Bilski Applied to Invalidate Computer System Claims

CLS Bank Int'l v. Alice Corp. (D.D.C. 2011)

In an interesting opinion, DC District Court Judge Rosemary Collyer has ruled Alice Corp's four asserted patents invalid under 35 U.S.C. § 101 for failing to claim patentable subject matter. This case can be seen as flowing from the Supreme Court's recent decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010).

Alice is an Australian company owned largely by the huge National Australian Bank. CLS is a UK company that works with banks to settle foreign exchange accounts – and is involved with about 95% of the global foreign exchange trading. The patents are generally directed at methods and systems for creating and settling debts that uses both credit/debit records and shadow credit/debit records. Claim 1 of Alice's Patent No. 7,149,720 might be seen as an example:

'720 Patent, Claim 1. A data processing system to enable the exchange of an obligation between parties, the system comprising:

a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and a debit record maintained by an exchange institution; and

a computer, coupled to said data storage unit, that is configured to

(a) receive a transaction;

(b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and

(c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

As in Bilski, the district court focused on the question of whether the asserted claims constitute "abstract ideas." In doing so, the court began with an admission that "[t]here is no clear definition of what constitutes an abstract idea." Rather the approach must be by-analogy to Flook, Benson, and Diehr. In the 2010 Federal Circuit case of Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010), the Federal Circuit offered the additional wisdom that to be disqualifying, the abstractness "should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act."

The court agreed with the patentee that the computer system claim (above) was directed toward a "machine" as enumerated within Section 101. However, the common law exceptions to Section 101 are overriding factors that operate regardless of whether a machine or process can be identified within the claimed subject matter. "Alice's system or product claims [cannot] be saved only by the fact they may nominally recite a 'computer' or 'manufacture.'

In its abstract-idea analysis, the court focused on preemption – holding that the claim "would preempt the use of the abstract concept of employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk on any computer which is, as a practical matter, how these processes are likely to be applied." In an apparent effort to bolster its conclusion, the court also suggested that it is likely abstract because it would be infringed by "common and everyday financial transactions."

Notes:

  • CLS filed this declaratory judgment action against Alice after Alice had warned CLS (by letter) that "every transaction involving CLS' settlement of foreign exchange transactions is impacted by [our patent] claims" and that CLS was "willfully infringing Alice's intellectual property."

CLS is represented by Kaye Scholer; Alice is represented by Williams & Connolly.

420 thoughts on “Bilski Applied to Invalidate Computer System Claims

  1. 420

    “In its abstract-idea analysis, the court focused on preemption – holding that the claim “would preempt the use of the abstract concept of employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk on any computer which is, as a practical matter, how these processes are likely to be applied.” In an apparent effort to bolster its conclusion, the court also suggested that it is likely abstract because it would be infringed by “common and everyday financial transactions.”

    If this claim is as the courts say, “an application of employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk to computers”, the claim is statutory.

    Preemption only becomes an issue here if the concept itself is claimed. The practice of saying the application of a concept covers ever possible application, as this court has done, is a common fallacy.

    In order for such an analysis to work one would need the omnipotent supernatural ability to conceive of every possible invention or technological advance that will ever be discovered or invented and applied by this claim.

    We must all remember there is no future art limitation to overcome in our patent statute or case law. There is only prior art. If indeed something is obvious to invent then that is covered in 103.

    So this claim is statutory and will remain so until the SCOTUS arbitrarily rules software and/or methods of conducting business are not statutory.

  2. 419

    Wow. You are basically saying that limiting the claim to only that which is 101 eligible subject matter doesn’t satisfy 101.”

    “You’re starting to catch on, slowly but surely! You’re like halfway there. Just go read Benson like, lots.”

    What’s important to know is that once the abstract idea is identified by the Office the application of that idea is what makes the claims statutory.

    So called preemption doctrine does not extend beyond the application that is claimed.

    Having a patent monopoly on more that one way or embodiment of an application of a concept is the not only allowed, its the purpose of a patent.

    While Bensons role in 101 is appreciated the Office must not forget that Diehr is the controlling precedent. And for those that do not know one need only read Bilski paragraph 14 to see that this is fact

    Now, Diehr received his patent because the equation was applied to the technology of that time.

    So every examiner in their 101 analysis must follow Diehr first and look for the concept of the invention, which is legally abstract, and then look to see if the concept in the claims has a specific application that imposes a meaningful limit of the use of the concept. Which would make the claims legally statutory under Diehr, controlling case law.

    It does not matter how broad the claim is in its application of the concept for 101 purposes. No case law says an inventor can’t have broad claims that apply concepts to science and technology. In fact such a law would be unconstitutional. Its 102 that will limit the application of any concept not 101.

  3. 417

    Mooney—

    “**if one is otherwise practicing the prior art**, then a claim that would (if enforced) prevent one from merely thinking about what they are doing or merely thinking about the result of what they did is a claim that can NOT, as a matter of law, ever be enforced against such a person. Such claims should not be granted”

    I agree with that statement. It is the precisely the result that is achieved by my formulation.

    “…your “formulation” seems to be one where you reach the result you want to reach no matter what”

    As I’ve said, I don’t really care whether anything in particular is ruled eligible s-m or not. What I’ve tried to do is to make sense of the jurisprudence that is currently out there.

    I haven’t pulled these concepts out of my butt. Look at the Diehr majority again. My formulation embodies directly the following concepts articulated in the majority decision:

    “”an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of
    machinery. . . . The machinery pointed out as suitable to perform the process may or may not
    be new or patentable.””, citing Deener with approval

    “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery…The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.””, citing Deener with approval

    “Our conclusion regarding respondents’ claims is not altered by the fact that, in several steps of the process, a mathematical equation and a programmed digital computer are used.”

    “Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt 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.”

    “Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.”

    “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.12”

    A general rational test should strive to be all-encompassing, and to be concise. A class of inventions, or a class of claims, that are inadequately addressed by my formulation may indeed come along at some point in the future.

    The results of the test are not those that I want to reach, they are those that are demanded by a consistent and rational implementation of policy statements made by Congress and interpreted in particular by the USSC and CAFC. They’re not MY results, they’re SOCIETY’S results—I’m just presenting a consistent and rational way to achieve them and to articulate the reasoning, if desired.

    Furthermore, the two “claim forms” that you have presented are imprecise, and ambiguous. For instance, precisely what is meant by “new mental step(s)”? Are the “steps” explicitly required to be performed mentally? Can they be old steps, the “mental performance” of which is new? Must the steps be new, the mental performance of those steps be new, or both?

    Take the claim in Diehr, for instance, or some analogous claim. What if there were a similar situation, but where the mathematical calculations were performed entirely mentally? What if they were NEW mathematical calculations? What if they were new, and therefore newly performed mentally, and were required to be performed mentally by the claim? What if it was claimed as a “means for calculating”? Your formulation does not seem sufficiently precise to admit of really meaningful exploration—that’s why I asked you for a precise statement.

    Finally, your scheme runs afoul of the requirement to consider the claim as a whole. “It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.” That statement is entirely sensical, and is perfectly embodied in my formulation, but not in yours.

  4. 416

    I just hope the US finds it way to remove any doubt about the unpatentability of such claims. That was the major failure of the Prometheus case, IMHO: the lack of insight into the problem presented by the claims (indeed, the CAFC did its best to cover the problem up — why?).

    Um, maybe because US law is different? – Like we don’t have the same “technical nature” requirement?

    Geesh, with all your high falutin comments, ya might actually wanna know the law in your own neck of the woods there Sunshine.

  5. 415

    Hagbard writes: Second, the EPO chooses to use lack of inventive step to kill non-eligible subject matter dressed up with magic words whereas the UK courts prefer to do it by ignoring the magic words and calling the whole thing ineligible. Both approaches ought to reach the same conclusion via different logic. In EPO-think, a non-technical feature, such as a mental step, cannot, by definition, be “inventive” – only technical solutions to technical problems can EVER be “inventive”.

    MD and Hagbard, thank you.

    I just hope the US finds it way to remove any doubt about the unpatentability of such claims. That was the major failure of the Prometheus case, IMHO: the lack of insight into the problem presented by the claims (indeed, the CAFC did its best to cover the problem up — why?).

  6. 414

    First, you won’t find a requirement for “technical” character anywhere in the ARTICLES of the original EPC.

    Article 52(1) EPC was amended in the EPC 2000 revision to refer to say that “European patents shall be granted for any inventions, ***in all fields of technology***, provided that they are new, involve an inventive step and are susceptible of industrial application.”

    That was done to ensure TRIPS compliance. The EPO doctrine that all things inventive must be “technical” predates that. The only previous “statutory” basis for it was in the IMPLEMENTING REGULATIONS of the original EPC: Rule 29 (now rule 43): “(1)The claims shall define the matter for which protection is sought in terms of the ***technical*** features of the invention.”

    In truth, that was just a hook to hang a preconceived notion that patents are for “technical” things.

    Second, the EPO chooses to use lack of inventive step to kill non-eligible subject matter dressed up with magic words whereas the UK courts prefer to do it by ignoring the magic words and calling the whole thing ineligible. Both approaches ought to reach the same conclusion via different logic. In EPO-think, a non-technical feature, such as a mental step, cannot, by definition, be “inventive” – only technical solutions to technical problems can EVER be “inventive”.

  7. 413

    Ned–

    The 2 parts are 2 different tests for 2 different criteria for s-m eligibility—one for substantiality of utility, and one for operativeness of the invention.

    Credibility and specificity of utility are third and fourth criteria for s-m eligibility, and each has its own test apart from the 2 above.

  8. 412

    Whats really impressive is that his thread is moving towards 500 posts and not a single post by my main man, aka The Carpet Bomber, aka IANAE.

    Its been three weeks since my man posted.

    That’s an awfully long time for a spring break.

  9. 411

    Ned–

    The statement of utility need not appear in the claim, of course, but it is possible for a statement of utility to appear in a preamble.

    This is true for process, machine, manufacture, and composition of matter claims.

    “New use of an old machine” is merely a process claim, and must adhere to the same rules as any other process claim, including those rules regarding utility.

    As you put it, a “programmed computer” cannot be claimed “as a process”. All so-called “computers” are “programmed” in some way, even if it is only something like BIOS, or more fundamentally, the logic in a chip that inevitably results in the performance of particular operations in the presence of a particular signal. With respect to the utility requirement of an article of manufacture claim, there is no difference between any “computer”, including a manual cash register, adding machine, or abacus. An article claim describing any “computer” must adhere to the same rules as any other article claim, including those rules regarding utility.

    The instant the “programming” of a computer is changed, a different physical article results, but it still needs to be claimed as an article of manufacture. This is equally true in both software implementations and hardware implementations.

    If the operations performed by a “computer” are desired to be claimed as all or part of a method claim, that method claim must adhere to the same rules as any other method claim, including those rules regarding utility.

    Computer-readable media are physical articles. Their utility must be specific and substantial. If the asserted utility is directed to the manufacture of a particular physical article (a particularly “programmed computer”), the utility will be both specific and substantial.

    “New use of old composition” is the exact same analysis as “new use of an old machine”—it is merely a process claim, and must adhere to the same rules as any other process claim, including those rules regarding utility.

    “New use of an old process”…. Good one, Ned! As a result of my belief that Thorpe was wrong (see upthread), a process or method claim is defined by its steps, or operations and not at all by any product resulting therefrom. Because the asserted utility of any method claim must be specific and substantial, the performance of the method steps must actually and necessarily occasion, ultimately as a result of a human activity, a physical change in the physical article or phenomenon that is the object of the claim.

    Because, in order for the utility to be specific and substantial and for the claim not to fail under 112, the physical change must be actually and necessarily occasioned by the performance of the method steps, only that physical article or phenomenon which has been specified in the disclosure can be the object of the claim. Therefore, any and all performances of the claimed method steps will produce precisely the same physical change in the same physical article or phenomenon.

    In other words, a process claim can have only one specific and substantial utility, and there can therefore be no “new use of an old process”. This formulation also enables better sense to be made of obviousness-type double patenting, and in particular, what is meant by the concept of “patentably distinct”.

    Methods resulting in signals, including Flook = no actually- and necessarily-occasioned physical change in the physical article or phenomenon that is the object of the claim, therefore utility not substantial, therefore 101 fail (“abstract”)

    Malcolm does have a view, but his view is taken through bars.

  10. 410

    IBP, your test is a good test. But why two parts? The real question is whether the claim results in a “new,” “specific” and “physical” use. Specific and substantial may mean the same thing in the present context. Whether the use has to be claimed depends. Let go through the possibilities.

    A new machine is useful based on the disclosed utility. The utility does not have to be claimed, such as by setting forth the utility in the preamble.

    Similarly, a new composition of matter is useful based on the disclosed utility.

    A new article of manufactured is patentable based upon the disclosed utility.

    A new process is patentable based upon the disclosed utility, albeit the result? of the process must be physical and must, as you suggest, actually operate to provide the disclosed utility.

    A new use of an old machine is patentable as a process — which is the way I view a programmed computer. Analyze the claim to programmed computer as one would analyze the claims to a process.

    Ditto a computer readable media encoding a program which when executed….

    A new use of an old composition is patentable as a process.

    A new use of an old process is patentable as a process, albeit a result? must be physical, etc.

    Except in the cases of processes and machines defined by method steps (means for…), the utility only has to be disclosed. In the case of processes, the result? of the process, in my view, has to be a new, specific (substantial)and physical use.

    Result….? But what about methods that result in signals indicative of some specific physical activity? Arrhythmia, for example.

    Circling back to Flook, the result there was just a number that had a specific, physical use disclosed, but the result itself was not physical. The number was a signal, but of what? Nothing specific was claimed.

    I am not so sure of the answer here. Malcolm may have a view.

  11. 409

    IBP More specifically, not everybody currently agrees that performing certain mental activities in certain contexts can always be undertaken without sanction.

    That’s a straw man, IBP.

    My position is crystal clear and I’m aware of nobody that disagrees: **if one is otherwise practicing the prior art**, then a claim that would (if enforced) prevent one from merely thinking about what they are doing or merely thinking about the result of what they did is a claim that can NOT, as a matter of law, ever be enforced against such a person. Such claims should not be granted (what would be the point?).

    BTW, how would you state precisely your categorical exclusion?

    I’ve done that very plainly in my comment upthread where I set forth the offensive claim forms.

    the whole point of my formulation is to leave NO space “between the lines”, as you suggest. If there IS space, it represents a weakness. Can you point one out specifically?

    No, but that’s because your “formulation” seems to be one where you reach the result you want to reach no matter what.

    I will try to find a claim somewhere, for which I can make a compelling argument that advocates a different outcome than would result from your analysis.

    Not sure how that is possible, unless you want claims to issue that have the effect I described upthread and, again, in my first paragraph in this comment.

  12. 408

    MM–

    I thought that when you referred to playing games with preambles and making ridiculous distinctions about transformations, you were referring to my formulation, not existing jurisprudence!

    I agree with you, of course, that that sort of thing currently happens–but the situation wouldn’t get any better under your categorical solution.

    BTW, how would you state precisely your categorical exclusion? And what other categorical solutions would you suggest, if any?

    You should have been more precise, and have distinguished between purely mental “processes”, and purely mental “steps”, for analytical purposes.

    Prove it? I did offer an initial example of proof of a resulting conflict, which you appear to have ignored.

    MM, the whole point of my formulation is to leave NO space “between the lines”, as you suggest. If there IS space, it represents a weakness. Can you point one out specifically?

    And not everybody “supports wholeheartedly” the preclusion of people from “thinking particular thoughts”. More specifically, not everybody currently agrees that performing certain mental activities in certain contexts can always be undertaken without sanction.

    I will try to find a claim somewhere, for which I can make a compelling argument that advocates a different outcome than would result from your analysis.

  13. 407

    I don’t know why you’re now talking about “purely mental processes”, as that describes neither of your 2 stated claim forms.

    I’m talking about purely mental processes because (1) there are steps in these claims that are purely mental and (2) everyone agrees that purely mental steps, by themselves are not eligible for patenting.

    For your 2 stated claim forms, policy and Constitutional reasons for their non-eligibility may be fairly easy to articulate at the highest level, but when such a facile “analysis” gets down to the actual claim level, it becomes increasingly complex and unwieldy

    Really? Prove it. There is very little “complexity” in the analysis and the result — eliminating claims that effectivley preclude people from *thinking* particular thoughts — is one that everybody supports wholeheartedly. The claims in Prometheus and Metabolite Labs are “actual claims” and the analyis is extremely straightforward.

    The language of “mental processes” and “mental steps” is judge-made language, not statutory language

    Tell it to the Supreme Court.

    Your comments, however, are increasingly laden with value judgments, as evidenced by your use of language: “play games with the preamble”’; “ridiculous distinctions about transformations”; “sledgehammer to pound a nail”. These value judgments remain unsupported by any sort of argumentation

    With all due respect, IBP: take a fxcking pill. I’m just expressing my opinion. Applicants (and courts) do “play games with preambles”. Courts do make “ridiculous distinctions about transformations”. If you are demanding examples, sure, I can dig up the cases for you, if you really doubt that these things happen.

    I’m glad your analysis achieves the same result as mine. However, it seems to me that your analysis requires a great deal of “reading between the lines” and subjective interpretation. I’m not sure that anyone other than yourself would feel comfortable applying it to a typical claim (and the types of claims I’m referring to are very typical).

    That’s simply not true of my analysis. I realize it’s not as universally applicable as yours but I think all tests that strive to be universally applicable are bound to trip themselves at the margins.

  14. 406

    Mooney—

    I believe that you and I agree on what should be the RESULT in various cases, but that we disagree on how to get there. I am proposing a method that is justifiable to anybody, at any time, on a rational basis, and that has as its basis, and is therefore consistent with, elements of USSC and CAFC precedent. Your comments, however, are increasingly laden with value judgments, as evidenced by your use of language: “play games with the preamble”’; “ridiculous distinctions about transformations”; “sledgehammer to pound a nail”. These value judgments remain unsupported by any sort of argumentation, and as a result have no possibility of “convincing” anybody who initially holds different values that conflict with your own.

    Analogous attempts by courts to advance the discussion by fiat have landed us in our current predicament.

    I AM advocating for a universal 101 approach. Using a “sledgehammer to pound a nail” suggests that the response is out of proportion to the scope of the situation. Quite to the contrary, a consistent rational 101 approach perfectly fits situations requiring 101 analysis, and your characterization is entirely misplaced.

    “Because the Supreme Court says so” isn’t a sufficient basis for a categorical exclusion, for obvious reasons–especially when it is very easy to do much better. The language of “mental processes” and “mental steps” is judge-made language, not statutory language, and itself therefore an abstraction from the primary expression of congressional intent that is 35 USC. To deal at that level of abstraction is confusing and unnecessary, and once again, cumbersome.

    I don’t know why you’re now talking about “purely mental processes”, as that describes neither of your 2 stated claim forms. For your 2 stated claim forms, policy and Constitutional reasons for their non-eligibility may be fairly easy to articulate at the highest level, but when such a facile “analysis” gets down to the actual claim level, it becomes increasingly complex and unwieldy, requiring things like determining, as you have said, the “point of novelty” (whatever that means) of the claim, which does not treat the claim as a whole and therefore may run afoul of conflicting SupCt interpretations of patent law such as that articulated in Diehr: “In determining the eligibility of respondents’ claimed process for patent protection under s. 101 their claims must be considered as a whole.”

    And that is only one symptom of the deficiency of the “categorical” approach for which you advocate . Rather than “leaving us with a straightforward test with a very rational framework for handling certain types of claims”, as you suggested, it is again complex and unwieldy, and often uses irrationality as a tool to resolve otherwise unresolvable conflicts like that expressed above.

    **************************************

    A universal 101 approach applied to Claim 1 in Prometheus:

    A consistent, rational, step-wise analysis of the “therapy optimizing” claims in Prometheus should never reach the level of considering so-called “mental steps”, and need not take an unwieldy categorical approach.

    After the claim was examined for 112, it should have been examined for 101.

    The first analysis under 101 should seek to determine if the stated utility refers to a physical effect upon a physical article or phenomenon (“substantial utility test”).

    The second analysis under 101 should seek to determine if the method as claimed actually and necessarily occasions said physical effect (“operative invention test”).

    For purposes of analysis, Claim 1 in Prometheus can effectively be re-written to read: “A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder by maintaining the 6-TG level at between 230 and 400 pmol per 8.times.10.sup.8 red blood cells, comprising: a) administering… b) determining…”

    “Substantial utility test”: Because the preamble should always be limiting because its inclusion is entirely at the discretion of the applicant and because it is in the sentence that constitutes the claim, the stated utility is the maintenance of the relative physical abundances in blood of 6-TG and RBC’s. Said utility does in fact refer to a physical effect upon the composition of blood, and is therefore a statement of substantial utility.

    PASS “substantial utility test” under 101.

    “Operative invention test”: The only two steps specified by the claimed method are those of “administering” and “determining”. Neither of these two specified steps actually and necessarily occasions the maintenance of the relative physical abundances in blood of 6-TG and RBC’s. The method as claimed is therefore incapable of occasioning the stated physical effect, and is therefore wholly inoperative.

    FAIL “operative invention test” under 101.

    THE CLAIM FAILS 101 FOR A LACK OF UTILITY.

    **************************************

    A universal 101 approach applied to Claim 13 in LabCorp:

    Assume the claim has been examined for, and has satisfied, 112 requirements.

    For purposes of analysis, Claim 13 in LabCorp can effectively be re-written to read: “A method for detecting…comprising: a) assaying… b) correlating…”

    “Substantial utility test”: Because the preamble should always be limiting because its inclusion is entirely at the discretion of the applicant and because it is in the sentence that constitutes the claim, the stated utility is the detection of something.

    “Detection” is synonymous with “discovery or identification of the presence or existence of something”. “Discovery or identification” is the conversion of a signal to data, said signal resulting from the observation of a physical object or phenomenon and the combination of the resulting data with a system of coding, by the application of pre-determined decoding to that signal.

    The ultimate result of the decoding is a set of data that represents a quality or characteristic of that physical object or physical phenomenon under observation. The stated utility therefore describes, ultimately, collection of data and performance of operations thereupon.

    Claim 13 does not have its utility described in terms of a change (resulting from human activity) in the quality or characteristic of the observed physical object or physical phenomenon, and has as its result an output of a symbol or set of symbols (a signal), which is only representative of the quality or characteristic of the observed physical object or physical phenomenon.

    The statement of utility in Claim 13 does not describe a physical effect upon a physical article or phenomenon, is therefore insubstantial, and is therefore not a statement of substantial utility.

    FAIL “substantial utility test” under 101.

    THE CLAIM FAILS 101 FOR A LACK OF UTILITY.

    **************************************
    Mooney, my basic point is that I don’t personally care whether any particular s-m claimed is ruled eligible or not, but that the results of my framework accord with the results of your own thinking regarding these 2 particular claims, and that I don’t need to generalize any further than discussing the 2 claims you presented.

    I would be happy to analyze, using this framework, any other claim you present, the existing patentability analysis of which you have found to be lacking or otherwise unsatisfactory, or lacking precisely articulated resolution.

  15. 405

    I’m tired of having to push the “show more comments” button NINE times to post a comment.

    Slap me silly but I agree with 6 on something.

    Big D – long threads lose the chuckle factor fast when I actually have to work. Ya know I be lazy and all.

  16. 404

    OK MM, your finger is on the right point.

    Cooking eggs belongs to the useful arts. It is in a TRIPS field of technology. Cooking the books (creative accounting) is not in there. For the EPO, cooking eggs has “technical character” whereas cooking the books does not.

    Running data through an algorithm on a computer is something with technical character whereas running data through an algorithm inside the human brain is not a field of technology.

    When assessing obviousness, Europe looks at obviousness within any field of technology. No amount of non-obviousness outside the useful arts will get you over Art 56 EPC. No matter how brilliantly creative your method of accounting is, it is still not the sort of non-obviousness that qualifies you for a 20 year monopoly in 40 European countries.

    This is not semantics. The Boards of Appeal of the EPO are now pumping out over 100 Decisions every month. Most of them involve obviousness. No bug in the EPO 103 algorithm could survive such scrutiny.

  17. 402

    “Purely” would mean that the mental step has no substantial detectable effect on any object or person except for the actor doing the thinking.

    That takes care of the “counting problem.” Anything else?

  18. 401

    MD For our 101, Article 52, you need “technical character” for patent-eligibility. A computer has technical character, a pure business method has not.

    So a claim to

    A method of solving problem X,
    testing something related to problem X using an old method with a technical character; and
    thinking a new, inventive thought about the result of said test that is relevant to solving problem X.

    That gets addressed under Article 56 (inventive step)? But this seems purely semantic to me. The claim surely is “inventive” by virtue of the new, inventive (non obvious) mental step. The problem is that the step in question lacks a technical character, which is the concern addressed by Article 52. In other words, an Article 52 problem has been “discovered” by virtue of analyzing the claim.

  19. 400

    I sense your frustration.

    Perhaps I cheated a bit because the egg was obviously removed from the boiling water in response to the last count. That last act was physical.

    But, the counting was, I suggest, mental. So, even with your mental steps doctrine, we have to understand the word “purely.” What does that mean?

  20. 399

    Ned, this claim makes no sense, is b.s. on its face, and does not fit into either of the forms we’re discussing.

    Are the counting steps mental?

    You wrote the claim. You tell me. Also tell me how it can possibly be enabled when some people count to 250 faster than other people count to 100.

    I’ve articulated my particular test very plainly. If you have an objection, state it. I’m interested in hearing any reasonable objections. I’ve not heard one yet. I think there’s a good reason for that.

  21. 397

    To a degree. But there are other slightly larger issues which I attempted to outline above.

    One must walk the abstract idea analysis before one can run it.

  22. 396

    “That doesn’t answer my question which is: why do people bxxtch and whine about this categorization of the problem?”

    Because they want to be able to patent things which ought not be patented silly goose.

    Why do they want to do this? Because they can make $$$ for doing very little. Duh. Come on MM, you don’t need to ask questions to which the answer is readily at hand.

    “If someone wants to defend the patentability of purely mental claims or the patentability of claims that preclude someone practicing the prior art from thinking a “new thought” about what they are doing, let’s hear it. ”

    Weren’t they doing just that in the labcorp case or whatever we just got done talking about 5 mo ago? The one where, you are correct, the appellees did not make this argument you set forth, but where those types of claims were on trial? You even presented this test in a thread about that case iirc.

  23. 395

    Malcolm: cooking an egg.

    Old process. Put egg into boiling water, count to 100. Result, egg done so-and-so.

    New process. Put egg into boiling water, count to 250. Result, egg done so-and-so, but is also useful as a tennis ball.

    Are the counting steps mental? Is the process new and patentable?

  24. 394

    Malcolm made a similar point up-thread a bit. He observed that adding unpatentable subject matter to an old process or machine or article of mfg. cannot or should not make it patentable. But, in practice, what does this actually mean given Diehr where the addition of a program implementing a law of nature was enough to make a molding process claim patentable? But its lonesome, the law of nature was unpatentable.

    The answer seems to be, in all cases, that the claimed subject matter must result in a specific new physical use. Whether we have to go as far as the MOT and require a transformation is the real question.

    But certainly, a claim as in Bilski that balances financial risk results in a new use, but that use is not physical.

    Physicality is somewhat related to technological effect. They may be equivalent terms in this context.

  25. 393

    Of course, MM, the classic case of self-immolation is the man with the brilliant new business method whose US patent attorney boldly announces in the specification that the invention can easily be put into effect on any old PC.

    App DoA in the EPO, and (of course) no chance, in prosecution, of adding the subject matter to render it patentable.

  26. 392

    Article 56 EPC, MM. That is our 103.

    For our 101, Article 52, you need “technical character” for patent-eligibility. A computer has technical character, a pure business method has not.

    So, readers, when you “invent” a new and brilliantly clever method of doing business, not abstract and fully enabled by a comprehensive written description, and you suppose you can thereafter prosecute what you have drafted through to issue in those jurisdictions influenced by EPO caselaw, it might be wise to run your draft past somebody who understands what “technical” means.

  27. 391

    I wrote: If someone wants to defend the patentability of purely mental claims or the patentability of claims that preclude someone practicing the prior art from thinking a “new thought” about what they are doing, let’s hear it.

    pingaling obviously won’t (or more likely, can’t) defend it. Anyone else?

  28. 390

    Where does the requirement for a technical solution to a problem come into the analysis, MD?

  29. 389

    What the EPO does is to decide 101, 102, 103 and 112 in strict sequence, in particular not importing concepts of novelty, obviousness, enablement, utility or “contribution to the art” into step #1, patent-eligibility.

    Does the presence in 35 USC 101 of the word “useful” complicate things, in the USA?

  30. 388

    Malcolm, I recommend his brief to you. His views were largely adopted by the Stevens minority. Many direct quotes.

    The thrust of his argument was that business methods were not patentable because they were not within the “useful arts” as that term was understood at the time of the Constitution. His brief attempted to define what useful arts actually meant. In all cases, it was something physical. However in some cases was not clear that there was a transformation of an article into a new state or thing.

    For example, if training a horse is patentable, is the horse transformed into a new state or thing?

  31. 386

    I must say that even with my main man MIA (it be approachin three weeks without a single post), the cavalcade of chucklewagons on this thread at least bring some amusement.

    Miss ya (madly) IANAE.

  32. 385

    I am not proposing a universal 101 test. I am stating that certain types of claims that comprise transformations

    So now, even the more restrictive ‘clue’ on transformations aint good enough.

    Sunshine, takin Ned’s meds again. Must be the MED-IMHO-Law meds. Also known as Fantasy land. Say hey to Mikey.

  33. 384

    Otherwise … maybe stop the bxxtching and whining …?

    Lol.

    Lol lol lol.

    Lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol.

    Ah, no wait. You first.

    Lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol lol.

  34. 383

    He was all over the map because many physical uses did not involve transformations. For example, washing clothes.

    Huh? I dunno about Richard Stern, but when I wash my clothes, they are transformed. And so is the water.

  35. 382

    Ned says: Obviously the use must be physical, but an old process with new mental steps is still physical. I think though that the result must be both physical and new.

    Ned, to be clear: I am not proposing a universal 101 test. I am stating that certain types of claims that comprise transformations should nevertheless be denied patentability because they are, effectively, claims to mental processes and such claims are not eligible for patenting. That is, if granted, such claims turn prevent people who are/were practicing the prior art into infringers merely for thinking “new” thoughts.

    In Prometheus, the Federal Circuit completely side-stepped this issue by focusing on a doctor who “merely diagnosed” based on the test results and noting that such a doctor wouldn’t infringe the claim. That’s true, but what about the lab technician who has been performing the recited test for years? If the lab technician becomes aware of the meaning of the test results, then the lab technician is an infringer. I believe the Federal Circuit’s failure to address this obvious issue was intentional, as were many of the other sloppy omissions and inaccuracies in the decision.

  36. 381

    6 writes An interesting idea MM, but not currently the lawl. Pitch it to the Fed sometime and I’d say you’ll get a deaf ear. Obviously people are already getting a deaf ear from them in very similar case.

    I am not aware of the argument being presented. While everyone is aware that claim dissection is frowned upon and the current law is clear that the mere presence of a mental step in a claim is not fatal to the claim, I don’t think anyone disputes the fact that claims where the point of novelty (i.e., the only new element in the claim relative to the prior art) resides in the mental step are problematic.

    6 says that the “incessant bit ching and whining” when someone categorizes such a problem as a 101 problem is the reason why people prefer to deal with it elsewhere (e.g., in 102/103, by judicially creating a “doctrine” that provides an exception to the normal application of the statute). That doesn’t answer my question which is: why do people bxxtch and whine about this categorization of the problem?

    If someone wants to defend the patentability of purely mental claims or the patentability of claims that preclude someone practicing the prior art from thinking a “new thought” about what they are doing, let’s hear it.

    Otherwise … maybe stop the bxxtching and whining …?

  37. 380

    IBP The problem with simply defining a categorical lack of s-m eligibility for purely mental processes is that, although likely no judge or PTO examiner would take issue with the ineligibility, they couldn’t tell you WHY.

    The answer to “why” could simply be that the Supreme Court says so. Is there any indication that the Supreme Court considers a purely mental process to be patentable subject matter? I’ve never seen anyone suggest that (until now?), but, as I’ve noted, the Justices themselves and the judges on the Federal Circuit all agree that purely mental processes are verboten. The policy reasons, not to mention Constitutional reasons, for prohibiting such methods are fairly easy to articulate …

    can you supply a specific example of an actual claim in either of the popular forms you describe?

    Of course: the “therapy optimizing” claims in Prometheus are quintessential examples of the first form that I presented. Also, claim 13 in LabCorp:

    13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of:

    assaying a body fluid for an elevated level of total homocysteine; and

    correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.

    That mode of decision-making leaves us with no test, no rational framework, and a patchwork quilt of an ever-increasing number of independent categories.

    Actually, it leaves us with a straightforward test with a very rational framework for handling certain types of claims. As for the “patchwork quilt” of “independent categories”, that is quite obviously what everybody wants. It’s the “sledgehammer to pound a nail” approach to 101 that everyone hates.

  38. 379

    it can be readily applied to all claims in the popular form(s):

    Let’s contrast that for a moment against 35 USC 101 (in pertinent part):

    or any new and useful improvement thereof.

    Throw in a dash of 35 USC 100 (in pertinent part):

    (b)The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Wow – who woulda thunk that actually looking to the real law would be so, well, so fluffy?

  39. 378

    Getting there. Obviously the use must be physical,…

    The only “there” you be getting is to the bottom of the sea in the love boat you are in with the lovely twin anchors.

  40. 377

    Getting there. Obviously the use must be physical, but an old process with new mental steps is still physical. I think though that the result must be both physical and new.

  41. 376

    “I think the problem is simpler: is the process claimed (or an old machine or old article defined by a new process) directed to a specific, physical use.”

    But that does not reach the right conclusion in all cases. That is, practically MOT if I’m not mistaken. Observe the failure of your way of thinking to correctly predict Bilski.

    6, recall Richard Stern’s brief and his struggle to defined patentable subject matter. He was all over the map because many physical uses did not involve transformations. For example, washing clothes. Obviously there was something wrong with the MOT test to the extent that it required a transformation. I think that all that is required is that the use be physical.

    I’m intrigued by your point though that the Bilski claim would pass the physicality test. In what sense did the Bilski patent do something physical? I know it involves physical acts, but the end product was not physical. Is it something about the test it’s not clear on this point?

  42. 375

    Mooney–

    The problem with simply defining a categorical lack of s-m eligibility for purely mental processes is that, although likely no judge or PTO examiner would take issue with the ineligibility, they couldn’t tell you WHY.

    That mode of decision-making leaves us with no test, no rational framework, and a patchwork quilt of an ever-increasing number of independent categories.

    Where to draw the line bounding categories then depends upon how thinly you’re willing to slice the baloney–the most precise categories would be case-by-case categories, in which instance a rational framework is required to resolve each of those individual cases.

    Mooney, I’m interested, can you supply a specific example of an actual claim in either of the popular forms you describe?

  43. 374

    Gee, don’t you get it he is saying abstract idea is anything insufficiently structured because he says that’s what the law is. He doesn’t care what abstract means conceptually or there is such a subject called applied math. You and him principally are on the same boat, but he won’t admit it because he sees you not as hardcore of a machinist as he is.

  44. 373

    “(is there any reason that this latter approach should be preferred?).”

    Yes, because I like to. :)

    “Such claims are not eligible under 101 (according to the test) because — if such claims were granted — people who are/were practicing the old steps would be “preempted” from thinking about the new “discovery”/”abstract idea”.”

    An interesting idea MM, but not currently the lawl. Pitch it to the Fed sometime and I’d say you’ll get a deaf ear. Obviously people are already getting a deaf ear from them in very similar cases. However, pitch it to the supremes and you may well find a more sympathetic ear.

    “Why not let it die under 101, where it may die quickly?”

    Because of incessant bit ching and whining about doing exactly this. That’s why.

  45. 372

    First of all, it is:

    1) Determine all abstract ideas relevant to the claim at hand. Notably DO NOT determine whether or not it is being claimed just yet.

    2) Determine whether any of th abstract ideas you found are preempted by the claim. Thereby AT THIS STAGE determining whether or not the abstract idea is being claimed.

    Only a pro (which you obviously are not just yet) can hope to mess around with the analysis and properly execute the steps you transposed up into step 1. Don’t try to get fancy before you get the basics.

    And note that there is no special requirement to determine whether a given idea is an “abstract idea”. Well, alright, I take that back, the only requirement needed is for the person coming up with the list to not be a re tard. That’s the methodology.

    “I think the problem is simpler: is the process claimed (or an old machine or old article defined by a new process) directed to a specific, physical use.”

    But that does not reach the right conclusion in all cases. That is, practically MOT if I’m not mistaken. Observe the failure of your way of thinking to correctly predict Bilski.

    “Now the Supremes have said that a law of nature or an abstract idea is patentable if it is claimed as such (Diehr). ”

    No, they said specifically that they did not feel like the abstract idea (in this case the Arrhenius equation) in that case was being patented. Why? Because the claim did not preempt the use of the abstract idea, only a tiny corner of the uses of the Arrhenius equation was claimed under the supremes claim construction. Claiming a tiny tiny tiny corner of all the uses of a mathematical expression is totally fine.

    Not to distract you from your learning about Deihr, but as a historical note the differences in claim construction made by the majority and the minority in Deihr is a historically telling one. Back in the day claim construction was not Phillipsified and people just pulled whatever they wanted out of their arse.

  46. 371

    Its your definition Ned – why would I try to make your definition clear – that’s your job.

    Geesh – not only do ya get upset when I ever so kindly point out your errors, now ya want me ta do yoru work for ya.

    Ingrate.

  47. 370

    Why not let it die under 101, where it may die quickly?

    Kinda funny that most real lawyers are sticklers for precision and it does matter why. If you dont know that – you have no business being a lawyer. Period.

  48. 369

    This, of course, requires one to engage in some claim dissection

    Actually, it does not.

  49. 368

    As I’ve noted upthread, I am not aware of any justice, judge or PTO examiner that would take issue with the assertion that a purely mental process (i.e., a method of thinking about something) is abstraction and, therefore, ineligible subject matter.

    One possible formulation of a “preemption” test, then, would be to determine if a claim (if actually enforced) could prevent a third party who is otherwise not acting in an infringing manner from thinking about a particular fact or idea. This, of course, requires one to engage in some claim dissection but, as I’ve pointed out before, it’s either that or completely ignoring all recited mental steps for 102/103 purposes (is there any reason that this latter approach should be preferred?).

    While such a test is not applicable to all cases, it can be readily applied to all claims in the popular form(s):

    Method comprising
    [old step(s)] + [new mental step(s)]

    -or-

    Method comprising
    [new mental step(s)] + [old step(s)]

    Such claims are not eligible under 101 (according to the test) because — if such claims were granted — people who are/were practicing the old steps would be “preempted” from thinking about the new “discovery”/”abstract idea”.

    The beauty of this analysis is that (1) everyone agrees that patenting thoughts is verboten so the policy issues in that regard are virtually non-existent; (2) it short-circuits attempts to play games with the preamble; and (3) it avoids ridiculous distinctions about what constitutes a patent-eligible “transformation.” As long as the non-mental steps recited in the claim are old and/or obvious (and therefore unpatentable under 102/103), it doesn’t matter whether anything is transformed. It also doesn’t matter how earth-shattering the recited “new idea” is. The claim is dead (or should be). Why not let it die under 101, where it may die quickly?

  50. 367

    Yes.  Take a computer programmed to calculate an offer price.  The specific "use" of the machine is not physical.

    But thanks for the question.  If any clarification need be made to the definition to make the above clear, let's here it.

    Ned

  51. 366

    “Such” refers back to the Diehr holding that a specific application of a law of nature can be claimed

    Then say it man – precision counts – especially in law and especially when dealing with old frrts who dont always take their meds (And by the by – ya supposed ta say thank you to someone who corrects such a major flaw – such as it is).

    “Application” is a mighty important word to leave out and call it “as such.”

    Now Ned – be kind enough to answer the question of “Can you “use” a machine in a non-physical way?” – cause who knows what else may have been left out of your positions.

  52. 365

    ping, and you seem to excel in taking things out of context. “Such” refers back to the Diehr holding that a specific application of a law of nature can be claimed.

    But, in hindsight, you knew that and what I actually said, but chose instead to twist the argument to your own ends for some strange, perverted and malicious purpose.

    Begone.

  53. 364

    Ned-O-gram – Can you “use” a machine in a non-physical way?

    Now the Supremes have said that a law of nature or an abstract idea is patentable if it is claimed as such (Diehr).

    Um, no. Your ability to mistate the Supremes is uncanny.

  54. 363

    6, I’ll respond to you here. The analysis you propose IS the problem. 1) Determine whether an abstract ideas is being claimed; and 2) determine whether it is preempted. Obviously, you propose no methodology to determine whether the idea is abstract in the first place.

    I think the problem is simpler: is the process claimed (or an old machine or old article defined by a new process) directed to a specific, physical use.

    Now the Supremes have said that a law of nature or an abstract idea is patentable if it is claimed as such (Diehr). Why not, then, just skip to the nut of the problem? It applies even where the claim does not involve abstract ideas, such as the situation in the Prometheus case, where the specific use is disclosed but not claimed.

  55. 362

    This isn’t exactly potatoe patatoe nomenclature differences here Ned. You’re using a word with an established meaning in this patent arts to mean something not even close to what it actually does mean. Leave utility in the utility requirement. Besides the rest of your comment betray that we have more differences than nomenclature. My theory of lawl predicts accurately the outcomes of all of the cases, yours on the other hand skips some. This even while we all know with 100% certainty that the cases were all decided correctly.

    “The courts now label the Morse problem one of breath – a Section 112 problem.”

    The morse claim is free to fail both 101 and 112 scope of enablement. As it likely does. But back in the day they didn’t have scope of enablement as such, and they just used 101. Which is fine. It fails both.

    “To call this “abstract,” to the extent abstract means that no specific utility is claimed, is to confuse mightily.”

    To believe that the “utility” matters one bit outside the “utility” requirement is to confuse mightily. I think that’s what you meant to say to yourself.

    Seriously Ned, I can’t tell if you actually understand Benson or not. You seem to think you do, and I think you’re right on the cusp of understanding it but you continually go down this “utility” nonsense road. To call an abstract idea abstract is fine, and basing the preemptiong doctrine on finding out if an abstract idea has been preempt is perfectly fine. The sooner you realize this, the better for yourself.

    “The Bilski claim had specific utility. It was limited. It did not have the problems of either Morse or Benson.”

    Yes grasshopper, it did. It has the same problem Benson did, one which is similar to the problem in Morse. This failure of your “utility” nonsense to correctly determine Bilski demonstrates very clearly how your “utility” nonsense is complete nonsense from the point of view of what the law actually is and that you do not in fact understand Benson what so ever. You do not get the correct results with your test. Trust me, there is a “lawl theory” or “test” out there that fully provides for BFDB, the whole series of cases, turning out how they did. More too actually. Indeed, learned Chisum appears to have spoken about the topic, and his displeasure with it. And while we can all point and laugh at patent protectionism as portrayed by Chisum one would do well to take to heart what he notes the law actually is.

    In that lawl theory we’re looking for abstract ideas that are preempt Ned. Period. Not utility. Not Ned made up “utility” separate from the normal “utility”. No “utility”. We’re looking for abstract ideas or other judicially excepted subject matter. That is 100% of what matters. Whether or not it has been applied is not important for the first step of the analysis. First, we find abstract ideas which might be relevant to the topic and claims at hand. An idea for hedging perhaps, or perhaps a mathematical algorithm, or perhaps a phenomena o nature. Oh wait, yes, perhaps an idea for hedging. And then we’re looking to see if a claim happens to preempt all uses of a specific idea for hedging risk. Here, again, it is of little concern whether the claim itself has “utility” or is an “application” of the abstract idea as we don’t really care. All we care about is whether or not the abstract idea itself is preempt. Period. End of story. For all time, no other things matter. Not in Benson, not in Flook, not in Diehr, and not in Bilski. At least not for the base analysis. Once you get into more complex situations like in Flook you have some additional considerations to make.

    Alas, Bilski’s was judged to have done just that. And rightfully so, as it actually was an attempt to patent that idea to hedge risk. Note that “utility” and the “specially made up Ned concept of “utility”” is completely irrelevant for this inquiry. Every. Single. Time. And will be for all time. Every. Single. Time.

    This is my last missive to you on this thread Ned, I’m tired of having to push the “show more comments” button NINE times to post a comment. (3 to read the post, 3 to post, then 3 to re-post because this thing never posts on the first time thanks to USPTO security nonsense)

  56. 361

    ping, we all would appreciate it if you could be both “helpful” and “considerate.”

    For example, do you or do you not agree that 101 utility requires a specific, physical use?

  57. 360

    Seems right. But let’s shoot at it.

    Been there. Done that.

    Go to the dentist and check out their gear. A process of use of that gear sinks the love boat that you and Shot in the Head are sharing.

    Hmmm – maybe we could load the 6-Suunshine twin anchor on that sinking boat…

  58. 359

    IBP,

    Try this: Patentable utility under under Section 101 requires that the claimed subject matter have a specific, physical use.

    When the claim is not limited to that use in the case of a process or an old machine defined by a new process, the claim is unpatentable under either Section 101 or 112 ( p. 1 or p. 2.)

    Seems right. But let’s shoot at it.

  59. 358

    Ned, I like the way you’re framing things, but can you provide a somewhat-tight, affirmative definition for your “business utility” construct?

  60. 357

    “‘The idea was an algorithm made up of register shifts,’

    Algorithms are not made up of physical objects. Much less shift registers.”

    A “register shift” is something that is performed. It’s a step that is performed using a shift register and nothing else can be used to do it. You can demonstrate a register shift on paper, but can’t actually perform a register shift on paper, any more than youy can perform a hammer blow, or a vehicle steering maneuver.

    I have to wonder, are you the “anonymous” commenter who embarrasses themselves by ridiculing Chisum in the comments to this article? link to 271patent.blogspot.com I figure that has to be either you or mal.

    You keep misreading cases becasue you don’t know how to spot a holding and separate out the “dicta” that is unnecessary to the result. Then you cling to that Dicta in spite of later cases that clearly refuse to follow it. It’s understandable in someone who has never gone to law school, but I don’t know what Malcolm’s problem is.

    I think you need to look at the claims from Benson. Have you ever seens them?

    Claim 8 reads:

    “The method of converting signals from binary coded decimal form into binary which comprises the steps of

    “(1) storing the binary coded decimal signals in a reentrant shift register,

    “(2) shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of said register,

    “(3) masking out said binary `1′ in said second position of said register,

    “(4) adding a binary `1′ to the first position of said register,

    “(5) shifting the signals to the left by two positions, [409 U.S. 63, 74]

    “(6) adding a `1′ to said first position, and

    “(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary `1′ in the second position of said register.”

    Claim 13 reads:

    “A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of

    “(1) testing each binary digit position `1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary `0′ or a binary `1′;

    “(2) if a binary `0′ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

    “(3) if a binary `1′ is detected, adding a binary `1′ at the (i+1)th and (i+3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

    “(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and

    “(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.”

    So tell me, how do you do those steps of storing in the shift regiters on paper? You need to get in touch with the facts, so that you can see how Benson can’t mean what you want it to mean. The only way the result in Benson can be justified, especially in light of Diehr and Bilski, is if the abstract idea was performing register shifts in a certain way to convert the numbers from deciaml to binary. Thus, tieing the claim to shift registers did not avoid preemption of the abstract idea. It’s just that simple.

    “Algorithms are methods which are themselves abstract, or abstractions of those same methods which are themselves abstract

    … every single method in the world is abstract ”

    You are already on record fairly recently that you think there are abstract ideas and non-abstract ideas, and that only the non-abstract ideas are patentable, while no implementaion of an abstract idea is patentble. Now it appears that you also think that no method in the world is patentable, because it is abstract. It almost seems like you wake up each morning and completely forget all the crazy posiitions you spouted the day or week or month before. How are you going to backpeddle your way oput of this one? Are you going to draw a distinction between “methods” and “processes?” What’s up with all of these allowed and regularly enforced method claims?

  61. 356

    If there is an idea, in the abstract, covered in its entirety by your claim then your claim has a problem.

    6 – show me a claim that does not cover an “idea” in its entirety.

    All claims cover an “idea” in that “idea’s” entirety. If it did not, then infringement and exclusivity have problems.

    Different levels of Abstraction are at work here.

    Tread carefully.

  62. 355

    6, we differ on nomenclature it seems. But that is all. We agree on the principle.

    The issue of Benson was whether the claim at hand was limited to a specific use. IBP would call label the problem “substantiality” of utility. I would too. You would like to look at the problem in terms of scope — whether, as in Morse, the claim is to the result and includes all means and processes for achieving them; or whether, as in Benson, the claim is to something very specific, but which, even so, is not tied to any particular use and thus claims all of them.

    The courts now label the Morse problem one of breath – a Section 112 problem. They label the Benson problem one of “absractness.” But that is a very bad label as it misinforms the problem. The problem is much better stated as to whether the claim is to a specific utility: often it is better stated as to whether it is to a specific machine or whether it transforms an article from one state to another.

    The problem of the Bilski claim is of the latter sort, but complicated. It had utility and was limited to that utility. It was specific. But the utility was not phyiscal at all, but purely non physical. It was useful in a business, for making money. To call this “abstract,” to the extent abstract means that no specific utility is claimed, is to confuse mightily.

    If the MOT test were the test, the problem of Bilski would disappear. But without it, where are we? The Bilski claim had specific utility. It was limited. It did not have the problems of either Morse or Benson.

    The problem with Bilski is that the specific use was a business utiltiy, the very kind of utility that was authroized by State Street, condemned by the MOT, and condemned by the Supremes in their criticism of State Street.

    So, rather than call Bilski a case about abstactness, we should call it a case about the condemnation of State Street and the implications of that. It means that a non physical utility that is tangible, concrete and the like is not the kind of utility that is patentable.

  63. 354

    “Last night I was tutoring a relative in engineering, at an art school. Let me tell you, as engineers, few of us have any idea whatsoever what an art school education would be like–a totally different world!”

    Yeah, it basically means ez women.

  64. 353

    “You are menially following the USSC’s so-called “tests”, as you see them, rather than examining their roots to get at what they actually mean.”

    I think you meant “as they are” or “as the entire world save for retards sees them”. Something along those lines.

    There is no mystical “concept of an “idea”” that needs to be found. If there is an idea, in the abstract, covered in its entirety by your claim then your claim has a problem. It is very simple. There is no need for scholarly debate on the topic. And, I note, that it is very simple to use this legally. You state whatever idea, aka abstract idea, aka idea in the abstract that you think is an issue for a given claim. The court decides if you have 1. stated an abstract idea and 2. if the claim encompasses the abstract idea. If yes to both then the claim fails. If no to either then the claim is fine. Very simple. If you fail to write down the abstract idea at issue (as in a recent fed circ. case) then you very well might lose when the court doesn’t read your mind. If you fail to recite an abstract idea that is substantially preempt by the breadth of the claim then you very well might lose. All very simple.

    Really, the decisions issuing could be along the lines of one-sentence analysis Rader.

  65. 352

    Finally, if the s-m of Benson were to have been limited to method steps operating on a digital computer, or to a digital computer particularly-configured as a result of having been acted upon by the method steps, then any subsequent methods involving such a computer could be patentable themselves, as long as novel and non-obvious, because they would have an entirely different asserted utility, which would of course require entirely different method steps from those claiming the Benson s-m.

    It would be the same scenario as using a patented bolt in the construction of a new, useful, and non-obvious bicycle that was itself the s-m of a patent application.

  66. 351

    6

    You are menially following the USSC’s so-called “tests”, as you see them, rather than examining their roots to get at what they actually mean.

    The concept of an “idea” has no precise statutory definition, and must be analyzed and articulated in such a way that it can be used legally. Instead of talking about “ideas” directly, or simply equating something to an “idea”, the courts should examine what is meant by the word “idea”, and use that in any subsequent rational analysis.

  67. 350

    The preamble in Claim 8 in Benson says it best:

    “The method of converting signals…”

    This preamble [always limiting because always entirely within the control of the applicant] recites nothing but the performance of operations upon one data set, resulting in the production of a new data set. There is no change in anything physical, and hence no substantial utility.

    101 fail.

    Ditto Claim 13, the preamble of which reads:

    “A data processing method…”

    101 fail.

  68. 349

    Last night I was tutoring a relative in engineering, at an art school. Let me tell you, as engineers, few of us have any idea whatsoever what an art school education would be like–a totally different world!

    Back to Benson and the so-called “preemption doctrine”. To pick up where I left off, so what if an “algorithm” has no present “substantial practical application except in connection with a digital computer.”?

    Assuming that were true, what effect would/should it have on patentability? If the statement were true, and if my interpretation of substantiality were used, then the scope of monopoly would be limited to a digital computer that was configured to execute the algorithm pursuant to human direction–and there is nothing objectionable about that.

    The machine is in a different state than before the execution of the method steps–that is, a physical change has occurred in the machine. Such a physical change is substantial. The utility of the method is that of changing the physical characteristics of the machine.

    Of course in order to be claimed properly, among the method steps must be detailed the nature of the physical change, and precisely how it is to be effected.

    This would still result in a method claim. The preamble of the claim would have to read something like “A method of configuring a general purpose digital computer…”

    The utility is that of ending up, as a result of performing the method steps, with a particularly configured computer, and need look no further than that to such things as, for example, the uses to which that particularly-configured computer could be put. That would involve the drafting of totally different claims, the utility of which would be the various uses to which the particularly-configured computer could be put.

    Of course, an article claim to the particularly-configured computer should be submitted alongside the method claim.

    In the end, if a method has no present “substantial practical application except in connection with a digital computer.”, then the scope of monopoly will be restricted to the operation of those method steps on a digital computer, and not to any and all operations of the method steps–that is, it would not extend to operations of the method steps upon a human brain.

    Fine. If that really IS the entire scope of operation of the algorithm, then the algorithm is of self-limited scope, and its patented value in the marketplace will be similarly limited. It will last only 17 years, and will have no effect whatsoever on the price of pencils or automobile tires.

    While I’m on this, I also believe that product-by-process jurisprudence is also totally wrong, and that Thorpe was totally wrong. If a METHOD is claimed, then the utility, novelty, and non-obviousness of the METHOD should be considered DIRECTLY, and the utility, novelty, and non-obviousness of any product thereof should not be parachuted in and used by proxy to determine patentability of the method.

    It’s confusing, it’s logically cumbersome and questionable, and it would be TOTALLY UNNECESSARY if a consistent rational formulation of substantial utility were in place.

  69. 348

    Ned Heller,

    Why do you persist in trying to twist the Supreme Court ruling into something they clearly did not hold?

    If the rationale is missing, you do not have the authority to fill that rationale in with something that does not fit the rest of the majority opinion. You constantly try to expand the decision to cover what the minority could not achieve, and thus, IS NOT LAW. What you think the Supreme Court should have done and what the Supreme Court actually did are clearly two very different things. The MOT test is only a clue and is NOT conclusive. THAT is the Bilski holding – love it and live it.

    !!! Bilski 14 !!!

  70. 347

    Indeed, the USSC has held 3x that Benson was correct.

    Not exactly correct, as Benson was cabin-ed by Diehr.

    !!! Bilski 14 !!!

  71. 346

    Oh I think we do agree Ned, its just that you persist in using this “utility” word to describe something that is far and away different than what we use that word for here in patent lawl. There is a distinct “utility” requirement and there is no reason to go confusing this requirement with the requirement made by the courts in Benson. They are worlds apart, so you can kindly use better language to distinguish between the two.

  72. 345

    “No Ned – they did not.”

    Only when the stars align and the heavens tremble shall the pingerdoodle be in agreement with 6.

    This is a rare day.

  73. 344

    “To the claim rejected in Morse, the court applied 112-type reasoning, characterizing it as a claim “for a patent for an effect produced by the use of electromagnetism, distinct from the process or machinery necessary to produce it;””

    This might somewhat surprise you but while that might be 112 like scope of enablement reasoning today, it is also 101 reasoning today.

    “So, here was a big error by the court. ”

    The court made no error. You’re making an error in failing to understand why the court was correct. Understand that the court is the one who is in power, you must conform your beliefs with theirs, not the other way around. Either that or you can feel free to appeal to them and tell them all about why a case that is regarded by most people as valid for over 100 years is soooooo wrong.

  74. 343

    “I now find no difficulty in Benson. It was about utility as was stated in its opening paragraph I quoted above.”

    God you are a re tard.

    “The alogrorithm under consideraton was generally useful, but was not confined to a specific use. ”

    Yeah, and that has nothing to do with “utility”.

    “Call it abstract until the claim calls out a specific use.”

    … and the claim to that “use” doesn’t capture the whole abstract idea.

  75. 342

    “While the district court should have done here is this: apply the MOT test. That test remains a good test, despite Rader’s apparent inability to comprehend it.”

    WRONG! What the District Court should have done here is apply the DCAT! Diehr Concept and Application Test! Diehr controls. Read Bilski 14 and deal with it baby.

  76. 341

    Fei Shen said…
    Seems to me the claim is just a software implementation of a financial device. Would the Supreme Court have said the hedge method in Bilski was patentable if it had been implemented in software? I don’t think so.”

    Of course not. It just amazes me when so called examiners like 6, and apparently even a District Judge come up with totally subjective reasons for determining something is abstract.

    If anyone is going to declare something abstract for scientific and technological purposes, then they better be using an objectively scientific and technological analysis/test.

    I just dream of the day I can challenge something like this in Court.

  77. 340

    IBP, at least we can agree that the Supreme Court jurisprudence in this area is foggy.

    I agree with you that Morse had nothing to do with patentable subject matter. It had everything to do with claiming beyond the scope of the invention disclosed and enabled.

    The Telephone cases were about whether a claim to converting sounds to EM signals was patentable as a process. They held it was, and distinguish Morris in that his claim 8 was directed to a result, divorced of the process or means. I believe the Supremes were right in this.

    I now find no difficulty in Benson. It was about utility as was stated in its opening paragraph I quoted above. The alogrorithm under consideraton was generally useful, but was not confined to a specific use. That is the takeway here. Call it abstract until the claim calls out a specific use.

    Benson was like Morse in the sense that Morse claimed a result regardless of means and process. The Morse claim was too broad and covered things he did not invent. The same problem occurs when an algorithm is claimed without regard to a specific application. It covers all uses of the algrothim. Thus the preemption thought. But, this goes back to Morse and reflects somewhat of a policy choice by the Supremes.

    State Street found business utiltiy patentable – a concrete result, they held. A number that had business use — a concrete tangible specific use.

    Still the claim had to be claimed in one of the four classes; all of which had to be physical.

    Bilski overturned State Street. But even so, the government position on appeal was that the Bilski claims would be just fine if claimed in one of the four classes.

    The Supremes said no. A majority rejected State Street. The problem with Bilski was more than just the four classes. It was ultility. So even if it does have specific business utility, it remains unpatenable regardless of how it is claimed.

  78. 339

    “Chisum describes how in his view the Benson court mutilated prior statements to the effect that “one may not patent an idea.” , and it was upon their interpretation of this statement that the Benson court proceeded to articulate its “preemption doctrine”.”

    That, and the apparent concession at trial. I certainly agree with Chisum about what happened in Benson in so far as what you have recited is actually what he said.

    “It is conceded that one may not patent an idea.”

    If you aren’t willing to make that concession then imma lol @ u. Because whether or not you make it now is going to be irrelevant as a court is going to hold thus anyway.

    “The so-called “preemption doctrine” is logically meaningless.”

    Whaaaaat? It exists to preserve the judicial exceptions. The judicial exceptions are very logically meaningful. What would not be logically meaningful is to allow people to circumvent the exceptions by way of drafting. Indeed, the USSC has held 3x that Benson was correct.

    “The Benson court ruled the algorithm to have no present “substantial practical application except in connection with a digital computer.” So what?”

    “So” if you get to patent the digital computer using the algorithm then you practically got a claim to the algorithm. And that isn’t allowed. Remember? It is judicially excepted subject matter. Remember those exceptions? Or do you think that the exceptions are not about substance, but are merely about form? The exceptions only exist to make clear that facial recitations of an abstract idea divorced from the tangible are unpatentable? That’s all they are there for? Just to make sure you properly draft your claim to that type of subject matter? It is all a matter of form?

    W T F would be the point in even having those exceptions if it were that way?

    Jes us, how can you be so fin stup id to not be able to see how this is just a drafting trick to get around the exception? That is the only time courts take issue with claims in this context. If you don’t like the exceptions then fine, take that up with the courts or congress. But don’t play as if you can’t understand that you’re just trying to get around the exception by drafting as Benson did and why the courts will smack you down for trying to get around their exception by drafting procedures.

    “IMHO, in equating an “algorithm” to an “idea”, they conducted flawed reasoning from what was, according to Chisum, a flawed premise.”

    Well your humble opinion is wrong, but you’re entitled to it.

    I note finally that the courts addressed you guy’s issues:

    “It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. The President’s Commission on the Patent System 4 rejected the proposal that these programs be patentable: 5”

    And indeed, I agree with Benson. It may very well be that the patent laws “should” be extended to cover this subject matter. I doubt it, but hey, stranger things have happened.

  79. 338

    Chisum describes how in his view the Benson court mutilated prior statements to the effect that “one may not patent an idea.” , and it was upon their interpretation of this statement that the Benson court proceeded to articulate its “preemption doctrine”.

    IMHO, in equating an “algorithm” to an “idea”, they conducted flawed reasoning from what was, according to Chisum, a flawed premise.

    The so-called “preemption doctrine” is logically meaningless. The Benson court ruled the algorithm to have no present “substantial practical application except in connection with a digital computer.” So what?

    I’ll return to this, the university is closing…

  80. 337

    “6, I think your characterization of unapplied abstract idea as being abstract in the sense it is so sweeping to cover both known and unknown uses of the abstract idea is good. That’s Benson.”

    The student may yet become the master. Grasshopper Fei has come far in but a week’s time.

    Edit: Actually never mind, you polluted your statements with nonsense that I didn’t catch on first perusal.

    Note that I do not characterize Benson as “unapplied abstract idea as being abstract in the sense it is so sweeping to cover both known and unknown uses of the abstract idea”. Note that I do not distinguish various abstract ideas in terms of “applied” and “unapplied”. Abstract ideas are abstract. Period. They are always “unapplied” in so far as we would use the word. The abstract idea itself stands apart from the claim at issue, and all applications of the abstract idea which are possible, now and in the future, as well as standing apart from the “invention” at issue. (note that I do not define “invention” as “claim” though you’re free to if you’d like it makes no difference in the present discussion) The abstract idea might be recited in the claim, or the claim might cover all uses of the abstract idea, or the abstract idea might be shown in the spec, or perhaps is not even mentioned in the patent application at all, the abstract idea itself, stands alone, out in the ether of imagination, divorced from the tangible. It is abstract. Now, as in Deihr we have the application of an abstract idea, but note the emphasis on THE APPLICATION, which is what we have, the abstract idea part is irrelevant, it just serves to put people on notice that there might be an abstract idea involved in this APPLICATION (i.e. product, method, apparatus, composition etc). And indeed, likewise in Benson. Benson did “apply” his abstract idea (which remember, the abstract idea itself always stands apart from the claims, tangible reality etc, and exists out in the ether of imagination) in so far as he claimed an application of his abstract idea. But that application happened to be such that the claim caught all applications of the abstract idea and was, in practical effect, a claim to the abstract idea itself.

    Look Fei, the analysis is simple. Look at the claim before you. Determine if there might be some abstract ideas which you think might be preempt. Write them down. In Benson’s case it was a mathematical algorithm. Write it down. That abstract idea exists as an abstraction out “in space” or “in imagination” or “outside the tangible” however you want to say it. Now you look at the claim at issue. Determine it’s breadth. Look into the breadth and determine whether or not the abstract idea you wrote down is encompassed by the breadth. If so, then there is a problem, and we designate that claim as being “abstract” due to it having encompassed within itself an abstract idea. If not, then you’re all good, you can end the analysis or think of another abstract idea which might be a problem for the claim.

    You can’t have any abstract ideas completely within your claim for it to be valid, that’s all Benson is saying. So, to perform the analysis, you must review all abstract ideas. Of course, many need no review as plainly most abstract ideas will not be relevant to a given claim. But all relevant abstract ideas certainly should be checked.

    “But it still doesn’t explain what an abstract idea is. Breadth alone doesn’t and shouldn’t explain abstractness. I think both Ned and I try to point out Benson’s claim is abstract b/c the immediate use of Benson’s claim (claim 8) standing on itself can not be identified.”

    Grasshopper Fei’s journey is not yet complete, though he is on the path to understanding.

    First Fei, the dictionary is sufficient to tell us what an abstract idea is, there is no tomtrickery implied in the court’s using the phrase, they intend it to be used in its ordinary and customary meaning.

    Second, breadth has nothing to do with the abstractness of the idea at hand, but does have something to do with the abstractness of the claim at hand. This is because the way we use the word “abstractness” here in reference to the claim is in such a way as to denote that we have, or have not, found that the claim encompasses an abstract idea. Thus to say the claim is abstract may well be true even while the claim itself is to something very not-abstract, as it was in Benson, even though obviously it involved shift registers. That is, people are perfectly capable of drafting claims to non-abstract things in order to capture the whole of an abstract idea (or practically the whole). These claims are defined as abstract in terms of a legal determination because they include within their breadth the whole of an abstract idea. And that is how breadth plays a part in determining the “abstractness” of a claim, but does not play a part in determining the “abstractness” of the alleged abstract idea which is in question.

    However, you and Ned going off the deep end into making a special test to find out if Benson’s claim is abstract is off the mark because that is not what the abstract idea inquiry is about. It is about nothing more and nothing less than what was set forth in Benson. Specifically, that you may not encompass a whole idea within your claim. And there they mean the idea in the abstract, as it is presumed all pure ideas are. It really is that simple. And you can feel free to use a dictionary to define “abstract idea” or just define “idea” if you want.

  81. 336

    Benson is not totally useless, as Chisum would have you believe, but it is incredibly confused and confusing.

    The USSC, not being a specialist or technically competent body, has mischaracterized and distorted all sorts of patent jurisprudence, including its own prior decisions–for instance, there is this quote from their earlier decision in Cochran v Deener: “A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”

    Such a statement has proved notoriously difficult for the USSC to manage. The Benson court, in particular, took it to mean that “Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.” This statement in Benson is neither logically related to that in Deener, nor is it sufficiently precise to admit of any useful and consistent subsequent interpretation. What is a “clue”? Which way does it lead? How strongly? Is there a threshold? What is dispositive of the issue of patentability? etc.

    Transformation of an article is not “THE CLUE TO PATENTABILITY” (whatever that means), it is some evidence of patentability.

    The relevant question, after it the statement in Deener characterized in this legally proper way, is then “Of what particular patentability criterion is it evidence?” In particular, it is evidence of substantial utility, which is a very specific and useful interpretation of the “transformation” requirement in Deener.

    The Benson court took their own earlier, but more helpful, characterization in Deener and back-pedaled when it was pointed out that, according to that logic, “…a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a different state or thing.”

    How did they back-pedal? By making the incredible statement that “We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.”, which in understandable language, says that “A process claim could be patentable if it failed to meet the requirements of our prior precedents.”

    Do they decide issues or not? Is “precedent” not binding? If their pronouncements and conclusions aren’t binding and are therefore not required to be followed, how can they be considered to be “requirements”?

    Are all their “tests”, “doctrines”, etc. relating to patentability meaningless, leaving any applicant to advance her own interpretation of what patentability requires, in total disregard for USSC “requirements for patentability”?

  82. 335

    But boat anchors have excellent utility.

    In fact the world would love the utility of my new 6-Sunshine twin boat anchors (alas, only a constructive reduction to practice at this point).

  83. 334

    6, I think your characterization of unapplied abstract idea as being abstract in the sense it is so sweeping to cover both known and unknown uses of the abstract idea is good. That’s Benson.

    But it still doesn’t explain what an abstract idea is. Breadth alone doesn’t and shouldn’t explain abstractness. I think both Ned and I try to point out Benson’s claim is abstract b/c the immediate use of Benson’s claim (claim 8) standing on itself can not be identified.

  84. 333

    The court in Benson unfortunately runs with the Telephone mischaracterization of Morse’s, and Bell’s, patents as having claims “for the use of electricity”. They were claims for methods, involving steps of human intervention to change the configuration or state of physical objects, which changes ultimately coded signals that were transmitted and decoded by physical machinery defined as being configured in such a way as to physically embody decoding ability.

    The Telephone cases distorted the 112-type reasoning behind the Morse court’s statement that “If this claim can be maintained, it matters not by what process or machinery the result is accomplished.” The Telephone court mis-interpreted that 112-type reasoning as 101-type reasoning (tending toward a preemption doctrine characterization).

    The Benson court first amplified the Telephone court’s distortion of Morse, and then distorted it yet further, when it interpreted the conclusion in Bell to have been that “Bell’s claim in other words, was not one for all telephonic use of electricity.” Bell’s claim was not to any USE OF ELECTRICITY at all–again, it was a method claim, as described above in reference to Morse.

    These basic misunderstandings and subsequent distortions are the basis of the ultimately ill-conceived “preemption doctrine”.

  85. 332

    To the claim rejected in Morse, the court applied 112-type reasoning, characterizing it as a claim “for a patent for an effect produced by the use of electromagnetism, distinct from the process or machinery necessary to produce it;”.

    Interestingly, the claim essentially attempted to claim a utility, without describing any actual manner of achieving that utility.

    The claim that was sustained in Morse was for “making use of the motive power of magnetism, when developed by the action of such current or currents, substantially as set forth in the foregoing description,…as means of operating or giving motion to machinery, which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances,”

    Fast forward to The Telephone Cases, and a critical error made by the USSC is evidenced. The court stated, in reference to Morse, that “The effect of that decision was therefore that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could.”

    Wrong. The successful claim in Morse should not have been characterized as CLAIMING the USE of magnetism in connection with anything. What was claimed was essentially the method of converting electromotive force to magnetic force by use of particular devices, and of converting that magnetic force to physical force capable of producing physical motion in a machine. The claim was properly a process claim, not a use claim–a process that used human-induced conditions in a series of particular physical apparatus to ultimately produce a physical change in the object of the claim–the “production of motion in machinery”, which was the substantial utility.

    So, here was a big error by the court. Use of magnetism was never claimed as such, and the USSC’s incorrect interpretation of what happened in Morse is one of the first sources of confusion in 101 jurisprudence.

    Both Morse and Telephone are significant in that they were considered in Benson.

  86. 331

    TypePad HTML Email

    6, it seems you and I actually agree.  You don’t seem to
    understand that though. 

     

    Please re-read my post(s) with the view that we agree that the
    utility has to be specific, not just of the boat anchor variety.

     

  87. 330

    Morse’s claim was perfectly definite tard. While claims like his can raise an issue of definiteness it seemed pretty clear that everyone in the court while the proceedings took place knew good and well what Morse’s claims covered. Indeed, the USSC spelled it out.

  88. 329

    I’m going to make a series of posts rather than a single post because I’m sitting at a public-use computer and don’t want to lose any data…

    First post–

    In keeping with my assertion that a claim must be amenable to interpretation before any 101 analysis is performed, claim 8 in O’Reilly v Morse would now be rejected under 112p2, as explained in MPEP 2173.05(q):

    “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112, second paragraph.”

    O’Reilly v Morse should not be considered a 101 decision, but a 112 decision.

  89. 328

    Exactly Ned, it wasn’t that the “mathematical algorithm was not “used” for anything”. The problem, Ned, which the whole decision goes to some lengths to explain to you, is that they did not limit their claims down to whatever specific use they wanted to claim, and instead claimed every conceivable use of the mathematical algorithm. That is, the mathematical algorithm has a huge amount of utilities to which it might be put, and they claimed all of them. That is the problem. Not that there was no utility.

    And you know good and well that here in our patent context “utility” has a very specific meaning and only applies in certain contexts of certain inquiries. Note that Benson’s claims did NOT fail the utility requirement and indeed would very likely pass with flying colors.

    Your failure to understand Benson, yet again, after you were doing so well understanding it not a half a year ago, is bizarre to say the least.

  90. 326

    but both jurisdictions see a link between patentability and that which GATT-TRIPS calls “all fields of technology”

    Sorry Maxi – ya be barking up the wrong tree (still).

  91. 325

    Through sleight-of-hand, the Feds essentially stated that business utility was not enough

    No Ned – they did not.

    Simple as that – you are imagining a whole new basis for trying ta make sense of something that is largely senseless. Guess what – the Courts will sometimes do that.

  92. 324

    Think Ned – remind yourself what actually is a “holding” in a Court decision.

    Try again.

  93. 323

    capture the whole of some of the aforementioned subject matter then that claim too is invalid.

    Don’t look now 6 – every claim in every patent captures the whole of something.

    Geesh – cmon man – get with it.

  94. 322

    Ned thanks for that insight. The way it seems to me now is that, for Europe, patentability depends on having the right sort of non-obviousness whereas, in the USA, patentability depends on having the right sort of utility, but both jurisdictions see a link between patentability and that which GATT-TRIPS calls “all fields of technology” and the US Constitution calls “useful arts”. ping and I differ on whether SCOTUS in Bilski interpreted “useful arts”. For me, SCOTUS was awkwardly, painstakingly careful NOT to impose an absolute prohibition on business method patents because it could see that, if you tell the American public that new and non-obvious business methods lack utility, you invite ridicule.

    So, with your comment Ned, I see more common ground than I did before.

  95. 321

    Here is is, 6, for your consumption.

    “….They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general purpose digital computer of any type.

    The question is whether the method described and claimed is a “process” within the meaning of the Patent Act.”

  96. 320

    Max, Rader and the Supreme Court have made a hash of things due to lack of clarity in their opinions. This thread is an example. We debate what the courts have actually held. We shouldn’t have to do that.

    Thanks to posts by Fei and IBP, I rethought the matter.

    State Street held that business utility was statutory. Thus the only issue was whether the claims are directed to a business utility were claimed in one of the four classes: machine, process, article of manufacture, or composition of matter. With respect to the process part, all that was required was that steps themselves be physical, not that something physical be transformed.

    Along came Bilski, and the focus changed. Through sleight-of-hand, the Feds essentially stated that business utility was not enough when they stated that a process had to be directed to a specific machine or that the process had to transform an article of manufacture into a new state or thing. This overruled State Street without stating that it did.

    While the Supreme Court opinion in Bilski was all over the map, I think you can read their opinion to hold that business utility is not enough – period. The Stevens opinion flatly stated this. A majority also stated that State Street Bank was not correct. This can only mean that business utility is not enough to make the claims patentable. There has to be something more, something technological.

    The bottom line is this: if the only utility of the claim is a business utility, it makes no difference whether the claim is claimed as a programmed computer, or as process run on a computer. It remains nonstatutory because the utility is nonstatutory.

  97. 319

    ping, I invite you to consider the effect of a majority view that State Street Bank was wrong.

    State Street: Business Utility: OK

    So the Feds held that a claim within one of the four classes that had BU was OK.

    The Supremes beg to differ. Why? Surely not because the claims were framed in the four classes.

    Think, ping, there must be a reason.

  98. 316

    Here is an attempt to stimulate a thread that is getting jaded.

    An attempt at what Maxie – making things even more jaded with the unnecessary infusion of EPO stuff into an American legal case?

    Ya just dont get it do you? Absolutely no one is interested in how the EPZero would apply here.

    The EPO declines to recognise patentability on the basis of solutions to non-technical problems” – I done told you that in the US, the “technical” test has been kicked out by the courts – any post of yours that relies on this simply cannot wash here in the States. Try to keep that in mind, m’k?

  99. 315

    Are you trying to say that

    Um, no.

    I am not trying to say anything. I said what I said. Your universal announcement be simply wrong.

    You and Sunshine mixing meds? Try again and t h i s . t i m e . r e a d . m o r e . s l o w l y.

  100. 314

    Here is an attempt to stimulate a thread that is getting jaded.

    All machines have technical character and so patent-eligible. The EPO sorts out new machines that are patentable from those that are not by using the European equivalent of 35USC103, namely Art 56 EPC. That will strike you as crazy but it does work.

    The EPO recognises inventivity in non-obvious solutions to objective technical problems, defined in a claim by a recitation of technical features.

    The EPO declines to recognise patentability on the basis of solutions to non-technical problems. Patents are for technology, not in new and non-obvious ways to count the cash in your wallet or to come to a decision what film to watch.

    Mental steps performed inside the human brain are not “technical”. Programs that improve computer performance are technical (and non-obvious such programs are patentable).

    Thus, the EPO does not have to debate the degree of abstract-ness of claimed subject matter.

    Currently, the EPO Boards of Appeal are pumping out more than 100 decisions a month. So practitioners (and EPO Board members) who follow these decisions have an ever-sharper grasp of what “technical” means to the EPO.

    What’s wrong with the EPO approach?

  101. 313

    That’s funny Fel, and I haven’t met him just yet. I hear that he lets the upper leadership of the PTOS hang out with him in his chambers sometimes though. I might therefore join the upper leadership of the PTOS. But in any case, I don’t remember the case, but I could probably google it right fast.

    Man that took a long time. And also, that’s my bad, Rader did not face off against Newman until En banc time.

    link to cafc.uscourts.gov

    See part C.2 reheard en banc.

    In relevant part:


    Although such patented methods do have components, as indicated, Section
    271(f) further requires that those components be “supplied.” That requirement
    eliminates method patents from Section 271(f)’s reach. The ordinary meaning of
    “supply” is to “provide that which is required,” or “to furnish with . . . supplies, provisions,
    or equipment.” Webster’s Third New International Dictionary of the English Language
    2297 (1981). These meanings imply the transfer of a physical object. Supplying an
    intangible step is thus a physical impossibility, a position that not even Cardiac seems to
    dispute. See Appellants’ Br. 15 (arguing that steps of a patented process, “which
    conceptually could not be supplied from the United States,” were not the components of
    the process). As we have noted before, “it is difficult to conceive how one might supply
    or cause to be supplied all or a substantial portion of the steps in a patented method in
    the sense contemplated by” Section 271(f)”

    But feel free to read the whole section. Bottom line, methods, and the steps which make them up, are intangible, i.e. abstract.

  102. 312

    Not new. Is it not the task of every caring spouse to emit a loud beep as a way to manage anger suffered by their marital partner?

    Oh, sorry. I’m confusing 101 with 102.

    For 101 compliance, what about:

    WHAT I CLAIM IS:

    1. A machine.

    2. A transformation.

  103. 311

    “tell me 6, since all methods are abstract by nature and definition, howz ya gonna deal with the Law in the very part of the law that explicitly defines method as patentable?”

    What’s there to deal with tard? Are you trying to say that because methods, themselves, are a statutory category, that the genus to which they belong is also all statutory? Or perhaps that all things which may be expressed as a method are statutory?

    Because if so, you’re wrong.

    There are certain types of things in this world which the judges of your fair country have determined are not patentable within the meaning of your statute 101 pingerdoodle. Those exceptions exist within the realm of all the statutory categories. There is nothing to “deal with”, judges have ruled certain types of subject matter unpatentable within the meaning of 101, and in Benson they held that if the practical effect of a claim is to capture the whole of some of the aforementioned subject matter then that claim too is invalid. Methods are most certainly patentable save when they tread on the judicially excepted subject matter. Just like products, apparatuses and compositions.

    Or is all this bluster from your way simply your way of saying “lol 6, but according to your definition all methods would be excluded because they’re abstract!”? Is that what this is about? Your inability to read? I said that all methods are abstract, not abstract ideas.

  104. 310

    “The problem in Benson was that the mathematical algorithm was not “used” for anything that was otherwise useful in the statutory sense. ”

    Nice job making that up Ned. Maybe you should try READING THE DECISION to find out what “the problem” was.

    In fact, I happened to include a quote of what “the problem” was in Benson in this very thread.

  105. 309

    The Steven opinion said…but in a sense, it did prevail

    Um, No, Ned. It did not. Again, refer to my much shorter note above.

    Thus you FAIL in the final analysis by failing to understand that Stevens did not prevail. This aint the first time that you tried to make Law outa somethin that aint law. Back to the foul line, eh?

  106. 308

    6 states “We are all aware that all methods are abstract by nature and definition.

    Lolz there – the mantle of “we” be passed around on this thread by both Shot in the Head and 6.

    Tell me 6, since all methods are abstract by nature and definition, howz ya gonna deal with the Law in the very part of the law that explicitly defines method as patentable?

    35 USC 100(b): The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Geesh, ya figured that 6 might be familiar with the basics.

  107. 307

    Malcolm, you conflate two problems with your example which makes discourse here problematical.

    Regarless of utility, a process involving only mental steps is not within the statutory classes. There must be something physical involved. A machine executing the counting process, for example.

    But that does not end the matter of your example, does it? There remains the problem of utility.

  108. 306

    I agree with this. See my post below of Mar 26. I think the problem all along was lack of statutory utility, not whether the claim was framed in one of the four classes.

    If businees utitlity is statutory, a machine programmed to produce an instruction that has business utility is statutory under 101. Contrary if business utility is non statutory.

  109. 304

    The problem in Benson was that the mathematical algorithm was not “used” for anything that was otherwise useful in the statutory sense. It simply calculated a number. The number could be be used for many, many things, but the fact that it was not used for something specific caused it to remain in the realm of the “abstract.”

    Utility. That was the key to Benson.

    Claiming it as a machine; or as process did not give it statutory utility.

    Now, was we review the Supreme Court’s opinion in Bilski, the problem of figuring out what Bilski actually held is before us. Many of us thought that that the only problem with Bilski was the lack of being claimed in the statutory classes – assuming that a process had to transform something or be used on a machine. That was the position of the government on appeal: Claim it as a machine; claim it as a process on a machine; claim it as an article of manufacture — it was patentable. The claim, to government, was problematical only because it was not claimed in one of the four statutory classes.

    The Steven opinion said, in contrast, that the problem was utility. The Stevens opinion did not prevail, but in a sense, it did prevail to the extent that a claim which only has business utility will fail regardless of how it is claimed.

    We are now presented with a claim where the business ulitity is claimed in one of the four statutory classes. Yet STILL the claim has problems. This harkens back to Benson. It there made no difference whether the Benson claim was claimed as a machine, a machine process or whatever. It failed. The failure was one of utility.

    So, now we have Bilski claims failing for the same reason. They fail regardess of how they are claimed. Their problem must be utility and not, as the government pretended, because the claims were not claimed in one of the four classes.

    Since this must be true, logically, one must conclude that the Stevens view of things was the correct view: Business utility is not statutory.

  110. 303

    And maybe better yet, who is “we”?

    Shall I give Cy a call and have “us” join in on the great new sockpuppet conspiracy theory?

    Chillax Dude.

  111. 302

    However, there seems to remain substantial controversy on that point.

    Not really. Only depends on how much credence ya give to the vocal minority (hint, the right observation be: Not much)

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