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.
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).
“… 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.
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.
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.
IANAE =
Inventor?
Aactually
Not.
Actually
Examiner
IANAE =
Inventor?
Aactually
Not.
Actually
Examiner
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.
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.
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.
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.
“need to have a machine or a transformation
Maybe in the pre-Bilski era, but not anymore!
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?
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.
“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.
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. ”
Maybe it was the same imbibing of the Bilski Decision that left Malcolm all silent and sent IANAE all wacky.
Bilski 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.
This new “Actual Inventor” seems a bit more excitable than the old one. Almost to the point of … parody.
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!!!
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.
“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.
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!
your anti patent view
What are some of the anti-patent views you think I have?
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.
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!
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.
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.
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.
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.
“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?
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.”
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.
Compare “math” with “applied math”.
Sixy: Thanks for opening up and sharing your circular, uh, thoughts.
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.
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.
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.
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?
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.
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.
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?
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.
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.
“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.
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.
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.
At any rate, any valid software patent is not infringed by software running on a generic computer.
How do you figure?
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.
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.
6,
That part was too abstract.
“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.
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.
“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.
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?
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.
“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.
>>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.
“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.
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.
2,562 words of “ You apparently just wrote down a jumble of words for giggles so far as I can see.”
Thanks 6
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.
“Young Turds”
Back in the day we called them “Young Turks.” I like the new lexicon better.
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.
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…
or is that on the to-do list with section 2100 of the MPEP?
6, have you read Newman’s dissent in Bilski regarding the meaning of abstract?
“No apology necessary. I think it’s fascinating that the paragraph is apparently only a visual concept for Young Turds.”
Fixed.
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.
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.
>>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.
“assuming it’s novel and nonobvious”
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.
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.
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.
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.
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.
“feel free to use your subjective judgement”
And we call this… “law”?
“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.
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?
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.
“go take a course on reading in context”
Deliciously ironic – taken in context of the poster.
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!!!!