Another Post on 101 and Statutory Text, and Hopefully my Last

By David Hricik

I’ve written on this blog my argument — I think, observation — that the text of the Patent Act does not authorize invalidity, or patentability, to be based upon Section 101.  (Here is one of them.)  Why rant again?

First, Dennis on the main page posted here the USPTO’s new guidelines on eligibility.

Second, today at the AIPLA mid-winter meeting, Bob Armitage spoke passionately about how  these guidelines are nonsensical and that we will never resolve the 101 problem because it is leading us down a path of nonsense talk.  (Is a non-mathematical concept not abstract?  What is a “method of organizing human activity?”).  The Federal Circuit in one of the Alice opinions quoted Judge Rich who said in 1946 Congress got rid of this nonsense — of what is “inventiveness” and so on — but here we are, talking nonsense.

So, this post. Here is my suggestion:  someone should assert the USPTO lacks rule making power to adopt these regulations (or guidelines) because 101 is not a condition of patentability.  Maybe the USPTO will reject the argument (I bet they will but a textualist would not), and maybe the CAFC will reject the argument (ditto), and more likely than not the Supreme Court would, too (but, I hedge my bets because several justices are textualists and the Court has actually never analyzed the statutory text).  You could, if you made this argument, end up showing the Court what the USPTO and CAFC know, which is that 112 and 103 are the authorized and regulated ways to police broad patents, and 101 is not.

Maybe you can help us stop talking nonsense.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

35 thoughts on “Another Post on 101 and Statutory Text, and Hopefully my Last

    1. 7.1

      …as on que, Prof. Hricik, within the month of this post, we have (over on the main side of the blog), a court case and several posts, including a rather unscientific survey, on this very topic.

  1. 6

    Can you please explain to me how the new interim guidelines are any more helpful than anything that has existed before?

    There is no explanation of what constitutes a mathematical concept, method of organizing human activity or mental process.

    What in the world does it mean “whether the ineligible concept is ‘integrated into a practical application’?”

    What does it mean “imposes a meaningful limitation on the judicial exception?”

    What in the world is the difference between “well understood, conventional” under Step 2B and 103 obviousness? Clients in Japan asked me that, and I said “that is a great question.” Yet the guidelines explicitly say not to confuse the two. How can you not? What is the difference between“well understood, conventional” and practical application? Half the case law says that the claim meets 2A, but if not, then 2B. The judges at the Federal Circuit can’t even distinguish between 2A and 2B. What does it mean “significantly more than the exception itself?”

    When is extra-solution activity insignificant in 2A, but not well known, conventional in 2B? What does “insignificant” even mean?

    How much time did Iancu spend to simply add a second part of 2A to add “practical application?” All he does is provide footnotes to different parts of his test.

    Do you think that these new guidelines provide any more clarity to examiners and practitioners? The Federal Circuit can’t even tell what is patentable and what is not, making decisions that don’t square with earlier decisions.

    All the guidelines appear to do is enable the examiners to spew out the language of the test and say the claim does not meet it, and the applicant to agree with the language of the test and argue that the claim does meet it. To me, nothing has changed. But there are many much smarter people out there than me.

  2. 5

    Why not a simple rule: if a given set of claims satisfies 35 USC 112, 102 and 103, etc., then such claim presumptively overcomes 35 USC 101? That’s what all the post-Alice Fed. Cir. cases and USPTO guidance seem to say in a roundabout way anyway, i.e., all the talk of “improvements” and “practical applications” being the same as non-abstractness is circular, because you don’t really know if something is an “improvement” until you look at the prior art (and make the novelty and obviousness inquiries under 35 USC 102 and 103), and you don’t know if something is practically applied until you look for clarity, written description and enablement (under 35 USC 112).

    1. 5.1


      It only seems like your path is a logical one, and in that, only because (most likely) you are operating in your mind already above the law bar that the separate section of law known as 101 provides.

      As I have noted, the hat section has its purpose (and that purpose is NOT the purpose that the Supreme Court attempts to hi-jack and co-opt it for). There are two relatively easy hurdles to 101 (and only two):

      1) proper utility – of the Useful Arts (patents are not for Fine Arts).

      2) can the innovation be put into at least one statutory category?

      That is it.

      All else is muckery.

      Will most all (current) applications meet these BY meeting 102/103/112?

      Not exactly – the operative word being “by.”

      Will most all (current) applications meet these ALONG WITH meeting 102/103/112?

      That’s a different question.

      And that answer is most probably, because most probably those ALREADY seeking patents are merely seeking patents FOR innovations in her already pass the low 101 hurdles of utility in the Useful Arts and claims portrayed in a statutory category.

      The confusion is a direct manifestation of the Court trying to inject into 101 their “hook” for inserting the policy controls that they wish that the statutory law that is patent law had (but Congress did not put in there).

  3. 4

    The Written Description “possession” test has as much textual support as 101.

    The simple fact is this: What is necessary is that the statutory scheme needs to have a mechanism that places the burden on the applicant to prevent them from describing one or even zero means of achieving a result, but then immediately describing it in broad or vague terms to achieve a claim to the result, and no mechanisms outside of 101 allow for that.

    Again, the simple analogy is someone who invents the bow. The first thing that will happen is they will go to an attorney and the bow will become “an embodiment” of the “true” invention which is “a machine that fires projectiles.” That scope obviously covers and discourages the future invention of the gun, despite the gun not being posited or disclosed by the bow specification. That situation is the big no-no.

    Can you use 112b? Well you used to, because “a machine that fires projectiles” does not “point out and particularly claim” the bow. But post-52 the construction of that phrase was that the invention was “a machine that fires projectiles” and “a machine that fires projectiles” points out and particularly claims “a machine that fires projectiles.” (i.e. Rather than looking at the spec and asking if the claims track the spec, the post-52 question is whether the claims track the claims, which always happens)

    Can you use enablement? No, because the bow is enabled, and there is no mechanism to prove that the bow disclosure does not enable the scope of “a machine that fires projectiles” until you counter-invent another machine, and even then, enablement is measured at the time of filing, which just makes no sense.

    Can you use written description? No, for the same reason. In order for someone to conclude that the applicant didn’t possess the full scope at the time of filing, they’d have to have pre-known about the gun, in which case you’d have a 102 rejection anyway.

    Written description *could* be sufficient if the test was re-jiggered to place the burden on the applicant rather than the office/defendant – i.e. In order to describe the genus the specification must provide logic as to why the particularly disclosed embodiments (i.e. the bow) fills the scope of the genus (i.e. *all* machines that fire projectiles). But if you did that, the WD test would essentially become the same test as an abstraction test anyway.

    The WD test has no textual basis (which is why it didn’t show up until 2000 in an act passed in 1952) and its insufficient anyway. But regardless, if you think that a statutory scheme *can* exist that allows for the bow manufacturer to claim the gun, you simply misunderstand and overestimate the power that congress was granted by the constitution. It doesn’t matter whether you want to call it 101 or 112a or whatever, the thing that the court isn’t going to allow to happen is for a statutory scheme to exist which would bless the bow inventor claiming the gun.

    I’ve easily made this example a dozen times and I have yet to see someone challenge that a non-alice statutory scheme can consistently (or even ever, for that matter) solve this problem.

    1. 4.1

      You continue to confuse and conflate multiple sections of law.

      For all of your “I’ve easily made this example a dozen times and I have yet to see someone challenge” – you need just actually open your eyes (and well…, your mind as well).

    2. 4.2

      Enablement is fine. If the patentee argues that its claim to the machine that confers speed to projectiles reads on a gun, then the patentee will loose its claim as not enabled.

      1. 4.2.1

        If the patentee argues that its claim to the machine that confers speed to projectiles reads on a gun, then the patentee will loose its claim as not enabled.

        Hardly. First, your “cure” presupposes someone else 1) invents the gun and 2) either challenges or is challenged by the patent in court. The biggest problem is, of course, that the existence of the patent chills research into the gun. Nobody is going to put money into research of something they would then have to spend more money to fight in court. Further, what about, for example, the catapault. The scope obviously covers the it, but is the catapault different enough from a bow that it would be invalid? Who is going to make or market the catapault based on the overbroad functional scope existing?

        Second, the patent will be entitled to a presumption of validity which is already a problem with the system from a procedural standpoint.

        Third, enablement is judged based on the time of filing. The question isn’t whether one later finds one unenabled embodiment within the scope at some later point in time. The question is if the scope was enabled at the time of filing based on the knowledge and skill in the art and the disclosure of the specification.

        Fourth, the baseline argument is, of course, that the invention of the gun didn’t require any undue experimentation beyond the disclosure of the bow.

        So is it possible that the claim will eventually be held invalid? Sure. Probable even. But that result only occurs after the chilling effect, a trial where the burden is on the defendant rather than the patentee, and the cost of producing evidence and witnesses.

        The point is that the logic of Morse needs to apply – the invention should be rejectable based upon the four corners of the document based on the inability of the applicant to prove that other, distinct embodiments within the functional scope don’t exist. Notably, the Morse case was decided before, e.g. someone else came along with an infringing fax machine. That analysis is an abstraction analysis, whether you want to call it that or something else.

        The very thing that all of the patent attorneys are complaining about here – the ability of the office to reject something based on overbeadth logic without citing evidence – is exactly what is needed to overcome the inherent problems with simply allowing the claim and forcing someone else to put themselves at financial risk to properly size the invention.

        Let’s put it like this – if you just started upholding enablement rejections because an examiner said “I’m not convinced you’ve enabled all of the scope, prove to me that every embodiment in this scope is enabled” I’d agree with you. But that’s not what happens. Instead, to have an enablement rejection upheld, an examiner pretty much has to cite a later-developed invention (i.e. if the claims are still being examined when a gun application gets filed, then enablement may work to cure the ill) and have an applicant that doesn’t know enablement law in order to force a properly-sized scope.


          based on the inability of the applicant to prove that other, distinct embodiments within the functional scope don’t exist

          That’s not the law.
          That was never the law.
          And certainly (look at other claims in Morse that were confirmed), that is not the logic of Morse.

          Random, your skew is beyond severe. That you are actually an examiner is alarming. I do hope that you examine differently than you post.

  4. 3

    At the end of the day, all ideas are abstract. “Abstract idea” is as redundant as “round circle.” There is simply no such thing as a non-abstract idea.

      1. 3.1.1

        Better yet, let’s let an Article III Court scriven a Void for Vagueness law that supersedes it’s own Constitutionally limited authority (intruding into the Legislative sphere) with a subjective, projective, conjectural, “what MAY tend to do something” basis…

        [insert @nger/chagrin/disgust emoticon here]

    1. 3.2


      Inventions are not ideas. They are embodiments (or applications) of ideas. A mere idea has not and has never been patent eligible.

      Again, this is fundemental stuff.

      1. 3.2.1

        And just because courts have had trouble discerning a pure idea from an embodiment of the idea in certain arts, does not ideas should be patentable in it of themselves.

  5. 2

    I’ll end with what I wrote in my statutory interpretation book: read the statute as a whole. Here, some things are “conditions” explicitly in their titles and in their text. 101 is not in its title or in its text.

    That ends the matter.

    But if you want to be purposive, look at 1946’s changes.

    If you want to argue such an interpretation would be unconstitutional, that’s an interpretive tool used only in dire circumstances and not here.

    1. 2.1

      The conditions for patentablity only apply to patent eligible subject matter.

      101 is more fundemendal, hence why it is listed first.

      That reading is also consistent with the statute.

      Is anything not patent eligible subject matter in your view of the statute?

    2. 2.2

      If you want to argue such an interpretation would be unconstitutional, that’s an interpretive tool used only in dire circumstances and not here.

      I’m not so sure about this one. I’m pretty sure the 101 interpretation is necessary because of the constitution. Graham explicitly stated that “The Congress in the exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby.”

      Isn’t that what the scheme previously allowed one to do – to give one embodiment of something, abstract out the idea behind it, and claim the idea?

      1. 2.2.1

        The Court does not have authority to re-write statutory law. IF the Court deems the law as written to be unconstitutional, then the path forward is different. It is simply not that the Court refashions the law as to its choosing.

  6. 1

    One of the reasons why the new Executive branch guidance is nonsense is because the Director openly admits that the attempts…

    …[to write Common Law by way of the Supreme Court “gift” of the double edged sword of “Gist/Abstract” (or the two step “I know it when I see it but will not define key phrases” Alice/Mayo protocol)]…

    … have created unworkable contradictions — and yet, the Director attempts to capture all of those contradictory Common Law cases into one protocol; BUT without taking a stand and removing the contradictions.

    You cannot cut the Gordian Knot by attempting to use all of the rope of the Gordian Knot.

    Instead, a path forward (outside of the most meaningful one of Congress taking back its authority, and doing so on a more meaningful basis with jurisdiction stripping) has been recently shared by Justice Kavanaugh in two musings of the Court.

    The first was the decided case of Schein.
    The second was during the oral arguments of California Franchise Tax Board v. Hyatt

    starting point with comments at; link to

      1. 1.1.1

        How is 101 not a condition of patentability? In fact, how is it not the fundamental and foundational prerequisite for patentability?

        Read the text, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title (e.g., 102, 103..112).”

        So doesn’t it follow that notwithstanding whoever did not obtain a patent, notwithstanding 102, 103, 112 etc., cannot be said to have invented or discovered any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof?

        In other words, if you did not invent anything you cannot obtain a patent, even if you meet 102, 103, 112 and all of the other “conditions for patentability.”

        This is really common sense. Only inventions are patentable subject matter under 101 and there are things that are not inventions. This is the fundamental condition of patentability that supersedes all others. All the wishful thinking won’t change this reality and it wont change the fact that this view of 101 has been endorsed over and over again by the supreme court.

        What am I missing?



            If something is not patent eligible it doesn’t matter whether it is otherwise patentable because it is not even an invention.



              Read your post again, but first change “Nope.” to “Yes, you are right.”

              (it’s that easy)

              Then reference the Wolfgang Pauli phrase “Not even wrong.”

              If you try (even just a little), you may see the conceptual separation.


          Compare what you quoted — a permissive sentence in 101 — with “conditions of patentability” in sections 102 and 103. Not only did Congress put the words “conditions of patentability” in identifying what are “conditions of patentability” and in identifying what are defenses, sections 102 and 103 have those titles, and are conditions “a person shall be entitled to a patent unless.” Now re-read 101: I understand you want to argue that there’s an implied “condition” in this permissive sentence, but (a) why isn’t it labeled as a condition; (b) why is it not stated, like 102 and 103 as a condition; and (c) reading 101 as a condition ignores what Congress did in 1946 (and then again in 1952).


            You are absolutely correct – ignoring what Congress did is why we have the judicial Gordian Knot that we have.


            It isn’t a condition. It is a prerequisite to the conditions even considered. THAT is why the term isn’t used. Because for the conditions to apply, there must be something that is an invention (i.e., patent eligible subject matter)

            I don’t understand what you are trying to argue. Are you saying that 101 should have no legal effect at all?

            What if any limits does 101 pose on patentable subject matter?

            If there are none, then why is it even in the statute?


              Interesting to observe from Europe, where the corresponding eligibility provision is Article 52 EPC and there is a lively debate between the patents judges in England and those at the EPO about how much filtering should go on, under the banner of eligibility.

              Let’s think about the notion of “Invention” in the context of a given claim. Is its invention the contribution that the claim makes to the art? Or is it the claim as a whole that is the (purported) “invention”? The EPO says the latter. For the EPO, a Claim “A digital computer (period)” passes the eligibility test.

              The judges in England declare the EPO approach to be “intellectually dishonest”. Perhaps in the USA judges are afraid of being accused of being “intellectually dishonest”?



                Is there anything more from the judges in England ass to why a straight-up objective takeaway of the words of a claim may be “intellectually dishonest?”

                I hear your use of the phrase, and that phrase carries a rather distinct notion here (and by “here,” I mean both in our Sovereign, and in the patent blogosphere). I struggle with the mere label and wonder if (like our Justices), the judges of England desire to change the words of the law into a law that they feel should be in place.

                As to your example (a digital computer), this is a good place to remind all that claims in the Alice case were — uncontestedly — passing of the “machine” category, and yet deemed “Abstract.” That is to say, claims that were to “objective physical structures,” and not before the Court as to that aspect, having both parties stipulate to that fact, were nonetheless deemed ineligible.

                You will hear form those that will scream and cry that the words of Congress are “not enough,” and that it is necessary that the Supreme Court re-write the law.

                But such is not their authority, so instead of being “inte11ectually honest” about it, they shuck and jive and call it “interpretation” and “implicit” and in so doing ignore the historical context of Congress’s actions that brought about the Act of 1952.

                1. I cannot tell from your response whether you have grasped the point, namely, is eligibility an enquiry into the issue whether the subject matter of the claim is located within the useful arts. Or is it an enquiry into the issue whether the contribution to the art, which one derives from the claim, is within the ambit of the useful arts.

                  In other words, shall we deem a claim “A digital computer” eligible, even when we know with 100% certainty that it is not novel? You see, the patent judges in England dismiss such deeming as “intellectually dishonest”.

                2. In other words, shall we deem a claim “A digital computer” eligible, even when we know with 100% certainty that it is not novel? You see, the patent judges in England dismiss such deeming as “intellectually dishonest”.


                  I would put to you that it is the patent judges in England that are being “intellectually dishonest” if they are purposefully confusing and conflating two very different legal concepts of novelty and eligibility.

                  It takes gall (or lack of appreciation of the legal differences) to try and turn around that accusation.

      2. 1.1.2

        (different) David,

        I see “We hold that the district court did not abuse its discretion in applying our invalidation ruling in the case against TMobile to set aside the judgment against Sprint in this case. We therefore affirm.

        I do not see where “Judge Taranto seems to be onto the fact that 101 isn’t a condition of patentability


        The principal issue before us is whether the four patent claims on which Sprint was held liable in this case were among the claims held invalid in the T-Mobile case…

        …We conclude that those two claims, like the other two, were the subject of this court’s T-Mobile invalidity decision.

        and (critically):

        Although § 101 is not there expressly mentioned, the counterclaims use “including” language, and this court has ruled that § 101, like §§ 102, 103, and 112, states “conditions of patentability.”

        Can you be more precise as to where you see the “seems to be onto”? Are you conflating the standard for pleading as to whether or not a proper counterclaim pleas was made (which would be substantively divorced from the patent law issue)?


      3. 1.1.3

        In the new decision in Prism, Judge Taranto seems to be onto the fact that 101 isn’t a condition of patentability.

        “In its separately numbered counterclaims for each
        patent, T-Mobile asserted that the claims are “invalid for
        failing to satisfy one or more of the conditions of patentability set forth in Title 35, United States Code, including
        §§ 102, 103 and/or 112.” J.A. 2495, 2496. Although § 101
        is not there expressly mentioned, the counterclaims use
        “including” language, and this court has ruled that § 101,
        like §§ 102, 103, and 112, states “conditions of patentability.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3
        (Fed. Cir. 2012); ”

        Doesn’t seem like there’s any confusion. Instead, the response only specifically nominated 102/103/112, but the rest of the evidence shows they intended to argue 101, did argue 101, 101 was treated on the merits, and because of the other case the 101 holding in this case was overturned. The only question was whether the 101 issue was kept alive and it was, not whether 101 was a condition for patentability.

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