IPO’s Next Legislative Proposal: 35 U.S.C. 103

commonsenseFollowing IPO’s recent proposal to effectively eliminate 35 U.S.C. 101, a Patently-O reader (“MM”) proposed the following amendment to 35 U.S.C. 103 for the organization’s consideration:

35 U.S.C. 103:  A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Common sense shall not be used or references in any part of the analysis of the claim. Under no circumstances will any element in the claim be deemed to be non-limiting for any reason. Individual claim elements, whether or not disclosed by the prior art, shall never be discussed or analyzed separately from the other claim elements. The term ‘monopoly’ must never appear in the analysis.

(Added language underlined.) According to the anonymous Patently-O reader, this would make it the “Best. Patent. System. Ever.”  Certainly, the provision would take care of KSR v. Teleflex that has been so frustrating for patentees and time consuming for the Court of Appeals.  (Satire).

About Dennis Crouch

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

275 thoughts on “IPO’s Next Legislative Proposal: 35 U.S.C. 103

  1. MM>> Not to put too fine a point on all this, but quite some ago organizations like the IPO and the AIPLA were taken over by hacks who can’t reason their way out of a paper bag, t0xic self-dealers who lost their ethical bearings, and narcissists who refuse to admit that their wrong about anything even when they are plainly some of the most reliably wrong people on the planet.

    In reality we know that Google is very anti-patent and is the biggest contributor to Congress save Goldman Sachs. There are great forces at work now to burn the system down so that monopolies in Silicon Valley are safe from competition from start-ups. That is what we know objectively.

    We also know that the left wing professors like Lemley don’t like patents ’cause of ideology. We know that he has exerted an undue influence in hiring decisions throughout the US due to the SCOTUS quoting him and his early influence on patent law before his exposure as an ideologue with no solutions, no ethics, and lots of ambition to be heard.

    Let’s try to stick to what is really happening and the real forces at work. At try to stick to real science MM. We also know that people like you are paid to control blogs like this one by lobbying groups paid by Google.

    1. And, just look at the campaign contributions to the legislators that want to burn the system down, or in their terms, “reform” the patent system. The biggest contributor or near the top is Google in every case.

  2. Not to put too fine a point on all this, but quite some ago organizations like the IPO and the AIPLA were taken over by hacks who can’t reason their way out of a paper bag, t0xic self-dealers who lost their ethical bearings, and narcissists who refuse to admit that their wrong about anything even when they are plainly some of the most reliably wrong people on the planet.

    This is substantial part of the culture of “patent attorneys.” It’s concentrated on the so-called “tech” side, to be sure, but there plenty in the chem/bio space, too.

    Making matters worse is the silly king-making and king-worshipping culture where every nose picking of Kappos, Chisum, or Wegner is treated like some gold nugget that everybody is supposed to take seriously because the gods have spoken.

    The bottom line is that if the s0 ftie w0 ftie crowd wants all their s0 ft ie w0 ftie and “do it on a computer” junk to be eligible just because It’s All So Incredibly Important then they should just come out and say so. They should put that dream expressly in their absurd statute that will never be passed. Or they can come up with some kind of intermediate position (as the CAFC has been trying to do for them) and propose a workable coherent examination and enforcement regime that amounts to more than just a handout to the patent bar.

    1. And why is someone allowed to denigrate people like this? “Not to put too fine a point on all this, but quite some ago organizations like the IPO and the AIPLA were taken over by hacks who can’t reason their way out of a paper bag, t0xic self-dealers who lost their ethical bearings, and narcissists who refuse to admit that their wrong about anything even when they are plainly some of the most reliably wrong people on the planet.”

      Patently-O, why do you allow this to go on? Is MM DC’s alter ego? Batman and Bruce Wayne?

        1. Ben,

          Once again you err by attempting to equate me with Malcolm.

          It is a seriously grevious error.

          (not withstanding the fact that in the DISQUS days, you “upvoted” nearly everything that Malcolm posted, no matter how banal, wrong, or noxious the post was)

          You don’t have credibility – and your attempt to equate me with Malcolm does not help you.

      1. Thanks for proving my point, PB.

        My apologies, folks! Get on your knees and begin genuflecting before the s00per deep insights of Manny Schecter , Ge ne Q unn and the IPO.

        Of course denigrating the Supreme Court 24-7 and questioning the ment@l health of any Federal Judge who explains why s0ftware patents are g@rbage is perfectly okay. That’s totally different!

        Man, you patent maximalists are a p@thetic pack of ign 0rant hypocrites.

        1. Man, you patent maximalists are a p@thetic pack of ign 0rant hypocrites.

          Stultifying Accuse Others meme doubled down with One Bucketness,,,

      2. Patent Bob, I largely agree with MM. While there may be reasonable people in organizations like the IPO of the AIPLA, they are cowered by the powerful.

        Think of the IPO and AIPLA like Gene Quinn’s site. Start supporting the Supreme Court, or discussing 101 in any way favorable to the Supreme Court, and you get your head taken off. The only people that can stand up to such folks are people have no ambitions inside those organizations, or who do not need jobs in big firms.

        Thank God for patent fora run by professors who do not need to kowtow to this power block and can allow free debate on patent law issues.

        As I have often said, when I was in the leadership ranks of both organizations I was shocked by the level of antipathy towards the Supreme Court. It was quite clear to me that the Federal Circuit was created primarily so that the lobbying organizations in Washington could unduly influence that Circuit Court to move patent law in the direction that would favor the people who controlled the lobby organizations. It was planned.

        When I first got out of law school I went to a firm involved in antitrust litigation against AT&T. As part of that litigation, I saw board resolutions and other materials from AT&T where they actively sought regulation by the government in order that they could use that regulation to suppress competition by encouraging rules that favored their monopoly and disfavored any new entrant.

        This is all about crony capitalism. The big companies, big firms, and the big lobby groups all work hand-in-glove for each other to make money using government power.

        What changed in the last few years are the reaction of Wall Street and the West Coast tech firms to so-called trolls who assert patents on business methods authorized by State Street Bank. Thank God there has been some pushback from these adversely affected groups. But, the problem has become that this pushback sometimes go so far and tries to throw the baby out with the bathwater.

        1. allowing free debate

          Ned, if you were inte11ectually honest, you would not characterize this site as such, given that you and Malcolm in particular are more interested in monologues than any type of actual debate (free or otherwise).

          To actually debate, you would have to address (and I do mean address in an inte11ectually honest manner) the counter points presented to your monologues.

          As it is, that is not only severely lacking, the “swagger” of the person you align with (now) is far worse than Mr. Quinn as far as lack of any sense of reason or reasonableness.

        2. As for “antipathy” to the Supreme Court, well, let’s just say that your extreme deference in the opposite direction is even more problematic (and let me again ask you to provide your State attorney oath, and I will show you exactly why – funny though, how you disappear on that point…)

          1. Anon, I do not necessarily have extreme deference to every Supreme Court decision. I disagree with eBay to the extent that that the majority opinion did not say the things said by Roberts in his concurrence. I also disagree with the majority opinion in Bilski. The right answer for the claims in that case was penned by Stevens in his concurrence.

            And guess who wrote the concurring opinion in eBay and the majority in Bilski, both opinions which have proven to be disasters? None other than Justice Kennedy. The sooner he retires, the better.

            1. Anon, I do not necessarily have extreme deference to every Supreme Court decision

              The cases in which you do show an unreasonable attitude – we both know why you never take me up on providing your State attorney oath.

              The cases in which you do not are explained because you pretend that anything that does not fit your agenda has any merit. That’s just a symptom of your classic “6-is-a-genius-because-he-agrees-with-me” malady.

              (it’s the same malady that produced your “Just enjoy Malcolm’s swagger” line – except you probably did not enjoy that same swagger recently when it came to politics, now did you?

        3. Ed the Ned you must be kidding. Lemley exerts enormous pressure on the professors to be anti-patent and Lemley has gotten many of these professors their jobs.

          Moreover, the biggest influence by far in patent law right now is Google which the FT has said spends more money than any other corporation besides Goldman Sachs to influence law makers.

          Ed the Ned you just have no qualms about misrepresenting the situation. Never ends with people like you.

        4. >>It was quite clear to me that the Federal Circuit was created primarily so that the lobbying organizations in Washington could unduly influence that Circuit Court to move patent law in the direction that would favor the people who controlled the lobby organizations. It was planned.

          Google is the one influencing the Fed. Cir.

          1. His loathing of the CAFC and his abject worship of the Supreme Court lack a consistent and objective viewpoint.

            Instead, everything is filtered as to whether or not the End result aligns with his Curse-ades and Windmill Chases.

            1. Anon, the problem with the Federal Circuit is that it had Judge Rich on the court for a long time; and he was a malign influence. Furthermore, the Federal Circuit is a bar-captured court because of its location in Washington — in the maw of the big business dominated patent lobbying organizations in its area of exclusive jurisdiction. Clearly, the (big business) people behind its creation knew this was going to happen, and did it anyway. Obviously, if they knew it was going to happen and they did it anyway, could we not conclude that they fully intended that it what happened?

              In contrast, the United States Supreme Court is a court of general jurisdiction. It has the best and brightest as its members. They see the big picture and get the policy issues correct more often than not. That court has been the best patent court in the world for very long time. It has my respect, and it should have respective everybody in this nation, and in the world.

              To the extent that we see in the patent bar general hostility to the Supreme Court and a general favorability to the Federal Circuit, what we see is the influence of the patent lobbying organizations. What they are doing is trying to feather their own nests using their money and influence. This is corruption and crony capitalism at its finest.

              It is a vicious circle, a circle that has to be broken.

        5. >Think of the IPO and AIPLA like Gene Quinn’s site. Start supporting the Supreme Court, or discussing 101 in any way favorable to the Supreme Court, and you get your head taken off.

          Ed the Ned you misrepresent science. You misrepresent patent law.

          You are given a fair forum for discussion at ipwatchdog. “Your head taken off” ??? How is that Ed the Ned? Your posts aren’t deleted. You are permitted to post as often as you like.

          The reality is that you don’t do as well in a forum where MM isn’t blasting the blog with a 30-100 posts a day so no one else can even begin to have a discussion on this blog.

          1. By “head taken off” he means that counter points presented – and his constant running away from these counterpoints – carry a rather uncomfortable spotlight for Ned.

            He does try to be “more pleasant” there (and less anti-software patent), but his duplicity shines through nonetheless.

            He does not want a “forum” in the sense of a dialogue.

            All that he wants is a soapbox on which he can climb and give his monologue.

  3. David Boundy, still desperatley trying to pretend we were all born yesterday:

    The IPO proposal does not “effectively eliminate 35 U.S.C. 101”—it effectively backs out the reasoning of the Bilski–Mayo–Myriad–Alice quartet, and reinstates Diehr

    As has been explained to you, to Sachs and to everyone else hundreds of times: you can not “back out of the reasoning” of Mayo and have a working subject eligibility matter filter.

    If a claim requires something outside the human mind, it’s not “abstract.”

    And this exactly the kind of ridiculous statement that shows everyone how far out in the weeds you and the IPO and the rest of the patent maximalist dreamers. This thing you call “the claim” is a bunch of words that describes something. The issue is not whether “the claim” is abstract; the issue is whether “the claim” protects ineligible subject matter such that people (other than the patentee) can not freely access that ineligible subject matter without fear of infringement liability.

    A method of (1) eating an ice cream cone and (2) thinking a non-obvious thought about the likelihood that a newborn baby is going to die of cancer is “outside the the human mind.” It sails right through the IPO’s ridiculous “test”. And it’s not obvious so it sails through 103. Now David Boundy is going to tell everyone a silly story about how some other section of the statute is going to take care of this sort of claim which turns someone who is eating an ice cream into an infringer when they also think about an ineligible correlation. But why not just write a decent statute that recognizes the issue? Why on earth would anyone want to rely on David Boundy’s or Robert Sach’s word when it comes to subject matter eligibility??

    Likewise, Boundy has admitted that information (e.g., information about a correlation between X and Y) isn’t eligible for patenting (although it’s not clear that he understands what he’s talking about). Of course, if some non-obvious information is written in an old book manufacture or if it’s stored for future display (manually or automatically) on an old computer designed for storing and displaying information, then the information is “outside of the human mind.” A claim to this “new manufacture” sails right through the IPO’s absurd “revision.” Under the “revision”, anyone who writes something non-obvious down on a piece of paper or saves that information on their computer will be faced with infringement liability. And make no mistake: the PTO will be bursting at the seams with claims like these because they are the easiest “innovations” in the world to dream up. Anybody can do it, even a lawyer who lacks the technical skills needed to sharpen a kitchen knife.

    But Boundy will tell us that somehow these problematic claims, too, will be “taken care of” somehow. Meanwhile, his patent maximalist c0hort Kevin Noonan will tell us that patents on information are simply awesome and we shouldn’t worry about them. He’ll tell us that it’s much better to live in fear of being sued for writing down information or thinking about information in some “new” context than it is to never have that information — as if those are the only two possibilities out there, and as if the First Amendment doesn’t exist!

    The proposed 101 revision is a d.o.a. j 0ke is what it is. Any reasonable person can see this. Only a patent attorney dr u nk on the patent k00l aid could ever pretend otherwise.

    It’s essentially the position that the Solicitor General argued in the Government’s amicus brief [in Mayo]

    Which is why the SG lost 9-0. The PTO’s position was indefensible and their own prior actions (granting Prometheus patent which was both ineligible and obvious) completely contradicted their own premise (i.e., that 103 would take care of ineligible non-obvious claims when the PTO can’t even reliably reject obvious claims!).

    1. We had a workable system. This was the rule set forth in the Kunin Subject Matter Guidelines and MPEP from the early 1990s. “At least one non-mental element” was the rule that the Board of Patent Appeals applied from the early 1990s until 2008. It may not have achieved the results that you personally prefer, but it was workable.

      The rest of your concerns fall within the territory policed by obviousness. Perhaps not obviousness as MM personally misunderstands, but obviousness as actually applied.

      1. Slight rewrite.

        We had a workable subject matter filter. This was the rule set forth in the Kunin Subject Matter Guidelines and MPEP from the early 1990s. “At least one non-mental element” was the rule that the Board of Patent Appeals applied from the early 1990s until 2008. It may not have achieved the results that you personally prefer, but it was a workable subject matter filter.

        The rest of your concerns fall within the territory policed by obviousness. Perhaps not obviousness as MM personally misunderstands, but obviousness as actually applied.

        OK, let’s take your hypothetical, that “the PTO can’t even reliably reject obvious claim” (which, in a world of finite resources, where you have to balance Type I errors against Type II errors, I don’t agree with. But let’s take your hypothetical on its own two feet). In that case, we fix PTO examination for obviousness. You can’t fix a system with one broken component by breaking another.

        1. In that case, we fix PTO examination for obviousness.

          Watch David Boundy spin! Wheeeeeeeee!

          You can’t fix a system with one broken component by breaking another.

          Again, nothing about the Supreme’s holding in Prometheus v. Mayo or Alice is “broken.”

          There’s some really loudmouthed whiny baby patent attorneys who don’t like the decisions because it affects their bottom line but lots of other patent attorneys (like yours truly) who have no problem with the decisions and fought for them. And I’ve got plenty of scientists and plenty of software writers backing me up. On top of that, there’s no evidence that Prometheus or Alice have resulted in the slowing of progress in any useful art. On the contrary, the decisions have led to increased competition and saved a lot of people (businesses and consumers) a lot of money that would otherwise have been spent on pointless patents and attorney fees.

          The sooner we expunge information and logic patents from the system altogether, the better. If the logic patentistas think they need some kind of patent right to protect logic, then should feel free to start from scratch and build that system. All that’s been accomplished thus far by you and your c0horts is to corrode the existing system which was not remotely equipped to examine or enforce the kind of junk that you insist on shoving at it.

          1. ” On top of that, there’s no evidence that Prometheus or Alice have resulted in the slowing of progress in any useful art. On the contrary, the decisions have led to increased competition and saved a lot of people (businesses and consumers) a lot of money that would otherwise have been spent on pointless patents and attorney fees.”

            Yes, and there are were 3 million illegal votes case in the last election.

          1. David, you’re too well-respected in the community of patent practitioners to be wasting your time engaging Mooney.

            He’s right, David. You better just stick to mindlessly agreeing with the people who have been reliably wrong about everything related to subject matter eligibility for the past 15 years. That’s a real winning strategy for you!

            Plus Atari Man will shine your shoes for you.

        2. ” In that case, we fix PTO examination for obviousness.”

          The only way to do that is to up the resources thrown at the problem significantly and increase the PTO’s authority to simply sit on applications. Neither of those things are something you will abide.

          1. The… way to do that is to… increase the PTO’s authority to simply sit on applications.

            At the risk of seeming dense, how does allowing the PTO to sit on applications help to weed out the §103-problematic claims?

            1. It does not.

              The comment can be traced back to 6’s (rather delusional) power grab mindset – all the way back to the Claims and Continuations Rules fiasco (fiasco for 6 and the Office – Tafas anyone…? 😉 ).

            2. “At the risk of seeming dense, how does allowing the PTO to sit on applications help to weed out the §103-problematic claims?”

              If we’re not convinced that the application is 103 compliant but we have as yet not found anything proving, with evidence, the contrary, we just sit on it and it doesn’t issue. Currently there are people that like to scream “ILLEGAL” at this taking place. It could always be made lawl.

                1. “By your “logic” you might as well simply stop issuing patents without giving any reason.”

                  At the PTO’s discretion. And only for x extended amount of time in comparison to the time allotted to sit today.

                  I already said this isn’t a solution that boundy et al. (including you) are going to like.

                2. You also mentioned that it would be considered illegal.

                  So why make such a zero chance suggestion?

                  As I indicated, you might as well simply stop issuing patents without giving any reason.

              1. It’s a good thing for 6 the he’s anonymous, because anyone in the private sector who said that a priori they’re not going to provide the service for which they were paid would be fired, lynched or both.

                1. “not going to provide the service for which they were paid would be fired, lynched or both.”

                  I’m saying we have to change “the service” for which they were paid a duhr, to account for Boundy’s wish, not “not provide” “the service for which they were paid”.

          2. I have no problem with upping resources significantly — we’ve raised per claim fees by a factor of 9 in the last decade. I think that 9 might be too much, but I have no problem with the overall concept.

            It’s also important to deploy those resources more effectively. That’s where the Administrative Procedure Act, Paperwork Reduction Act. Executive Order 12866, and Bulletin on Agency Good Guidance Practices comes in. They’re as important to effective/efficient function for the PTO as they are for applicants.

            1. “I have no problem with upping resources significantly — we’ve raised per claim fees by a factor of 9 in the last decade. I think that 9 might be too much, but I have no problem with the overall concept.”

              Well I’m somewhat surprised to hear that. But now you’re (and others) are going to have to be so on board with it so as to persuade the management to actually do it.

              “It’s also important to deploy those resources more effectively. ”

              Correct.

      2. David Boundy: The rest of your concerns fall within the territory policed by obviousness.

        No, they don’t fall within that territory at all. Everyone can see that because the “information” in my hypotheticals is non-obvious. The fact that you just sit there and assert otherwise without any explanation shows everyone that you’re either clueless or a l i a r, David. Or a little of both.

        the early 1990s.

        LOLOLOLOLOLOLOLOLOLOLOLOLOL
        Funny stuff, David. Keep the laughs coming! We don’t live in the 50s anymore. And the early 90s was 25+ years ago. Maybe a decent statute should take some of judiciary’s failed experiments into account? Or maybe you just remember that easy money pouring in and that’s all that matters. That would explain a lot (in addition to the cluelessness and the dishonesty).

        Perhaps not obviousness as MM personally misunderstands, but obviousness as actually applied.

        LOL

        As has already been explained to you and everyone else, obviousness “as actually applied” doesn’t get the job done.

        Trivia question: who was the Prometheus-era commenter who spent the most time reminding everyone why Prometheus’ claims were so incredibly obvious? Answer: me.

        Why was that the case? Because it demonstrated how intell ectua lly bankrupt the PTO’s premise was (and likewise for the apologists who jumped on the PTO’s bandwagon). The PTO was asserting that it could use 103 to “take care of” non-obvious information claims when it had already proved itself incapable of using 103 to “take care of” incredibly obvious information claims, i.e., the very claims at issue in Prometheus.

        You really need to step your game, David. Tie yourself to the IPO’s anchor if you like. But you’re going to sink to bottom right along with them.

        1. who was the Prometheus-era commenter who spent the most time reminding everyone why Prometheus’ claims were so incredibly obvious? Answer: me.

          If Prometheus’ claims were obvious, then (at least in that case), obviousness should have been allowed to do its job.

          Thanks for conceding the point. There was no reason to mess up subject matter eligibility.

          1. Thanks for conceding the point

            I didn’t concede anything, David. I just taught you something about the case that you plainly didn’t know and probably still don’t understand.

            obviousness should have been allowed to do its job.

            No, that would have been an incredible waste of time and money. As obvious as Prometheus’ claims were, they were even more plainly ineligible.

            I note that you still are stuck firmly in the swamp of disengenuous hackery, however, because not all claims of the sort that Prometheus was peddling will fall under 103. If Prometheus’ claims had recited a step of thinking a non-obvious thought about the claims (instead of an obvious one) they’d sail right through both the IPO’s absurd 101 revision and 103.

            Again: if you can’t understand why that’s the case in 2017 (!), you lack the intelligence to have the discussion. If you can understand it but you can’t admit it, well, that’s the disengenuous hackitude I’m talking about. Own it. Be proud, David! Hack away. You’re not the only one. But we can all see you. And it’s all archived. That’s the best part.

            1. I just taught you something

              Check again on what you “taught.”

              You are doing the same old same old and pretending otherwise.

              And speaking about lacking intelligence – the old Accuse Others meme in play…

      3. David, do not you think the patent system has had enough gut wrenching statutory changes in the last several years to last a lifetime? We have IPRs. We have CBM’s. We have global public use. We have foreign patent applications being effective prior art in United States as of their filing dates! We do not have a grace period that is worth a damn.

        Small changes to the patents statutes have large collateral effects that people do not anticipate. For example, the enactment of 103 back in ’52 still causes problems today. Then we have §112(f) – what a laugh! By codifying infringement into three categories in 271, we got the rule that direct infringement requires one infringer, that contributory infringers have to know they are infringing, and inducers similarly have to know what they are doing is causing patent infringement. All of this was an unattended consequences of the codification effort by Rich.

        Monkeying with the most basic statute in our statutory mix, a statute that has not changed its wording in any substantial degree since 1793, is fraught with danger.

        As I have said before, I think abstractness within the meaning given it by the early Supreme Court cases has to do with a failure under 112. If one claims an idea, or a law of nature, by itself without means or methods for carrying into practical use, then certainly there is a problem under 112, not so?

        Now, you have previously stated that you thought there is something unpatentable about the claims in Bilski. We both know that the Supreme Court declared them to be abstract. But is that why you think the claims in Bilski are unpatentable? And if they are abstract, why? The Supreme Court provided no explanation.

        We have to deal with Bilski first before we can begin to discuss Alice.

        1. Ned,

          Apparently (as is your typical alignment problem), you fail to grasp that the common denominator is not Judge Rich that you choose yet again to malign (remember / Congress did the enacting, as it is THEIR Constitutional authorized prerogative to do), and that it is – instead – the Supreme Court that is mucking things up.

          You really need to stop worshipping the Court when the Court aligns with your Windmill Chases (coupled with ignoring what Congress did in the Act of 1952).

    2. Malcolm whines: “As has been explained to you, to Sachs and to everyone else hundreds of times: you can not “back out of the reasoning” of Mayo and have a working subject eligibility matter filter.

      Your “hundreds of times explanation,” Malcolm has been nothing but you presenting your feelings accompanied with heaps of baseless ad hominem absolutely devoid of any semblance of an inte11ectually honest LEGAL argument.

      You return NO dialogues on any counter points presented to your feelings.

      That you blight this forum with “hundreds” of such things does in no way make up for the absence of that inte11ectually honest thinking that is required to have an actual dialogue.

      This has been pointed out – with numerous tagged examples to Prof. Crouch several times now (in several of his “let’s have a better ecosystem” attempts).

      When you want something different, but you keep on allowing the same blight over and over and over…

      1. “anon”, a notorious narcissist bl 0g tr0ll: Your “hundreds of times explanation,” Malcolm has been nothing but you presenting your feelings

        Absolutely false and everyone knows it.

        When I write that a claim to

        old step plus new thought

        turns practitioners of the prior art step into infringers merely because they think the “new thought”, that’s not an expression of “my feelings”. That’s an expression of irrefutable logic. It’s the logic that led the Supremes to their holding in Mayo.

        And I know that it makes you and Boundy and Underweiser and Sachs very sad when keep bringing this up. But you guys lack the integrity or intelligence to do it yourselves. You really are that low, or that dense.

        But the issue never goes away. You better buy another box of kleenex.

        [shrugs]

        1. Lol -Kleenex? The Accuse Others meme once more.
          Yes Malcolm, your feelings (as that is all that you have), are noted.

          Also noted is the number of times that you refused to engage in any sense of inte11ectual honesty when I provided counter points to your “prior at + new” meme.

          You either move the goalposts from claims not entirely within the mind to your “example” totally within the mind, or you purposefully clench tight your eyes to the concept of anthropomorphication and the plain fact that machines cannot serve as a proxy for human feelings and emotions (even such regarding “information”), because machines do not have feelings or emotions.

          Machines are a statutory category.

          Manufactures – of which software, written by the hand of man with the express (defined) purpose of being used in a machine – is, is also a statutory category.

          The thought of software (which may be entirely in the mind) is not software.

          Your “hundreds of times” B$ has been refuted those very same “hundreds of times,” and time, your same lack of inte11ectual honesty is on full display.

          1. I provided counter points

            There are no “counter points”.

            It’s not a “meme.” Scrivening some “non-mental” prior art context around some ineligible mental step in order to protect the mental step in that context is something that claim drafters actually tried to do, and failed. It’s that scrivening that the IPO’s “revision” is attempting to promote.

            Every reasonable and intelligent patent attorney understands this. Only the honest ones will admit it.

            You’re not one of the honest ones, “anon.”

            But we all knew that already.

            [shrugs]

            1. There have been plenty of counter points.

              Your “arguments” are memes – bad ones at that.

              Your number one meme of Accuse Others Of That Which Malcolm Does(/Is) is readily apparent from your own false accusations here.

              Same old Malcolm.

              1. Your “arguments” are meme

                I really thought I’d seen all of the most vacuous and inane responses to Prometheus v. Mayo but the bar just got dropped a little lower. Very impressive!

                1. LOL – classic Malcolm “put down the shovel, as the shovel is in Malcolm’s hands.”

                  The bar being lowered is merely representative of your so-called “arguments.”

              1. It technically is a meme

                Maybe you and your intellectual brosefus “anon” can tell everyone what types of legal arguments and basic reasoning are “technically” not memes and then we can decide whether anyone should care one way or another.

                Actually, don’t bother. You can call everything a “meme” if you like. Just another bonding moment for you and “anon.” It’s kinda cute.

          2. “anon” machines cannot serve as a proxy for human feelings and emotions

            LOL Talk about a non-sequitur.

            The machines don’t taste as good as your favorite cheeto flavor, either! Deep, deep stuff.

            Machines are a statutory category.

            Hey lookie! Johnny can read!

            1. You use the word “non-sequitur,” but that word does not mean what you think it means.

              The notion of anthropomorphication is very much on point to the “mental steps” doctrine that is on the table for discussion – especially as it involves that “Johnny can read” plain reading of what Congress wrote.

              I noticed though that the cat got your tongue in relation to the manufacture aspect.

              Funny that – that also is very germane, even though on that point, you have volunteered an admission against your interests in knowing and understanding the controlling law of the exceptions to the printed matter doctrine to which your feelings about software simply cannot square with the law as written by Congress concerning manufactures.

              And yes, we have been here before. Many many many times. But each time, you seem to run away from the substantive point of law that does not match your feelings.

              1. You use the word “non-sequitur,” but that word does not mean what you think it means.

                I know what the word means and I used it correctly to refer to your bizarre “machines aren’t proxies for human feelings” nonsense.

                You are nothing more than a path 0 l0gical l i @r “anon”, and a clinical narcissist. You couldn’t lawyer your way out of a paper bag.

                Everybody knows this. Get help already. If not for yourself, do it for the sinking community of sham peddlers whom you cling to like some giant p uss-filled barnacle.

                1. You keep on saying “nonsense” and yet that is what YOU align with.

                  More of that “put down the shovel that Malcolm is clutching so tightly” meme…

  4. Unrelated to the subject of this thread (does a minimally amusing jab at satire really have a “subject”?), the Commerce.GOV website still does not have any information about who is in charge of the PTO. I realize that patents & trademarks are not the new administration’s top priority (nor should they be), but it is beyond incompetent that they still cannot say who is in charge of the Office.

    If I wanted to file an APA suit, someone‘s name needs to go on the other side of the “v.” in the caption. Whose name is it? It does not take much wit or skill to make that sort of basic information available to the public.

  5. I stopped reading when Mooney was identified as the source. Although DC’s decision to post this makes me wonder, as some speculated years ago, if MM and DC aren’t one and the same.

  6. Dennis—

    This is not a high-water mark among your informative articles born of careful analysis.

    The IPO proposal does not “effectively eliminate 35 U.S.C. 101”—it effectively backs out the reasoning of the BilskiMayoMyriadAlice quartet, and reinstates Diehr, by defining “abstract idea” in its dictionary definition sense—entirely in the human mind. If a claim requires something outside the human mind, it’s not “abstract.”

    Gottschalk v. Benson, 409 U.S. 63 (1972) claim 13 remains ineligible—there is no limitation that requires effect or instantiation outside the human mind. (Benson claim 8 becomes eligible, because it recites hardware, a “reentrant shift register”.)

    Parker v. Flook, 437 U.S. 584 (1978) remains ineligible—there is no language in this claim that requires instantiation outside the human mind.

    Bilski v. Kappos, 561 U.S. 593 (2010) remains ineligible—there is no computer in the claim or specification.

    A number of Federal Circuit cases still come out ineligible—In re Trovato, 42 F.3d 1376, 33 USPQ2d 1194 (Fed. Cir. 1994), In re Schrader, 22 F.3d 290, 30 USPQ2d 1455 (Fed. Cir. 1994) (the land parcel auction case); In re Warmerdam, 33 F.3d 1354, 31 USPQ2d 1759 (Fed. Cir. 1994) (the “hierarchy of bubbles” case). In re Walter, 618 F.2d 758, 205 USPQ 397 (C.C.P.A. 1980) remains ineligible, at least if the claim is evaluated in a “broadest reasonable interpretation” context.

    That’s hardly “elimination.” It’s essentially the position that the Solicitor General argued in the Government’s amicus brief—the Solicitor General (at least before January 20, 2017) is hardly given to radical positions in commercial cases.

      1. Martin, the term is “abstract idea.” Removing the word “abstract” from its context is not a move in the direction of rational results.

        “Utility” and “subject matter” are two entirely different things. Mixing them up leads to unpredictabilty, and is likewise not a move in a helpful direction.

        I saw your long post in the other article, and I owe you a reply.

        1. David the statue says “new and useful”. The nature of the utility is central to subject matter eligibility. I look forward to your response.

          PS, If MM is actually a sockie of DC, I’ll eat my monitor (maybe not in one sitting).

          1. I don’t understand–this looks like a non sequitur.

            Nobody is proposing any change to the law of “utility.”

            The unpredictable mish-mashing of various statutory requirements is one of the problems that IPO is trying to cure.

            If that doesn’t respond to what you had in mind, please explain further.

          2. The nature of the utility is central to subject matter eligibility.

            To echo Mr. Boundy, this looks like a non sequitur to me. If you see a logical connection between the utility requirement and the statutory categories, it might be helpful if you unpack it some more. Right now, the only connection I see between the two is the arbitrary fact that the Congress back in 1952 stuck them in a single section instead of two different sections.

            1. David and Greg,

              Virtually all of the trouble is with “process”, because virtually anything that human beings do can be characterized into steps of processes.

              The subject matter of a patent has to be new, useful, and a process (excluding the other three categories for this point).

              But what is “useful” is not everything that has utility, because of tradition, doctrine, etc. Some elements of the fine arts can be useful (a training video). Some fixed expressions can be useful (technical diagrams, written instructions). For example, the printed matter doctrine is a subject matter doctrine- built around the utility of the printed information to its substrate.

              Because someone waves their hand and says the utility of information results has nothing to do with subject matter eligibility, does not make it so.

              If the useful result of a process is information (and all information is abstract), and you want new, useful, non obvious information to be a patentable result (because technology), there is a problem if you also don’t want abstractions to be patentable results.

              So you have to look at the the nature of the utility. Information consumed by persons is always 100% abstract. Information consumed by machines can never be abstract, since no human mind means no abstraction.

              There is nothing complicated about this.

              1. MS Information consumed by machines can never be abstract, since no human mind means no abstraction.

                There is nothing complicated about this.

                Agreed that it’s not “complicated”. But it is wrong. 😉

                This gets at yet another aspect of the IPO’s revision that is troubling: it reverses N utjen, no? i.e., a signal carrying “non-obvious” information is patentable under the statute.

                1. MM, it’s not “wrong”, its just not your preferred interpretation of abstraction in this context. I agree that all information and logic is abstract. Unfortunately, there are people up and down the system, from the lowest levels to the highest, who think that protecting some information and logic with patents is essential and proper. I’m proposing a workable political compromise that happens to have some intuitive relation to life as it’s actually experienced.

                2. , there are people up and down the system, from the lowest levels to the highest, who think that protecting some information and logic with patents is essential and proper.

                  And there’s people who think the opposite. With respect to information, in particular, I think there’s way way way way more people on my side. With respect to logic, I think there’s way way way way way more people on my side. With respect to logic on a computer, I think there’s merely just a heck of a lot more people on my side.

                  It’s easy to be confused by the rantings on patent-specific blogs because there’s so many attorneys deeply invested in the status quo who rant on the patent blogs. In the wider world, people who’ve considered the issues tend not to favor patenting of abstractions like information and “new” instructions for logic executing machines.

                  I’m proposing a workable political compromise that happens to have some intuitive relation to life as it’s actually experienced.

                  Whether it’s “workable” remains to be seen. We know for certain that eliminating information and logic patents works just fine because the system wasn’t ever designed to promote that junk and the programmable computer and the world wide web were “innovated” just fine without ten zillion patents on logic and information.

                  Also, what on earth makes you think that the patent maximalists are interested in “compromise”? Does the IPO’s revision to 101 look anything remotely like a “compromise”? I mean, ‘cmon. Be serious.

                3. Instead of the emotive “sides,” how about you focus on the law?

                  Lynch mobs – no matter their size – are not proper, is that not so?

                  As to logic patents (yet again), how is your copyright on logic coming along?

                  Yeah, thought so.

                  Why don’t you give your prevarications a rest? Or at least, pound either law or facts, rather than that table of your feelings…?

                4. Why would reversing a horribly incorrect – on a purely factual basis – decision of In re Nuitjen be so bad?

                  A manufacture is a manufacture, eh?

              2. Because someone waves their hand and says the utility of information results has nothing to do with subject matter eligibility, does not make it so.

                True. Similarly, just because someone waves a hand and says that the utility does have something to do with the subject-matter eligibility likewise does not make it so. There either is or is not a logical connection between the two. If there is, presumably it can be explained. That is the point on which I am asking for clarification.

                I am not really clear on how the point about printed matter doctrine (PMD) really establishes the connection. I agree that PMD is a slantwise version of a subject matter eligibility test, but notably PMD is largely unconcerned with utility, except in the manner of In re Miller, 418 F.2d 1392 (C.C.P.A. 1969). That is to say, a useful graph and a useless doodle are equally unavailing when you are facing a §102 rejection based on PMD. Once again, what is the connection you are seeing between the utility and the subject matter eligibility.

                Incidentally, N.B. that the information at issue in Miller was definitely intended for human consumption, and yet the claim was patentable.

                1. Normally this would involve the calculation of such baffling measurements as 1/3 or 2/3 of a cup, which, it is assumed, would tax the mathematical abilities of many housewives.

                  Nice.

                  From the utility point of view, we will assume this to be so in the absence of any assertion by the Patent Office to the contrary. Indeed, we think we can judicially notice the fact

                  Yes, the utility makes the difference here. However, this is a manufacture patent, not a process patent, and the manufacture in question is processing information without regard to the meaning/content of the information.

                  We do not see why this is so and the examiner does not tell us.1 We do not see that “structural” relationship-whatever that means-is required to obtain the practical, problem-solving results of appellant’s invention.

                2. Normally this would involve the calculation of such baffling measurements as 1/3 or 2/3 of a cup, which, it is assumed, would tax the mathematical abilities of many housewives.

                  Nice.

                  Yeah, I know what you mean. Miller is a fine piece of work when considered only for its legal reasoning, but the gratuitous swipe at the intellect of housewives always makes me wince when I read that line.

                3. Martin writes

                  Keep in mind that the use of my proposed doctrine must include a formal construction step (probably an expanded Markman procedure) to identify the useful result of a process and characterize that result.

                  Ah. You’re using vocabulary to mean something entirely different than the rest of us. “Claim construction” means claim construction. The “result” is irrelevant (unless it’s recited explicitly, for example, if the last paragraph of the claim says “computing x and y to yield result z”). If the claim doesn’t say what the result is, then trying to discern, let alone characterize, that result is just not part of the game.

                  I think I see what’s going on. From this post and several others, it looks like you’re trying to reinvent the whole patent system, change all the rules. That’s just not a useful exercise or a useful contribution to the discussion.

                  Unless you explain that I’m misunderstanding something (which I’m perfectly open to), I won’t be engaging further with an unrealistic proposal to upset the entire system in the name of solving one isolated problem.

                4. Ah. You’re using vocabulary to mean something entirely different than the rest of us.

                  it looks like you’re trying to reinvent the whole patent system, change all the rules.

                  This has been systematically pointed out to Mr. Snyder from the very beginning of his quest.

              3. Information consumed by persons is always 100% abstract. Information consumed by machines can never be abstract.

                I am lost as to the significance here. I also worry that the word “abstract” is leading us down a rabbit hole here (although I confess that I could be wrong about that, so please let me know where I am going wrong if you can spot my error).

                A diagnostic test, by definition, ends up with information for human consumption. Imagine that one has a fool-proof diagnostic for a disease that has no known treatment. It is a very concrete piece of plastic tubing filled with antibodies and salt water. How is the test itself “abstract”?

                If we stipulate in the hypo to the novelty and nonobviousness of the test kit, it seems to me that if we are going to nix the claim to this test, the subject matter eligibility categories is not the way to do it. Rather, we should focus on utility. It is arguable that it is not “useful” to give a person diagnostic info when there is no way to follow that diagnosis with treatment. On the other hand, maybe the information is still “useful,” insofar as it allows the person to plan the rest of life accordingly.

                My own predilections tilt in favor of patentability for the test. What I really want to say, however, is that pivot around which the decision should really turn is the utility, not the categories. Nothing about the fact that the resulting info is intended for a human recipient rather than a computer recipient makes the claimed kit a whit more “abstract.”

                1. Mr. Snyder steadfastfully refuses to understand the term utility in the patent context, and the fact that ALL final views of utility MUST be of a type of utility for human consumption.

                  It is the bedrock of the very meaning of “utility.”

                2. Greg a new diagnostic test that has novel physical structure is not a process. The fact that the test creates information is irrelevant.

                3. Fair enough, Martin. I phrased my question poorly. Allow me to reprase:

                  Imagine that I have invented a new use of an old enzyme. In the art, the enzyme is useful for tanning leather, but I discover that—when dissolved in salt-water and encased in polystyrene tube—it can be used to achieve a 99% specific/99% sensitive test for DeLassus’ disease. As yet, there is no known cure or treatment for DeLassus’ disease. The test is conducted thus:

                  (1) Draw a spinal tap from a subject.
                  (2) Mix 1 part of the spinal tap fluid with about 3 parts of a solution comprising at least 20 mM alkonium phytase in 30 mM NaCO3.
                  (3) Incubate at 37°C for at least 30 min.
                  (4) If the solution remains cloudy gray, then the subject does not have DeLassus’ disease. If the solution turns green, then the subject will develop symptoms, with the darkness of the green correlating with time remaining until onset of symptoms.

                  I draft a claim:

                  A method of diagnosing the onset of symptoms of DeLassus’ disease in a subject, the method comprising:
                  (1) mixing a volume of spinal fluid from the subject with about three volumes of a solution at least 20 mM alkonium phytase in 30 mM NaCO3;
                  (2) incubating the mixture in a polystyrene tube for at least 30 min. at 37°C; and
                  (3) measuring the optical density of the incubated solution at 530 nm wavelength.

                  This is a method. The information obtained here (how soon until symptoms set in?) is used by a human.

                  Near as I can tell, this claim is no good under Mayo. The enzyme, the buffers, the spinal tap technique, and the spectrophotometry are all old in the art. The only thing new is the discovery that this particular enzyme reacts with components in spinal fluid that are indicative of a disease, which is itself a law of nature that exists independently of my discovery.

                  What I cannot understand, however, is why this claim should fail. That is to ask, why should we want a patent system not to incentivize the discovery, dissemination, and or commercialization of this discovery? How is life made better for people if this claim cannot issue?

                  Remarking on the subjective value of the information to the end user does not really seem to me a responsive answer to this question.

                4. Greg The only thing new is the discovery that this particular enzyme reacts with components in spinal fluid that are indicative of a disease, which is itself a law of nature that exists independently of my discovery.

                  What I cannot understand, however, is why this claim should fail.

                  I’m having trouble following the fact pattern in your hypothetical. Please keep it simple! It doesn’t need to be complicated.

                  You write The only thing new is the discovery that this particular enzyme reacts with components in spinal fluid that are indicative of a disease

                  but try to be clear. What exactly is new? The chemical reaction or the meaning of the result achieved chemical reaction? The answer makes all the difference.

                  which is itself a law of nature that exists independently of my discovery.

                  What are you referring to? What is “itself”?

                  What I cannot understand, however, is why this claim should fail.

                  If the claimed method covers a prior art reaction and all that’s being “innovated” is the “new meaning” that is being abstracted over the result of the reaction, then the claim should fail because it’s protection an abstraction. More particularly, it should fail because people practicing the prior art — the actual technology — are turned into infringers merely because they are thinking something new about the results of actions that they are otherwise able to freely carry out.

                5. On the DeLassus’ disease hypo: once again, you are not presenting a method whose sole inventive step is an item of information. Your method is a new, non-obvious use of an old material, which is a physical process.

                  Keep in mind that the use of my proposed doctrine must include a formal construction step (probably an expanded Markman procedure) to identify the useful result of a process and characterize that result. Only when the useful result is an item of information would my test kick in.

                  For instance, the item of information that fetal DNA may be found in maternal plasma. If the method recites nothing else new, that useful result is an item of information.

                  New diagnostic testing methods using new physical structure OF COURSE should be patent eligible.

                6. On the DeLassus’ disease hypo: once again, you are not presenting a method whose sole inventive step is an item of information.

                  Correct. The inventive aspect of the claimed invention is the ordered combination of prior art materials and manipulations.

                  Keep in mind that the use of my proposed doctrine must include a formal construction step (probably an expanded Markman procedure) to identify the useful result of a process and characterize that result.

                  All obviousness analyses require claim construction. All obviousness analyses also require that one identify any unexpected advantages. How is this different from what we already do when assessing obviousness?

                  Only when the useful result is an item of information would my test kick in.

                  O.k., but in my hypo the useful result is an item of information. I expect that the chemical reaction with the phytase and the spinal fluid probably produces some product that had not previously been produced, but that chemical product has no use in my hypo. The only useful result is the information (“how long has he got, doc?”).

                  New diagnostic testing methods using new physical structure OF COURSE should be patent eligible.

                  Naturally, I agree with your conclusion, but I cannot follow the reasoning by which you got there. You said that if the result is information useful to a human, then the claim is no good. So I described a process whose only useful result is information for a human, and you tell me the claim is fine.

                  What am I missing? Clearly I am missing something here.

                7. GregDL on MSnyder: Naturally, I agree with your conclusion [New diagnostic testing methods using new physical structure OF COURSE should be patent eligible] but I cannot follow the reasoning by which you got there.

                  The reasoning is that claims that meet that criteria don’t present eligibility issues. This is true of the existing system, by the way: new, non-obvious physical stuctures, described in objective structural terms, are the quintessential examples of the “something more” that the Supremes indicated were necessary in Prometheus to pull a claim reciting some ineligible subject matter out of ineligibility.

                  Martin’s human consumption vs. machine consumption test is specific for determining the eligibility of data producing methods carried out using old technology, e.g., “new” logic processes carried out by old logic processing machines that produce “new” signals carrying data.

                  Now, I don’t agree that Martin’s distinction represents a useful improvement to the patent system (and I’ve explained why) but I don’t find it difficult to track at this level.

                8. Mr. Snyder,

                  You jest at the Bog Box of protons, neutrons and electrons, and quite miss the point that THAT meme is a ridicule of the anti-software patent people and the “logic” they attempt to use.

                  You really are lost in this terrain, aren’t you?

              4. Sorry, Martin, you lost me. I’m not following your reasoning at all, and I think your “information as result of the claim” test ineligiblizes inventions that should be eligible.

                Take a look at the Arrhythmia Research Technology Inc Corazonix Corp, 958 F2d 1053 (Fed. Cir. 1992). Here, the claim starts with heart electrocardiogram signals, and ends with information to assist a human diagnostician:

                1. A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:

                converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;

                applying a portion of said time segments in reverse time order to high pass filter means;

                determining an arithmetic value of the amplitude of the output of said filter; and

                comparing said value with said predetermined level.

                The Federal Circuit held this claim to be eligible subject matter.

                Two similar claims were considered in In re Abele, 684 F.2d 902 (Fed. Cir. 1982). Claim 5 was ineligible, claim 6 was eligible, even though 6 ends with only a grey scale point on a display.

                5. A method of displaying data in a field comprising the steps of

                calculating the difference between the local value of the data at a data point in the field and the average value of the data in a region of the field which surrounds said point for each point in said field, and

                displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.

                6. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.

                Both of these claims illustrate an important principle: if data comes from a sensor (outside the human mind) and it gets processed to inform a human action, before the Bilski-Mayo-Myriad-Alice quartet, it would have been eligible subject matter.

                The fact that they end with information didn’t make them ineligible under the pre-Bilski machine-or-transformation test, and in my opinion shouldn’t make them ineligible.

                1. David, two quick points:

                  @15.1.1.1.2.1.4, those methods should be ineligible and likely would be found so today. If f data comes from a <b<oldsensor (outside the human mind) and it gets processed to inform a human action, it should be ineligible, period, and not just because of my test.

                  Making the reading of a prior art sensor an infringement effectively takes that sensor from either its patentee or the public and should never be patentable beyond questions of human freedom and the progress of science.

                  Point two: I know very well what claim construction means. I suggest that Alice is in fact a construction of eligibility, and that US Patents require such a construction, at a minimum, to properly locate PHOSITA (and the invention) prior to any 102/103/112 inquiry. Instead of the ad-hoc nature of Alice, this should be a formalized, adversarial step with a built-up record, ability to file papers, etc. I’m not looking to change the whole patent law – I’m saying the results of method patents (MoT etc.) are already being construed.

                  You can engage or not engage with what I am saying, but your side of this debate has not been willing to listen to anything but more patents all the time, and the results are a smoking crater.

                  MM@15.1.1.1.2.1.1, it’s not just patent maximalists who can’t quit on information/logic patents; it’s most of the CAFC and a chunk of the USSC, and they can’t just be ignored.

                2. A chunk of the SCotUS? Alice was 9-0. There was a single paragraph concurrence, written separately merely to say that the majority did not go far enough. That pro-software patent “chunk” looks infinitesimally small.

      2. Abstract is a term of art – your continued refusal to bother with understanding the terrain of patent law once again has you stumbling about.

        1. Abstract is a term of equity not codified in law or anywhere else but the USSC’s jurisprudence. Your useless generalizations anon don’t even count as stumbling; they are more like tics at this point.

          1. Says the one untethered to any semblance of the law that you want to discuss…

            That’s funny.

            In the rather odd and peculiar meaning of the word “funny.”

          2. Martin writes @ 15.1.1.1.2.1.3.2 “a new diagnostic test that has novel physical structure is not a process. The fact that the test creates information is irrelevant.”

            Most diagnostic tests are claimed as processes. (The novel physical structure can also be claimed as a spearate invention, but that doesn’t change the fact that the “test” itself can only be claimed as a process.)

            Martin writes @5.1.2.1 Abstract is a term of equity not codified in law or anywhere else but the USSC’s jurisprudence.

            Yes. That’s the way things work in the Anglo-American common law system. A Supreme Court construction of a term is a game-set-match QED That’s-the-way-it-is, until a statute comes along to change it. It might be helpful to look at link to en.wikipedia.org

            Sorry Martin, I can’t teach you the rules of the legal road, let alone patent law, from scratch.

            1. Sorry Martin, I can’t teach you the rules of the legal road, let alone patent law, from scratch.

              Likewise – something that I noted to Mr. Snyder from the very beginning of his quest (even asking him to ask his then counsel in a patent law suit to explain certain patent law principles to Mr. Snyder, so as to make sure that Mr. Snyder’s attorneys were operating with informed consent.

              Mr. Snyder may have obtained some patent law knowledge, but it is being applied to a foundation built on the sands of personal animus against software patents (no matter how much he says that he is trying to politic a compromise, his castle lacks the proper foundation, and will necessarily crash).

            2. David am I mistaken that you, yourself, have written that “abstract ideas” has not been defined? Is an undefined term also a term of art?

              I freely admit I am learning as I go, but I’m far from scratch on this thing, and from years on this board, I know I’m closer on the law than most of y’all are on the facts of life in the technology biz.

    1. What IS radical is the apparent association between this version of the Prof.’s “not a high watermark” and the eleven year blight of “MM.”

    2. This is correct David. And, this blog has become dominated by MM who claims to spend only 20 minutes a day on the blog, but which we all know is his full-time job.

  7. This post really jumps the shark. DC’s blog should now be seen as a forum for the anti-patent judicial activist where issues are not given a fair hearing.

    Please avoid this blog.

  8. Elsewhere in this thread, Ned Heller writes about the subjectiveness that complicates obviousness jurisprudence in the USA:

    “Whether something was known or not known is somewhat easy to prove. Whether something imparts new functionality not previously known is somewhat easy to prove. These are objective tests because they can be proved with evidence. They correspond, I believe, with the tests used in Europe.”

    which seems to support my contention, that determining the question “Obvious Y/N?” under the EPC is objective.

    Funny how different jurisdictions use different terminology for the same patentability filters. It causes no end of confusion. Another example is the EPC prohibition on “adding matter” in that it corresponds to the US requirement for a “written description” of the subject matter claimed in the patent to be delivered to the PTO no later than the filing date of the patent application.

    In the end, every jurisdiction needs the same filters, regardless what they choose to call them.

    1. “new functionality” can be a very broad term. How something is done is important too and can be a new functionality from the perspective of the machine.

      But, Ed the Ned plays so many games it is hard to want to spend the time to parse through his nonsense.

    2. which seems to support my contention, that determining the question “Obvious Y/N?” under the EPC is objective.

      That is not a support for your contention – it is a logically flawed overreach on your part.

    3. [T]he question “Obvious Y/N?” under the EPC is objective.

      You seem to be fishing for a compliment, so I will go ahead and pay it.

      The EPO’s inventive step analysis is better/clearer/more objective and reproducible than the corresponding U.S. analysis.

      While we are on the subject, the EPO does a more thorough job searching the art (although one pays more in Europe, so I regard this more as a pay-more-get-more, rather than any unique virtue of the European examiner corps’ skill or diligence).

      Are you contented, now that someone has acknowledged the superiority of certain aspects of the EP system? 😉

      I, for one, would be pleased as punch if we were to replace KSR with EP inventiveness law. For better or worse, however, I have no say in that matter. The system we have is the creation of the SCotUS, and I must simply play along with whatever they give me.

      1. You seem to be fishing for a compliment, so I will go ahead and pay it.

        Shooting fish in a barrel is not fishing.

        As you note, there is an untowards drive to place the EPO “system” on a mantle, while (again) neglecting the fact that different sovereigns have chosen their laws differently.

        MaxDrei’s ever present “EPO uber alles” shows dullness when he “fishes” so hard.

      2. Not fishing for compliments, Greg, but thanks anyway. I’m just aiming to influence opinion amongst Dennis’s readership, including those who clerk for judges at courts of appeal of the USA.

        It’s more than just “Pay more-Get more”. It is the formulation by the EPO Boards of Appeal of a rubric for examination of obviousness, one that can be consistently applied by Examiners at the EPO, regardless which national Patent Office amongst the 38 EPC Member States gave them their basic training in the principles of patent law.

        But, as I say over and over, the EPO’s ultra-elegant and robust TSM approach to obviousness works only under FtF law.

        1. It’s more than just “Pay more-Get more”.

          Just to be clear, my “pay-more-get-more” remark was in regard to the superior quality of art search that EP examiners seem to generate. EP examiners routinely (in my experience) find highly pertinent art that US examiners miss, while I only rarely encounter a case where the US examiner finds something more pertinent than the art that the EP examination uncovered.

          I do not, however, think that this experience bespeaks a higher intelligence or a stronger work-ethic in the EPO examiner corps. I mostly put the difference down to higher fees in Europe, such that the EPO can pay examiners to spend the kind of time necessary to produce the sound quality examination reports for which the EPO is justly admired. Because our fees are lower in the U.S., we cannot pay our examiners to spend as much time or run as many databases per search as do the EPO examiners.

          I do not regard the EPO’s obviousness law to be a case of pay-more-get-more. EPO obviousness law really is just a better body of law. There is no reason one could not employ a similar legal standard here in the U.S., even with our less costly fee structure. In fact, precisely because the EPO’s inventiveness standard is more objective in its application, it would probably save examiner time and improve productivity if we switched over. Unfortunately, the PTO does not get to decide what obviousness standard is used. Just like patent lawyers, patent examiners must dance to the tune that the SCotUS plays.

          1. Good morning Greg. I want to pick up on your “dance the tune” point at the end of your mail above.

            Yes, of course the PTO has to follow the line delivered to it by the courts that sit on top of it. But what if the PTO started issuing Decisions with logic drawn from the EPO-PSA Approach but written in words borrowed from the tablets handed down from the top of the SCOTUS/Federal Circuit mountain. After all EPO-PSA is only an Approach, an exercise in logical thinking. Graham Factors are there whatever, anywhere in the world. At the end of the reasoning process, the end point is the same namely Obvious Y/N?

            Those decisions might just receive blessing and survive attempts to reverse them. Mightn’t they?

        2. [T]he EPO’s ultra-elegant and robust TSM approach to obviousness works only under FtF law.

          One more reason, then, why I am glad that we switched to FtF.

    4. “In the end, every jurisdiction needs the same filters, regardless what they choose to call them”

      Why? What should the US have the same patent system as the EU? Japan as the US? South Africa?

      1. Patent system? Time-limited exclusive rights in return for new, useful, not obvious and enabled claims commensurate in scope with the magnitude of the contribution to the art. After the filing date, no adding to the pending application that switches to an invention other than that delivered to the PTO on the filing date, and no patching of non-enabled matter with amendments that enable that which was not enabled at the filing date.

        All necessary. Together sufficient. In any jurisdiction. OK?

        1. Not OK, MaxDrei.

          You continue to try to ig nore the plain fact that patent law remains a sovereign-centric law, and that individual sovereigns are free to choose rules for their own sets of laws without regards** to any other sovereigns’ choices.

          **of course, taking into consideration the possible additions as enacted into legislation that may come from mutually agreed treaties.

          Again, this point has been presented to you many times, and it seems that your “mind willing to understand” really should have picked up on this by now.

          1. That every jurisdiction is free to make its own rules (patent law) does not mean that the word ” patent”, as such, is not understood internationally, everywhere, the same.

            It’s like the word “child”. Jurisdictions differ about the precise point in time when a child becomes an adult, but all jurisdictions have the same understanding, that one is a child before one is an adult.

            Now go back, read again my definition of “patent” and then tell me how US patent law (or any other jurisdiction of your choice) falls outside my definition of the quid pro quo bargain, the essence of any patent law, anywhere.

            1. Yet again, you attempt to ig nore actual differences between the sovereigns.

              Your attempt is simple folly.

              Minds willing to understand would have understood such long ago.

              (It is easily noted that you want to jump from “essence” to EPO uber alles mode without the considerations that I note.

              Your turn to “read again”…

    5. If you think that the USA under the current administration is going to adopt the European criteria, you are mistaken. We need to go back to first to invent and deal with our rich history of interpreting US patent law. Inventive step has always been in the background of US patent law. Incremental steps only clutter the patent repository. Yet, some incremental patents, even by the hobbist are worthy of protection. Can’t use the “I could have invented that myself,” criterion.

  9. This blog is so anti-patent. A forum for the anti-patent judicial activist complete with a paid blogger (MM) and lots of posts from Lemley. And now a cheer post to the IPO.

    Sigh. Maybe you should not teach patent law DC.

    1. Has Lemley ever written a patent application and prosecuted the application to a patent? It is easy to trash patents, hard to uphold them.

  10. I think what the IPO really needs is a photogenic, charismatic and credible sweet-talker like Stephen Miller (link to twitter.com) to help them sell to the public the idea that the patent laws should be re-written as if the last 65 years of computer technology and patent law never happened. What could possibly go wrong?

    Or they can do the next best thing and stick with Underweiser and Sachs.

    [shrugs]

    1. as if the last 65 years of computer technology and patent law never happened.

      A most bizarre insertion – pretty darn sure that such mean the exact opposite of what you think it means.

  11. This blog is so anti-patent. A forum for the anti-patent judicial activist complete with a paid blogger (MM) and lots of posts from Lemley.

    Sigh.

        1. 6, after all these years and all the work you have put in as an examiner, haven’t you figured out yet that the best patent system is the one that doesn’t have all these machinations included from the anti-patent group.

          Patent law has turned into a giant equity decision. Examiners and judges now look at the patent application and decide whether to grant a patent based on how they feel about it. There are so many holes in patent law now that anyone can figure out how to write an opinion of why claims are valid or invalid.

          Exact opposite of what you want from laws.

          1. I’ll give you that Night: we agree that the patent law has been corralled by principles of equity.

            The only difference is that I believe that result is the necessary and correct outcome. Equity itself arose in response to abusive laws, and must remain the superior of unjust law in a Constitutional state.

            1. Maybe you need to revisit basic civics (as well as history), Mr. Snyder.

              A reminder: all three branches fall under the Constitution. Your “equity” as an excuse otherwise does not fit.

            2. To get injunctions, you need equity. The only way to get monetary relief for infringement, for most part, was by way of equity up until 1948.

              The fact that you examine to make sure the patentees acted equitably before granting equity is what courts have been doing since we were colonies. So, there’s that.

              1. And there is the fact that patent law is strictly allocated – as statutory law – in our Constitution, to only single specific branch of the government.

                So there is that.

                PS, this does not mean that Congress cannot and does not allow other branches certain powers – as I have noted with specific sections of the Act.

                1. …there is a basic – but oh so critical – distinction to be maintained between common law and statutory law.

                  Mr. Snyder, not being an attorney, has been informed of this – and I would want to believe that attorneys already are keenly aware of this. Especially attorneys involved with the statutory law that is patent law.

              2. Its up to Congress to make clear its intent that the traditional rules of equity should not apply. Can you give me an example where a court had applied traditional equitable principles contrary to the express language of the statute?

                1. J,

                  They have done so – and no, it is NOT only up to them. The rules for the sharing of constitutional power across the branches are rather clear.

                  As to your requested example, such is a non-sequitur (but even given that, you have no further to look than the recent Alice decision, wherein the Court made something that BOTH parties stipulated as to meeting the statutory category requirement of “machine” disappear into being “abstract.”

                2. So you say, “they have done so” and then fail to provide examples in which they have, is not particularly persuasive. But maybe you don’t care about persuading anyone…

                  The court holds on to the rules and traditions of the court unless there is clear Congressional intent to overturn them. Congressional intent can come in many forms, most often plain language, but sometimes its not clear and you can go to other materials, including legislative history. That’s not unconstitutional. I think Congress understood that when they established the judiciary with the Federal Judiciary Act of freakin’ 1789.

                  Now, I asked for examples of overturning the principles of equity, and you switched the debate to 101. Since you ignored my question, I’m guessing you don’t have an answer.

                  You continue to complain about the judicial exceptions. So the Court interpreted 101 in the aughts, Congress did nothing in the AIA to change those judicial exceptions, so what do you expect? Don’t like it, change it.

                3. I switched nothing, as it was you that leaves the discussion on your frolic of “overturning principles of equity” which has nothing to do with the present conversation.

                4. Night writer is decrying how the system is a giant equitable decision. Why is my discussion on equity not important, then?

                  Still didn’t answer my question.

                5. J,

                  Your question is simply not on point to the discussion.

                  NO ONE is questioning whether or not “equity” has been misapplied.

                  With all due respect (meaning, none), Greg: bite me – you being the one that deigns whether to answer anyone or not…

                6. You are surely not surprised…

                  Everyone around here ignores some questions. Sometimes that is because one is stumped. Sometimes it is because the question is too dull to be worth engaging. Sometimes it is because one simply lacks the time to address it properly. Indignor quandoque bonus dormitat Homerus, as they say.

                7. …put your own defensive answer next to the smarminess of your snipe at me, then realize that the question from J was indeed off the path here.

                  Or are you “stumped” at the revelation that such thought might deliver…?

                8. Ebay was decided explicitly on “traditional equitable discretion”.

                  anon does not like talking about equity because it leads to the destruction of his/her pet windmill; that the Congress could get away with “jurisdiction stripping” patent matters from the Supreme Court, because patent matters aren’t matters of Original Jurisdiction. Of course anon is wrong- the Constitution vests THE judicial power in the singular Supreme Court, and it would be the same situation if any of the three branches tried to assert ultimate supremacy over any of the others.

                  Eventually it’s a political problem with a circular answer that would have to be worked out ad-hoc- Rock, Paper, Scissors.

                  So yea, I’m not a lawyer and I don’t know the terrain and waa waa waa, but anyone can see that principles of equity remain in-force and are not going anywhere.

                9. [T]he Constitution vests THE judicial power in the singular Supreme Court…

                  To quote, here, from Article III:

                  The judicial power of the United States, shall be vested in one Supreme Court, and in such inferior courts as the Congress may from time to time ordain and establish.

                  In other words, (1) there has to be a court system; (2) there has to be at least one court (the Supreme Court) in that system; and (3) all of the judicial power has to be in found somewhere in that system of courts. Notably, it does not say that all the power must be in the Supreme Court.

                  Quite the contrary. To quote again:

                  The judicial power shall extend to all cases, in law and equity, arising under this Constitution, the laws of the United States, and treaties made, or which shall be made, under their authority… In all cases affecting ambassadors, other public ministers and consuls, and those in which a state shall be party, the Supreme Court shall have original jurisdiction. In all the other cases before mentioned, the Supreme Court shall have appellate jurisdiction… with such exceptions… as the Congress shall make.

                  Once again, notice that “with such exceptions as the Congress shall make.” That is to say, the constitution itself explicitly contemplates that Congress can except certain cases from appellate review by the Supreme Court. Far from being unconstitutional, it is explicitly constitutional for the Congress to remove a matter from review by the Supreme Court, even if the constitution requires that some court have power over the matter.

                10. Part of the problem, anon, is that you never really finish a thought or an argument. Your writing is sometimes opaque. You say that the “constitution controls”, ok. Finish the logic, please. You state a bunch of rules without the I, A, or C. You strip down other people’s arguments without building one yourself.

                  Martin was indicating that courts are always going to consider equity, I mentioned that this is especially so since patent remedies have been almost exclusively equitable in nature up until 1948, and then you throw in the constitution as if the judicial branch was acting outside its constitutional bounds. Asked for an example, you go to 101.

                  What am I missing. Try using IRAC, please. I am truly interested in what you think, I want to get out of my bubble, but I’m not dissecting your words as if you are Aristotle or the Bible or something.

                11. Greg not the contrary at all.

                  By your reading, the clause is self-contradictory unless appellate jurisdiction somehow lay outside of the judicial power.

                  Instead, if it’s read to allow the Congress to create appellate courts for the purpose of hearing appeals, so that the Supreme Court does not have to hear every appeal in the land, it still means that the appellate courts must be inferior to the Supreme Court, in which the judicial power is vested.

                  There can be no other logical reading, and you can bet your last bitcoin that the USSC will always read that language to say exactly that.

                12. By your reading, the clause is self-contradictory unless appellate jurisdiction somehow lay outside of the judicial power.

                  Not at all. To repeat, all that is required is (1) that there be a court system; (2) that this court system comprise at least one court, which is the Supreme Court; and (3) that whatever judicial power exists be found somewhere within the system.

                  There is no requirement in Art. III that there be appellate jurisdiction for any given case. If the Congress chooses to create appellate jurisdiction for a given case, it will vest by default in the Supreme Court, but Congress can make other arrangements as it so chooses.

                  [Y]ou can bet your last bitcoin that the USSC will always read that language to say exactly that.

                  Not only is it possible that the SCotUS will sustain my reading of Art. III, the SCotUS already has. The Court acknowledges the Congress’ power to set the Court’s jurisdiction all the time. Bowles v. Russell, 127 S. Ct. 2360, 2365 (2007). I do not know why people regards this as some sort of shocking move. SCotUS may not exercise jurisdiction where Congress tells SCotUS may not exercise jurisdiction, and the Court has shown itself quite content to observe these limits.

                13. Greg,

                  There could be separation of powers issues if Congress oversteps its bounds and tells the Supreme Court it cannot have jurisdiction. For example, Congress cannot say, “this law shall not be subject to judicial review,” for example. Separation of Powers doctrine applies to all branches.

                14. J,

                  You forgot a critical piece of my assertion for Congress to practice their COnsitutioanl power of jurisdiction stripping with your coment of:

                  Greg,

                  There could be separation of powers issues if Congress oversteps its bounds and tells the Supreme Court it cannot have jurisdiction. For example, Congress cannot say, “this law shall not be subject to judicial review,” for example. Separation of Powers doctrine applies to all branches.

                  Read Marbury again.

                  Judicial review just is NOT something that must include the Supreme Court.

                  The piece that you are missing with the assertion for jurisdiction stripping of the non-original jurisdiction of patent appeals is to create a new Article III court for patent appeals (one that has not been brow beaten by the Supreme Court).

                  Making an argument on a point provided as if that point is missing is rather dubious.

                15. Mr. Snyder – on the contrary, it is your reading that suffers what you accuse the reading of Greg’s to suffer.

                  You imply that the Supreme Court can negate a Constitutional power provided to Congress by making itself immune to that power.

                  You simply are in terrain that you do not understand.

                  I have laid this out as simply as possible many many many times now.

                  Try to learn instead of simply rejecting the points provided because you don’t like the message.

                16. J,

                  You ask for something not pertinent to this forum.

                  Part of the problem, anon, is that you never really finish a thought or an argument. Your writing is sometimes opaque. You say that the “constitution controls”, ok. Finish the logic, please. You state a bunch of rules without the I, A, or C. You strip down other people’s arguments without building one yourself.

                  I will not repeat the arguments previously presented over the course of dozens of threads and the span of years.

                  Sorry if that makes things “opaque” for you, but the people being addressed know – or should know – the points already presented – the “A” and the “I” and the “C” and any other law school forum idea that you may have.

                  Perhaps if the forum contained the rampant Merry Go Round of ig noring counterpoints put on the table for discussion only to repeat vapid points as if those counter points were never made – perhaps then your suggestion may have the tiniest inkling of merit.

                  As it is, the forum does not and your suggestion does not.

                  Martin was indicating that courts are always going to consider equity, I mentioned that this is especially so since patent remedies have been almost exclusively equitable in nature up until 1948, and then you throw in the constitution as if the judicial branch was acting outside its constitutional bounds. Asked for an example, you go to 101.

                  That’s because Mr. Snyder’s position is not at the thin level that you surmise it to be here. Mr. Snyder’s position on equity is that equity trumps law, that equity (through his rather inept portrayal of equity when what he really means is common law) overrides the fact that statutory law is different than common law and that his level of desired equity is not proper when dealing with the section of statutory law that is 35 USC 101 – the section of statutory law that grinds his (very) personal ax.

                  What am I missing.

                  Quit a lot.

                  I won’t be holding your hand because you are late to the discusson.

                  I am truly interested in what you think, I want to get out of my bubble, but I’m not dissecting your words as if you are Aristotle or the Bible or something.

                  How did you get through law school without demanding that those teaching you the t001s that those teaching you here want you to use? Did you get out of your bubble there?

                17. Mr. Snyder,

                  Being smarmy in your comment of “So yea, I’m not a lawyer and I don’t know the terrain and waa waa waa, but anyone can see that principles of equity remain in-force and are not going anywhere.” while you continue to conflate and confuse legal concepts is no way to be.

                  Instead accusing someone else of “waa waa waa” while it is YOU that is doing the “waa waa waa” AND not understanding the terrain upon which you want to impose your own (personal) rendition of statutory law is rather ludicrous.

                  As to the sharing of power by Congress – as in the case of eBay (for the aspect of remedies), this has been posted previously and is contained in:

                  35 U.S. Code § 283 – Injunction

                  The several courts having jurisdiction of cases under this title may [Congress giving permission] grant injunctions in accordance with the principles of equity [there’s your equity] to prevent the violation of any right secured by patent, on such terms as the court deems reasonable [this ties “reasonable” to the “in accordance with the principles of equity, subject to the express limitation of preventing violation of patent rights].

                  Please note several things:

                  First, notice that Congress did not share power in 101 – and quite in fact stripped power from the Courts previously shared (the right to shape the meaning of the word “invention” through the t001 of common law evolution with the changing of a single paragraph of pre-1952 law and the choice instead of “invention” of adding section 103 (which is ALSO not shared in power with the Court).

                  Second, notice that this particular sharing – invoking your “equity” concerns is shared with a particular purpose: “to prevent the violation of any right secured by patent

                  Then – as you are so “equity” driven, please note that the fundamental purpose of equity is to make the transgressed as whole as possible. This is an express limitation on the courts as to their use of equity being as it is, a basic principle of equity.

                  You have glommed onto the broken scoreboard aspects of various cases and various opinions about cases and have built up quite a fantasy castle built on a foundation of shifting sands. We both know what instigated your “passion” in this area, and we both know that that emotion continues to blind you to those aspects of law (and of equity) that you just don’t happen to like.

                  So please, don’t bother with a cite for which you just don’t understand (eBay).

                  Thanks.

                18. Greg,

                  Coupla things:

                  Bowles v. Russellhardly stands for the idea that the USSC can be prevented from exercising equitable discretion when it sees a need to do so Within constitutional bounds, Congress decides what cases the federal courts have jurisdiction to consider” because inter alia, they clearly separate criminal and civil matters as being jurisdictional or not.

                  Also, it was a 5-4 case with a vigorous dissent even on the narrow issue of the statutory time limits to appeal “We have the authority to recognize an equitable exception to the 14-day limit, and we should do that here

                  This case in no way means the USSC would stand by and be nullified by Congress if they don’t want to be. Co-equal branches means just that.

                  As for you anon,

                  Mr. Snyder’s position on equity is that equity trumps law, that equity (through his rather inept portrayal of equity when what he really means is common law) overrides the fact that statutory law is different than common law and that his level of desired equity is not proper when dealing with the section of statutory law that is 35 USC 101 – the section of statutory law that grinds his (very) personal ax

                  If someone attempts to squeeze unconstitutional restrictions on speech, assembly, etc. into 101, the USSC has full authority to remedy, regardless if the remedy is based on statue, common law, or equity.

                  You can whistle past the graveyard all you wish; the notion that my axe is personal is just another redressing of your own imbalanced view that better that 10 innocent firms are destroyed lest one infringer go free.

                  And PS, your fantasies about jurisdiction stripping have just the same weight in the world as mine about equity, which is to say, darn little.

                19. Martin, I fully agree that anon is way out there on jurisdiction stripping of the Supreme Court. But beware, the movers and shakers in patent law are openly talking about doing exactly what anon proposes. While most sane people, not in the thrall of the big lobbying organizations in Washington, are openly advocating that the exclusive jurisdiction of the Federal Circuit in patent matters be ended, the movers and shakers are trying to make the Federal Circuit the Supreme Court of patent law.

                  This is war. It never seems to end. Crony capitalism has to be defeated.

                20. Ned the battle against rent-seeking by special interests can never be won; we can only try to build institutions capable of sustained defense.

                  anon, why do you think the judicial exceptions are pure common law artifacts? IMO, the underlying motivation for them is not statutory interpretation, but rather conformance with an equitable maxim relating to the balance of contributions of putative inventors v. the value of the grant, because neither the common law nor the statues speak to a non-binary view of invention.

                21. [E]quity trumps law…

                  Wait, what? Are we debating this point? Of course equity trumps law. That was the decision in Earl of Oxford’s case (1615) 21 E.R. 485. This is not up for discussion.

                  I feel like things are taking a very weird turn in the service of reaching a particular patent law outcome. Maxims about means justifying ends are leaping into sight here.

                22. This case in no way means the USSC would stand by and be nullified by Congress if they don’t want to be. Co-equal branches means just that.

                  Fair enough. I have no crystal ball, so I cannot pretend to know what the SCotUS would do if Congress created a subject-matter based carve-out from the Court’s appellate jurisdiction. It seems to me, however, that you have no more crystal balls than I have, so I am not clear on why you feel confident of an outcome that would be so genuinely unprecedented.

                  I am unaware of a single instance where the Congress said “no jurisdiction for this class of cases” and the Court said “oh yeah, just watch us.” I am aware of literally scores of cases in which the Court said “the Judiciary Act does not allow us to decide this case.”

                  Honestly, if you listen to the oral arguments in patent cases, you can tell that the justices consider them to be a real drag (except where the issue is totally untethered to anything patent specific, like attorneys fees under §285). I would imagine that the Court would be glad to be quit of patent cases.

                  It seems strange, to me, to imagine that the Court would decide to distinguish scores of precedents in favor of Congressional control of jurisdiction, so as to strike off onto a totally new outcome. I concede, however, that it is possible.

        2. I guess I find that rather an unhelpful answer (although I realize that you do not mean it to be helpful). What does “patent maximalist” mean?

          I think that discussions get somewhere when we use words to mean things. Terms like “anti-patent” and “patent maximalist” mean nothing. Less than nothing, at times, because they mean a dozen different things in an dozen different mouths.

          It is really best to address a topic with precision and clarity. If you think that patent terms are to long, you should address yourself to the “20 years from filing party” or the “30 years from filing party.” Similarly, if one is discussing the eligibility of software, then one can speak of the pro- or anti-software eligibility partisans. Then you know what you are talking about.

          When one arbitrarily designates one of these parties as “anti-patent,” or “patent maximalist,” the issues at stake are not clear.

          1. One caveat, Greg:

            The “rationales” for being anti-software eligibility are really nothing more than a generalized anti-patent (for what patents are and what patents do) geared to a specific (and in today’s age, the most cost-effective) form of innovation.

            At their heart, the “feelings” are really as attributable to a global “anti-patent” as they are to the selected form of innovation.

      1. I mean that posts from the unethical Lemley are welcome and not criticized. I mean unnormalized graphs are regularly displayed to illustrate the growth in patent applications and law suits.

        The posts of this blog are filtered for the people that are anti-patent. Anti-patent means passing the AIA. Passing another round of “reform” that will further weaken patents. Continuing to expand the “exceptions”.

        I don’t think it is difficult to understand what anti-patent is.

        1. Suppose I argue that valid patents should be grantable for basic commodities long in the public domain (sugar, rubber, fire, etc.). Is the person who takes up the contrary position “anti-patent”?

        2. Anti-patent means passing the AIA… [and c]ontinuing to expand the “exceptions”.

          The fact that you have larded so many totally distinct concepts into the term “anti-patent” rather demonstrates how useless a term it is. I happen to favor the AIA, so I guess that makes me “anti-patent.” But deplore the §101 exceptions (unless defined as the IPO proposes), so I guess that makes me “pro-patent.”

          When one person is both “pro-patent” and “anti-patent” at the same time, one really has to wonder what is the value of the term. Would it not make more sense to craft the terms of discussion to elucidate, rather than disguise what is really being said?

          When I see someone use the twin epithets “anti-patent” and “patent maximalist,” that tells me much more about the one using the terms than it does about the one who has been thusly disparaged.

          1. You do have a point, Greg.

            But let’s not kid outselves as to the use of terms to some of the rather ongoing players of this ecosystem.

            There is no need to play pedantic and not understand a term just because in some situations (or applied to some new entity), that term might be over broad.

            Such an action may tell more about the person performing that action than the point itself (to paraphrase your own point, as it were 😉 ).

          2. Greg: I … deplore the §101 exceptions …unless defined as the IPO proposes

            So … logic, math and information (e.g., “non-obvious” information about a law of nature, or a correlation, or a “non-obvious” gift recommendation for Grandma’s birthday, or a “non-obvious” ranking of dog food achieved by polling) should be protectable with a patent claim as long as the patent claim also recites some old step “outside the human mind” or an object that is “outside the human mind”? Really?

            Does the sufficient “outside the mind” step include “breathing air”? Or “expending energy”? You have no problem with that?

            What about claims that protect using any old technology to monitor some aspect (or all aspects) of a non-obvious (newly discovered) object or phenomenon, such that nobody except the patentee can observe the object or phenomenon without fear of infringement? You have no problem with that?

            Here’s some advice: step out of your bubble and call up your scientist friends (assuming you have any) and ask them what they think. I know what my scientist friends think. They’re appalled by this. Pretty much every normal person who isn’t invested in blowing up the system understands that the IPO has jumped the shark.

        3. Night, you say that “anti-patent means passing the AIA.”

          While I wholeheartedly agree, you have repeatedly called me anti-patent and yet I have been among the leaders opposing the AIA for years. Further, while you and I agree on virtually everything outside of 101, you still label me anti-patent.

          No, Night, you label anti-patent anyone who does not agree with you 100% on every issue.

          1. Ned,

            Your 35 USC 101 views (and 35 USC 100 as well) ARE anti-patent as far as your Windmill Chases against business methods and software.

            You seem to want to omit that context.

  12. Love the cartoon. Saw off the branch you are sitting on, that’s the about right.

    The changes really give no guidance on how courts are supposed to examine obviousness. It would become dead letter as soon as it would be enacted.

    As for abolishing 103, that is not smart. Without 103, a thousand more patents would be issued on incremental inventive steps, making it impossible to actually practice your patent ( (because if you believe that patentees practice their patent for 17 years without changing it, then I don’t know what to tell you) without stepping on someon

    1. J,

      I am not so sure patentees would be disadvantaged by abolishing 103. First, any novel incremental improvement patent could not be infringed by the base patent and would infringe it if the improvement were an addition. If one of the claim elements were modified, then not. The first patentee should, of course, try for the broadest possible claim. If 103 were abolished, patentees could come up with their own minor improvements and with much less money be able to get a patent on that, even if the first patent application was published.

      I think the rationale for 103 is that it prevents patents on inventions that are just about, almost, someday soon in the public domain. I suggest it is time to reexamine this to figure out what 103 is actually doing for us.

      1. 103 favors the public, not patentees In short, one gets a patent unless the claimed subject matter was known or is obvious in view of what was known.

        Abolishing 103 opens the gate wider to allow patents even if the claimed subject matter was obvious.

      2. Trouble, repealing 103 would not allow the patenting of inventions that violate cases following Hotchkiss prior to ’52, nor cases like KSR that rely on that same case law.

    2. Troubled, 103 helps the public as you say, we don’t want patents when they are going to be in the public domain anyways. It’s an excellent reason to keep 103, but not the only.

      What if someone other than the patent owner invents an obvious improvement and patents it?

      1. What if someone other than the patent owner invents an obvious improvement and patents it?

        What if?

        The same question applies to (granted for the sake of argument) non-obvious improvements; which by the way, constitutes the large bulk of patents.

        Where are you trying to go with your question, and how do you handle that same question as pertains to non-obvious improvements, as I stipulate here?

    3. anon, the point Troubled was making that maybe 103 abolishment would be a good thing for patent owners, and he seemed to assume that the next improvement to the invention would be from the patent owner. “If 103 were abolished, patentees could come up with their own minor improvements and with much less money be able to get a patent on that, even if the first patent application was published.”

      And my question was, what if the incremental improvement was from someone other than the patent owner. The answer is, the patent owner couldn’t improve his invention, or had to cross license to make improvements. The latter is what Japan does, but I’m not sure that’s what we want. So, I don’t like the idea of abolishing 103.

      As to your question… if it is non-obvious, it should pass 103.

      1. Granted J, that his point concerned itself with the abolishment of 103.

        But my point is a bit different, and goes to YOUR response, vis a vis incremental improvements.

        You say “but I’m not sure that’s what we want.” but that is exactly what we have (sans the 103 item).

        That’s why I point out the fact that incremental improvements are a bastion of our system.

        And yes, the original inventor may not be (indeed, likely will not be) the inventor of the follow-on invention (again, above the 103 threshold).

        But this only points out (as I have also mentioned), that having a “must work” requirement for US patents would actually be detrimental to innovation.

        Your question still applies regardless of the “103 abolishment” issue, and in that light, is a bit of a non-sequitur to that issue.

        1. All inventions are incremental. We stand on the shoulders of giants. Obviousness doesn’t per se prevent patents that are incremental, its obvious inventions that shouldn’t be patented.

          And that is a good thing, because 1) error correction for imperfect discovery of prior art 2) only grant patents that are from the patent incentive (don’t grant patents for things that will be in the public domain anyways)

          anon, I’m not sure you are really disagreeing with me–abolishing 103 is not something you really support, I don’t think. But I’m guessing you don’t like the current system. But the IPO suggestions are laughable, because they give so little guidance on how to determine if something is obvious or not.

          1. [T]he IPO suggestions are laughable, because they give so little guidance on how to determine if something is obvious or not.

            Er, once again, IPO is not proposing any changes to section 103 or obviousness law in general. The text up-top is (literally) a lame joke.

  13. Not being one to applaud KSR it does create a dilemma. Common sense clearly comes into play, but not from hindsight. Every invention can be rationalized. That’s what defense attorneys do. It all started with the “motivation” thing. All inventions have motivation. Necessity is the mother of invention. Otherwise only frivolous inventions would be patentable. We really screwed the pooch.

    And why do courts confuse obvious to one of ordinary skill in the art from one skilled in the art? Can’t they read?

    1. Otherwise only frivolous inventions would be patentable

      I have touched upon this previously.

      Some commentators here have construed the Statutes back to the pre-1952 Supreme Court views and make obtaining a patent either one of two things:
      – a Flash of Genius, or
      – mere stumbled upon serendipity

      Of course, neither of these can be true in their totality.

      Congress was explicit about the first, and “common sense” easily shows why the second, being an exclusionary rule, must also not succeed (the function of “teaching” becomes impossible, because serendipity is by definition not accessible a priori through any teaching).

      This is yet another example of an entity doing something poorly and then turning around and accusing others of that same thing (here: the Court scrivining p00rly – and yet as is their want – to try to ridicule attorneys for “scrivining “around” the law).

    2. Do you consider ‘skilled’ to be above ordinary skill? Wouldn’t that peg ordinary skill around the level of a novice or hobbyist?

      1. The word “skilled” by itself Ben signfies little.

        How skilled? You need a “relative” term to place “skilled” within the spectrum of skills if you want to use that term in context of patent law.

        1. The relative term is “ordinary skill.” Would you prefer a surgeon skilled in heart surgery or of ordinary skill? The English language is full of subtleties and often not up to the task of accurately defining an “invention.” Are you suggesting there is no difference in the language of section 112 and 103?

    3. Richard, take Hotchkiss’s reasoning:

      Clay doorknobs were known.
      This is a known doorknob.
      Ergo, making this doorknob with clay is not new.

      KSR/Graham both endorse the concept that 103 codifies Hotchkiss. I would take this to mean that not only the elements of the claim have to be known, but also the basis for combining in the manner claimed them must be known — otherwise, as you say, everything seems obvious after it has been done.

      Today’s case involve Apple as an IPR petitioner fully supports this view.

  14. I don’t know what you guys are talking about. But it may be related to a theory I have been considering. It seems that most all the complaints/reforms of the patent system from Ebay to Alice to AIA could be put into the bucket of obvious ideas should not be patentable. The problem is who decides what is obvious. There just is just no good way to calibrate what qualifies as obvious. Hindsight contaminates every single analysis.

    When an inventor does something for the first time, the only issue is how big is the inventive step, and how big should it be to hold a patent on it. There are always naysayers, both objective ones and hired experts, that will argue the step was so small it was obvious.

    Here is the thing, §103 (and now §101 to a large extent) is the gray area between what belongs to the inventor and what belongs to the public. KSR does not solve it. We could solve it by periodically sequestering a panel POSITA’s in every field, and when a patent is challenged, put them in a room with the prior art to see if they can come up with the claimed invention. We can’t do that, so we are stuck with the futile task contriving means to eliminate hindsight.

    We should not be so accommodating of complaints that boil down to obviousness. If in fact the patent holder/applicant was the first one ever to disclose the claimed subject matter, this deserves respect, no matter how small you think the inventive step is. If the public does not wish to take a license for the patent, the public still has the prior art.

    Even if §103 were repealed, there would still be progress. The debate raging is about how to maximize that progress. How big should the step be, and how to measure it given the unavoidably of hindsight.

    1. R,

      I like it. We are already in a situation where most patents are not commercially viable, but it is still expensive to obtain them. Only about 0.3% (guessing 9,000 out of 300,000 issued on a yearly basis) of patents are worth litigating, but the cost is enormous. The net result, as I understand it, is that patents are a zero sum game.

      If 103 were done away with, the costs all around would shrink enormously and the PTO backlog would disappear in short order. The only tasks for examiners, would be to make sure the specification supports the claims, they are definite, and don’t read on any single prior art reference.

      Paul Cole at 3.0 suggests retaining the utility requirement. If it is clearly not useful, few would apply and if they get a patent, who cares? No one will infringe it.

      Fair or unfair, happy or unhappy, are not the issues; the only one that counts. as you say, is would this approach better promote the progress of the useful arts. I think your proposal, novel or not, deserves serious study.

      1. You mean you like the idea of sequestering POSITA’s to assess obviousness challenges as they arise?

        That was of course tongue-in-cheek. I am not sure I have contributed any constructive proposal, but hopefully helped frame the discussion to move beyond a polarized stalemate.

        1. But I am not proposing to repeal §103. Just shining the light on its limitations and abuses. Anyone against patentability of a claim under §103 should acknowledge the tension and inherent subjectivity in their position. Very very few cases could achieve a 95% consensus among a sample of POSITA’s.

    2. Two thoughts for you IR:

      1. Ob via is Latin for “lying in the road”. You let people patent stuff that’s lying in the road of technical progress and you erect multiple roadblocks to technical progress. NOT GOOD.

      2. The EPO way to do obviousness is now 40 years old and nobody can lay a finger on it. It’s so simple to operate that Examiners from 38 EPC Member States can operate it consistently and efficiently, and so can advocates for both sides in post grant revocation proceedings at the EPO. It is objective and (in any First to File jurisdiction) excludes hindsight. But as it was “not invented here” and not only that but only in a mere Patent Office, courts the world over look down on it and decline to engage with it. A BAD MISTAKE.

        1. Yeah right anon. Everything is relative isn’t it. The opinion that Planet Earth is flat demands just as much respect as the opinion that is is a spheroid. Criticism of EPO-PSA is widespread, of course, inevitably so, for the reasons I have given. So what? For a mind willing to understand, though, the criticism doesn’t stick.

          1. Not at all MaxDrei – the comment about flat earth has zero relevance here.

            Your “ For a mind willing to understand” coming from you – one of those with a mind least willing to understand – is an empty platitude.

      1. I don’t know much about the EPO. But your first point begs the question. If it was lying in the road why didn’t anyone else pick it up? And who decided that was the road of progress? Travelers can step over, go around, or head off a different direction.

        I will reiterate that you cannot escape hindsight when you say a claimed invention is in the road of progress. And this alleged obstacle is a feature, not a bug, of an effective patent system.

        If we had an effective patent system I would not be composing this reply on a touchscreen qwerty keyboard. Because Samsung would have developed or licensed a novel user interface rather than copying Apple’s. In short, there would be more innovation.

        1. “Lying in the road” suffers from the illustration that you point out, Invention Rights.

          Rather, the better analogy that I have provided in the past has been contrasting the pavement of roads with the pavement of a parking lot.

          A grid of roads has a (un-realistic) “appeal” of an orderly transportation system.

          innovation system is not like that.

          If innovation were predictable, no patent system would be required (or even desired).

          Instead, innovation works by quirk and by un-knowable future developments.

          That is why paving a parking lot is a better analogy – a paved parking lot provides the ability to connect all spots quickly and easily.

        2. Well yes IR, what did I mean by “road”? Clearly not a man-made multi lane interstate going from A to B. If only because we cannot see where the path/way/tide/drift of technical progress is taking us to. But suppose Du Pont puts a new and improved polymer on the market. Everybody reads its specification and range of mechanical, electrical and chemical properties. Some uses of that new polymer are straightforwardly obvious to everybody, and therefore ought not to be patented by the individual who was first to file, even though such uses are indisputably new and useful. There is no quid pro quo, no reason for The State to give the first filer 20 years of exclusive rights.

          1. Some uses of that new polymer are straightforwardly obvious to everybody.

            This is the begininning of the subjective gray area. It goes from obvious to everybody to obvious no one but the challenger’s hired expert.

            Defining and measuring this inventive step has proved elusive.

            Furthermore, granting patents for gray zone inventions is progress in and of itself. It was not obvious to everyone, so the disclosure (and often commercialization) aids all those for whom it was not obvious.

            Progress happens with or without a non-obvious condition of patentability. The question is can we achieve more progress by setting a bar where the invention is obvious to some but not all. Here is where the current system is broken.

            1. I sometimes wonder if it is not time to do away with the word “obvious” and go back to “inventive.” I understand and agree with what Judge Rich was trying to do when he swapped “obvious” for “inventive.” A century worth of barnacles had accreted over “inventive,” and he needed a new word so that after he scraped the barnacles off, they would not sweep right back in on a tide of legislative stare decisis.

              It seems to me, however, that now a half-century’s worth of barnacles have accreted over “obvious,” and while these barnacles are not as pernicious as the previous ones, they are still bad in their own way. One of the wisest things any judge has ever written on the subject of obviousness/invention was the observation that “[t]he problem… with… ‘rules of patentability’ (and the ever-lengthening list of exceptions which they engender) is that they tend to becloud the ultimate legal issue—obviousness—and exalt the formal exercise of squeezing new factual situations into preestablished pigeonholes.”

              The real question that is supposed to be at stake in the §103 analysis is “is this technology already part of the state of the art, notwithstanding that the exactly embodiment claimed is not found in so-many words?” By asking whether it is “obvious,” however, the question gets misdirected into a totally different enquiry—“is this the sort of thing that researchers were like to find in a little while, even if this inventor had not done so?” This is really a different question than what one should be asking, but it is only natural that the enquiry runs off the tracks into that question, given that the statute says “obvious.”

              It might be better if the statute were amended to say “inventive” again—or even better “part of the state of the art.”

              1. But Greg, in the dictionary, “obvious” and “inventive” are simply Antonyms, one of the other. So what do you gain?

                obvious = not inventive

                whereas

                non-obvious = inventive.

                But perhaps you think otherwise?

                If so, please explain.

                1. Synonyms rather than antonyms, and both are terms of art in the patent world, wherein the plain dictionary definition OF synonyms clearly is NOT sufficient.

                  A mind “open to understanding” and having the decades of working with patents would NOT have thrown such CRP against the wall to see what sticks.

                  You really should know better MaxDrei.

                2. In the European Patent Convention, Article 56 declares that subject matter “involves an inventive step” if……

                  “if it is not obvious to a person skilled in the art”.

                  Ergo: In the 38 Member states of the EPC “inventive” and “obvious” are Terms of Art in patent law as well as being antonyms (anon: not synonyms) , one of the other.

                  Germany used to have two levels of obviousness, one for its 20 year patents and another, more generous to Applicants, for its 10 year term patents. But that proved unsustainable, when the penny dropped at its Supreme Court, that “Obvious Y/N” is a binary objective question with no room for degrees of obvuiousness.

                  What was it that dropped the penny at Germany’s Supreme Court? Why the logical unassailability of the obviousness jurisprudence of the EPO, of course.

                3. “[O]bvious” and “inventive” are simply Antonyms, one of the other. So what do you gain?

                  Maybe nothing. Judge Rich very wisely quoted Justice Holmes when trying to explain why he replaced “inventive” with “obvious” as he edited P.J. Federico’s original draft text of the language that eventually became §103. “A word is not a crystal, transparent and unchanged, it is the skin of a living thought and may vary greatly in color and content according to the circumstances and the time in which it is used.” Towne v. Eisner, 245 U.S. 418, 425 (1918).

                  His point was that a lot of wrong-headed jurisprudence had grown up around the standard of “inventiveness,” and the only way to excise all that deleterious surplusage was to chuck out “inventive” and put a new word in its place. He chose “obvious.” He had a very specific idea in mind of what that word should mean, and as long as he was largely in charge of shaping the flow of the jurisprudence that followed, the flow stayed largely in the proper channels.

                  Since his death, however, the flow has jumped its banks. It has not slid into the dry bed that used to be “inventive,” but it has gone off in another wrong direction. I may be possible, with a lot of diligent ditch-digging, to direct it back to its right course. On the other hand, it might be easier just to dam off that flow, and start anew in another channel, just as Judge Rich once did.

                4. And then we have the likes of Ned – on his Windmill Chase to actively disparage and denigrate Judge Rich, because Ned’s Windmill necessitates the obfuscation of what Congress did by adopting the input of Judge Rich.

                  And make no mistake, concomitant with this change was the removal from the Court of what Congress had previously granted the Court: the power of using the t001 of common law evolution in setting the meaning of the word “invention.”

                  Congress deliberately acted to strip that power from the Court – and as previously mentioned – this was directly related to that selfsAme Court taking a decidedly anti-patent (intended in its broad form of that word) view of patents in the 1930’s and 1940’s (the time of the self-proclaimed “the only valid patent is one that has not as of yet appeared before us” time).

                  Greg, ALL of this has been gone over again and again with the very same actors here.

    3. Invention rights, When an inventor does something for the first time, the only issue is how big is the inventive step, and how big should it be to hold a patent on it. There are always naysayers, both objective ones and hired experts, that will argue the step was so small it was obvious.

      It is interesting that you think that the statute requires some degree or “bigness” in inventive step when the statute actually does not say anything of the kind. What the statute requires is that the person of ordinary skill make a judgment on whether the claimed invention is obvious. But the statute provides no standard by which is judgment is to be made.

      It was my recollection that the whole point of 103 was to bring an objective standard the patent law. But without a standard to guide his judgment, the trier of fact is able to make a call based upon some private Gestalt, some personal view, on what deserves patenting.

      We really to need an objective standard. Otherwise decision-making is entirely unpredictable and prone to hindsight.

      Prior to 1952, the only requirements for invention were expressed in “101.” The invention had to be new or improved, useful, and not previously known or in use. There was no requirement for degree of invention, albeit in cases such as Eibel Process, the Supreme Court did hold that when an invention varied from the prior art in terms of degree, the degree must impart a new kind of functionality not previously known. Today, we think of this concept in terms of synergy.

      Whether something was known or not known is somewhat easy to prove. Whether something imparts new functionality not previously known is somewhat easy to prove. These are objective tests because they can be proved with evidence. They correspond, I believe, with the tests used in Europe.

      A repeal of 103, except for the second sentence, would additionally provide the benefit that we could all but ignore trying to determine who was a person of ordinary skill in the art and what the level of skill was. That is a red herring because as a practical matter, it is ignored.

      However, I think we should retain the second sentence which was intended to clarify that a flash of genius is not required. An investigation into the state of mind of the inventor should not be required. Whether he discovered the invention by accident, by trial and error, or by a flash of genius is irrelevant. It is what he did that counts.

      Needless to say, what the IPO is proposing is such complete nonsense as to not be worthy of any further consideration by serious people.

      1. Red herring ?

        As a practical manner, it is ig nored?

        Serious question: why the L I E S ?

        Oh wait, I already know. You already know. Everyone already knows.

        Ned Heller does not want the law as it was actually written and passed by Congress in 1952.

      2. I think I agree with you on 103 Ned, especially the “private Gestalt” comment.

        A bit of clarification, I have not attempted to express what the statute says. I agree with you on that. It purports to set objective requirements, but obviousness is not an objective inquiry.

        I believe whenever an examiner, judge, or critic alleges a claimed invention is obvious, at bottom they are saying the improvement is negligible (i.e., too small to warrant a patent).

      3. [W]hat the IPO is proposing is such complete nonsense as to not be worthy of any further consideration by serious people.

        Er, I hate to be the skunk at the party, but we are all clear—are we not?—that the text up top is not actually being proposed by the IPO. It is parody.

        1. we are all clear—are we not?—that the text up top is not actually being proposed by the IPO. It is parody.

          It’s difficult to tell isn’t it?

          That was the point. Equally true of the 101 revision, of course.

          The difference is that it took me five seconds to write out the revised 103. The absurd 101 revision, on the other hand, was the result of hundreds of hours of work by a crew of incredibly overpaid hacks.

          1. Of course you do, Ned – this is classic “6-is-a-genius-because-he-agrees-with-me”

            Did you enjoy his recent swagger (when it was aimed at you and your political views)…?

  15. For a reality check, imagine the great headlines this legislation would get:

    “Congress to Legislate Against Common Sense”

    Also, the Fed. Cir. has already expressed in at least one IPR decision on appeal the need for the PTO to provide evidence for this, for the subject POSITA – a mere unsupported examiner or attorney allegation of common sense is not sufficient. [The PTAB could do a better job of enforcing that, especially in ex parte cases.]
    The TSM test is nice, but rarely occurs. If, in such a rare fact case, a reference A actually internally taught or suggested its combination with a reference B, then reference A may even arguably be a 102 reference!

  16. I am inclined to think that Section 103 should be abolished, and that the requirement should by novelty + utility as recited in Section 101. If the inventor cannot show new utility then grant should be refused.

          1. Justice Story is, in my humble opinion, one of the three American jurists who really understood patent law (the other two being Giles Rich & Learned Hand).

            1. Greg, your inclusion of Rich was a dreadful mistake. Virtually every one of his “innovations” was wrongheaded and either needs repeal, reversal or has been reversed.

              The work of Story and Hand have stood the test of time.

              1. I would be interested to see you document any daylight between Hand’s patent jurisprudence and Rich’s. Care to cite a pair of cases where they diverge? Same for Story’s & Rich’s.

      1. Greg, thanks for the citation. Good read. Validity was given to the jury. The battle was over the law.

        The case however does not stand for “new” utility, only “new” structure.

        In Hotchkiss, the Supreme Court added that even if a combination were literally new, if it were known that the new element (clay) was useful in combinations of the type (doorknobs), and by addition, there was no “new” functionality (the clay functioned as was known for clay in doorknobs), the invention was the work of the ordinary mechanic.

        To the extent that 103 now empowers judges, juries and examiners to render gestalt judgments on obviousness, and it does, that statute undid cases like Earle v. Sawyer and Hotchkiss v. Greenwood.

        Thank you very much Judge Rich.

        1. You aim – yet again – at the wrong person.

          It was the anti-patent Supreme Court of the 1930’s and the 1940’s that fomented Congress to act and strip away the common law power to set the meaning of the word “invention” and in its place choose 103 and obviousness.

          As an attorney, it is your ethical responsibility NOT to misrepresent this.

        2. Obviously (forgive the pun) the Hotchkiss Court rejected Earle (hence why Justice Woodbury’s dissent inHotchkiss cited Justice Story’s opinion for authority). Needless to say, when you go against Story, you are wrong, and Hotchkiss is just one more in a long line of SCotUS-gets-patent-law-wrong opinions (although not nearly the worst such).

          In any event, however, the very first time the Court ever considered section 103, they held that it merely codified Hotchkiss, which is all that Judge Rich ever hoped to accomplish with that section. In other words, yes, thank you, Judge Rich. He could not totally fix the has that the SCotUS has made (is making) of U.S. patent law, but at least he left the system better than he found it.

          1. Greg, but he did not codify it, did he? There is nothing in Hotchkiss that would make the judgment about the use of claim subject to some opinion by someone of ordinary skill in the art.

            The use of clay for doorknobs WAS KNOWN.

            1. Hotchkiss speaks of an ordinary mechanic. §103 speaks of a person having ordinary skill. The SCotUS read these two phrases (rightly, I think) as being two ways of saying the same thing.

              1. So what, Greg? Hotchkiss’s holding was premised on the finding that clay was known to be useful in doorknobs. TSM.

                This did not get down to an opinion of anybody about anything. It went strictly off the prior art. “The work of an ordinary mechanic” was a characterization, not a test. We were not left to guess.

                Two references. Can they be combined? Possibly. Common sense? Not really. The prior art must teach, suggest or motivate the combination.

                Hotchkiss was TSM. Did rich enact that? No he did not.

                1. Just to remind you Ned, Rich did not enact anything.

                  It was Congress that did the enacting.

                  As an attorney, need I remind you again of your ethical obligations?

            1. You should be – and no doubt, are – aware that the thought of the Act of 1952 as mere codification is a fallacy, eh Ned?

              Please do not accept self-serving dicta from a Court addicted to a power removed by the Act of 1952.

            2. Did you miss the decades of his career that Judge Rich spent turning TSM into the test for obviousness? You know, the CCPA/CAFC’s TSM test—the one that the SCotUS brushed aside in KSR, based on a rookie-grade misunderstanding of patent law basics.

    1. Mind you, as the great Giles Rich explained, section 103 is necessary to make the patent act not an unconstitutional taking, and also to avoid a conflict between the patent laws and the antitrust laws. I suppose we could shrug off the second objection, but it likely would require a constitutional amendment to resolve the first, and amending the constitution is hard work. I doubt we can make people care enough to move ¾ of state legislatures to give such an amendment a hearing, let alone ratification.

    2. This is a nice concept, replace 103 with a utility requirement. We should also link the term of the patent with commercialization of the invention, to address concerns about hold-up. Something like a provisional term of 3 years, extendable to 20 if the invention is commercialized. If it is not commercialized within the first 3 years, it goes to the public.

      1. also link the term of the patent with commercialization of the invention, to address concerns about hold-up.

        Sorry Invention Rights, that’s a non-starter – for several reasons.

        First, there is no (and never has been) a “must practice” aspect to the US Quid Pro Quo.

        Second, given that our system is larger populated with improvement patents, and improvement patents may not even be possible to “must practice” on their own (someone else having the rights to the underlying item), you would do more to block innovation with any such “must practice” views.

  17. I get examiners now saying things like, yeah, but then you are going to make people license it. What 103 has turned into is whether the examiner feels like granting a patent or not. Go back to TSM.

    1. Yeah Night, but not just any old TSM please. Specifically, not the one propounded by the Supreme Court of Germany and not the one that was used in the good old FtI days in the USA.

      For the brave new world of FtF, only the TSM variant operated at the EPO is i) objective and ii) free of hindsight bias. If it can be taught to newbie Examiners at the EPO it can also be taught to others with an open receptive mind that is free from NIH bias, especially those at the USPTO and amongst the justices of the Federal Circuit. Trouble is, nicht wahr, they can only decide on the basis of the evidence served up to them, so the litigators have first to tune in to what American prep and pros people with internationally-minded clients have practised for years, namely EPO-TSM.

      1. MaxDrei that is suggestion. Many of the new Fed. Cir. Google judges don’t even know what hindsight reasoning is and readily use it. There has been talk of abolishing the Fed. Cir., and then reforming it without the Google purchased judges.

        1. Come on Night, be fair. I myself struggle to reconcile absence of hindsight with deciding obviousness under FtI.

          But FtF is a whole new ball game.

          1. under FtI.

            Hilarious, as you never showed any appreciation of understanding a certain sovereign’s law that was not the one that you incessantly peddle.

            As mentioned previously, you remind of the person who upon coming across someone (else) with p00r eyesight, takes off his spectacles, hands them to the other person, and says: here, use these, they work perfectly for me.

            1. Nothing to do with “sovereigns”. All to do with assessing obviousness relative to two key dates, that of conception and that of reduction to practice, which are inherent to FTI but of no significance in FtF.

  18. When David Kappos gave a question and answer session at the AIPLA winter meeting some years ago now, I commented that the holding in KSR was that common sense should be used in evaluating obviousness, and that the USPTO had immediately responded by re-writing its examination guidelines.

    The only addition I would suggest to this otherwise meritorious amendment is that in evaluating obviousness the claim language should be given its broadest, most unreasonable interpretation.

Comments are closed.