seems to have vanished from the cases.
Also, even Flook said that preemption was not the problem. It was the fact that math was nonstatutory.
“Preempts”
Someone should remind Ned that “preempt” is what ALL claims do – that is what they are supposed to do.
anon, you an I agree that all claims preempt.
Ned –
I’m not sure what your point is. Is my summary correct?
Oh… and by the way…
Does anyone thing that a self referential table can be used anywhere other than in a computer?
No?
Then doesn’t the reasoning in Gottschalk v. Benson apply? Shouldn’t the claim be ineligible for preempting all uses of the self referential table?
Does anyone even know what GvB says?
“It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”
How does implementing the mathematical formula on a computer preempt the mathematical formula (and what does that even mean?)? How would implementing the mathematical formula on a computer “be a patent on the algorithm itself”? Assuming the claims were directed to implementing the mathematical formula on a computer, why could one not perform the algorithm with a pen and paper (and it’s completely possible to perform the “algorithm” — depending on what this is considered to be — using a pen and paper)?
I’ve read GvB many, many times and each time I come away confused. And this is only one paragraph from that case. The rest of it is also unintelligible.
And if it can really only be performed by a computer (and not by a person, for instance), for current 101 analysis, isn’t that supposed to be GOOD?
The meant that the only practical use of the formula was on a computer and that therefore the patent would preempt all (practical) uses of the formula.
You’re right, it is a ridiculous ruling. As are Benson/Flook, Bilski, Alice and a few others I’m sure I’ve neglected to mention.
But if GvB is still good law, then how do we arrive at Enfish? What use, other than in a computer has the claimed self referential table? Certainly the claimed self referential table has no more use outside a computer than the BCD conversion of Benson…. so by the same reasoning, Enfish must be abstract….
That part of GvB is simply false – as I explained in a conversation with Ned a very long time ago.
It was part of the “scrivining” of the Supremes as they attempted to rewrite the words of Congress.
PatentBob, I know, I know. G v. B was atrocious in its reasoning. They should have been made aware of Hotel Security. They were not, it appears.
Les, I think that a novel method of categorizing and storing digital pictures is directed to eligible subject matter. The problem with the claims in TLI were that that novel method was neither disclosed nor claimed at anything except, possibly, at the highest level of abstraction.
What information was “classification,” and the how it was extracted, etc., was neither disclosed or claimed. The claim covered extracting any information and storing it in any manner using the extracted information.
The situation was very much like the Rubber-Tip pencil case where the claim was to a piece of rubber for attachment to the tip of a pencil. Any piece of rubber potentially was an infringement. There was no requirement for actual attachment, or any modification of the piece of rubber in any way to adapt it for the combination. Thus, without delineating any way of adapting the piece of rubber for use in the combination, the patentee had claimed them all.
Novel is dealt with under 102 Ned.
“What information was “classification,”and the how it was extracted”
Any information not part of the digital image and that is extracted and used for classification is classification information Ned.
Is that too broad? Then find something in the prior art that the claim element reads on and reject under 102.
How is it extracted? I’m sure anyone of even merely ordinary skill in the art would understand that the information is located by addressing the classification field and moving the information in the field to another location.
“extracting classification information which characterizes the digital images from the received data…”
Ned: “What information was “classification,” and the how it was extracted”
Les: Any information not part of the digital image and that is extracted…
From this, you mean any information from the received data that is not part of the digital image?
I never understood it that way. I thought the information had to be extracted from the digital image. I read the claim like this:
“extracting classification information
which characterizes the digital images from the received data”
You read the claim like this
“extracting classification information from the received data (that is not part of the digital images)
which characterizes the digital images ”
Based solely on this dispute between us, I think the claim suffers from terminal ambiguity.
Ya mean since it hasn’t been referenced since 2012 the preemption test/issue is no longer of concern? Its ok to preempt a fundamental building block now?
“Dealertrack, Inc. v. Huber, No. 09-1566 (Fed. Cir. Jan. 20, 2012). It brings back the notion of preemption as a test for patentable subject matter (also known as patent eligibility)”
link to ipeg.com
Technically Enfish purports to improve the speed of the computer at doing some tasks. And also they have a fancy 112 6th recitation.
But yes, somewhat you’re on the right track Les.
They’ll have to walk this back of course as soon as Enfish is reversed. Whoopsie, the PTO doned another illegal action.
Technically Enfish purports to improve the speed of the computer at doing some tasks. And also they have a fancy 112 6th recitation.
Speaking of which, 6, I had one of your fellow Examiners tell me last week that if I changed my claims from reciting actual system components to “means for” performing their functions, it would no longer be abstract… because things like A/D converters could be anything but “means for converting an analog signal to digital” must be interpreted in light of the specification and are therefore narrower.
Odd, but they may somewhat be correct in terms of that it might get you around a 101 in so far as you leave a broad swath of ways to implement your “inventive abstraction” so to speak unclaimed.
For 101, do you think it matters whether what Applicant purports to be an improvement achieved by the claims is in fact an improvement over the art? In Elfish, what if the Applicant’s were wrong about their new database being more efficient and taking less memory would it matter? Thanks
Mike,
Improvement can be a simple as an alternative manner.
Not all improvements are in the classical sense of ALL of better, faster, cheaper, stronger (or any other adjective).
This is where my analogy of “parking lot” versus “grid of streets” is highly valuable.
(One should also realize that very often disruptive innovations are “worse” in “standard” terms, but offer much steeper improvement curves.
“For 101, do you think it matters whether what Applicant purports to be an improvement achieved by the claims is in fact an improvement over the art?”
You’re using too broad of terms for this question to be meaningful. But, if I take your meaning, generally it is not.
“In Elfish, what if the Applicant’s were wrong about their new database being more efficient and taking less memory would it matter? ”
It apparently would have mattered to the panel, but under the actual law most likely not.
A computer executing software is a control system like any other. Control systems are patent eligible. The rise in popularity of the general-purpose hardware platform with special-purpose software doesn’t change this fact.
If a person truly and honestly want to reject this “junk”, then this person should be prepared to:
(1) identify the prior existence of the underlying idea (somehow this is called “abstract”) based on actual facts that can objectively established in the record, and
(2) demonstrate that putting this functionality into a generic control system such as a prior art computing platform doesn’t provide an unexpected result or a synergistic benefit that is worthy of a patent.
It’s that simple.
an unexpected result
When you claim the functionality, there isn’t any “unexpected result.”
Computers process the data they are instructed to process. It’s what they do.
Hindsight
In other words, the written description necessarily describes and enables the invention. Therefore, MM is absolutely correct that after reading the written description, the invention will necessarily be unexpected. The invention will adhere to the laws of physics.
MM is absolutely correct that after reading the written description, the invention will necessarily be unexpected.
Except I never said anything of the sort. Nice try, though.
The one-way editing in play yet again….
Malcolm has free reign to slander other blog writers, but make a reference to a factual event between Dr. Noonan and Malcolm, and Oh Noes – that just has to be censored….
…except for the part that [old machine] somehow gains these new capabilities “by magic”…
😉
“anon” …except for the part that [old machine] somehow gains these new capabilities “by magic”…
Last time I checked, the claim itself is not “the unexpected result” that converts a prima facie obvious invention into a valid one. If you’re aware of a case that says otherwise, I’d like to see it.
But since you’re the “expert”, maybe you can tell everyone: what’s the current teaching regarding the ability of a programmed computer to process the data that it’s programmed to process? When do we stop pretending to be surprised by that?
Is a method of sitting at a typewriter and typing out the instructions that provide a recited functionality for a machine eligible for patenting? How about a method of using audible words to teach a voice-controlled robot how to perform a task? Is it enough that I just describe the “use audible words” and the result of the task to get that claim? Or can I get the claim if recite the words?
What about a method of writing a list of rules on a piece of paper and handing it to a robot that follows the rules? Is that an eligible method? I assume the answer from the defenders of software patents is “yes because technology and who doesn’t love robots?”
But, hey: you’re the expert. I’m sure you’ve thought about these obvious questions a lot, just like the CAFC has.
LOL
What a bunch of g0bbledyg00k.
Try again with those short declarative sentences that you are always on about and try to actually talk to the post that I made – talk about the law (and try not to muddle yourself with the animation claims).
Hint: show you understand the law first, and then try to apply it.
You have never shown that you actually get that first part, and are always in a hurry to play your self-appointed guardian of the fields of rye part with “bad claims.”
Meaningless statement Malcolm – hint: try using the appropriate patent doctrine of inherency.
Your “version” here merely suffers from the House/Morse fallacy, and would necessitate that all future improvements to the machine known as the computer are somehow “already in there.”