Bilski v. Kappos

Although Bilski's claims were held unpatentably abstract, the Supreme Court has re-affirmed that the door to patent eligibility should remain broad and open.

Bilski v. Kappos (Supreme Court 2010)(08-964)

The Supreme Court has issued its opinion in Bilski v. Kappos. In the decision, the Supreme Court affirmed that Bilski’s risk-management method was not the type of innovation that may be patented. However, rather than using the Federal Circuit's "machine-or-transformation test", the court simply relied on prior precedent to find the claimed method unpatentably abstract. Justice Kennedy authored the majority opinion. Justices Breyer and Stevens both wrote concurring opinions.

Business as Usual: In general, the opinion offers no clarity or aid for those tasked with determining whether a particular innovation falls within Section 101. The opinion provides no new lines to be avoided. Rather, the outcome from the decision might be best stated as "business as usual."

Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

By refusing to state any particular rule or categorical exclusion, the Court has almost certainly pushed Section 101 patent eligibility to the background in most patent prosecution and litigation.

Business Methods: Section 101 does not categorically exclude business methods from patentability. Rather, the court noted that the prior-use defense found in Section 273(b)(1) of the Patent Act "explicitly contemplates the existence of at least some business method patents. . . . [B]y allowing this defense the statute itself acknowledges that there may be business method patents."
Software: Although the court expressly refused to rule on the patentability of software, it appears that software will largely remain patentable. At minimum, the decision would bar any categorical exclusion of software patents. The court neither endorsed nor rejected the Federal Circuit's past interpretations of Section 101 — Noting that "nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357."

Abstract Idea: The one thing that all nine justices agreed upon is that Bilski's method of hedging risk was not patentable because it is an abstract idea "just like the algorithms at issue in Benson and Flook."

 

The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.

Petitioners’ remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners’ application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.

It is unclear to me how patent office examiners will be able to apply the test for abstract ideas in any meaningful way. I suspect that they will not. Rather, the best advice for the USPTO is to focus on Section II-A of Justice Kennedy's opinion. There, the opinion recognizes that Section 101 patent eligibility is "only a threshold test." To be patentable, the invention must also "be novel, see §102, nonobvious, see §103, and fully and particularly described, see §112."

What is the test?: 35 USC 101 offers patent protection for "any new and useful process, machine, manufacture, or composition of matter." Here, the focus was on the definition of a "process" because Bilski's patent application was written to claim a method of hedging risk. Although the majority opinion refused to define the term process, it did write that the machine-or-transformation test developed by the Federal Circuit does not define what is (and is not) a patentable process. Rather, the Court held that the machine-or-transformation offers "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible process." As a "clue," the machine-or-transformation test likely correlates with the existence of patentable subject matter. However, some patent claims that fail the test will still be patentable and other patent claims that pass the test will still be ineligible.   

Read the Opinion

397 thoughts on “Bilski v. Kappos

  1. 397

    Software patents should be abolished altogether. Canada is one country, among a growing number of them, that does not allow for patenting of software per se. Because most, if not all major software companies are American, the US government actively lobbying for proliferation of software patents. http://www.pinskylaw.ca

  2. 396

    The Federal Circuit Court of Appeals has defined two good rules for getting and litigating patents, rules that although not without room for argument, bring down the very vague statutory articulation to real world analysis. The US supreme Court has criticized both rules giving explanations that would make Kierkegaard and Nietzsche seem easy to follow.
    The problem is that the Supremes always need to add levels of abstraction to lower courts’ attempts to make laws work.
    The first of these is in the KSR decision in which a nice rule for how to combine references, the TSM rule was criticized and the court said a “flexible TSM” rule was needed. But nobody knows what that means. TSM means that to combine references there has to be some “teaching, suggestion or motivation” expressed in the reference to bring them together. It is and was a good rule for the practical day to day work of the USPTO and the courts, as well as inventors seeking patents.
    Next comes the Bilski case, that was about how to know when an invention falls within the scope of the things allowed to be patentable. The Federal Circuit set out a rule that the invention as claimed had to describe a physical thing or transform some physical thing; it cant be just “thinking”. Here again is a good rule for day to day use in the USPTO and the courts and by inventors. But again the Supreme Court said that’s too restrictive, but they gave no clue on how to figure out what the line is between OK and not OK patenable subject matter. Bilski also dealt with the issue of whether business methods could be patented. Of course the Federal Circuit rule handled this easily because if a business method was executed on a computer, then it met the rule for “machine or transformation”. Reading the Supreme Court decision will make your head spin, we don’t need these fools who have no connection with the real world, making rules for us.

  3. 395

    Perish in holy flame Bilski!

    Posted by: 6 | Jun 28, 2010 at 10:45 AM

    King Arthur: Look, you stoop1d B@st@rd. You’ve got no arms left.
    6: [Having just Used the Holy Flame Hand Grenade of Antioch on Himself] Yes I have.
    King Arthur: *Look*!
    6: It’s just a flesh wound.

  4. 394

    This decision practically means “business as usual”. But what happens to the Bilski company, the applicants of the patent? Are they crying? How much do they care about this decision?

  5. 393

    Now making the rounds courtesy of my pal Hal Wegner and the good Peter Zura, Bahr’s memo violates the law.

    link to 271patent.blogspot.com

    I stole it first!

    Since I be lazy – I’ll steal something from the just_n_examiner blog that says something similar Posted by: ping | Jul 01, 2010 at 10:32 AM

    My scholarly feeling of the day – me quoting me.

    Ida just wish that I had remembered to ask Ned to get me a good ol case cite for it.

  6. 392

    NAl used to “assail” me for “conflating” things. But I’m still doing it.

    NAL was a bit dense in hoping that a Blimey like you could actually learn. It was mildly amusing that she put you in a different class than our pals 6 and sunshine Malcolm (she was right but for the wrong reason – at least 6 and Malcolm aren’t Blimeys).

    Keep the chuckles coming Maxie – picking on Ned can be like visiting an old folks home and taking walkers away. The bully effect only gives a mild joy.

  7. 391

    Don’t worry Maxie, AI is never far.

    In fact if we start a discussion on Section 273, pointing out that it was a Congressional Law that saved Business Method Patents (and not any silly notion like (C)onstitutional (R)ights being upheld), we might be graced with AI’s some more of AI’s ranting.

    With a swoop of a pen (and the right price) Leahy and cohorts can erase those patent (R)ights and the (C)onstitution would keep on humming, not missing a beat.

  8. 390

    AI has left the blog, and NAL has left. NAl used to “assail” me for “conflating” things. But I’m still doing it. I want to know whether Flook conflated 101 considerations with obviousness, and whether SCOTUS, in Flook, is telling the PTO and the courts how to address obviousness.

    Where could the EPO have possibly got the idea of deeming the algorithm to be old? From Flook, I’m now thinking. But, in the face of vitriolic criticism from US attorneys, the EPO recently abandoned that approach to obviousness.

    Now, do Diehr or Bilski say that the Flook approach to 103 is wrong? That’s my question.

  9. 389

    MAX: And when the Bishop of Rome announces it as a fact that the sun revolves around planet Earth? I can deal with it AI, but must I accept that too?

    AI: That is a false and rather dum analogy. The rulings of the USSC is the Law of the land and if you are a US Citizen yes you have to accept it.

    Max: Too right that the court has “ruled”. But how? Four justices out of nine were able at least to express themselves positively against the patent-eligibility of pure business methods. The “majority”, however, were unwilling, or unable, to express themselves in favour of business method patenting. Just you watch, how that “ruling” functions as a “Binding Precedent” on the PTO and the lower courts!

    AI: What the He LL? are you talking about??? Ahhh it does not matter. The speculative rambling of a mad man that lost his cause and his hero. Although MM is still around in other threads.

    MAX:From the history, it is crystal clear that at the time of writing the US Constitution, pure business methods were not “useful arts”.

    AI: If that was so clear then the SCOTUS would have supported the Stern Brief/paper. But Stern was clearly un-useful as his ideas didn’t even get the time of day! LOL!

    MaxI: But think about it…..

    AI: What for?

    The case is over.

    The Supremes have ruled.

    You lose.

    Inventors win!

    I think the overall flavour of the “ruling” is clear enough, You might want to suck on it some more,

    Okay this is where I stop reading. You have been channeling Malcolm Mooney.

    In fact I am out of this blog. My job is done. Everything I wrote and fought for has come true. The SCOTUS has adopted my positions and rejected yours and the entire anti patent crowd is beaten.

    Now feel free to take your last cheap shots cuz whatever you say now wont change a thing. And I wont be around to hear them.

    Actual Inventor winner! 2010 ! 😀

  10. 388

    “Well, the implication is that Flook would have been patentable had it identified the source of the data in the claim.”

    I’ve also heard some people say that Flook can also be distinguished because the Applicant admitted that the process was old, and that the only difference is the algorithm, but that Diehr established that it doesn’t matter if the process is similar to other processes that have existe din the past, so long as the difference affected by the new algorithm is externally observable.

  11. 387

    And when the Bishop of Rome announces it as a fact that the sun revolves around planet Earth? I can deal with it AI, but must I accept that too?

    Too right that the court has “ruled”. But how? Four justices out of nine were able at least to express themselves positively against the patent-eligibility of pure business methods. The “majority”, however, were unwilling, or unable, to express themselves in favour of business method patenting. Just you watch, how that “ruling” functions as a “Binding Precedent” on the PTO and the lower courts!

    From the history, it is crystal clear that at the time of writing the US Constitution, pure business methods were not “useful arts”. But think about it. If the Gang of Four were to decide the Bilski case on the basis that business is not useful, or if the Gang of Five were to write that, how long would they last, in the Court of Public Opinion? So, writing that was absolute anathema for all nine Justices. I bet you that’s what they were thinking though.

    I think the overall flavour of the “ruling” is clear enough, You might want to suck on it some more, and reflect further, before you spend a lot of your own money paying attorneys to write business method patent applications for you.

  12. 386

    Posted by: MaxDrei | Jul 07, 2010 at 02:29 AM: Also, AI, the unattractive statement “Accept it. Deal with it” often reveals more about the writer than the person addressed. Consider for example:

    “The world is flat. Accept it. Deal with it”.

    _______

    The problem with your logic Maxie is that the world is not flat but business methods are patentable subject matter.

    Accept it

    Deal with it

    or not

    But regardless the Court has ruled.

    CASE CLOSED!

  13. 385

    Am I to understand from 6.25pm’s explanatory “technological” above that, in the USA, these days, “technological character” is a pre-requisite of patent eligibility. I must say, this reminds me of the pre-existing established clear EPO 101 test “technical character”.

    Conversely, is AI’s “technological” qualifier misleading and wrong?

    Also, AI, the unattractive statement “Accept it. Deal with it” often reveals more about the writer than the person addressed. Consider for example:

    “The world is flat. Accept it. Deal with it”.

  14. 384

    Posted by: Ned Heller | Jul 06, 2010 at 05:50 PM: AI, be pleased that Business Methods can be made patentable if properly claimed. Now, all we have to do is figure out how to do it.

    Actually is very easy to do. At least for Actual Inventors. Here let me show you…

    1. Any technological process applied to a specific market ( not an entire field) is 101 eligible.

    2. Any technological process for operating a specific machine, or use of a specific apparatus is 101 eligible.

    3. Any technological process for transforming a particular article into a different state or thing is 101 eligible.

    That’s it!

    Now Ned, what exactly is it about the above that you do not understand?

  15. 383

    AI, be pleased that Business Methods can be made patentable if properly claimed. Now, all we have to do is figure out how to do it.

  16. 382

    Hypo: A claim calls for a signal to be made in response to a time out of time limit. Is the coupling of the claim to a time out, or a timer reaching a limit, enough to pass the MOT?

  17. 381

    Ned wrote: “The Supremes merely leave the door open for some other test, but realistically, it will be a cold day in Hades before such a test is devised.”

    Ned, your emotions are clouding your judgement. Here,

    Bilskis did not get his patent simply because he tried to claim both the concept of hedging and the application. It had nothing to do with passing or failing the MoT.

    I personally feel an issue of whether and invention reads on both the concept and application should be a 112 issue but the SCOTUS wants it in 101 so we essentially have 2 test, not one, with room for more.

    Concept or application and M or T.

    It’s that simple Ned.

    Accept it.

    Deal with it.

  18. 380

    Posted by: Malcolm Mooney | Jul 06, 2010 at 01:35 PM: ping: check out Google’s inventive logo today – full of old art put together in a novel way and even performs a method

    News flash: it’s a bunch of screen pixels changing color in a manner which gives the illusion of movement. It’s called “animation” and nothing about the logo is patentable.

    ________

    You are referring to the copyright of the art and possible trademark of the use of the logo. But the process/method that makes it all work is technology that is patentable subject matter. Just ask Justice Kennedy. You lose. Actual Inventors win 🙂

  19. 379

    Posted by: Ned Heller | Jul 06, 2010 at 02:02 PM: Bilski is a very simple case. If a process claim is not directed to a new machine or a new use of an old machine, or the transformation of an article or material into a new state, it is presumptively non statutory.

    _____

    AI: Ned where is that written in the SCOTUS Bilski opinion by Kennedy?

    Seriously, this post Bilski rationalization by the anti patent crowd losers is getting a bit much!

  20. 378

    News flash: it’s a bunch of screen pixels…

    No shi_ sherlock – Malcolm you be one person who takes himself way way too seriously.

  21. 377

    Well, the implication is that Flook would have been patentable had it identified the source of the data in the claim.

  22. 376

    Ned,

    I know what you mean. Flook would also, however, seem to conflict with this section that the CAFC wrote in Bilski:

    In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), p. 963

    “We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.”

    They also point out in Footnote 17 several other cases, including Arrhythmia, that are no longer to be relied upon, but only with respect to the test applied in those cases. Judge Michel said that he thought they make it pretty clear that the tests in those cases were being done away with because the MoT test would achieve the same results with less confusion, and less error below.

    For clarity, let’s review the claims from Arrhythmia:

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

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

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

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

    comparing said value with said predetermined level.

    7. Apparatus for analyzing electrocardiograph signals to determine the level of high frequency energy in the late QRS signal comprising:

    means for converting X, Y, and Z lead electrocardiographic input signals to digital valued time segments;

    means for examining said X, Y, and Z digital valued time segments and selecting therefrom the QRS waveform portions thereof;

    means for signal averaging a multiplicity of said selected QRS waveforms for each of said X, Y, and Z inputs and providing composite, digital X, Y, and Z QRS waveforms;

    high pass filter means;

    means for applying to said filter means, in reverse time order, the anterior portion of each said digital X, Y, and Z waveform; and

    means for comparing the output of said filter means with a predetermined level to obtain an indication of the presence of a high frequency, low level, energy component in the filter output of said anterior portions.

    Let’s also review how the CAFC distinguished Flook in that case:

    In Parker v. Flook, 437 U.S. 584, 591, 198 USPQ 193, 198 (1978) the Court explained that the criterion for patentability of a claim that requires the use of mathematical procedures is not simply whether the claim “wholly pre-empts” a mathematical algorithm, but whether the claim is directed to a new and useful process, independent of whether the mathematical algorithm required for its performance is novel. Applying these criteria the Court held nonstatutory a method claim for computer-calculating “alarm limits” for use in a catalytic conversion process, on the basis that “once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.” Flook, 437 U.S. at 594, 198 USPQ at 199.

    In accordance with Flook, the claims were analyzed to determine whether the process itself was new and useful, assuming the mathematical algorithm was “well known”.

    Compare that to the claim from Flook:

    “1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of

    Bo+K

    “wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises:
    597*597 “(1) Determining the present value of said process variable, said present value being defined as PVL;
    “(2) Determining a new alarm base B[1], using the following equation:

    B[1]=Bo(1.0—F)+PVL(F)

    “where F is a predetermined number greater than zero and less than 1.0;
    “(3) Determining an updated alarm limit which is defined as B[1]+K; and thereafter
    “(4) Adjusting said alarm limit to said updated alarm limit value.”

    The only real difference I see is that the claims in Arrhythmia make it clear that electrocardiogrphic signals are being analyzed, so we know what the data represents. In contrast, the claim in Flook merely says that the process for updating the alarm limit is “involved in a process comprising the catalytic chemical conversion of hydrocarbons,” and does not make it clear what the data represents.

    If that makes you scratch your head, join the club. But note that SCOTUS did not grant Cert in any of the CAFC cases finding these claims were patentable subject matter. And when they did grant Cert in Bilski, they did not contradict the apparent assertion by the CAFC that such claims avoid preemption, and thereby satisfy the MoT test. I’m not saying that it is impossible that SCOTUS will grant Cert in the future when the CAFC says that such claims satisfy MoT and avoid preemption, but I consider it unlikely.

  23. 375

    TINLA, well, well.

    Perhaps that analysis avoids Benson. But Flook? Flook operated on chemical process data. It updated alarm limits. Isn’t that Arrhythmia?

  24. 374

    “and fail the LSAT’s a couple o times. Got any advice on that?

    Fail the LSAT’s, lol, pingerdoodle, are you even a lawlyer that went to school in the states?

  25. 373

    Ned,

    Judge Michel made it clear recently that the CAFC considers the claims in Arrhythmia to pass the MoT test, becase the requirement of a particular transformation is met as long as the claims recite what the data that is being transformed represents.

    I don’t think anyone expects the CAFC to change the outcomes in Prometheus and Classen. The only reason for doubt that I see is if SCOTUS then grants Cert in those cases again.

  26. 372

    Joe, much too cynical.

    Bilski is a very simple case. If a process claim is not directed to a new machine or a new use of an old machine, or the transformation of an article or material into a new state, it is presumptively non statutory.

    The Supremes merely leave the door open for some other test, but realistically, it will be a cold day in Hades before such a test is devised.

    Benson is preserved. Claims that recite a GP digital computer for calculating mathematical algorithms are abstract unless they additionally transform….

    However, Biski’s GVR of Prometheus and Classen throw into question cases like Arrhythmia v. Corrazonix, 958 F.2d 1053, which digitally filtered a signal to produce a number representative of risk of a heart attack. How is Prometheus different, for example? It only produces a number representative of something else.

  27. 371

    ping: check out Google’s inventive logo today – full of old art put together in a novel way and even performs a method

    News flash: it’s a bunch of screen pixels changing color in a manner which gives the illusion of movement. It’s called “animation” and nothing about the logo is patentable.

  28. 370

    “Managing costs” is an abstraction.

    It doesn’t matter if you are managing “weather-related energy price risk costs” or managing “football-related equipment price uncertainty costs” or managing “dogfood-related bone value future costs.”

    Arguably, “managing” itself is an abstraction, although possibly the term could be defined in a manner which would rescue it.

  29. 369

    Another example of how patent law gets screwed over by SCOTUS because SCOTUS only has to examine the worst claims about once every 10 years, and there are at least 100,000 pending applications in the USPTO having similar claims that SCOTUS will never review. An examiner cannot simply reject such claims as “abstract” relying on the Bilski decision, because any applicant with money will simply appeal, causing the examiner to expend even more time on the case. The Board of Appeals will struggle trying to devise a rule of law in its decision that will be appealed to the CAFC, which will try to devise a governing rule to guide examination, and eventually one of these cases will go back to SCOTUS, which will render another inscrutable opinion based on what it perceives as common sense.

    This is one reason I’m glad to be out of active practice. The big bucks clients still want to push the envelope of what is patentable subject matter while paying as little as possible and refusing to listen to any “negative” advice I might offer. This is largely the reason for this huge backlog of pending applications with claims that are nonstatutory and/or are not supported by the written description because the client refused to pay to have it completed and/or are obvious because the client refused to pay for a prior art search.

  30. 368

    >>What a fricking joke.

    If so, 102, 103, and 112 should be able to take it out.

  31. 367

    Bilski’s petition: Even if claim 1 does include the abstract idea of hedging, it is still patentable because the abstract idea is practically applied. Likewise, the mathematical formula in claim 4, which is used to determine the fixed price for consumer transactions, is practically applied as part of a method of managing weather-related energy price risk costs.

    “Managing weather-related energy price risk costs”.

    What a fricking joke.

  32. 366

    Bilski’s petition: Even if claim 1 does include the abstract idea of hedging, it is still patentable because the abstract idea is practically applied. Likewise, the mathematical formula in claim 4, which is used to determine the fixed price for consumer transactions, is practically applied as part of a method of managing weather-related energy price risk costs.

    “Managing weather-related energy price risk costs”.

    What a fricking joke.

  33. 365

    O I get what you actually said Maxie, I think you just didn’t say it well and your assiduous studies of comely 17 year olds got the better of you. Not my business, but you might want to seek help with your, um, studies.

    As to rights (be they of self defense or otherwise), I’ll take the high path and simply state that the rights are for all citizens – it dont matta if you be a hulking brute of a patent attorney or a comely 17 year old patent attorney, or even a decrepit patent attorney with a registration number in the twenties with a penchant for mis-citations and eating your own words.

    As to Alito’s prose, I cannot comment – haven’t read it.

  34. 364

    ping, once again I have failed to make myself unambiguously clear to you. Sad. Here again is what I was thinking.

    Hulking brutes of patent attorneys are less in need of a firearm with which to defend themselves than a comely 17 year old student. So, in your country, under the Alito gold standard, do vulnerable teenagers enjoy a right of self-defence against criminals that are bigger and stronger than them? If not, why not?

  35. 363

    The world is looking there, not here, for this information, unfortunately.

    Yes, cause all great legal minds gravitate to Wikipedia (insert your own follow-on Chuckles remarks here).

    AI,

    I think 6’s announcement was only to get a response from NAL, and it worked – so 6 is a bit
    smarter than you give him credit for.

    6,

    Hey, people gonna latch on to what I gotsa say – just no stoppin the sweet allure of my keen observations. Now all I gotta do is coin a word like “famoosity and fail the LSAT’s a couple o times. Got any advice on that?

    AI’s Dear Diehrist,

    Bilski 14” is kinda catchy, but you aint supportin AI fully just yet. Where’s the (C)onstituional (R)ight support angle, huh? – Here’s a hint: there aint one. Don’t ya get that what tripped the Supremes in 273 was that that section was a Congressional Law and not a Constitutional one? The Constitution gave the power to Congress (and not the Supremes) so the hot potato rightly belongs to Congress and they say Business Methods are in (so sorry Stevens, no red herring for you).

    Maxie,

    Your run-on sentence is a bit amusing – it almost reads that self-defense rights are needed for the person working to become a patent attorney, and who must assiduously study comely 17 year old girls. A little young for my tastes (and the wrong gender for the likes of other posters here).

    btw “peeps” (see RWA – so easy): check out Google’s inventive logo today – full of old art put together in a novel way and even performs a method.

  36. 362

    Happy 4th of July, to all readers.

    Thinking about limits to patent-eligibility, about abstract ideas like “independence” and the right to pack heat in self-defence, about every force having an equal and opposite reaction, and about limits that fit with common sense, can somebody tell me where the limit comes, on this right of self defence.

    I can see that a patent attorney enjoys it. But what about a person who is working assiduously towards becoming a patent attorney and needs to defend herself as she studies: a comely 17 year old girl, for example, or even an angry and confused 14 year old. Where does the limit come?

    I ask because I had thought that the most vulnerable members of society are those who most need to be able to defend themselves.

    I guess the answer lies in that book-length work McDonald v Chicago, but there are other books I must read.

    Any answers here, perhaps?

  37. 361

    You suggest that he read the decision again, but you apparently haven’t finished reading it yourself.

    Posted by: 6 | Jul 03, 2010 at 05:34 PM

    __________

    That didn’t stop you from declaring victory 30 second after the decision was posted and before you had even read one sentence.

    Of course as everyone knows now you were just doing your court jester job and making the usual foool out of yourself.

  38. 360

    Please add an Impact section to the Wikipedia article [[Bilski v. Kappos]] much like that in [[In re Bilski]]. The world is looking there, not here, for this information, unfortunately.

  39. 359

    “The fact of the matter is that the Supreme Court in recognizing that patentable matter is outside the realm of the MoT test means that the Office is foreclosed from using that test for anything but to show eligibility.”

    Your pathetic latching on to pingerdoodle’s misguided nonsense makes me chuckle.

    You suggest that he read the decision again, but you apparently haven’t finished reading it yourself.

  40. 358

    AI’s Dear Diehrist also is correct in addressing Orly as “Mr.” She’s a manster even to an ape like me!

  41. 357

    I’ve come back only to give my support to AI and AI’s Dear Diehrist. It is correct to say that the floodgates have been opened, not all the way, but enough for a good healthy flow.

  42. 356

    Mr. Orly Taitz reprises the same argument as Mr IANAE:

    Cf.:

    but I bet you can’t come up with a single example of a 101-compliant process that doesn’t involve either a machine or a transformation.

    with

    give us an example of a claim that doesn’t pass MOT but isn’t claiming an abstract idea. Give us one of those victorious claims that wasn’t eligible before this decision, but now is.

    I will augment my earlier response:

    Such a bet proves nothing. I will suggest that you read the Bilski Opinion one more time. MoT is not THE test. A Process that is patentable can fail the MoT test. That is the law.

    The fact of the matter is that the Supreme Court in recognizing that patentable matter is outside the realm of the MoT test means that the Office is foreclosed from using that test for anything but to show eligibility. You cannot use a test that fails to capture eligible material as a test to show ineligibility. The test is still a tool and a valuable tool (for establishing eligiblity), but it has lost its legal ability for establishing an applicants loss of his constitutional right to a patent.

    Unfortunately for the Office and the anti-patent crowd, showing eligibility is not a requirement for obtaining a patent. Eligibility is presumed and it is the Office’s role in properly and legally showing ineligibility. As much as the Supreme’s do not want to de-emphasize the test, they have done so – either that or they have shown that the test has been (and with the Bahr memo – continue to attempt to be) misapplied. Once again the Office is trying to offload its duty and burden.

    Not only does Diehr win, modern normal use of the word “process” wins. A wide open 101 wins. Come on in to the patent party!

  43. 355

    If the business method claim was claiming the operation of the machine that performed part of the method or a transformation then it was already sailing through the 101 gates even with the MOT test. The question is, what constitutes a practical application of an abstract idea? Going back to your favorite example, if the concept of providing a reservation is an abstract concept, then is providing a reservation for restroom use a practical application or is it still abstract? Is
    providing a reservation for restroom use on an airplane a practical application or is it still abstract? I think the Supreme Court would hold that all are abstract. However, I think they would hold that a method of operating a particular system installed in the plane to administer reservations for the restroom is a practical application and also satisfies MOT.

    1. A method of providing reservations for restroom use, comprising:

    receiving a reservation request from a user; and

    notifying the user when the restroom is available for his or her use.

    7. The method according to claim 1, wherein said reservations are provided on an airplane.

    If you ask me, the Bilski decision is not a condemnation of MOT as to its usefulness or importance, but only a condemnation of its exclusivity. If your claim passes MOT, then it is likely patent eligible, although SCOTUS leaves open the remote possibility that it may still not be. If your claim doesn’t pass MOT then it is likely not patent eligible, although SCOTUS leaves open the possibility that it may be if it can be shown to not be claiming an abstract idea.

    AI, give us an example of a claim that doesn’t pass MOT but isn’t claiming an abstract idea. Give us one of those victorious claims that wasn’t eligible before this decision, but now is.

  44. 354

    Posted by: Orly Taitz | Jul 02, 2010 at 11:08 PMAI, what do you think about this: “while §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.”

    That sure doesn’t sound like SCOTUS think 99.9% of all business methods are patentable. Maybe 0.999%.

    _______

    All it means when taken in context with the full decision is that you can’t get patents on business concepts like Rich’s example of a Diaper Service. The mere idea of starting a Diaper Service or any type of business is simply a concept, a legal abstraction. Now if you reduce that idea to practice you can get patents on specific applications, operations of machines, and transformations all involved in operating a diaper service. Which means 99.9% of all business methods are sailing right thru those 101 gates!

  45. 353

    Man, AI is extra-frothy on this thread!

    AI, what do you think about this: “while §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.”

    That sure doesn’t sound like SCOTUS think 99.9% of all business methods are patentable. Maybe 0.999%.

  46. 351

    INANE: So what? It’s the law that unicorns are not forbidden in Central Park, but you can’t find me a single one that’s ever been there.”

    First of all cite please. LOL Second so what????

    Its the law that blacks are not forbidden to live in my neighborhood. And for a long time you could not find a single one that had ever lived there. But did that mean the law did not exist, or was not in effect?

    Heck no!

    Actual Inventors now have as the law of the land, DCAT Diehr Concept or Application, and MOT Machine or Transformation. That allows 99.9% of ALL business methods.

    And whether anyone ever applies for a patent using these lawful tests, they still exist and remain the law of the land.

    DEAL WITH IT BABY! 😀

  47. 350

    Posted by: IANAE | Jul 02, 2010 at 10:03 AM: Right. All you need under Diehr is a “known structure” (machine) or a “known … process” (transformation). Just like the Federal Circuit said in Bilski.

    Congratulations, I guess.

    _______

    I can’t believe I missed this tibit of IANAE inane insanity.

    1. Diehr did not require processes to have machines or transformations.

    2. Diehr did not narrow the definition of process to be a transformation

    3. Diehr did not define structure as machine.

    Here read the words of SCOTUS and learn the law of the land, learn it well.

    “(b) The machine-or-transformation test is not the sole test for pat-
    ent eligibility under §101. The Court’s precedents establish that al-
    though that test may be a useful and important clue or investigative
    tool, it is not the sole test for deciding whether an invention is a pat-
    ent-eligible “process” under §101. In holding to the contrary, the
    Federal Circuit violated two principles of statutory interpretation:
    Courts “ ‘should not read into the patent laws limitations and condi-
    tions which the legislature has not expressed,’ ” Diamond v. Diehr,
    450 U. S. 175, 182, and, “[u]nless otherwise defined, ‘words will be in-
    terpreted as taking their ordinary, contemporary, common mean-
    ing,’ ” ibid. The Court is unaware of any ordinary, contemporary,
    common meaning of “process” that would require it to be tied to a
    machine or the transformation of an article. Respondent Patent Di-
    rector urges the Court to read §101’s other three patentable catego-
    ries as confining “process” to a machine or transformation. However,
    the doctrine of noscitur a sociis is inapplicable here, for §100(b) al-
    ready explicitly defines “process,” see Burgess v. United States, 553
    U. S. 124, 130, and nothing about the section’s inclusion of those
    other categories suggests that a “process” must be tied to one of them. ”

    _____________

    Sinking in yet?? Here, read some more!

    ______

    “Finally, the Federal Circuit incorrectly concluded that this Court has
    endorsed the machine-or-transformation test as the exclusive test.
    Recent authorities show that the test was never intended to be ex-
    haustive or exclusive. See, e.g., Parker v. Flook, 437 U. S. 584, 588,
    n. 9. Pp. 5–8.
    (c) Section 101 similarly precludes a reading of the term “process”
    that would categorically exclude business methods. The term
    “method” within §100(b)’s “process” definition, at least as a textual
    matter and before other consulting other Patent Act limitations and
    this Court’s precedents, may include at least some methods of doing
    business. The Court is unaware of any argument that the “ordinary,
    contemporary, common meaning,” Diehr, supra, at 182, of “method”
    excludes business methods. Nor is it clear what a business method
    exception would sweep in and whether it would exclude technologies
    for conducting a business more efficiently. ”

    _________

    The Court of Appeals incorrectly concluded that this
    Court has endorsed the machine-or-transformation test as
    the exclusive test. It is true that Cochrane v. Deener, 94
    U. S. 780, 788 (1877), explained that a “process” is “an act,
    or a series of acts, performed upon the subject-matter to be
    transformed and reduced to a different state or thing.”
    More recent cases, however, have rejected the broad impli-
    cations of this dictum; and, in all events, later authority
    shows that it was not intended to be an exhaustive or
    exclusive test. Gottschalk v. Benson, 409 U. S. 63, 70
    (1972), noted that “[t]ransformation and reduction of an
    article ‘to a different state or thing’ is the clue to the pat-entability of a process claim that does not include particu-
    lar machines.” At the same time, it explicitly declined to
    “hold that no process patent could ever qualify if it did not
    meet [machine or transformation] requirements.” Id., at
    71. Flook took a similar approach, “assum[ing] that a
    valid process patent may issue even if it does not meet
    [the machine-or-transformation test].” 437 U. S., at 588,
    n. 9. ”

  48. 349

    If an objection is poorly reasoned, the applicant should explain why the reasoning is poor and suggest that the objection be dropped.

    I’m not sure that a lot of reasoning is needed, though. At least not in a clear case such as Bilski. It seems self-evident that he merely claimed an abstract idea. (Of course one could discuss for eternity whether financial stuff is “abstract” or not, but the Supreme Court has now decided this: yes it is. Not much to be said anymore.)

  49. 348

    Posted by: ping | Jul 02, 2010 at 05:54 PM: Whereas certain AI’s are just delusional, happy and drunk.

    just went up %100

    100% of zero equals, um, zero.

    ________

    Well Diehr Ping I do believe you are a tad bit jealous. Ha Ha Ha!

    My business checking accounts are far from zero. You see many investors and potential licensees had held up money until the SCOUTUS held up business methods as patentable subject matter.

    Now that Business Method Patents are the officially law of the land the money is flowing, and the living is easy.

    It’s sooooo great to be an Actual Inventor Winner 😀

  50. 347

    You anti patent losers are delusional, bitter, and intellectually punch drunk

    Whereas certain AI’s are just delusional, happy and drunk.

    just went up %100

    100% of zero equals, um, zero.

  51. 346

    Tara Chand,

    “If the Bilski claims were held to be abstract, they can be changed to be not abstract.”

    How is that? Courts don’t issue advisory opinions. For the Court to say “these are abstract but we’ll remand to let you change them so they’re not abstract” is for the Court to issue an advisory opinion. Bilski argued they were patentable, the Court unanimously held otherwise, and he is stuck with the Court’s holding. Finality has been reached.

  52. 345

    Oh, BTW, the value of my Patent Portfolio with Business Method apps just went up %100!!

    Congratulations. So did mine.

  53. 344

    Posted by: IANAE | Jul 02, 2010 at 03:59 PM: AI, you should totally e-mail Tara Chand. Turns out, she also appears to have won Bilski. Unlike you, she filed an amicus brief of sorts, so she probably deserves even more credit.

    I am not AI’s Dear Diehrist but certainly am enjoying his/her posts. LOL. You anti patent losers are delusional, bitter, and intellectually punch drunk. And I am LOVIN IT 😀

    Oh, BTW, the value of my Patent Portfolio with Business Method apps just went up %100!!

    😀

  54. 343

    A Process that is patentable can fail the MoT test. That is the law.

    So what? It’s the law that unicorns are not forbidden in Central Park, but you can’t find me a single one that’s ever been there.

    Until at least one patent is granted or upheld under 101 despite a holding that it fails the MOT test, MOT is coextensive with whatever the legal test happens to technically be.

    AI, you should totally e-mail Tara Chand. Turns out, she also appears to have won Bilski. Unlike you, she filed an amicus brief of sorts, so she probably deserves even more credit.

  55. 342

    but I bet you can’t come up with a single example of a 101-compliant process that doesn’t involve either a machine or a transformation.

    Such a bet proves nothing. I will suggest that you read the Bilski Opinion on emore time. MoT is not THE test. A Process that is patentable can fail the MoT test. That is the law. Not only does Diehr win, modern normal use of the word “process” wins. A wide open 101 wins. Come on in to the patent party!

  56. 341

    There are people who would and already are critical of Bilski. However it is the right decision on subject matter patentability.

    If the Bilski claims were held to be abstract, they can be changed to be not abstract.

    I wrote to each of the nine supreme court justices in February 2010, a three page letter based on my letter to the editor published in the California IP New Matter letter to the editor, earier this year, for a position that the patent subject should be judged from novelty and usefulness and not from a machine or transformation test. It appears that letter had the desired effect. That letter is reproduced below:
    Letter to the Editor:

    The Subject Matter Issue before the US Supreme Court in Bilski.

    I bring my inventive and creativity skills to address this problem of Subject Matter issue of patentability before the US Supreme Court in Bilski. It seems the entire country is worked up and fixated on this ruling. Any decision would have a profound effect on the Intellectual Property arena, for those who create it, those who use it, and for those who defend it, as well as to a competitive economy such as the United States.

    Before I would describe the proposed solution to the Subject Matter issue, it would be prudent to briefly lay down my background so others would know where I am coming from in proposing this solution. I am a non-practicing attorney in California, have a Bachelors in Electrical Engineering, Masters in Systems Engineering, all from prestigious institutions, and have founded and am managing director of an innovation enterprise, after spending many years in the aerospace and defense industry specializing in Systems Engineering. I have filed for and have been issued a large number of patents in a very diverse set of technologies. These range from information and network security, to educational games, useful combination of natural compounds for health and first aid, new forms of encryption, airplane designs, motorcycle safety systems, man machine interfaces in handheld devices, and a system of executive compensation.

    I have read the Bilski Federal Appellate court decision, and am familiar with the Supreme Court pleadings by the parties and most of the friends-of-the-court briefs that have been filed in this case. I have also perused the Bilski oral arguments on November 9, 2009, before the Supreme Court. I can well imagine the complexity of the situation before the Supreme Court Justices and their dilemma in fashioning a solution that does no harm and does a whole lot of good for the country given such contradictory opinions and positions from the large segments of the diverse societal interests, including the USPTO.

    The crux of the Federal Appellate court decision is the same as the crux of the USPTO position. That is, without a bright line for method patents, the USPTO would have a flood of applications of mostly dubious and frivolous nature. The USPTO is not equipped to evaluate method patents and does not have trained examiners and literature to search from. Further, such frivolous applications do not advance the useful art and science and benefit the US economy.

    All the parties to the Subject Matter issue miss the big picture. In some aspects, all of them are right, as each of them has some element of truth. To illustrate, I would take the help of an Indian proverb. Four blind men on touching and feeling four different parts of an elephant, legs, body, tail and the trunk all describe an elephant according to what part of the elephant they have touched. The same is true of the Subject Matter, and it is the elephant in the room.

    Terms such as machine, apparatus, process, transformation, software, business method, or method do not do justice to the issue of Subject Matter. These terms are more or less like the terms that the four blind men would use to describe the Subject Matter, like in the elephant story, as they all miss the mark and allude to a narrow aspect of the Subject Matter issue.

    In Diamond v. Chakrabarty, the Supreme Court approved a new living organism as a Subject Matter of a patent for the first time. An organism, created in the lab that eats crude oil, emits harmless gasses and dies when the crude oil runs out, is a very useful invention for cleaning up after oil spills. A living organism does not fit the definition of a machine or process and the USPTO fought it all the way to the US Supreme Court.

    Let me state my opinion of how the Subject Matter should be defined for the purpose of the patentability. The Subject Matter should be defined in terms of a System, which encompasses any system be that organic, inorganic, or a physical system. All manner of machines, processes and apparatus are a system. The system can be very complex or very simple, and it may come from any discipline of science. For illustration, a steam locomotive is a system, a hammer is a system, a boiler is a system, a calculating machine is a system, a computer is a system, the Internet is a system, and a system that computes FICO score, either manually or via a digital programmable machine is a system. An economic activity is a system, a decision making process is a system, a process of manufacture is a system, and a method diagnosing a disease is a system.

    A system is a tangible thing and is one that is characterized and defined by a set of one or more inputs, set of one or more functions or processes that operate on the inputs and produce a set of one or more outputs.

    Hence, the essential elements of a system are an input, which could be static or time varying or fixed as constants or coefficients and may come from outside the process or from the process itself in a feedback loop, and be stored along with it. The second essential element of a system is a function or a process, which uses the input and produces an output of the function or the process. The terms business method, a method, software, a machine, or a computer are irrelevant to define a Subject Matter as these are merely, in some instances, the parts and pieces of a system from which a system can be constructed.

    In all respects a method is also a system, no matter how the method is performed, by manual steps, or by inputs to a mechanical calculating machine, or an electronic analog machine without software or a generic digital computer machine with software instructions. A system is defined as performing functions or processes using a set of inputs and producing a set of outputs. The terms function and process are interchangeable and can be used differently depending upon which subject matter or the science the invention is for. A system that is novel and non-obvious in terms of its results, that is outputs based on the specified inputs, and the operation of a process or a function on these inputs is worthy of a patent.

    In my opinion, the Bilski application should be judged in terms of a system, and what functions or processes it performs on what inputs and produces what outputs and are these novel and non-obvious. And not what kind of machine it uses, such as an analog, a mechanical, or a digital machine with software instructions.

    There is no room for software, or method, or business method in describing Subject Matter suitable for a patent. Use of terms such as digital machine and steps of such a machine are red herrings in judging Subject Matter suitability.

    There is a bright line in defining Subject Matter suitable for a patent. The bright line is a System which is useful and novel. Any other approach would engender endless arguments among four blind men like in the elephant story, where the four blind men would be analogous to the USPTO, the court system, the parties who favor patents, and the parties who oppose patent protection. Such endless arguments are a great detriment to the innovators and to the US economy.

    By

    Tara Chand, Esq., BSEE, MSEE, CISSP
    Founder and Managing Director
    Internet Promise Group LLC, a high stakes innovation enterprise
    chand@InternetPromise.com

  57. 340

    IANAE,

    “I think some of the judges only addressed business methods at all because the rest of the judges wanted to take advantage of the opportunity to abolish them.”

    That is my take on it. The claims in Bilski comprised of abstract ideas were the wrong ones to decide the law of business methods. Bad claims make for bad case law.

    P.S. Justices — not judges.

  58. 339

    AI: process does not equate to machine or transformation.

    No, they’re not strictly equal, but I bet you can’t come up with a single example of a 101-compliant process that doesn’t involve either a machine or a transformation.

    WCG: was it really necessary for the nine of them to even address business methods?

    I think some of the judges only addressed business methods at all because the rest of the judges wanted to take advantage of the opportunity to abolish them.

  59. 338

    Since the Court determined the claims in Bilski were abstract ideas and affirmed for that reason, was it really necessary for the nine of them to even address business methods?

    Or did they just take advantage of the opportunity to address a hotly contested issue of the patent bar?

  60. 337

    “6: Your post skips the important part. Why? How did you come to the conclusion you did? Could you give an example of a “close call” in your mind under the new ruling?”

    There are no “close calls”, either it is practically a claim on an abstract idea or it is not. It’s a rather simple yes/no inquiry.

    Like max said, if you can sit and write down an abstract idea that is preempt by the claim, save perhaps for some post solution activity, then you have answered the question. And the answer is that the claim fails.

    Now, examiners aren’t bright enough, generally speaking, to be able to do this for all claims. Largely in part because it is exceedingly hard. To the end of simplification we have the MoT test that gives a rough approximation of what covers an abstract idea and what doesn’t. Applicant can rebut, but if the examiner comes back and lays out specifically what the abstract idea is that is preempt then the rebuttal will be worth squat even if it would otherwise be a good rebuttal.

    “Your post seems to amount to, I know it when I see it, which seems completely unhelpful.”

    I do know it when I see it quite often but you’re right, that isn’t all that helpful. Follow the guideline above. First apply MoT, if you pass with flying colors then you’re in the clear. If you just wrote a traditional manufacturing process then you’re also in the clear. After all that, see if you can think of an abstract idea you are attempting to preempt or that it will appear that you are attempting to preempt. If you cannot, then you’re in the clear.

    If you fail any of those steps then you better think about redrafting.

    “I really struggle with the phrase “abstract idea.” The easy examples make sense to me: God, Happiness, Sadness, Laws, Borders. How could you patent these things. However, other examples of abstract ideas perplex me: door, window, and chair. These are also abstract ideas are they not?”

    No they are not.

    “Of course, the court and everyone else must have a different understanding of what an abstract idea is, and I’m just trying to figure out what that is.”

    It’s very easy to figure out what an abstract idea is. State an idea. I have an idea, let’s drive to the white house and shake obama’s hand and while on this drive lets download a THE DARK KNIGHT on my 3G phone. That’s an idea right? How hard was that? You now know what one is.

    To put this in the generalized case, anything you can say “The abstract idea of” before going on to state a legitimate abstract idea is an abstract idea. Don’t be st upid when tacking things onto the end such that the sentence will not make sense and this should work out fine in most cases. Let your sense of whether or not the sentence you wrote makes sense guide you.

  61. 336

    “known … process” (transformation). Just like the Federal Circuit said in Bilski.

    Obviously you did no receive the memorandum Mr. IANAE: What the Federal Circuit said in Bilski was wrong (good study material, though), process does not equate to machine or transformation. Process is what is commonly tought of as “process” and is broader than MoT. Diehr wins!

  62. 335

    “Congratulations, I guess.”

    Exactly. AI’s re tard cousin “Diehrist” is about as bad as he himself is.

    “I don’t know if this is the legally appropriate distinction to make, but I would generally draw the line between noticing/observing/recording something interesting (Mayo v. Prometheus) on the abstract side, and doing something with that information (Diehr) on the concrete side.”

    Dear je sus IANAE, go read Diehr. The “application” language comes right before “may”. And that’s because there are some “applications of general principles” that are patentable. Nevertheless, look to why Diehr was decided the way it was.

    Let me help you out:

    “A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”

    Zing. There you have it.

    But lets go into the decision itself.

    “The court noted that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved. The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products. ”

    The lower court found in the manner the SC would here in a bit and gives its reasons why.

    “That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. ”

    There is clear indication that MoT is passed, hence we already have a strong suggestion that there is no abstract idea being preempt.

    “Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.”

    Furthermore industrial processes were always statutory and thus this too supports patentability.

    “Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both of which are computer-related, stand for no more than these long-established principles. ”

    Nod to B and F as being proper.

    “Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. ”

    And right there is the reason why Diehr was held the way it was.

    You have to do more than “do something” with information.

  63. 334

    “Congratulations, I guess.”

    Exactly. AI’s re tard cousin “Diehrist” is about as bad as he himself is.

  64. 333

    “Congratulations, I guess.”

    Exactly. AI’s re tard cousin “Diehrist” is about as bad as he himself is.

  65. 332

    Notes regarding that “The 101 patent-eligibility inquiry is only a threshold test” – Bilski.

    I think we all agree that the principles, truth exist—whether they have been discovered by men or not, and one should not be allowed to obtain a patent for them. Likewise, one should not be allowed to obtain a patent for a process, otherwise well-known, that directly adapts a principle or truth, including newly discovered, without any inventive efforts.

    But how do we prevent from issuing patents for those processes? §102 is not capable of this mission, for the principles utilized in the processes are newly discovered, and for sure are not, at least explicitly, known or used. Each process as a whole, then, certainly will pass the novelty test under §102 simply because of, without even considering the other elements of the process, the novelty of the newly discovered principles. The Supreme Court appears to have struggled with that question.

    A.

    Justice Stevens emphasized in his dissent opinion in Diehr, while criticizing the majority there for misapplying the law of Flook (which was written by himself),

    the distinction between the subject matter of what the inventor claims to have discovered — the §101 issue — and the question whether that claimed discovery is in fact novel — the §102 issue. If there is not even a claim that anything constituting patentable subject matter has been discovered, there is no occasion to address the novelty issue. Or, … if the only concept that the inventor claims to have discovered is not patentable subject matter, §101 requires that the application be rejected without reaching any issue under §102; for it is irrelevant that unpatentable subject matter … may in fact be novel.

    In Flook, Justice Stevens wrote for the majority

    the process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work, it is treated as though it were a familiar part of the prior art.

    In other words, when determining patent-eligibility of a process utilizing a newly discovered principle, we must assume that the principle is well-known in the art and then determine whether the process itself is new. This determination of the “newness” is under §101, and is irrelevant to the novelty inquiry under §102. (This may make the later novelty test under §102 redundant or unnecessary.)

    The reason is clear: we cannot assume the principle is well-known under §102; the claimed process will certainly pass the novelty test, as stated above. And it is wrong to grant a patent to a process, otherwise well-known, that directly adapts a newly discovered principle without any inventive effort. (An effect, perhaps desired, of this approach is that only the “newness” of the process is determined under §101, but not its “non-obviousness.”)

    B.

    On the other hand, Justices Rehnquist, Burger, and Stewart wrote for the dissent in Flook and for the majority in Diehr, and appeared to believe that no “newness” determination should be made under §101. But they too appeared to realize that the above discussed process should not be granted a patent. So they invented another instrument, i.e. the insignificant post-solution activity determination, in Diehr and then recast Flook under it.

    Then it follows that, in a process, otherwise well-known, that directly adapts a newly discovered principle or truth without any inventive effort, the elements of the well-known process would be insignificant post-solution activities.

    C.

    In Justice Stevens’ §101 test, any mathematical calculation or algorithm, not only principles, would be assumed as new; that means the calculation specifically designed for a curing process in Diehr would also be assumed as well-known. That is perhaps what Justices Rehnquist, Burger, and Stewart had trouble with. Indeed, those calculations in Diehr are not principles like Newton’s law; they are vey specific for the curing process, and without the curing process they do not exist, either. (In contrast, the formula in Flook is generic. See blow for discussion)

    I call the calculations like the one in Diehr a “created blueprint” to distinguish from discovered principles. (It may help to compare to the distinction between Science and Engineering.)

    D.

    Some examples:

    Discovered principle
    – Benson claims a method of converting signals from binary coded decimal form into binary.
    i. Arguably, the claimed methods are underpinned by inherent characteristics of binary coded decimal form and binary form.
    ii. Benson only discovered the correlations between those two forms and then, naturally, a way to convert from one to the other.
    iii. The correlations have always been there, whether Benson discovered or not. Benson cannot prevent others from discovering and utilizing those correlations simply because he is the first to discover them.

    – Flook claims a method applying B1=Bo(1.0-F) + PVL(F)
    i. The Supreme Court states that the claims (or even the specification) do not claim how to determine the variables. See, Flook; Diehr (esp. footnote 10)
    ii. Thus, the formula is simply a mathematical truth—such as 420=400(1-0.8) + 425(0.8) (see Flook Appendix), and the claim requires calculating for example 400(1-0.8)+425(0.8) and then using the result to set the alarm limit. Note: essentially, the method is that the operator determines a number and use that number as the alarm limit; but how to set an alarm limit is well known.
    iii. In this circumstance, a method simply limiting the fields for applying that mathematical truth is not patentable.
    iv. Note: Justices Rehnquist, Burger, and Stewart, who dissented, actually considered the claims as patentable. Three years later, Rehnquist, Burger, and Stewart wrote the opinion for the majority in Diehr.

    Created blueprint
    – Diehr
    i. The majority this time includes Justices Rehnquist, Burger, and Stewart, who, in this case, refined their dissent theory in Flook.
    ii. The majority considers the claims are directed to a method of constantly measuring the actual temperature inside a rubber molding press.
    iii. Justice Stevens wrote for the dissent and considered the claims are directed to an improved method of calculating the time that the mode should remain closed during the curing process. (Justice Stevens wrote for the majority in Flook.)
    iv. Even taking the dissent’s interpretation of the claims, the method of calculating the time, in this case, is not a discovered principle; rather, it is a created blueprint to be adapted in the curing process.
    v. Although the Arrhenius equation is well known, Diehr created a special blueprint for adapting the equation in the curing process. And the Arrhenius equation becomes
    ln V= CZ + x;
    • V is the total required cure time and end point for press closure.
    • C is the activation energy constant, a unique figure for each batch of each compound being molded, determined in accordance with the present invention by rheometer measurements of the batch,
    • Z is the present mold temperature at 32, and
    • x is a constant dependent upon the geometry of the particular mold of the press.
    vi. Diehr, Unlike Flook, teaches how to determine those variables.
    vii. When using the rationale of the majority in Flook, only the discovered principle should be assumed as “old,” the blueprint should not be assumed as “old.”
    viii. Curing is a specific industrial process. The method used to adapt to that process (e.g. determining C for each batch of each compound being molded by rheometer measurements of the batch) is not a principle. It is a created blueprint. It should not be assumed as new. Thus, The claims would satisfy §101.
    ix. The dissent, however, assumes the entire method of calculating the time, including determining C, as “old” in applying its rationale.

  66. 331

    To continue: “Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, ‘an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”

    Right. All you need under Diehr is a “known structure” (machine) or a “known … process” (transformation). Just like the Federal Circuit said in Bilski.

    Congratulations, I guess.

  67. 330

    It has been brought to our attention that Malcolm Mooney has been excessively silent during the aftermath of the Supreme Court Bilski decision.

    The silence has been golden.

    But one must ask – just why has the Malcolm Mooney pen name been so utterly quiet? The decision has not stopped the other anti-patent faction members, in fact we have seen a 6 rebirth albeit in the same inane and simply incredibly errant postings. So why has Malcolm Mooney been so quite?

    The answer has to do with the Supreme decision and now the law of the land. To all of Malcolm Mooney’s snide comments about what is patent eligible, the simple (and rightly smug) response of “Bilski 14” is a simple and effective answer. It is the track gun’s ringing echo signifying that the running has commenced.

    What is “Bilski 14”, you may ask? Akin to rubbing salt into the freshly scraped wounds, let me preface the explanation by reminding the audience that Malcolm Mooney was (is?) a die hard anti-Diehrist. The backwards looking throwback proudly predicted that Diehr would be severely cabined and that the patent world would return to the 18th century where Malcolm Mooney’s grasp of scientific advancement had met its comfortable limits.

    Such dreams have met an untimely and definitive (but justly and deserving) end.

    Here is the nail to the coffin: “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.” Thus, the ascendency and the supremacy of Diehr is established. The law of the land annunciated at “Bilski 14”. Both Benson and Flook are cabined and limited by Diehr, not the other way around.

    To continue: “Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, ‘an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” There you have it: an application clears the 101 hurdle. Plain and simple. Now move on to 102 and 103 and see if the patent protection is warranted, just like all other patent applications. Diehr is the key and that is why Malcolm Mooney is quiet.

  68. 329

    Given that there are an infinite number of degrees of abstraction, I too am struggling with the idea that a claim fails 101 if it is directed to an “abstract idea”.

    I don’t know if this is the legally appropriate distinction to make, but I would generally draw the line between noticing/observing/recording something interesting (Mayo v. Prometheus) on the abstract side, and doing something with that information (Diehr) on the concrete side.

    Does giving a free airplane ticket count as doing something? That depends. For the Federal Circuit, probably not. It seems a bit Bilski-ish, since all it does is convey an intangible right.

  69. 328

    Given that there are an infinite number of degrees of abstraction, I too am struggling with the idea that a claim fails 101 if it is directed to an “abstract idea”.

    But I understand from this thread that 101 objection can be put along the lines of:

    Your claim pre-empts all realisations of the abstract idea of….(gerund clause). Therefore the subject matter of your claim IS an abstract idea. On this basis, I object to it under 101.

  70. 327

    6: Your post skips the important part. Why? How did you come to the conclusion you did? Could you give an example of a “close call” in your mind under the new ruling?

    Your post seems to amount to, I know it when I see it, which seems completely unhelpful.

    I really struggle with the phrase “abstract idea.” The easy examples make sense to me: God, Happiness, Sadness, Laws, Borders. How could you patent these things. However, other examples of abstract ideas perplex me: door, window, and chair. These are also abstract ideas are they not?

    Of course, the court and everyone else must have a different understanding of what an abstract idea is, and I’m just trying to figure out what that is.

  71. 326

    Posted by: 6 | Jul 01, 2010 at 09:18 PM wrote:In other words AI is a tard and doesn’t have one clue how to do the analysis irl. lol.

    ________

    Analysis 101

    “Claims should always be read in light of the specification and teachings of the underlying patent”

    Even an IQ 6 Examiner would know this.

    Are you sure you really a Patent Examiner?

  72. 325

    “Well, that appears to be an information process claim and I do not invent information processing systems so I declined to speculate. You will probably want to talk an Information Processing Inventor, or at least an Attorney that prosecutes applications in that area.”

    In other words AI is a tard and doesn’t have one clue how to do the analysis irl. lol.

    Abstract, the answer to your question is that if your method would practically be a patent on the abstract idea of keeping track of how many miles someone has flown, buying them tickets and giving them a free ticket every few miles flown then the answer is yes, and it appears the answer is yes. Your post-solution activity of using a database to store the numbers wouldn’t last a new york minute.

    As to whether or not it can be “fixed” is a non-question, no claim can ever be “fixed”. They stand on their own or they don’t. You may draft a new claim if you like and we can look that one over. If you mean can you, in practical effect, get a patent on the abstract concept of frequent flier miles no, you are not allowed to by law under Bilski.

  73. 324

    “Is that method of swinging side to side on a swing an abstract idea?
    How about the Amazon one-click shopping concept?
    How about the concept of frequent flyer miles?
    How about the new “Rush Poker” concept?”

    The abstract idea of swinging side to side on a swing is an abstract idea
    The abstract idea of one-click shopping is an abstract idea.
    The abstract idea of frequent flyer miles is an abstract idea.
    The abstract idea of “Rush Poker” is an abstract idea.

    Are you getting the idea yet?

  74. 323

    Posted by: Abstract? | Jul 01, 2010 at 07:37 PM: Isn’t whether its a “concept” at least somewhat dependent on how its claimed?

    _______

    AI: Yes, but the claims are dependent on the specification too. When talking about concept you are essentially talking about claim scope and what you write and describe in your specification can have a definite effect on scope of claims.

    Abstract?: What is the 101 problem with the following claim? Could it be fixed to pass 101?

    A method of rewarding and using freuqent flyer miles comprising:
    buying a first airplane ticket for a passenger from an airplane ticket vendor for flying from a first location to a second location;
    buying a second airplane ticket from the airplane ticket vendor for flying from a third location to a fourth location;
    storing the total distance flown by the passenger in a database;
    providing the passenger with a free airplane ticket when the total distance flown by the passenger exceeds a pre-determined threshold and resetting the total distance flown stored in the database.

    AI: Well, that appears to be an information process claim and I do not invent information processing systems so I declined to speculate. You will probably want to talk an Information Processing Inventor, or at least an Attorney that prosecutes applications in that area.

    In short, I don’t know what your invention is until I can at least read the spec. But, if it’s tied to a particular machine or transforms a particular article in passes 101.

    Also if it fails MOT and it does not preempt the concept up on which it is based and the claim is limited to a specific market application ( not field) it still passes 101. That’s DCAT.

    BTW, passing DCAT will take care of any pre, post, and extra solution activity as well as field of use limitations as will MOT.

  75. 322

    Isn’t whether its a “concept” at least somewhat dependent on how its claimed?

    What is the 101 problem with the following claim? Could it be fixed to pass 101?

    A method of rewarding and using freuqent flyer miles comprising:
    buying a first airplane ticket for a passenger from an airplane ticket vendor for flying from a first location to a second location;
    buying a second airplane ticket from the airplane ticket vendor for flying from a third location to a fourth location;
    storing the total distance flown by the passenger in a database;
    providing the passenger with a free airplane ticket when the total distance flown by the passenger exceeds a pre-determined threshold and resetting the total distance flown stored in the database.

  76. 321

    Posted by: Abstract? | Jul 01, 2010 at 07:02 PM: What are some examples of abstract ideas? Is that method of swinging side to side on a swing an abstract idea?

    AI: Does it pass the DCAT? (Diehr Concept or Application Test) because it seems to certainly pass the MOT, if a swing is a particular Machine. if not and it passes DCAT it’s still not abstract.

    Abstract? : How about the Amazon one-click shopping concept?

    AI: Same question(s) as above.

    Abstract? : How about the concept of frequent flyer miles?

    AI: No, if its just a concept is fails the DCAT

    abstract?: How about the new “Rush Poker” concept?

    Probably same as above depending on what Rush Poker consist of.

    Any questions?

    ______________

  77. 320

    What are some examples of abstract ideas?
    Is that method of swinging side to side on a swing an abstract idea?
    How about the Amazon one-click shopping concept?
    How about the concept of frequent flyer miles?
    How about the new “Rush Poker” concept?

  78. 319

    Posted by: 6 | Jul 01, 2010 at 06:43 PM: I can’t wait for a case like that to go on up Broje, maybe the supremes will take the time to let the CAFC know what “field of use limitation” and “post-solution activity” means. In the mean time, good luck getting through the board/DC.

    _________

    The Supremes already explained both in Diehr and saw no reason to narrow it in Bilski. Yo main man Stevens is gone so no one is going be arguing his losing decent in Diehr at the SCOTUS. Yeah send it back up so you anti patent losers can get smacked down again.

    LOVIN IT!

  79. 318

    I can’t wait for a case like that to go on up Broje, maybe the supremes will take the time to let the CAFC know what “field of use limitation” and “post-solution activity” means. In the mean time, good luck getting through the board/DC.

  80. 317

    AI,

    I just got off the phone with Judge Michel (Ok, it was an AIPLA webinar), and he responded to a question about when something is a particular machine or particular transformation. Basically, he said that people had responded with a lot of baseless paranoia to this requirement, and that the CAFC made it clear in In re Bilski that the transformation does not have to be a physical transformation. I went back to the CAFC decision, now affirmed, and found the following:

    In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), p. 963

    “We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.” But subsequent paragraphs emphasize that you do have to specify what the data represents in order for the transformation to be a “particular” transformation.

    He further stressed that the CAFC also indicated (in footnote 17) that the claimed invention in Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992) meets the MoT test, and only the portion of that case relating to application of the Freeman-Walter-Abele test should no longer be relied upon. In that case, patent-eligibility was confirmed for a computer-assisted mathematical analysis of electrocardiograph signals that determined the likelihood of recurrence of heart attack.

    So there you apparently have a fairly low hurdle to satisfy the MoT test for software patent applications.

    Meanwhile, I read Benson, Flook, and Diehr again, and I have to admit that Diehr has a lot of good stuff in it. Still, I think that the best couse of action will be to argue that, the MoT test is satisfied becasue there is no preemption, rather than trying to argue that the lack of preemption maens that the claimed invention is not abstract, even though it does not satisfy the MoT test.

    Of course it goes without saying, but this is not legal advice.

  81. 316

    On a somewhat arbitrary cutoff basis of 3:15 PM today, the stat machine had recorded 493 blog posts here at Patently-O totaling across the several Bilski threads.

    The most vocal posters, on a per pseudonym basis, covering a full 50% of all posts:

    IANAE – 12%

    West Coast Guy – 11%

    Actual Inventor – 8%

    6 – 7%

    ping – 5%

    TINLA IANYL – 4%

    Night Writer Patent Attorney – 3%

    Per special request, Malcolm Mooney comes in at a 2% level (8 total posts). For someone who can be as high as 60% of a typical thread count, the silence is deafening.

  82. 315

    MOT was only two of the considerations when determining if the Diehr invention was patent eligible. But not the sole test or basis for eligibility which is why the SCOTUS did not uphold the CAFC MOT as the sole test for eligibility in Bilski.

    So what? How does that relate to whatever your original point was? What could you ever hope to gain by any appeal based on Diehr?

    If you are in the mood to laugh at yourself search keywords Mooney, Diehr, Crap.

    Sigh. Let’s try this again. When did I ever say anything negative about Diehr?

  83. 314

    Posted by: IANAE | Jul 01, 2010 at 03:25 PM: When did I ever say anything negative about Diehr?

    _____

    If you are in the mood to laugh at yourself search keywords Mooney, Diehr, Crap.

  84. 313

    ” Justice kennedy merely relied on the long standing precedent of Diehr. And that my friends is a bed rock solid basis for appeal, all the way back to the man himself if necessary.”

    IANAE : Diehr clearly had both a machine and a transformation, so I’m not sure what remaining uncertainty you expect the Supremes to put to rest in a future case.

    AI: MOT was only two of the considerations when determining if the Diehr invention was patent eligible. But not the sole test or basis for eligibility which is why the SCOTUS did not uphold the CAFC MOT as the sole test for eligibility in Bilski.

    Of course you know this. So just quit right now with the games.

    You lose.

    .Stevens is gone.

    Kennedy is young.

    And thats the way it is for at least another 10 years.

  85. 312

    Justice kennedy merely relied on the long standing precedent of Diehr. And that my friends is a bed rock solid basis for appeal, all the way back to the man himself if necessary.

    Diehr clearly had both a machine and a transformation, so I’m not sure what remaining uncertainty you expect the Supremes to put to rest in a future case. The claims in Diehr are not at all controversial by today’s standards, and they shouldn’t have needed to go all the way to the Supreme Court even at the time.

    So Mooney/IANAE/Orly, or who ever you are at the moment, for all your Diehr is crap rants over the last three years, you still lose.

    When did I ever say anything negative about Diehr?

  86. 311

    Posted by: IANAE | Jul 01, 2010 at 10:13 AM: Inventors always win. Non-inventors always lose. Funny how that works out.

    _______

    Actually that makes know sense. But guess that is what happens when you talk to yourself under so many different screen names.

    But for the record I am sticking with the Supreme when determining if an invention is an abstract idea. Justice kennedy merely relied on the long standing precedent of Diehr. And that my friends is a bed rock solid basis for appeal, all the way back to the man himself if necessary.

    So Mooney/IANAE/Orly, or who ever you are at the moment, for all your Diehr is crap rants over the last three years, you still lose.

    And Actual Inventors Win!

  87. 310

    Ping wrote: “AI’s pronouncements are pretty much nebulous hot air without meaning.”

    And what pronouncements would those be?

    If you are referring to Mooney’s, cross dressing Orly Taitz pronouncements retreaded in his sober personality of IANAE, then I dare say Dear Ping you are slipping. On the other hand nice work at pointing out the flaws of the latest Office memo in light of the SCOTUS ruling. If indeed that was you. Hard to tell who is who these days as the Supremes recent ruling has the anti patent crowd off their meds and kinda nutty.

  88. 309

    Malcolm Mooney dusted off his Orly Taitz wig and wrote: AI’s logic is that if your application isn’t exactly like Bilski’s, it’s patent eligible.”

    AI: Wrong. Thats Malcolm Mooney, while dressed in drag as Orly Taitz logic.

    MM: SCOTUS refusing to categorically deny patent eligibility to business methods does not equate to SCOTUS categorically blessing any business method that differs from Bilski’s in some way.

    AI: Did anyone in the known patent universe say this? You must be off your meds Mooney.

    MM: Hope you like appealing, AI.

    AI: Since I did not make the above argument guess I won’t be appealing eh Money?

    MM: “INVENTORS WIN! WE ALWAYS WIN :-D”
    Except when you get rejected, LOL.

    AI: Anyone and everyone gets a rejection. This does not mean you lose anything or even that you are wrong. Rejections can be overcome and traversed. Every Actual Inventor knows this and every half way decent Patent Attorney better know this. Of course you are neither so I would not expect you to know anything.

    AI:By the way, doesn’t that mean if you lose an appeal, you are not actually an inventor?

    Ummm..No.

    ::Twilight Zone Music Plays::

  89. 308

    if you lose an appeal, you are not actually an inventor – It does if it was a 101 rejection.

    I see my idol is still woozy from the Supremes.

    The “inventor” nomanclature is not a tautaology, nor is it restrained to “those-who-can-get-or-have-patents”. Inventors can invent things that are not patentable. Inventors can invent things that are even not patent eligible. AI’s pronouncements are pretty much nebulous hot air without meaning.

    Jay,

    You got a big problem with your logic, cause the Office hasta show the applicant precisely why she cannot have a patent and conclusionary hand-waivy statements fail the admin laws governing examiners. Without more than MoT, you are using MoT as the test – something the Supremes just got done saying was illegal. The problem the Office is gonna have is that there is no silver bullit single test to show ineligibility. All yous gots are tests that show clues to eligibility, and you cannot rule anything out using tests to show eligibility since no single test covers everything. You be left with a tool that you cannot use to rule things out.

    Since I be lazy – I’ll steal something from the just_n_examiner blog that says something similar (of course, it not be in the most elegant Ping way, but you might catch the drift):

    The funny thing about the memo (other than the lack of widespread promulgation), is that technically, it says that the Supremes got it wrong.

    The Supremes said that the test is a good one for finding patent-eligible material. They also clearly said it was not the only test. What these means logically is that the test is limited to showing patent eligibility and cannot (on its own) be used to show patent ineligibility (a classic Type I / Type II error scenario).

    The memo promotes an illegal action by telling examiners to continue using the test in a manner found by the highest court in the land to be wrong (in the manner used – not that the test itself is wrong).

    It is still the job of the Office to indicate precisely why an applicant cannot have a patent even if the memo indicates that the applicant has to show why he should have one after the Office makes a conclusionary and (non-substantiated) assertion. The blog master here hits the nail on the head – examiners do not have the power of a Supreme Court Justice.

    I expect a retraction from Bahr as soon as someone points this out (or as soon as the avalanche of responses from the patent bar hit the Office with quotes to the Supreme Court decision).

  90. 307

    By the way, doesn’t that mean if you lose an appeal, you are not actually an inventor?

    It does if it was a 101 rejection.

    Inventors always win. Non-inventors always lose. Funny how that works out.

  91. 306

    I think the future for the courts is clear:
    “I conclude that the claim is directed to an unpatentable abstract idea. In reaching this conclusion, I have considered the totality of the circumstances in this specific case. And an important clue supporting my conclusion is an analysis based on the machine or transformation test as follows….”

  92. 305

    AI’s logic is that if your application isn’t exactly like Bilski’s, it’s patent eligible. SCOTUS refusing to categorically deny patent eligibility to business methods does not equate to SCOTUS categorically blessing any business method that differs from Bilski’s in some way. Hope you like appealing, AI.

    “INVENTORS WIN! WE ALWAYS WIN :-D”
    Except when you get rejected, LOL. By the way, doesn’t that mean if you lose an appeal, you are not actually an inventor?

  93. 304

    More importantly, how is an applicant to address or overcome a hypothetical poorly-reasoned 101 rejection for claiming an abstract idea?

    __________

    Simple, does the invention claim both a concept and an application of the concept to a specific market environment?

    If your invention claims both, or reads on both in the claims it’s abstract. If not you are A. O. K.

    Just ask Justice Kennedy.

  94. 303

    Posted by: IANAE | Jun 30, 2010 at 10:21 AM : Unless you also think all patents are the “Bilski type”. I wouldn’t put that past you, actually. “Look! He’s running a business! Just like Bilski did!”

    _________________

    Bilski Type according to the SCOTUS:

    “Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets.”

    Now, like I said, 99.9% of all so called business methods are not seeking to patent both the concept of the process and the application of the process to a market or enterprise. I know none of my patents or applications do this.

    Thats why 99.9% of business method application will sail thru the 101 gates while laughing at you, 6 and West Coast Guy, sitting helplessly watching and crying on the shore!

    INVENTORS WIN!

    WE ALWAYS WIN 😀

  95. 302

    AI: 2. No one can state one business method outside the Bilski type that does not pass the MOT.

    Since you have apparently convinced yourself that all patents are business method patents, and therefore presumably all pending applications are for business methods, just pick any one you like out of the presumably many thousands that have failed MOT at various levels of PTO or judicial scrutiny.

    Unless you also think all patents are the “Bilski type”. I wouldn’t put that past you, actually. “Look! He’s running a business! Just like Bilski did!”

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