The Business Method Patent Art Units

By Dennis Crouch

In prior posts, I noted that the USPTO is issuing patents at an all-time-high-rate.  This increase is perhaps most dramatic in the art units that examine applications classified by the USPTO as "business methods."  This post explores the history and the numbers.

* * * * * 

The USPTO patent examiner corps is organized into small technology-specific groups known as art units.  Each art unit has a manager that reports to a technology center director.  About twenty art units have been classified as generally dealing with “business method” patents. (See list of art units).  I’ll call these art units “business method art units” for lack of a better term.  All of the patents issued from these art units are classified in class 705. And, these are the patents and applications that are most likely to be affected by the decision in Bilski v. Kappos (2010).

Under former PTO Director Jon Dudas, the business method art units received special attention.  Individual examiners were given free power to reject pending applications as unpatentable, but claims could not be allowed as patentable until being reviewed by at least a “second pair of eyes.”  Under Director Kappos and Commissioner Stoll, the second pair of eyes regime has been eliminated and, as might be expected, the number of patents being allowed in these art units has risen dramatically. Perhaps coincidentally, this rise also correlates with the Federal Circuit’s October 2008 decision in Bilski.

The following two charts respectively show the number and percentage of patents that issue from the business method art units for each quarter (three-month period) going back to January 2005.  (2010 Q3 only includes two-weeks worth of data). As a bit of perspective, since January 2005, more than 900,000 utility patents have issued. Fewer than 9,000 are associated with these business method art units.

PatentLawPic1033

PatentLawPic1034

As the charts show, the number of patents issued by the business method art units is on the rise — both in terms of absolute numbers and as a percentage of patents being issued. 

Most of the patents issuing from the business method art units are directed toward some type of computer software that helps solve a business problem. Newly issued U.S. Patent No. 7,747,465 is a typical example. The ‘465 patent claims a method and apparatus for determining the effectiveness of internet advertising. The claimed method does not explicitly recite any hardware except for a “manager console”, “dynamic sampling engine”, and “logic module.”  In response to a Section 101 rejection, the applicant amended its claims and then — without explanation — provided the conclusory argument that the application was “directed to statutory subject matter because the claims are either directed to statutory processes tied to a particular machine or directed to statutory apparatuses.”

One problem with studies of business method patents is that there is no accepted definition the term.  The 1998 State Street decision that jump-started business method patenting did not actually involve any method claims.  On the technology front, inventions that look like business methods are often examined in other art units. Rand Warsaw (Bernard Bilski's co-inventor) was issued a patent in 2004 on a method for providing energy efficiency changes based upon historic consumption and weather data.  That patent looks was examined by a non business method art unit in an entirely different technology center. (Patent No. 6,785,620).

147 thoughts on “The Business Method Patent Art Units

  1. “… the number of patents issued by the business method art units is on the rise” — and, thanks to Bilski, that does not seem likely to change anytime soon. Except that, now, more applicants are simply going to draft borderline-abstract claims to give the appearance of adhering to the MoT test. Because of the Supremes’ vague Bilski decision, the business method issue looks likely to go right back up to the SCOTUS once again, as soon as an appropriate patent enforcement action or application comes along.

  2. They may not be technically the same as a matter of law (yet), but so far nobody can see any practical difference at all.

    And what’s really funny is that if my man IANAE is right, his own argument simply makes MoT THE test and that is precisely what the Supremes said was illegal.

  3. Really? A simple backronym was worth breaking the tags for?

    Acronym
    Inventor?
    Sadly,

    Doesn’t
    Evidence
    Articulate
    Reasoning,

    Doesn’t
    Invent
    Except
    Here,
    Reciting
    Incorrect
    Statutory
    Tests

    AI: Umm,, what would that prove exactly?

    It would prove that there’s an actual difference between MOT and what’s actually patentable, besides the name. They may not be technically the same as a matter of law (yet), but so far nobody can see any practical difference at all.

  4. Posted by: IANAE | Jul 22, 2010 at 04:21 PM: Prove it. Draft me a statutory claim, to anything at all, that has neither a machine nor a transformation.

    Umm,, what would that prove exactly?

    Besides, writing claims is meaningless unless you have a written specification those claims are based on. Otherwise all inventors would need to do to get a patent is write a claim and send it in.

  5. IANAE: “Specifically, the claims as a whole need to have a machine or a transformation somewhere in there, and then the court will let it slide that one of your steps is a calculation.”

    Did you just sleep walk through the last 30 days??????? The SCOTUS rue that was NOT the law.

    I use to think you were simply an anti patent troll. Now you just sound
    D U M B.

  6. Posted by: IANAE | Jul 22, 2010 at 04:21 PM: Prove it. Draft me a statutory claim, to anything at all, that has neither a machine nor a transformation.”

    The “proof” is in the Supreme Court Bilski case. Claims are not required to have a machine or transformation in order to be statutory.

    This has been pointed out to you over and over. Have you lost you mind? Seriously.

  7. Maybe in the pre-Bilski era, but not anymore!

    Prove it. Draft me a statutory claim, to anything at all, that has neither a machine nor a transformation.

  8. need to have a machine or a transformation

    Maybe in the pre-Bilski era, but not anymore!

  9. Take the claims as a whole, beach.

    Specifically, the claims as a whole need to have a machine or a transformation somewhere in there, and then the court will let it slide that one of your steps is a calculation.

    Where in Diehr or Bilski did the Supreme Court mention that objective/subjective steps nonsense you thought was so clever two days ago?

  10. IANAE WROTE A Non Sequitur:

    “Oh, Diehr. Here we go again.”

    The point is the Supreme Court Affirmed in Bilski the following from Diehr…

    “Diehr emphasized the need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and
    then . . . ignor[ing] the presence of the old elements in the
    analysis.” Id., at 188.”

    There is no getting around that!

    Take the claims as a whole, beach.

  11. “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook. The application in Diehr claimed a previously unknown method for “molding raw, uncured synthetic rubber into cured precision products,” using a mathematical formula to complete some of its several steps by way of a computer. 450 U. S., at 177. 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 for- mula to a known structure or process may well be deserving of patent protection.” Id., at 187.”

    Oh, Diehr. Here we go again.

    The limitation on Benson and Flook is that you can patent an abstract principle for use in a method for using a machine to transform something. Diehr claimed opening the machine once the transformation was complete.

  12. Posted by: AI’s Dear Diehrist | Jul 21, 2010 at 05:07 PM: Maybe it was the same imbibing of the Bilski Decision that left Malcolm all silent and sent IANAE all wacky.

    Bilski 14

    ______________

    That and all the Bolshevist propaganda that Malcolm imbibed in his youth.

    Nevertheless I am glad to imbib MM/Inane with some more Diehr. Fresh for the USSC in Bilski! Read it and choke on Mooney.

    /media/docs/2010/09/08-964.pdf,:

    “Finally, in Diehr, the Court established a limitation on
    the principles articulated in Benson and Flook. The appli-
    cation in Diehr claimed a previously unknown method for
    “molding raw, uncured synthetic rubber into cured preci-
    sion products,” using a mathematical formula to complete
    some of its several steps by way of a computer. 450 U. S.,
    at 177. 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 for-
    mula to a known structure or process may well be deserv-
    ing of patent protection.” Id., at 187. Diehr emphasized

    the need to consider the invention as a whole, rather than
    “dissect[ing] the claims into old and new elements and
    then . . . ignor[ing] the presence of the old elements in the
    analysis.” Id., at 188. Finally, the Court concluded that
    because the claim was not “an attempt to patent a
    mathematical formula, but rather [was] an industrial
    process for the molding of rubber products,” it fell within
    §101’s patentable subject matter. Id., at 192–193. ”

  13. Maybe it was the same imbibing of the Bilski Decision that left Malcolm all silent and sent IANAE all wacky.

    Bilski 14

  14. This new “Actual Inventor” seems a bit more excitable than the old one.

    Maybe it was all that time he spent at the beach, with a complete inability to consider anything he sees non-statutory.

  15. This new “Actual Inventor” seems a bit more excitable than the old one. Almost to the point of … parody.

  16. WOW! Just look at the categories in the business method unit.

    1. Health Care, Insurance

    2. Incentive Programs, Coupons

    3. Operations Research, Voting, Transportation

    4. Point of Sale, Inventory, Accounting

    5. Cost/Price, Reservations, Transportation

    6. Business Processing

    7. Operations Research, Voting, Transportation

    8. Business Crypto

    9. Business Processing

    10. Portfolio Management Trading/Matching

    These inventions and innovations are covering some of the biggest challenges facing our nation and our world.

    Thank God we have a nation of brilliant Actual Inventors working in these areas to solve our problems, and that we have a majority of Supreme Court Justices smart enough to keep the incentive for research and development alive in these crucial categories.

    And let’s not over look the fact we have some of the PTOs most talented, and hard working examiners in the Business Method Patent Arts Unit. Check out those names. I have worked with some on these folks in the past.

    It gives me hope for our future!

    God bless the Patent System!!

    God bless the USA!!!

  17. Posted by: “Malcolm Mooney | Jul 21, 2010 at 11:52 AM: In doing so, it’s pretty clear that this cannon is largely not applicable for at least analysis under 101. That was clear before Bilski. AI just lacks the intellect and integrity to admit it.”

    _________

    If you had any intellect or integrity you would be able to cite a case that backs up your claim. But you have neither so all you can do is post yet more lies under yet more alias.

    After all your years of spewing that Diehr was c r a p you lose at the The Supreme Court and business methods are the law of the land Your “wise latina” couldn’t help you. Stevens is dust. And Kagan can’t make a difference.

    It’s over Mooney better put your wig back on.

  18. “his mathematics were revolutionary,”

    Meh, at the time he came up with them they weren’t that revolutionary. They couldn’t be used for jack. The only thing that made the revolutionary was, oh wait, the same thing that makes all math “revolutionary”, advances in the Useful Arts.

    “created or supported vast industrial parks everywhere in the world”

    I must have missed that part in the articles. What it says is that it is currently a part of many standards. Standards don’t support industries, industries support standards. What you’re forgetting Ned, is that there were other ways to do what he did even before he made his algorithm. We could just as well use those other algorithms, though they may no be as efficient or whatever. That’s why his algorithms are important and part of a standard.

    At least, so far as I can tell from your articles.

    “That said, I think he could have patented the algorithm if he tried, for improving the S/N ratio of signals, where the algorithm operated on measured signals and produced a digital signal as in Arrhythmia. But, since this was the whole point of the algorithm, I suspect clever anti-patent types would have invented something like the “wholly preempts” to take it away.”

    Mmmm, if by “clever anti-patent types” you mean the USSC, then yes, you’re right.

  19. Posted by: Yet more fun! | Jul 21, 2010 at 11:48 AM: AI said that “in the USA claims are required to be evaluated as a whole and not divided into patentable and non patentable steps.”

    Yet more fun! : “This pretty clearly not the law anymore. ”

    AI: “Who says?

    Yet more fun! : “Any rules or cases stating as much are pretty much irrelevant in view of SCOTUS’ Bilski majority opinion. ”

    AI: Where is this so stated in the SCOTUS Bilski majority opinion?

    Yet more fun! “If you take time to read the opinion, the court did precisely the opposite.”

    AI: Again, please cite the exact quote and page number to prove anything you have quoted above it correct and true.

    Yet more fun! ” They sorted out Bilski’s claims into the algorithm and the inconsequential pre- and post-solution activity. ”

    AI: Actually the Supremes read Bilski’s claims as a whole and found the claims covered the entire market of hedging. The SCOTUS then decided that when claims are so broad they are considered abstract ideas. Personally I feel this should have been a 112 issue but they chose to make it a 101 issue so thats the law for now.

    Yet more fun! “In doing so, it’s pretty clear that this cannon is largely not applicable for at least analysis under 101.”

    AI: FALSE!

    No where in the SCOTUS Bilski majority opinion is Diehr cabined or narrowed to such an interpretation.

    Nor does the majority accept the old Steven’s gloss from his anti-patent dissent in 1980/81.

    What you have stated is a complete lie!

    Actual Inventors and their attorneys read this blog for research and to learn and it does not help when people like you come on here and purposely lie to advance their losing agenda’s.

    SHAME ON YOU!

  20. IANAE | Jul 21, 2010 at 11:32 AM” wrote: everyone else explaining to you that getting a whole class of patents invalidated is a funny sort of victory for a self-styled “inventor”.
    ____________

    Umm first of all who is “everyone”, besides your alias, that is?

    Second what court case or who, for that matter invalidated a “whole class” of patents?

    Oh and what “class” was invalidated exactly?

    It seems to me you are still very much punch drunk from all the years of being intellectually slapped around on this blog then having your anti patent view crushed by the SCOTUS in Bilski.

  21. Yet more fun! and Malcolm are clearly both wrong.

    Bilski 14!

    The Diehr principle of “claims as a whole” is the overarching prinicple!

    Live it!

  22. In doing so, it’s pretty clear that this cannon is largely not applicable for at least analysis under 101.

    That was clear before Bilski. AI just lacks the intellect and integrity to admit it.

  23. AI said that “in the USA claims are required to be evaluated as a whole and not divided into patentable and non patentable steps.”

    This pretty clearly not the law anymore. Any rules or cases stating as much are pretty much irrelevant in view of SCOTUS’ Bilski majority opinion. If you take time to read the opinion, the court did precisely the opposite. They sorted out Bilski’s claims into the algorithm and the inconsequential pre- and post-solution activity. In doing so, it’s pretty clear that this cannon is largely not applicable for at least analysis under 101.

  24. and the Supremes in their infinite wisdom would have said to him that his algorithm was not his, even though he invented it,

    Actually, they would have said to him that it wasn’t his because he didn’t invent it.

    That said, I think he could have patented the algorithm if he tried, for improving the S/N ratio of signals, where the algorithm operated on measured signals and produced a digital signal as in Arrhythmia.

    I would hope so. Except that Arrhythmia didn’t produce an improved digital signal, or indeed any signal. The Arrhythmia claims are pure observe-and-compare, not entirely unlike the Bilski or Myriad claims.

    But, since this was the whole point of the algorithm, I suspect clever anti-patent types would have invented something like the “wholly preempts” to take it away.

    But, since that was the whole point of the patent system, perhaps clever pro-patent types can invent some argument to reclaim it.

  25. 6, the point is that his mathematics were revolutionary, were highly useful, created or supported vast industrial parks everywhere in the world, created millions of high tech jobs, and the Supremes in their infinite wisdom would have said to him that his algorithm was not his, even though he invented it, but the common resource of all mankind.

    It would have been interesting had Viterbi filed a brief in Bilski to see just what he would have had to say.

    That said, I think he could have patented the algorithm if he tried, for improving the S/N ratio of signals, where the algorithm operated on measured signals and produced a digital signal as in Arrhythmia. But, since this was the whole point of the algorithm, I suspect clever anti-patent types would have invented something like the “wholly preempts” to take it away.

  26. “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”

    I remember that limitation in Diehr. Something about a machine and a transformation, wasn’t it?

  27. Bilski 14

    Diehr controls and limits the previous cases.

    Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

  28. AI: Oh, and I am only back because us Actual Inventors have to remain vigilant and not become complacent on the heels of our recent victory at the SCOTUS.

    I suppose that represents a big change from last week, when you left this blog forever in the turbulent wake of your recent “victory” in Bilski, in a huff over everyone else explaining to you that getting a whole class of patents invalidated is a funny sort of victory for a self-styled “inventor”.

    6: I have little doubt that he did actually patent many inventions. Yet, strangely, an inability to patent his algorithm did not hold him down or back in any way that I can see.

    Right. We don’t patent the algorithm, we patent using the algorithm to do something or do it better. Like our good friend Diehr.

  29. What’s funny Ned, is that the man you cite is a case in my point. He did not patent his algorithm, or if he did, it was invalid, but yet did go on to still more fame and considerable fortune by engaging in that pesky little creature the Useful Arts. I have little doubt that he did actually patent many inventions. Yet, strangely, an inability to patent his algorithm did not hold him down or back in any way that I can see.

    I wonder, were I to bother this 75 year old man with this trifling matter, and were to ask him “sir, you have discovered one of the greatest mathematical algorithms of our time, many years before its time, do you believe you should have been able to receive a patent for it?” And he then replied “No, it’s math ya jack a ss”. Then would you be content and possibly even stfu? Because if you would, I will endeavor to see about that. I have a feeling that you probably would not though. You probably feel like engineers need to be told what they need for an incentive to discover/disclose math.

    In any event, I do hope you’re all straight with your brand new primer on what the USSC thinks about the matter. I haven’t even received so much as a thank you for writing down that which so many of you find so hard to grasp.

  30. Oh, and I am only back because us Actual Inventors have to remain vigilant and not become complacent on the heels of our recent victory at the SCOTUS. Considering the way Sotomayer sold us out and voted with Stevens. I bet Sotomayer does not have a clue what a so called business method is and why they should be banned. Her and Ginsburg just blindly followed the old white liberal male on the bench without even thinking for themselves. Some wise Latina she turned out to be. Ha!

    I don’t have much more faith in Kagan either. Let’s just hope Obama appoints a more conservative justice next time, preferably one that is pro patent and up to date with complex information processing systems.

  31. Posted by: MaxDrei | Jul 21, 2010 at 02:59 AM: Is that step “subjective” then?”

    Maxie, your question, indeed you entire line of reasoning is rendered moot by the simple fact that here in the USA claims are required to be evaluated as a whole and not divided into patentable and non patentable steps. And that’s because every process invention is going to have decesion making and evaluating steps that are subjective.

    So it does not matter if an individual step may be considered subjective as long as the claim as a whole is for performing a process the patent laws were meant to protect, i.e. science and technology.

  32. Nice to have you back, Actual, and making a stimulating contribution, when you write….

    “simply look to see if the steps being performed are objective or subjective”

    Suppose the step of the “business method” is “deciding whether or not the subject is telling the truth” or “selecting pieces of music to play to the (human) production workers, to lift their level of concentration on the job in hand”.

    Even if, in aggregate, as measured by objective scientific criteria, some music works better than other, is it not still the case that its effect is unique to every individual worker? Is that step “subjective” then?

  33. 6, regarding Viterbi, his mathematical algorithm is one of the greatest inventions of the 20th century. He was given the IEEE Medal of Honor this year.

    link to spectrum.ieee.org
    link to viterbi.usc.edu

    His algorithm forms the basis of space communications, disk drives, cell phones, voice recognition and communciations generally.

    Viterbi founded Qualcomm and pioneered spread-spectrum communications using his algorithm and created what we now know as cell phones.

    Viterbi is one of the great inventors of this or any age. But, what he primarily invented is mathematics — mathematics that changed the world.

  34. What about it Ned?

    Communications to outer space? What industry popped up around a single algorithm that has to do with that?

    The disk drive industry does not depend on claims to algorithms Ned, I ha te to break this to you, but it depends on sales. Nevertheless, we allow for claims on hard drives if they should so happen to want to file. The same goes for optical recording device industry.

    “any any other industry that requires the partial response, most likely algorithm.

    What industries “require the partial response”?

    Futhermore, why are we even discussing this? The USSC is the one that made the decision. Not me. I just explained it to you. You can feel free to argue about how claims to algorithms are vital to industry to them. But don’t be surprised when they lol u into the street.

  35. Dennis Wrote: “In prior posts, I noted that the USPTO is issuing patents at an all-time-high-rate. This increase is perhaps most dramatic in the art units that examine applications classified by the USPTO as “business methods.”

    First of all….YAY!!!! Can’t wait for more patents! 😀

    “One problem with studies of business method patents is that there is no accepted definition the term. ”

    Okay, I hope this helps as I left the beach and came out of semi retirement to instruct you guys and gals from an Actual Inventors perspective.

    Now Dennis the problem is the fact that you are trying to define ( business methods) something that does not need to be defined. A business method is simply a process. And as I have pointed out before all patents are processes at their beginning and remain processes at their core.

    And as we all know legally ( see Cochrane V Deener) and logically a “process” is simply an act, or series of acts ( successive steps) , performed upon some subject matter.

    Now if one just absolutely has to have further clarification all you need to do is go to the IP/patent clause of the US Constitution and you will find that patents are for discoveries in science and the useful arts ( technology).

    Anything dealing with science and technology is objective as opposed to liberal arts which is subjective.

    So when trying to determine if something is a patent eligible process simply look to see if the steps being performed are objective or subjective and you will know whether it’s statutory. But for Gods sake please stop trying to define business methods! Now any more questions before I return to the beach?

  36. Think Viterbi.

    Then think, all communications to outer space; the disk drive industry; the optical recording industry; any any other industry that requires the partial response, most likely algorithm.

  37. 14 obvious inventions

    link to huffingtonpost.com

    Claims directed to mathematical algorithms are … invalid even if they are new, revolutionary, and have created whole new industries, jobs and turned whole regions into sprawling industrial parks filled with hi-tech jobs.

    Too bad there never was such a claim, except in Ned’s dreams.

  38. “Claims directed to mathematical algorithms are abstract. They are not saved by reciting general purpose computers for implementation. They are invalid even if they are new, revolutionary, and have created whole new industries, jobs and turned whole regions into sprawling industrial parks filled with hi-tech jobs. The gall of these trolls.”

    That is indeed likely true.

    I hope you enjoyed the primer I took the time to write for you.

  39. This should be satisfying for programmers. It represents the correct ruling.

    You might want to get a lawyer.

    — all software is pure mathematical algorithms. That’s simply what computer software is. It’s well known in the industry.

    Until that becomes well known to the courts, you might want to get a lawyer.

    This means practically all software patents are presumptively invalid now.

    Um, you might want to get a lawyer.

  40. 6 here:

    Claims directed to mathematical algorithms are abstract. They are not saved by reciting general purpose computers for implementation. They are invalid even if they are new, revolutionary, and have created whole new industries, jobs and turned whole regions into sprawling industrial parks filled with hi-tech jobs. The gall of these trolls.

  41. At any rate, any valid software patent is not infringed by software running on a generic computer.

    How do you figure?

  42. Those are very important lines in Bilski:

    “unpatentable subject matter, namely a mathematical optimization algorithm”

    All software, excepting possibly:
    – software related to chemical/quantum-mechanical level behavior of computer chips (timing issues and the like)

    — all software is pure mathematical algorithms. That’s simply what computer software is. It’s well known in the industry.

    This means practically all software patents are presumptively invalid now. At any rate, any valid software patent is not infringed by software running on a generic computer.

    This should be satisfying for programmers. It represents the correct ruling.

    Back in Diamond v. Diehr, the software would not infringe *unless* connected to the rubber curing vats. Using it for abstract modeling (without actual rubber) would be completely non-infringing. *As it should be*.

    This does leave a tiny window of viability for the mp3 patents (based on studies of human perception to decide what data to throw out when compressing) — though only when used to compress sound which is replayed for humans — but blows away the FAT patent and practically every other wholly-software patent out there.

  43. Max: “When I write a patent application, I need an “Abstract”. I use my “Claim 1” because in that claim I have abstracted the essence of the inventive “concept” (another word for “idea”)which is the subject matter of my application. I hope that I have indeed pre-empted every realisation of that concept for, ”

    If you have done so, you have an invalid patent, because you are “anticipating”. think about it again. You should only be able to cover realizations which your client could actually manufacture today on demand.

  44. “6, have you read Newman’s dissent in Bilski regarding the meaning of abstract?”

    I’m sure I did, but tbh I probably loled the whole time because it was written by Newman. And I certainly don’t remember that particular part.

  45. Why would anyone have as a goal the narrowing of 101? Isn’t the gate supposed to be a wide gate? People are acting like patents are a bad thing for some reason. If the application can properly meet all the other requirements (notably 112), we should be happy to be giving out limited timed exclusions.

  46. “Trying to generate meanings for abstract with the goal of narrowing 101 is not.”

    I’ve got news for you, this happened in like the 50’s or some sht when Benson went down. Whether it is acceptable or not it is so engrained in the precedent now gl getting rid of it.

  47. NWPA: “IANAE: Very telling that you can’t understand my post.”

    I understand it just fine. Maybe the expression you’re looking for is “agree with”.

    NWPA: “By the way, the two of the top five comment is there to give credibility to the fact that abstract is a term of art.”

    Great, they all agree it’s a term of art. What did they all agree that the term means?

  48. IANAE: Very telling that you can’t understand my post.

    By the way, the two of the top five comment is there to give credibility to the fact that abstract is a term of art.

  49. “Trying to generate meanings for abstract with the goal of narrowing 101 is not.”

    Any frank and open discussion of patent-related issues is fine, so long as its purpose is to broaden the scope of patent protection.

    That’s what “intellectually honest” means. I asked a bunch of people who attended the top 5 law schools.

  50. >>wondering out loud what we might expect from >>them. That’s what our clients expect of us, >>isn’t it?

    This part of it is fine. Wondering and being intellectually honest about the meaning of the word abstract is fine. Trying to generate meanings for abstract with the goal of narrowing 101 is not.

    I won’t bother correcting the rest of your post.

  51. “So, I’m sorry you find this search for the meaning of words no fun, even ‘despicable’. I wonder how happy you are, in your chosen profession.”

    It’s quite an enjoyable profession, actually. You file all the words you know, and it’s the examiner’s job to come up with a reasonable interpretation of what the words mean.

  52. The thing is Night, you don’t get to define “abstract” in patent law and nor does anybody else who attended even just one of the top 5 engineering schools. Instead it will be those arts majors on the CAFC and SCOTUS. I’m just wondering out loud what we might expect from them. That’s what our clients expect of us, isn’t it?

    So, I’m sorry you find this search for the meaning of words no fun, even “despicable”. I wonder how happy you are, in your chosen profession.

    I had not before seen Mel Gibson as the great obfuscator. Thanks for that insight.

  53. 2,562 words of “ You apparently just wrote down a jumble of words for giggles so far as I can see.

    Thanks 6

  54. Max, come on. Abstract is a term in engineering that is well understood and discussed. One of my professors in circuits class told me that you pick the level of abstraction and work there. You just need to know how to go down from the abstraction and get up to the abstraction. Abstract is a term of art in engineering. I’ve attended two of the top 5 engineering schools in this country. Everyone knew what was meant by abstract.

    Come on. Stop the witch hunts. Let the light of reason shine in. Frankly, this attempt now to try and obfuscate the meaning of abstract is —well, frankly, despicable. I put the people that are doing this as one small step up from Mel Gibson.

    We have to fight the iron heads for years and now they come back want more of it. You will lose boys. You are wrong again and you will lose.

  55. “Young Turds”

    Back in the day we called them “Young Turks.” I like the new lexicon better.

  56. Night, I located Newman and skimmed it. I wonder how much weight it carries, given her reliance on the Alappat test. I thought SCOTUS had now disapproved that.

    Welcome, I see no problem to impose the EPO “technical” test on your Deming and Taguchi stuff. Try it at the EPO and let me know how you get on. If an algorithm can be applied to a very real and not at all “abstract” industrial process, why not your Taguchi thing?

    My point on “abstract” is that all 9 can happily sign up to it……because each of the 9 has a different idea what that word means.

  57. Gawd, three tiresome manifestos in a row,

    6, I told you to stay off that Examiner’s computer… Now back to work. I told you to empty those trash cans…

  58. 6, have you read Newman’s dissent in Bilski regarding the meaning of abstract?

  59. No apology necessary. I think it’s fascinating that the paragraph is apparently only a visual concept for Young Turds.

    Fixed.

  60. Oh, and sorry for the wall of text in Part 2, I was editing in notepad and didn’t notice what it was going to do on the screen.

    No apology necessary. I think it’s fascinating that the paragraph is apparently only a visual concept for Young Turks.

  61. MaxDrei,

    How would you classify the Deming et al approach to management (which includes the offspring of Six Sigma and Blackbelt programs) that are driving today’s advancements in efficiency? Where do Taguchi Methods and other forms of advanced decision making fall?

    Technically, management has moved away from the “gut instinct” towards “applied science” in the spectrum of human behavior.

    Keep in mind that your comment of “Me, I think “abstract” is a disguised way of saying that mere commerce is not “useful arts”. ” is likely on the wrong side of the 5-4 split.

  62. >>Once the Federal Circuit gets its teeth >>into “abstract” we will get clarification, no?

    Newman’s dissent in Bilski says it all. She’ll have to add though that if someone can characterize what you’ve done as an old well known rule and if your claim is so broad that no one else can use this well known rule then you are abstract because the SCOTUS says so.

  63. Malcolm,

    What bad facts? I was merely highlighting the fact that the ‘465 patent was a good patent (assuming it’s novelty and obviousness) and you in the past have defended isolated DNA patents, which are crpp.

  64. Oh, and sorry for the wall of text in Part 2, I was editing in notepad and didn’t notice what it was going to do on the screen.

  65. Now Ned, with that in mind. Let’s look at your question. Apparently you’ve now overcome your hangups about them reciting that the hedging method was old or new, even though you happened to mention in your hypo that it was a novel hedging algorithm. That’s a good thing. But, lets go ahead and just call it a hedging algorithm. k? No need for the excess verbiage “novel”.

    Your question appears to boil down to whether or not a claim being abstract leads necessarily to being wholly preemptive of an abstract idea, and whether that leads to it being abstract on and on.

    The answer was given above in Part 3. For the second situation I mentioned in Part 3 yes, a claim being blatantly an abstract idea will notify you that it also wholly preempts an abstract idea. This is simply the nature of such claims. You needn’t go round and round forever, as you can simply notice that is a consequence of the kinds of things that are in such claims. That is, it being abstract by its very wording does pretty much indicate that it will wholly preempt an abstract idea, but one need not go any further.

    However, in the first situation I metioned in part 3, you must note that the term “abstract” is simply a manner of speech being used for simplicity to describe the fact that a chunk of it wholly preempts an abstract idea.

    So in closing, one could go around and around saying that abstract>wholly preempt>abstract>wholly preempt. But not really, the different “therefores” (abstract>wholly preempt and wholly preempt>abstract respectively) only apply to different situations and in one situation the term “abstract” is being used as a manner of speech. In another way of considering the situation we find ourselves in though you can simply say that “abstract” and “wholly preempt an abstract idea” are simply two ways of describing the same thing, because you basically defined “abstract” in terms of the other in this context.

    By the by Ned, I would do an abstract idea analysis on Bilski but 1. it is hard an time consuming to make a more complete one than the surpremes did and 2. I’m not that bored right now.

    “And we call this… “law”?”

    Well, to be certain, there are things that the advanced student can consider, but again, that’s enough for another chapter and I’m not that bored tonight.

    Now I’m going to try to grab a few hours sleep before I must awaken and Bilski someone.

  66. Part 3. What does the abstract idea analysis mean in terms of abstract ideas being preempt etc and what can we draw from this understanding?

    Here I will attempt to answer what makes a claim “abstract”. To state it properly, it is simply whether the claim wholly preempts an abstract idea, in this context. However, there are two notable scenarios that come immediately to mind each explains a piece of how the terminology is properly used. And they are equally important.

    The first situation is claims that are not actually abstract themselves, but wholly preempt an abstract idea and are thus considered to be directed to the abstract idea itself (as well as some other stuff in some cases, or not in others) and are thus considered to be “abstract” in the eyes of the law and in a manner of speech. They are, as is apparent, not abstract themselves, but include within their scope at least one pure abstract idea and thus can be said, again, in a manner of speech, to be “abstract” because a complete chunk of what they wholly preempt is completely abstract. Note here that I’m not saying that a complete chunk of the limitations of the claims wholly preempts an abstract idea, or is an abstract idea, although that could be the case, it is irrelevant. I am talking about a chunk of the scope of the claims. Note also that in using this manner of speech, that doesn’t “make” the claim which is not abstract actually be abstract, or make it wholly preempt an abstract idea, it is simply a manner of speech used to describe the former situations.

    The second situation is claims that actually are abstract themselves. See, for instance, the infamous paradigm claim. A paradigm is abstract no matter which way you look at it. Same goes for a computer program itself, math problem itself, math formula itself, algorithm itself, etc. These claims are “abstract” themselves and it does follow that they will necessarily wholly preempt an abstract idea as there is no way for them not to. One would not properly say that this “makes” them wholly preempt an abstract idea, they just happen to.

  67. Part 2: MOT and the big picture.

    First I need you to understand that nothing else really matters save for that analysis above, or one equivalent to it done in your head. NOTHING. NOT MOT. NOT THAT THE ABSTRACT IDEA IS OLD OR NEW. NOT THAT THE CLAIM IS OLD OR NEW. NOTHING. 0. Capiche? Good. The rest of this is mere academic nonsense that doesn’t mean sht to what will happen in actual practice but is nice to know.

    That said, first let’s address the helpful shortcut that can be used, just to get that out of the way since it is largely irrelevant to anyone serious about an application (as they can do the abstract idea analysis and either prove or disprove whether the MoT got the right result). Specifically this is to find whether or not the MOT test is satisfied. This is a valuable clue because it can save so much time, and effort in the abstract idea analysis, it is rather like official notice in some respects, it is a shortcut, only really valid in clear cut cases. But the abstract idea analysis can really take up a lot of time and brainpower. The example I provided you with the other day didn’t pop into existence magically, I had to evaluate the claim carefully and for quite awhile to see through the veneer of their post solution activity. I then wrote down the abstract idea it appears to preempt, and I did an analysis similar to that one related above in my head. I note that in that case even the post solution activity didn’t matter because even with that the abstract idea was still preempt, that is, the 2nd circle was still clearly wholly inside the 1st. At least DDC thought it was a good catch. That said, if the MOT test is clearly satisfied then there is practically no chance the claim preempts an abstract idea. If the MOT test is clearly not satisfied then there is practically no chance the claim does not preempt an abstract idea. If the test is neither clearly not satisfied or clearly satisfied then the test produces errors quite often. See for instance that example I provided you with the other day. It is arguably satisfies MOT, arbuably not, but it clearly preempts the abstract idea I wrote down, and that is what counts. That’s simply how the shortcut works. Some people don’t like this. Some people say that doesn’t make a prima facie case, and the courts will have to put their 2 cents in about that. I say it probably does when properly applied. It is very easy to misapply it, especially in iffy cases. Note here that there are no iffy cases in the actual abstract idea analysis (as opposed to the shortcut MOT test), it is all rather clear cut save for the subjective parts I mentioned above. And so long as the applicant can simply respond and say well wait a minute what about this that and the other. That is, at first glance, if the MOT clearly is failed, the claim is prima facie invalid. Maybe not on second glance. Who knows? Someone could come along and clearly demonstrate that the abstract idea analysis clearly leads one in the other direction. At the least, they can be bothered to look at the claim a bit and consider whether the claim is iffy and whether or not their client wants an iffy claim. Most in the Useful Arts do not. It is mainly in the Non-Useful Arts where issues arise and you’ll have the situation of the practicioner desperately wanting to avoid having anything to do with the abstract idea analysis because 1. he knows the claim is bad or 2. it’ll be a big huge bother and he’ll pull out Oetiker etc. Personally, I think the USPTO should have this procedural tool because it has myriad benefits and fits squarely within the prima facie case standard.

    That’s about it for MOT. I could write another whole chapter on what is a particular machine or a transformation but that will be in Vol. 2.

    What you need to take away from this part is that MOT doesn’t really matter to a person that is serious about the claim. It mainly weeds out bad apples and unintentional drafting errors while providing ample opportunity for any agreived to respond.

  68. “So it seems a claim to a novel hedging algorithm wholly preempts the novel hedging algorithm and therefor is abstract because an abstract claim wholly preempts what it claims and therefor is abstract, and because it is abstract it wholly preempts”

    I think you jumbled your words a little there. You apparently just wrote down a jumble of words for giggles so far as I can see.

    Let me break this down for you. Probably for the last time, so let me be complete, and do be a dear and fav this thread so you can easily refer to it if I direct you back here. You will want to take this in parts because it will be TLDR otherwise. Yes. It is a small treatise. Yes, I’m kind of bored and can’t sleep.

    Part 1. Abstract Ideas and the proper analysis to tell if they are preempt by a given claim.

    You have a claim at issue. We’ll call this the instant claim. It doesn’t matter what it is directed to. It can be directed to an algorithm, a plane, a train, or a method of eating green eggs and ham. Alright? Anything.

    You then evaluate the scope of the claim. You could, for instance draw a big circle and write in the middle “the scope of the claim”.

    You then consider the teachings in the whole application. You evaluate whether or not you can find any abstract ideas therein. Or mathematical formulas which are simply notation for an abstract idea. Or algorithms. “Algorithm” as used in this context is just a name for a species of abstract ideas that happen to take the form of disembodied steps being abstractly performed, rather than, for instance, being done in the real world, like replacing an engine in a car. If you find one, you write it down.

    You then consider everything you know, from school, from life, from your wife, from your kids, everything, specifically focusing on the abstract ideas that you know. You should also endeavor to think outside the box a little to try to think of any relevant abstract ideas that might be pertinent to the instant claim but that you’ve never heard mentioned in your life before. Whilst thinking outside the box, try to read between the lines of the application, make sure there are no hidden abstract ideas. Like hedging in Bilski, it may not have been mentioned in the app itself at all, but I do believe it was at least hidden between the lines for someone familiar with what wsa transpiring. Now, if you think of an abstract idea that you think might be pertinent write it down.

    Now, draw the scope of a hypothetical claim written to only cover the abstract idea, math, algorithm etc itself. Just draw a circle and write “the scope of the abstract idea”. Advanced students can draw the circle in an appropriate proportion compared to the size of the scope of the first circle. You will eventually need to be an advanced student to get this analysis completely correct, but, for now, just draw a second circle.

    Consider in your mind whether or not the 2nd circle you drew would properly be within the 1st circle you drew. Consider if it would be all the way inside the circle. Consider if it might even be, in fact, a direct replica of the 1st circle, that is, it “goes inside” the 1st circle but is actually simply the 1st circle itself (if you are an advanced student and drew the proportions right then this is the situation with an instant claim that is blatantly covering only an abstract idea).

    Now. Evaluate where the circles would properly be in relation to each other considering the subject matter of each, and place them on the table appropriately. If the 2nd circle is all the way inside the 1st circle the claim is invalid. If the 2nd circle is exactly the same circle (same size and shape when positioned on top of the 1st circle) as the 1st then it is invalid. If the 2nd circle is only part way inside the 1st circle evaluate the portion that is sticking outside. Is there a mere field of use limitation that is preventing the first circle from wholly devouring the 2nd circle? If so, the claim is invalid. Is there mere post-solution activity (here feel free to use your subjective definition of this term for now) that is preventing the 1st circle from wholly devouring the 2nd? If so, the claim is invalid. Finally, evaluate the portion of the 2nd circle sticking out of the 1st circle (if there is any) one final time, is it a mere sliver compared to the overall 2nd circle? Feel free to use your subjective judgement on this later part. If so, then the claim is invalid.

    If the 2nd circle is wholly outside the 1st circle then the claim is fine. If the portion of the 2nd circle sticking outside of the 1st circle is a substantial amount of the 2nd circle as a whole, then the claim is fine. Again, in this later step, feel free to use your subjective judgement.

    Repeat this, substituting the scope of every abstract idea you came up and wrote down for the 2nd circle. If all of them are fine then the claim is fine. If one fails, and is found to be inside the circle as above then the claim is invalid.

    Eventually you’ll be able to do this analysis in your head.

    As to performing the analysis for the Bislki case, I’ve forgotten the claim and don’t feel like looking it up atm. Plus it is (or might be) labor intensive, and I doubt my providing you with a good example would help you any more than what I’ve already given you. I posted you a great example just the other day relating to that claim that deals with dosing some medicine in subsequent doses after the first.

  69. I’m enjoying this thread. It reminds me of the famous passage in Alice in Wonderland about words meaning what I (the Red Queen, if I have remembered correctly) say they mean. I look forward to enjoying the new Burton/Depp version, now out on DVD

    Thus it is that “technical” means what the EPO says it means, and “abstract” means what SCOTUS says it means.

    The EPO is on safe ground, because ever since long long before the US Constitution was written, people have understood the broad distinction between “useful arts”, commerce, trading, pure science, mathematics and the humanities; and “technical” is nothing more than a continuation of that distinction.

    But “abstract”?

    Me, I think “abstract” is a disguised way of saying that mere commerce is not “useful arts”. The 5:4 SCOTUS split is finessed by the use of a term, “abstract”, which means whatever you want it to mean.

    Which is OK if you think of the European Governmental 50:50 split when writing Art 69 EPC in 1973, resolved by a political “fix”, namely, the manifestly wishy-washy, all things to all men, Protocol on the Interpretation of Art 69.

    The Protocol has turned out to be very effective, in bringing about ever closer harmony between the different national patents courts in Europe about the scope of protection of a patent claim.

    More important than the time it takes to get harmony is the “ever closer” bit, the trend towards (rather than away from) legal certainty.

    Once the Federal Circuit gets its teeth into “abstract” we will get clarification, no?

  70. 6, What is wholly preempt in Bilski?

    Answer,

    “In bilski they noted that it a specific abstract idea of how to hedge that was applied to a particular field (i.e. a field of use limitation ala flook). That is to say, the abstract idea was a specific abstract idea of how to hedge and the field of use limitations didn’t save it.”

    So it seems a claim to a novel hedging algorithm wholly preempts the novel hedging algorithm and therefor is abstract because an abstract claim wholly preempts what it claims and therefor is abstract, and because it is abstract it wholly preempts…..?

    Reducing

    Abstract -> Wholly Preempts -> Abstract -> Wholly Prempts -> Abstract, etc., etc., etc.

    Sounds a lot like bootstrapping to me.

    6, If you really understand this, break it down just a little bit more for us ‘tards.

  71. go take a course on reading in context

    Deliciously ironic – taken in context of the poster.

  72. Ned, you have to remember that hedging is itself an abstract idea as well as the various smaller embodiments that might might not be an abstract idea themselves.

    B-b-but our hedging r-r-relates to the w-w-weather!!!!

  73. “6, Bilski? What is wholly preempted?”

    In bilski they noted that it a specific abstract idea of how to hedge that was applied to a particular field (i.e. a field of use limitation ala flook). That is to say, the abstract idea was a specific abstract idea of how to hedge and the field of use limitations didn’t save it.

    Remember Ned, the concept of “wholly preempt” the abstract idea is shaped by Flook.

    “But wouldn’t the vice here be that hedging is old?”

    No, because this particular manner of carrying out hedging wasn’t old (apparently).

    “old process, hedging”

    Ned, you have to remember that hedging is itself an abstract idea as well as the various smaller embodiments that might might not be an abstract idea themselves.

    “Normally, under Diehr, that is enough to make it non abstract.”

    You misunderstand Diehr. It had nothing to do with whether or not the method which the abstract idea was tied to was “old” or whether it was “new”. In Diehr it had to do with the fact that the method the abstract idea was used in was plainly a statutory method pre-addition of the abstract idea, and the claim did not preempt all uses of the abstract idea (in fact, there are many many uses of the abstract idea used in Diehr, and have been for centuries).

    “The problem with Bilski is that it once again seem to equate lack of novelty with non statutory subject matter. ”

    If I ever hear you utter these nonsensical words again I’m not discussing this issue with you ever again Ned. This is not the case. They did not equate lack of novelty with non-statutory subject matter. At all. Not even a little bit. Not even a TINY SMIDGEN. And I’m dam fed up with explaining this to you. If your brain simply isn’t large enough to comprehend what is going on, you can at least spare us that can the endless parroting of this notion which plainly did not happen.

    “Citing Bilski is completely non illuminating as to what “wholly preempt” means because in the end all you have said is if what is claimed is old or obvious, it wholly preempts. ”

    Hardly. That is not what Bilski said and it isn’t what my citing to it means. Kennedy mentioned that hedging was old only in passing. He did not rely on that fact to make the decision. He merely noted that it was an old method that was well known. Just noted it, as an aside. Probably in no small part because he didn’t want to have to write out in long hand what hedging involves.

    DO YOU UNDERSTAND NED? THE FACT THAT HEDGING WAS OLD DID NOT FACTOR INTO THE DECISION, IT WAS MERELY MENTIONED INCIDENTALLY. CAPICHE? If you don’t believe me, go take a course on reading in context.

  74. I think a more accurate, if unsatisfying, interpretation is that Diehr should have been controlled by Flook

    Diehr is the Master – Flook is controlled by Diehr

    Bilski 14

  75. Another interesting excerpt from In re Bilski is when they discuss Schraeder:

    “Similarly, In re Schrader presented claims directed to a method of conducting an auction of multiple items in which the winning bids were selected in a manner that maximized the total price of all the items (rather than to the highest individual bid for each item separately). 22 F.3d 290, 291 (Fed. Cir. 1994). We held the claims to be drawn to unpatentable subject matter, namely a mathematical optimization algorithm. Id. at 293-94. No specific machine or apparatus was recited. The claimed method did require a step of recording the bids on each item, though no particular manner of recording (e.g., on paper, on a computer) was specified. Id. But, relying on Flook, we held that this step constituted insignificant extra-solution activity. Id. at 294.”

    It seems like the CAFC is saying that the claims in Schraeder would have satisfied 101 if it had only specified the particular manner of recording. Does anyone think that the CAFC would think that such a limitation would satisfy the MoT test? Why or why not?

  76. I still don’t think Diehr and Flook are distinguishable in a meaningful sense.

    Flook sought to patent the diagnosis, Diehr sought to patent the cure.

  77. Ned, I think we understand each other and agree. The CAFC seemed to discuss Arrhythmia as follows, where I have bolded the section I think refers to Arrhythmia:

    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.

    This court and our predecessor court have
    frequently stated that adding a data-gathering
    step to an algorithm is insufficient to convert
    that algorithm into a patent-eligible process.
    E.g., Grams, 888 F.2d at 840 (step of
    “deriv[ing] data for the algorithm will not
    render the claim statutory”); Meyer, 688 F.2d
    at 794 (“[data-gathering] step[s] cannot make
    an otherwise non-statutory claim statutory”).
    For example, in Grams we held unpatentable
    a process of performing a clinical test
    and, based on the data from that test,
    determining if an abnormality existed and
    possible causes of any abnormality. 888 F.2d
    at 837, 841. We rejected the claim because
    it was merely an algorithm combined with
    a data-gathering step. Id. at 839-41. We
    note that, at least in most cases, gathering
    data would not constitute a transformation of
    any article. A requirement simply that data
    inputs be gathered — without specifying how
    — is a meaningless limit on a claim to an
    algorithm because every algorithm inherently
    requires the gathering of data inputs. Grams,
    888 F.2d at 839-40. Further, the inherent
    step of gathering data can also fairly be
    characterized as insignificant extra-solution
    activity. See Flook, 437 U.S. at 590, 98 S.Ct.
    2522.

    So the claim in Arrhythmia evidences a “particular transformation” because it analyzes the heartbeat data and transforms it into a representation, and not just raw data, even though no step of displaying the data is recited.

    My question at this point is whether the CAFC considers the claim in Alappat to satisfy the requirements of the MoT test. That claim, which the CAFC held to satisfy 101 for producing a “concrete, tangible result,” merely required a transformation from raw data points to a curve, without the requirement that the curve represent a physical entity. But maybe if you specify how the data is transformed into a representation in the real world, then the “particular machine” prong might be satisfied, even if the claim does not specify that the underlying data represents anything in the real world, or where it came from.

    Does anyone else think that the CAFC is likely to want to find claims like the ones in Alappat patentable? Why or why not?

  78. I think a more accurate, if unsatisfying, interpretation is that Diehr should have been controlled by Flook, but in the intervening couple of years between those cases, the membership of the Court changed, and what had been the majority view (authored by Stevens) became the dissent. I still don’t think Diehr and Flook are distinguishable in a meaningful sense. It’s simply a matter of an appellate court refusing to acknowledge that it won’t apply stare decisis–a sort of overruling sub silentio.

  79. IANAE: Arrhythmia.

    Your claim is invalid because it pre-empts the abstract concept of my disagreeing with the holding of a Federal Circuit panel.

    Do you consider the Arrhythmia decision to be a well-reasoned analysis of whether the actual subject matter of the claim is abstract?

  80. In Flook, indeed, had the claim included a measurement of some chemical process, the claim may have been held patentable even if the alarm limit was not then used to trigger an alarm.

    I would hope not. Even triggering an alarm is tantamount to saying “hey, look what number I calculated!” You’re still patenting the equation in the abstract unless you do something real with the result of the calculation, like Diehr did.

  81. TINLA, thanks.

    All you have said in your post is that you must do something useful with the measurement. That was an assumption that was a given in my question.

    In Arrhythmia, the measurement was of voltage from an electro-cardiogram type device. The math was new. The datum produced was a measurement of the risk of heart attack.

    In Prometheus, the measurement was of a metabolite in the blood. The problem here is nothing useful was done with the measurement. The measurement itself provided the answer, which may not be enough.

    In Flook, indeed, had the claim included a measurement of some chemical process, the claim may have been held patentable even if the alarm limit was not then used to trigger an alarm.

  82. Ned said Proposition: a claim that requires the measurement of something real and physical is not abstract even if the claim does not further require the transformation of an article into a new state or thing. For example, the measurement of weight, temperature, voltage, resistance, time, distance, pH, opacity, volume, and the like ties the claim directly to the real world. Such a claim, I submit respectfully, is not abstract.

    I don’t know for sure, but I think there also needs to be some sort of transformation of that measurement data. Simply measuring and storing might not be enough, and me called a “mere data gathering step.” The CAFC said in In re Bilski that the requirement for a “particular transformation” can be met by transforming data that represents soemthing that exists in the real world, and does not require transfroming the phical object or substance. But simply measuring data may not be a “tranformation.”

    That said, it appears that a transformation of data alone is not sufficient without defining what the data represents with particularity. If you look at the claim in Flook, it is directed to “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” in which the new alarm is calculated at least in part on the basis of a newly measured value of the “process variable.” However, the “process variable” is never defined with particularity. So while the “transformation” is present, it does not appear to be a “particular transformation.”

    So I think you can see why I don’t think the proposed “mere data gathering step” will satisfy the “particular transformation” requirement of the MoT test. There must be a transformation too, and particularly defining wuhat the data represents is needed to make it a “particular transformation.” At least, I think that is the CAFC’s view.

  83. 6, Bilski? What is wholly preempted? I’m having trouble.

    Hedging per se? But wouldn’t the vice here be that hedging is old?

    Hedging of energy costs vs. the uncertainty of weather? Possibly old, but obvious if not.

    The math of claim 4?

    Now this is where I think the Supremes got it wrong. The math was tied to an old process, hedging. Normally, under Diehr, that is enough to make it non abstract. As I said, I am struggling to follow you why it is not in this case.

    The problem with Bilski is that it once again seem to equate lack of novelty with non statutory subject matter. The way they discussed the “abstractness” of the Bilski claim was entirely directed to the fact that the claim covered hedging (of energy costs) and hedging was old (or obvious). Most of us stand back and scratch our heads.

    Citing Bilski is completely non illuminating as to what “wholly preempt” means because in the end all you have said is if what is claimed is old or obvious, it wholly preempts. This is, in the end, meaningless.

  84. NWPA: IANAE: that was a cheap shot becoming of you.

    Would you prefer it if I refrained from pointing out that you act in the exact same way you complain that others act? Because right now I’m trying really hard to keep myself from doing it again.

  85. NWPA: So much fun arguing with you 6 as you throw **** against the wall and try to get others to clean it for you.

    Actually, that sounds a lot like your approach to IDS practice.

  86. >>I want to know because you’re trying to >>pull “expertise” on those who are supposedly >>telling you how to construe claims.

    Well, if I ignore the rest of your offensive post that part is ok. I am at least a person of ordinary skill in the art of computer science. I have under/grad degrees and years of experience.

    So much fun arguing with you 6 as you throw **** against the wall and try to get others to clean it for you. I suppose that is your revenge for having to weed our IDSs.

  87. “6, “wholly preempt” in Benson was a test stated in connection with mathematical algorithms. In substance, the Supremes decided the claims were directed to the mathematics because the machine was just calculating the math.”

    You know as well as I do that is the test for any abstract idea. Stop denying it Ned, just accept it.

    “Such claims do preempt all way doing what is claimed, whether described, or yet to be invented.”

    I don’t think that is necessarily true, but it could be. And if so, then those must all die. I would agree with you though that there is a high correlation between claims preempting an abstract idea and claims that provide a “functional at the point of novelty” limitation attached to only token recitations of structure, and perhaps even in the transformation scenario as well.

    “If they are different, please give us an example of “wholly preempt” outside the MA context that is different from “functional at the point of novelty.””

    Bilski is one that comes to mind… You see Ned, when the feds or ussc refer to the abstract idea exception, it is one and the same as what I am more descriptively stating “wholly preempts an abstract idea”. I can’t take credit really though, it’s all but verbatim from Benson.

  88. Me: “Next thing you know someone is going to invent a method of determining what time is the best time to walk your dog”

    RedMonkey: Actually, it isn’t that obvious what the best time would be.

    And now we know why RedMonkey’s house smells like dogshxt.

  89. Why do they continue to issue isolated DNA patents, when those technologically worthless, innovation inhibiting patents are clearly in violation of 101? The ‘465 patent is certainly more innovative than those.

    The Hutz Strategy: when confronted with bad facts, simply make up your own.

  90. “6, try answering questions put to you and try asking questions with a reason for you wanting to know and maybe people will respect you.”

    I want to know because you’re trying to pull “expertise” on those who are supposedly telling you how to construe claims.

    “You see to feel that it is just fine to pick whatever you want out of posts and ignore the rest and draw your own bizarre conclusions.”

    The only “conclusion” I came to was that you were an arsehat trying to act holier-than-they who are likely coming to a satisfactory claim construction.

    I’ll take your evasiveness as an indication that you aren’t even all that skilled in the first place, probably not even of ordinary skill, and will now conclude you have no room to put others down for their interpretations. As if anyone needed further indication to draw that conclusion.

  91. 6, “wholly preempt” in Benson was a test stated in connection with mathematical algorithms. In substance, the Supremes decided the claims were directed to the mathematics because the machine was just calculating the math.

    But you extended, in your post, the Benson concept to abstract claims outside of mathematical algorithms context. This is why I asked you the question of “functional at the point of novelty.” Such claims do preempt all way doing what is claimed, whether described, or yet to be invented.

    If they are different, please give us an example of “wholly preempt” outside the MA context that is different from “functional at the point of novelty.”

  92. >>The question, if you will recall, was “just >>how skilled are you?” Think you could manage >>an answer?

    6, try answering questions put to you and try asking questions with a reason for you wanting to know and maybe people will respect you.

    You see to feel that it is just fine to pick whatever you want out of posts and ignore the rest and draw your own bizarre conclusions. Just painful reading your posts.

  93. “Artists reduce abstract ideas to material form.”

    Just so for Useful Artists as well as Artists. Some people just have a hard time grasping that.

  94. “I write applications in more than one field. There is a differene between being an expert and being one of ordinary skill in the art. You need to sit down and read chapter 21 of the MPEP.”

    Our conversations would be so much more pleasant if you could simply answer my question with an answer rather than a non-answer.

    The question, if you will recall, was “just how skilled are you?” Think you could manage an answer?

  95. “Evidently 6 believes that the interaction of photons with the retina to generate electrical signals does not involve transformation of matter. In 6’s view, it is just magic. ”

    No, it does, but that isn’t the type of transformation that we’re looking for here jackarse. We’re looking for a transformation of the subject matter, not of the outsider.

  96. 6, “wholly preempt” sounds just like “functional at the point of novelty.” In your mind, are they the same thing?

    Scott Dunn, your analysis of the Ariad claim is in fact the “functional at the point of novelty” test. Violates WRD, enablement and is indefinite.

    Mike, but, we do have two Fed. Cir. cases already where measurement of something physical was enough. Prometheus was one (but it was vacated) and Arrhythmia was the other.

  97. The patent provides a good summary of commonly utilized metrics in determining online ad effectiveness.

    (1) I do not know if it could survive 102 or 103 scrutiny as any one of the specified common metrics found in or deemed obvious by the prior art could invalidate.

    A cursory five minute search pulls up the following from 2000:

    ‘In addition to customizing and optimizing advertising and direct marketing campaigns, technology available through the Internet has also made it possible to track results in real-time and make appropriate refinements as needed’

    link to thefreelibrary.com.

    Even if the above referenced prior art ‘refinements’ were performed manually instead of automatically would the claimed automation of a rudimentary decision involving ad selection (no complex ad selection algorithms were disclosed within the spec) be deemed a non obvious improvement?

    Seems an ordinarily skilled in the art corporate IT employee could compose a design for this pivotal automation based upon one of the specified common metrics within a few days.

    (2) Seems a lot of business method patents (this one included) would not survive 271(g) workarounds where the extraterritorial server would transmit information (ad selection determination in this case) into a jurisdictional location.

  98. The BPAI has issued two post-Bilski v. Kappos decisions. As expressed in Ex Parte Birger et al, 7/12/2010, the new patentability test for business method patents might be whether the invention is “directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, messages, addresses, identities, data structures, software layers, software applications, software protocols, and the abstract intellectual processes associated with them within the claims.” Not quite as concise as machine-or-transformation.

  99. Generally speaking, there is something seemingly reasonable…

    But mustn’t claims be read “as a whole”?

    I prefer the ‘does it have value’ test

    A ridiculous test, unless “value” is defined, and preferably not by the applicant.

  100. Mike proposes a “is it meaningful” test. Good, but I prefer the “does it have value” test.

  101. As someone who does software and business methods cases, I have to disagree that simply measuring something cannot make it patentable subject matter–unless you would allow patentability of a formula like e=mcc. It’s rudimentary to add some measuring to an equation to turn it into a claim. A method of determining energy comprising the steps of:
    measuring the mass of an object; and
    computing an energy of the object by multiplying the mass by the square of the speed of light.

    Of course who you’d sue for infringement is debatable.

    Generally speaking, there is something seemingly reasonable (albeit sometimes unwieldy) in applying the strategy of removing the “obvious” steps (e.g., measuring, computing, implemented on a computer, implemented on a network, etc)–the so called insignificant pre- or post- solution activity–and looking at the heart of the claim and asking whether that is patentable subject matter.

    Frankly, I think the patent applicant should bear the burden (during prosecution) of showing either (i) certain steps are not “insignificant” and that such steps turn the whole process into patentable subject matter; or (ii) that the “heart” is patentable subject matter. If an applicant/attorney cannot make a reasonable argument about one of those prongs, then 101 keeps it out. This type of showing will also bare fruit in other areas of prosecution too: 102, 103 and 112.

  102. “Next thing you know someone is going to invent a method of determining what time is the best time to walk your dog”

    Actually, it isn’t that obvious what the best time would be. Tthe middle of the night is good for some, since you are less likely to get caught leaving dog turds on the sidewalk. On the other hand, you’re more likely to step in something unpleasant as well.

    Pray tell, what is the best time and why?

  103. “a patent can only claim one method, not all possible methods for achieving the same claims.”

    Not sure what “achieving the same claims” means. I assume you mean the achieving the same result as that which the claim is intended to achieve.

    If so, how do you know his claim is the only way to achieve the result that he has achieved? Is it even remotely possible that there is another way and you just aren’t clever enough to invent it?

  104. “Hmmm visually?”

    Evidently 6 believes that the interaction of photons with the retina to generate electrical signals does not involve transformation of matter. In 6’s view, it is just magic.

  105. I looked over the claims and they recite a series of steps without really describing the method. In other words, the claims are constructed to pre-empt any new way to achieve the claims no matter what method is used.

    Consider that in Ariad v. Lilly, the court rejected the claim that “any and all compounds” that could reduce genetic expression could be covered by a patent. Such a claim would preclude all competing methods of achieving the same claims.

    Or, to put it differently, a patent can only claim one method, not all possible methods for achieving the same claims. In it’s essence, this patent is for an *idea* and nothing more. No particular method is recited with code or even showing the mathematical steps.

    Even if the claims are “useful”, it doesn’t matter because it is nothing more than a series of mathematical steps. A second pair of eyes would have seen that.

  106. Maxdrei wrote: >>I need an “Abstract”. I use my “Claim 1” because

    I see what is going to happen here. The new battle is what does abstract mean. J. Newman wrote a very clear explanation of what abstract means in patent law–not art–in her Bilski dissent. J. Newman is correct and everyone should read her definition of abstract.

  107. 6 disclaimer:

    6 jabbered:
    >>I note you yourself have admitted non-expert >>status, so just how skilled are you?

    I write applications in more than one field. There is a differene between being an expert and being one of ordinary skill in the art. You need to sit down and read chapter 21 of the MPEP.

  108. “The real question: why does the PTO require a technical background to become an agent if they insist on issuing crpp like 7747465?”

    I don’t know? Why do they continue to issue isolated DNA patents, when those technologically worthless, innovation inhibiting patents are clearly in violation of 101? The ‘465 patent is certainly more innovative than those.

  109. Seems to me that the compass needle is swinging wildly between “Much is Abstract” and “Nothing is Abstract”.

    Artists reduce abstract ideas to material form. Sometimes that material form is worth millions of dollars. Data inputted by the eye is processed and transformed by a particular machine, the artist’s brain, then outputted to paper. Can we say that, no matter how “real” is the direct product of the data processing, the method of data processing, as such, is “abstract”? in that case, pointing to the concrete products of a claimed process is not enough to demonstrate that the process, as such, is anything else but “abstract”.

    When I write a patent application, I need an “Abstract”. I use my “Claim 1” because in that claim I have abstracted the essence of the inventive “concept” (another word for “idea”)which is the subject matter of my application. I hope that I have indeed pre-empted every realisation of that concept for, otherwise, I have failed in the task my trusting client is relying on me to carry out. But, in that case, every inventive concept is “abstract”.

    I suspect that the PTO will have no stomach to make 101 “abstract” objections, and that there will be no objections under 103. Is “6” typical, or an exceptional Examiner?

  110. “because how else could you detect its existence other than by observing its interaction with something else that is real and physical? ”

    Hmmm visually?

    Either way that is beside the point to the abstract idea analysis. After all this time, and all this Benson discussion Ned should know better. As I have explained to him, dam near every time, it matters very little if the claim is incidentally tied to a machine or provides a transformation if it also preempts substantially every use of an abstract idea. The machine and the transformation are simply clues that indicate when this is happening as there is a high correlation between when a claim substantially preempts all uses of an abstract idea and when it fails MOT.

    You should note that it is entirely possible for the method to not be abstract itself, as was the case in Benson, but nonetheless substantially preempt all the uses of an abstract idea. Likewise, some claims are blatantly directed to the abstract idea, and the MOT weeds these out nicely.

  111. ” I am inclined to think that this may be correct, ”

    I am inclined to disagree. You apparently have yet to read the decision despite your detailed walkthrough. The claim was invalidated because it substantially preempt a certain abstract idea. Changing the preeamble would not change that. The “current tests” are simply a simplified version of the analysis that actually needs to be done, and would still have been done in Benson. The result would thus be the same.

  112. “The witch hunt should end: those not skilled in the computer arts should stop trying to tell those of us that are skilled in the computer arts how we should interpret claim language. ”

    How about those of us that are skilled in the art? How about us? Should we stop too?

    I note you yourself have admitted non-expert status, so just how skilled are you?

  113. “either directed to statutory processes tied to a particular machine or directed to statutory apparatuses.””

    So basically IPXL 112 2nd paragraph? Or are they in different claims? I don’t care to look myself.

  114. Has anybody conducted a Turing test on Mooney and his “POWERFUL COMPUTER BRAIN”? My guess is that the POWERFUL COMPUTER BRAIN might pass, but Mooney would not.

    FYI — a “logic module” is a fancy name for a circuit — you know, those things that have resistors, capacitors, and/or transistors, etc. Hard to comprehend for somebody still living in the 60s — must have been one too many acid hits that did him in.

  115. “dynamic sampling engine” “logic module”

    Just another word for a POWERFUL COMPUTER BRAIN! And this one is exceptionally powerful. Perhaps the most powerful ever? Certainly *incredibly* powerful.

    Yes, folks, this invention provides a method of doing an experiment!!!!!! It’s really amazing. You measure the click through rate of various ads being displayed on the internet and — my god, this is just incredible — actually compare the click through rates of the ads and (I am nearly passing out with excitement as I type this) cause the ad with the hightest click through rate to be displayed!

    Try to believe it!!!! It’s like the 25th Century is already here. Buck Rogers must have gotten into a time machine and came back to earth to invent these incredible “logic modules” which make the whole thing possible. And then he must have traveled a bit farther back in time to make sure that the Examiner did in fact drop that extra hit back in college. Can you imagine?!?! LOGIC!!! Just like in Star Trek!!!! Except it’s right here on earth, in our patent office!!!!!! Gene Roddenberry is like Nostrademus or something. I’m going to go watch all the old episodes. Next thing you know someone is going to invent a method of determining what time is the best time to walk your dog and then we might as well stop evolving because we’ll know we’ve reached the pinnacle of human achievement.

  116. those not skilled in the computer arts should stop trying to tell those of us that are skilled in the computer arts how we should interpret claim language.

    One needn’t be skilled in any art to interpret most “computer-implemented” inventions. That has always been the case.

    The real question: why does the PTO require a technical background to become an agent if they insist on issuing crpp like 7747465?

  117. Patentology, I just look at what the Supremes said about Benson in Flook. They thought that case was about mathematical algorithms, and that the computer was incidental.

    So if the claim is to an improved machine, as you suggest, there is no problem. Ditto, as in Diehr, if the process is directed to a traditional process where the mathematics is not the point of the process.

    Back to Flook, the problem with the Flook claim was that it was not tied into the real world either as an input or as an output. MOT covers the output, but not the input. Thus my proposal above.

  118. Why is a definition of “business method” needed? Being a “business method” invention/claim is not the 101 test.

  119. It seems to me that Gotschalk v Benson has become something of a difficult case for SCOTUS and the CAFC. There is no real basis to overrule it, because the outcome was not manifestly unreasonable, but on the other hand some of the most convoluted reasoning I have read has been related to distinguishing more recent (patentable) claims from Benson’s unpatentable claims.

    For those requiring a quick refresher, Benson’s claims related to converting “binary coded decimal” (BCD) numbers into pure binary representations. This was quite a useful thing to do at the time, when the most powerful computers had about 0.01% of the processing power and storage capacity of a current-generation Pentium PC, because it was convenient to use BCD format for input and output, but more efficient to store and calculate in binary format. Very efficient methods of conversion were therefore valuable.

    Benson’s method claims explicity recite the use of a “reentrant shift register”, which was and is a commonplace item of digital hardware. So the invention is tied to a machine, but arguably not a “particular machine”. The Court found that the claimed method pre-empted all uses of the algorithm, and was for an unpatentable abstract idea.

    The issue I have with this may be illustrated by an analogy. If I invent an improved gear assembly, that could be used in a wide range of machanical applications requiring gears, I am not precluded from obtaining a patent on the assembly per se merely because the individual parts of the assembly may be well known, or because my claim would “pre-empt” all possible applications of the gear assembly. Yet this is, in effect, what Gottschalk holds in the case of an information-age component.

    I have seen it suggested that Benson’s claim might have been patentable, at least under current tests, if it had been directed to “a method of operating a reentrant shift register” rather than a “method of converting signals from binary coded decimal form into binary”. I am inclined to think that this may be correct, but observe that this only highlights the arbitrariness of a test that can be drafted around by a change in form but not substance.

  120. I agree with Heller’s proposition since it doesn’t seem like you can measure something real and physical without transforming matter in some way, because how else could you detect its existence other than by observing its interaction with something else that is real and physical?

  121. Edited:

    Dan, perhaps, but they did refer to Benson, which I understand as requiring a determination of whether a claim, directed a mathematical algorithm, is reciting a general-purpose digital computer as an incidental means for calculation or rather is to directed to an improved machine, an improved computer where the machine itself is new.

    When a claim is not directed to a mathematical algorithm, but rather is directed to a more traditional process that may or may not involve mathematics, the question becomes whether the claim is “abstract.” Clearly, the Supreme Court did not approve of any test outside of the MOT. They left that to the Federal Circuit.

    As to one such test as to whether a claim (not directed to a mathematical algorithm) is abstract even if it does not satisfy the MOT, see my proposition above.

  122. Dan, perhaps, but the did refer to Benson which I understand as requiring a determination of whether a claim to a mathematical algorithm reciting a general-purpose digital computer is to directed to an improved machine or merely directed to whether the machine is calculating the mathematical algorithm. When a claim is not directed to a mathematical algorithm, but rather is directed to a more traditional process that may or may not involve mathematics, the question becomes whether the claim is “abstract.” Clearly, the Supreme Court did approve of a test outside of the MOT. They left that to the Federal Circuit.

    As to one such test as to whether a claim is abstract even if it does not satisfy the MOT, see my proposition above.

  123. While I agree with the above posters that the method appears to be a computer-implemented method, I have to disagree with Ned… The MOT test provides no guidance as to the difference between a “specific machine” and a general-purpose machine, and why a method tied to the former is patentable and the latter isn’t. And I think the Supreme Court agreed, which is why they threw out the MOT test as being the sole test.

  124. Proposition: a claim that requires the measurement of something real and physical is not abstract even if the claim does not further require the transformation of an article into a new state or thing. For example, the measurement of weight, temperature, voltage, resistance, time, distance, pH, opacity, volume, and the like ties the claim directly to the real world. Such a claim, I submit respectfully, is not abstract.

  125. One skilled in the art would recognize this as a computer implemented method. The witch hunt should end: those not skilled in the computer arts should stop trying to tell those of us that are skilled in the computer arts how we should interpret claim language.

  126. “The ‘465 patent claims a method and apparatus for determining the effectiveness of internet advertising. The claimed method does not explicitly recite any hardware except for a “manager console”, “dynamic sampling engine”, and “logic module.” In response to a Section 101 rejection, the applicant amended its claims and then — without explanation — provided the conclusory argument that the application was “directed to statutory subject matter because the claims are either directed to statutory processes tied to a particular machine or directed to statutory apparatuses.””

    Interesting issue coverage and wording, DC. A “dynamic sampling engine” has got to be a processor or other configured hardware to provide the functionality in its name. So I see a decent argument that this claim satisfied MoT, and apparently the Examiner agreed.

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