Pending Supreme Court and en banc Federal Circuit Patent Cases

By Jason Rantanen

The Supeme Court continues to take an active interest in patent cases, with three currently pending before the Court.  Briefs are available through the American Bar Association's Supreme Court coverage site.

Patent Cases Pending Before the Supreme Court:

Mayo v. Prometheus: Subject Matter Patentability of Processes, redux. In Mayo, the Supreme Court will revisit the issue of patentable processes in a case that was the subject of a grant-vacate-remand order following Bilski.  The Court has asked the parties to answer the following question:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.  

Argument is set for December 7, 2011.  This case has prompted substantial debate and numerous amici submissions.  Prior PatentlyO posts:

Kappos v. Hyatt: Standard of Review of Patent Office Appeals to the District Court.  In Kappos v. Hyatt, the Supreme Court will address the de novo nature of a civil action brought by a patent applicant under 35 U.S.C. § 145.  The Federal Circuit, sitting en banc, previously held that in such a proceeding the applicant many present new evidence to the district court and that any factual conclusions impacted by that evidence must be determined de novo, without deference to the patent office.  The Supreme Court has not yet set oral argument.  Prior PatentlyO commentary:

Caraco v. Novo: Counterclaims Relating to Brand Name Description of Claim Scope. This case relates to a generic company's ability to seek a counterclaim to correct a brand pharmaceutical company's alleged misdescription of patent claim scope submitted to the FDA. Oral argument is set for December 5, 2011.

Patent Cases Pending Before the Federal Circuit Sitting en banc:

Akamai v. Limelight and McKesson v. Epic: Multi-Party, Multi-Step Infringement issues.  In this set of cases the Federal Circuit will address infringement liability when multiple parties collectively perform separate steps of a muti-step process claim but no single entity performs all the steps. Oral argument will take place on November 18, 2011.  Prior PatentlyO commentary:

408 thoughts on “Pending Supreme Court and en banc Federal Circuit Patent Cases

  1. 408

    I do not understand your question in the present context MaxDrei. Can you explain?

  2. 407

    Yes, broad it is. But so it must be, no, to embrace all of the useful arts. So what?

  3. 406

    But isn’t processes, as defined by the law, more than methods of making and using?

    35 USC 100(b): The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    This is an extremely broad definition, is it not?

  4. 404

    He is rather sleazy and slimy in that regard. I just about sick of Ned and his dishonest discourse.

  5. 403


    So you reason for removing processes as a separate category is because it was not there before.

    So how is sticking to the original document ( never changing) promoting the progress of the useful arts?

  6. 402

    Be quite fly.  

    If you have something to say substantively, say it.  Else, please stop playing games.

  7. 401

    Good question.  

    Did you know that processes were not part of the initial act in 1790?  However, they evolved.  Read, for example, the Cato brief on this point.  Also read Corning v. Burden. 

    Methods of using machines were controversial until the '52 act settled that question.

    Taking as a whole, UA are machines, articles of manufacture, compositions of matter and methods of making and using them.  

    That essentially is what Congress authorized in 1790.  It exhibits their understanding of the term.

  8. 400

    AI, the Supeme Court approach was to, as you said, apply traditional test and no categorical exclusions.

    But when you go on to say that BMPs are patent eligible, we engage in the very argument the Supreme Court avoided.  What, pray tell, are BMPs?  That is the question.

  9. 399

    Why do I have a propensity to narrow the definition?

    When State Street Bank came down, I was asked my opinion.  I said that it was not my ox being gored and that we should wait for the banking industry to react.  Well it has.  

    Also, please read the Cato brief.  I agree with what it says about extending patents to abstract subject matter.  What we have is, well, ugly.

  10. 398

    Reminds me of the flack that Copernicus caught when he disrupted the “Law of Nature.”

  11. 397

    Actual Inventor,

    As has been succinctly noted:

    “Ned won’t, because Ned can’t.”

    What Ned can do is play games, accuse you of playing games, stoop to insults and character assinations, and say he does not recall or understand the actual salient points. He is well practiced in these tactics.

  12. 396


    We have been through this before “I dont’t recall” and “I really have no idea are pathetic excuses. If indeed you do not recall and really have no idea, then the honorable thing to do would be to cease and desist from making any comments on a subject that you have no idea about. If you are merely playing the games that you played with Um, No. then even more shame on you, because I have quite patiently and with proper pincites laid ourt very clearly for you the substantive and intelligent points that you must deal with. And I have done so on numerous times.

    And yet, you continue to play your games, including accusing me of playing games.

    Why don’t you just address the many points that have been raised? Why don’t you stop playing your games, stop with the ceaseless proslytizing of your agenda (one that you harm more than you realize), and step up to the plate?

  13. 395

    This post is so right on!

    So many great points.

    Wonder if Ned will respond to any of them.

    Great Job NWPA, keep up the good fight!

  14. 394

    You removed “process” as a separate and independent category.

    Care to explain why you have a need to do this?

  15. 393

    I believe the Supreme Court has a much more simpler approach. Business methods are simply another form of method or process. And therefore must be treated the same as any other method or process and subject to the same conditions and requirements of U.S.C. Title 35 as any other method or process.

    So Ned why do we need this extra definition of yours beyond what the Supreme Court has already expressed?

    I really don’t understand this crusade you are on.

  16. 392

    None of my patents have any difficulty under Bilski, as will any processes or methods , providing they are not judicial exceptions and meet the same conditions and requirements of U.S.C. Title 35, as any other process or method.

    What I would like an “honest” answer from you on is why do you have this innate propensity to narrow the Constitution, statute, and Supreme Court rulings on the definition of processes?

    After all the burden is on you to provide a rationale as to why we need to narrow processes and methods beyond what the Court and the legislature has already expressed, since you are the one campaigning for such a change.

    Because I can tell you Actual Inventors are quite happy the way things are.

  17. 391

    Hah!  I just noticed that my post was truncated.

    AI, I was just trying to understand why you are adamant about BMPs.  I have begun to suspect that you have a patent or two that may have some difficulty under Bilski.  

  18. 390

    No I do not. Do you have a point?

  19. 389

    AI, I propose a definition of business methods that encompassed the claims of Bilski.  The courts of always tried to distinguish a business method claim from any claim to technology that might be useful in business.  In other words, the courts of always distinguished between business methods and technology.

    A business method will of course have business utility.

    What this technology have?  Well, technology passes the MOT.

    So what do we have?  We have a claim that has business utility.  We have a claim that does not passthe MOT.  That the fines business methods is simply as possible.

  20. 388

    Explain  to me, slowly so even that I might understand, how a requirement that claimed subject matter be limited to "machines, compositions of matter, articles of manufacture, or methods of making and using them" limit patentable inventions to only plows and the like?

  21. 387

    Simple, how can one engage in a conversation when the other side makes no points?  I don't recall Anon ever saying anything substantive on the issue.  True, he asks questions.  But I really have no idea what he is talking about, due to the lack of substance in his other remarks.  Rather, it appears to me that he, and many other sockpuppets, simply want to play games.

  22. 386

    In support of NWPA’s odd (at least facially) position on mathematical methods, consider that a true law of nature is never wrong – nature is as nature is.

    On the other hand, man creates (one can even say fabricates) models to approximate nature.

    It is indeed a mistake to confuse the model for the actuality, much like confusing a map for the reality.

    To wit (and much to my own chagrin):

    link to

  23. 385

    I think that Ned wants to put tests on the method and determine whether or not he thinks they are good enough for 101. A clear mixing of 102, 103, and 112 with 101.

    Plus he wants to add into the mix this abstract psychotic nonsense and this mathematical method nonsense that is somehow a law of nature. Notice the psychopaths that put forth this argument never seem to be able to explain how a mathematical method, which is never defined, is a law of nature.

  24. 384

    NWPA, I think you make difficulty where none exists. Ned admits that contributions to the technical field of information processing can be patentable. Patent rights are given for contributions to the useful arts. He who contributes a mere mental act though, he has yet to make any contribution to the useful arts. When that contribution then comes, and is defined in a patent claim, well then we can assess whether it is new, non-obvious and enabled.

  25. 383

    >>due to the nature of process, it can only be conducted on a >>machine, i.e., due to its complexity or requirements of >>speed, the method cannot be performed by a human.

    Where is that in the patent act? It says entitled to a patent unless…

    Additionally, there are three judicially created exceptions. The psychotic nature of Benson was to try and say that something that was a mathematical algorithm, which according to scholars at the time had no definition in Benson and was used 16 different ways in the Benson opinion, was ineligble for patentability. That it was a law of nature somehow, which to any modern mind trained in science is akin to saying that the sun revolves around the earth.

    So, what I think Ned, is that you are not a fair thinker. That you have a hidden agenda of implementing a policy. You say Richard Stern built Benson on previous SCOTUS cases. So what? He cited and misinterpreted the cases and failed to appreciate that information processing is the innovation. Benson should be explicitly overturned.

    You, Ned, are supposed to be telling us why something should be excluded not the other way around. Your rejoinders smack of ignorance of science.

    Plus you apparently did not even read what I wrote. We allow physical methods to be patented that a human body can carry out. See Deener. So, why cannot we allow methods that a brain could carry out?

    I have to say that find people like you disturbing. You are either very ignorant and refuse to read any science or you have a policy in mind and don’t care of the violenceyou committ to the law to get your way. I think it is the latter. I think Benson is an example of the latter.

    The holding in Benson: a machine that transforms information is not eligible for patentability because the method it is carrying out can be represented by symbols and we claim that this is then a natural law because it looks like Newton’s equations with symbols and numbers.

    The other way the violent policy barbarians try is to say that something is “abstract” in that it is too broad. Well, we have a way of policing that in patent law and that is with 112. Whether or not the inventor has enabled the full scope of the claims. Not a 101 issue.

    Note that the Benson psychotic reasoning can be used to exclude all new molecules. I can represent the molecule you are claiming in a symbolic formula with numbers and symbols. This looks like Newton’s equations; therefore, it is a law of nature you are claiming. Therefore, no molecule can ever be claimed again.

  26. 382

    Repeating it over and over will not make it true.

    BTW, are you aware that even your hero Stern does not agree with your definition of business methods?

    This joker thinks business methods are limited to the odious monopolies.

    Fortunately the rest of the world seems to know that in 21st century US Patent law a patented process must be a true invention that is new novel and non obvious.

  27. 381

    Smelting ore, tanning leather, vulcanizing rubber, all Iron Age and Industrial Age processes which freeze innovation in time of the 1700-and 1800’s. This does not promote the progress of the useful arts.

    How many inventors are out there in their garage trying to smelt ore?

    How many entrepreneurs are trying to start leather tanning businesses?

    Doe anyone even go to trade school for these fields anymore?

    Plows, shovels, flour mills, all patentable but a computer is not?

    And a computer with software is even less useful?

    But apparently limiting the useful arts to 1789 is just dandy in your mind and that of your Master. The only problem is it’s unconstitutional. Because as I have pointed our many times now, it is clearly impermissible to interpret constitutional language to include things we knew were considered useful arts before 1789 and then exclude innovations we just discovered in 2011. To do so would impede the progress of the useful arts, not promote it. This is also why your definition of business methods is unconstitutional as well.

    And you are delusional to keep saying the Supreme Court listened to Stern , when they ignored his brief and refused to rule business methods are not within the useful arts. Same goes the Federal Circuit when you look at recent trending cases like Research Corp and Ultramercial.

  28. 380

    More and more embarrassing. 60% meant something then, and it means exactly the same now.

    So black today are still only 3/5ths of a human being.

    Wow, not only are you a backwards, iron age thinking Euro Git, you are a racist to boot!

  29. 379

    Otherwise we cannot continue this discussion.

    How do you continue a conversation that you have never engaged in?

    Anon has repeatedly asked you to engage in a conversation and addrss specific and explicit facts and law.

    You have never engaged that conversation. Can you at least give a reason why you are avoiding the issues he has raised? And please do not insult my intelligence by saying you do not understand the issues. I may ask simple questions but I am not simple minded.

  30. 378

    Ned your definition is unconstitutional. Because It is clearly impermissible to interpret constitutional language to include things we knew were considered useful arts before 1789 and then exclude innovations we just discovered in 2011. To do so would impede the progress of the useful arts, not promote it.

  31. 377

    Oh then just read the end and forget the beginning. Here it is again.

    Ned your definition is unconstitutional. Because It is clearly impermissible to interpret constitutional language to include things we knew were considered useful arts before 1789 and then exclude innovations we just discovered in 2011. To do so would impede the progress of the useful arts, not promote it.

  32. 376

    AI, processes that pass the MOT are patent eligible regardless that they may have a business utility.  These are not BMPs.

    BMPs do not pass the MOT.  

    Stop denying the truth.

  33. 375

    AI, I suppose you have a patent on a method of doing business along the lines of the following:

    1) Advertise that you will mail a booklet on how to make millions for the low price of $25.
    2) The booklet contains these instructions:

  34. 374

    All process and method inventions have a business utility. But not all process and method inventions require that a machine implement the process, or that underlying materials ( substances) be transformed into a different state or thing, A.K.A the MOT.

    Thus processes like smelting ore, tanning leather, vulcanizing rubber are going to be okay under your definition. However you are going to wipe out a huge swath of patents, especially pioneering and future innovations, simply because they do not fit with the state of the art, of 1789!

    Ned your definition is unconstitutional. Because It is clearly impermissible to interpret constitutional language to include things we knew were considered useful arts before 1789 and then exclude innovations we just discovered in 2011. To do so would impede the progress of the useful arts, not promote it.

    :: B Slaps the smirk off Ned’s face with the Constitution::

  35. 373

    Yes thats all there is to useful arts if you want to freeze inventions back to the 1700’s.

    :: rolls eyes::

  36. 372

    AI, I'm sorry.  I cannot read this post.  The end doesn't make sense because I cannot remember the beginning.

    Be concise.

  37. 371

    I will repeat the definition for your exclusive benefit:

    A method that has business utility but which otherwise does not pass the MOT.

  38. 370

    AI, a new mantra to be recited at your prayer wheel.  Go for it.  Make your mantra into a poem, an epic on the scale of Homer's Iliad.  You can cast me as Odysseus in your epic.  You can case Judge  Rich as Priam, and Rader as Paris, Newman as Helen.  On our team, cast Stern as Achilles, Malcolm as Menelaus and Stevens as King Agamemnon.  6 can appear as Apollo.

    I think I know who  wins and how.

  39. 369

    Smirks, I have, and will do so again right now.  They were methods that had business utility but which otherwise did not pass the MOT.

  40. 368

    anon, before we discuss anything further, please agree or disagree that the claims in Bilski held not to be patent eligible were BMPs.  Otherwise we cannot continue this discussion.

  41. 367

    “Completely wrong conclusion Ned.If Congress wanted to outlaw BMPs, they would have done so directly”

    I just said as much even before reading your post. The thing is Ned is a willful belligerent l iar. Just a no good unaccountable varmint.

    I come to this blog to genuinely learn, discuss, and help advance the useful arts. Ned poisons that opportunity for all.

  42. 366

    Oh..God ( Not Stern) here we go….

    Ned:State Street Bank had just lifted the categorical exclusion of BMPs.

    AI: Wrong. There had never been any categorical exclusion of so callled BMPs’ ( still undefined by courts) by any court, congress, or statute. The CAFC took this opportunity to smack down the PTO for enacting a policy that had no basis in law.

    Ned: 273 makes BMPs all but unenforceable.

    AI: This is false, false, false. Since no court has ever defined so called business method patents 273 certainly can’t make BMP’s unenforceable. What 273 did was give business that had already used business methods a defense against wrongful patent suits. But if a business infringes another businesses process patent, so called BMP’s, the patent holder certainly can enforce their patents.

    Ned: the actual result in Bilski is instructive: ….BMPs that do not pass the MOT (or some other test) are not patentable subject matter.

    AI: This is yet another lie! There is no such instruction from the Court in Bilski

    Ned: Observe however that if they pass the MOT, they are not BMPs, but traditional processes.

    AI: Observe??? Where????? In order for me to see, it has to be so held somewhere. But no such holding has ever been made by the Court. Again you are a lia r and just don’t care.

    Ned: No matter how you parse Bilski, one comes to the conclusion that BMPs are not patent eligible,

    AI: No, you Ned (The Li ar ) comes to that conclusion.

    Ned: … a BMP is a method that has a business utility and which does not pass the MOT.

    AI: Okay, at least you have your own personal definition of a BMP and the debate can advance. Let’s see how long you can be honest and hang on to that definition.

    All process and method inventions have a business utility. But not all process and method inventions require that a machine implement the process, or that underlying materials ( substances) be transformed into a different state or thing, A.K.A the MOT.

    Thus processes like smelting ore, tanning leather, vulcanizing rubber are going to be okay under your definition. However you are going to wipe out a huge swath of patents, especially pioneering and future innovations, simply because they do not fit with the state of the art, of 1789!

    Ned your definition is unconstitutional. Because It is clearly impermissible to interpret constitutional language to include things we knew were considered useful arts before 1789 and then exclude innovations we just discovered in 2011. To do so would impede the progress of the useful arts, not promote it.

    :: B Slaps Ned with the Constitution::

  43. 365

    Congress’s reaction to State Street cannot be taken as an endorsement of State Street as 273 makes BMPs all but unenforceable. It is, after all, a defense against BMPs.

    Completely wrong conclusion Ned.

    If Congress wanted to outlaw BMPs, they would have done so directly.

    They did not.

    You will also notice, explicitly because Congress afforded a defense (and a limited defense at that), Congress EXPLICITLY affirmed BMPs as patent eligible subject matter. Re-read Bilski 11 on this point (you are still ignoring what so many have asked you to focus on). I could go on to discuss the rest of the substantive and intellignet items that you have been asked to address, but by now, you surely know what they are and your continued choice to not address them speaks more than my asking the questions yet again.

  44. 364

    I noted you limited, for the very first time in our discussions, your claim to information processing as patentable subject matter to processes running on computers. With this in mind, consider the following definitions:

    Useful Arts: machines, articles manufacture, compositions of matter, and methods and making and using them.

    Business Method: a method that has a business utility but which does not pass the MOT.

    Information Processing: a method of transforming information from one state to a new state. Such a method is patent eligible if, due to the nature of process, it can only be conducted on a machine, i.e., due to its complexity or requirements of speed, the method cannot be performed by a human.

    Thus the process of long division can be performed by a human and would not be patent eligible. However, a method of data compression or encryption would be eligible.

    Night, Do you have any fundamental disagreement with the above?

  45. 363

    We are both in agreement that there is plenty of “non-event” here.

    We most likely are not in agreement as to what here is the non-event, and what here has real legal impact. For example, the application of current meaning to “Useful Arts” has a most definite legal impact and the proper understanding of that term is most definitely not a “non-event.”

    Yours and Ned’s ignoring what the US Supreme Court has held this term to mean is most definitely a “non-event.”

    Carry on.

  46. 362

    Okay Ned let’s end your games. Since you are the one that wants to eliminate business methods as statutory subject matter, I challenge you to define it. Then we can go about debating whether your definition of business methods is within the useful arts.

    :: On a side, I will bet anyone that Ned will NEVER define business methods. And we all know why::

  47. 361

    AI, just to point out that Congress reacted to State Street Bank with 273. State Street Bank had just lifted the categorical exclusion of BMPs. But, to the extent State Street authorized BMPs that had a “useful, concrete and tangible result,” State Street has been overturned.

    Congress’s reaction to State Street cannot be taken as an endorsement of State Street as 273 makes BMPs all but unenforceable. It is, after all, a defense against BMPs.

    Still, I will grant you this: the majority in Bilksi did endorse State Street Bank’s holding that BMPs are not categorically excluded. But the actual result in Bilski is instructive: BMPs that do not pass the MOT (or some other test) are not patentable subject matter. Observe however that if they pass the MOT, they are not BMPs, but traditional processes.

    No matter how you parse Bilski, one comes to the conclusion that BMPs are not patent eligible, with the understanding that a BMP is a method that has a business utililty and which does not pass the MOT.

  48. 360

    What you are becoming Ned is a fundamentalist.

    Stern is your Jes us.

    His paper your bible.

    Business Methods the mortal sin.

    And Rich the de vil.

  49. 359

    “So-called”? By whom are they “called” business methods?

    By you, Ned, and everyone that bandies about the term “business method” without even being able to define it. And what is “my so called definition of business methods that you imply I have said, and you seem to know?

    Maxie, may I suggest you not follow your idol Ned’s example of being dishonest and flippant with the facts. As repugnant as such behavior is, Ned is quite good at it. You on the other hand just come off as looking stu-pid.

  50. 358

    Glad to see it recognised by NWPA that the EPO has an envelope and that many clients are paying many lawyers many dollars to push that envelope. Not sure about this “fight” about where the line is though. The specialists know exactly what envelope they are pushing on.

    The legal cost per case is not never-ending. The relatively expensive activity of pushing the envelope will, I hope, never end. Just as it should be, I say.

  51. 357


    The more clever you try to be the more incoherent you become. This post is as clear as mud. What did you say you believe I believe???


  52. 356

    Ned: Well, you just used the framework of 1920 to respond to me, which makes it almost impossiple to engage in a conversation with you.

    I will make a couple of comments. First, there is no way to define a business method. Second, information is transformed in

    Third, there is no reason to place a distinction between a method that can be performed in a head and one that cannot be perfromed in a head. Do we say that a mechanical method is ok as long as a person’s body couldn’t perform it? Note that the method in Deener can be performed by a person’s body. Does that mean it should have been held inelgible for patentability?

    A machine that transforms information. That is what we are talking about. The fact that very clever people have figured out how to represent that machine with software is merely form over substance as a hard wired machine can be built as well to perform the same method, but note the hard wired computer would be much more efficient. So, the iron age thinkers from the 1800’s just don’t see information processing as a transformation. Well, all I can tell you is try reading some physics books. And, as for this mathematical equation business try reading some symbolic math books and some theory of computation books.

    The issue–one that I think is fair–that is the key to understanding Walker is whether or not the scope of the claims have been enabled. Essentially, what they are saying is, hey we don’t want you to patent this method because the real gold here is building other machines that have structures different than yours to perfrom the method. OK. I think this is interesting. It is an argument, but not relevant to information processing on computers. And, also, one must scratch their head and say what? I came up with a method that is going to be real valuable and lots of people are going to want to use this new method I came up with to build machines, but I can’t patent it since it is too useful. So, we want to promote useful things, but not too useful things.

    The MOT test is another obviously policy based argument that is meant to be used by judges to draw arbitrary lines. See the EPO and thier never ending fights about where the line is and the never ending lawyer bills technology companies have to pay to push back the line.

  53. 355

    Yet, you can’t answer the simple question, why was Bilski’s claims a business method patent?


  54. 354

    Night, Let’s make sure we understand what Richard Stearns position is, for after all, he relies heavily on Supreme Court case authority.

    Richard brought the Supreme Court cases of Corning v. Burton and Cochran v. Diener to the attention of the Supreme Court. These cases, plus Richard’s summary of them, have become what we call the MOT. This rule is not bizarre, but has become the all but exclusive rule in the United States.

    He is also put forward the argument that business methods are not within the Useful Arts. He is undoubtedly right in this in this and his position was all but adopted by the Federal Circuit and by the Supreme Court. In my opinion, eventually it will be adopted by both.

    Regarding Benson, the case construed the claims to be simple mathematics that could be performed in the brain, and that the recital of a computer to execute the math was not material. This is manifestly true. Essentially this is the rule of the Halliburton method claim case which also involved the use of simple mathematics.

    Your rejoinder that information processing results in transformations in time and space is interesting. I have told you my personal opinion is that claims that can only only be run on computers and cannot be performed in the mind due to complexly or requirements of time, are patentable. I don’t think that Richard would disagree. As far as I know, you have never responded to me on this, or explained that you agree or disagree.

    However, I see the Federal Circuit trending in this very direction. They seem to be deciding cases on the basis of whether the claims “must” be executed on a computer versus “can be” executed on a computer, meaning they can be executed in the mind.

  55. 353

    >>Ned: Helps explain why I respect Richard’s position.

    Sorry, but there is no position. The fact is that Benson is the most reviled opinion in patent law history. The fact is that it is internally inconsistent and based on a view of science and technology that is from the 1800 to early 1900’s.

    The other fact is that both you and Richard expect people to come to you and move you from your position. Sorry, but progress doesn’t work like that. If you can’t take responsibility for yourself to understand new technologies than you should be left behind to rot.

    There is a need to police the scope of a claim, but not with 101, but rather 112.

    The fact is that information requires time, space, and energy to transform. That information is now seen as a fundamental property that is conserved. Benson just doesn’t get it and as long as one is expected to argue in the terms and conceptual framework of the early 1900’s, the writers and backers of Benson will never understand information processing. The fact is that Benson uses concepts of mathematics that are pre-1930. It is a very sad commentary on the state of the U.S. science education that Benson was written.

    Benson has caused 40 years of confusion and sold to some of the judge masses notions of science that are 100 years old. Benson is best likened to the church leaders burning at the stake anyone who would dare say that the earth revolves around the sun. You, Ned, have to come to science it doesn’t come to you. Be responsible and figure out modern mathematics and why Benson is absurd in both it characterzation of mathematics and information processing.

    Simply shameful. Shameful and pitiful that Benson was ever written. It has cost billions of dollars. Rich Stern should come and repudiate Benson.

  56. 351

    Oh I thought those musings were only making the trivial point that terminology changes. Today we don’t talk about things like horseless carriages but we know that the term was intended to cover the likes of motor cars. Today we prefer the ring of “technology” to that of “useful arts” but some people still know what the term “useful arts” connotes. It would be particularly egregious for any court judging patent matters to fail to acknowledge progress and change, in what we used to call the “useful arts”. Thus, courts will be falling over themselves to stress that the useful arts are definitely not “locked in time”.

    Nothing here folks. Non-event.

  57. 350


    This is yet another example of what many posters commenting here would consider your hubris:

    Now we play games with words

    You have been playing games with words since the start of your rephrasing the argument as one of “categorically” versus “of a category.”

    You have been called out on this repeatedly, yet you steadfastly not only refuse to change, you refuse to even acknowledge your gamesmanship.

    For you now (actually, almost continuously) to accuse someone else of the very actions you choose to partake in is the height of duplicity.

    Your posts in several places about how you are not a powerful peson is no excuse for such poor behavior. Just because you are not powerful and just because no one lisens to you, does not make it right for you to ppost in whatever manner you feel like and to disregard rules of common discourse (like your twists of logic and refusal to actaully address the issues on the merits that have been put at your feet over and over again).

    You really do not have any shame, do you?

  58. 349

    MaxDrei and Ned,

    I do hope you both realize that the US Supreme Court has made their decision known that the phrase “Useful Arts” is NOT one that is locked in time. See generally Bilksi and Diehr about terms taking on their contempory meaning. I find it very puzzling that especially in the patent arena, where advancement and change is highly desired, that anyone would wish to freeze such a term to such a limited meaning.

    Your protestations thus fall on deaf ears – as they should.

  59. 348

    Ned it depends who you mean by “you”. England doggedly declines to follow the EPO lead on patent-eligibility and patentability under the EPC. I believe MM consorts with lawyers who are loyal to the approach in England and will lose face when they have to defer in the end to the EPO approach (as Germany did recently on the substantive law of novelty, following a notably stubborn 30 year hold-out). At any rate, arguing with MM in these threads feels just like arguing with the English courts, who aim to kill off business method subject matter at the eligibility stage. They think it is a wimp-out by the EPO, to leave it till 103. They don’t “get” it, that the EPO’s 101 approach is absolute, and does not depend on assessing the subject matter of the claim “relative” to the state of the art as it happens to be on the date of the claim.

    Try reading some EPO caselaw. Why not start with a real landmark, G_0003/08, which reveals the established consistent EPO line on computer-implemented inventions? I think Rader CJ is ahead of you, in his reading programme.

  60. 346

    Max, one think that I find really intriquing about Europe, especially England, is the qualtity of thinking that goes into their patent opinions. Our own Supreme Court used to cite English patent opinions quite a bit. But, after reading that Halliburton opinion, I think we need to that more when dealing with common issues such as the patentability of computer-related inventions.

    Just a small point, if you did not have the statutory exclusion of BMPs, the Halliburton opinion would have had to go farther, I believe, and would have had to exclude programs whose utility was limited to methods of doing business. But, then again, you handle that in the inventive step part of the analysis, not so?

  61. 345

    Max, I too read AI’s post with amuzement. He tries too hard to avoid the simple truth that Bilski’s claims were BMPs.

  62. 344

    More and more embarrassing. 60% meant something then, and it means exactly the same now. The word “slave” meant something then, and means the same now. The word “Constitution” meant something then, and means the same thing now. The noble word string “promote the General Welfare” doesn’t suggest anything different now from what it did then.

    Some things do change though. The word string “United States of America” means something rather different now from what it did then.

    So what? The words “Useful Arts” had a clear conceptual meaning then and, to minds that want to construe the Constitution pragmatically, with common sense and in good faith, has retained to this day the same clear conceptual sense(as the many recent Heller case cites show).

  63. 343

    Helps explain why I respect Richard’s position.

    However, there are a lot of very respected jurists who agree with it.

  64. 342

    Interesting logic, Supreme Court:

    “Method” in the statute does not expressly exclude “business method.”

    Now we play games with words and ignore the constitutiton which frames the debate, as if Congress had unlimited power here, uncabined in any regard.

    I hadn’t realized how insubstantial the Kennedy position really was until just now.

    Thanks AI.

  65. 341

    Useful Arts: machines, articles manufacture, compositions of matter, and methods and making and using them. Such are useful arts.

    Sent from iPhone

  66. 340

    AI, If you consider traditional processes "business methods," we have nothing to talk about. Your position just skated off the edge of the earth and fell into oblivion. 

    Sent from iPhone

  67. 339

    AI, that’s exactly the argument proceeding from ignorance that some visiting American jurists advance, when they come over to Europe, raise their finger, and patronisingly tell us that “technical” means “stopped at the Iron Age”. In doing so, they show themselves up as embarrassing and ridiculous. In so many fields, America is a world leader. In the field of self-delusion, it is at world champion level.

  68. 338

    “So-called”? By whom are they “called” business methods? I should hope all those coffin-making business method claims do all sail through 101. On AI’s definition of “business method” well of course 99.9% of “business method” claims sail through 101. Quite right too.

    Whatever will AI say next, I wonder.

  69. 337

    Maxie your attempt at a facetious analogy is not only false and fallacious, it’s just plain dumb, even for you.

    But here in America, coffin making and all it’s various methods, are indeed a business. That’s a fact.

    Now no one is saying that all business methods or processes are patentable eligible. They have to go through the coarse filter of 101, and get past the judicial exceptions like any other sub matter.

    But I will say this, when applying the statute, and case law, 99.9 % of all so called business methods sail right the thru the 101 gates.

  70. 336

    “I searched, in vain I might add, for any reference to the constitutional limitation in the majority opinion. It is not there.”

    I searched the constitution, in vain I might add, for any reference to the constitutional limitation of useful arts to technology. Guess what? It is not there.

    Furthermore the adaption of Stern’s whacky useful arts theory would in effect freeze innovation to the 1700’s. Since only inventions that existed at the time of the writing of the constitution, and their direct descendants are considered within the useful arts.,

    Sure, we could still have patents for new cars. Since according to your hero Stern there were 4 wheel wagons in the 1700’s so cars are okay today.

    But what about airplanes, P.E.T scanners, satellites, and the super hadron collider?

    Guess those inventions and any improvement on them are out of luck since Benjamin Franklin never heard of them.

    Yup, your buds useful art theory is a real winner, if you want to remain in the iron age that is.

  71. 335

    Threads here can get very tedious but, occasionally there are moments of pure amusement. Like when AI asserts that coffin-making is a business, methods of making coffins are patentable, and so it is, that business methods are patentable.

    So when AI is taking his little baby for a walk around the Federal Circuit of the veldt, and a large yellow animal with huge teeth and a swishing tail advances menacingly, AI reassures his child by saying “That animal has a tail. Dogs have tails. Therefore, that animal is a dog”.

    This story does not have a happy ending.

  72. 334

    “Listen, AI, Useful Arts had a well understood meaning from the founding. ”

    So did Slaves/Negros. Blacks counted as three-fifths of a whole person.

    So does that mean blacks are still 3/5ths?

  73. 333

    6, you are aware that Flook limited the whole extra post solution activity analysis to math equations right?

  74. 332

    Ned: Listen, AI, Useful Arts had a well understood meaning from the founding. It was in the dictionary. See Stern’s brief and Steven’s dissent.

    AI: So having failed on the case law and statute to prove business methods are not patent eligible you retreat to your last possible position and wrap yourself in the Stern paper. BTW, Stern said Useful Arts were not in the dictionary, ( see footnote 68) not that it matters. And Steven’s Dissent is not law and can’t help you here.

    NED: BMPs were not among the Useful Arts.

    That’s a lie Ned and you know it.

    Potash making, candle making, shoe making, coffin making, blacksmithing, embalming, plowing and on and on are al business methods and/or BMPs that were within the useful arts.

    The elephant in the room regarding the Stern paper is he failed to define so called BMPs.

    So his paper has no authority or credibility to even identify business methods patents let alone determine they are not within the useful arts.

    Ned: The came the almighty Rich, his inflated ego, and followed by his fellow Republican Kool Aid drinkers, and decided that BMPs were not “non statutory.” Indeed they were not.

    AI: The Great Giles Rich was the author of the statute, and therefore had the authority to define what was allowed by it better than anyone.

    Ned: They were unconstitutional!!!!!!

    AI: Prove it!!!!!!!

    I double dog dare you!

    Go ahead, try and put together a cogent argument why BMP’s are unconstitutional.

    And please, please, use any and all parts of Sterns paper as your evidence.

    I will be glad to wipe the floor with you and send you running to Mommy Mooney and Maxie Cheerleader for validation.

    Ned: We are in a world of hurt because of Kennedy, Alito, Thomas, and Roberts, who share a characteristic with Rich,
    Rader, Lourie and Newman.

    AI: Your forgot Scalia, whom also disagreed that business methods were patent ineligible.

    Ned: Guess what that is?

    AI: A majority. A.K.A we win you lose. Punk!

    :: Ned Silenced. Again!::

  75. 331

    Anon, <i>"The only thing is, per our beloved Supreme Court, the meaning [of Useful Arts] is not limited to "technical arts."</i>

    I searched, in vain I might add, for any reference to the constitutional limitation in the majority opinion.  It is not there.  Your reliance
    on the Supreme Court for your statement is not understood and is apparently whole cloth. 

    I cannot say it better than Judge Michel in his concurrence from In re Bilski,

    "The Constitution does not grant Congress unfettered authority to issue patents.  
    See U.S. Const. art. I, § 8.3  Instead, the patent power is a “qualified authority . . . 
    [which] is limited to the promotion of advances in the ‘useful arts.’”  Graham, 383 U.S. at 
    5; see
    also KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1746 (2007) (reaffirming that 
    patents are designed to promote “the progress  of useful arts”).  What the framers 
    described as “useful arts,” we in modern times call “technology.”  Paulik v. Rizkalla, 760 
    F.2d 1270, 1276 (Fed. Cir. 1985) (en banc).   Therefore, by mandating that patents advance the useful arts, “[t]he Constitution explicitly limited patentability to . . . ‘the  process today called technological innovation.’”  Comiskey, 499 F.3d at 1375 (quoting Paulik, 760 F.2d at 1276); see also  In  re  Foster, 438 F.2d 1011 (CCPA 1971) (“All
    that is necessary . . . to make a sequence of operational steps a  statutory ‘process’ within 35 U.S.C. § 101 is that it be in the technological arts.”); Karl B. Lutz, Patents and 

    Science: A Clarification of the Patent Clause of the U.S. Constitution, 18 Geo. Wash. L. 
    Rev. 50, 54 (1949) (“The term ‘useful arts’ as used in the Constitution . . . is best 
    represented in modern language  by the word ‘technology.’”); James S. Sfekas, 
    Controlling Business Method Patents:
     How the Japanese Standard for Patenting 
    Software Could Bring Reasonable Limitations to Business Method Patents in the United 
    States, 16 Pac. Rim. L. & Pol’y J. 197, 214 (2007) (At the time the Patent Clause was 
    adopted, “the term ‘useful arts’ was commonly used in contrast to the ideas of the 
    ‘liberal arts’ and the ‘fine arts,’ which were well-known ideas in the eighteenth century.”)." 

  76. 330

    Are you, Anon, a denier that Useful Arts has any meaning?

    Of course it as meaning. I don’t get why you would try to paint the situation as if I am a denier that Useful Arts has meaning.

    The only thing is, per our beloved Supreme Court, the meaning is not limited to “technical arts.” This reinforces the legislative law. The AIA reinforce both as our beloved Congressmen and Senators changed patent law after a Supreme Court decision and left the pertinent parts of the law in place. Are you now going to engasge in character assination of the Senate and House because they did not expressly outlaw business methods as a category?

    Really Ned, I just outlined the gist of what you need to realize as the state of law and what you must accept as fact. Let’s see you digest this, accept this and confirm that you understand this before we move on.

  77. 329


    Once again – it is you that is guilty of what you accuse others of. The gibberish is yours – this has been pointed out time and again with your reliance on “categorically” and the (il)logic jump from a particular case to banning all patents that may belong in the same category.

    What you counter with is simple BS.

    We can keep up this dance repeatedly and we won’t get anywhere until you actually decide to face the substantive issues that have been laid clearly at you feet.

    The choice is yours – play childish games or engage in a meaningful adult conversation. So far, all we have from you is games.

  78. 328

    Listen, anon, you refuse to face facts.  BMPs cannot be patentable subject matter, else the Bilski claims would have survived.  

    You look at Bilski this way.  A double negative is a positive.  So, when they said, "not" categorically "excluded," you took that to mean "included."  But, since the holding of a unanimous court was that the Bilski claims were not patentable, there must be something radically wrong in your math, or if your math is correct, and I think it is, in the court's "dicta."

  79. 327

    Max, indeed.  It is my point to MM that we have to assume for 101 that everything is new.  

    A claim, considered as a whole, that has as its object or result, subject matter no within the UA, is not patentable subject matter.

    Nothing there about novelty.

  80. 326

    Anon, why are you hung up on gibberish.  It is you, not me, that insists that BMPs are patent eligible.  If not you, then AI, Diehr Expert, or some other puppet.   What I counter with is the simple truth.  If that statement were correct, the Bilski claims would have been found PE.  Period.

  81. 325

    Ned, your friendship with Richard Stern explains your bizarre take on 101 issues.

  82. 324


    The phrase was “you exclaim when pushed with” (spelling corrected).

    The sentence clearly does not say it was you that did any pushing. Clearly, you were being pushed with a concept you could not handle.

    This is in relation to your exchange with Um, No., who attempted (unsuccessfully, no surprise there) to get you to answer a substantive question that would highlight the fallacy of your twisted misuse of “categorically” when “a category of” is the appropriate clause. You exclaimed ignorance as to what “a category of” medical methods might mean as a evasive response to Um, No., and then to a later poster you admitted that you knew d_amm well what “a category of” medical methods meant.

    It is this type of obvious gamesmanship – attached as it is directly to your actual name – that is the BS that you continue to spew. I don’t know if you think that you are clever for avoiding the substantive issues time and again, but those issues just won’t go away.

    You might as well tackle the issues you do really know are directly in front of you.

  83. 323

    Ned, I repeat. When looking at 101, you want not to get sucked in to discussions of novelty and non-obviousness. A computer is like any other machine, and a machine is eligible to be patented. A process that is limited to one that runs on a machine is like any other process run on a machine……until you get to debate its novelty, and whether it is obvious (in the sense contemplated by the patent statute).

    This is why the EPO lets notoriously old and obvious stuff through its 101 hurdle. The EPO’s 101 test is an absolute one, with no knowledge of the up to date state of the art needed. Patentability relative to that state of the art comes later, under 102 and 103. OK?

  84. 322


    Please, please, please state US law correctly.

    US law is not as limited to “technical arts.” This is a fact that you simply must accept, no matter how unpalatable you may find it.

    Your constant ignoring of this difference is one of things that should not happen on these threads, given your desire to not be, oh what was that word….?

  85. 321

    Anon waxed poetic, indeed.  But unless you deny that Useful Arts has any meaning whatsoever, it should be obvious to even the bum on the street that methods of doing business are not within the Useful Arts.  Improved methods of haggling over price?  Useful, indeed.  But not within the Useful Arts.  

    There is a difference.

    Are you, Anon, a denier that Useful Arts has any meaning?

  86. 320


    If you actually provided substantive responses, I could stop reciting at the wheel.

    How about it? You provided the substantive responses to the points of my post at 9:00 PM and we all can move forward.

    And please leave out the utter childishness of your vacuous and emotionally laden tripe as exemplified by your posts at 3:19 PM, 3:21 PM, 3:01 AM and especially 6:11 PM. It is most unbecoming and only drags down your name.

    From the 6:11 Pm post:
    reply to anon… “whaling,”… dangle… from that yardarm… recognizing the obvious”… “hard time accepting reality.”

    Really? It appears that I am not the one having a hard time accepting the reality of Diehr, Bilksi, and the legislative effects. You do not see me making rude character attacks on those who have shaped the law as it is now. In truth, the only reason for such attacks is the underlying acquiescence that the law is not as you wish it to be, for if the law were according to your desires, you would be trumpeting the law and not engaging in character attacks.

    Your desparation on this thread is obvious.

    One further thought experiment/question for you:

    Has the Supreme Court EVER affirm that ANY category of method patents as categorically patent eligible?

    Think about how the honest answer to your twisted question plays out for ANY category of method patents. Apply the Kantian device of pushing that logic to its end and what do you see?

    Remember Ned – please put some substance into your answers.

  87. 319

    Great.  A programmed computer that varies from the prior art only by improving the ability to do something not within the useful arts.  Patent eligible, but not patentable? 

    These kind of distinction make very little sense to me, Max.  The real problem is a whether the subject is patentable …that is, whether it is within the Useful Arts.  It is not one of obviousness.  

    The refusal of the Federal Circuit or the Supreme Court to address the constitutional issue is vexing.

  88. 318

    Business methods were not embraced in that definition.

    On the contrary, Ned, business methods are embraced by that term.

    Didn’t your friend A New Light pen a cogent piece on the evolution of business methods to its current place in the useful arts? I seem to recall an ode to Demming (and possibly Taguchi), that emphasized the objective (some even may say technical approaches to business over the course of the past half century that have led to unparalleled efficiency gains and such common man platitudes as “6 Sigma” (if you are not aware of these items, you really should not be involved in this discussion to begin with).

    On the contrary, Ned, business methods are embraced by that term. And not only that, business methods are embraced by both the legislative law and the case law.

    It is these embraces that are obvious to all but those who close their eyes and chant “Stevens help me, Stevens help me, Stevens help me.” It is these embraces that Ned has YET to actually address. Ned would rather play his childish games.

  89. 317

    Ned, I’m serious about 103. If a SCOTUS judge can opine that the concept “obvious” in patent law is not apt for discussion of creativity in musical composition, why not also opine that business methods are not things that are or are not “obvious” in the sense that the patent statute contemplates. There is (again) a series of English cases that muse on the difference between what is obvious to do technically and what is obvious to do, commercially. The one I remember was the TEFLON-coated corkscrew. Plenty of evidence of non-obviousness but it was all adjudged to be evidence of what was not obvious commercially. It turned out then that the claim embraced what was technically obvious and that was enough to invalidate the claim.

    Why not dispose of technically obvious CII in this way, under 103. I think Rader CJ is gearing up to do just that, the first chance he gets.

  90. 316

    I meant to say, Rich wrote "invention" into the statute in the form of 103.  The Supreme Court, left to its devices, could have crafted "invention" to exclude advances of a non technical nature.

  91. 315

    Max, I see how it works.  It is just that we cannot do anything of that character here because Rich, in his wisdom, wrote 103 into the statute the way he did.  As in many things, Rich screwed up.

  92. 314

    Getting there Ned, getting there. A computer has technical character. So a “computer-implemented haggling method has technical character. Does it solve a technical problem though? No. Then it’s not patentable. The EPO’s 103 test looks at technical features that solve problems in technology, not the problem how to get the best price.

    If the claimed haggling method solves a computer technology problem it might be patentable. If the only problem it solves is a haggling problem it is not going to get past 103.

    The EPC forbids patents on programs for computers but only programs “as such”. Recite the computer then, rather than the program, to equip your claim with patent-eligible “technical character”, and explain in your app what technical features solve which technology problems, to get over the 103 hurdle.

    Better now?

  93. 312

    Listen, AI, Useful Arts had a well understood meaning from the founding.  It was in the dictionary.  See Stern's brief and Steven's dissent.  

    BMPs were not among the Useful Arts.

    Congress had no need to exclude them by statute.  They were not included by the constitution.  That was well understood.

    The came the almighty Rich, his inflated ego, and followed by his fellow Republican Kool Aid drinkers, and decided that BMPs were not "non statutory."  Indeed they were not.  They were unconstitutional!!!!!!

    Pity the Supreme Court for punting.  We are in a world of hurt because of Kennedy, Alito, Thomas, and Roberts, who share a characteristic with Rich,
    Rader, Lourie and Newman.  Guess what that is?

  94. 311

    Max, 103?  No, 101.  103 is specific.  It relates only to the prior art by statute.  Dissembling is not a Useful Art, as we all should know.  

    Bilksi had an opportunity to tell us what Useful Arts meant, perhaps for the first time in history.  Our founders had a good understanding — the meaning of the term was in the dictionary at the time.  Business methods were not embraced in that definition.

    It looks like Scalia simply could not join Stevens for some reason.  There is something that Stevens said that caused Scalia to punt.  I wonder what it was?

  95. 310

    Max, thanks for that clarification.  The labels seem to suggest that something without technical effect on a per se basis should have no technical character as well, but two sets of per se rules is OK if it works. 
    Now let's see, a method of haggling for the best price has no technical character and no technical effect on a per se  basis.  
    Right?  Now, recite a computer program to do the arithmetic, and what do you get?  Technical character but no technical effect?

  96. 309

    Just some strange messages “Tharre she blows.” Why post messages that the broad audience cannot understand? Maybe one or two people can understand them, but all the rest of us get out of it is that you believe you have been cheated. We get no concrete facts to evaluate your statements. For all we know you are some bizarre stalker that was treated fairly and you want to scare someone. We cannot tell what is going on with what you give us.

    I think you have it Ned. Add administering and lose enforcement. If MM isn’t Richard Stern, he must be Dennis.

    Remember that is ONLY my prediction of what will happen at the SCOTUS. Doesn’t mean I agree with it.

  97. 308

    So for Three “count em!” For three Years I tell my Story over and over. And now I get it T.V.S. put a jumble in my posts. And may have even shut some down. But T.V.S. you can’t have it both ways. You can’t shut me up and work for the other side while shutting me up, that’s a Crime!

  98. 307


    Instead of actually answeringthe questions, you have descend to accusing your foes of the very “denseness” that you exhibit.

    No answers from you to the intelligent legal questions of
    Bilski 11
    Bilksi 14
    (and the official pincites to such, so that you could understand
    35 USC 273

    Accusations – that’s all that you have left.

    How very sad.

  99. 306

    Jerk.  You simply cannot accept that the Bilski claims were BMPs, and cannot accept that they were held unpatentable.  You cling to hope, where none exists.  You cannot refute the facts.  Instead you recite mindless gibberish — repeatedly, like a Buddist monk at the wheel. 
    Get over it.  BMPs are not patent eligible.  Claims that otherwise pass the MOT, etc., are even if they have a business utility.  But such are not Busness Method Patents. 
    Get it?
    Mein Gott are you dense.

  100. 305

    Importantly – and distinctively in regards to US Law, I also pointed out that US Law has a broader patent eligibility class, based on the difference between “Useful Arts” and “technical arts.”

    Thanks anon:

    Well, it’s obvious that Ned believes the useful arts equate to the technological arts. How else could he come up with so many conclusions that are contradictory to current US patent law?

  101. 304

    Wow Malcolm, it’s been a long time since you used your Hans Blix sock puppet. What’s next, orly taitzt? Hey while you are out of the closet, so to speak, how about addressing the following substantive points made by the commenters on this blog regarding your proposition, which all clearly see as nothing more than dissecting claims.

    Cite one case in which a person was successfully sued for merely thinking about a patent.

    Prove that any patent claim has, or ever will actually prevent anyone from thinking a new thought.

    Explain how you propose taking the claims as a whole while at the same time using individual elements in the claims as the basis for denying an applicant his patent.

  102. 303

    Hello Ned:

    With all due respect, you did not answer the question I asked.

    AI Asked: Why would the Supreme Court need to affirm so called BMP’s categorically patent eligible when they have never been declared categorically patent ineligible by any court, congress or statute?

    Ned: Well, AI, historically, they were thought to be an exception. That exception was overruled in State Street Bank.

    AI: The above answer is not a logical reason why the SCOTUS would need to affirm so called BMP’s categorically patent eligible when they have never been declared categorically patent ineligible by any court, congress or statute.

    Especially since the State Street Court had no decision by any court, congress or statute to overrule.

    Ned: Still they did require such claims to pass traditional tests such as the MOT or some “other” test that it left for the lower courts to devise.

    AI: Ned, this is utterly false. The Court never stated in Bilski that so called BMP’s were required to pass the MOT. If I am mistaken please provide the exact quote. Remember, according to the Court, BMP’s are a process and method same as any other process and method and therefore must be treated the same as any other process and method. And no process and method is required to pass the MOT.

    The fact that the Court gave leeway to the Federal Circuit to create additional tests is of no consequence. Especially since the CAFC has gone in the opposite direction in it’s most recent cases and used Diehr’s application of concepts to specific industrial processes , as the foundation for declaring process and method claims as statutory subject matter. ( See Research Corp and Ultramercial CAFC)

    NED:What remains telling, AI, is what they actually did in Bilski. They held the claims before it not patent eligible.

    AI: What is so “telling” about that? It is my understanding that the Courts holding specific claims not patent eligible simply means those particular claims are not patent eligible.

    NED: Those claims were claims that everyone agreed were directed to a BMP.

    AI: This is false. IIRC, what “everyone” involved in the actual case agreed to was that the claims were directed to a process or method. The claims have also been characterized by the various parties as directed to:

    a) An Equation or Math

    b) Transactions

    c) Hedging Method

    d) Hedging Method for the Heating Industry

    A business method has merely been the catch all label for discussing the case more that its legal characterization.

    NED: So what conclusion are we to draw from Bilksi?

    AI: While I appreciate your response Ned you, respectfully you should have answered the question instead of concluding with another question of your own. It certainly appears here you totally ducked the question asked and avoided dealing with the logical conclusion the answer would have led you too.

    NED: BMPs are not in fact patent eligible. Claims
    that otherwise pass the MOT or some other test to be devised might be patent eligible, but they will be eligible for reasons entirely unrelated to whether they have a business utility.

    AI: If BMP’s are to be treated as processes and methods, as so held by the Supreme Court, then your above conclusion is contradictory and therefore false. As BMPs can’t be both “not in fact patent eligible” and “patent eligible” as claims that pass court sanctioned tests for statutory subject matter. BTW, all patent claims have business utility. So that tag on your concluding sentence is out of place and has no relevance to the point at hand,

  103. 302

    Ned, I just gave you (above) an important answer to your confusion between technical character and technical effect. Please read when you get a moment because, for the time being I don’t understand your question immediately above. With EPO-PSA, you identify the technical effect relative to D1. the “objective technical problem” is to achieve exactly that effect. It is not unusual to be in the position that Applicant’s subject matter performs no better than the D1 teaching. In that case, one can find in the app as filed no “technical effect” beyond that already achieved by D1. This leaves the objective technical problem as the trivial one, of finding a mere alternative way of solving the problem to the one already taught in D1.

    As to anon, Ned, I mention again my “tennis ball” notion, that “A ball for playing tennis” is wider in meaning than “A tennis ball”. I happen to think that “useful arts” means something more specific than “All arts that are in any way useful”. Being able skillfully to dissemble, for example, can often be very useful. Can you point me to any jurisprudence on 35 USC 103, which recognises as patentable new and non-obvious ways of dissembling?

    I look forward to cases in which “useful arts” is construed, in the context of 103.

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