Guest Post: USPTO Must Amend Examiner Guidelines On Bilski

by Paul Craane of Marshall Gerstein & Borun

In the wake of Bilski, the United States Patent and Trademark Office has provided unclear, and potentially incorrect, guidance to the Examining Corps regarding the application of 35 U.S.C. 101. The guidance instructs examiners to reject claims if the claims fail to meet the machine-or-transformation (MoT) test, absent some "clear indication that the method is not directed to an abstract idea." This application of Bilski effectively ignores the guidance provided by the opinion to the effect that the MoT test is not the sole test for patent-eligible processes under Section 101.

According to existing precedent, the examiner has the burden to make out a prima facie case before the burden shifts to the applicant. Given that the examiner has the burden and given that the MoT test is not the sole test, a failure to meet the MoT test should not automatically result in rejection of a claim. In fact, if failure to meet the MoT test did necessarily result in the rejection of a claim, then the USPTO would be using the MoT test as the sole test for patent-eligibility, contrary to Bilski.

Of course, the guidance does not suggest a rejection based solely on the MoT test, in that the examiner must still look for a clear indication that the method is not directed to an abstract idea. Even though there is an additional step, this procedure would appear to shift the burden from the examiner to show patent-ineligibility to the applicant to affirmatively show patent-eligibility before the examiner has made out a prima facie case of patent-ineligibility. According to Bilski, there are only three exceptions to patent-eligibility: laws of nature, physical phenomena, and abstract ideas. In accordance with Bilski, unless one of these exceptions is shown, the examiner can hardly be said to have made out a prima facie case of patent-ineligibility, such that the burden should shift to the applicant.

Consequently, the USPTO should amend its guidance to clarify that the examiner has an obligation to show that the claim recites an abstract idea (or law of nature or physical phenomena) to reject the claim, rather than simply indicating that if they should reject after applying the MoT test if they fail to find a clear indication that it does not recite an abstract idea.

Note: As per our usual rule, this post does not necessarily reflect opinions of Mr. Craane's firm or its clients.

151 thoughts on “Guest Post: USPTO Must Amend Examiner Guidelines On Bilski

  1. 151

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  2. 148

    AI: The competent and intelligent men and women of the Business Method Arts Patent Unit will do as they always have done. Follow the law and obey the rules. Thats why as Dennis has pointed out, business method patents are being granted at an all time high.

    Patent grants are at an all time high because examiners are continuing to do what they’ve always done? I can’t argue with logic like that.

    Oh wait, maybe patent grants are at an all time high because of Bilski, even though the PTO was already embarking on its record pace back in January. I suppose there couldn’t possibly be some other reason for it.

  3. 147

    Pssst IANAE,

    Try to suppress the glee in your posts when you are smiting AIs with the (obvious) rogue examiner tactic of following the letter of guidance and violating the spirit (and substance) of the law.

    You are less likely to get smacked upside the head by AI’s (I realize that you are still convalescing over the Bilski decision, but serving up softballs to AI won’t make you feel better).

  4. 146

    Posted by: 6 | Jul 26, 2010 at 09:13 PM: End Book 1.

    _____

    What a waster of tax payers money. Mean while my nephew is at the state capital taking his bar exam.

  5. 145

    AI: And ya gotta know MM/Inane is already drinking. :-D

    Posted by: IANAE | Jul 29, 2010 at 10:20 AM : Pretty sure I was drinking by 8:20 PM yesterday. Is that a problem for you?

    No, the guidance doesn’t have the force of law, but it does have the force of making examiners reject your application, which has the force of taking you five years and a big pile of money to appeal to someone competent to decide what the “force of law” really is. Pretty forceful, actually.

    Posted by: IANAE | Jul 29, 2010 at 10:20 AM:

    You must still be drunk. The Supremes have already ruled and the “Guidance” is already adjusted to comply. The competent and intelligent men and women of the Business Method Arts Patent Unit will do as they always have done. Follow the law and obey the rules. Thats why as Dennis has pointed out, business method patents are being granted at an all time high.

    Incompetent rogue drunk examiners like you and 6, that have the power of supreme court justices and can ignore the law only exist in your imaginations, and perhaps this blog.

  6. 144

    AI: And ya gotta know MM/Inane is already drinking. :-D

    Pretty sure I was drinking by 8:20 PM yesterday. Is that a problem for you?

    No, the guidance doesn’t have the force of law, but it does have the force of making examiners reject your application, which has the force of taking you five years and a big pile of money to appeal to someone competent to decide what the “force of law” really is. Pretty forceful, actually.

  7. 142

    “The guidance points out that because it is not substantive rule making, it does not have the force and effect of law”

    Perpetual LOL

    Posted by: ping | Jul 27, 2010 at 11:00 AM

    _____

    LOL!

    The anti Patent Crowd just can’t catch a break!

    Already as loopy as he can be, this is really gonna push 6 go over the edge. And ya gotta know MM/Inane is already drinking. :-D

  8. 141

    Sorry for not getting back to you Broje.

    I have laid out for you how it will be. You can either listen, and understand, read it again if need be, or be in for a “surprise” one day when what I have said comes up in a case of yours.

    Your recitation of cases appears to be nothing more than the courts telling (actually “implying to”) you that Flook and all the rest of such applications could, if they wanted, claim a specific application of the abstract idea, and that is true. Save for the instance where that is the only application of the abstract idea. In that instance you are still breaking the judicial exception. You know you are. Stop fighting it.

    As for my understanding of preemption being off, well, gal, I have the luxury of letting time show that I’m right. I stand to lose nothing if I’m wrong. You on the other hand have clients whom you’re responsible for and perhaps might lose a penny or two. I suggest you collect opinions of your friends.

  9. 139

    At first I wondered whether this burden-shifting on the part of the USPTO might be a deliberate attempt to minimize the number of questionable patents. After all, David Kappos has recently given priority to improving patent quality. But it looks like it was just an oversight, since revised guidelines are now in the works.

  10. 138

    “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.”

    That is just more misguided nonsense almost on the order of “useful, concrete and tangible”. First off, they’re basing this blanket statement wholly on MoT being the sole test, but lets toss that aside for a minute to see why it is truly absurd. If the “principle” as they call the abstract idea, has only one use and it is claimed then the principle is wholly preempt. Indeed, that was PRECISELY what happened in Benson.

    Your understanding of “preemption” is simply wrong, or at least incomplete. The data in Benson was not defined to represent anything in the real world. There was no externally observable output, like a display, or particular machinery recited that applied the output in any way, thus no application. It’s the particular application of the underlying principal or algorithm that avoids preemption. I refer you again to the section of Diehr that clarifies this issue when it discusses precisely what is wrong with the Benson and Flook claims, emphasis mine.

    “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175 (1852). Only last Term, we explained:

    [A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E = mc2; nor could Newton have patented the law of gravity. Such discoveries are ‘manifestations of * * * nature, free to all men and reserved exclusively to none.’ Diamond v. Chakrabarty ____ U.S. ____, ____, 206 USPQ 193, 197 quoting Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948).

    Our recent holdings in Gottschalk v. Benson, supra,andParker v. Flook, supra, both of which are computer-related, stand <209 USPQ 8> for no more than these long established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a <450 U.S. 186> general purpose digital computer. We defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.9

    Parker v. Flook, supra,presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined,10 nor <450 U.S. 187> did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm system. All that is provided is a formula for computing an updated alarm limit.” 437 U.S.,at 586, 198 USPQ at 195 .

  11. 137

    The guidance points out that because it is not substantive rule making, it does not have the force and effect of law

    Perpetual LOL

  12. 136

    There is a new post from the USPTO regarding Bilski (link to edocket.access.gpo.gov). This is a much more detailed presentation that the earlier one-page guidance.

    The new guidelines refer to themselves as a “supplement,” but no longer focus so heavily on the machine or transformation (MoT) test. Instead, the newest guidance suggests more of a “totality of the circumstances” approach, with several different factors identified to determine if a method is a patent-eligible/patent-ineligible abstract idea. No one factor is to be determinative. Moreover, the examiner is cautioned to present an analysis of the factors supporting patent-ineligibility when stating a prima facie case.

    The new guidelines also impress upon examiners the need for compact examination – meaning all rejections should be raised in the first action, rather than simply a rejection under 101 for patent-ineligibility except in extreme cases (see Section II).

    The guidance points out that because it is not substantive rule making, it does not have the force and effect of law and “any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable.” As such, while there is a request for any comments you might have on the guidelines, the request for comments is not intended to turn this into a formal rulemaking procedure.

  13. 135

    6 wrote: “And AI, you jackwad, your rtarded attempt to come up with some sort of “DCAT”, which is, by your definition, nothing more than the FWA test was (see In Re Bilski above on page 19 at the top) is kiddylolsically ez to stomp on. FWA, or “DCAT” as you like to know it as, was firmly stomped out in In Re Bilski before even Bilski v Kappos came out. Sorry, bucko.”
    _______

    6, The Freeman Walter Abele test of the old C.C.P.A., now the CAFC and the DCAT, short for Diehr Concept and Application test, resulting from the Diehr Supreme Court decision of 1980 are not the same.

    One of the most important differences being the FWB test dissects the claims elements into patentable and non patentable subject matter and the DCAT analyzes the claims as a whole, as is required by the SCOTUS.

    Furthermore your implication that a test (DCAT) created by the SCOTUS was invalidated by the CAFC in Bilski is wrong since the Supreme Court’s decision takes precedence over the CAFC.

    Your sophmoric attempt to conflate the issue will not change the fact that The SCOTUS has ruled in Bilski that;

    Claims Must Be Taken as a Whole.

    Business Methods are the Law of the Land.

    Two Test exists which are MOT and DCAT.

    Just accept it already.

  14. 134

    And now, a short tale of magic, intrigue and bravery.

    The Tale Of Bilski

    Book 1: The Past Reemergent

    In the days of yore, the CAFC, and its predecessor court, in their infinite wisdom, long ago forgot the wisdom of Benson, Flook and Diehr, preferring instead to carve their own path in order to accomodate what they considered to be the “new technology” and enable valuable claims thereto. Stealing thus from the poor to enrich the rich business men of that age.

    It was in those days that a judge by the name of Rich may have had something to do with this nonsense, though tales are often in conflict over this point, and he is considered an otherwise venerable judge regardless. Every man being alotted thereto his share of flaws after all.

    In any event, the CAFC had chosen to blaze a new trail opening the door to all manner of nonsensical claims having to do with abstract ideas being preempt left and right. They did endeavor to create new tests through black arts, and sometimes accidentally created new tests (See SS and ATT). Tests which indeed, did make it appear as if the CAFC were usurping the USSC’s own prohibition on abstract ideas, and claims that preempt such.

    Then, one day, an examiner appeared. Common legend has it that he did ride a white horse on that day, and didst carry with him the armaments of his trade, prior art in the right hand and a copy of the laws in the other.

    The examiner’s name is forever lost to the mists of time and memory, but his deeds live on and will be spoken of for centuries to come. It was on a day reported to be around the year of our lord twenty hundred and eight that the examiner did issue forth a proclamation that certain claims of a specific application did not comply with the patent laws. It is said amongst the common-folk that he did proclaim that indeed the claims were directed to an abstract idea and were thus not directed to the technological arts, otherwise known as the Useful Arts. His proclamation is said to have been long on substance, yet short on analysis. It is commonly believed that this lone examiner, standing firm against aggression on all sides, did steal back some small portion of what the public ought have from the hands of those looking to abuse the powers granted by the crown against the people of the land.

    Some days later, an errand boy or girl didst issue forth a response to the examiner in very flowery language exclaiming where his master having been unsatisfied with the proclamation against his claim to property he felt he was justly entitled to would appeal to authority.

    Thus it was sometime later when the case was transferred from the hands of the steadfast examiner into the somewhat more clumsy hands of The Board of Patent Appeals and Interferences. Never a body much accustomed to following what the law says rather than what their reviewer court would have them say, they summarily affirmed the examiner’s decision, but on more limited grounds.

    After the decision did reach, by way of the messenger, the ears of the master applying for the grant of letters patent, the master was unpleased. This abstract idea was too valuable to let go. It was certainly worth the money to appeal to yet another authority.

    Thus it was that the master, by way of his messenger, did appeal the ruling of The Board.

    It was then that a great man’s man by the name of Jon Dudas in charge of the organization of overseeing the issuing of patents at the time did interject and state that he would personally back the proclamation of the examiner before the reviewer court of The Board, known as The Court of Appeals for the Federal Circuit. The organization did issue, as a collective, and through many messengers messages of support of the examiner’s proclamation.

    The Court did review the case, an in finding that their long work was being undone by a mere examiner’s proclamation were then thrown into considerable confusion and disarray. All that is, save one judge by the name of Randall Rader. Having thus worked themselves into considerable confusion on the issue they did dig deep at that time in the history books for wisdom which would redeem them in their actions. Finding only clues and hints as to how their reviewing court viewed the matter they did thus rule by making the clues and hints into a hard and fast rule subject to their further machinations at later times. The judges whom created the decision did add in specific parts that were an attempt to justify some of their previous machinations against the interests of the people, whilst admitting some limited fault. Some judges dissented, including Rader, who knew clearly the wisdom of the ancient years and was prepared to rule simply that the master’s claims to property were indeed a claim to an abstract idea and thus could not be permitted as wise men had long ago issued that such should be the case.

    When word of this outrage reached, again by the hand of the faithful messenger, the master’s ears, he had by that point been filled with greed considering the money he stood to gain by extortion of the people and other companies through the power of the crown. He did therefore make up his mind to appeal to the highest authority in the land to have his claims justified as being lawful extortion rather than unlawful.

    Whence forth the appeal to the highest court did appear by the hand of the messenger, there was by this time considerable murmurings amongst the people.

    End Book 1.

  15. 133

    “I’m not surprised you don’t want to look at In re Bilski”

    Nothing could be further from the truth, I’ll look at Bilski wilski, I thought you were referring to the other. Then I looked it up anyway against my better judgement.

    Ok, footnote in Bilski, no. 17.

    link to eff.org

    Do you see how easy that is to provide a link?

    It took me like 5 seconds.

    “as it is no longer available free online”

    O rly? Gee, that wuz hard.

    O wait, what’s this?

    link to scholar.google.com

    Hmmm, more free Bilski.

    The days of your legal knowledge hoarding are fast approaching their end, knave.

    ” I had to get the law library at my firm to pull a searchable PDF of it for me and I have it saved on my computer now.”

    Or you could just google scholar it in like 5 seconds…

    In any event, I digress. Bilskiwilski. Footnote 17.

    Therefore, in Abele, Meyer, Grams, Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992), and other decisions, those portions relying solely on the Freeman-Walter-Abele test should no longer be relied on.

    Hmmm, that seems to support me. As opposed to supporting you.

    “The CAFC says that measuring data that represents something in the real world, ala Arrhythmia, avoids preemption and passes MOT’s “particular” transformation prong. They also said displaying data in a particular way is sufficient, which supports that the Alappat claim passes it too. That’s important, because the data in Alappat does not represent anything in particular. The claim is basically converting raw data to a curve and displaying it.”

    I must have missed that part.

    Also, having re-read the part about Alappat, you’d best be reconsidering it I doest believe. Knave.

    And take for instance here:

    “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.”

    That is just more misguided nonsense almost on the order of “useful, concrete and tangible”. First off, they’re basing this blanket statement wholly on MoT being the sole test, but lets toss that aside for a minute to see why it is truly absurd. If the “principle” as they call the abstract idea, has only one use and it is claimed then the principle is wholly preempt. Indeed, that was PRECISELY what happened in Benson. The only use for the “principle” was in the shifter registers etc. in the claim. Those could, in turn be used in trains, airplanes, cars etc. But every use was preempt by that one claim.

    Surely, the court would realize this if presented with such a statement, they are not blind. They simply assume in their rational for making the blanket statement that there are other uses for the algorithm other than the ones preempt by the claim. That was a bad assumption to make, and a bad blanket statement to make based thereupon.

    And AI, you jackwad, your rtarded attempt to come up with some sort of “DCAT”, which is, by your definition, nothing more than the FWA test was (see In Re Bilski above on page 19 at the top) is kiddylolsically ez to stomp on. FWA, or “DCAT” as you like to know it as, was firmly stomped out in In Re Bilski before even Bilski v Kappos came out. Sorry, bucko.

    Oh, and you could stop being such an arse and be thankful for the help I’ve provided you.

  16. 132

    6 wrote: “Well, after like a year of my teaching him AI is making progress. You’re not quite there yet AI, but you’re doing better. If you bothered to completely read my posts before you answer you’d glean a lot more from them”

    _____

    Yeah right. The ONLY thing I am reading and learning from is the SCOTUS. I have posted and used their exact words. The Supremes had every opportunity to change those words, reinterpret the words, or put a Gloss on the precedent on which their words are based.

    They chose to do none of the above and reaffirmed Diehr exactly like I said they would on this blog last year.

  17. 131

    Posted by: Ned Heller | Jul 26, 2010 at 05:48 PM: ping, Ima – Ho Law? Good one there ping.”

    Maybe that is why 6 can’t get into Law School. Perhaps he should take the Ima – Ho LSAT?

  18. 130

    The CAFC says that measuring data that represents something in the real world, ala Arrhythmia, avoids preemption and passes MOT’s “particular” transformation prong.

    That is plainly wrong, as the CAFC’s focus on the 101-failing measurement known as “mere inspection” proves.

    They also said displaying data in a particular way is sufficient,

    This is circular and unhelpful. Direct quotes would be nice, TINLA. Except of course that they never defined what a “particular transformation” is, did they?

  19. 129

    “If you see or believe a claim contains an abstract idea check to see if the abstract idea is implemented, or applied in a structure or process.”

    Posted by: 6 | Jul 26, 2010 at 04:33 PM: “You have misconstrued the decision, however I do not have time to correct you.”

    No one has time to read your 5000 word manifesto interpretations of Diehr. Which were nothing more than retreaded Steven dissent from Diehr 1980 anyway.

    You can pretend that you are a Supreme Court justice all you want but now that Steven’s has lost and been put away, you have nothing to based your rants on.

    GAME OVER

  20. 128

    ping, Ima – Ho Law? Good one there ping.

    TINLA, thanks for you support on citing chapter and verse on this topic. It has been very helpful.

  21. 127

    @ Malcolm: The CAFC, in In re Bilski, went to great lengths to define “particular” transformation in terms of whether or not preemption is avoided, giving several examples and discussing at length that preemption is avoided, and a particular transformation exists, if the data being transformed represents something physical in the real world. I refer you to In re Bilski.

    @ 6: The footnote 17 I was referring to is in In re Bilski, not Arrhythmia. I’m not surprised you don’t want to look at In re Bilski, as it is no longer available free online. I had to get the law library at my firm to pull a searchable PDF of it for me and I have it saved on my computer now. I guess you’ll just have to take my word for it. The CAFC says that measuring data that represents something in the real world, ala Arrhythmia, avoids preemption and passes MOT’s “particular” transformation prong. They also said displaying data in a particular way is sufficient, which supports that the Alappat claim passes it too. That’s important, because the data in Alappat does not represent anything in particular. The claim is basically converting raw data to a curve and displaying it.

    MOT has a preemption test built in. If there is preemption, there is no “particular” machine or “particular” transformation.

  22. 126

    Well, after like a year of my teaching him AI is making progress. You’re not quite there yet AI, but you’re doing better. If you bothered to completely read my posts before you answer you’d glean a lot more from them.

    I see pingerdoodle doesn’t like the law so he prefers to call it “IMHO” law when it is explained to him. Go and read the cases tard. If you think there is something different than what they explicitly held, then please, present it. To date, your position appears to be nothing but nonsensical “the office can’t use MOT” blah blah “as long as the claim isn’t directed to an “abstract idea”, a term which cannot be defined, then it’s fine”. None of which finds substantial support in the caselaw, much less actual law, and none of which would be persuasive in court.

    ” If there is preemption, it’s not a particular transformation, every time. ”

    You say that, but it isn’t necessarily true.

  23. 125

    Malcolm, I said particular transformation.

    Indeed you did. I apologize for missing that. More importantly, I had forgotten somehow that the term “particular transformation” had legal significance. Did the CAFC or Supremes define the term?

  24. 124

    Posted by: TINLA IANYL | Jul 26, 2010 at 05:14 PM: “Malcolm, I said particular transformation. If there is preemption, it’s not a particular transformation, every time. Now please do what I asked originally and go find an example in the caselaw, instead of whipping it out of your hind end. ”

    Ahhh….but it appears thats all he can do.

  25. 123

    AI: “So post hundreds of rants on this blog if thats what you need to do to cope. But all your rationalization wont change the fact that the majority on the Supreme Court has spoken, TWICE NOW!

    1 Claims MUST be taken as a whole.

    2 Business Methods ARE the law of the law.

    Inventors Win!

    YOU LOSE!

    Posted by: 6 | Jul 26, 2010 at 04:35 PM: “What is funny is how easily I can say the same of you. ”

    Yes you can say anything you want but it wont change the fact Inventors have the Supreme Court Majority (the winners) and you have the minority ( the losers).

    And thats the way it is.

    DEAL WITH IT!

    Posted by: 6 | Jul 26, 2010 at 04:35 PM: Lol, gl pardner. When the courts start tearing your claims up, don’t come crying to me.

    AI: What court(s) would that be? The Lol court? I will stick with the SCOTUS.

    As JAOI would say, “Nothing bleepin trumps the Sumpreme Court!”

  26. 122

    “You can certainly have transformation AND pre-emption if the transformation in the claim is not sufficiently linked to the purpose of the invention. I’ve given the example scores of times for the likes of AI and the other patent teabaggers, but basically you can always recite a step of, e.g., using energy, converting fuel, consuming oxygen, or some crrp, which would satisfy a “transformation” in the method. This won’t rescue a crrp claim from failing 101 — at least not if the analysis is done correctly.”

    Malcolm, I said particular transformation. If there is preemption, it’s not a particular transformation, every time. Now please do what I asked originally and go find an example in the caselaw, instead of whipping it out of your hind end.

  27. 121

    When the courts start tearing your claims up, don’t come crying to me.

    Assumes far too much.

  28. 120

    6, does the claim preempt:
    In the Flook and Diehr sense, it does not. The claim’s preamble specifically requires it to operate on physical signals — from an electrocardiogram. If you ignore the preamble, or treat it as a mere “field of use,” then I would agree with you that it does.
    Posted by: Ned Heller | Jul 26, 2010 at 03:44 PM
    ______

    Okay let’s once and for all clear up how to handle this field of use limitation that 6 is clinging to by a thread so he won’t have to fall face down in the law established by the SCOTUS in Diehr, and reaffirmed by the SCOTUS in Bilski.

    Diamond v. Diehr, 450 US 175 – Supreme Court 1981: “Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined,[10] nor did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.” 437 U. S., at 586.

    [ So its obvious that according to the Diehr majority, no field of use limitation was going to save Flook. Because his “application” did not disclose anything more. In other words Flook failed the DCAT, Diehr Concept and Application Test.]

    Diamond v. Diehr, 450 US 175 – Supreme Court 1981: “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.”

    [ So once again its obvious that according to the SCOTUS Diehr majority, Diehrs invention was no mere field of use limitation because his “application” disclosed all of the other steps in their claimed process. In other words Diehr passed the DCAT, Diehr Concept and Application Test.]

    So what do you learn from this about pre, post extra solution activity or field of use limitations analysis?

    1. You go the application and read it!

    2. Find out what the definition of the concept is either as it is defined and/or described by the Inventor.

    3. Read the specification and see how the detailed the steps are.

    Then and only then can anyone determine if there is a mere field of use limitation or just pre, post solution activity.

    Diehr passed this analysis, Flook and Bilski failed it. And that’s part of the reason why Diehr has his patent and they do not.

    AND THATS THE WAY ITS DONE.

  29. 119

    First we have IMHO-Ned law.

    Now we have Ima-Ho-6 law:

    The abstract idea test, as I have explained to you… is the law.

  30. 118

    “Now on a personal note. That long dissent by Stevens in Bilski means nothing.
    He lost in 1980.

    He lost again in 2010.

    All your problems all arise from the sad fact you have emotionally invested yourself for years in a losing legal ideology.

    So post hundreds of rants on this blog if thats what you need to do to cope. But all your rationalization wont change the fact that the majority on the Supreme Court has spoken, TWICE NOW!

    Claims MUST be taken as a whole.

    Business Methods ARE the law of the law.

    Inventors Win!

    YOU LOSE!

    What is funny is how easily I can say the same of you. Lol, gl pardner. When the courts start tearing your claims up, don’t come crying to me.

  31. 117

    So Ned, in effect, you feel like the abstract idea I put forth might have some other use than it being applied to electrocardiogram signals? What, prey tell would that be?

    Let’s go out on a limb and assume we keep the preamble, and don’t treat it as mere field of use. (though those are both probably killer propositions, good that your recognized those, you might be coming along after all)

    What other uses would there be for that abstract idea I put forth? I can’t think of any. I would thus conclude, absent your presentation of any, that the claim substantially (at least) wholly preempts the use of the abstract idea I put forth. And that, iirc, was practically what Benson said is enough to kill it. That is, while they did not use that language, they attempted to come up with alternative uses but found all of them that they could come up with to be preempt. In this case I can only come up with one use, and it is preempt.

    “What’s the point of you and the likes of MM, typing up abstract thoughts on a blog and challenging people to prove they are not abstract thoughts?”

    I never challenged anyone to do any such thing. You’re too re tarded to understand what I did “challenge them to “prove””. What I asked them, was whether or not the claim at issue preempt the abstract idea I put forth. You can try to answer the question yourself if you like. Ned already led the way for you.

    “If you see or believe a claim contains an abstract idea check to see if the abstract idea is implemented, or applied in a structure or process.”

    You have misconstrued the decision, however I do not have time to correct you. You can however obtain the primer I wrote the other day for Ned from Ned perhaps.

  32. 116

    Ned: But, I differ with the Feds that this claim passes the MOT as it does not transform anything physical from one state to another.

    Still, it is not abstract.

    Well, I also differ with them on whether it’s abstract. Since all it does is receive data, do a calculation, and output the result of the calculation. Sure, the spec might save someone’s life at some point, and the judges were clearly very impressed by that, but the all-important non-abstract aspect of doing something with the result of the calculation is nowhere to be found in the claims.

    All Arrhythmia really claims is an alarm limit.

  33. 115

    6 wrote: “I’m the kind of person that thinks up these kinds of abstract ideas, I know one, and I know how I’d try to patent it. I’m thus well suited to root them out and destroy them.”
    _________________

    What’s the point of you and the likes of MM, typing up abstract thoughts on a blog and challenging people to prove they are not abstract thoughts?

    Your abstract thoughts are not inventions, and thus they can never be patented. And you will obviously never be inventors. If you were “Actual Inventors” you would know you can’t use an abstract idea to operate anything, so such thoughts could never be patentable process inventions

    Now if you are trying to understand when something is legally an abstract idea simply follow the law in Diehr, that was upheld and reaffirmed in Bilski by the SCOTUS.

    Diamond v. Diehr, 450 US 175 – Supreme Court 1981:

    “when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

    [ MY NOTE: The court in Diehr believed that mathematical formulas were abstract ideas so their instruction for mathematical formulas can be extrapolated to all abstract ideas.]

    Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.[15]”

    So 6 and MM, here is what you need to know according to the SCOTUS:

    1. If you see or believe a claim contains an abstract idea check to see if the abstract idea is implemented, or applied in a structure or process. (This is what I simply referred to as the DCAT, Diehr Concept and Application Test.)

    2. You complete step one by considering the claims as a whole. If when considered as whole the claims do not attempt to patent the abstract idea itself then the claims are statutory subject matter.

    And thats the way its done!

    Yes, it’s that simple.

    If the Supremes wanted to change that they could have in Bilski but they did not.

    CASE CLOSED!
    ____________

    Now on a personal note. That long dissent by Stevens in Bilski means nothing.
    He lost in 1980.

    He lost again in 2010.

    All your problems all arise from the sad fact you have emotionally invested yourself for years in a losing legal ideology.

    So post hundreds of rants on this blog if thats what you need to do to cope. But all your rationalization wont change the fact that the majority on the Supreme Court has spoken, TWICE NOW!

    Claims MUST be taken as a whole.

    Business Methods ARE the law of the law.

    Inventors Win!

    YOU LOSE!

  34. 114

    6, does the claim preempt:

    In the Flook and Diehr sense, it does not. The claim’s preamble specifically requires it to operate on physical signals — from an electrocardiogram. If you ignore the preamble, or treat it as a mere “field of use,” then I would agree with you that it does.

  35. 113

    If you want to put your re tard hat on rather than answer the question Ned I’m going to not discuss these matters with you further.

    I will give you another chance to answer the question as presented.

    The question, should it need to be made more clear to you, is effectively:

    Does this claim preempt the abstract idea I have put forth?

    It is a yes or no question. Whether or not the claim itself is abstract is irrelevant. Although if it is, then the answer to the question would likely be easy.

    There is of course, along with that above question room to argue that the abstract idea I put forth (rather than the claim itself) is indeed not an abstract idea at all if you should so desire to argue thus.

  36. 112

    6,

      “Let me ask you Ned. Does that pass the abstract idea test?

      Go ahead, see what you can do. Yes or No. Make up your mind.

      Now, what do you think when I say:

      This claim preempts the abstract idea that the presence or absence of a predetermined level of high frequency energy in a late QRS signal may be determined by converting a series of QRS signals to time segments,…”

    6, what again is the abstract idea test?

    I personally think the Arrhythmia claim could only survive Flook if the measurement of a physical signal was required by the claim. The physicality of the measurement and the central purpose of the rest of the claim to transform the digital representation of that signal into something useful is what is not abstract about the claim.

    But, I differ with the Feds that this claim passes the MOT as it does not transform anything physical from one state to another.

    Still, it is not abstract.

  37. 111

    TINLA Go look at the case law and find me one instance where the CAFC or SCOTUS found that there was a particular machine or transformation, but that there was still preemption.

    You can certainly have transformation AND pre-emption if the transformation in the claim is not sufficiently linked to the purpose of the invention. I’ve given the example scores of times for the likes of AI and the other patent teabaggers, but basically you can always recite a step of, e.g., using energy, converting fuel, consuming oxygen, or some crrp, which would satisfy a “transformation” in the method. This won’t rescue a crrp claim from failing 101 — at least not if the analysis is done correctly.

  38. 110

    “What “paragraph” 17 are you talking about? In Arrhythmia?”

    Yes, I cited the Arrhythmia decision. Maybe it is a footnote, but it looked to me like she was just designating her paragraphs by numbers and that was the only relevant “17” I could find.

    “The Freeman-Walter-Abele (FWA) test was around for a long time, almost 20 years.”

    What do you want me to say? That you people in the patent bar fail at life? Come on guys. Get with the program.

    “The CAFC replaced it with the “Concrete Tangible Result” (CTR) test of Alappat and State Street because, they reasoned, it violated Diehr’s prohibition against dissectiong claims.”

    So you want me to state that the CAFC fails at life? Or just more particularly, fails at law? If you want me to I can tell you that. It’s not a problem. Trust me, they do. On the other hand though, they’re pretty good at it as well. They just get bamboozled sometimes is all. It happens to everyone.

    “In fact, they went to a great deal of trouble to expressly clarify that those allowed claims would come out the same under MoT”

    You rely too much on MOT sir. MOT is a clue. The abstract idea test, as I have explained to you, will trump you every single time when performed properly, because, guess what, it is the law.

    And, guess what? The CAFC, if properly informed, will not fail to hold properly in direct violation of what has been made clear is the law.

    “I don’t know where you keep getting these ideas that the CAFC will not prevail in continuing to find such claims as in Arrhythmia to be not abstract”

    I keep “getting these ideas” because they blatantly preempt the abstract ideas I lay out against the blatant exceptions made in the caselaw. I note, that I bothered to take the time to do a proper analysis on the claims, and it wasn’t a peachy time. Although, to one of ordinary skill in the signal processing arts, or thereabouts, the Arrhythmia claim was cake to see for what it was. An attempt to patent the abstract idea I laid out.

    I’m the kind of person that thinks up these kinds of abstract ideas, I know one, and I know how I’d try to patent it. I’m thus well suited to root them out and destroy them.

    “Then Bilki v Kappos established that patentable subject matter is even broader than MoT, even if not by much. ”

    You misunderstand what the justices wished to say. It is broader in some respects, narrower in others. Go and read the decision again, this time keeping in mind that what they are referring to as being the “test” as to the claim being statutory is SOLELY whether or not a judicial exception has been preempt. They noted that MOT does not adequately align with this “test” to be a perfect test. They do not say that patentable subject matter is necessarily “more broad” in all respects as compared to what passes MOT, or “less broad” in all respects compared to MOT. They held precisely that the only thing they care about is their precious judicial exceptions, everything else be dam, with the exception to that being post solution activity and field of use limitations.

    Seriously broje, there is no other way to honestly read Bilski. It is a straightforward return to BFD, everything else be dam.

    If you require my consulting services, on hypothetical claims mind you, you know my email.

  39. 109

    “Transformation/particular machine don’t mean jack if you be preemptin on the abstract ideas.”

    The CAFC, time and again, determines whether something is directed to a particualr machine or particular transformation in order to determine whether or not there is preemption. It is the test for preemption. If you have preemption, then it is not a particular machine or transformation.

    Go look at the case law and find me one instance where the CAFC or SCOTUS found that there was a particular machine or transformation, but that there was still preemption.

    Go look at the case law and find me one instance where the CAFC or SCOTUS found that there was preemption, but yet there was a particular machine or particular transformation.

    The analyses are joined at the hip, and expressly so throughout the caselaw, especially at the CAFC.

  40. 108

    What “paragraph” 17 are you talking about? In Arrhythmia? In Abele, In In re Bilski?

    The court did find patentbale a dependent claim in Abele, while the independent claim in Abele was unpatentable. What does that have to do with Arrhythmia?

    The Freeman-Walter-Abele (FWA) test was around for a long time, almost 20 years. The CAFC replaced it with the “Concrete Tangible Result” (CTR) test of Alappat and State Street because, they reasoned, it violated Diehr’s prohibition against dissectiong claims.

    CTR was viewed, perhaps wrongly so, as broader than FWA. Then, The CAFC appeared to narrow the test somewhat by going to MoT. But that too is a false view, as explained below.

    As discussed by the CAFC in In re Bilski, MoT still embraced claims like the allowed dependent claim of Abele and the independent claim of Arrhythmia as patent eligible. What was less clear was whether the claims in Alappat and State Street would pass MoT, but the CAFC expressly stated that the result in State Street was not overruled, and they were merely replacing the CTR test with one that should be more clear and help the BPAI and lower Courts reach the proper decisions. Nowhere did the CAFC indicate that the results in any of its cases under FWA or CTR would have come out differently under MoT. In fact, they went to a great deal of trouble to expressly clarify that those allowed claims would come out the same under MoT. That they failed to clearly state that the claim in Alappat would also pass MoT is troubling, but I think they had no intention of promulgating a test that would conflict with their previous rulings. They only wanted to issue a new test that would be more clear.

    Then Bilki v Kappos established that patentable subject matter is even broader than MoT, even if not by much.

    I don’t know where you keep getting these ideas that the CAFC will not prevail in continuing to find such claims as in Arrhythmia to be not abstract. They are simply going by the guidance in Diehr regarding what was wrong with the Flook claim, and why it failed the 101 analysis, and als that the claim must be considered as a whole, and cannot be dissected into old and novel elements.

    “Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, 10 nor [450 U.S. 175, 187] did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.” 437 U.S., at 586 .”

    “Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. 102 or the “nonobviousness” requirements of 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under 101. Pp. 185-191. ”

  41. 107

    6: Transformation/particular machine don’t mean jack if you be preemptin on the abstract ideas.

    Thing is, it’s pretty hard to say you’re pre-empting an abstract idea if your claim is limited to a particular machine or to the physical (as opposed to mathematical, not as opposed to chemical) transformation of a particular physical substance. That’s probably a big part of why the Circuit wanted the machine to be “particular” and not give general-purpose computers a free pass.

    I don’t think there will ever be a claim that passes MOT and is invalid for preempting an abstract idea. Ever.

  42. 106

    Ping, I take it you didn’t read my primer because it was tldr.

    This is not the case:

    “The key is the magic of only using abstract ideas in the absract idea test in order to get the result of an abstract idea.”

    One is not trying to reach a “result” of an abstract idea in the abstract idea “test”. See the “test” as simply trying to find facts Ping. Is there, as a factual question, an abstract idea that is preempt by the claim? The “result” or “answer” is a yes or a no, not the abstract idea itself. You can then say, as a matter of law, that you reach the “result” that the claim is “directed to an abstract idea” in a manner of speech, but that is simply in a manner of speech. You can further reach the “result” as a matter of law, that the claim is invalid.

    As a finding of fact, when you’re presented with the already recited abstract idea I put forth above, can you bring yourself to argue that it isn’t an abstract idea? Because if you can, then go ahead and state why. Can you argue that the abstract idea I put forth is not preempt by the claim? If you fail in either argument the claim is dead. There is simply nothing more to the test. Find an abstract idea. This is a factual finding mind you. Then evaluate whether the abstract idea is preempt by the claim. Again, a factual consideration. Now, find your “result” that the claim is invalid as a matter of law, as being directed to an abstract idea.

    And note that this argument against the claim preempting any abstract ideas is easily made for claims like the ones I recited for you guys regarding the computer with a battery pack.

  43. 104

    The only rule of the test is that you cannot put a non-abstract idea< ?b> behind those magic words. If you do, the rejection or argument in court would fail. You will note however that when I use my “magic phrase” I use it properly, only preceding abstract ideas

    How fast in a circle can 6 spin his logic? The key is the magic of only using abstract ideas in the absract idea test in order to get the result of an abstract idea.

    That’s even worse than using process in a definition for process (where at least one of the terms of process has a historical meaning, and the other as witnessed by the highest court of the land has the everyday ordinary meaning.

  44. 103

    “Now take your item and put your pet phrase of “An abstract idea of” in front of it and your claim is an abstract idea.

    I think that’s what Charley is saying.

    What Charley is saying is nonsense gibberish. The only rule of the test is that you cannot put a non-abstract idea behind those magic words. If you do, the rejection or argument in court would fail. You will note however that when I use my “magic phrase” I use it properly, only preceding abstract ideas. You cannot do this with the claim I recited for you.

  45. 102

    O look, another gem in the wiki.

    Death
    The test appears dead with In re Bilski. It was noted that some patentable subject matter can fail the test.[7] The CFAC called the test inadequate. It voided the effect of the portions of decisions relying solely on the test. These include In re Abele, Meyer, In re Grams, and Arrhythmia Research Technology v. Corazonix Corp. However, some portions of those decisions survived Bilski, such as the portion of In re Abele concerning data representations of physical objects or substances.

  46. 101

    “See footnote 17 and related discussion.”

    Of a decision which I’ve hitherto declined to look up. I don’t plan to reconsider on this decision to not look the case up.

    “I am presuming, for the moment, that anything that passes the MoT test automatically passes the Abstract Idea test”

    You shouldn’t.

    There is no arguing with it. It preempts that abstract idea in total. It fails Benson outright, with a mere hint of Flook put in for flavoring.

    link to cases.justia.com

    In “paragraph” 17 of that decision you can see they are talking about a dep claim. Not the ind.

    Diehr, contrary to popular belief, didn’t change sht about Benson or Flook. The CAFC getting this wrong is merely another chance for the USSC to smack them down, and it is a pity that didn’t happen in 1992. Would that they have appealed back then, or argued properly. Either way, with the more recent

    “The CAFC basically set forth the claim in Arrhythmia as an example of a claim that evidences a particular transformation, and SCOTUS has repeatedly declined to grant Cert in any of the cases in which the CAFC set up the paradigm whereby the transformation of data that represents something in the real world avoids preemption.”

    They are rather busy I hear. They don’t grant cert on just anything. This was an open and closed case had it have been argued well.

    Transformation/particular machine don’t mean jack if you be preemptin on the abstract ideas. Don’t ever forget it. I’m telling you now so you don’t get jumped in the court room by someone like me later.

    “The Patent and Trademark Office had granted the patent without questioning that its claims were directed to statutory subject matter under § 101. ”

    Problem no. 1 in this case.

    Dig a little deeper in the case Broje. The real reason the court decided the way they did was that they focused on whether or not use of the mathematical formula was preempt. That is, the case was poorly argued. The defense should have focused on which actual abstract idea was being preempt, not the mathematical formula. I just presented such for you. There is no denying it is an abstract idea. There is no denying that the law prohibits patenting thereof. That’s really all there is to it. None of the other nonsense anyone might try to bring into the discussion is irrelevant what so ever. You might not like it, but your precious CAFC made a boo boo. Likely because the lawlyers presenting the case made a boo boo.

    “32
    Thus computers came to be generally recognized as devices capable of performing or implementing process steps, or serving as components of an apparatus, without negating patentability of the process or the apparatus. In Diamond v. Diehr the Court explained that non-statutory status under section 101 derives from the “abstract”, rather than the “sweeping”, nature of a claim that contains a mathematical algorithm. The Court stated:

    LOL, who wrote that, judge Newman? O LOL, YES IT WAS LOLOLOLOL. Newman, you kidder you. They only became “generally recognized” as such by those of limited (retarded) skill in the art, and the courts. Now that those of us of skill in the art are here to set the courts straight as to what computers actually are, then, we can get down to business. If you need an expert affidavit I can give you one.

    “This analysis has been designated the Freeman-Walter- Abele test for statutory subject matter.”

    O, that old thing? When did they do away with that? No wonder this case is so askew.

    “Its use faded between 1992 and 1999 with In re Bilski was dead by 2008.”

    Wikipedia reports that it only took a little while to weed out this cancer. Thankfully, Bilski has righted the ship entirely on that point.

    The abstract idea analysis is not limited to the mathematical formula under discussion as FWA would have you believe. It is, as I’ve told you from the beginning, only limited to abstract ideas.

  47. 100

    6, not only does the Arrhythmia claim you quoted above pass the Abstract Idea test, it passes the MoT test. The CAFC already said as much in In re Bilski. See footnote 17 and related discussion.

    I am presuming, for the moment, that anything that passes the MoT test automatically passes the Abstract Idea test. I think that the way the MoT test is written and applied by the CAFC already takes preemption into account in the analysis regarding whether the machine or transformation is “particular.” The CAFC basically set forth the claim in Arrhythmia as an example of a claim that evidences a particular transformation, and SCOTUS has repeatedly declined to grant Cert in any of the cases in which the CAFC set up the paradigm whereby the transformation of data that represents something in the real world avoids preemption. If you think the SCOTUS opinion in Bilski v Kappos addressed or cast in a negative light the CAFC’s interpretation of such claims as passing MoT and therefore not Abstract, I think you are mistaken. If I recall correctly, the SCOTUS majority in Bilski v Kappos specifically said that we should turn to the CAFC’s opinion in In re Bilski for guidance.

  48. 99

    You know that old adage about a broken clock being right twice a day? It doesn’t apply to records.

  49. 98

    What is a facially abstract invention?

    Didn’t the IPO Daily just get done talking about using that word (facialy)?

    All you need to know from Bilski:

    The Court first considers two proposed categorical limitations on “process” patents under §101 that would, if adopted, bar petitioners’ application in the present case: the machine-or-transformation test and the categorical exclusion of business method patents.
    Bilski at 5 – NOTE: Both of these categorical limitations are expressly defeated.

    This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’”
    Id. 6

    This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statute’s purpose and design.
    Id

    Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles.
    Id.

    in all events, later authority shows that it was not intended to be an exhaustive or exclusive test.
    Id. 7

    This Court’s precedents establish that the machine-or transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”
    Id. 8 NOTE: sinc enot conclusive, MoT is a one way test – it can show eligibility. It cannot show ineligibility.

    The Court is unaware of any argument that the “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of “method” excludes business methods.
    Id. 10 NOTE: the supremecy of Diehr

    The argument that business methods are categorically outside of §101’s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents.
    Id

    Section 273’s definition of “method,” to be sure, cannot change the meaning of a prior-enacted statute. But what §273 does is clarify the understanding that a business method is simply one kind of “method”
    Id. 11

    A conclusion that business methods are not patentable in any circumstances would render §273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 556 U. S. ___, ___ (2009) (slip op., at 9). This principle, of course, applies to interpreting any two provisions in the U. S. Code, even when Congress enacted the provisions at different times. See, e.g., Hague v. Committee for Industrial Organization, 307 U. S. 496, 529–530 (1939) (opinion of Stone, J.). This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision.
    Id. NOTE: thus defeating the dissent of Stevens

    Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.
    Bilski 14

    Bilski 14

    Believe It!

  50. 97

    ” If the MOT is used and the applicant does not pass MOT he can point out that his/her invention passes the DCAT. ”

    pointing out that the invention passes another test IS overcoming the MoT test.

    Bilski DID NOT say that MoT cant be used. Under admin law, the PTO can use whatever lawful guidelines they want. Application of the MoT for facially abstract inventions is not using the MoT as an “exclusive” test.

    You all sound like a bunch of children.

  51. 96

    6,
    Now take your item and put your pet phrase of “An abstract idea of” in front of it and your claim is an abstract idea.

    I think that’s what Charley is saying.

  52. 95

    “Take any item that ever has been patented, any item at all, and apply the test constructed by 6, and show that the patent should not have been granted because the idea of that item is an abstraction that preempts that very idea.”

    I’ve already addressed your nonsensical position in other threads.

    “1. A portable computer supportable on a support surface, comprising:

    a portable computer body having upper and lower main surfaces joined by corresponding front and rear edges;

    a battery detachably connectable at an upper surface thereof to the lower main surface of the portable computer body adjacent the rear edge thereof and maintaining the rear edge elevated with respect to the front edge, relatively to a support surface on which the portable computer body, with the battery detachably connected thereto, is supported; and

    said upper surface of the battery being in contact with said lower main surface of the portable computer body within a region thereof adjacent the rear edge, when said battery is connected to the portable computer body.”

    Go ahead, take that item that has been patented and apply my test. I already have. You will quickly find that it passes with flying colors. Not only that, but as luck would have it, it is to a particularized general purpose computer.

    Go ahead and try my question way above Ned.

  53. 94

    A counter challenge that I believe that 6 will jump all over:

    Take any item that ever has been patented, any item at all, and apply the test constructed by 6, and show that the patent should not have been granted because the idea of that item is an abstraction that preempts that very idea.

    You will find that such a test rules out everything that has ever been patented.

    Now you can draw your own conclusion about such a test, which not only beats my own position on what is left to be patented, but goes further and shows that no patent should ever have been granted.

    If you think that this is an absurd result, you only have to follow the absurdity back to the logic of the test. Well, you can take the originator of the test idea in mind too.

  54. 93

    “” A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:
    converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;
    applying a portion of said time segments in reverse time order to high pass filter means;
    determining an arithmetic value of the amplitude of the output of said filter; and
    comparing said value with said predetermined level.””

    Let me ask you Ned. Does that pass the abstract idea test?

    Go ahead, see what you can do. Yes or No. Make up your mind.

    Now, what do you think when I say:

    This claim preempts the abstract idea that the presence or absence of a predetermined level of high frequency energy in a late QRS signal may be determined by converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time, applying a portion of said time segments in reverse time order to high pass filter means, determining an arithmetic value of the amplitude of the output of said filter, and comparing said value with said predetermined level.

    What say you? Yes or no? Out with it.

    Or how about, more clearly, without the post-solution activity techno-babble that they wrote into the claims:

    This claim preempts the abstract idea that the presence or absence of a predetermined level of high frequency energy in a late QRS signal may be determined by converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time, determining a high frequency component of said time segments analysed in reverse time order, determining an arithmetic value of the amplitude of the high frequency component, and comparing said value with said predetermined level.

    What say you? Yes or no? Out with it.

    Do you see how the high pass filter means here is nothing but post solution activity?

    Feel free to refer to the primer I typed you if you need to bust out the construction paper.

    Note here, that the real tragedy in this case is that the defense did not adequately argue the case.

  55. 92

    The PTO has been using the MoT test since the days of Benson. There is nothing that says they can’t use it. If they choose to use it, then the applicant needs to overcome the application of the MoT.

    WRONG – Bilski says they cannot use MoT (by itself) to deny the applicant his legal rights. Furthermore, Benson has been limited by Diehr – Officially by the highest court in the land. Benson must bow to Diehr. The PTO cannot legally use Benson alone to deny an applicant his legal rights to a patent. 9-0 MoT alone is no good – not for what the Office wants, anyway.

    MoT can be used – but for what? It is now a one-way test and is not a two way test. The one way it can be used is to show that the matter is patent eligible. That’s it. It is officially not a two way test because it cannot show that something is ineligible. The Supreme Court has held thus. Do people here lack the common sense to understand the difference between a one-way test and a two-way test?

    So there is nothing for an applicant to overcome if an examiner uses such a one way test. The Law says an applicant deserves a patent “unless”. One-way tests cannot overcome this starting point.

    Bilski 14

    Believe it baby!

  56. 91

    Posted by: RWA | Jul 24, 2010 at 05:09 AM: “The PTO has been using the MoT test since the days of Benson. There is nothing that says they can’t use it. If they choose to use it, then the applicant needs to overcome the application of the MoT.”

    RWA, no one is saying the PTO can’t use the MOT Test. The point is the Supremes said the MOT test is not THE test. You people are ignoring this very significant fact and acting like the PTO got everything it asked for in it’s brief.

    Also you are wrong that the applicant needs to overcome the MOT. If the MOT is used and the applicant does not pass MOT he can point out that his/her invention passes the DCAT. For the last 4-5 years that was a not an argument with legs with Bilski in play but now that the Supremes have spoken its rock solid. We have TWO 101 tests now now sanctioned and confirmed by the SCOTUS, MOT and DCAT.

  57. 90

    DS: “Based on some examiner-based posts I have seen, I am looking forward to arguing that the MoT is not the end-all analysis that needs to be done nor does it support a prima facie case.”

    Thats great, however, be prepared to go to appeal as the examiner will not know how to (properly) respond.

  58. 89

    The PTO has been using the MoT test since the days of Benson. There is nothing that says they can’t use it. If they choose to use it, then the applicant needs to overcome the application of the MoT.

  59. 87

    // I’m looking forward to it. When do I need to begin drafting my amicus brief – sometime around 2016?

    Me too. But, supposing you write an application today (2010) and submit it through the office. You’ll probably need to wait a little longer.

    Let’s 44 months average pendency (according to PTO statistic) + 12 months ( to get twice rejected by an examiner) + 36 months ( for the BPAI decision).

    You’re looking 2017-2018 for the application to get out of the PTO. Add another 3-4 years for the CAFC. You’re looking at what 2021 or 2022?

  60. 86

    AI: The PTO’s internal memo has no force of law and if anyone in the Office attempts to assert it as such I fully intend on dealing with it. As will the SCOTUS if needed.

    Cy Nical : I’m looking forward to it. When do I need to begin drafting my amicus brief – sometime around 2016?
    _____

    You won’t need too. Fortunately the Patent Examiners in the business method art unit are far more intelligent and competent than the couple of anti patent posters still on this blog.

  61. 85

    AI: The PTO’s internal memo has no force of law and if anyone in the Office attempts to assert it as such I fully intend on dealing with it. As will the SCOTUS if needed.

    I’m looking forward to it. When do I need to begin drafting my amicus brief – sometime around 2016?

  62. 84

    Posted by: AI’s Dear Diehrist | Jul 23, 2010 at 04:20 PM: So you are admitting that the PTO’s current guidance, being less broad than accepted law, is illegal?

    Why didn’t you just come out and say so?

    Join us!

    Bilski 14

    __________

    He reminds me of those Japanese soldiers on deserted islands in the south pacific who refused the believe the war was over. IANAE and all his alter egos just can’t come to terms with the fact he lost.

    At least poor 6 is making his way back reality. Even if he has to believe he has the power of a Supreme Court Justice in order to do so.

  63. 83

    IANAE: Yes, Diehr is a shining example of how you can get a patent on a claim that passes the Machine or Transformation test.

    AI: Oh God….This inane tautology of yours is simply your way of refusing to deal with the facts presented. And regardless of how you choose to admire Diehrs invention it does not change the following three facts.

    1. Diehrs invention passes both the DCAT and MOT tests

    2. Both tests were recognized by the SCOTUS in TWO landmark cases.

    3. No one in the Patent Universe can refute the above two facts with any Supreme Court Case Law.

    CASE REMAINS CLOSED.

    BANGS GAVEL.

    _________

    IANAE: That’s actually broader than the PTO’s current guidance, which is “you can get a patent on a claim that passes the Machine or Transformation test – unless it’s abstract”.

    Deal with it.

    AI: The PTO’s internal memo has no force of law and if anyone in the Office attempts to assert it as such I fully intend on dealing with it. As will the SCOTUS if needed.

  64. 82

    “So you are admitting that the PTO’s current guidance, being less broad than accepted law, is illegal?”

    Nope.

    But I don’t think the distinction will ever find practical application anyway, so nobody would ever have standing to question it.

  65. 81

    That’s actually broader than the PTO’s current guidance, which is “you can get a patent on a claim that passes the Machine or Transformation test – unless it’s abstract”.

    So you are admitting that the PTO’s current guidance, being less broad than accepted law, is illegal?

    Why didn’t you just come out and say so?

    Join us!

    Bilski 14

  66. 80

    Based on some examiner-based posts I have seen, I am looking forward to arguing that the MoT is not the end-all analysis that needs to be done nor does it support a prima facie case.

    Fun times ahead!!!

  67. 79

    AI: “Diehr’s invention passed both the concept and application test as well as the machine or transformation test. Both test were recognized by the SCOTUS in Diehr and both test were reaffirmed by SCOTUS in Bilski.”

    Yes, Diehr is a shining example of how you can get a patent on a claim that passes the Machine or Transformation test.

    That’s actually broader than the PTO’s current guidance, which is “you can get a patent on a claim that passes the Machine or Transformation test – unless it’s abstract”.

    Deal with it.

  68. 78

    AI: “We also have the Diehr test for concept or application, DCAT for short.”

    IANAE: Diehr wasn’t given his patent because it didn’t cover the entire concept on which it was based. Diehr was given his patent because he claimed a machine and a transformation.

    AI: WRONG! As usual.

    Diehr’s invention passed both the concept and application test as well as the machine or transformation test. Both test were recognized by the SCOTUS in Diehr and both test were reaffirmed by SCOTUS in Bilski.

    You lose.

    Inventors win.

    Deal with it.

  69. 77

    “IANAE, regardless what they said, the claim does not involve a specific machine and does not involve the transformation of article from one state to another. Even so, it clearly is not abstract.”

    Ned, regardless of what they said, the claim is clearly abstract. It’s pure math, and they don’t claim doing anything with the result. It’s no better than taking binary data corresponding to someone’s EKG and converting it to binary-coded decimal.

    But what they actually said was that the claim was not-abstract for pretty much the same reason they said the claim passed MOT.

    These are not the droids you’re looking for. There is no second test here.

  70. 76

    IANAE, regardless what they said, the claim does not involve a specific machine and does not involve the transformation of article from one state to another. Even so, it clearly is not abstract. This case therefore forms the basis for a second test — which I have attempted to generalize and which TINLA has so kindly pointed out is supported in Diehr’s criticism of the claims of Flook.

  71. 75

    Posted by: IANAE | Jul 23, 2010 at 10:06 AM: “Great. Sounds simple enough. Give me one example of such a claim that doesn’t involve a machine or a transformation, bearing in mind that “concept” is no better defined than “abstract”.”

    Oh, I could give you examples. A couple are framed on my wall. But why should I? The point is this is what the SCOTUS has ruled, and its now the law of the land.

    CASE CLOSED!

    As for the cause of your faulty logic that you keep repeating no matter how many times you are corrected, that is still a mystery. Nonetheless I will repost the same explanation I gave to you the last time you posted this illogical line of reasoning. Read it and learn. Learn it well.

    Posted by: Actual Inventor | Jul 02, 2010 at 09:02 PM

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

    Heck no!

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

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

    DEAL WITH IT BABY! :-D”

  72. 73

    Ned: “Now, I do not take this to pass the MOT.”

    You may not, and indeed neither do I. But the flimsy rationalization that formed the basis for the Federal Circuit’s decision in that case clearly stated that the claims involved a physical transformation and therefore passed the MOT.

    Therefore, whatever else it may be, it is not an example of a claim that fails the MOT but is nevertheless statutory.

  73. 72

    Malcolm, what is with you and Tea Party folks? Do you feel threatened in some way by the movement? Or do you simply disagree with their politics?

  74. 71

    IANAE, Arrhythmia operated on signal measured from a heart patient. It ended up with a digital signal representing risk of a heart attack. Now, I do not take this to pass the MOT. However, the claim is not abstract as well. It actually requires the measurement of something physical.

    Now I can see that a court might call for the claim to include the measurement step to be positively set forth. But regardless, the claim is tied to the physical world. It is not just calculating a mathematical algorithm on data using a GP digital computer.

    The claim below for discussion:

    ” A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:
    converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;
    applying a portion of said time segments in reverse time order to high pass filter means;
    determining an arithmetic value of the amplitude of the output of said filter; and
    comparing said value with said predetermined level.”

  75. 70

    “These claimed steps of ‘converting’, ‘applying’, ‘determining’, and ‘comparing’ are physical process steps that transform one physical, electrical signal into another.”

    Comparing and determining do not transform anything.

  76. 69

    “Arrhythmia”

    Collecting data, calculating, comparing, period.

    It’s funny, the court held that these claims “do not seek to patent a mathematical formula . . . they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process”, and yet there’s nothing other than math in the claimed process.

    Oh, and the Court had this to say about the claims:

    “The claimed invention . . . converts one physical thing into another physical thing just as any other electrical circuitry would do.”

    “These claimed steps of ‘converting’, ‘applying’, ‘determining’, and ‘comparing’ are physical process steps that transform one physical, electrical signal into another.”

    I’m not convinced that’s good law, what with computers not being particular machines the last time we heard from the Federal Circuit. But even if it is good law, it’s clearly a statement that the claim passes the MOT test.

  77. 68

    Australian Patent Law grows up. Now it’s time for the children to be spanked.

    link to austlii.edu.au

    Insignificant post-solution activity has been taken to include steps such as the inputting, storage or displaying of data. I take from this aspect of US law however only confirmation of the unremarkable conclusion that one must consider whether the subject matter of a claim considered as a whole falls within the scope of patentable subject matter and that this cannot be achieved merely by pointing to some physical effect or transformation that, while present in the claimed method, does not alter its fundamental character.

    In applying the decision in Grant I therefore consider that the “concrete effect or phenomenon or manifestation or transformation” referred to must be one that is significant both in that it is concrete but also that it is central to the purpose or operation of the claimed process or otherwise arises from the combination of steps of the method in a substantial way.

    Consequently while the step of building a house involves a concrete physical effect it is peripheral to the method of acquiring a house and indeed could hardly be said to characterise the subject matter of the method such that it is considered an artificially created state of affairs.

    I consider the same to apply to a business scheme implemented in some part by computer and do not believe the patentability of such a method can arise solely from the fact that, in a general sense, it is implemented in or with the assistance of a computer or utilises some part a computer or other physical device in a incidental way.

    Regular readers will note that this reasonable conclusion is exactly what many of us anti-crrrpy patent folks have been advocating for years. The world moves on and, unsurprisingly, the Diehrbots and patent teabuggers are among those who are left behind.

  78. 67

    IANAE: “AI: “‘If any applicant wants to rebut a 101 rejection and not argue they meet MOT, all that has to be done is demonstrate that when applied the invention does not cover the entire concept on which it’s based.’

    Great. Sounds simple enough. Give me one example of such a claim that doesn’t involve a machine or a transformation, bearing in mind that “concept” is no better defined than ‘abstract’.”

    Arrhythmia

  79. 66

    I seek to learn, o great and wonderful IANAE, just how is it that since no examples of such a claim that fails MoT and is yet less than abstract are forthcoming, and may not exist, just how is it that MoT is illegal as THE test?

    Further, since it is illegal as THE test, how is any action that is tantemount to the Office use of MoT as THE test escapes the taint of illegality as decided by the highest nine?

  80. 65

    AI: “We also have the Diehr test for concept or application, DCAT for short.”

    Diehr wasn’t given his patent because it didn’t cover the entire concept on which it was based. Diehr was given his patent because he claimed a machine and a transformation. If you think you can get a patent by claiming less than Diehr claimed, you’ll still have to make a case for it.

    AI: “If any applicant wants to rebut a 101 rejection and not argue they meet MOT, all that has to be done is demonstrate that when applied the invention does not cover the entire concept on which it’s based.”

    Great. Sounds simple enough. Give me one example of such a claim that doesn’t involve a machine or a transformation, bearing in mind that “concept” is no better defined than “abstract”.

  81. 64

    “If any applicant wants to rebut a 101 rejection and not argue they meet MOT, all that has to be done is demonstrate that when applied the invention does not cover the entire concept on which it’s based.”

    You’re getting closer to reality. I guess you read my primer. I would estimate, meh, halfway there. Go read it again.

  82. 63

    AI is of course absolutely correct and everyone singing the praise of CAFC’s MOT is absolutely incorrect.

    MOT is a pretty clue that when met, tells you that you may have patent eligible matter.

    Nothing more. Nothing less.

    DCAT!

  83. 62

    Posted by: IANAE | Jul 22, 2010 at 02:31 PM: MOT may not be exactly coextensive with statutory subject matter, but it’s the only test we have.

    __________

    Wrong!

    We also have the Diehr test for concept or application, DCAT for short.
    I have corrected you on this before and posted references to the Supreme Court’s Bilski decision in multiple threads.

    Remember Bilski was NOT denied his patent because it failed the MOT.

    Bilski was denied his patent because when applied it covered the entire concept of Hedging.

    The Supremes reached this conclusion relying on the majority opinion in Diehr, not by using the CAFCs MOT Test.

    If any applicant wants to rebut a 101 rejection and not argue they meet MOT, all that has to be done is demonstrate that when applied the invention does not cover the entire concept on which it’s based.

    Cite the SCOTUS and use Kennedy’s exact words. If needed just call the SPE and they will have no choice but to box the years of the examiner and your claims will be allowed.

    Now if they just ignore the Supreme court well just appeal it and ride Kennedy’s majority opinion all way back to SCOTUS if needed. But I seriously doubt it will have to go that far.

  84. 61

    It’s not clear whether any one of these things, individually, would suffice, or if multiple ones of them would need to be present, but I think there is a pretty strong argument that any one of these things is all that would be required.

    Why? Is there something special about the dicta in that case?

  85. 60

    Malcolm,

    AND MOT is not the only test because there are claims other than those that look like Bilski’s that are also ineligible and/or abstract crrp.

    dont make sense.

    If that be true, than the Supremes woulda just said that MoT is THE test. All nine said that such be plain error. They not neglect to say that.

    And btw, in case ya missed it – Stevens lost.

  86. 59

    The conclusion that inevitably follows

    Cy, the conclusion ya should have reached is that the examienr has to do more than merely handwaive a “I think that’s abstract”.

    Plenty o ways to do it, mind you.

  87. 58

    I was implying that the citation from that paragraph didn’t necessarily come out and say that any of that, or all of it, would make it patentable.

    “I am sure the nine Supreme Court Justices pretty much said that such a statement is false.”

    Except that they neglected to :)

  88. 57

    TINLA, excellent!!!

    BTW, do you recall whether Arrhythmia relied on this portion of Diehr?

  89. 56

    The claim fails M-or-T, which is evidence that the claimed subject matter is nonstatutory.

    I am sure the nine Supreme Court Justices pretty much said that such a statement is false.

  90. 54

    “The conclusion that inevitably follows from this line of reasoning is that examiners can NEVER find a claim to be unpatentable subject matter”

    Exactly what you’d think. But I think that most of them would find one of my abstract idea analysis rejections quite persuasive, and that it would certainly satisfy the burden.

    That said, they are outrageously time consuming to do in some cases.

    Others will state that there needs to be a factual comparison with the Bilski BFD caseline and that’s all they’ll accept. Idk what turnip truck these people fell off of.

    “Diehr tells us four things that the claim in Flook could have recited to satisfy 101:

    (a) recite how the variables used to update the alarm limit were to be determined;

    (b) recite details relating to the chemical processes at work;

    (c) recite details relating to the monitoring of process variables; and/or

    (d) recite means of setting off an alarm or adjusting an alarm system.”

    I must have missed that part in Diehr, do you mind providing citations?

  91. 53

    “The conclusion that inevitably follows from this line of reasoning is that examiners can NEVER find a claim to be unpatentable subject matter”

    Exactly what you’d think. But I think that most of them would find one of my abstract idea analysis rejections quite persuasive, and that it would certainly satisfy the burden.

    That said, they are outrageously time consuming to do in some cases.

    Others will state that there needs to be a factual comparison with the Bilski BFD caseline and that’s all they’ll accept. Idk what turnip truck these people fell off of.

  92. 52

    Ned,

    Diehr tells us four things that the claim in Flook could have recited to satisfy 101:

    (a) recite how the variables used to update the alarm limit were to be determined;

    (b) recite details relating to the chemical processes at work;

    (c) recite details relating to the monitoring of process variables; and/or

    (d) recite means of setting off an alarm or adjusting an alarm system.

    It’s not clear whether any one of these things, individually, would suffice, or if multiple ones of them would need to be present, but I think there is a pretty strong argument that any one of these things is all that would be required.

    For your convenience, below is the section of Diehr to which I refer you.

    “Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an ‘alarm limit.’ An ‘alarm limit’ is simply a number, and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, nor did it purport ‘to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.'”

  93. 51

    Was there ever any doubt?

    Not in my mind. But I’m still working on a theory that it violates the 13th Amendment…

  94. 50

    The Supreme Court is clearly in a committed relationship with MOT, they just want to leave open the possibility of someday getting a little something extra on the side.

    That is the holding of the case: the door to subject matter eligibility remains wide, but every claim that looks like Bilski’s is abstract and ineligible, MOT is a great tool for determining if a claim is the abstract crrp that it appears to be AND MOT is not the only test because there are claims other than those that look like Bilski’s that are also ineligible and/or abstract crrp.

    As Dennis noted, we’ve past the high point of subject matter eligibility. We’re ramping down now. And we’re not going to ramp up again. Ever.

    Bank it.

  95. 49

    “the MOT test is here to stay.”

    Was there ever any doubt? The Supreme Court is clearly in a committed relationship with MOT, they just want to leave open the possibility of someday getting a little something extra on the side.

  96. 48

    We have commenters proposing BOTH (1) that there’s no useful test for determining whether a claim that fails the MOT test is nonetheless patentable, because the Supreme Court hasn’t given us such a test, and (2) that examiners who determine that a claim fails the MOT test must prove that the claim isn’t patentable anyway, to avoid shifting the burden.

    The conclusion that inevitably follows from this line of reasoning is that examiners can NEVER find a claim to be unpatentable subject matter, because that would necessarily be an illegal shifting of the burden. Something tells me that the PTO is not going to adopt this policy, nor is the Federal Circuit likely to force it upon them. It’s time to get over it – the MOT test is here to stay.

  97. 47

    “Such a claim is not abstract,”

    Sure it is. You’re claiming a pure calculation. What difference does it make how or where you got the data?

    If you actually read Arrhythmia, the entire reasoning was based on elements that were not claimed, like “oh, what a noble, life-saving invention this is!” The claims themselves were pure Bilski-level abstraction.

    And wasn’t Prometheus GVRed?

  98. 46

    // What excluded category do the claims fall under and why?

    That’s easy there’s only three possible outcome

    – abstract idea
    – law of nature
    – natural phenomena

    How does one show something is an abstract idea again? Are all idea abstract? Or is there some idea that are not abstract and is patentable.

    The SCOTUS also hinted that one may fail the MOT test but still fall under the statutory subject matter. So confused …..

  99. 45

    Annoymous, I’ve gotten a recent Bilski rejection. It is along the lines I suggested: your claim failed the MOT -> the ball is in your court applicant.

    In another thread I proposed another test as to how a claim could not satisfy the MOT and still not be abstract. It is based on Arrhythmia and Prometheus.

    1) Measure something that exists in time-space, such as weight, mass, time, voltage, etc.

    2) Transform it digitally into something useful.

    Such a claim is not abstract, but arguably, it also does not transform an article in to a new state…

  100. 44

    “They claim that 1 is not evidence that the claimed subject matter is nonstatutory. ”

    It’s not conclusive proof, but it’s undeniably evidence, and very strong evidence at that.

    As far as I know, there is not a single person who can shed any light on the difference, if any, between failing MOT and abstract principles. The only reason people even say there is a difference is because the Supreme Court didn’t rule out the possibility that there might be some difference, because the question never came up in Bilski.

    Whether there is any actual, practical middle ground between MOT and abstract principles, or between MOT and statutory subject matter, is purely speculation at this point.

  101. 43

    The law requires that secondary factors be considered for determining obviousness. Does the Examiner have to analyze all the secondary factors prior to making a prima facie case?

    Actually, the law specifies that secondary factors can be used to rebut a prima facie case. They’re called “secondary” factors for that very reason: they’re not part of the “first view.”

  102. 42

    The law requires that secondary factors be considered for determining obviousness. Does the Examiner have to analyze all the secondary factors prior to making a prima facie case?

  103. 41

    anonymous ranter One cannot fail such an inconclusive test and then on mere words from the examiner be denied their legal right.

    The Supreme Court held that failing the MOT was a very good clue that a claim was abstract and ineligible. Indeed, the claim at issue failed the MOT and was abstract and ineligible, just as are many of the claims that the PTO continues to issue every week.

    Not sure what all the complaining is about.

    Actually, I take that back. I know exactly what all the complaining is about: how will I know when my online friend has won a free pizza if we ban patents on the technology that is driving our economy? how can I do an experiment to determine which advertisement sells the most movie downloads if nobody teaches me in a published patent application? The world will simply grind to a halt because VCs won’t invest in anything anymore, which means that they won’t hire Justin Bieber to play at their kid’s birthday party. Do you know how many caterers they employ at those parties? How do you expect those caterers to make a living without those VCs?????????

  104. 40

    “1. The claim fails M-or-T, which is evidence that the claimed subject matter is nonstatutory.
    2. There is no other evidence available.
    3. Therefore, having considered the available evidence, the claim is found to be directed to nonstatutory subject matter.

    How does that not succeed in shifting the burden to the applicant?

    They claim that 1 is not evidence that the claimed subject matter is nonstatutory.

  105. 39

    ping: “Examiner’s gotta make the case first – that be why it be called prima facie.”

    1. The claim fails M-or-T, which is evidence that the claimed subject matter is nonstatutory.
    2. There is no other evidence available.
    3. Therefore, having considered the available evidence, the claim is found to be directed to nonstatutory subject matter.

    How does that not succeed in shifting the burden to the applicant?

  106. 38

    And I be pretty sure that your point on “there’s no effective difference” works against ya, not for ya. After all, all nine supremes agreed that MoT don’t cut it.

  107. 35

    Of course it matters. If there’s no other indication, on what basis is the examiner going to make the case that the application fails because it falls into the narrow crack between MOT and abstract principle?

    Fixed.

  108. 34

    Second, the statement of “it’s pretty clear that a MOT determination aligns with the ultimate determination” is simply a couched phrase for saying MOT is “THE” test,

    Yes, it does sound like that, if you cut off the rest of my sentence where I explain that it’s not that.

    Whether or not such is the only indication “we” have, simply does not matter.

    Of course it matters. If there’s no other indication, on what basis are you going to convince an examiner that your case falls into the narrow crack between MOT and abstract principle?

    MOT may not be exactly coextensive with statutory subject matter, but it’s the only test we have, and it’s pretty close to coextensive. Until you can wedge a hypothetical claim between the two tests, there’s no effective difference. And even if you can, a nearly-coextensive test is more than sufficient to make out a prima facie case.

    Just like with 103, if you want to claim an exception to the general rule, it’s up to you to make your case. Just like BJA said.

  109. 33

    Bilski’s appliction:

    Do the claims satisfy MOT test? If yes, done.
    If NO:

    What excluded category do the claims fall under and why? Punt to applicant for rebuttal.

    It’s not that hard to apply. What’s hard is the contortions that the Office and Examiners are going to to come up with a bright line rule. Just do what the case says and let the chips fall where they may. Why is the Office trying to control this so tightly anyway? Just give a reason why it’s an abstract idea and move on. Or is that too much reasoning?

  110. 32

    I just dropped a random access memory device including computer-readable instructions for shuffling ones and zeros on my foot.

  111. 31

    If that included proper case cites, that second paragraph would be in the response I’m working on LOL.

  112. 30

    I take issue with several of the thoughts posted here.

    Poster IANAE states: “I think [an examiner] is essentially correct. MOT may not be the only test, but it’s the only indication we have, it’s an important clue, and it’s pretty clear that a MOT determination aligns with the ultimate determination of patentability in the vast majority of cases. That sounds like enough to make out a prima facie case.

    First, who is the “we” in “but it’s the only indication we have?” As I see it, each of the two parties involved in the examination of an application cannot fit together under one “we”. The matter either has a prima facie case made, or it does not.

    Second, the statement of “it’s pretty clear that a MOT determination aligns with the ultimate determination” is simply a couched phrase for saying MOT is “THE” test, and as such has been expressly found by the Supreme Court to be illegal. Whether or not such is the only indication “we” have, simply does not matter.

    Third, the “sounds like enough” does not matter either. I am seeing a lot of people say “well, the prima facie case is a low hurdle”. It still is a hurdle. A very important hurdle as the Judiciary has held. Mere statements by an examiner simply are not enough to overcome the hurdle. Such a tactic did not work before Bilski and such definitely does not work after. I have won every single case I ever had in which an examiner stated that they have met the prima facie burden based on mere statements. I really don’t care that the Supremes did not leave a brightline test for the examiners to use. That is not my problem precisely because my client has the right to a patent unless the Office can prove otherwise.

    Poster Ned Heller states: “ I would say that if it fails the MOT, the examiner can reject that the claim is presumptively abstract leaving it up applicant to demonstrate why the claim is not abstract.” This again treats MOT as THE test – something all nine justices held to be error. In addition to the Supreme Court saying so, there is no such “presumption” because the MOT test is a test for eligibility and not a test for ineligibility. This is a classic logic problem with Type I and Type II errors. This also goes against the patent law’s presumption that an applicant deserves a patent unless the examiner can “clearly and specifically” establish that the applicant is not entitled under the law to a patent. Once again, just because the Supremes left no easy brightline rule for the examiners, does not mean that the examiners can shirk their duty. The prima facie duty, while it may be “low” is still important enough to “level the playing field and [reduce] the likelihood of administrative arbitrariness.” How much more arbitrary can the situation be if we allow the examiner to merely state that he thinks the claim is abstract? Again, one has to keep in mind that the MOT test can only show eligibility and one has to keep the logic of Type I / Type II errors in mind.

    As to Mike’s post, clearly Mike is an examiner and does not have legal training. The “so what?” is critical in that the burden of persuasion cannot be met with MOT. PERIOD. The Supreme Court has clearly and unequivocally stated that patent eligible matter exists outside of the MOT test. There is no doubt to this. Because of this, failing the MOT test is immaterial to establishing patent ineligibility (while passing the MOT test is a clue to patent eligibility). One cannot fail such an inconclusive test and then on mere words from the examiner be denied their legal right. That after all, is the turning point and meaning behind prima facie (there being enough to switch the burden). As I have mentioned, prior to Bilski mere words from the examiner was never enough to switch the burden, and the Bilski decision simply does not change that. To answer Mike’s last question, it is unfair to the applicant because the examiner has illegally taken a position that the examiner is not entitled to. Moving the burdens of presentation and persuasion when the Office has not met the initial thrust clearly is a change in the law that a mere letter from Bahr to the examiners cannot justify.

  113. 29

    Based on my present reading of Bilski, I believe that the entire analysis requires that the process or method be shown to fall into one of the exceptions. In Bilski, it was the abstract idea exception.

    I understood the MOT test to be a pretty good guideline for what is not abstract. A claim is not abstract if it requires hardware or chemistry, because the claim is then clearly limited to that practical application of the abstract principle. Diehr’s claim was saved by his machine and his transformation.

    If you can’t drop it on your foot, or you’re just shuffling ones and zeros around, you’ve got an uphill battle ahead if you intend to prove your claim is somehow not abstract. MOT and abstract principle are two sides of the same coin, and MOT is not “the test” only because the Supremes didn’t want to rule out the coin landing on its edge. In short, failing MOT is a prima facie case that your claim is abstract.

    I don’t know whether that’s technically consistent with Bilski, but even Actual Inventor, who insists that 99.9% or somesuch of business method claims are patentable under Bilski, can’t come up with a single hypothetical claim that fails MOT but is non-abstract. I’d love to see one, it would be great for discussion.

  114. 28

    I agree with the posts that Bilski says that the machine or transformation test is a valid test, although not “the” test. Still, the Supreme Court went further, because the test is just a “clue,” not the entire analysis.

    Based on my present reading of Bilski, I believe that the entire analysis requires that the process or method be shown to fall into one of the exceptions. In Bilski, it was the abstract idea exception. The majority held that the independent claim was an abstract idea because it was so broad as to preempt all uses, and that the dependent claims were no better because they merely attempts to limit the abstract idea to a particular field of use, or to add some token post-solution activity.

    The early USPTO guidance suggests that if the machine or transformation test fails, then the examiner must look for a clear indication that it is not an abstract idea. Therefore, even the USPTO recognizes that the prima facie case should require something more than just application of the test.

    My point is that the examiner should be required to complete the full analysis, and explain why a claim is ineligible as an abstract idea. To do so, the examiner may point in part to the machine or transformation test, as well as concepts such as preemption, field of use, or token post-solution activity to conclude that the method is an abstract idea and not patent-eligible.

  115. 27

    “you can enter the name of a friend on Facebook or some other social networking site ”

    I totally didn’t see that one coming. *eye roll*

  116. 26

    I think the coupon should have a code on it that you can enter into a website along with your NetFlix ID and win a contest, maybe for free DVD rentals or a free pizza or both. In some embodiments, you can enter the name of a friend on Facebook or some other social networking site who will also be eligible for a prize. This promotes additional sales and solidifies the relationship with the customer.

    In addition, in some embodiments, the method can use a POWERFUL COMPUTER BRAIN to offer one or more advertisements to the user, e.g., for upgrading their account, after determining their account status.

    Whoooo! This is really hard! I better take a break now and get back to the easy work of pouring through the data that my client’s scientists generated over the past few months to confirm that they’ve enabled the invention they wish to claim, performed the necessary controls, etc. After that relaxing break, I’ll return here to the more difficult task of pulling software inventions out of my bxtt.

  117. 25

    “Here’s an awesome invention I just thunk up this a.m.: a coupon for pizza to eat while you watch your NetFlix movie.

    But here’s the “non-obvious part”. You do a survey of, say, 100 people, to correlate preferred, e.g., pizza toppings with, e.g., movie preferences. Then you use a POWERFUL COMPUTER BRAIN to store and “analyze” a NetFlix users movie preferences. Then you offer a coupon to NetFlix users which gives them money off on the pizza with the topping that was identified by the POWERFUL COMPUTER BRAIN.”

    You should totally try to patent that. Let me know if you need a patent attorney to help you out. I think we can title it, “A Coupon Offering Device that Offers a Coupon to Movie Consumers for Pepperoni Pizza in All Instances.”

  118. 24

    The problem is that there is not, and likely cannot be, any bright line separating the unpatentable abstract idea from the patent-eligible process, machine, manufacture, composition.

    The tests proposed to date have not been definitive. The Fed Cir-rejected State Street useful-concrete-tangible test is really one of negation (what is concrete is not abstract; what is tangible is not an idea) rather than a true definition. The MoT test is the best one developed so far, but according to the Supreme Court is too limiting, as it potentially could exclude some otherwise patent-eligible inventions (no examples where given to provide any guidance).

    The nebulous nature of this area of patent law reminds me of: “I’ll know it when I see it”, from obscenity law. Unfortunately, the only way we’ll get any sense of what is and what is not patent eligible are still more cases, including some that fail the MoT test yet somehow are not abstract ideas.

  119. 23

    Like I said the other day, some people just don’t like that their claims are abstract, and will do anything to avoid having them found to be so.

    I have to wonder if a software or biz method attorney would, on average, kill their own mother to not have their claims found out.

  120. 22

    How is that inconsistent with Bilksi? And, for a practical matter, how is that unfair to the applicant?

    “Prima facie tests violate the applicant’s constitutional right to a patent.”

    /teabugger off

  121. 21

    Too bad that with the current PTO backlog it’ll be years before you recoup your R&D investment.

    Total investment was two-five gallons of hot water in this morning’s shower.

  122. 20

    I think that Mr. Craane’s interpretation of Bilski effectively turns it on its head. Sure, the MoT is not the exclusive test, but so what? It’s a pretty good test–it’s 9-0 on that point. The fear expressed by the majority is that rigid application of the test might exclude subject matter that should fall within 101. So the “guidance” to everyone is: you cannot apply it rigidly, but it probably works most of the time and for those situations that “fail” you have to consider the applicant’s argument.

    The question is, if a claim fails the test is that a prima facie case that the claim is not patentable subject matter? I think the answer is pretty clearly “yes” as those are pretty minimal bars. In that case, the burden shifts to the applicant to offer some showing that whilst not meeting this test, it is within the categories of patentable subject matter.

    The issue might arise (and likely will arise) when the applicant raises an argument that their claim is patentable subject matter, but the examiner disagrees. But this is no different than rejections under 102, 103 or 112.

    How is that inconsistent with Bilksi? And, for a practical matter, how is that unfair to the applicant?

  123. 19

    Isn’t this awesome? Promote the progress!!!!!!!

    Too bad that with the current PTO backlog it’ll be years before you recoup your R&D investment.

  124. 18

    Here’s an awesome invention I just thunk up this a.m.: a coupon for pizza to eat while you watch your NetFlix movie.

    But here’s the “non-obvious part”. You do a survey of, say, 100 people, to correlate preferred, e.g., pizza toppings with, e.g., movie preferences. Then you use a POWERFUL COMPUTER BRAIN to store and “analyze” a NetFlix users movie preferences. Then you offer a coupon to NetFlix users which gives them money off on the pizza with the topping that was identified by the POWERFUL COMPUTER BRAIN.

    This invention facilitates partnering between delivered food businesses and DVD rental businesses. It also works with movies delivered on demand by cable or satellite or any other method.

    Isn’t this awesome? Promote the progress!!!!!!!

    Tomorrow I’ll come up with another one.

  125. 17

    Suppose the PTO blithely asserts that it has got to the prima facie standard, and suppose you can’t come up with a line that changes the mind of the PTO. What in practice can you do about it? Book an appointment with SCOTUS?

    This is exactly what everybody wants, is it not.

    It’s not quite harsh enough for me, but it will do until the flood of bizmethod and computer-implemented crrp being filed and issued slows to a trickle.

  126. 16

    Let me just say that I would rather deal with the MOT test than any other.

    Same here. Nice and definite. If you can drop it on your foot, it’s patentable.

    The only problem arises when you want to claim a computer as your machine, or data as your transformation. Sure, you can appeal your MOT-based rejection to the Federal Circuit, but we all know what they think of such “machines”.

  127. 15

    Let me just say that I would rather deal with the MOT test than any other. The other tests are nonsense.

  128. 14

    I would say that if it fails the MOT, the examiner can reject that the claim is presumptively abstract leaving it up applicant to demonstrate why the claim is not abstract.

  129. 13

    Paul: Let’s hope that “shortly” is measured in days rather than months. We’re looking forward to getting any kind of re-re-revised guidance that they’re willing to give us, just as much as you folks are.

  130. 12

    “To determine “abstractness,” you have to use your divining rod to determine whether 5 Justices would hypothetically like the invention.”

    Ha, well played Anonymous. And sadly not too far from the actual state of affairs.

  131. 11

    I like this decision. It leaves room for creative wiggling!

    That may be fun times during litigation, but in my experience it’s easier to convince examiners with objective tests than with creative wiggling.

  132. 9

    Once again, anonymous is right. Bahr is wrong. Bad Bahr!

    I like this decision. It leaves room for creative wiggling!

  133. 8

    an examiner: While the S. Court stated that CAFC was wrong in saying that the MorT test is the SOLE test, the S. Court did say that the MorT test is a helpful and useful tool in determining patentability under 101. A prima facie standard is a low hurdle to meet and if the claims don’t meet the MorT test then the examiner has met his prima facia burden and it is up the the Applicant to show that their claims are in fact statutory.

    I think this is essentially correct. MOT may not be the only test, but it’s the only indication we have, it’s an important clue, and it’s pretty clear that a MOT determination aligns with the ultimate determination of patentability in the vast majority of cases. That sounds like enough to make out a prima facie case.

    EG: SCOTUS, in its typical obfuscatory fashion, provides no helpful guidance to the Examining corps on what the standard is for patent-eligibility is under 35 USC 101.

    This is true too, and it’s a big part of the problem. An examiner saying “prove to me that your non-MOT claim is non-abstract” is essentially giving as much reasoning as the Supremes (and Rader) did in Bilski, and applying the same test. Bilski’s claims were so clearly abstract that the decision sheds no light at all on the boundary between abstract and statutory.

    Don’t get me wrong, I’m glad the Supremes didn’t draw a boundary line based on Bilski’s claims. I just wish it had been a closer case on the facts so we could have gotten some legitimate guidance.

    What can the PTO fairly ask examiners to do, based on Bilski, once they have already applied MOT? Add a form paragraph to the effect that “oh, and also your claim is abstract”? If the applicant wants a claim that fails MOT, he will have to stand up for his claim. Before nine judges, if need be.

  134. 7

    Yesterday Robert Stoll, Commissioner for Patents, advised at the annual conference of the the National Association of Patent Practitioners (NAPP) that updated examination guidelines are under preparation and can be expected to be published shortly. So it seems that the USPTO is indeed aware of the need for amended guidance and has acted on it.

  135. 6

    What in practice can you do about it?

    This level is not needed. As Babel Boy indicated at The Patent Prospector blog, case law already establishes what the Office must do in order to reach the presentation and persuasion burdens under the prima facie test:
    1. In re Warner, 1967.
    2. In re Skinner, 1986.
    3. In re Bond, 1991.
    4. In re Oetiker, 1992.

    Mere assertions are not enough. Yes, it is too bad that the Supreme Court Justices did not provide a test for patent ineligibility, but just because they did not, does not mean that the Office can waive their duty to legally establish that a patentee has lost their right to a patent.

  136. 5

    The opening comment from the Examiner convinces me totally.

    Suppose the PTO blithely asserts that it has got to the prima facie standard, and suppose you can’t come up with a line that changes the mind of the PTO. What in practice can you do about it? Book an appointment with SCOTUS?

    This is exactly what everybody wants, is it not. By now, the highest level of appeal in Europe, the 24 x TBA in DG3 at the EPO, has heard hundreds, if not thousands, of 101 patent-eligibility (“technical character”) cases. By now it is child’s play for them to deal with each new one that comes up. One day it will be the same with “abstract” at the BPAI and CAFC.

    In Europe, free from Binding Precedent, the process took 30 years. Perhaps English law can get the job done quicker.

  137. 4

    “This application of Bilski effectively ignores the guidance provided by the opinion to the effect that the MoT test is not the sole test for patent-eligible processes under Section 101.”

    Paul,

    I don’t know what “guidance” SCOTUS provided in Bilski, but you’re spot on that this USPTO memo is inconsistent with the ruling by SCOTUS (9-0) that MoT isn’t the exclusive test.

    An Examiner,

    As a patent attorney of 33 years, I’m very sympathetic to your plight as SCOTUS, in its typical obfuscatory fashion, provides no helpful guidance to the Examining corps on what the standard is for patent-eligibility is under 35 USC 101. (I can make the same statement regarding SCOTUS’s totally “fuzzy” decision in KSR International regarding what the standard is for “obviousness” under 35 USC 103).

    But if you read between the lines of the SCOTUS opinions in Bilski (all 3 of them), what the USPTO memo says (reject the claim if doesn’t satisfy the MoT test) is completely contrary to what SCOTUS said in Bilski. All that can be said (at least until the Federal Circuit clarifies this muddle) is that if the claim satisfies the MoT test, it is likely patent-eligible, but the converse (claim which doesn’t satisfy the MoT is patent-ineligible) isn’t necessarily true; you must then determine whether the claim covers an “abstract idea.” Good luck on determining that as SCOTUS did very little to clarify what an “abstract idea” is between the 3 opinions (the only hint I see is in Kennedy’s opinion for the Court which suggests that Bilski’s method was even more abstract than the one ruled patent-ineligible in Parker v. Flook).

  138. 3

    Well, the Federal cirucit eliminated the State Street test. The Supreme Court reversed, but not on that point, nor did say that “useful, concrete, and tangible” should come back. In fact, it is obvious that 5 on the Supreme Court are against that test (the Justice Stevens Concurrence and Justice Scalia if I remember correctly).

    So I think anyone would be crazy to try to rely upon State Street. Now you have to argue that the invention isn’t abstract. To determine “abstractness,” you have to use your divining rod to determine whether 5 Justices would hypothetically like the invention.

  139. 2

    an examiner,

    Assuming your are right with the standard of what it takes to establish a prima facie case of unpatentability, State Street was not eliminated as a test (nor was it endorsed) so if Applicant came back from a rejection under MOT with an assertion that the claim is statutory because it is useful, concrete, and tangible then shouldn’t that be sufficient to overcome the 101 rejection?

  140. 1

    Time to go read the opinion again. When Mr. Craane says “the USPTO should amend its guidance to clarify that the examiner has an obligation to show that the claim recites an abstract idea (or law of nature or physical phenomena) to reject the claim” he is simply wrong. While the S. Court stated that CAFC was wrong in saying that the MorT test is the SOLE test, the S. Court did say that the MorT test is a helpful and useful tool in determining patentability under 101. A prima facie standard is a low hurdle to meet and if the claims don’t meet the MorT test then the examiner has met his prima facia burden and it is up the the Applicant to show that their claims are in fact statutory.

    The fact that there really are no other tests that courts have not invalidated is really not the Examiner’s problem. Showing that your claims fail the MorT test does establish a prima facie case.

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