Classen v. Biogen: Request for Rehearing

In Classen v. Biogen, the Federal Circuit issued a one paragraph non-precedential opinion rejecting Dr. Classen's claimed method for evaluating a vaccine immunization schedule. The problem with the claims stems from the Bilsmane or transformation test. The appellate panel found that "the claims are invalid under 35 U.S.C. § 101. Dr. Classen's claims are neither "tied to a particular machine or apparatus" nor do they "transform[] a particular article into a different state or thing." Bilski, 545 F.3d at 954."

Now, Classen has filed its request for a rehearing en banc and is looking for further amicus support. The brief cites only one case — Bilski — and argues the facts: that at least the claim limitation of "immunizing mammals" is a qualifying transformation of matter.

Notes:

67 thoughts on “Classen v. Biogen: Request for Rehearing

  1. 67

    MM quipped, “And since we all recognize now that pieces of paper with new recipes on them are patentable, the robot can be easily taught to file its own patent applications on those recipe-riddled papers.

    But those claims wouldn’t be statutory subject matter, of course. Why not? Not made by man.”

    LOL

  2. 66

    LB: “That’s because at least some of the rest of us have been off writing obvious (and non-statutory) software to program our culinary robots.”

    Hey, Leo, don’t waste your time. You take this thing

    link to technovelgy.com

    and combine it with this thing:

    link to robotchef.tv

    and you’re set for life.

    And since we all recognize now that pieces of paper with new recipes on them are patentable, the robot can be easily taught to file its own patent applications on those recipe-riddled papers.

    But those claims wouldn’t be statutory subject matter, of course. Why not? Not made by man.

  3. 65

    “As far as I can recall, yours was the first comment from a pro-software patent commenter to do so in at least two years.”

    That’s because at least some of the rest of us have been off writing obvious (and non-statutory) software to program our culinary robots. I’m working on implementing a tarte flambee recipe as we speak. I’m doing it in assembly language, just for kicks.

  4. 64

    broje “I’m saying that the human and machine readable recipe written on paper ought to be patentable, and would, in fairness, be patentable, at least for the purpose of use with a machine that is configured to read it, if not for the printed matter exception.”

    I disagree with this policy 100%, broje, but I admire the fact that you are willing to confront the legal contradiction head-on and propose a theoretically workable solution.

    As far as I can recall, yours was the first comment from a pro-software patent commenter to do so in at least two years.

  5. 63

    MM said, “Be careful with the goalpost. We are not talking about the patentability of machines. We are talking about the patentability of old matter comprising new instructions that can be read by a computer. Are you admitting that if a piece of paper with a new recipe can be read by a computer then that piece of paper should be patentable?

    If not, then please explain the difference between such a piece of a paper with some dots on it that a computer reads (which causes it to do something different than if it hadn’t read the paper) and a disk with some dots on it (which causes it do something different than if it hadn’t read the disc).

    And if you can’t explain the difference, then just say so. Please don’t kick dust in my eyes like so many others have.”

    I’m saying that the human and machine readable recipe written on paper ought to be patentable, and would, in fairness, be patentable, at least for the purpose of use with a machine that is configured to read it, if not for the printed matter exception. See, that printed matter exception is a specific exception for otherwise patentable subject matter, and it needs to be amended to recognize the fact that human brains are just bioligical computers with eyes and ears for input ports and structural modules for compiling and carrying out instructions. So there should just be an immunity to damages for people reading and understanding and communicating and teaching about stuff, like there is an immunity for damages for physicians perfoming patented surgical procedures. That way, a new and non-obvious recipe printed on paper in such a way that it can be read and understood by a computer and by a human can be patentable. But the liability for infringement should only obtain to those who use it with the computer, or manufacture it for such use. But, until the powers that be manage to wrap their heads around these concepts and take the appropriate action, we’ll be arguing over the distinction between “computer readable medium” and “medium readable only by a computer.” I’m really not looking forward to it.

  6. 62

    Malcolm,

    Your obvious glee in switching the discussion to a minor point and exalting victory while evading and not answering the main pertinent issue – while clamoring that your opponent is the evader – has the hallmarks of, as David Stein graciously put it, “I think you’re a junior examiner.”

    Did you learn this technique at the same time that briar patch 6 did?

    “Don’t waste my time with links. You have an argument? Make it.”
    Another 6-ism – make someone restate an argument, hoping that a mistake will creep in so that you can pounce on the mistake.

    Malcom, you still haven’t provided an intelligent response to David’s post of 6:07 PM. Should I bookmark this post and have it ready to submit to the blogs whenever you dredge up your cookbook-pieces of paper logic, or will you actually have something intelligent to offer (or better yet, acknowledge that your argument is groundless and dispense from ever using it again)?

    Still waiting for you to put up.

  7. 61

    DS “Again, you keep moving the goalposts.”

    No, David. I’m not moving anything. We were discussing an issue. I presented my argument. In response, you stated that you do not believe that a computer or machine that can read and perform instructions written on paper exists.

    I asked you to confirm that you actually believed such a thing. Your response: weave, duck, dodge, play word games. I asked if there were other commenters who shared your belief. Their response: avoid the question.

    “where are these magical chef robots? I’d LOVE to buy one.”

    link to newscientist.com

    Just one (rather nifty) example of many.

    You see, David, computers *are* different from other machines. But they aren’t different in a way that helps you defend Beauregard claims from my charges that they are baseless gift to software patent applicants. On the contrary.

    And please people don’t start kvetching about how the robot chef would never have been invented without patents. You can’t prove it and, more importantly, it’s utterly beside the point.

  8. 60

    “Then again, David may be incapable of feeling shame. That would explain a lot.”

    I posted a response to this saying that Mooney of all people should not post regarding a lack of shame. It was deleted.

    So I guess since my disparaging comments about Mooney are being deleted rather rapidly, it leads me and should lead Mr. Stein to only one conclusion about the identity of Mooney.

    That is pretty freakin sad.

  9. 59

    “David Stein doesn’t believe that a computer or machine that can read and perform instuctions written on paper exists.”

    Again, you keep moving the goalposts.

    “Instructions written on paper” – your latest manifestation of a constantly shifting analogy – can take many forms. Some forms, a computer (properly equipped) can easily read and translate, such as Scantron. Other forms, such as prose printed in English letters, are much more difficult to scan (accurately) and even more difficult to translate into a meaningful computer form.

    A recipe is probably one of the most difficult bodies of prose to interpret. It’s a bunch of short and terse English fragments, and grokking them requires (1) the ability to read English letters, (2) the ability to parse terse fragments that often require intuition or deductive logic to associate, and (3) an extensive background of cooking techniques.

    And even if the recipe is understood, it must be implemented, using a wide array of kitchen utensils and background techniques (cracking eggs, flipping pancakes, detecting when a steak is done, etc.)

    In short – Mooney, you’re trying to state that since a computer can read Scantron, it can obviously read any routine recipe and work the implements in the kitchen to apply it. Is that really your argument? If so… where are these magical chef robots? I’d LOVE to buy one.

    ===

    “Then again, David may be incapable of feeling shame.”

    “David is shamelessly hypocritical and sort of creepy about it.”

    “David chose to stick his head in the sand and act like a m0r0n and deny indisputable facts about computer technology.”

    Wow. Really?

    Mooney, I gave you a fair shot at being a normal part of this forum by responding to your comments during your brief period of lucidity. That period having passed, we’re done.

    Also, I’m going to call you out here.

    You know who I am. I have nothing to hide – I go by my real name and post a link to my real domain, and my reg number and credentials are easily discoverable.

    How about you?

    I really doubt you’re a patent attorney, Mooney, or an attorney of any kind. You may have attended law school briefly, but I doubt it.

    Given (1) your odd knowledge of workings inside the USPTO (including conclusory claims about what “applicants” do, as a class) and (2) your apparent disdain for virtually every practitioner (and pretty much the entire owner’s side of the IP field)… I think you’re a junior examiner. And I think you’re posing as a “practitioner” to fluff up your credentials a bit.

    The choice is yours. Care to put your credentials on the table to disprove me? Or do you want to maintain a cloak of anonymity at the expense of your credibility?

    Frankly, I don’t care either way, because you’re now off of my radar. This will be the last time I ever respond to you. Bye.

    – David Stein

  10. 58

    NAL, do you believe that a computer or machine exists that can read and perform instructions written on paper?

    Let’s just get that issue out of the way, shall we? Otherwise, it’s like discussing evolution with a creationist as far as I’m concerned. If the one side can’t honestly admit to first grade level indisputable facts, then we might as well just play checkers and leave it that. Right?

  11. 57

    …and your non-answer, while brief is NOT a feature of a good argument.

    “unpersuasive” – spoken like an examiner.

    Still time to put up or shut up – just don’t see you puttin up.

  12. 56

    NAL “David was trying to point out to you.”

    Tried and failed. Don’t waste my time with links. You have an argument? Make it.

    “To paraphrase, “printed” and “patentable” = f(functionality).”

    That’s rather unpersuasive but I’ll give you credit for trying to be brief. That’s one of the features of a good argument.

  13. 55

    Malcom,

    I do not see an intelligent response from you to David’s specific point at 6:07 PM.

    You may peruse an interesting article by Ben D. Manevitz dealing with the Printed Matter Doctrine (specifically starting on page 727).

    I think you will see that your “cookbook” patentability argument is groundless as David was trying to point out to you.

    The link:
    link to papers.ssrn.com

    To paraphrase, “printed” and “patentable” = f(functionality).

    Still time to put up or shut up.

  14. 54

    NAL “Please respond (intelligently and explicitly) to David’s explanation of the printed matter doctrine and Beauregard claims.”

    I already did that and David chose to stick his head in the sand and act like a m0r0n and deny indisputable facts about computer technology. I sort of lost interest at that point. Well, I sort of lost interest before that because it became clear that David is shamelessly hypocritical and sort of creepy about it, too.

  15. 53

    Mooney,

    Please respond (intelligently and explicitly) to David’s explanation of the printed matter doctrine and Beauregard claims.

    Time to put up or shut up.

  16. 52

    David Stein doesn’t believe that a computer or machine that can read and perform instuctions written on paper exists.

    Anyone here share David’s belief? Please fess up. Don’t be ashamed. David isn’t.

    Then again, David may be incapable of feeling shame. That would explain a lot.

  17. 51

    MM wrote:

    “Why would my computer have to understand ‘any reasonable recipe’? Don’t move the goalpost.”

    Who’s moving the goalposts? Here’s what you wrote, MM:

    “David, computers that could read and perform instructions written on paper — including recipes — are rather old.”

    And I responded, directly to this statement, that I don’t agree any such computer or machine exists. If you don’t appreciate direct responses to your own statements, then be more careful about what you write.

    Looking past your mistake – OK, let’s talk about printed matter vs. computer-readable media.

    Consider a publication describing an algorithm, vs. a compiled binary implementing the algorithm stored on an optical disc. How is the information is used to achieve the invention? If the information is absorbed by an individual, who must mentally create the invention and apply it, then the claimed article is merely “printed matter” then it does not qualify for patent protection. If the claimed article is instead automatically executed by a computer (perhaps involving the “insignificant pre-solution activity” of a user inserting the disc into the computer and maybe firing up the binary), then it is not merely “printed matter,” but a functional component of the “particular machine” that performs the invention (In re Abele.)

    That is the principle behind Beauregard claims. It has been uniformly applied in every review of this claim style – even in Cornea-Hasegen (which simply extended the requirements of Bilski to the method embedded on the disc.)

    You are free to disagree with the principle, but you cannot honestly claim some kind of “inconsistency” in how this principle is applied. Well, you can, but we are free to ignore you unless you present some underlying proof of inconsistency.

    Contrast this with Bilski – where every subsequent application seems to derive a brand-new principle or manner of applying the tests, and where many such principles are poorly defined and/or logically inconsistent with other decisions (pre- and post-Bilski.)

    – David Stein

  18. 50

    broje “So, if a computer is configured to read a human readable recipe on a piece of paper, compile those instructions into machine code, and make the dish, then the human readable recipe written on the piece of paper is a design for an electronic circuit. When you claim that recipe together with that machine, it should be patentable.”

    Be careful with the goalpost. We are not talking about the patentability of machines. We are talking about the patentability of old matter comprising new instructions that can be read by a computer. Are you admitting that if a piece of paper with a new recipe can be read by a computer then that piece of paper should be patentable?

    If not, then please explain the difference between such a piece of a paper with some dots on it that a computer reads (which causes it to do something different than if it hadn’t read the paper) and a disk with some dots on it (which causes it do something different than if it hadn’t read the disc).

    And if you can’t explain the difference, then just say so. Please don’t kick dust in my eyes like so many others have.

  19. 49

    broje “I’ve seen a company get and enforce a patents on a method of manufacturing a sandwich. Why should software be slighted?”

    Wow, you really got me there.

  20. 48

    “Are you accusing the entire patent world, except yourself and a few other extremists, of intellectual dishonesty?”

    Yes.

    “That says more about you than us, MM.”

    No, it just says that I’m honest and consistent. Funny how “accusing” the CAFC and BPAI of intellectual dishonesty somehow makes me an “extremist” but when software patent wankers do it, it just makes them “principled”. Or something.

    “Show me a computer that can OCR any (reasonable) recipe printed on paper, parse and understand the steps involved, and perform it.”

    Why would my computer have to understand “any reasonable recipe”? Don’t move the goalpost.

    The issue is computer-readable instructions. Computers can be programmed to read instructions written on paper and convert those steps into basic mechanical movements(“mix” “pour” “shake”). Are you seriously denying this? How old are you?

    You see, David, you have to be able to admit this basic stuff or you end coming across like a lying tool, trying to cover up your shortcomings. You dug yourself a hole. A mature person knows how to climb out. The first step is to admit that you are in the hole. The next step is to ask for help. “Good lawyers would understand this,” as you might say.

  21. 47

    Suppose there is a music box with a modular gearbox interface. You can make new arrangments of gears inside a box, connect them to the interface, and causee the music box to perform musical pieces differently. One new box of gears makes the music box invert musical phrases. Another casues the music box to play every fourth stanza backbards. Leaving the issues of novelty and non-obviousness aside, surely we can agree that the gearboxes are patentable subject matter.

    Why, then, should instructions that, when connected to a computer, cause the computer to behave in a certain way, not be patentable? If the computer had a programming interface that accepted an electronic circuit instead of machine instructions, would you agree that the electronic circuit that casues the computer to play music differently is patentable? The computer is a box of reconfigurable electronic oparts, and the machine instructions specify the electronic circuit into which the computer should reconfigure itself.

    So, if a computer is configured to read a human readable recipe on a piece of paper, compile those instructions into machine code, and make the dish, then the human readable recipe written on the piece of paper is a design for an electronic circuit. When you claim that recipe together with that machine, it should be patentable.

    And why not? I’ve seen a company get and enforce a patents on a method of manufacturing a sandwich. Why should software be slighted?

  22. 46

    MM wrote:

    “David, computers that could read and perform instructions written on paper — including recipes — are rather old.”

    Really? Recipes are usually written in prose – a natural language. Show me a computer that can OCR any (reasonable) recipe printed on paper, parse and understand the steps involved, and perform it. I don’t think such a computer could be built even today.

    “Software **is** the exception to the rule against patenting printed matter, David, for the reasons I articulated above. Please show some candor and admit this.”

    Malcolm, you do realize that in addition to the entire patent bar, the entire USPTO (excepting yourself and maybe a few other examiners) and CAFC disagree with you, right? The Beauregard claim style is incontestibly valid, with a mountain of backing cases. Even Cornea-Hasegen affirmed the Beauregard claim style.

    Are you accusing the entire patent world, except yourself and a few other extremists, of intellectual dishonesty? That says more about you than us, MM.

    – David Stein

  23. 45

    DS “A recipe does not perform itself.”

    Either does software.

    “if the medium contains a program configured to perform a useful operation when executed on a computer”

    David, computers that could read and perform instructions written on paper — including recipes — are rather old.

    “printed matter exception”

    Software **is** the exception to the rule against patenting printed matter, David, for the reasons I articulated above. Please show some candor and admit this. Otherwise you are simply spinning and obfuscating in a very transparent fashion.

  24. 44

    “Software is inherently a new use for a computer.”

    Software is not a “use”. That is false and it’s so grammatically incorrect and offensive that it’s falseness pretty much shouts itself out at anyone who isn’t invested in the fantasy.

    New software is old matter with new instructions written on it. Case law that indicates otherwise is, quite simply, “made up” to please the computer industry. I don’t understand why certain commenters fail to recognize this fact. There’s nothing surprising about it. What appears to surprise the commenters is that this exceedingly generous gift is being taken away and, like those unfortunate to be trapped in a room when a baby is deprived of its pacifier, we must endure a bit of cheap, dramatic theatre.

  25. 43

    “I can not patent a piece of paper with a novel, non-obvious recipe written on it.”

    Right – because of the printed matter exception. A recipe does not perform itself. Even more broadly, if your computer-readable medium contains ANY information that is simply read and utilized by a human (even source code that is simply static and non-functional), then it will receive a printed matter rejection.

    By contrast, if the medium contains a program configured to perform a useful operation when executed on a computer, then it is not rejectable under the printed matter exception.

    This logic pervades the entire history of the Beauregard claim style, including borderline cases like In re Bradley and In re Warmerdam. And the legal principles are applied very predictably and consistently – until Cornea-Hasegen.

    I honestly don’t see your point, MM.

    – David Stein

  26. 42

    MM said, “Your agenda, David, appears to be to find a way to maximize patent protection for software developers regardless of what the law says.”

    But it is you, MM, who ignore the law that software is patentable. Even the statute specifies that a new use for a known article is patentable. Software is inherently a new use for a computer. But you have stated in the past that you would never agree that ANY software is patentable. Talk about an agenda.

  27. 41

    “The courts have interpreted the Beauregard claim style in a specific, predictable and straightforward manner”

    No, David, that is false. I can not patent a piece of paper with a novel, non-obvious recipe written on it.

    If Beauregard claims are “precedential”, then I should be able to patent a piece of paper with a novel non-obvious recipe written on it.

    So now what are you going to do, David? Change your argument, or lie?

    You see, you can’t have it both ways. You are trying very hard to do so. But you are failing.

    “You learn that sort of thing in law school, MM…”

    Another thing I learned in law school is when and how to admit an unfavorable fact, David.

  28. 40

    Night Writer wrote:

    “David Stein you might want to listen to Judge Moore discusses the points you bring up. Follow the link above. At about 20 minutes in she says that she could not hold that a mental process on a machine is not 101 because of Diehr and State Street. She said that she could not hold that software was not patentable because that would be going too far.”

    True, and good to hear. But I’m skeptical of such conservative claims after the statement in the Bilski majority that it refused to create a blanket exception for the patentability of business methods… followed immediately by a definition of the word “method” that did just that.

    Similarly, I’ll be little comforted by repeated claims that there isn’t a patentability exception for software, if trends in 101 law make such protection so narrow as to be worthless. And I think Classen moves the ball further in that direction by (1) expanding the scope of method claims to which Bilski will be applied, (2) sanctioning a piecemeal application of Bilski, and (3) further restricting the standard of “transformation of a physical article.”

    ===

    “Earlier David, you had discussed how to write computer inventions to try to hedge against 101 issues.

    Here is what I am doing:

    (1) Particular machine: I put in there language that it could be implemented by a special purpose chip. I also make sure to put in there a diagram of a computer architecture that includes a block that could be a specially designed chip.

    (2) Transformation: I put in there a tie between transformations the software is making and real world objects. Generally this isn’t in the claims but is in the specification so that I can amend the claims later.”

    I agree with you on the second one. In general, it seems kind of silly to craft today’s claims around today’s law, when the app probably won’t even get a first review for at least four years! So I agree with you that we should submit a broad specification that will support any type of claim style that might be allowable when prosecution begins in earnest.

    However – I’m not as upbeat about the first point. For your average novel software method – e.g., a new encryption method or video codec – do you really want to restrict it to a hardware implementation, where at least part of the logic is performed by specialized hardware? How many software companies dispense a USB dongle, or specialized processing board, implementing part or all of their software invention?

    And according to Cornea-Hasegen, even “specialized” hardware may not be enough. Think about 3D hardware, with tons of hardware serving as rasterizers and frame buffers and pixel shaders and multi-stage rendering pipelines… even tying your claim (specifically!) to a component on the card may not be allowable. Granted, Cornea-Hasegen was “non-precedential” – but that only means that the BPAI is just testing the waters, and will probably apply the same logic in future cases.

    What I’ve been doing – in addition to crafting better method and Beauregard claims – is crafting a system claim, and a parallel system figure, showing the components of the invention interrelated and operating as a system. I think this makes the point (either tacitly, or with explicit support from the specification) that each element of the system can be implemented either as hardware or software.

    I don’t know if that tactic will fly – but in the bizarro world of Bilski, nothing is certain, so we may as well throw in the kitchen sink. :(

    – David Stein

  29. 39

    “Your agenda, David, appears to be to find a way to maximize patent protection for software developers regardless of what the law says.”

    Wrong. I simply want a framework that my clients may utilize in a predictable and efficient manner.

    And in truth, I care less about what that system IS than about how certainly I can advise my clients. If a blanket exception to patentability were carved into section 101, that would be a much better result than Bilski. I’d rather be able to tell my clients “don’t waste your money – you won’t get a patent,” rather than “I’ll try my best, but we may not get a patent out of this, because the system is acting very arbitrarily.”

    “Then you want to see all Beauregard claims invalidated. Right, David?”

    How does that follow? The courts have interpreted the Beauregard claim style in a specific, predictable and straightforward manner (even after Bilski – see Ex parte Bo Li)… all the way until Cornea-Hasegen.

    More broadly – I think Beauregard claims are a thing of the past, simply because software is much less often distributed on a physical medium. Once we get past (i.e., overcome) Bilski, I’d love to see additional efforts to get “signal” claims patented – simply because if a competitor chooses to infringe my client’s patent by distributing software via a file server, I’d like to have that infringement directly captured, even if the server is set up abroad.

    “Oh, so you only comment about cases in which you have ‘a real interest in the direct outcome’? So you have ‘a real interest in the direct outcome of Classen’? That explains a lot.”

    Classen isn’t my client either.

    Do you not understand the difference between “the direct outcome of the case” – i.e., the disposition of the dispute among the parties – and “the precedent set by the case?” You learn that sort of thing in law school, MM… is this an admission that you didn’t attend (or at least, graduate from) law school?

    – David Stein

  30. 38

    Argues with MM wrote:

    “So, David — you are fine with the rejection of the claim under the mental steps doctrine?

    I thought the mental steps doctrine was if *all* the steps were purely mental, then the claim was non-statutory.”

    Actually, yes – to both points. First, I agree that the mental steps doctrine only applies if ALL of the steps are mentally performable (if reasonably so… i.e., the RSA algorithm *might* be mentally calculable by a savant, but that’s not the point.)

    One point that the CAFC raised in the oral argument is that the applicant sort of admitted (in the specification, in depositions, at bar, etc.) that “immunizing” may involve reading studies of immunization of individuals and animals reported in other journals. Thus, the “immunizing” might mean, “reading about and others’ immunization studies.”

    I don’t necessarily agree with this – but at least it makes sense to me, and I can advise my clients how not to fall into the same trap.

    – David Stein

  31. 37

    DS “MM, these aren’t my clients – I have no real interest in the direct outcome of these cases.”

    Oh, so you only comment about cases in which you have “a real interest in the direct outcome”? So you have “a real interest in the direct outcome of Classen”? That explains a lot.

    It is remarkable to me that anyone other than the attorney or the applicant would refuse to acknowledge that any of the claims in last night’s post might be junk, under Bilski or (just as likely) under the case law before Bilski. What is the deal, David? What’s really going on?

  32. 35

    “My problem is that Bilski is not developing into a logical, predictable legal framework ”

    Then you want to see all Beauregard claims invalidated. Right, David?

    Just admit it, then I’ll start paying attention to your alleged concerns about “logical predictable legal frameworks.”

    Otherwise you seem to be another one of those folks who wants to have his cake and eat it too.

  33. 34

    DS “The CAFC and BPAI are completely ignoring that half of the equation… simply because it doesn’t suit their agendas.”

    The agenda of the CAFC and BPAI is applying the law and making sure that the patent system is being exploited for the benefit of a handful of gameplayers at the expense of the vast majority of the non-filing public.

    Your agenda, David, appears to be to find a way to maximize patent protection for software developers regardless of what the law says. That’s why you complain about alleged lapses in the logic of Bilski, but never about the complete absense of a legal justification for the validity of Beauregard claims.

    I’ve noted it before and I’ll note it again: valid patents are being issued all the time. Real inventions are being invented all the time. I don’t have a problem with that. I do have a problem with the granting of patents on trivial abstract junk in response to industry lobbyists and their fleas crying that without such patents millions of people will die tomorrow, or the US will be taken over by China.

  34. 33

    MM wrote:

    “The kneejerkers who rush to defend claims like Classen’s (which is DOA regardless of the 101 issue)…”

    MM, these aren’t my clients – I have no real interest in the direct outcome of these cases. If the CAFC had rejected these claims under a proper application of 102, 103, 112, or even a time-honored principle of 101 (such as a direct application of the mental steps doctrine), I would have applauded its jurisprudence.

    But that’s not what they’re doing, MM. Bilski is becoming a huge swamp of undefined terms (such as “particular,” “physical,” and “insignificant”) and contradictory requirements (such as rejecting a claim that fails to specify an algorithm, and also rejecting a claim that recites an algorithm on the basis of preemption.)

    My problem is that Bilski is not developing into a logical, predictable legal framework that I can use to guide my practice of drafting patent applications. It is developing into an inarguable and unpredictable black hole into examiners, the BPAI, and the CAFC can push applications that they don’t like, without really telling anyone how such an invention MIGHT HAVE been claimed in a patentable manner (at least under 101.)

    There is no positive guidance. There is no definitive test that we can utilize whilst crafting claims. There is only a growing number of subjective, incontestible reasons why our client’s application wasn’t allowed.

    – David Stein

  35. 32

    So, David — you are fine with the rejection of the claim under the mental steps doctrine?

    I thought the mental steps doctrine was if *all* the steps were purely mental, then the claim was non-statutory.

  36. 31

    “Take a listen to the oral argument at approximately 10:30 minutes into the argument at which time Judge Mooore turns to the § 101 issue and ties it together with mental steps.”

    Interesting discussion. And I agree with the CAFC’s clear point in this portion of the oral argument: apart from the immunizing, the entire claim can be mentally performed.

    I’d be perfectly fine with that type of rejection. I wasn’t a big fan of LabCorp v. Metabolite, and I agree that

    Here’s my problem: The word “Bilski” shouldn’t have been uttered here – the CAFC should simply have relied on the mental steps doctrine as a traditional, long-honored 101 concept.

    By folding this method into Bilski, the court did not actually reject the claim under the mental steps doctrine. Instead, it founded its rejection on two concepts:

    (a) that this method – and more broadly, any and every medical method – must involve some sort of tying to a machine (even after excluding the “insignificant post-solution activity” steps); and

    (b) that this method – which involves an immunizing of animals, and the manipulation (transformation) of data representing the condition of the animals’ immune systems – somehow does not involve enough “transformation of a physical article.”

    Both of these principles add even more nonsense to the ever-increasing scope of Bilskizilla.

    – David Stein

  37. 30

    David Stein you might want to listen to Judge Moore discusses the points you bring up. Follow the link above. At about 20 minutes in she says that she could not hold that a mental process on a machine is not 101 because of Diehr and State Street. She said that she could not hold that software was not patentable because that would be going too far.

    Earlier David, you had discussed how to write computer inventions to try to hedge against 101 issues.

    Here is what I am doing:

    (1) Particular machine: I put in there language that it could be implemented by a special purpose chip. I also make sure to put in there a diagram of a computer architecture that includes a block that could be a specially designed chip.

    (2) Transformation: I put in there a tie between transformations the software is making and real world objects. Generally this isn’t in the claims but is in the specification so that I can amend the claims later.

  38. 29

    DS “It’s that old saying again: “when you give a kid a hammer, everything becomes a nail.”

    I saw that post, David. Can we try for a bit more honesty, David? At least one of those three cases included a claim to a pile of pure abstraction, i.e., “obtaining data” and “determining” a statistically derived feature of the data.

    The kneejerkers who rush to defend claims like Classen’s (which is DOA regardless of the 101 issue) seem incapable of appreciating that, at least in some cases, there might be patentable inventions to be found in the specifications of these applications. Neither I nor anyone else is advocating for the demise of patents on novel, non-obvious diagnostic methods. What I would like to see, however, is method claims that are unambiguously limited to a series of well-defined physical steps. Patents were never intended to cover methods of “thinking new thoughts” about old acts (or new acts) but a lot of practitioners seem to have gotten very sloppy over the years (and most Examiners slept right through it).

  39. 28

    broje wrote:

    “Can you explain to me how to enforce such a claim against a savy, intentional infringer?”

    The CAFC and BPAI are completely ignoring that half of the equation… simply because it doesn’t suit their agendas.

    The types of claims for software inventions that the CAFC and BPAI are willing to grant are much more difficult to enforce against infringers. If a software method is required to include a specific algorithm, and to be claimed as a process that’s actually running on a very specific machine… then even if a competitor exactly implements the invention according to the patent, the only direct infringer is the competitor’s customers. And the design-around possibilities are endless: a competitor can avoid Beauregard claims by distributing software as a “signal” via a webserver, avoid other claims by introducing a slightly different runtime mechanism, and argue for the invalidation of everything under Bilski.

    Of course, that’s what Newman wrote in her Bilski dissent. And the majority had – and has – no answer to that problem. Judge Michel is less concerned about reality than about philosophical discussions of the definition of a “method”… and about not getting reversed by SCOTUS.

    So the application of Bilski by the USPTO and CAFC is turning software patenting into software copyright… albeit a much more expensive, protracted, and uncertain version thereof. I don’t think they really care.

    – David Stein

  40. 27

    David Stein,

    “OK – so why wasn’t it rejected under the mental steps doctrine?”

    Take a listen to the oral argument at approximately 10:30 minutes into the argument at which time Judge Mooore turns to the § 101 issue and ties it together with mental steps:

    link to oralarguments.cafc.uscourts.gov

    Comparison and rocognition steps are mental steps.

  41. 26

    broje,

    “I would like it very much if WCG, and others who agree that there is an additional step needed in response to the results of the comparison, would propose some examples of the types of steps that would satisfy the requirement of significant post solution activity.”

    See my reponse at 11:22 AM.

  42. 25

    WCG wrote:

    “What the heck is the ‘determining’ method claim? In this case, it is a mental process. Why? Because as claimed, it merely compares after a transformation is made. As broadly written, a person making a mental comparison may infringe the claim.”

    OK – so why wasn’t it rejected under the mental steps doctrine? Or under 112, since there doesn’t seem to be any type of actual “determination” in this “method of determining?” Or even better – why didn’t the examiner dig up some prior art? (My gut instinct, without having read the spec, is that research labs must perform this type of analysis very frequently.) I doubt anyone would have batted an eyelash over any such rejection.

    Instead, we get more Bilski nonsense. Rather than discussing the substance of the claim, the CAFC rejected it because it didn’t fit its “mold” for a method claim. And the CAFC’s rationale is nonsense: in addition to “transforming” the actual animals, doesn’t the data processed by the algorithm relate to a very physical characteristic – the immunization status of the animals?

    – David Stein

  43. 24

    I would like it very much if WCG, and others who agree that there is an additional step needed in response to the results of the comparison, would propose some examples of the types of steps that would satisfy the requirement of significant post solution activity. For example, would it be sufficient if one adjusted the schedule based on results of the comparison and perfomed the immunizing step again for a new control group using the adjusted schedule?

    In this and similar cases, can we also discuss why it becomes extremely easy for intentional infringers to avoid infringing such a claim by outsourcing a portion of the steps outside the USA? Can we ever agree that patent holders absolutely need to be able to obtain claims that do not recite the post solution activity, or else need a significant change in the law regarding the need to identify a direct infringer? If not, why not? Can you explain to me how to enforce such a claim against a savy, intentional infringer?

  44. 23

    West Coast Guy nailed it.

    There’s really no need to rehash any of this. Classen’s invention stinks and the claim as written is garbage for all the reasons articulated in the previous thread on this subject.

    Some confused person wrote: “You can’t dissect just eliminate the steps of the claim that pass the Bilski test to reach your desired result.”

    A few commenters keep repeating this baloney over and over. They are wrong for a simple reason: you can’t turn a non-statutory claim into a statutory claim merely be reciting a “transformation” that is unrelated to what the applicant is attempting to claim. Common sense and reason applies here, as elsewhere. These hard and fast rules some commenters are clinging to simply do not exist.

    I’ll put it this way again: you could insert a step of “wherein said user breathes oxygen” into **any** non-statutory method. It’s a transformation, beyond any doubt. It’s also a limitation. But it won’t make a crxp claim statutory.

    “I don’t know why you are fixated on the comparing step and the preamble. You’ll have to get over that on your own.”

    I don’t think WSG or myself will have to get over anything. As of this moment, it’s you and Classen that have to get over it. Learn how to draft decent claims.

  45. 22

    WCG wrote:

    “Question: What is the holding of Bilski?
    (1) That the entire claim transform a particular article into a different state or thing? or
    (2) That just one element transform a particular article into a different state or thing?”

    Excellent question.

    On its face, Bilski indicates that the CLAIM must be adequately tied or relate to a physical item. But that’s not how the BPAI appears to be applying it.

    Did anyone see the post here at PatentlyO that was up for a while last night, and then pulled? – the one that summarized three recent BPAI decisions that rejected apps under Bilski? One of the cases involved this same tactic of tearing one element out of the claim as “insignificant,” and then rejecting the rest of the claim as inadequately tied.

    It’s that old saying again: “when you give a kid a hammer, everything becomes a nail.”

    The BPAI is going to twist Bilski in every which way to reject anything it wants under 101 (and not just methods!) It has several new tools in its shiny toolkit… powerful phrases like “*insignficant* post-solution activity” and “not tied to a *particular* machine.” The starred words are particularly harmful because they are impossible to define, so the BPAI can apply them (and is doing so) in a conclusory manner.

    “Algorithm” is another sticky point. So looking past the small problem that neither the BPAI nor CAFC can define an “algorithm”… should the claim recite an algorithm or not? In one recent case, the BPAI rejected a claim because it included an “unspecified agorithm.” But in another recent case, the BPAI rejected a claim because it “preempted every known use of the [recited] algorithm.” It’s an unwinnable situation.

    This overall scenario will continue until the patent bar makes a strong argument that the USPTO is applying a tacit, categorical exception to patentability for software. That’s directly contrary to the clear and expressed intent of the CAFC in Bilski. But of course, the CAFC utilized the very same tactic in Bilski viz-a-vis business methods: despite its express refusal to create a categorical patentability exception for business methods, it defined “method” in a way that does exactly that. The CAFC would be hypocritical to criticize the BPAI for stealing a page out of its own playbook. Sauce for the goose…

    – David Stein

  46. 21

    What the heck is the “determining” method claim? In this case, it is a mental process. Why? Because as claimed, it merely compares after a transformation is made. As broadly written, a person making a mental comparison may infringe the claim.

  47. 20

    Argues with MM,

    A re-write from my previous post of 12:50 PM. I apologize for choosing the wrong Bilski language for my argument.

    Beginning again…

    The claim is not claiming a method for immunizing mammals. The claim claims a “determining” method.

    “You’ve read the “immunizing” step out of the claim for your analysis.”

    I disagree. I am looking at the claim as a whole and not fixating on a part of the claim. My focus is on the substance of the whole claim and not the form of a single element of such claim.

    Question: What is the holding of Bilski?

    (1) That the entire claim transform a particular article into a different state or thing?

    or

    (2) That just one element transform a particular article into a different state or thing?

    As I read Bilski, the focus is on the claim in its entirety and not merely one element. In other words, it is substance of the claim and not the form of a mere element.

  48. 19

    Argues with MM,

    The claim is not claiming a method for immunizing mammals. The claim claims a “determining” method.

    “You’ve read the “immunizing” step out of the claim for your analysis.”

    I disagree. I am looking at the claim as a whole and not fixating on a part of the claim. My focus is on the substance of the whole claim and not the form of a single element of such claim.

    Question: What is the holding of Bilski?

    (1) That the entire claim be tied to a particular machine or apparatus?

    or

    (2) That just one element be tied to a particular machine or apparatus?

    As I read Bilski, the focus is on the claim in its entirety and not merely one element. In other words, it is substance of the claim and not the form of a mere element.

  49. 18

    “that at least the claim limitation of “immunizing mammals” is a qualifying transformation of matter.”

    I agree

  50. 17

    “You’ve read the “immunizing” step out of the claim for your analysis. At least under current law, you can’t do that.”

    I thought that you can do precisely that when it’s “insignificant post-solution activity.” The petition does not appear to discuss that issue.

  51. 16

    WGC,

    You’ve read the “immunizing” step out of the claim for your analysis.

    At least under current law, you can’t do that.

    I don’t know why you are fixated on the comparing step and the preamble. You’ll have to get over that on your own.

  52. 15

    WCG said, “You are not claiming a method for immunizing mammals. You are claiming a “determining” method of which the last element is a mere comparison element … I would suggest, however, the § 101 rejection could be overcome by some action subsequent to “comparing” element.”

    I just want to point out that the order in which the method claim elements are recited does not dictate a sequence in which they are performed. Let’s look at the claim again.

    “1. A method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals, relative to a control group of mammals, which comprises:

    immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule, and

    comparing the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder, in the treatment group, with that in the control group.”

    There’s no limitation that the incidence, prevalence, frequency, or severity of the chronic immune-mediated disorder or the level of marker of such a disorder in the treatment group is not compared with that of the control group BEFORE the immunizing of the mammals according to the schedule.

    Of course, such an order of steps seems silly on its face in this context. But I want to make sure that we are not confused about this point of claim interpretation. It’s not that I think that you are confused about it, WCG, but I think a noob could be mislead by your post to think that there is a mandated sequence of steps due to the order in which they are recited. And with court briefs citing blogs these days …

  53. 14

    102 and 103 are sufficient to handle this,

    “So now we’re going to hold claims that transform a physical object invalid under 101 if a single claim step is not tied to a particular machine or transformative?”

    Dr. Classen does not claim a transformation. He claims a determination which concludes with a mental process of “comparing.”

    Dr. Classen’s invention can definitely pass 101 muster if re-written, but the claim has to claim something that tied to a particular machine or transformative — not merely one subset (i.e., an element) of the claim.

  54. 12

    Argues with MM,

    You are not claiming a method for immunizing mammals. You are claiming a “determining” method of which the last element is a mere comparison element.

    The mere insertion of a transforming element does not change the claim that is claimed. To do so places form over substance — a tactic which courts in general disagree.

    I would suggest, however, the § 101 rejection could be overcome by some action subsequent to “comparing” element. For example, the “comparing” element could be following by a third element could be drafted as the following:

    “generating data representative of the incidence, prevalence, frequency or severity of said chronic immune-mediated disorder or the level of a marker of such a disorder as a result of said comparison.”

    Also, the preamble of the claim could be written as “A method for generating data represenative of an immunization schedule that affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals…”.

    Here, both my third claim and preamble trasnforms a non-immunized mammal into a data set representative of a immunized mammal.

  55. 11

    step back wrote:
    I don’t understand how Newman J., of all people, can be voting this way (against the inventor).
    Is it her hope that the Supreme Court will “smack” her down and thereby smack Bilski away?

    Yesterday, Jaoi wrote
    …this is America in the 21st Century – Judges can and do anything they dam well please.

    When you pair Newman with Moore, you get some real corker opinions. Here’s another example:

    link to cafc.uscourts.gov

  56. 9

    WGC,

    So what is your point? You can’t dissect just eliminate the steps of the claim that pass the Bilski test to reach your desired result.

    FWIW, here’s step one of the claim:

    “immunizing mammals in the treatment group of mammals with one or more doses of one or more immunogens, according to said immunization schedule”

    If this step passes Bilski, then this is 101 subject matter.

    Now go kill it off with 102, 103, or 112.

  57. 8

    “That element is not the one that is troubling under § 101.”

    So now we’re going to hold claims that transform a physical object invalid under 101 if a single claim step is not tied to a particular machine or transformative? Or we’re going to perform some sort of utility analysis of what the claim is “really” directed to, based mostly on the final step of the claim? That would invalidate any process claim with a determination step, even if the remaining steps transform something.

    The simple fact here is that the claims in Classen transform an animal. They DO NOT preempt a schedule determination or any “formula” in the abstract. Rather, they preempt only an immunization coupled with a determination.

  58. 7

    Listening to the oral argument, Dr. Classen’s argument focusing on the “immunizing” element is indeed a red herring. The offending element is the final element of “comparing.”

    Take a listen to the oral argument at approximately 10:30 minutes into the argument at which time Judge Mooore turns to the § 101 issue:

    link to oralarguments.cafc.uscourts.gov

    Comparison and rocognition steps are mental steps.

  59. 5

    The claim at issue is a method claim for “determining.” In other words, it is merely a formula of which the last step is “comparing.” There is no subsequent action after the comparison, e.g., generation of results, presenting such results, etc…

    I am sorry but since when is a formula patentable? The method isn’t the application of a formula to attain a useful result. The method isn’t a generation of data which provides the results and presents those results to the recipient.

    Are far as I know, applications of formulas are patentable but formulas are not.

  60. 4

    In my opinion, Dr. Classen’s argument is a red herring trying to focus the attention of the full court on the “immunizing” element. That element is not the one that is troubling under § 101. It is the “comparing” element which follows the “immunizing” which fully fails to be tied to a “machine or apparatus.”

    While immunization does transform the mammal from an un-immunized one to an immunized one, the claim is not a method of immunization; it is a method of determining by comparing results.

  61. 3

    When I am immunized I am transformed into a different state, i.e., I am now immune to something that would have previously made me sick or killed me. However, this claim isn’t to a method of immunizing…it’s to a method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-mediated disorder in a treatment group of mammals. So, the patentee’s argument seems akin to arguing that a method of managing a construction project is patentable subject matter if it recites a step of performing the construction. It’s still a business method claim, either way.

  62. 1

    I don’t understand how Newman J., of all people, can be voting this way (against the inventor).

    Is it her hope that the Supreme Court will “smack” her down and thereby smack Bilski away?

    (‘Throw me anywhere but not in the Briar patch Mr Farmer, I beg you’ –Briar Rabbit)

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