If the software method is not patentable, then neither is the “computer readable medium”

CyberSource Corp. v. Retail Decisions, Inc. — F.3d — (Fed. Cir. 2011)

In an important decision, the Court of Appeals for the Federal Circuit has rendered many broadly written software patents invalid under 35 U.S.C. § 101 as interpreted by Bilski v. Kappos, 130 S. Ct. 3218 (2010). Most patent decisions involve questions of whether an invention is obvious under 35 U.S.C. § 103(a) or sufficiently described under 35 U.S.C. § 112. Section 101 asks a slightly different question – whether the patented invention is the type of innovation that properly fits within our patent system. In language virtually unchanged for over 200 years, Section 101 indicates that a patent should be awarded to the inventor of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Over the years, courts have repeatedly held that Section 101 bars the patenting of ‘laws of nature, physical phenomena, and abstract ideas.’

CyberSource’s patented invention is simple: when validating online credit card purchases, use IP address information (such as IP addresses) as a check against fraud. Thus, the patented method might raise a red flag if someone attempts to make a large internet purchase through an IP address that had previously been used for a fraudulent transaction.

In the lawsuit, CyberSource only asserted two claims: Claim 3 is the method of fraud detection roughly described above and Claim 2 is directed to a “computer readable medium containing program instructions” for causing a computer to perform the method. Claim 2 is written in “Beauregard” form. See In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

The claimed method is written as follows:

3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:

a) obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

b) constructing a map of credit card numbers based upon the other transactions and;

c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Machine-or-Transformation: As written, the claim does not require the use of any machine and it does not require the transformation of any article into a different state or thing. Here, the court repeated its stance that mere data gathering steps such as “obtaining information” cannot be sufficient to “make an otherwise nonstatutory claim statutory.” And, although the patent is designed to facilitate transactions over the internet, nothing in the claim actually requires that the internet be used. Finally, data structures such as the claimed “information” and “map of credit card numbers” will not be considered technical because they could be simply written down using pencil and paper. Thus, at the outset the claim fails the Machine-or-Transformation test that the Supreme Court identified as an important clue of patentability under 35 U.S.C. § 101.

Because the machine-or-transformation test offers only a legal clue to patentability, the court went on to consider additional indicia that led to the conclusion that the claim does not qualify for patenting under Section 101. In particular, the court focused on prior case law holding that mental processes standing alone are not patentable. CyberSource’s claimed method is such a mental process because it can be “performed … by a human using a pen and paper.” Thus, the claim is invalid.

Beauregard Claims: CyberSource’s claim 2 comes in a different form. However, the court interpreted it as “nothing more than a computer readable medium containing program instructions for executing the method of claim 3.” The most natural implementation of the invention is using software and the claimed “computer readable medium” is the storage device that holds the software.

The claim:

2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:

a) obtaining credit card information relating to the transactions from the consumer; and

b) verifying the credit card information based upon values of plurality of parameters, in combination with information that identifies the consumer, and that may provide an indication whether the credit card transaction is fraudulent, wherein each value among the plurality of parameters is weighted in the verifying step according to an importance, as determined by the merchant, of that value to the credit card transaction, so as to provide the merchant with a quantifiable indication of whether the credit card transaction is fraudulent,

wherein execution of the program instructions by one or more processors of a computer system causes that one or more processors to carry out the further steps of;

[a] obtaining information about other transactions that have utilized an Internet address that is identified with the credit card transaction;

[b] constructing a map of credit card numbers based upon the other transactions; and

[c] utilizing the map of credit card numbers to determine if the credit card transaction is valid.

Claim Form Versus the Underlying Invention: CyberSource argued that the claim is patent eligible per se because it is directed to a man-made article of manufacture – “a computer readable medium.” The court rejected that technical distinction. Instead, for patent eligibility purposes, the court directed focus away from the claim’s literal statutory category and instead focus on the “underlying invention.”

Regardless of what statutory category (“process, ma-chine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent-eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden . . . on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).

Here, the patentee was unable to provide suitable reasoning why the computer readable medium invention was fundamentally different from the method claim.

Pen, Paper, Computer: Following precedent set by Benson and Abele, the court here held that an unpatentable mental process remains unpatentable even when restricted to use on a computer.

Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.

That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.

Holding: Invalidity affirmed. Neither the method nor the computer readable medium qualify as patentable subject matter.

428 thoughts on “If the software method is not patentable, then neither is the “computer readable medium”

  1. 301

    IANAE, I was trying note that, despite this, the Fed. Cir. still utilizes the MoT test as a framework for analysis, and further jumps through hoops to create an exception to the machine prong.

  2. 300

    >> To put it another way: The use of a computer, as recited in claim 2, leads to a different, and much better, solution than the purely human-mind-based implementation that is excluded from the claim.

    That is correct, but an actual new computer is not being claimed. The generic machine mentioned is totally without details of any significance beyond the description of what any existing machine (a generic machine) can do. What is claimed? In fact, there is no indication that this invention does the computations any faster than say an existing supercomputer.

    The “human” test is a test of essence of content. Like a Turing Machine, no one is ever going to build one, but the concept is invoked repeatedly (at least implicitly) in theory and analysis. We can replace the “human” in the test with any advanced existing machine that does the same thing: follow steps to arrive at a predictable result. The human reference in the test is symbolic of isolating certain crucial aspects of those claims, the description aspect that can be broken down into algorithmic steps.. defined as, for example, steps a human could perform.

    Why is this definition good? Well, it captures a subset of claims that don’t claim any new process, machine, or improvement thereof.. as the Court interprets that part of the law in the context of the Bilski and other rulings.

  3. 299

    As far as I know, none of the patents I have worked on have been declared invalid, or even challenged.

    By physical analog, I mean, analogous to taking something relatively accepted and standard, mixing in “Internet”, and declaring that it is new. I don’t recall the particulars, nor am I interested in relating them, but it was something like “but with wires connecting two PC boards”, where there was no published record of anyone doing that particular thing for the particular patented purpose. So, meeting the objective standard for patentability, while utterly failing the subjective “Duh!” test.

    The issue with software patents for me is that though there is a lot of dancing right up to the objective (statutory) line, quite a few of them pass the Duh test with flying colors (e.g., that one of mine that I mentioned, which is so hard that understanding flees my brain (and probably yours also) like a watermelon seed.) The nearness of the dancing to the “can’t patent mathematics line” seems irrelevant to the novelty, difficulty, or economic impact of the invention.

  4. 298

    That depends on which EM signal you’re talking about. Are you talking about a radio signal from our local radio station? In that case no it isn’t a phenomena o nature. Or are we talking about an “EM signal” aka light from a distant star or our sun? In that case it is.

    “Here’s a hint: a “manufacture” is a creation of man.”

    You should try reading Nuijten instead of arguing with me pingerdoodle.

    Also note that the original topic was about telephone signals, which are electrical signals not “EM” signals per se.

    “Anyone with a basic understanding of physics and human history know that man has long understood how to manufacture transitory propagating signals.”

    And anyone with an advanced understanding of physics and human history knows that man has long understood signals to not be a “manufacture”. Anyone with an advanced understanding of patent lawl knows that they certainly aren’t a “manufacture” as that term is used in the patent statute.

    “Do not merely accept such a shallow view of Nuijten. ”

    Instead I should adopt your ret arded view? No thanks bucko.

    “Let me know what you think the answer is to this deeper question.”

    Because of their definitions. Period. End of story. And end of this pointless conversation.

  5. 297

    JCD: “it is not clear that a computer programmed to perform a process [fails the MoT test].”

    MOT isn’t the test anymore. The prevailing Supreme Court authority holds that MOT is for people who need to get a clue.

  6. 296

    As evidenced by not only this decision but by others as well, these are interconnected concepts that the court refuses to take the time to investigate and understand. The court has no general understanding of patenting, and only addresses issues discretely as they are presented by litigants, without regard to how their narrowly-drawn opinions affect the interconnected totality of patenting.

    Yeah, and this kills me.

    The CAFC (like its predecessor, the CAFC) is a unique body in the legal world: it is the only federal appellate court with subject-matter jurisdiction rather than hierarchical jurisdiction; it has the exclusive power to hear district court appeals for patent cases. It is supposed to be a body of the best minds we can find, who will carefully tend the incredibly complex web of issues comprising the framework of patent law.

    I don’t mind that these experts are trying to shape the patent system – even in ways that I consider regrettable or damaging.

    What I DO mind is when they do it dishonestly and unfairly – when their opinions are logically inconsistent; when they warp and lie about the facts; when they don’t just change precedent, but completely ignore it.

    The rule of law, first and foremost, is about consistency and predictability: if a case presented today with facts (ABC) results in verdict (X), then a case presented tomorrow with facts (ABC) should also result in verdict (X) unless there’s a reason to change it. But these wildly vacillating decisions, supported by conclusory or illogical explanations that shift with the whims of the court, erode our confidence in predictions and expectations of consistency.

    Regardless of the result – the logic of the CyberSource opinion is clearly dishonest in two ways.

    First, it rejects claim 3 for lacking (x), then rejects claim 2 for resembling unallowable claim 3, while also denigrating the extensive presence of (x) in claim 2 as merely “form.”

    Second, it supports its reasoning with references to CAFC panel decisions (Comiskey, Warmerdam, Schrader, Grams)… and yet fails to discuss THE CASE of that period – decided by the Supreme Court, routinely cited in every subsequent decision as good law, and articulating rationale that’s directly applicable to this case. (Even worse than totally ignoring it, the opinion demotes Diamond v. Diehr to a footnote on the second-to-last page, and cites it solely as a weak nod to another case.)

    Simply put – that is not honest law-making. Regardless of how you feel about the result, you cannot support the way in which this result is achieved.

  7. 295

    A mental process clearly fails the MoT test (excepting potential transformation of the brain), but it is not clear that a computer programmed to perform a process does. It is the hoops the court jumps through to undermine the machine prong of the MoT test that I am not sure make total sense.

  8. 294

    From Diehr:

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

    From In re Bilski:

    “Our predecessor court’s mixed result in Abele illustrates this point. There, we held unpatentable a broad independent claim reciting a process of graphically displaying variances of data from average values. Abele, 684 F.2d at 909. That claim did not specify any particular type or nature of data; nor did it specify how or from where the data was obtained or what the data represented. Id.; see also In re Meyer, 688 F.2d 789, 792-93 (CCPA 1982) (process claim involving undefined “complex system” and indeterminate “factors” drawn from unspecified “testing” not patent-eligible). In contrast, we held one of Abele’s dependent claims to be drawn to patent-eligible subject matter where it specified that “said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.” Abele, 684 F.2d at 908-09. This data 963*963 clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues. Thus, the transformation of that raw data into a particular visual depiction of a physical object on a display was sufficient to render that more narrowly-claimed process patent-eligible.

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

  9. 293

    Ned, in your opinion, would a computer programmed to perform information processing represent patentable subject matter? Should it turn on whether or not the information processing can be performed by a human mind? (Because, in effect, that is what the court is proposing.) Once again, not only is the human mind an amazing thing, but we are not even entirely sure what the limits of the human mind are. (See, e.g., link to scottaaronson.com)

    Note that I am not intending to express an opinion one way or another regarding whether information processing should be patentable per se, I just am not sure the court’s reasoning makes a lot of sense.

    Nor am I sure that it is consistent with Bilski’s insistence that “[a]ny suggestion in this Court’s case law that the Patent Act’s terms deviate from their ordinary meaning has only been an explanation for the exceptions for laws of nature, physical phenomena, and abstract ideas. … This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statute’s purpose and design.”

    That is, I believe that the court’s proposed Alappat exception in combination with the MoT is potentially inconsistent with the statute’s text and the statute’s purpose and design in that it can potentially exclude subject matter that does not fall under the law of nature, physical phenomenon, or abstract idea exceptions.

    For example, does a computer programmed to solve a problem that a human mind could solve always represent unpatentable subject matter? Is it the court’s position that the methodology for solving a problem that a human mind can solve will never involve more than an abstract idea?

  10. 292

    You can make a living writing software. You can make a lot of money. You can let your creativity flourish. You can gain tremendous prestige and be praised throughout history…

    …unless another software company (especially one that’s already very well-known and has lots of development resources on hand) sees your idea, appreciates its value, and creates a knockoff.

    Exhibit A:

    link to blogs.sfweekly.com

    This market seems to have worked out VERY well… for the copier (Zynga is now valued at $11.5 billion). For the other developers – the guys who actually came up with the ideas and released their products first? Not so much.

    Of course, that’s the world of copyright, not patent. My point is that copyright is wildly inadequate as a sole form of protection for software. Copyright prevents people from redistributing your software (code or binary) or copying the artistic representation (but only with a very high degree of similarity)… but it completely fails to protect the *idea*.

    So the question, Jose, is this: What sort of “free speech” software market do you want? Do you want a market with a bunch of great new ideas… or one where the big players sit around and wait for someone else to develop a great idea, and then develop a bunch of knockoffs?

  11. 291

    Software is instructions for processing information, written to be understood by a machine that processes information according to what instructions are provided to it.

    Software should be treated like instructions.

  12. 290

    The upshot of the above post?

    You guessed it–money talks, b.s. walks.

    (rational legal reasoning being the b.s.)

    Want to know how the CAFC is going to decide?

    Follow the money–all of it.

  13. 289

    To be fair Ned, Judith Dyk makes the same type of error.

    In the opinion, she assumes what she sets out to prove, she does not ARRIVE at a conclusion via a process of reasoning from admitted fact and cogent argument.

    She stated, before proceeding with any analysis, that “A Beauregard claim…is a claim to a computer readable medium…containing program instructions for a computer to perform a particular process.”

    NO, it is NOT–it is a claim to a unitary physical article that has the potential utility of being able to produce a change in the physical structure of a physical machine that itself initially embodies a particular physical structure.

    The article DOES NOT contain “program instructions”, it embodies a particular physical structure. The physical machine that is the object of the article’s asserted utility is able to detect that physical structure and, based upon the particular physical structure of that machine, is able to recognize an informational content in the physical structure of the article when the physical structure of that article is detected in a way particular to the machine, and is able to produce changes in its own physical structure in response to that informational content.

    The article does NOT contain “program instructions”, it embodies physical structure that can be interpreted as program instructions by a completely different, unclaimed machine.

    The rest of the so-called “reasoning” proceeds from this flawed basis.

    Of course, the literal language of the claim read: “A computer readable medium containing program instructions…”, but according to the court’s own prior reasoning, the language “containing program instructions” is NOT a direct description of “program instructions”, but is instead a permitted indirect description of the physical structure of said computer readable medium.

    That illuminates the essential problem with this opinion perfectly–the court, in initially having developed a way to allow software-related claims, devised a mechanism whereby the literal meaning of the claim could be construed as merely a description of a different concept, and the claims would be examined on the basis of that different concept rather than on their literal meaning.

    Software-related claims were therefore allowed. That fact in itself should have evidenced unequivocally the error of this type of approach.

    To correct that error, the court here reverses course, and now examines the claim in light of its literal meaning, rejecting their formerly-approved claim interpretation device.

    The problem is that in this same opinion, very shortly after correcting that first error, THE COURT ONCE AGAIN MAKES PRECISELY THE SAME TYPE OF ERROR THAT IT JUST CORRECTED!

    Only 2 pages after rejecting the figurative approach of claim interpretation in favor of the literal approach, Judith Dyk proceeds to put the literal approach right back in the drawer, and resurrects the just-discarded figurative approach:

    “Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.”

    This is inefficient and confusing. I’m absolutely certain that not even Judith Dyk is aware of exactly what she is doing, and how, let alone future panels, litigants, and patent applicants.

    More obfuscation from the CAFC is totally unhelpful to the whole patent paradigm. What will the CAFC do next? Who knows?

    The only way to divine the disposition of a particular case is to figure out which way the policy winds are blowing, and to follow them.

    Back in the ’90’s, software was HOT, silicon valley was booming, all sorts of people were jumping on the bandwagon and making lots of money on IPO’s and in the markets, everything was great–and you got software-related patents.

    Fast-forward to 2010, money is in short supply, development costs have risen and development has been offshored, silicon valley valuations are falling, everybody is jumping off the bandwagon into gold and losing lots of money, IPO’s are dead compared to what they used to be, nothing is great–and you got the death of software-related patents.

    Is this sort of flexibility a good thing? Does it represent a type of responsiveness that the courts should have to prevailing social conditions? Any answer to that would require an analysis of whether or not the patent system actually contributed to the rise and success of software-based ventures, and if so to what extent–and any such suggestion is, of course, totally up for debate, and is unresolved.

    In view of the fact that it is unresolved, and because it is the initial proposition that must be justified, that software-related patents helped the industry, the initial proposition should be rejected, IMHO, as inadequately proven.

    The figurative approach to claiming shorthand should never have been instituted, and software-related patents should never have been granted in the first place. How much more efficient THAT would have been.

    But we found ourselves in the situation where the figurative approach was carrying the day. Instead of putting it to bed once and for all, and invalidating Cybersource’s claim 2 using 112, 102, or 103 based on a literal meaning approach to claim interpretation, the court has (most likely unwittingly) perpetuated the very problem it purports to have solved.

    For the problem was NOT that software-related patents were granted, but was instead the REASONS that were used in justifying that grant.

    Those reasons permit arbitrariness, and thereby create a diminution in certainty/predictability, and certainty/predictability is one of the fundamental reasons for the existence of the judicial system.

    And those REASONS remain totally unchanged by this opinion.

    Indeed, they have been reinforced.

    In developing the figurative approach, the court enlarged the scope of its power–but power without awareness is dangerous, and is the mark of a brute.

    The court, as currently configured and operated, is failing. The mode of its failure is representative of the mode of failure of the broader public-sector in the U.S. today. Even at the Fortune-500 corporate level, the single largest concern is that of UNCERTAINTY in the course of government action.

    The CAFC, via opinions like Cybersource, is both a symptom of, and is contributing to, the decline of not only the U.S., but of the totality of western civilization.

    The CAFC must be totally re-organized–the brute must be slain.

    Individual jurists currently serving on the court may indeed be extremely capable juridically–I pass no particular judgment on any of them personally. It may be the institutional limitations that affect them, it may be the overloaded docket, it may be the method of appointment and political considerations, I don’t know. Also, there remains the possibility that they are personally incompetent to sit on the court, it cannot be discounted.

    The court needs to be populated first with good minds, then given freedom to operate as it sees fit, within the bounds of the law. If it needs to be expanded into a hierarchical sort of system to meet the workload, then so be it.

    But things need to change–and one of them is the CAFC.

  14. 288

    If you’re going to make a completely bogus judicial decision/opinion about CRMs, why not make one about types of prior art applicable to anticipating mental methods?

    There is no point to that because claims literally drawn to mental processes are already forbidden by 101. Even the patent txxbxggers tend not to dispute this, but I suspect that will change.

  15. 287

    Ah.. .. I don’t know what came over me

    That’s called “emotion.” And as obvious here, emotion tends to drown out reason.

    You just won’t get that type of wake up call over at slashdot or from those that see no problem in buddying up the law. But just because you don’t get that type of wake up call does not need you don’t need that type of wake up call.

    Software is not math. It is not literature. It is not music.

    Software is a tool to DO SOMETHING. Software is and should be treated just like firmware, just like hardware.

  16. 286

    NO PARTY, appellee or appellant, nor the court sua sponte has raised a 112 issue. Neither has the Office in either of its two examinations.

    Doesn’t change the fact that there are 112 problems with B-claims. Big problems.

  17. 285

    Diehr is a bad call IMO. I think this new ruling is more consistent with earlier rulings than is Diehr.

    Yes – precisely. The trouble is that neither you nor this court gets the option of disregarding Diehr.

  18. 283

    Would it put even more bees in your bonnet if I told you I signed the action myself? Oh noes!

    And yes, conclusion as in the normal sense of the word. I concluded it was a “finding of fact” in the legal sense.

    Re: the would vs could, if it was “would” it would have been an inherency argument. It wasn’t, so it was an obviousness argument.

    Re: the CRM vs. computer, the entire point of contention (which Dyk is discussing) is that only the preamble of these claims have anything to do with CRM. The entire body of the claim is “a computer processor executing these steps:” and reciting a method. So would in re Venner be applicable to such a CRM claim? I don’t see why not.

    And the human being cite was slightly facetious. If you’re going to make a completely bogus judicial decision/opinion about CRMs, why not make one about types of prior art applicable to anticipating mental methods? Make a ruling along the lines “The structure of a human being can inherently perform the claimed functionality without any modification whatsoever”. Something similar to In re Schreiber. But make the decision so it can’t be also applied to cite generic computers against any programmable functionality.

  19. 282

    JADP The form (i.e., the structure) follows the function (i.e., how the machine behaves).

    No it doesn’t because there are an infinite number of ways to encode a program for carrying out steps X-Z. And depending on how the program is encoded (and decoded), the same structure could encode a program for carrying out different steps.

    Try reading 112, it talks about claims that distinguish (i.e., distinctly claim) the invention from the prior art. There is no limit to how that is done.

    Yes, there are limits. One of the limits is that you can’t distinguish a new composition from an old composition merely by saying “wherein the new composition differs from the old composition because it causes another composition to behave differently,” particularly where the described function does not correlate necessarily with any change in structure.

  20. 281

    Here we go —> conflation of copyright and patents…

    (sigh)

    Malcolm, please escort your friends back to slashdot.

  21. 280

    fails to mention

    Let’s correct that oversight:

    Whether the Cybersource invention is patentable as passing 112 is not at issue;

    NO PARTY, appellee or appellant, nor the court sua sponte has raised a 112 issue. Neither has the Office in either of its two examinations.

  22. 279

    But in Diehr and Allapat, the data being transformed was specified as to what it represents.

    Diehr didn’t get his claims because the data was data about rubber. Diehr got his claims because some rubber actually got cured in his claims.

    Flook’s data was data about stuff too. Didn’t do him much good.

  23. 278

    Jules: I disagree. A new use of an old machine is patentable.

    Yes, it’s called a method claim. Whatever you’re driving at, it is not relevant to B-claims.

    As for the computer-implemented method in claim 2, as the court explained, it’s simply too abstract for patent eligibility and reciting the use of a computer in the method isn’t substantial enough to rescue the claim.

  24. 277

    Even further, the panel misapplied Allapat in finding no transformation becasue the computer only reorganizes data. But the computer transforms the data, which is specified as to what it represents in the real world, into true/false fraud detection results. The CAFC en banc said in Bilski that Allapat makes clear that there is a transformation so long as what the data represents in the real world is specified, and they reiterated it in Bilski for clarity. That was the difference between Diehr and Flook and Benson. In Benson, the data were just binary and decimal numbers. In flook, it was just a parameter of an unspecified process. But in Diehr and Allapat, the data being transformed was specified as to what it represents. The SCOTUS majority cited with approval the CAFC’s commebnts in Bilski, and advised practitioners to review these comments by the CAFC for guidance. But this panel has missed the boat in saying there is no transformation.

  25. 276

    Whether the Cybersource invention is patentable as novel and nonobvious is not at issue;

    LOL – the great Hal Wegner fails to mention the 112 issues that plague B-claims.

  26. 274

    How about claims directed to a cook book containing novel and non-obvious steps for preparing food? Does the fact that I claim something made of paper and glue and ink get me past 101?

    Seriously, does it?

    It certainly should if you subscribe to the beliefs of the patent txxbxggers. They’ll wave their hands about the “printed matter doctrine” but it doesn’t escape the fact that a human or a computer (some people call them “robotos”) could absolutely read those recipes and become a “new machine”, at least as the term “new” is used by the patent txxbxxgers.

  27. 273

    I listened to the ol’ Nuijten oral arguments last night and one of the good judge’s comments to the PTO solicitor seem to be a bit more writing on the wall for the entire claim format. i don’t even think I had listened to these args before.

    I also found out that apparently you’re supposed to pronounce “Nuijten” as approxmiately “Niten”.

  28. 272

    “An improvement of a process would be a new process. An improvement of a machine would be a new machine.”

    I disagree. A new use of an old machine is patentable.

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

  29. 271

    What we have here is the nontechnical getting caught up in the anthropomorphism of a machine

    That’s exactly how software claims are written. Don’t blame the court. Blame the claim drafters.

  30. 269

    35 USC 101:

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title [wherein this section shall not be used to deny or invalidate a patent].”

    The “new” language of 101 will be handled by the 102/103 “conditions and requirements of this title”.

    The “useful” language of 101 will be handled by the 112 “conditions and requirements of this title” wherein 112 states “The specification shall contain a written description of the invention, and of the manner and process of making and using it …” Note that if something can be used, then it is useful.

    A simple 1 page passage through Congress should suffice. There’s no need for a bloated bill with a bunch of other stuff.

  31. 268

    Hal Wegner makes some powerful points in an email message broadcast today:

    Yesterday in CyberSource Corp. v. Retail Decisions, Inc., __ F.3d __ (Fed. Cir. 2011)(Dyk, J.) opinion below, 620 F.Supp.2d 1068 (N.D. Cal. 2009), a panel implicitly repudiated the patent-eligibility under 35 USC § 101 of the tens of thousands of “Beauregard claims” issued under the 1995 Patent Office acknowledgment In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)(Order)(Archer, C.J.)( “The Commissioner now states ‘that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.’”).

    Conflict with Research Corp. v. Microsoft; State Street Bank: Whether the Cybersource invention is patentable as novel and nonobvious is not at issue; rather, the Cybersource “Beauregard claim” is directed to a tangible medium and under State Street Bank is hence patent-eligible subject matter under 35 USC § 101: “The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112, ¶ 2.” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1372 (Fed. Cir. 1998)(footnote omitted quoting extensively from In re Bergy, 596 F.2d 952, 960 (CCPA 1979)).

    Neither is the Cybersource tangible medium “abstract” in the sense of Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010)(Rader, C.J.)(“[T]his court … will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic 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 Red Flag has been thrown on the field. The play is under review.

  32. 267

    >> Nailed it .. they use a “I know [an obvious claim] when I see it”

    Well, A (the law) does not equal B (MOT) does not mean that there is a whole lot of other testing area. The SCOTUS could not come up with a better test and no exceptions have been given.

    When one day that boundary case arrives and is argued by the patent owners, then a new test might be born.

    It’s entirely likely that the law is too vague and the Courts are trying to capture the vast context of the law while at the same time not running afoul of the Constitution (eg, “to promote the progress”) without having to resort to a very elaborate test or to always hearing a barrage of experts and statisticians trying to nail down this time what “promote” and “progress” and “art” mean.

    If you want to simplify your life, read the writing on the wall that software, aka digital information, is not patentable (and we all intuitively know what sw is). It is copyrightable, apparently, but is not patentable. You can make a living writing software. You can make a lot of money. You can let your creativity flourish. You can gain tremendous prestige and be praised throughout history, but stop trying to patent it and stifle the rest of society. That is disgusting. It is unconstitutional whether ruled that way or not. It does not promote the progress. It abridges speech. It tries to neuter the copyright protections for independent works and against ideas. Stop it and breathe a sigh of relief or keep being a pest on society and industry. @%^%$#%#$%#$%#$%#$^%^#$%#$%

    Ah.. .. I don’t know what came over me. Sorry.

  33. 266

    David–

    Yes, that is the upshot of Cybersource.

    The inclusion of the program and functional description was one of claiming, examination, and adjudication efficiency.

    Having to explicitly include all sorts of stuff now will be unwieldy, and is unnecessary. How the pendulum has swung with this overly-reactionary court, leaning whichever way the wind is blowing.

    What happened to the understanding of one of ordinary skill in the art? What happened to using the spec as an aid to claim interpretation? What happened to MPF claiming?

    As evidenced by not only this decision but by others as well, these are interconnected concepts that the court refuses to take the time to investigate and understand. The court has no general understanding of patenting, and only addresses issues discretely as they are presented by litigants, without regard to how their narrowly-drawn opinions affect the interconnected totality of patenting.

    AGAIN, FOR EVERYBODY ELSE, I AGREE THAT “SOFTWARE-RELATED” CLAIMS SHOULD ESSENTIALLY NOT BE PATENTABLE, INCLUDING CRM CLAIMS.

    I believe that in order for them to survive 112 and 101 that they need to be narrowly-drawn and very specific, and that they will thus be made easy to invalidate under 102 and 103.

    What a mess.

  34. 265

    Diehr is a bad call IMO. I think this new ruling is more consistent with earlier rulings than is Diehr.

    The Courts may not know what to look for in a process that would pass muster (although they seem to have identified that opening a door or a computing car does not create a new car).

    I suggested in another comment:

    “if the process is described through algorithms (mental steps), rather than as new/novel/non-obvious/precise/etc physical changes to some structure, then we don’t have a [patentable] process.”

    The Court is not an expert in software or with advanced machines. It would be reasonable to expect that they would get it wrong here and there. The earlier cases were with concepts more familiar to more people (counting and algorithmic steps). A modern computer is simply a more efficient counting beast (than prior ones) with more sophisticated steps. The hardware is patented already separately, and the algorithms are the sorts of things mathematicians and others evolve daily without any need for patents and thankfully without the obstacle patents would present.

  35. 264

    More importantly, what how would this differ from what copyright allows already and not also not violate the decision that ideas cannot be owned.

    I could ask how software patents promote the progress, but I have very high confidence that there is no reasonable and affirmative response to that question. In essence, this value given to 101 and stating that ideas cannot be owned is a way the Courts have said that we can’t possibly promote the progress if we allow otherwise.

  36. 263

    Trying to keep my comments on this thread to a minimum, but Ned, when you stated that:

    “…the program functionality claimed has nothing to do with any functional relationship of the program to the CRM. This lack of correspondence of function…”,

    you demonstrated, IMHO, a lack of understanding of the basic concepts underpinning claiming and claim construction.

    I’d like to see if the formulation that I use has any internal deficiency–not relative to what can be legally argued based on case law, but on a logical basis alone. There are, to be sure, legal objections to this formulation, but there are also legal supports therefor–in fact, it was not I, but the courts, who conceived this formulation in the first place. So let’s set aside strictly legal considerations for the moment…

    “the functional relationship of the program to the CRM”

    Ned, there IS no “functional relationship” of the program to the CRM, as you characterize it. The “program” and the “CRM” are NOT 2 distinct parts of an assembly, which parts are expected to functionally cooperate. Instead, the article claimed is one thing, and one thing only: a physical article with a particular physical structure. The article claimed is unitary, not assembled from 2 discrete cooperating components. The “program” is merely an indirect description of the structure of the unitary article, and the “program” itself is NOT a claim limitation, and does NOT constitute a part of the claimed article.

    There is no requirement that the program have any functional relationship to the CRM whatsoever, as the “program” is not claimed–so when you articulated the concept of “the program functionality claimed”, you were articulating a fictitious concept that does not in fact exist.

    Finally, there is absolutely no requirement that any functionality of the fictitious “claimed program” have anything whatsoever to do with any totally unnecessary “functional relationship of the program to the CRM”.

    What say you?

  37. 262

    >> you ignore the “or any new and useful improvement thereof” portion of 101 in your disapproval of computer-implemented inventions

    An improvement of a process would be a new process. An improvement of a machine would be a new machine.

    The Court is saying (as I interpret it) that neither to a base process nor to a base machine can you create a new one simply by explaining, in detailed fashion, novel fashion, non-obvious fashion, or otherwise, steps that the alleged new process or machine takes differently than was the case before. In particular, if the structure of a machine has not changed (eg, we merely open a door to signify 1 rather than having left it closed to signify 0; eg, we merely reconfigure the machine), then we don’t have a new machine. And if the process is described through algorithms (mental steps), rather than as new/novel/non-obvious/precise/etc physical changes to some structure, then we don’t have a new process.

    Mathematicians do very advanced algorithmic development daily and don’t get patents. That is how it should be. You don’t need a billion dollars to put these broad ideas into development, manufacture, and distribution. You don’t need a patent. Competition is healthy without the stifling monopoly patent suits that are hurting the US’s advance and progress.

  38. 261

    I want to add that the reason the Court might want to consider 101 as the defining law in this trivial case is that this triviality (where there is nothing remotely new claimed outside of the mental steps) would not make any such invention, in the Court’s opinion (ie, in my opinion of what the Court might be saying), be deemed to be any more patentable should sections 102, 103, 112, and any others of the law be changed tomorrow. This is important because it says that this triviality of trying to patent mental steps by simply invoking some generic entity that will carry them out will never be tolerated as long as 101 is part of the law as it currently is.

    This interpretation of their opinion, if correct and if the opinion is not neutered by a higher authority, is a setback to all patents whose novelty lies in algorithms, no matter what fancy language is used in the patent application and no matter how complex are those algorithms or accurate/efficient they are in solving an information problem. For consolation, mathematicians and many other derive highly complex solutions to many information problems on a regular basis and get no patents.

    Note that this does not forbid describing a precise structure of a machine from which those algorithmic steps can be proven to be achieved under a particular context. I see the Court considering potentially any specific circuit as being patentable on analysis of its structure in the claims but not based on any algorithmic description of such circuit.

    As for what would constitute a legitimate 101 process patent, I presume that would have to include a description of a specific process that puts an existing machine to work in rather non-trivial ways (non-obvious, etc) where the Court considers *for the purpose of non-obviousness, novelty, etc*, the *physical* details of *how* something is achieved. This is a subtle and subjective exercise. I don’t know what else to say.

    A redo of Diehr under this light may or may not lead to a different ruling. IIRC those claims were rather generic as well, and I would think a future Court redo would come to a different conclusion than the Court did in the past. The Court’s understanding evolves. They may go back and redo the equivalent of Diehr. [Again, I only glanced at those claims, am trying to recall from memory, and have limited experience with patents.]

  39. 260

    Interesting to note that Ned chooses to endorse one (smaller) concurrence at the same time proclaim that another (larger) concurrence is not the opinion of the court.

    Ned, you cannot have it both ways.

  40. 259

    >> Show me an issue that does not meet your description of “an issue that can be addressed whenever it arises.”

    The rest of Malcolm Mooney’s paragraph tries to clarify. Reading through it, I would adjust that initial phrase to say,

    “an issue that *must* be addressed whenever it arises.”

    Put differently, it would be a threshold that *must* be maintained *at all times* when deciphering the claim. This might contrast with a requirement tested only at the initial entry point description of the claim.

    That said, I don’t know what the courts actually intended, but when trying to figure out what invention is claimed, all parts of the invention must be dealt with.

    The above claim just refers to a generic piece of hardware which is holding encoded information, ie, has a particular configuration, such as a door that is ajar (to signify a 1) as opposed to closed (0). The claim then immediately turns to describing methods.

    The part of the Court’s opinion included in this article appears to say that it is trivial to state that a generic piece of hardware that can hold information is not a patentable invention. For example, it adds nothing to the prior art, as it is but a short generic description. Because of this triviality of the explicitly claimed invention and the fact the long body of the claim deals with methods, the Court chooses to address whether the patentability of those methods enables the claimed invention to be patentable. In this regard (and considering that the claimed invention is trivial otherwise), the Court asserts that the methods are mere mental steps not patentable under any circumstance (as the current trivial one) where it is assumed little more than a machine or human capable of carrying out these steps is instructed to do so.

  41. 258

    The “normalcy” you seek to reestablish is the arcane world of Flash of Genius, Only the Kings can Play.

    Nobody is saying that the claims are invalid because the recited method isn’t clever enough. That would be an obviousness issue.

    The world’s most brilliant and most statutory method, written down as a set of instructions, is still nothing more than a set of instructions. It doesn’t matter what is written or who wrote it.

    All the CAFC did was tear down the poster. The medium is not the method.

  42. 257

    It tells us that bureaucrats should not decide what is patent eligible.

    “It’s too new” is a horrible reason.
    “It’s too hard” is a horrible reason.
    “I don’t have a database of prior art” is a horrible reason.

    It tells us that the presidential commission was WRONG. Even after this decision, the Beauregard claim is still a valid format – the substance of the claim has been nixed in this case.

    Do not confuse the two. Re-read the decision, it expressly allows this claim format to be used for patent eligible inventions.

    People need to not buy into the mindless hype!

  43. 256

    Jose_X,

    CRM = Computer Readable Medium.

    Be careful of not understanding the legal meaning of what you read – just as no one would expect that programming in multiple languages in a single program would actually result in a working program, recognizing what the actual language of the discussion entails is critical.

  44. 255

    Hi Ned, the concept of “free beer” is used more or less flippantly, by English barristers, as code or short-form for a claim that recites a devoutly wished-for, long felt want, that is easy to define in a claim but which looks more like a statement of a problem to be solved than it is a solution to a problem.

    In other words, enablement is the issue, 112.

    All these claims to a DVD carrying instructions to a computer are not so different from a “free beer” claim.

    Tension arises (of course) when those championing the Beauregard claim assert that enablement is a matter of pure routine.

    If 101 does not bite, because the claim is to a manufacture, and 112 does not bite because imnplementation is routine, and 102 does not bite because you cannot prove that the DVD is not new, what then? Allow (USPTO) or take a 103 hammer (EPO) to the area of the problem being solved. Is it a technical one or a commercial one, a problem within the useful arts or outside the ambit of the useful arts?

    Which Beauregard jurisprudence (Europe or America) better promotes the progress of useful arts is the issue in dispute. Europe recognises patent-eligibility in B claims.

    As you know, Europe grants B claims when they embody non-obvious solutions to objective technical problems.

  45. 254

    has nothing to do with any functional relationship of the program to the CRM.

    Respectfully, this is crrp. It was crrp on the previous threads and remains so now, no matter how many times it is repeated.

    Review the hatband case. Review the measuring cup case.

    I have yet to see a cogent legal argument that can overturn the law of those cases.

    Ned, in either of those cases did the material of the printed matter have a functional relationship to the material of the substrate that you are demanding of the printed matter to the CRM?

    The answer is clearly NO.

    Clearly it was the “what” of the ink and the “what” of the numbers that held the functional relationship.

    Likewise, clearly in this case as well it is the “what” of the code that is the focus of patent eligibility question that the court has answered.

    The “what” of the code is identified in the patent ineligibility of the pure method claim. The court here is actually applying the exception to the printed matter doctrine fully and completely – the court here embraces the printed matter doctrine including the exception – something that those who deny the existence and meaning of that (complete) doctrine cannot see because they have chosen to remain blind to what that doctrine really means.

  46. 253

    >> So now a CRM is a computer?

    If this refers to Customer Relationship Management system and no details are given as to how this is implemented, then how can we assume anything more specific than the common software implementation on a programmable device based system (aka a computer)?

  47. 252

    You will still be reciting mental processes carried out a computer

    Can computers now think?

    If a process is carried out on a computer, that process is no longer strictly a “mental process.”

    It may be a process that can also be done by a human, but the process itself – as claimed – is not being done by a human.

    What we have here is the nontechnical getting caught up in the anthropomorphism of a machine and confusing the fact that a machine process is limited to being a machine process.

    I can buy the denial of a claim that can be performed entirely in the mind of a person, but is that what is actually claimed here? Has the human mind been absorbed into the Internet? I think the court erred in dismissing the technical elements, and while the Internet is ubiquitous, it most definitely is not an abstraction. An anthropomorphical corollary to the reasoning (I believe in the lower court’s opinion) is to look at the individual “bits” of a living being. The body regenerates the actual material compositon over the course of time, yet still is the same nonabstract body.

    Lazy and hazy thinking is a result of the “take your pick” mentality. Yet another reason to stay sharp when it comes to the law.

  48. 251

    Actually Al, I just made a post on this very topic in reply to a post by Mr. Stein.  Why don't you search this thread for that post and reply to it.

    However, in short detail, the holding in Diehr required that the process modified by the programmed computer be a process  that also passed the MOT test.  The problem with the claimed subject matter in this case is that the claimed subject matter did not passed MOT test.

  49. 249

    I seek to reestablish the stone Age?

    I thought that was what Eco-Freaks advocated.  

    But seriously, a presidential commission recommended that we not patent computer software, for several reasons, but mainly because they could not properly be examined.  We have been patent computer software, per se, in the form of Beauregard claims, for approximately 15 years.  What does the experience tell us?

    It tells us that the presidential commission was right.

    From:

  50. 248

    JCD, yes. And even though the MOT test is not exclusive, the Breyer/Scalia concurrence said that it would be unlikely that anything that failed the MOT test would be patentable subject matter.

    I believe the section you are quoting from Kennedy’s opinion regarding “information age” (section II B 2) was not joined by Scalia. It is not the opinion of the court.

    In contrast, the MOT test was endorsed by all nine justices. Even Stevens concurrence emphasize that it was a critical test.

    Information processing per se does not pass the MOT test. Period!

  51. 247

    6,

    What an electromagnetic signal also is not, is not a denial of what it is.

    Or do you think that an electromagnetic signal is not a phenomena of nature? If such is not a phenomena of nature, that is must be a creation of man. Here’s a hint: a “manufacture” is a creation of man. Are you saying that man cannot manufacture transitory propagating signals? Anyone with a basic understanding of physics and human history know that man has long understood how to manufacture transitory propagating signals. Do not merely accept such a shallow view of Nuijten. One must do more than merely read a decision. Push your understanding one layre of abstraction deeper and ask “Why is a transitory, propagating signal like Nuijten’s not a member of the four categories?” Let me know what you think the answer is to this deeper question.

    Be careful here to avoid the “transitory” claptrap (even all of the wonderful inventions you listed on this thread are all “transitory”).

  52. 246

    David Stein said,

    “Again, I only need to cite Diamond v. Diehr to you. The holding in that case that the “mere recitation” of a computer to perform a process that could be performed by a human mind, but with less precision and resulting in an inferior product, converted an otherwise ineligible process into an eligible process.”

    That is not a fair statement of Diehr. Here is a direct quote,

    “We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by 101.”

    Earlier in the opinion the Supreme Court said this,
    “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. ”

    And this,
    “”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.” 409 U.S., at 70 .
    Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the 101 categories of possibly patentable subject matter. That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents’ claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.”

    Clearly then, the distinction between this case and Diehr lies in the fact that the Diehr process passed the MOT, while the process claimed here did not.

  53. 243

    Ned,

    Your heathen ways simply omit the critical item that Benson itself was abbrogated – by Diehr and confirmed in Bilski

    !!! Bilski 14 !!!

    This panel decision will not stand. It clearly violates the law of the Supreme Court. It is a renegade decision that is tantamount to p1ssing on the Supreme Court by ignoring Diehr.

    The definition of what a new machine is clear. Such was clearly stated and such clear statements cannot be overturned by innuendo. No court in its right mind would allow such perversity.

    !!! Bilski 14 !!!

    Someone give a copy of this to Dyk.

  54. 242

    Dyk, Supreme Court? Perhaps. But it does seem very consistent with Bilski and Benson. It is inconsistent with Alappat, but is Alappat really good law? See my separate post on this question.

  55. 241

    This does raise an interesting point in that the test seems incomplete.

    More than merely “seems” – it is incomplete. So says the Supreme Court. See Bilski.

  56. 240

    What does Alappat really stand for? The CCPA held in Benson that a programmed computer was a new machine without requiring a demonstration of a new result. That case was overturned by the Supreme Court in Gottschalk v. Benson.

    Alappat had dicta that suggested that a programmed computer was a new machine, but it also held that the programmed computer in that case produced a “useful, concrete and tangible result.”

    The Bilski Federal Circuit case “abrogated” all prior cases involving the use of “useful, concrete intangible result” as a patentability test. It did not specifically state that Alappat was abrogated.

    If Alappat remains good law, what does it stand for?

  57. 239

    The present case represents a return to the stone age.”

    Fixed.

    Judge Rich simply saw reality and a cabal of those with a mindest to stifle that reality. The “normalcy” you seek to reestablish is the arcane world of Flash of Genius, Only the Kings can Play. Patents were meant for all.

    Look at the Commission Report that the anti-patent people rely on: “this would make our job too difficult” Are you kidding me? The patent office is not there for an easy job. All truly fundamental waves of innovation would be defeated by this type of thinking.

  58. 237

    This does raise an interesting point in that the test seems incomplete. It does seem to suggest, does it not, that if the subject matter claimed the not pass the MOT test, it should not be patent eligible subject matter even if the process claimed can only be performed on a machine.

  59. 235

    Judicial Activism, read my post reciting the history of 101 jurisprudence in connection with computer software. The activists here, are not the Supreme Court, but rather the CCPA, particulary Judge Rich. It was the CCPA and not the Supreme Court that overturned long settled case law in order to hold that computer software was patentable subject matter when claimed either as a programmed computer or as a process.

    Judge Rich was behind both Alappat and State Street Bank. It was Judge Rich, more than any other judge, who was the “judicial activist.”

    The present case represents a return to “normalcy.” The only reason, I believe, that conservative jurisprudence has returned to the Federal Circuit is that Judge Rich is no longer on that court.

  60. 232

    >> This practice of invalidating thousands of patents, years after issuance, …[is] not a good way to direct an economy.

    Many parties are not being honest when they petition you, Congress, or when they petition the courts. You don’t know who is being honest, and, like the courts, you are not experts. What do you expect?

    If you want a tip from yet another party: information itself should not be patentable, especially when it merely meets the ankle-high bar: non-obvious to a PHOSITA. We are a nation of competitors and an open society. Anyone who actually writes software knows it is just information (instructions given to a “robot” of sorts). Monopolize information many can and will derive independently, and you have a wonderful recipe for stifling the US economy and progress in the relevant arts.

    You can help us by making it clear that “digital” (sometimes know as “abstract”) information and any other “zero-cost” process or method cannot be patentable, by allowing independent invention to be a cheap and effective defense, by allowing small-scale commercialization to be fair use, and by raising the inventiveness bar.

  61. 231

    There is value to those who reveal this information and who work to discover it. There is also a huge amount of competition because no one needs 1 billion USD to undertake this process and manufacture. A monopoly here makes no sense if the goal is to promote the progress. This is true even for very sophisticated information.

    Separately, so many patents are broad and obvious to many who practice because the law allows it to be so; “non-obvious” to a person having “ordinary” skill in the art is a ridiculously low bar sure to create patents that would hand-cuff many above average creators (never mind the geniuses or even the average folk who persist with what they find to be “non-obvious”). Software, not being limited to million and billion dollar laboratories and plants, should have made this clear by now to unbelievers of the bell curve.

  62. 230

    Obviously this may be an exercise in Finger pounding … But to the Munroe Two. I asked you for help for years. Then all of a sudden you realize after some legal help that all your cr@p about letting it go, and Sally just forget about it. Even after you clearly see Mail Fraud! A Post Mmn no less! Now, I do exist for more than maid service. And that I do have Brains, and that I am an almost Patentee.
    So maybe after all this I only have Copyrights, and a Trademark that may or may not go. And of course a Design Patent APPLICATION because 5,560,312 does not exist because they wanted it. And Claim #1 being the only one that really works in the second Application. And obviously legally it can’t be a Patent yet because it is labeled as a CIP of one that does not exist.
    And how can anyone look at the Case on Sept,25, 1996 and print the first that STILL does not legally exist baffles the mind, only then to add a number to the second one Number 15 I might add to circle around the horn again.
    And think about this? It will baffle the mind. If #15 is an Embroidered label, a label I never went with. Then the label can be hand done, thereby leaving the software in the dust.
    And to Michael R. Thomas, I see they are having a very hard time channeling you SUN! There were times when you were lucid. I guess your EGO at times showed through. Were you also connected with Mr.Evans?
    Shooting Fish in a barrel you say? I think it will be as easy as 1,2,3,4,5,6,7,8,9,10,11,12,13,14, and15.
    Or better yet 10,12,14,18,20,110,112,114, and 121.
    Why would anyone pretend to be someone else while trying to bury their own Mother alive?

  63. 228

    Have you ever read Nuijten? I’m guessing not.

    “A transitory, propagating signal like Nuijten’s is not a “process, machine, manufacture, or composition of matter.” Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.”

    link to uspto.gov

  64. 227

    [electromagnetic signals] are not judicially excepted

    electromagnetic signals are phenomena of nature – isn’t that the basis of In re Nuijten?

  65. 224

    Why are we still even talking about Beauregard claims? If you claim a machine readable medium, what possible patentable difference can it make what you have saved to that medium? Can I get a patent on a book containing a string of characters defining a plot with elements A through R provided the plot is “novel” and “non-obvious”? How about claims directed to a cook book containing novel and non-obvious steps for preparing food? Does the fact that I claim something made of paper and glue and ink get me past 101?

    Seriously, does it?

  66. 223

    For starters, how about 112?

    For anyone actually interested in reading the case, the claims passed 101, 102, 103 and 112 – essentially twice (these were claims that passed reexam).

    The burden of passing – as Malcolm is so found of conflating – 112 was met and accepted by the Office (twice), the applicant and the defendant (who did not raise that issue).

    Why does it matter to know which section of the law pertains?

    Oh, I don’t know, perhaps because we may at least pretend to be lawyers.

  67. 222

    They just held certain types of computer-implemented methods and their corresponding Beauregard claims ineligible under 101.

    Actually this statement and the title of this thread are both in error.

    It was because the method claim exceeded being a “software claim” (thread title) and was not at all a computer-implemented method (Malcolm’s comment) that the first claim was held to be not a patent eligible method. The second claim merely flowed from this first conclusion.

  68. 221

    Ned IBM was too clever, in my opinion, in creating B-claims; and the PTO too “accommodating” of IBM to capitulate as it did when the matter was already pending before the Fed. Cir. The legal situation that we find ourselves in at this point in time is uncertain. We only have the Commissioner to blame for that.

    I’d like to subscribe to your newsletter.

  69. 220

    “And I love it that you think I am incompetent in any areas of technology or law that I ask your opinion. It is really part of your charm. ”

    I know right?

    “I think you neatly avoided the question because of the otherwise statutory nature of electromagnetic signals.”

    You are correct.

  70. 219

    After reading the ruling, I think this is an excellent ruling for CS inventions. They’re telling applicants what they will consider valid and rejecting an overly broad patent that is tenuously tied to a computer related invention.

    This is also an excellent ruling for patent attorneys with a CS degree. Applicants will need someone that understands the intricacies of a computer program instead of someone with no understanding of CS patents. Unfortunately, the patent attorneys without a CS degree tend to slap together CS applications without an understanding of the underlying data structures and manipulation of them. They then add a flowchart or two and state it will work on a computer system. It’s ridiculous that the PTO allows them.

    If someone who understood computer science wrote the application, I suspect it wouldn’t have been rejected. There must have been some intricacies of how the application compares the IP address or gathers the IP addresses from the Internet.

    Also, why wasn’t there a step of displaying included in one of the Independent Claims. For example, something along the lines of displaying the comparison to a user on a display device. The applicant could at least make the argument that data had been transformed.

    Regardless, this ruling is a step in the right direction.

  71. 217

    David, the patentability of CRM claims is beyond the scope of Cybersource. But it is my view that no amount of jiggering the description of the program will change the simple fact that the program functionality claimed has nothing to do with any functional relationship of the program to the CRM. This lack of correspondence of function potentially and fatally invokes not only the PMD, but it also may invoke 112.

    A cart bearing an engine to an airplane has no functional relationship to the engine other than a conveyance function. Describing the engine functionality in the airplane in more detail or less is irrelevant to a description of the functionality of the engine to the cart.

    Allowing Beauregard claims essentially undermines 35 USC 271(c) by turning what should be contributory infringement into direct infringement. But that was the whole point of Beauregard claims in the first place. Congress required proof of several elements beyond those required of 271(a) to prove 271(c) infringement. One of these, is knowledge of the patent.

    IBM was too clever, in my opinion, in creating B-claims; and the PTO too “accommodating” of IBM to capitulate as it did when the matter was already pending before the Fed. Cir. The legal situation that we find ourselves in at this point in time is uncertain. We only have the Commissioner to blame for that.

    This said, if the court were to “finesse” the situation by requiring proof of all 271(c) elements to prove infringement of B-claims, I think that would solve all our problems.

  72. 216

    I has a question for you guys who are big on the constitution. I’m curious, would, in your opinion, granting a claim to a CRM with instructions on it not make the government guilty of having made a law abridging the freedom of the press?

    In effect are we not making little mini-censors on what people can publish?

    I mean after all, the good Chief Justice Hughes defined the press as, “every sort of publication which affords a vehicle of information and opinion.” Would that not implicate a CRM?

  73. 215

    I concluded the user could detect the settings in the review phase. Which is fine for obviating the method, but how would that fly for the CRM which said a device was doing it? I pulled in In re Venner and said replacing a mental activity with a computer is obvious.

    You concluded that or you found that? Because, to be sure, you need to find that not conclude it. Not to even mention your jump from “would” to “could”.

    “It would be obvious for a user to detect the settings because the settings of any device are important for controlling how the device behaves. Cite: instructions for Johnny’s First Electric Truck, circa 1962.”

    It’s really that simple folks. Why does the USPTO struggles with this stuff? It’s pathetic.

  74. 214

    Thanks 6.

    And I love it that you think I am incompetent in any areas of technology or law that I ask your opinion.  It is really part of your charm.  

    However, you might also consider the possibility that I actually value your opinion on things in general, and would like your views.

    In this particular case of course, I am trying to understand where you draw the line on "wholly preempt."  I think you neatly avoided the question because of the otherwise statutory nature of electromagnetic signals.

  75. 213

    Hey simple, if the Abacus is a new machine, and it is useful, it is patentable per se, and the claim does not have to claim the use.

    If the Abacus is an old machine, theoretically it cannot be claimed per se even if it is used in a new process.  This is one of the points that was made, and made forcefully by Judge Archer in his dissent in Alappat.  He pointed out that the claims at issue there only produced data, data that was useful, but not actually used.  This is a problem in claiming old machines for new uses.  One cannot actually claim the new use because adding a process limitation to an apparatus claim renders it indefinite.

    I hope this answers your question.  It doesn't, please let me know.

  76. 212

    Judith Dyk’s actual conclusion was that Beauregard claims should be examined for 101 purposes as if they were method claims. This directly contradicts Beauregard.

    Is that what you meant? Okay. But it’s not like the Federal Circuit needed to give a crxp one way or the other how the USPTO treated B-claims.

    The fact is that the USPTO has been treating Beauregard claims as if they were method claims for all purposes (*except* 101) for years. That was very convenient for software applicants, wasn’t it? It made no sense, but it was very convenient. And as a result the USPTO turned into a sxxxhole filled with gxrbxge software applications. Method of using a computer to identify a bird, anyone? That was actually granted.

    Outputting things, half-toning, calculating, it’s all possible. Highly unlikely, of course

    Humans calculate and output information every day. As for “half-toning,” humans were doing that by hand long before computers ever did it (and continue to do so to this very day) so there’s nothing “unlikely” about it. Of course, that’s the kind of the fact that software applicants can’t stand to acknowledge and which the USPTO seems incapable of teaching their examination corp.

  77. 211

    “I did a 101 on the Method but not the CRM.
    103 on both the method and CRM.”

    Well, look on the bright side, we can understand that you’re up to 3/4 competent! So far as I understand from these attorneys around here them’s good numbers for an examiner.

    “I concluded the user could detect the settings in the review phase. ”

    You concluded that or you found that? Because, to be sure, you need to find that not conclude it. Not to even mention your jump from “would” to “could”.

    “I pulled in In re Venner and said replacing a mental activity with a computer is obvious.”

    So now a CRM is a computer?

    I’m afraid I spoke too soon about the competency thing above.

    “That’s the route that Dyk should have went, IMO. ”

    An incompetent route? Idk brosky, I don’t think he should do that. Indeed, he may have done it anyway.

    Look on the bright side, you could concievably recall that action from your primary before you send it out since you posted here and doctor it up proper before it goes out.

    “Cite a human-being as 102b anticipatory, saying they are capable of performing the functionality of the method. ”

    Now the capability of performing some functionality anticipates a method? Sir, please, quit the board before you hurt yourself and give us an even worse name than my antics do.

  78. 210

    I just sent out a Final on a case with identical circumstances.

    Method claim:
    1. Storing some settings for an email.
    2. Detecting the settings were overriden.
    3. Storing the overridden settings.

    The CRM claim explicitly recited the steps being performed by a computing device processor.

    I did a 101 on the Method but not the CRM.
    103 on both the method and CRM.

    The 103 was interesting, because the art I had taught storing settings, overriding settings, and then presenting a review screen to the user prior to transmitting. I concluded the user could detect the settings in the review phase. Which is fine for obviating the method, but how would that fly for the CRM which said a device was doing it? I pulled in In re Venner and said replacing a mental activity with a computer is obvious.

    That’s the route that Dyk should have went, IMO. Cite a human-being as 102b anticipatory, saying they are capable of performing the functionality of the method. Then 103’d the CRM by pulling in In Re Venner saying automating mental tasks is obvious.

  79. 209

    I can perform any process a computer can, using pencil and paper. It might be slow going, but there is nothing a computer can do that a human with enough time cannot duplicate. Outputting things, half-toning, calculating, it’s all possible. Highly unlikely, of course, but then so is mapping IP-addresses onto a map. I would be very interested in figuring out how a human would, without a computer, have a “computer readable medium,” I guess by etching using pencil and paper, onto magnetic tape? Dyk’s actual conclusion was that Beauregard claims should be examined for 101 purposes as if they were method claims. This directly contradicts Beauregard. It’s been a while, so in case you don’t remember the relevant quote of Beauregard was:

    The Commissioner now states “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. Sec. 101 and must be examined under 35 U.S.C. Secs. 102 and 103.”

    This is what was remanded to the Board. Clearly this has been overturned by Dyk’s opinion that Beauregard claims should be examined as method claims, for the purposes of 101.

  80. 208

    You still haven’t shown me where the law says that considering 101 issues after other issues have been considered is verboten. In fact, you proved to me that, like other threshold issues, the opposite is true. 101 issues can be considered after other issues have been considered and, indeed, the 101 issues must be considered at that time.

    Last time I’ll try to educate you, because this has grown tiresome:

    You keep insisting that 101 is not a “threshold inquiry” because it cannot be revisited if new evidence arises. I have no idea why you fixate on this issue: show me any issue that cannot be “addressed whenever it arises.” Your insistence on this incorrect and meaningless definition of “threshold inquiry” evidences your failure to understand this term.

    The term “threshold inquiry” means a test that is applied in the absence of other tests and considerations. Threshold inquiries are often used preliminarily because they don’t require an assessment of the other issues: they can be decided early, and in isolation, as an easy way to rule a case into or out of play.

    For example: Fourth Amendment cases primarily involve a messy, complicated question of whether a search conducted by a government was proper. However, apart from that big, messy issue is a separate but important question: Did the accused activities actually constitute a “search?” If so, then the big, messy issues can be evaluated in detail; if not, then there is no need to even consider them.

    Why is this relevant? Because you habitually conflate 101 issues with 102/103/112 issues in your theory of patent law. The distinctions to you are hazy and unimportant, and you commingle these topics at will.

    For example, just from today’s thread:

    “No, the principles underlying the requirements for subject matter eligibility, obviousness, and the written description requirement are identical to some extent.”

    “101? 102? 103? 112? Does it matter? Why?”

    “The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related yet legally distinct from each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.”

    “You ignore the ineligible process when comparing to the prior art. It’s really more like a 102 at that point because everyone knows the discs (or whatever) are old in the art. Essentially the “exception” to the printed matter doctrine become obliterated, which is the correct result.”

    “Depends on whehter you claimed the structure in a way that distinguishes it from the prior art, versus the mere recitation of old structure followed by some hand-waving about the “new function” it performs or the “new result” it achieves, particularly where those results or functions can be carried out in your head. Nothing surprising here. Been saying it for years. These must claims fall under 101 or 102/103 or 112. Take your pick.

    Again, your view of patent law conflicts with the plain statement of the Supreme Court, the CAFC, and the USPTO: 101 is a threshold inquiry. It is not even “closely related.” It is an utterly separate question, based on separate concerns, criteria, and case law, from 102/103 issues.

    Admitting your mistake, acknowledging this distinction, and abandoning your “they’re all the same thing” line of reasoning would be a good starting point for correcting your understanding of patent law.

  81. 207

    He’s great at making an interesting subject boring.

    Maybe he’s a high school teacher.

  82. 206

    I definitely agree with using the word “instructions” in Beauregard claims whenever possible.

  83. 205

    I guess we’ll be including the processor and storage medium in the body of the claim now. Ever so much more efficient, and informative for readers, right?

    That’s good practice, anyway. I’ve always regarded Beauregard claims that don’t really refer to how the medium is used by a computer – e.g., “a computer-readable medium comprising instructions that by ” – as really pushing the boundaries of the printed matter and/or M-O-T test. These practices of skirting around the actual use of the computer (e.g., by just changing the claim from “method” to “computerized method”) were the motivation for the CAFC and SCOTUS to pick up the Bilski issue.

    So I consider it good claim-drafting practice to recite that not only does the CRM include computer-readable instructions, but that the instructions achieve the desired results when executed on a processor of a computer. This adds practical and specific utility without giving up any claim scope. (How can “instructions” encoded on a “computer-readable medium” achieve a desired result without being executed by a processor? And… is this really an area of claim scope that we should be exploring?)

  84. 204

    Am I the only one that finds it irritating that this court overturns In re Beauregard without ever acknowledging that they are overturning settled law?

    They didn’t “overturn Bearegard claims”. They just held certain types of computer-implemented methods and their corresponding Beauregard claims ineligible under 101.

    I guess we’ll be including the processor and storage medium in the body of the claim now.

    I doubt that will work, for the same reasons that putting those terms in the preamble doesn’t work to turn a mental process into eligible subject matter. You will still be reciting mental processes carried out a computer, not matter how many times you use the word “computer”.

  85. 203

    Ah, yes – you’re referring to the Slashdot crowd: programmers who … infer the content and scope of a patent based on its title and abstract (without reading any of the claims).

    There’s nothing in your typical software claim except generalized recitations of functions to be performed by the computer, David, so there’s nothing unreasonable about this.

    “software is math,”

    If a programmer thinks that, the programmer probably has a point. I don’t hear painters going around saying “painting is math” or biochemists going around saying “engineering a cell is math.”

    who haven’t followed the history of this issue

    The history of this issue is not readily comprehensible to 95% of patent attorneys and judges. Seems like you’re just being a jxrk now.

    have never heard of Bilski

    LOL.

    I, too, deal with a great number of people who “program computers for a living,” but who are quite enthusiastic about the ability to patent their software inventions.

    Oh, I don’t doubt that, David. That’s quite clear.

  86. 202

    Am I the only one that finds it irritating that this court overturns In re Beauregard without ever acknowledging that they are overturning settled law?

    I guess we’ll be including the processor and storage medium in the body of the claim now. Ever so much more efficient, and informative for readers, right? Elevating form over substance once again…

  87. 201

    It’s safe to say that the claim in Research Corp. could easily be invalidated based on 6’s reasoning, which appears to correct.

  88. 200

    David after admitting that you do not know the source of a key point of law

    You still haven’t shown me where the law says that considering 101 issues after other issues have been considered is verboten. In fact, you proved to me that, like other threshold issues, the opposite is true. 101 issues can be considered after other issues have been considered and, indeed, the 101 issues must be considered at that time.

  89. 199

    My opinions are shared by a great many people, David, inlcuding people who program computers for a living.

    Ah, yes – you’re referring to the Slashdot crowd: programmers who fall back endlessly on talking points like “software is math,” but who haven’t followed the history of this issue, have never heard of Bilski, and who infer the content and scope of a patent based on its title and abstract (without reading any of the claims).

    Yes, that’s your crowd, alright.

    You might consider sending your posts there, where they can join an uninformed but agreeable hive mind, and will not be critically evaluated by those who have studied and practice in the field of patent law.

    Incidentally, I, too, deal with a great number of people who “program computers for a living,” but who are quite enthusiastic about the ability to patent their software inventions. However, you won’t find many of them on Slashdot – they’re busy writing the software that everyone actually has installed on their computers and uses every day.

  90. 197

    Google and other companies have made a fortune off of finding ways to process information

    And George Clooney and Brad Pitt made a fortune acting in movies.

    Patents are not the answer for everything.

    I guarantee you that if the PTO stopped issuing software patents ten years ago you’d never be able to detect the difference in terms of the technology available to you, except perhaps it might be better and cheaper.

  91. 196

    “I trust their lawyers”

    Your first mistake.

    ” — they do their job, I do mine.”

    It looks like they didn’t do their job if your claim just went up in smoke. But, I suppose in your subjective opinion they still did do their job. Keep on handing them money then.

    To be sure, finding a good lawlyer is not necessarily particularly ez.

    “There seems to be this idea that all “software patents” are of the form “do X, this time on the internet”, and that is surely not true as a general rule.”

    Ok…

    “I am told, by a former colleague who shall remain nameless, that at a previous job, he obtained “a silly patent” on a physical device, that was the physical analog of “do X, this time on the internet”. The problem is not unique to software.”

    The “physical analog”?

  92. 195

    “Right. Just like ‘only in patent law’ can such a claim be deemed to describe a new composition of matter and distinguish that composition from prior art compositions on the basis of its structure, as required by 112, rather on the basis of how another machine behaves when it ‘reads’ the instructions printed on the medium.”

    Try reading 112, it talks about claims that distinguish (i.e., distinctly claim) the invention from the prior art. There is no limit to how that is done. The form (i.e., the structure) follows the function (i.e., how the machine behaves). Although you don’t understand it, those skilled in the art do. The physical structure of a Microsoft Office computer readable medium (e.g., a DVD) is identical to the physical structure of another DVD on which Microsoft Office is stored. However, that DVD is physically different than a DVD having stored thereon Quicken.

  93. 194

    This opinion suggests bad faith on the part of the judges.

    What computer-readable medium does not involve a collection of atoms? Anyone having passes a general high school science course would view a collection of atoms clearly qualifies as a “composition of matter” as set forth in 35 USC 101.

    All the judges on this panel having presumably passed a general high school science course, one could argue that this opinion constitutes a high crime and misdemeanor against science. 😉

  94. 193

    :shrug: I don’t engage MM with any hope of persuading him. It’s like skeet shooting – an exercise in picking apart poor arguments with sharper efficiency. And it’s a good training area because the supply of targets is free and unbounded. 😉

    Of course, it gets tiresome after a while, which is why I only engage him every six months or so. When I’m not in a playful mood, I don’t bother.

  95. 191

    What I do know is that the court appears to place a burden on the Patentee to “demonstrate that [an apparatus] claim [] is ‘truly drawn to a specific’ computer readable medium, rather than to [an] underlying method”. I have no idea where this burden comes from.

    For starters, how about 112?

    If not 101, all of these B-claims should be found invalid, per se, under 103 (in view of prior art “readable media” that is structurally indistinguishable based on the claim) or 112 (failing to clearly, i.e., structurally, distinguish the new media composition from the prior art media).

    I wish the court would just acknowledge that the holding likely stems from a belief that the method is obvious when performed by a human being…

    But there are a zillion non-obvious mental processes out there. Are those patent eligible just because you stick some verbiage about a “computer-readable media” in front of them? Seems like a farce to me and a lot of other people, including people who write software for a living.

  96. 190

    “you cannot let it go.”

    Davie — just let MM go his own way. In addition to 6, he is the blog troll — has been for years. Debating him is a waste of time.

  97. 189

    “How about some case law then? [blah, blah, blah]”

    Read the case law. It is about method claims that don’t recite steps — not appropriate here because steps are recited.

  98. 188

    There is really no difference between Ben Franklin tinkering with his stove in the 18th century, Morse tinkering with the telegraph in the 19th century, Widler tinkering with circuits in the 20th century, and a multitude of software developers tinkering with their keyboards in the 21st century.

    That’s wrong. For starters, nobody needs to “tinker” with anything to secure an incredible broad industry dominating software claim. All you need to do is sit on your txxxlet and guess what actual manufacturers and service providers are going to want to offer to consumers in the future. The only keyboard you need to “tinker with” is the keyboard used to contact your patent attorney.

    That’s a big difference. And then your patent will be examined by a USPTO that is utterly incapable of handling the amount of made-up-in-ten-seconds gxrbxge being slung at it on a daily basis. Also a big difference.

  99. 187

    David Your definition of “threshold test” is meaningless, Malcolm.

    No, what’s “meaningless”, David, is the statement that 101 is “only a threshold issue.”

    My original point.

    Thank you.

  100. 186

    What you need to accept, JCD, is that the abstract idea, and thus the mental processes exception subcategory under abstract ideas, was already judicially excepted.

  101. 185

    What I would have rather seen, is Beauregard claims interpreted with 112 6th, and invalidated under 112, 2nd for not providing a specific algorithm. That would have been a more appropriate way to reject these claims under non-art grounds, in my opinion.

    I agree that it would have been “appropriate” — perhaps even “more appropriate” — to invalid under 112, but not for the reasons you give. In fact, all Beauregard claims should be found invalid under 112.

    Of course, you’d see just as much gnashing of teeth in that case if/when that happens, as you do now. The people who love software claims have never cared about any of the patent statutes. That’s why they never learned how to write claims. That’s why they never learned to cite prior art. That’s why they appeal everything. It’s just a big game for them, basically a game of enriching themselves at the expense of everyone else. That’s why the same people are always advocating for measures which weaken the ability of the USPTO to examine patents.

  102. 184

    But still the claims were patentable — why?

    *yawn*

    Wake me up when an invention remotely as interesting as the telephone was (when it was invented) is found non-eligible under 101.

  103. 183

    They meant that the 101 issue can be addressed whenever the 101 issue arises.

    Your definition of “threshold test” is meaningless, Malcolm. Show me an issue that does not meet your description of “an issue that can be addressed whenever it arises.”

    Does it seem odd to you that the Supreme Court, CAFC, and PTO all made a point of stating that “101 is a threshold test” if it means, as you suggest, that “it is an issue that can be addressed whenever it arises?”

    So even after admitting that you do not know the source of a key point of law (which is stated point-blank in the two recent and leading decisions in this area of law), and even after giving an incorrect and meaningless definition of it, you cannot let it go.

  104. 182

    “It appeared that only one machine could cause the telephone signals.”

    You’re telling me that only one machine could cause telephone signals?

    I don’t have to read an article to tell you that what you just stated is complete bull sht. In my house alone we had several different machines producing telephone signals as I was growing up. And all of those machines were possibilities at the time of the telephone cases.

    No. 2 telephone signals are not judicially excepted subject matter. Note in Nuijten they did not say that signals are judicially excepted subject matter. They are simply not a product etc.

    Btw, that also means they’re not a “product” of man. And no telephone signal ever transformed a wire into a new state or thing, save to burn the wire out when things go wrong and it overheats.

    Even so, signals in general and telephone signals are not judicially excepted subject matter so the preemption doctrine would not apply.

    And finally I respect judge Rich only a smidgen more than I respect Newman on this subject. They’re so patent protectionist biased that nothing they say can be taken at face value. It’s like conversing with the eskimo, you may as well look at the source of what they’re saying rather than listening to them explain it in terms that you’ll have to cut through to get to the truth of what was said. So I’m not reading his decision. Well I might if I get really bored. But probably not.

    Also Ned, since I’m quite sure you’re technically incompetent/ignorant on the subject of signals you should note that telephone signals are nothing special in the realm of signals. They have a certain form, decided by the company(s) using them, and that’s it. There is nothing magical that makes a telephone signal different from any other, it is all a matter of the industry deciding on a standard. Which, iirc, the different companies used different signals back way back in the day.

    You may investigate further yourself if you’re that interested.

    link to ieeexplore.ieee.org

    See especially “the telephone was ONE such system”.

  105. 181

    Treat the abacus as a new machine and apply the law from the instant case to this new machine

    The law from the instant case is irrelevant for determining whether a new machine, structurally distinguished from prior art machines, is patent eligible.

  106. 180

    The court asserts that claim 3 is invalid under 101 because it fails the machine or transformation test and can be “performed … by a human using a pen and paper”, and then sidesteps the fact that claim 2 neither fails the machine or transformation test nor can be “performed … by a human using a pen and paper” by asserting that “it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information” (apparently an Applicant can be his own lexicographer, but he cannot define his own invention).

    How does the court manage this? By suggesting the existence of a “capable of performance by the human mind” exception to the Alappat rule. Specifically, the court acknowledges that “as a general matter, programming a general purpose computer to perform an algorithm ‘creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software,'” but says that it has “never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule”. I have no idea how to even respond to this. Is the standard an ordinary mind? Does this exception swallow the machine prong of the machine or transformation test in a large majority of cases? I have no idea, and, I suspect, neither does the court.

    What I do know is that the court appears to place a burden on the Patentee to “demonstrate that [an apparatus] claim [] is ‘truly drawn to a specific’ computer readable medium, rather than to [an] underlying method”. I have no idea where this burden comes from. Moreover, I have no idea why programming a computer to do something that a human mind can do would be any different than programming a computer to do something that a human mind cannot do. Ironically, one of the holy grails of computing, creating a Turing machine, involves programming a computer to do something that (almost) every human being can do – convince another person that they are human. The human mind is a wondrous thing. Currently, it can do many things that we can only dream of being able to program a machine to do. If someone figures out how to make a machine do some of these things, are they to be barred from obtaining a patent simply because the human mind can already do it?

    In the opinion, the court utilizes reasoning which seems to lead inescapably to the conclusion that, in an information age in which Google and other companies have made a fortune off of finding ways to process information, innovative methods of electronic information/data processing simply are not patentable.

    That is, the court asserts that “[t]he mere manipulation or reorganization of data, however, does not satisfy the transformation prong”, and further asserts that “to impart patent eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine ‘must impose meaningful limits on the claim’s scope.'” Combined with the court’s suggestion that programming a computer to peform functions that can be performed entirely in the human mind is insufficient to transform a general purpose computer to a special purpose computer, I am unsure how to escape the conclusion that the court believes that innovative methods of electronic information processing are not patentable.

    I cannot see how this black and white treatment can be reconciled with the Supreme Court’s Bilski opinion, in which they opined that “[a]ny suggestion in [Supreme Court] case law that the Patent
    Act’s terms deviate from their ordinary meaning has only been an explanation for the exceptions for laws of nature, physical phenomena, and abstract ideas. … This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statute’s purpose and design.” Further, the Supreme Court noted that “there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age”, and further noted that “[i]n the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain”.

    At the end of the day, I wish the court would just acknowledge that the holding likely stems from a belief that the method is obvious when performed by a human being, and that simply programming a computer to do it doesn’t make it any less obvious.

  107. 179

    Stein: By contrast, you have developed a philosophy of the patentability of software that directly contradicts Diamond v. Diehr. And when faced with this contradiction, you dismiss it as “weakly reasoned and poorly written.”

    But your beloved courts who are so “careful to pay homage” to Diehr don’t seem to be behaving in a manner consistent with the Diehrbots values.

    This type of behavior is why people do not respect your opinions.

    My opinions are shared by a great many people, David, inlcuding people who program computers for a living. I hope you aren’t confusing the cowardly goons who switch their usernames here every week with “people”. That would be unfortunate.

  108. 178

    The plain fact is that conflation is bad.

    That’s nice. I never said that “conflation is good.” Keep wrestling with the strawman. Meanwhile, your beloved claims are being invalidated by the courts, AS PREDICTED, and you still can’t understand why.

  109. 177

    these tests are legally distinct

    Sure they are. They are also closely related, however. Do not forget this fact. You will end up sorry that you did.

  110. 176

    Nice dodge, David. You stand corrected.

    That’s what the Supreme Court, CAFC, and USPTO mean by the phrase “threshold test.”

    Right, they meant that the 101 issue can be addressed whenever the 101 issue arises. If, when considering the relationship of the claimed subject matter to the prior art, it becomes clear that there is a 101 issue, then the 101 issue can be raised.

    You do not understand the meaning of the term “threshold test.”

    Wrong. You’re comments about “standing” show why you are wrong and I am correct, commonly misunderstood Supreme Court dicta notwithstanding.

  111. 175

    I have my name on 45 patents for software and/or mathematical processes and I wouldn’t be sad if they were all invalidated.

    Software shouldn’t be patentable because the government doesn’t need them to be patentable.

    A patent is an incentive for inventors to publicly disclose their secrets. But no one is keeping software secret. Nearly every good algorithm out there is available in an open source library. New algorithms are showcased in industry conventions and shows. So, why does the government need to offer an incentive for disclosure? It doesn’t, and it shouldn’t. It’s just bad business to pay for something that’s free.

  112. 174

    Ned,

    I apologize for my simple mind, but I do not know if you actually answered my question here.

    The premise is not to be based on the abacus as an old machine. Treat the abacus as a new machine and apply the law from the instant case to this new machine (there is no X and X’).

    If I understand your second paragraph (I do not want to put words in your mouth… but), you are saying the abacus is non statutory because any use of the abacus is non statutory (all uses can be performed entirely in the human mind).

  113. 173

    I’m not sure I follow you. Employer was willing to push the patent through the process, therefore one assumes that in their judgement, the patent would stand. I trust their lawyers — they do their job, I do mine.

    There seems to be this idea that all “software patents” are of the form “do X, this time on the internet”, and that is surely not true as a general rule.

    I am told, by a former colleague who shall remain nameless, that at a previous job, he obtained “a silly patent” on a physical device, that was the physical analog of “do X, this time on the internet”. The problem is not unique to software.

  114. 172

    Nothing as weakly reasoned and poorly written as Diamond v. Diehr could ever be considered “final.” The Supreme Court jurisprudence on the eligibility of computer-implemented methods is a mess.

    Despite this messiness, virtually every 101 case – including Bilski at the CAFC and Supreme Court levels (except, notably, for this terrible opinion by Judge Dyk) – is careful to pay homage to the continued truth and correctness of the holding and outcome of Diamond v. Diehr.

    By contrast, you have developed a philosophy of the patentability of software that directly contradicts Diamond v. Diehr. And when faced with this contradiction, you dismiss it as “weakly reasoned and poorly written.”

    This type of behavior is why people do not respect your opinions.

  115. 171

    6, regarding wholly preempt, check the discussion of the Telephone Cases by Judge Rich in Tarzny-Hornock link to bulk.resource.org

    It appeared that only one machine could cause the telephone signals. A claim to the machine would therefor whole preempt the use of the telephone signals, just a a claim to producing the telephone signals would wholly preempt the use of the machine. But still the claims were patentable — why?

    The telephone signals were a product of man, a transformation of an article (wire) into a new state or thing.

    Do you agree?

  116. 170

    How about some case law then?

    Ex parte Erlich, 3 USPQ2d 1011 (BPAI 1986). Or in the alternative, Clinical Products v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).

    The court is complaining about the grass being too long when the roof is on fire. They should have followed legal precedent and killed claims 2 and 3 over their fatal flaws rather than argue about what the spec says.

  117. 169

    You do not understand the meaning of the term “threshold test.” I will explain.

    You wrote:

    The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related to each other.

    You are wrong: 101 is not “closely related” to these other issues; it is not but one factor considered together with the others in the big question of patentability. It is a “threshold test” that is decided apart from these other issues. It has its own distinct meaning, test, and inquiry. It is resolved in a wholly different and isolated manner from 102, 103, and 112 issues. That is: it is not related at all to 102, 103, or 112.

    That’s what the Supreme Court, CAFC, and USPTO mean by the phrase “threshold test.”

    Incidentally, that’s also what basics tried to point out to you by noting that these tests are legally distinct (to which you replied that basics doesn’t understand patent law).

  118. 168

    Simple,

    An old machine (or process for that matter) that is useful for process X, is not patentable as a new machine (or process) simply for use for process X’ where X’ is either obvious or non statutory. That is a matter of anticipation if X’ is unclaimed, or obviousness if X’ is claimed and otherwise statutory, or 101 if X’ is non statutory.

    When X’ is non statutory, the Supreme Court views the claim to be a claim on non statutory X’ with the machine claim elements being “insignificant.”

    I think the mode of analysis is not all that relevant so long as we keep the substance of what is being claimed in view.

  119. 166

    It may have escaped your notice, but the computer wasn’t the interesting machine-or-transformation in Diehr.

    Yes, Diamond v. Diehr involved computerized control of a boiler curing rubber.

    What has clearly escaped your notice is that this wasn’t the Supreme Court’s answer to why this patent needed to be allowed.

    The PTO (Diamond) argued that this patent shouldn’t be allowed because the process replaced the mental process of a human (who could compute the Arrhenius equation by hand or mind) with a computer. The Supreme Court did not reply: “But the process controls is tied to a physical article, and thus is allowable.”

    Rather, the Court wrote:

    “The respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. … Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.

    The latter point is not that Diehr’s method is patentable because it transforms an article, but because the claimed process operates in a fundamentally different way, with demonstrably different and better results, than the human-only method. The use of a computer in this context is not insignificant or irrelevant: it is the reason why the claimed process works better than the human-mind method.

    I do not argue that any process that may be performed by a human mind can pass section 101 scrutiny by throwing a computer at it. Rather, a process that is significantly improved by the use of a computer instead of a human mind should pass 101. (Of course, this is just a “threshold test” – the invention must still survive analysis under 102, 103, 112, etc.)

  120. 165

    Just, I did limit my remarks, after further consideration, to a process that failed the MOT.

    Cypbersource requires

    1) Failing the MOT; and

    2) Able to be entirely performed by a human.

    Regarding the latter point, I think the court would permit the human to use conventional tools, the computer being among them. Otherwise, how would one gather data about internet activity of any kind?

  121. 164

    “How do you square the ruling in Cybersource with that in Research Corp.? ”

    Well idk how MM does it, but I do it the same way I did it on the day that decision came out. The CAFC was ill informed of the scope of the claim and about the contents of the claim. As the good judge in this case points out, the CAFC still believes you need a computer to carry out the process in that case. You don’t. Unless the picture you’re filtering is a huge picture. You can otherwise do it (quite easily) by hand. Which, I note, an expert would have told them had they bothered to consult one. Or, they could have simply read the inventor’s subsequently published NPL publications on their “inventionlol” and found it out themselves.

  122. 163

    However, I should note a small problem with Ned’s understanding. It is not that the preemption doctrine is part and parcel of the MOT, it is that MOT is part and parcel of the preemption. Small difference, but an important one. Indeed, it was the entire point of the Bilski majority having droned on and on for awhile.

  123. 162

    Also, standing may be a “threshold” issue. But the underlying principles relate to “damages” which is not a “threshold” issue. Thus, “standing” and “damages” are conceptually related.

  124. 161

    If the application passes 101, then the question is settled and set aside

    This assumes that additional relevant information is not presented which raises a 101 issue.

    Once resolved, the question is set aside, and is irrelevant to the substance of the examination

    This assumes that additional relevant information is not presented which raises a 101 issue.

    Questions of standing to sue are resolved as a “threshold test”: if a party has standing to sue, a suit may proceed

    This assumes that additional relevant information is not presented which raises a standing issue.

    Get it now?

  125. 160

    “In this view, “wholly preempts” is actually part and parcel of the MOT test, a test of the whether claim truly is directed to a particular machine.

    I have no disagreement.

    I must take a bow to IANAE as it appears he has taught Ned the unteachable.

    So long as Ned doesn’t backslide, as he is prone to do sadly, I will consider IANAE a master teacher on this subject as he has taught an nigh unteachable student a nigh unteachable subject.

  126. 159

    The takeaway message from Diehr is that the use of a computer perform some steps of some methods constitutes a different invention, with a demonstrably better result than a human may achieve alone;

    It may have escaped your notice, but the computer wasn’t the interesting machine-or-transformation in Diehr.

    and the fact that the computer is simply performing math does not categorically exclude the invention from patentability under 101.

    No, that doesn’t categorically exclude a claim under 101. Nobody said it did. But the computer being better at math than a human doesn’t categorically save the claim under 101 either.

    It would be a pretty silly test for patent eligibility, wouldn’t it? You dig up one autistic savant who can integrate the Arrhenius equation in real time while the rubber is being heated, and thereby invalidate Diehr’s claim under 101 because the result is no longer demonstrably better. That can’t possibly be the law. And it’s not.

  127. 158

    “If it wholly preempts, your machine isn’t particular enough.”

    You can try to explain this to Ned all day and he still will not understand. Or he will stick his fingers in his ears like some folks around here and say “policy, policy, policy” until the cows come home.

    What he needs to understand is that MOT is just an attempt to apply preemption in a way that is subject to being flawed. If preemption catches the claim and it passed MOT, you most likely fed up MOT. Most likely you fed it up by considering the machine particular or considering something that isn’t truly transformative to be transformative. In any event, either you fed it up, or you discovered one of the flawed parts of MOT. They do exist. Preemption analysis, while unweildy and a difficult analysis, is flawless so long as it is properly executed. The beauty of preemption is that any errors in the execution of the analysis are easily pointed out. MOT has no easy way to verify if it is being fed up or not.

    “I don’t think he would have been denied his patent on that basis.”

    Trust me, he would. If you don’t understand why, then you don’t understand the fundamental reasoning behind the preemption doctrine in the first place. And I can tell that you have a pretty good grasp on it IANAE, so go from the fundamentals and work your way through the issue. In that instance would granting such a claim effectively grant a claim to Arrhenius? Yes or no? Do the supremes take issue with granting claims to math? Yes or no? The answer is yes to both btw.

    To be sure, they may make an exception to the judicial exceptions to justify that patent in Diehr, but I doubt they would. If Arrhenius was wholly preempt by the claim, he loses the claim. Period. To hold otherwise is to, in practical terms, give him a claim to Arrhenius, which is explicitly what their excepted subject matter is, math. Indeed, they explicitly note this in Diehr itself and note that such is not the case in that case.

    “I respectfully disagree.”

    And we all know the USSC disagrees with you Ned. It’s as simple as that brosky.

  128. 157

    In this view, "wholly preempts" is actually part and parcel of the MOT test, a test of the whether claim truly is directed to a particular machine.

    I have no disagreement.

  129. 156

    I see what you’re saying. I appreciate the response, and the brevity made me think about it. I do however disagree, simply because of the specificity of what was being done in the claims of Benson, compared to the claim we are seeing in Cybersource. Benson was very specifically claiming computer-based operations and a “recalictrant bit register” (or whatever), while the claims in Cybersource do appear more broadly written.

    Ultimatly, MM, what I see in your writings, is that you ignore the “or any new and useful improvement thereof” portion of 101 in your disapproval of computer-implemented inventions. And when I see you say “101? 112? 102? 103? Whatever” I have to disapprove. Justice should be fair, not at the whims of “whatever”.

    What I would have rather seen, is Beauregard claims interpreted with 112 6th, and invalidated under 112, 2nd for not providing a specific algorithm. That would have been a more appropriate way to reject these claims under non-art grounds, in my opinion.

  130. 155

    I really hope you don’t sincerely believe that “computers are fast, and fast is good” is the take-away from Diehr.

    No. The takeaway message from Diehr is that the use of a computer perform some steps of some methods constitutes a different invention, with a demonstrably better result than a human may achieve alone; and the fact that the computer is simply performing math does not categorically exclude the invention from patentability under 101.

    My argument is that here, as in Diamond v. Diehr, the use of a computer – explicitly, affirmatively, and clearly recited – causes a much better result than the disclaimed implementation using only a human mind. That alone should resolve the 101 question.

  131. 154

    Stein: Malcolm, most of your philosophy of the patent eligibility of software was explicitly considered and rejected with finality in Diamond v. Diehr.

    Nothing as weakly reasoned and poorly written as Diamond v. Diehr could ever be considered “final.” The Supreme Court jurisprudence on the eligibility of computer-implemented methods is a mess. They’ll fix it, as surely as the Federal Circuit will ignore it.

    The holding in that case that the “mere recitation” of a computer to perform a process that could be performed by a human mind, but with less precision and resulting in an inferior product, converted an otherwise ineligible process into an eligible process.

    Did the Court in Bilski suggest that Bilski’s claim could have been rendered patent eligible by recitation of a computer?

    None of this addresses the problems with Beauregard claims, of course, which are legion.

  132. 153

    Ned He seems to believe that even if something passes the MOT that it still can be unpatentable if it wholly preempts….”

    First off, the term is “patent ineligible”, Ned.

    Second, 6 is correct but I would argue not for the reason he provides. The “wholly pre-empt” test is just another term for “abstraction”. But a claim that passes MOT can still be ineligible if the claim effectively prevents an otherwise non-infringing practitioner of the transforming steps from carrying out a mental step recited in the claim.

    This is the Prometheus problem. These cases (the instant case and Prometheus) are very different from each other, in certain respects, but the underlying principles are very similar.

  133. 152

    The point of this case is that, in light of this fact, the recitation of the use of a computer (or readable media) is no longer going to convert ineligible data processing steps into eligible data processing steps.

    Again, I only need to cite Diamond v. Diehr to you. The holding in that case that the “mere recitation” of a computer to perform a process that could be performed by a human mind, but with less precision and resulting in an inferior product, converted an otherwise ineligible process into an eligible process.

    Malcolm, most of your philosophy of the patent eligibility of software was explicitly considered and rejected with finality in Diamond v. Diehr. Diamond v. Diehr is still good law: the Supreme Court referenced it with affirmatory language several times in Bilski v. Kappos – and particularly cited it to overrule the CAFC’s proposed exclusive use of the M-O-T test in In re Bilski.

  134. 151

    do you know where I found this “notion” about 101 from which I ought to be “disabused?”

    No. Show me where you found this notion that 101 is only a threshold inquiry and can never be considered one or more patentability issues have been considered.

    Ummm… okay:

    Whether a claim is drawn to patent-eligible subject matter under s 101 is a threshold inquiry. (In re Bilski and Warsaw, 545 F.3d 943 (CAFC) 2008)

    The s 101 eligibility inquiry is only a threshold test. (Bilski v. Kappos, 561 U.S. ___ (2010)) <-- (note to Malcolm: This means "Supreme Court") As the Court made clear in Bilski, the s 101 patent-eligibility inquiry is only a threshold test. (USPTO’s Interim Guidance for Determining Subject Matter Eligibility, Federal Register Vol. 75, No. 143)

    And what is a “threshold inquiry?” It is a preliminary question that is considered and answered first, in the abstract, to determine whether a general matter qualifies. Once resolved, the question is set aside, and is irrelevant to the substance of the examination. Hence the term: the question is to be answered at the “threshold” of the inquiry, because it can be answered easily and preliminarily as a categorical threshing mechanism, and then set aside.

    For example:

    * Class-action law suits involve a “threshold test” to determine whether the class is fully formed and defined: if so, the action can proceed; if not, it is denied.

    * Questions of standing to sue are resolved as a “threshold test”: if a party has standing to sue, a suit may proceed; if not, the action is dismissed.

    * Fourth Amendent cases, involving an allegedly illegal search by a government, first deal with the “threshold question” of whether the government’s activities qualified as a “search” under the Fourth Amendement.

    Thus – section 101 is not, as you propose, one of many tightly interconnected tests that are all mashed together into this big ball of patent-law folk wisdom. Rather, section 101 patentability issues are resolved as a threshold test: they are decided preliminarily, in isolation of other issues. If the application passes 101, then the question is settled and set aside, and the more substantive questions (102, 103, etc.) can be considered. If not, then the application is dismissed for failing the 101 “threshold test.” It’s just that simple.

  135. 150

    I am paying attention, Malcolm, and to use my dad’s expression, those arguments “don’t hold soap” when you look at how the courts (as well as the USPTO) apply 35 USC 101. How do you square the ruling in Cybersource with that in Research Corp.? Admittedly, Dyk tried to camouflague the logical disconnect in Cybersource, but, to use my late uncle’s expression, his reasoning for distinguishing Research Corp “is a bunch of malarkey.” The bottom line is that 35 USC 101 is currently being applied by the courts (as well as the USPTO) in a manner that is subjective, arbitrary, illogical, and inconsistent. As others have also said on this thread, the judges simply decide which way they want to go (patent-inelgible/patent eligible), and then cobble together a line of reasoning to support their subjective, arbitrary, (often) illogical, and (frequently) inconsistent decisions.

  136. 148

    Ned: “Now, you will get one major argument from 6 on this latter point. He seems to believe that even if something passes the MOT that it still can be unpatentable if it wholly preempts….”

    If it wholly preempts, your machine isn’t particular enough. It’s the same reason why “generic thing that runs software” (i.e., “computer”) isn’t a sufficiently particular machine for a software claim.

    If it somehow turned out that the Arrhenius equation only had practical application in Diehr’s apparatus, I don’t think he would have been denied his patent on that basis.

  137. 147

    Stein: the speed and accuracy of this human-executed system leaves a bit to be desired, when compared with a near-instantaneous, worldwide look performed by an automated process… specifically, the computer recited in claim 2.

    You write as if you believe that nobody ever imagined using a computer to speed up information processing before this case.

    In fact, nearly everyone on earth and certainly the judges on this panel have known for many many many years that computers speed up information processing. Processing information is what computers do. The point of this case is that, in light of this fact, the recitation of the use of a computer (or readable media) is no longer going to convert ineligible data processing steps into eligible data processing steps.

    Would you rather have the ineligible steps ignored for 103 purposes?

    Take your pick.

    What difference does it make?

  138. 146

    David, I recognize the Diehr problem.  That is why I think the new test must have two parts;

    1) the claim must fail the MOT test; and

    2) it must be capable of being entirely performed by a human being.

    Diehr passed the MOT, that is why it is largely patentable regardless of point 2.

    Now, you will get one major argument from 6 on this latter point.  He seems to believe that even if something passes the MOT that it still can be unpatentable if it wholly preempts….

    I respectfully disagree.

    I am now looking at
    the basis of the "function of a machine" doctrine.  Stevens seems to believe that the overruling of that doctrine lead to the "overruled" CCPA holding Benson that a programmed computer was per se patentable as a new machine.  I will post my views on that issue in a short while.

  139. 145

    raised by this case

    Different case, brother. I’ve been waiting for this one for years. Wasn’t it 6 who first pointed out Patel’s first district court decision (pre-Bilski)? Or maybe it was me. I don’t remember anymore.

  140. 144

    Stein: Only in patent law can one read a sentence like: “A computer-readable medium encoding instructions readable by a computer, that, when executed by a processor of the computer, cause the computer to perform the following steps,” and conclude that it is equivalent in form to a different claim… which is unallowable because it can be performed entirely by a human mind and does not involve a computer.

    Right. Just like “only in patent law” can such a claim be deemed to describe a new composition of matter and distinguish that composition from prior art compositions on the basis of its structure, as required by 112, rather on the basis of how another machine behaves when it “reads” the instructions printed on the medium.

    That’s what makes patent law interesting.

    there is no argument about … non-obviousness, the sufficiency of the written description

    Those arguments surely exist and they are relevant, even if they aren’t expressly discussed in the opinion.

    This patent should never have been granted. Also true of many patents granted yesterday. Now they’re gone.

    Thank you, CAFC.

  141. 143

    > That’s like saying that all molecular biology inventions are obvious per se because any claimed molecules are capable of processing anything that man can snip and put together.

    About two months ago, I dealt with an office action where the Examiner rejected an entire set of 15 dependent claims based on a reference to two sentences in a reference that read, essentially: Computers are used to store and process data.

    To my surprise, I am discovering today that this guy was on the cutting edge of patent jurisprudence. I’m thinking of nominating him for the next vacant spot that opens up in the CAFC.

  142. 141

    Is Malcolm on vacation?

    166 comments on a double topic of Malcolm’s favorite (conflation of law and written matter doctrine) and a bare 2 comments from Malcolm…
    Reply Aug 07, 2011 at 11:14 AM

    Malcolm Mooney said…
    Is Malcolm on vacation?

    No, just not interested in reiterating my position on the 101 issues raised by this case for the ten thousandth time. Suffice it to say…

    LULZ – Suffice to say nothing. No shortage of spewing since you returned from vacation.

    Anyone want to out their Prrck coworker that was on vacation awhile back and has been gloating insufferably the last few days?

  143. 140

    I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.

    Here is an outline of Judge Dyk’s logic in this holding:

    * Section 101 sets up four categories for patentability: machine, composition, article of manufacture, and process.

    * In order to be patentable, a claimed process must be “tied to a particular machine” or must “transform an article.”

    * Claim 3 is not “tied to a particular machine.” There is no claim element requiring an individual to use a computer. The internet may be the *source* of the data, but this is only a data-gathering step.

    * The claimed method can be performed entirely by a human (citing Gottschalk and Flook). Bilksi affirmed this “mental steps doctrine,” as did Comiskey, particularly where “a process is claimed standing alone and united to another category of statutory subject matter.”

    * Patent claims cannot be issued that “depend for their operation on human intelligence alone.”

    * Each claimed step, read literally, can be performed by a human without using a computer.

    * Conclusion: “Methods which can be performed entirely in the human mind are unpatentable.”

    This is entirely a question about the form of the claim – the selection and structure of the literal elements of the claim. The opinion examines the choice of statutory class, and then laboriously considers each element of the claim in turn, concluding that each element can be performed entirely by a human mind; and thus rules that the claim, as drafted, fails the “mental steps” doctrine.

    There is no problem with, or even discussion of, the substance of the claim. It is specific (though broad); it is clear; it is useful; there is no argument about novelty, non-obviousness, the sufficiency of the written description, the completeness of the disclosure to instruct a practitioner to use it without undue experimentation. There is no argument that a computer cannot perform the method – only that the literal interpretation of the claim is not limited in form to the use of a computer.

    This line of argument begs to add computer limitations that unquestionably “tie the claim to a particular machine.” And the applicant appeared to do that in claim 2 (even perhaps a bit overboard by post-Bilski standards!)

    In response, Judge Dyk simply ignored those elements as a question of “form.” The argument is: Claim 3 is unallowable, claim 2 only differs from claim 3 as a matter of form; the folk wisdom of patent law (according to Judge Dyk’s mind and/or Farmer’s Almanac) sets forth the unbreakable tenet that a merely formal change to an unpatentable claim cannot save it; thus, claim 2i is also unallowable.

    Only in patent law can one read a sentence like: “A computer-readable medium encoding instructions readable by a computer, that, when executed by a processor of the computer, cause the computer to perform the following steps,” and conclude that it is equivalent in form to a different claim… which is unallowable because it can be performed entirely by a human mind and does not involve a computer.

    ===

    One last point: Resoundingly absent from Judge Dyk’s list of citations of Gottschalk, Flook, Chakrabarty, Abele, and even Maucorps (Maucorps? really?) is a discussion of the holding in Diamond v. Diehr. Judge Dyk cites Diamond v. Diehr exactly once, in a footnote on page 20 (of a 21-page opinion!), and for exactly one principle: its upholding of Flook. It does not mention Diamond v. Diehr otherwise, which is odd, since it (a) issued in the same era and (b) is one of the two Supreme Court holdings on this area in the last 30 years.

    This delicate side-stepping is because the very principle that Dyk espouses to reject claim 3 is the very principle that Diamond v. Diehr stands for: that a claimed method that uses a computer cannot be rejected on the rationale that the claim could alternatively be performed by a human mind, because the use of a computer leads to a different and arguably better result.

    The logic of Diamond v. Diehr is exactly applicable to claim 2 in this case. A human may be able to identify an IP address from which an order was received, and may manually consult any other data source (e.g., a printed list of IP addresses previously used in fraudulent credit card orders). (It’s a great mental image, actually – I’m picturing a Dick Tracy-type figure with a fedora and trench coat, stalking through the rain to the police department; asking the lieutenant for the book of phony IP addresses; being handed a hard copy resembling a phone book, and rifling through it to find the entry; and exclaiming A-HA!!! while circling the entry with a number two pencil. It’s great. Someone should make that type of tech-noir suspense thriller.)

    And yet, the speed and accuracy of this human-executed system leaves a bit to be desired, when compared with a near-instantaneous, worldwide look performed by an automated process… specifically, the computer recited in claim 2. To put it another way: The use of a computer, as recited in claim 2, leads to a different, and much better, solution than the purely human-mind-based implementation that is excluded from the claim.

    Just like Diamond v. Diehr.

  144. 139

    Yo, PP: If it’s so easy, why not just explain to everyone exactly why my post at 11:40 “makes no sense”?

    Thanks.

  145. 138

    Malcolm, your handwaiving was wrong the first time. So no thank you to learning how to be wrong.

    As to structure, A New Light put that cannard to rest with the music CD that can be exactly structurally claimed, yet fail to be patent eligible.

    The point of the question is not repatentable – the question was explicitly patenteligible.

    Ned, if you do not mind, try reading the question again and (with your own words, [slightly modified]) think of “the problem with [the abacus] is that everything could be performed [entirely] by [the] human [mind] and the claim as a whole did nothing within the MOT.

    There really is a logical point to this (even if Malcolm refuses to see it).

  146. 137

    If don’t think the phrase “particular machine” has magical properties.

    In the context of information-processing (including information transmission) the correct definition of a “particular machine” is a novel machine, structurally defined to distinguish it from the prior art on the basis of its structure, not on the basis of its allegedly “new” functionality.

  147. 136

    No one who has any shred of credibility advocates that the courts should “take their pick.”

    1. A method of eating ice cream, comprising licking an ice cream cone and thinking about a movie that hasn’t been released yet.

    101? 102? 103? 112?

    Does it matter? Why?

  148. 135

    More to the point, each of these questions are answered, and belong to, a different and distinct legal section with its own distinct complete reasoning.

    The plain fact is that conflation is bad. All that you have done with your list of examples is prove your point false.

    No one who has any shred of credibility advocates that the courts should “take their pick.”

  149. 134

    Fish in a barrel time.

    Malcolm, the only reason why “Nobody knows what you’re talking about, dxpxhxt.” is because the post is pointing out that your post at 11:40 AM makes absolutely no sense.

    The one that lacks the ability to articulate is you.

    Read the chain S L O W L Y and see if you can catch where you went all inarticulate.

  150. 133

    Thanks.
    Normally the latter, of course. [I was not suggesting that such a highly subjective invalidity decision with such an “abstract” [pun intended] guideline is a good thing.]
    But I have to admit that it now looks like, in some lawsuits, on some patent claims, with some judges, that a S.J. on 101 could be a lot cheaper solution to a troll suit than the usual payoff just to avoid millions in full blown discovery and litigation costs?

  151. 132

    “Why is a claim to a product by process interpreted as a method for infringement purposes?”

    Case cite please (just curious).

    Are you kidding me? You just lost the remaining tiny bit of credibility you had.

  152. 130

    do you know where I found this “notion” about 101 from which I ought to be “disabused?”

    No. Show me where you found this notion that 101 is only a threshold inquiry and can never be considered one or more patentability issues have been considered.

  153. 129

    MM: “Nope. Same problem, just repeated.”

    Okay, fair enough. But what if each step were amended to recite “performed by the particular machine that performs this step”?

  154. 128

    if claim 3 was amended to recite “performed by a processor” after each step, then the claim would be patentable?

    Nope. Same problem, just repeated.

  155. 126

    Right, because it’s well established patent law that adding something to a statutory claim can make it non-statutory… OH wait, it’s not.

  156. 125

    Yeah David. Now, maybe, if you claim storing the program on the middle portion of the medium, after you cut off both sides of the medium, then MM would have to agree it’s not gxxxbxxxgxxx, since, ya know, MM’s nonCOMPUTER BRAIN thinks making a big thing into a small thing is sooooo patentable! Lolz

    Because, again, ya know, claiming making a big thing into a small thing, that promotes the progress of the useful art. The only sad thing is, for me as an inventor, MM stands as prior art for my claims for a small portion of a brain remaining after I cut the other 99 percent of the brain away . . .

  157. 124

    Most computer processes send/receive/transform data. All of these involve physically transformative processes.

    LOL. Did you come here via some time portal from five years ago?

  158. 123

    Wow, you’re really persuading me. It’s like a creationist citing the Book of Genesis to argue that humans and dinosaurs co-existed.

  159. 122

    > I would disabuse yourself of this notion as soon as possible. 101 issues can present themselves at any time, depending on what is being claimed how those inventions relate to the prior art. The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related to each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.

    Just a quick question – do you know where I found this “notion” about 101 from which I ought to be “disabused?”

  160. 121

    “not physically transformative processes”

    Most computer processes send/receive/transform data. All of these involve physically transformative processes.

  161. 120

    Malcolm’s comment that the opposite is true

    Nobody knows what you’re talking about, dxpxhxt. That’s because you can’t articulate your way out of a wet paper bag.

    F O O L

  162. 119

    “The telegraph would be a quintessential example of a particular machine.”

    Actually, claim 4 of U.S. Patent No. 1647 recites “process of breaking and connecting by mechanism currents of electricity or galvanism in any circuit of metallic conductors.” Seems to read on a computer, as well — and as we all know, a computer is not a particular machine. Right?? So let’s nix this patent as well.

  163. 118

    But we deal with this brand of obviousness under 101, not under 103.

    For the moment, anyway.

    The Euros do it under 103 according to Max.

    Also reasonable. It doesn’t really matter. You can chop down a tree that needs chopping using an axe or a chainsaw. It ends up on the ground either way.

  164. 117

    Note that a claim to a method of transmitting a particular kind of information (e.g., information about the ten DVDs that your friend just bought) would not be patent eligible.

    Adding: or it’s obvious because we ignore the information being sent when determining obviousness.

    Take your pick.

  165. 116

    Why is printed matter ignored when considering obviousness?

    Printed matter = non-functional descriptive material
    Computer program = functional descriptive material

    “Why are you not permitted to claim a new composition merely by referring to a new result that is capable of achieving?”

    Because the “result” does not change the underlying composition (ergo, it is anticipated).

    “Why is a claim to a product by process interpreted as a method for infringement purposes?”

    Case cite please (just curious). As is well known to anybody familar with materials, the structural makeup of an article can depend upon the process used to make it. A nail made by forging is physically different than a nail made by sintering. Thus, a claim to a “nail formed by sintering” is not anticipated by the disclosure of a forged nail.

    Real simple …

  166. 115

    Morse’s method of transmitting information using a telegraph

    The telegraph would be a quintessential example of a particular machine.

    Note that a claim to a method of transmitting a particular kind of information (e.g., information about the ten DVDs that your friend just bought) would not be patent eligible.

    Are you starting to get it? This isn’t very difficult. It’s also very reasonable.

  167. 114

    “I don’t think this is a fair summary of the holding. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.”

    Obviously Ned was referring to mental and/or pencil/paper processes, not physically transformative processes (which are eligible on their own terms … unless they effectively preclude a mental process).

  168. 113

    A new patent abacus would never be patent eligible unless it was described structurally.

    Crucial point. Also the second time this has been pointed out to you. Try to learn.

  169. 112

    The abacus is not repatentable depending on the problem it is used to solve. If the abacus is used in a process that otherwise produces a new result (MOT) that process is patentable, not the abacus.

    The problem with this patent is that everything could be performed by human and the claim as a whole did nothing within the MOT. The recital or limitation to execution on a computer was then a mere a selection of tools. Kind of obvious. But we deal with this brand of obviousness under 101, not under 103. The Euros do it under 103 according to Max.

  170. 111

    “I would add the caveat that the method also fails (must fail, I believe) the MOT test.”

    So, if claim 3 was amended to recite “performed by a processor” after each step, then the claim would be patentable?

  171. 110

    Because conflation of legal principles and making the whole morass an exercise in subjective judgment brings clarity…?

    No, the principles underlying the requirements for subject matter eligibility, obviousness, and the written description requirement are identical to some extent.

    Put another way: why are new and useful mental processes not eligible for patenting? What are the reasons? Why is printed matter ignored when considering obviousness? What are the reasons? Why are you not permitted to claim a new composition merely by referring to a new result that is capable of achieving? Why is a claim to a product by process interpreted as a method for infringement purposes?

  172. 109

    “I don’t think this is a fair summary of the holding. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.”

    A method of drilling a hole using X, Y, Z drill press.
    A method of digging a hole using a steam shovel.
    A method of heat treating an alloy.

    All can be done with a human alone or (in the third situation) with the use of a natural phenomena (i.e., fire).

    Let’s see, let’s throw these out as well. Morse’s method of transmitting information using a telegraph — well, transmitting information can be performed by a human alone, so let’s throw that one out as well.

    It is so easy to invalidate patents now — just ignore anything in the claims that limits the steps to a machine and then state “the claims can be performed by a human alone.” Pretty simple.

  173. 107

    I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.

    Ned, what is your view then on the abacus? patent eligible? If yes, how is it different then a computer?

  174. 106

    I swear, this blog has some of the stxpxdxst commenters on the Internet. And they all tend to use these xxxhole pseudonyms, too.

    Because Malcolm’s comment that the opposite is true makes sense…. how exactly?

    Oh wait, it doesn’t, but Malcolm thinks others are stuxpxdxst commenters.

    T O O L

  175. 105

    David Stein said, “Put another way: Claim 3 is unpatentable solely because it is not restricted in any way to a machine; and yet, claim 2, explicitly limited to the use of a computer executing instructions that perform the same techniques, is an insubstantial change that cannot remedy the defect of claim 2.”

    I don’t think this is a fair summary of the holding. I think the holding is that if the method can be performed by human, it is abstract regardless that it is expressly limited to performance on a computer.

    I can understand David’s frustration with the opinion given his apparent misunderstanding of its holding.

  176. 104

    8,001,012, issued Aug 16 2011

    20. A non-transitory computer-readable medium having computer-executable instructions stored thereon that, if executed by a user device, cause the user device to perform operations comprising: receiving, by the user device and from a computer for providing tools, a first question in an interactive assessment template, wherein the template includes fields which request standardized data for assessing an opportunity; sending, by the user device and from a first user, a first response to the first question, wherein the first response is part of the standardized data, and wherein the first response indicates that the first user is at least one of an entrepreneur and an inventor; receiving, by the user device and in response to the sending the first response, a second question, wherein the second question is determined by the computer for providing tools, and wherein the second question is based at least partially upon the first response to the first question; sending, by the user device, a second response to the second question, wherein the computer for providing tools associates the second response with the standardized data; and receiving, by the user device, access to an online portal, wherein the online portal comprises a plurality of tools for developing at least one of the opportunity and a product associated with the opportunity.

    [insert txxxlet flushing sound]

    Note that the general recitation of a “computer” within the body of a claim does nothing to mitigate the attempt to claim an abstraction.

  177. 102

    Because 40 years ago people thought pocket calculators were the ultimate function of computers.

    I swear, this blog has some of the stxpxdxst commenters on the Internet. And they all tend to use these xxxhole pseudonyms, too.

  178. 101

    That’s like saying that all molecular biology inventions are obvious per se because any claimed molecules are capable of processing anything that man can snip and put together

    No, it’s not like that at all actually. Molecular biology inventions actually transform things in the world world, as opposed to merely massaging information. And if you knew anything about how molecular biology inventions are invented, drafted and prosecuted and examined, you’d know that they bear zero resemblance to your typical “computer-implemented” method or B-claim.

  179. 100

    Way to put uncertainty into an already uncertain economy. Nice work. We should explore amending Section 101 to add a new category – “executable software”, and thereby take the issue away from them. There is really no difference between Ben Franklin tinkering with his stove in the 18th century, Morse tinkering with the telegraph in the 19th century, Widler tinkering with circuits in the 20th century, and a multitude of software developers tinkering with their keyboards in the 21st century. Call your Congressman today and tell them to consider adding “executable software” to Section 101 before they finish patent reform.

  180. 99

    Well, if, as you said, “There is no such thing as free beer”, then you are asking an inconsequential question. It goes without saying that you cannot patent something that does not exist.

  181. 98

    8,001,025, issued Aug 16 2011

    5. A computer-readable medium containing instructions that cause a service provider facilitating financial transactions over a network to perform a method comprising: receiving a promise-to-pay (IOU) invitation from a first user device, wherein the first user device is associated with a payer; receiving a response to the promise-to-pay invitation from a second user device, wherein the second user device is associated with a payee; scheduling a payment responsive to the invitation and the response by a payment provider processor if the response from the payee is an acceptance of the invitation, wherein the payment is made from an account associated with the first user device to a second user account associated with the second user device; transmitting information about the payer to the payee prior to receiving the response to aid the payee in determining whether to accept or decline the invitation; and executing the payment by the payment provider processor when conditions for payment have been met wherein scheduling the payment comprises scheduling a primary payment amount to be made on the pay-by date and scheduling a secondary payment amount to be made on a secondary pay-by date, wherein the secondary payment amount is less than the primary amount but completely satisfies the IOU and the secondary pay-by date is before the primary pay-by date and wherein the secondary pay-by-date and the secondary payment amount is proposed by the payee and/or the payer prior to completing a financial transaction between the payer and the payee and wherein executing the payment comprises transferring funds from a first payment services funds account associated with the first user device when a sufficient balance is available at any time before or up to the pay-by date or transferring funds from a secondary, third-party funding source associated with the first user device on the pay-by date if the first payment services account has an insufficient balance up to and including the pay-by date.

    BUH-BYE!!!!!

  182. 97

    Of course that molecule is obvious. Look, it has the same atoms, and those atoms are old. Look, those atoms use the same bonding mechanism, and that is not only old, but a phenomena of nature.

    Why don’t you invent a new way of putting all of those old items together. Then you can have a patent.

  183. 96

    Generally speaking sure they could if they were abreast of the times. There were computer geniuses spouting off about how we’d all have home shopping on computers etc. etc. a long time ago.

    See for instance where Mr. Greenspun explains that to you tards.

    link to philip.greenspun.com

  184. 95

    “,i>Claims to allegedly “new” data processing methods carried out by a computer are obvious per se, in view of the fact that computers are capable of data-processing any information.

    obvious per se and capable of processing…

    W

    T

    F

    That’s like saying that all molecular biology inventions are obvious per se because any claimed molecules are capable of processing anything that man can snip and put together.

  185. 93

    I know right? Listening to the oral arguments they were very careful to avoid nixxing all B claims by their argument.

  186. 92

    “When using the term “as a practical matter,” the Dyk admits that it is possible to perform the method of Research Corp in the human mind. ”

    Which is actually false, which any signals guy will tell you. Dyk, and the other judges, PRESUME that you’re looking at a huge picture, 1800xINFINITE pixels apparently. If you’re looking at a 2×2 image the method is very doable by hand, or even in your mind.

    Bottom line is, the people arguing Research Corp didn’t know how to spin the tail properly. Indeed, they didn’t even cite the inventor’s own NPL publication against them.

  187. 91

    He/she will never understand patent law and will always be wondering what is going to happen

    Because conflation of legal principles and making the whole morass an exercise in subjective judgment brings clarity…?

    At least try to make a cogent position Malcolm.

  188. 89

    DLNIM Why is it that software claim (whatever that is) gets special treatment?

    Great question. Software claims have been getting very special treatment from the beginning. The USPTO still examines them as if computers were invented yesterday. With respect to Beauregard claims, the USPTO even chucked 112 out the door … just because.

    Reap the whirlwind.

  189. 88

    I reject everything under 101.

    See – not difficult at all.

    Oh, you mean rejections under how the law is supposed to work….

    T O O L

  190. 87

    “This framework is consistent with Diamond v. Diehr, and seems like an acceptable compromise for many interested parties. ”

    Yeah, it’s unfortunate that the CCPA screwed up and that “compromise” isn’t the lawl.

    This kind of sht is what happens when courts screw up.

    “and who trivialize the developments in computing since the 1960’s.”

    I doubt if anyone trivializes the “developments in computing” they only trivialized the “developments in software authorship”.

  191. 86

    I think the opposite is true

    So… back in 1972, Malcolm thinks that you could see where you would be 40 years into the future…?

  192. 85

    basics is one of the unfortunate folks I was referring to. He/she will never understand patent law and will always be wondering what is going to happen next. He/she will never be able to figure out for himself. Why? Because he/she is a patent birther (thanks Hans! – good one).

  193. 84

    the PTO objected to language like “a *computer-implemented* method,” which provides absolutely no guidance as to *how* the computer is involved in the claimed solution. And the PTO has applied Bilski by instructing its examiners to allow claims that specify *how* a computer is used in a solution to a problem.

    That makes some sense but based on the claims that I’m seeing presented to and issued by the PTO, Applicants are still waving their hands around and reciting extremely generalized steps (“receiving data” “sorting the data”) that simply describe things that all computers do.

    Really the only computer/software claims that should be patentable are inventions that increase the computer’s processing speed. Claims to allegedly “new” data processing methods carried out by a computer are obvious per se, in view of the fact that computers are capable of data-processing any information. That is why we are facing this bottomless, infinite “tech rush” at the PTO.

    There is a reason that methods of data processing without a computer (or without a novel data processor) are deemed patent ineligible. That reasoning should be applied to computer-implemented methods as well. The effect on the economy? Negligible. The effect on the USPTO? Vast improvements all around. That appeal backlog will dry up very quickly.

  194. 83

    The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related yet legally distinct from each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.

    Fixed.

    Do Not Conflate.

  195. 82

    “per standard USPTO policy.”

    USPTO policy? USPTO policy has ZERO relevance. The USPTO is an administrative agency that is forbidden to have substantive law making authority. The USPTO can only follow the law — not make it.

    “This patent should have been killed under 112 and/or 101 for that reason alone.”
    Oh please … had the Examiner rejected the language on that basis, there are likely dozens of ways it could have been rewritten to overcome the rejection and still maintain nearly the same breadth.

  196. 81

    “In both cases, the takeaway message is: When offered a choice to develop and use a ‘variety’ of tests, the deciding body will invariably fall back on the test that involves the greatest amount of subjective judgment (and the least amount of factual support from evidence”

    Nailed it — the decision makers want to do as little as possible to support their pre-determined conclusions. Instead of “I know [pornography] when I see it” kind of test, they use a “I know [an obvious claim] when I see it” or a “I know [unpatentable subject matter] when I see it” type test. It makes articulating their decision so much easier that way.

  197. 80

    Your correct, Paul, that 35 USC 101 does appear to allow “clams to be disposed of much more easily, cheaply, and faster, by a summary judgment,” but also on what can only be characterized as a completely subjective, arbitrary, and illogical basis, not one that is objective, consistent, and logical. So which do you prefer?

    Are you saying that you can’t predict whether a given claim will be rejected under 101? If so, then you should pay more attention to what other commenters here (including me) are saying. For most claims, it’s not difficult at all.

  198. 79

    “Except in connection with a digital computer”??? Oh is that all??? I guess back in 1972, you couldn’t see where we’d be 40 years into the future.

    I think the opposite is true and that is why Benson was correctly decided.

  199. 78

    “I’m not interested in having that patent invalidated just because some judge thinks that it is equivalent to steps that could be performed in someone’s head.”

    Were you interested in not filing it in the first place? Because that’s what it seems like you should have been interested in.

  200. 77

    David Stein: 101 is supposed to be only a threshold inquiry

    I would disabuse yourself of this notion as soon as possible. 101 issues can present themselves at any time, depending on what is being claimed how those inventions relate to the prior art. Let me know if you disagree and I’ll be happy to explain to you why this is the case.

    The larger point is that, at the margins (at least), 101, 102, 103 and 112 are closely related to each other. Pretending that is not the case will cause you to misunderstand patent law, particularly 101.

  201. 76

    I didn’t say that Abstract. There’s plenty of sht that’s patentable. All you gotta do is claim it properly. It isn’t rocket science. All these decisions do is stop you from overreaching out into an abstraction and prevent a very small subclass of things in the universe getting a patent. Indeed, even the patentee here could have had some much more limited invention patented. At least under this court’s reasoning.

    I just want to take a second and cite this video showing you crybabys what some real inventors look like and what their inventions are.

    link to hulu.com

    Now watch that video and see some of the first real inventing a lot of you will probably ever witness.

    The kind of inventing that most examiners think they’ll be examining when they take this job. The worthwhile inventing of today.

    Self healing coating for gas tanks in warzones.
    Materials to make things invisible.
    Materials to make grip enhancers.

    These are all great inventions. And they’re all patentable.

  202. 75

    Your position was articulated by the PTO in Diamond v. Diehr: that if a logical process *could* be performed by a human, the execution of that logic on a computer is not a patentable invention. In a holding that remains the law of the land, the CCPA diagreed – noting that the use of a computer was not only different from the performance of the method by a human, but led to a better result (i.e., more precise control of the rubber-curing furnace than a human operator could achieve).

    Welcome to the computer age. Where doing math faster produces a patentably “better result” when the math relates to something that is currently being heated and where overheating is known to be a bad thing preventable by math.

    I really hope you don’t sincerely believe that “computers are fast, and fast is good” is the take-away from Diehr.

    And the PTO has applied Bilski by instructing its examiners to allow claims that specify *how* a computer is used in a solution to a problem.

    If that’s the case, why on Earth should “use a computer to carry out the steps that solve the problem” get you anywhere with the PTO or the Circuit?

  203. 74

    Shorter David Stein: “Computers are teh awesome and everyone who doesn’t like software patents is anti-computer.”

    Give us a break, David. The problem is gxrbxge patents that do not promote the progress of the useful arts and no other art unit receives and spews out more of the gxrbxge than the software and “computer-implemented” biz method art units at the USPTO. If the USPTO can’t address the problem, then the courts will. If the courts can’t address the problem, then Congress will.

    Take your medicine.

  204. 72

    IANAE A general-purpose computer might be a particular machine if, for example, the software improved the operation of the machine itself, or affected the machine in some more profound way than putting in code and returning the result of the code. Because really, any sufficiently powerful computer can run code and spit out data, and at that point all you’re really claiming is “in any machine capable of performing these steps, performing these steps”. Or worse, “a list of instructions readable by a machine capable of reading the list of instructions”.

    Absolutely correct and reasonable. Welcome to the present, folks.

  205. 71

    6 wonders how one would use 103.

    You ignore the ineligible process when comparing to the prior art. It’s really more like a 102 at that point because everyone knows the discs (or whatever) are old in the art.

    Essentially the “exception” to the printed matter doctrine become obliterated, which is the correct result.

  206. 70

    What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick? By Dyk’s reasoning, the data gathering is insignificant

    Depends on whehter you claimed the structure in a way that distinguishes it from the prior art, versus the mere recitation of old structure followed by some hand-waving about the “new function” it performs or the “new result” it achieves, particularly where those results or functions can be carried out in your head.

    Nothing surprising here. Been saying it for years. These must claims fall under 101 or 102/103 or 112. Take your pick.

  207. 69

    Why is it that software claim (whatever that is) gets special treatment?

    Because only software apparently uses as broad a term as “computer” without qualification to be its “particular machine”, fully intending the term to cover any device that was capable of carrying out the steps in the first place.

    If you claimed a method of going around the Nurburgring in 7 minutes, and when pressed for more particularity you said “oh, wait, a method for doing that in a car”, I’m sure you could expect the same “special” treatment.

    Are you telling me that a DVD including computer code is a method?

    No. The Federal Circuit is telling you it’s a method. I’m telling you it’s not even that. It’s a recipe for performing the method.

  208. 68

    IANAE wrote:

    “It’s pure tautology to claim ‘a method to be performed by an otherwise-deliberately-unspecified machine capable of performing the method’, and the courts are (finally) absolutely right to give short shrift to that sort of nonsense. It truly means nothing more than ‘a method’.”

    “A logical method carried out in any manner” is not logically equivalent to “configuring a computer to perform a set of steps that apply a particular type of logic.”

    Your position was articulated by the PTO in Diamond v. Diehr: that if a logical process *could* be performed by a human, the execution of that logic on a computer is not a patentable invention. In a holding that remains the law of the land, the CCPA diagreed – noting that the use of a computer was not only different from the performance of the method by a human, but led to a better result (i.e., more precise control of the rubber-curing furnace than a human operator could achieve).

    That was back in 1982. I respectfully submit that the capabilities of computers have grown a bit since then, enabling computers to perform a much wider array of loigical tasks than humans in a way that is not only different, but better. (See, e.g., Google’s self-driving car.)

    Moreover, no party in Bilski presented that argument – not even the historically-resistant-to-software-patents PTO. In Bilski, the urgent problem to be sovled in that case – according to both the PTO and the CAFC – was that applicants were filing claims for logical methods that were not limited to *any* embodiment. The claims basically read: “Here’s an idea. You can implement it any way you want – throw a computer at it, or just do it in your head – whatever.” That’s why the PTO objected to language like “a *computer-implemented* method,” which provides absolutely no guidance as to *how* the computer is involved in the claimed solution. And the PTO has applied Bilski by instructing its examiners to allow claims that specify *how* a computer is used in a solution to a problem.

    This framework is consistent with Diamond v. Diehr, and seems like an acceptable compromise for many interested parties. The only consistent opponents are those who cling to the philosophy that “all software is math” – and who appear to view computers as souped-up pocket calculators, and who trivialize the developments in computing since the 1960’s.

  209. 66

    The court again uses a pointy rock to kill a patent when there’s a M16 right next to them. A claim directed to a “use of” something without a positive action is rejected under both 101 and 112 per standard USPTO policy. The “utilizing” without any concrete action recited is automatically an abstract idea that is also indefinite. This patent should have been killed under 112 and/or 101 for that reason alone. Instead we have this huge bloody mess because they wanted to talk about their feelings.

  210. 65

    “Not for the purpose of a software claim.”

    I don’t see that distinction in 35 USC 101? Why is it that software claim (whatever that is) gets special treatment?

    “It truly means nothing more than ‘a method’.”
    Are you telling me that a DVD including computer code is a method? It doesn’t look like a method to me. It looks like a manufacture. Do you see dead people too?

  211. 64

    This decision is not a start at all.

    Instead, it is merely a continuation of the now well-worn tradition of unacceptable so-called “reasoning” by the CAFC in patent cases, which tradition is but one symptom of the patent oblivion achieved by the court.

    This opinion goes well beyond patent oblivion, and reaches into the depths of legal oblivion. It goes to the essential duty of the court, to the basic questions of evidence, to the basic right to have a review of government action, and so on. It is much, much more than a mere patent issue.

    Although, once again, I agree with the disposition in this case.

    Eliminate software patents? Fine, if that is what the law requires. But let’s actually use the law, rather than a judicial flight of fancy.

    The end does not justify the means.

  212. 63

    Now I’m confused… Twenty years of “Free Beer” brings to mind the Golfer. But now you say it’s the Sun. Or was it too much Sun and Golfing together?.

  213. 62

    “I wouldn’t blame the CAFC for this reasoning. It’s the jurisprudence of the Supreme Court, and the fact that the CAFC must follow it.”

    The CAFC didn’t invent the machine-or-transformation test, but it chose to put it on the pedestal of the EXCLUSIVE test of 101 eligibility in Bilski. The Supreme Court disagreed, and gave them the option of developing other tests… which the CAFC has pointedly declined to exercise, referring instead to resolve every 101 complaint using the machine-or-transformation test.

    This is the flip side of the coin from KSR, where the PTO was being forced to show the “teaching, suggestion, or motivation” references in an obviousness decision (which it found extremely distasteful). The CAFC freed the PTO from this obligation, encouraging it to develop “other tests” of obviousness combination. And from that moment on, the only test used by the PTO to combine references is… the examiner’s subjective judgment. 100% – literally, 100% – of the 103 rejections I’ve encountered in OAs since KSR recite a string of references, and then read: “It would have been obvious to one in the art to combine the teachings of Foo with the teachings of Bar and the the teachings of Baz.”

    In both cases, the takeaway message is: When offered a choice to develop and use a “variety” of tests, the deciding body will invariably fall back on the test that involves the greatest amount of subjective judgment (and the least amount of factual support from evidence – which is more painful to locate, and characterize in a defensible manner, than simply stating: “On behalf of the entire body of those of ordinary skill in the art, I conclude that…”

  214. 60

    Benson is cited eight times.

    Diehr is cited twice, in a single footnote and not substantively at all (only in conjunction with Flook).

  215. 59

    So are you saying that modern computers are not particular machines?

    Not for the purpose of a software claim.

    If you’re told that your software claim isn’t tied to a machine, and you say “oh, sorry, I meant computer software”, how does that help exactly? How is that particular?

    It’s pure tautology to claim “a method to be performed by an otherwise-deliberately-unspecified machine capable of performing the method”, and the courts are (finally) absolutely right to give short shrift to that sort of nonsense. It truly means nothing more than “a method”.

    And the Beauregard version means even less, so you should thank the panel for being so charitable as to elevate it even to the status of a series of actual steps.

  216. 58

    “Does not a 101 claim invalidation allows clams to be disposed of much more easily, cheaply, and faster, by a summary judgment, as here, because (as treated here) it does not legally require jury trial resolution of several normally disputed fact issues?”

    Absolutely. And by “easier,” you mean “based solely on the subjective and unsubstantiated judgment of the examiner, without the backing of hard evidence.”

    The reason we have 102 and 103 – and why 101 is supposed to be only a threshold inquiry, not the massive hammer-of-patent-crushiness that it’s become – is because subjective judgment, not backed by hard evidence, is unreliable, inconsistent, unpredictable, and inefficient. In essence, all 101 decisions can reasonably be appealed all the way up to the CAFC (and up to the Supremes), because there is virtually no scenario where it is unreasonable to seek a desired outcome in a particular case when the jurisprudence shifts with the wind.

    The losers are technology practitioners across the board, who cannot expect reasonably drafted applications to be consistently granted, issued patents to be enforced, nor poorly drafted applications of their competitors to be denied or vacated. That’s the severe cost of a system that fails to establish and here to a consistent and predictable framework of adjudication.

  217. 55

    “any sufficiently powerful computer can run code and spit out data.”
    Any modern computer (i.e., what anybody has called a ‘computer’ in the last 50 years) runs code and spits out data. So are you saying that modern computers are not particular machines?

  218. 54

    Benson is at the root of this reasoning, which has been repeated time and time again since 1972.

    Regarding Benson, “The Court expressly noted that the algorithm had “no substantial practical application except in connection with a digital computer.””

    “Except in connection with a digital computer”??? Oh is that all??? I guess back in 1972, you couldn’t see where we’d be 40 years into the future.

    Idiots at the Supreme Court waxing poetic and philosophical. They take it too far. They should never have used 101 as a filter. The subsequent laws are the filters.

    I wouldn’t blame the CAFC for this reasoning. It’s the jurisprudence of the Supreme Court, and the fact that the CAFC must follow it. A statutory fix is the only way to change this.

  219. 51

    Your correct, Paul, that 35 USC 101 does appear to allow “clams to be disposed of much more easily, cheaply, and faster, by a summary judgment,” but also on what can only be characterized as a completely subjective, arbitrary, and illogical basis, not one that is objective, consistent, and logical. So which do you prefer?

  220. 50

    I want examples of what constitutes a particular machine that is also a computer (I assume there is no particular reason why a computer cannot be a particular machine).

    A particular machine is somehow related to the method being performed, and typically will meaningfully limit the claim to a practical application of the invention. A purpose-built machine is one example – Diehr’s apparatus was a particular machine.

    A general-purpose computer might be a particular machine if, for example, the software improved the operation of the machine itself, or affected the machine in some more profound way than putting in code and returning the result of the code. Because really, any sufficiently powerful computer can run code and spit out data, and at that point all you’re really claiming is “in any machine capable of performing these steps, performing these steps”. Or worse, “a list of instructions readable by a machine capable of reading the list of instructions”.

  221. 49

    You cannot lawfully sacrifice the substantive rights of litigants on the altar of judicial economy.

    Using 101 would be fine, if it were done lawfully.

  222. 48

    “Claim was indefinte anyway becuase of step 9c). ‘Utilizing’ as the gerund is far to broad.”

    “Breadth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788 (1970).

  223. 47

    “The fact of the matter is that ‘for use in an unspecified computer’ does not tie a method/article to a particular machine.
    Praytell, what is “a particular machine”? Don’t just tell me a computer is not a particular machine. I want examples of what constitutes a particular machine that is also a computer (I assume there is no particular reason why a computer cannot be a particular machine).

  224. 46

    I’m guessing that he imagines an obviousness rejection, along the lines of this being a specific application of correlating past measurements to past bad outcomes, and using new measurements to avoid new bad outcomes. That is surely stated over-broadly, but to one-skilled-in-the-art (that’s me!), checking the filing date (1997, post-WWW, we were eyeballing IP addresses before that), nope, that’s a “Duh!” patent.

    I do wish that there were some happy medium here; there are surely “pencil-and-paper” calculations performed by computers, where the design of the calculations required all of the same original thinking and mental effort that a physical invention required. This patent doesn’t look like one of them, but that’s hardly a proof of universal non-existence. And so, to dodge this statutory hoo-hah, the claims get written in this incredibly contorted style, that lends ABSOLUTELY NOTHING to the practice of the invention. Patent attorneys can read it, sure, but you guys are rarely the inventors.

    And yeah, I know, silly engineer, making fun of “statutory hoo-hah”. Do please consider the purpose of the patent system. I’ve got my name on several software patents; they were hard. At least one of them was so hard that I cannot keep all the details in my head unless I have the description in front of me (Chase and Lev, 7,346,753). I’m not interested in having that patent invalidated just because some judge thinks that it is equivalent to steps that could be performed in someone’s head.

  225. 45

    “I realise that this may be hard to follow”. Yes, anon, indeed, you’ve put your sharp pencil on it right there. Exactly.

    I appreciate your cheerful advice, on what to do to help me discern what you are on about but, unfortunately, I can nowhere find a glass of free beer to help my brain work better.

  226. 43

    Dyk spends a great deal of verbiage describing how the claims weren’t tied to a machine when it comes to claim 2 and then ignores the limitations in claim 3 that tie the ‘underlying method’ to a machine.

    And that didn’t clue you guys in to the possibility that Beauregard claims are an insufficient tying to a machine?

    If Dyk was looking for a computer, and that’s why he nixed claim 3, he would have jumped at the excuse to save claim 2. That’s not what happened.

    The fact of the matter is that “for use in an unspecified computer” does not tie a method/article to a particular machine. Especially since the patentee tends to want “computer” to be understood as “any machine capable of carrying out the recited steps”. You might as well amend the preamble of claim 3 to “a method performed in the vicinity of a machine, comprising the steps of”.

  227. 42

    Claim was indefinte anyway becuase of step 9c). “Utilizing” as the gerund is far to broad. What they really mean was comparing cc number to list of previously identified etc…
    How did the Examiner let that past?

  228. 41

    As to the frequent question of “why can’t overbroad claims be disposed of on 103 or 112 instead of 101” and the correlary “what’s the difference between patent-eligibility, and patentability” is not there is a very important practical difference? Does not a 101 claim invalidation allows clams to be disposed of much more easily, cheaply, and faster, by a summary judgment, as here, because (as treated here) it does not legally require jury trial resolution of several normally disputed fact issues?

  229. 40

    “To all these supporters, I would direct your attention to a discussion from last night, which you may find interesting, on this following thread.”

    Why would I want to read anything with 6 and MM being the main posters — what a waste of time.

  230. 39

    David:

    You hit the nail on the head. The Dyk spends a great deal of verbiage describing how the claims weren’t tied to a machine when it comes to claim 2 and then ignores the limitations in claim 3 that tie the ‘underlying method’ to a machine.

    As noted above, this is judicial activism at its worst.

  231. 38

    How wonderful–I get to work, turn on the computer, come to Patently-O, and I find that more supporters of the view that the so-called “reasoning” behind this decision sucks, have emerged and voiced their opinions.

    To all these supporters, I would direct your attention to a discussion from last night, which you may find interesting, on this following thread:

    link to patentlyo.com

    What a great way to start the day.

    Appeal, ho!
    Rehearing, ho!

  232. 37

    What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick?

    That depends. Did you recite in your claim the structure of a specific novel device, or did you recite “a person-usable device for carrying out the steps of receiving a sample, measuring a level of a parameter, and displaying a result”? The former is a perfectly good Diehr-style claim, whereas the latter is a perfectly bad Flook-style (or Beauregard-style, if you prefer) claim.

  233. 36

    I just noticed this.

    The lead attorney (on the winning side) in Research Corp. Tech. was J. Michael Jakes of Finnegan, Henderson. The lead attorney (on the losing side) in Cybersource was J. Michael Jakes of Finnegan, Henderson. Wow.

    Frankly, if I was appealing to the Federal Circuit and we drew the Dyk on my panel, I would immediately advise my client to settle unless Newman and Rader were on the other side.

  234. 35

    “Dyk dislikes “exalt[ing] form over substance,” yet this is exactly what happens when claims are written with words (i.e., form). The words matter and thus the form matters.”

    Yeah, that’s a particularly rich claim from Judge Dyk… since it immediately follows NINE PAGES of holding that focus solely on the FORM of claim 3.

    Claim 3 refers to a method of performing a fraud check on a credit card in an internet transaction by determining whether the IP address of the transaction has been involved in other fraudulent activity. In upholding the rejection of this claim, Judge Dyk ponderously reflects (for nine pages!) on the “mental steps” doctrine, expressed more recently as the “machine” wing of the machine-or-transformation test; notes that claim 3 may be entirely performed in a practitioner’s head; and thus isn’t allowable subject matter.

    Note that this rationale for rejecting claim 3 has NOTHING to do with the actual invention: it is about the form of the claim that fails to make even a rudimentary stab at tying the invention to a computer. There is absolutely no discussion of the novelty, utility, or non-obviousness of the techniques – the rejection is based on the overly broad form of the claimed techniques.

    Fair enough, and I agree with Judge Dyk on that point.

    However, the rejection of claim 2, referencing this basis for rejecting claim 3, is madness-inducing.

    Claim 2 recites “A computer readable medium containing program instructions for detecting fraud, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to…” perform the claimed method. The CAFC rejects this claim because it is drawn to the same technique as claim 3, but simply puts a different formal framework around the technique – but because claim 3 is not patentable, adding a different formal framework cannot improve the patentability of claim 2, and is thus rejected.

    Put another way: Claim 3 is unpatentable solely because it is not restricted in any way to a machine; and yet, claim 2, explicitly limited to the use of a computer executing instructions that perform the same techniques, is an insubstantial change that cannot remedy the defect of claim 2.

    In support of this holding, Judge Dyk cites In re Abele, which first rejected a method claim to an improved X-ray evaluation technique, and then rejected an apparatus claim that wrapped each step in computing machinery. Judge Dyk characterizes Abele as looking past the formalistic framework of claimed techniques, and subjecting an apparatus claim to the same substantive patentability standards as a corresponding method claim; so, too, Judge Dyk purports to judge the appellant’s apparatus claim using the same patentability standards as the method claim.

    The obvious difference is that, in Abele, the method claim was rejected purely on substance. The key part of Abele that rejected the method claim reads: “This claim presents no more than the calculation of a number and display of the result, albeit in a particular format. The specification provides no greater meaning to “data in a field” than a matrix of numbers… thus, the algorithm is neither explicitly nor implicitly applied to any certain process.” Thus, the method claim has no substance – it is vague (simply reciting a logical concept without substantial limitations to an implementation, e.g., a specific algorithm) and abstract (simply spitting out an abstract number, without limitation to a specific and meaningful result, use, or scenario) – so the form (i.e., statutory class) in which these insubstantial techniques are packaged is irrelevant.

    By contrast, Judge Dyk’s rejection of the appellant’s method claim asserts nothing about the substance of claim 3, which is entirely non-vague (limited to a specific technique with obvious boundaries) and non-abstract (providing a directly useful result for a specific scenario), but focuses solely on the form of the claim – the failure to tie the claimed techniques to a computer. And in the very next literary breath, Judge Dyk rejects a claim that squarely ties the same techniques to a computer – by dismissing such ties as a purely formal change to claims otherwise found unpatentable.

  235. 34

    One other tidbit, the attorney for the Defendant was from Greenberg Traurig. From a quick search on the USPTO website, it appears that they have a good-sized stable of software clients, including Yahoo. I wonder what those clients are thinking about their law firm today? I would love to see the reaction of the patent prosecution attorneys in Greenberg Traurig to this decision.

  236. 33

    On the other hand, there is such as thing as Free beer as I posted and the use of the phrase “that really is” merely serves as a re-qualifying that free beer aspect by looking at a different picture.

    Akin to localized anything, in comparison to the bigger picture, entropy can go in only one direction (and yet, the localized picture is important – else we would only have warm free beer.

    I realize that this may be hard to follow – have a glass a beer and think about it for awhile…

  237. 32

    This case shines a huge spotlight on the lie of the machine-or-transformation test. The CAFC does not care whether a claim is “tied to a particular machine.” If the CAFC does not want to allow a claim involving a computer, it will look at whether sufficient “ties” are present in the claim. If not, the CAFC will reject it as inadequately “tied to a particular machine”; and if so, the CAFC will ignore the “ties” presented in the claims (criticizing arguments over their presence as “exalting form over substance”), and reject the claims for lack of the overlooked element.

    For this logic, several descriptive phrases come to mind – like “paradox,” and “logically inconsistent,” and “catch-22,” and “having its Bilski cake and eating it, too.”

    The only principle that I can extract from this holding is: “If we entirely ignore the computing elements in a claim, is what’s left purely a ‘mental step?’ If so, it is not allowable under the ‘mental steps’ doctrine.”

    Of course, this logic could apply to method claims in ANY field. In the life sciences, for a method of diagnosing a particular disease based on detecting a particular biomarker (e.g., a particular gene sequence, or the presence of a telltale protein), the question becomes: “If we ignore the actual patient and the actual physical test, might a doctor who is presented this information diagnose a patient with a disease?”

    How about chemistry – e.g., a method of manufacturing a specific chemical? If we disregard the actual chemicals involved, is what’s left of the method simply a set of “mental steps” that a practitioner could appreciate and use in many ways?

    Or electronics – e.g., a method of crunching a particular type of data in realtime by fabricating and using a specific DSP? If we take the DSP out of the claim, could one appreciate, and even mentally use, the concept of the method involved in the solution? Thus, the logic of CyberSource is a categorical rejection of method claims, under the following logic: If we ignore and abstract away the physical elements of a method claim, the remainder of the claim is applicable solely a “mental step,” and thus is unallowable under the “mental steps” doctrine.

    Of course, we may expect this categorical rejection to be applicable only in the field of computers – not to method claims in the more respected mechanical, electrical, and chemical arts.

    So what is the difference? Arguably, it’s the “physicality” of the claimed invention: a method that involves a physical article that the CAFC cannot ignore (without rendering the method non-functional) is allowable. But a method that involves machinery that can be abstracted away (in the “well, sure, you COULD use a computer to perform this step [as SPECIFICALLY RECITED in the body of the claim], but a human mind could also perform that step [if given an unlimited memory and a billion years of thinking time]” sense) can be rejected as “abstract.”

    So I think that cases like this are taking us toward a “physicality” requirement for method patents. That’s dangerous territory, which both the CAFC and SCOTUS have routinely avoided – but Judge Dyk’s logic is aimed squarely in that direction.

  238. 31

    I was also going to write that this decision directly conflicts with Research Corp v. Microsoft. As I was reading the decision, I noted that Dyk makes the following comments:
    Similarly, in Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), we upheld the patentability of a claimed method “for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Id. at 868. Because the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), the method could not, as a practical matter, be performed entirely in a human’s mind.

    The key language is “the method could not, AS A PRACTICAL MATTER, be performed entirely in a human’s mind.” When using the term “as a practical matter,” the Dyk admits that it is possible to perform the method of Research Corp in the human mind. Thus, the fine line (so fine that I’m not sure I can even see it) between the claims of Research Corp and the claims of Cybersource is how practical a method can be performed by the human mind??? That is one heck of a distinction. Are we now going to be fighting (at the USPTO, BPAI, Fed. Cir.) over how “practical” is it to perform the steps of a method in the human mind??? I cannot wait to see how that jurisprudence shakes out.

    Clearly, there is a disagreement in the Federal Circuit over what is patentable subject matter. You have one camp (led by Radar and Newman) in which claims directed to software are patentable. Then you have another camp (led by Dyk and Linn) that would attempt to outlaw software claims altogether (however, they still have to deal with the machine or transformation test and it is too easy to introduce machines into a method claim). I would like to see this case go to the Federal Circuit, en banc, and then to the Supreme Court.

  239. 30

    “But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be per-formed entirely in the human mind falls within the Alappat rule.”

    Otherwise known as the “we are going to have our cake and eat it too” logic.

    Let’s rewrite claim 3 as follows:

    3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
    a) obtaining information, using one or more processors of a computer system, about other transactions that have utilized an Internet address that is identified with the [ ] credit card transaction;
    b) constructing a map of credit card numbers, using the one or more processors of the computer system, based upon the other transactions;
    c) utilizing, using the one or more processors of the computer system, the map of credit card numbers to determine if the credit card transaction is valid.

    Under the machine or transformation test, this would certainly pass muster and be declared statutory subject matter. In that case, how should we treat claim 2, which recites:
    2. A computer readable medium containing program instructions for detecting fraud in a credit card transaction between a consumer and a merchant over the Internet, wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out the steps of:
    a) obtaining credit card information relating to the transactions from the consumer; and
    b) verifying the credit card information based upon values of plurality of parameters, in [snipped]

    Dyk writes “despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.” Thus, since amended claim 3 would be patentable subject matter, and the claimed subject matter cannot “be performed entirely in the human mind,” then original claim 2 would be allowed. Dyk dislikes “exalt[ing] form over substance,” yet this is exactly what happens when claims are written with words (i.e., form). The words matter and thus the form matters.

  240. 29

    In a nutshell, nothing is patentable.

    Break any patent into three steps.
    Prep. Function. Post processing.

    Toss Prep and Post processing out according to the cited cases.

    Function: nothing passes because at whatever level desired, there is only natural phenomena or abstract principles at work.

    Indeed, the “magic microscope” can zoom down to the (judicially active-desired) magnification on any thing created by the hands of man.

  241. 28

    This decision is a good start.

    Now we need a decision that ANY computer program is just a series of mental steps that could be performed by a human given enough time and paper and we could eliminate software patents once and for all.

  242. 27

    Readers, ignore what is immediately above. It is an indvertant duplicate of the same posting higher up, where it belongs.

    Sorry about that.

  243. 26

    But beer that really is “free” is not old. There is always a price to pay. There is no such thing as a free lunch, as I reminded you earlier. There is no such thing as free beer either.

    Just as the enantiomer ain’t always obvious, even when the racemate is totally understood, so too is it not obvious how to provide free beer.

    But that doesn’t mean there are no “free beer” claims. In fact, those parts of the USPTO examining software claims are stuffed full of them.

  244. 25

    But beer that really is “free” is not old. There is always a price to pay. There is no such thing as a free lunch, as I reminded you earlier. There is no such thing as free beer either.

    Just as the enantiomer ain’t always obvious, even when the racemate is totally understood, so too is it not obvious how to provide free beer.

    But that doesn’t mean there are no “free beer” claims. In fact, those parts of the USPTO examining software claims are stuffed full of them.

  245. 24

    It seems that the first nose of wax emerged in the year 1532. (The expression has that sort of “ring” on it, wouldn’t you say?).

    I gather that it was the case of White v Dunbar that first pulled it in to US patent law, where it has remained, ever popular, ever since.

  246. 23

    Free beer is not new.

    Free “anything” has been a marketing tool used for countless ages, enticing purchase through a loss leader.

    Since beer is a valued commodity and is known to weaken the sharp critical faculties, it is also not not obvious, as the inducement of Free beer would serve the purpose of the inducement according to its understood function.

    What’s the difference in patent-eligibility, and patentability

    That, my friend, is a question that should be answered without the haze of Free beer – the answer to that question helps highlight the “tweaking” going on here and showcases the philosophical battle and the casualties of common sense.

  247. 22

    There is a quote, not within my grasp at the moment, said by (of all people) Stevens that 101 should not be made to be a nose of wax and bent every which way.

    Of course, he had said that after he bent 101 to his view.

    The tug of war continues and this panel has simply tweaked the nose back to the Stevens view (which is to say, the Douglas view, which is to say, the only valid patent is one not yet in my courtroom view).

    With all of the tweaking back and forth, I am surprised that the 101 nose has not fallen off the face of patent law.

  248. 20

    The last page says that Research Corp v Microsoft’s method claim recited patentable subject matter because it involved “manipulation of computer data structures” and that the method provided, as its output, “a modified computer data structure”. But I thought data structures were regarded as abstract. How would manipulating and then outputting an abstract thing not also be abstract?

    Why shouldn’t a single number, which is represented in N-bit bytes, not be regarded as a data structure? After all, organizing bits into uniform chunks involves imposing a structure on them??

  249. 19

    OK, how about if we add the step “performing steps (a), (b), and (c) faster than a human being can perform those steps” or for those who need more specificity “performing the above steps in less than one quarter of a second”.

    This gets rid of the “human can do it with pencil and paper” argument. And the only way to design around the claim is to insert a delay between calculations, which would render the resulting product useless.

    And just to make for belt and suspenders, how about making the preamble say “A section 101 compliant method for…”

  250. 18

    So as I see it, why was there even an exercise on the second Application when the first never really existed as a Patent, and if it didn’t then clearly.. you see where I am going with this Brain Stem thought? So then the third was an exercise in WHAT?
    So is this a clear mistake or clearly a mistake of FACT? And if it was a mistake why was it not corrected?
    Instead it was left open with Kent to draw from LOLOLOL.
    And so there would be no question as to his actions, he does his in Canada because he knows that Foreign filing is imperative in the USA!
    Oh but wait I signed one and faxed it back… He had the Signature! Then he told me to tear It up? Boy if he didn’t have all his bases covered. Yastremski couldn’t even handle Home Plate with that field.

  251. 17

    Activ: how do you react to a claim that reads:

    1. Free beer

    It is real and useful and new and not obvious.

    What’s the difference in patent-eligibility, and patentability, between “free beer” and the Beauregard claim under discussion here?

    Presumably you would be against giving anybody a 20 year exclusive right on “free beer” (even though there is no such thing as a free lunch).

  252. 16

    The court’s opinion was contrived in a feckless attempt to mask judicial activism. Although the case law lacks any cogent logic because the courts cannot logically deny that software is technology in the same vein as any other defineable technology, the court could have applied existing case law to easily find patentable subject matter. Instead the court’s opinion was clearly driven by a predetermined outcome, which is the epitomy of judicial activism. Software is just a medium in which to implement an invention. Circuits, chemicals, steel, copper, plastic, etc. are just mediums to implement an invention. Why is software then treated so differently? The question is somewhat rhetorical. I believe that early on the Supreme Court simply did not understand the technology of software. Later political correctness entered the scene because the entry barrier to programming is very low compared to actual circuit design. Yet, the ease of copying should actually provide an even greater incentive to allow inventors to protect their software inventions using patents.

  253. 15

    Bad claims lead to more fuzzy law. In our next life, there will be a patent act with provisions for computers that resemble reality.

  254. 14

    What I don’t understand is that Brain Stem was such a big part in this Game. And it means absolutely nothing after you break it down. How many times did FDR fall on his trip to the chair or to lay down? How come Cassius Clay although evidently suffering massive Brain Stem problems, still makes sense when he speaks? And as noted early by McCracken… How many concussions does the average joe take in The middle east, and you send him back to fight again? Does the Examiner have a Brain Stem injury? Or have you just put too many McCrackin Eggs in the same basket?

  255. 13

    I’m with you, Chuck. We’ve now gone from Bizarre Bilski to Crazy Cybersource. Why can’t the courts, including the Federal Circuit, start the claim analysis with 35 USC 102/103 (or in my opinion, with 35 USC 112), instead of starting with “there is no objective test” 35 USC 101? This panel should of heeded the warning in Rsearch Corps that the claimed invention should be “manifestly abstract” before invoking 35 USC 101. The fact that this panel consisted of Judges Dyk and Bryson didn’t help here either, as both have already stated their penchant for invoking “subjective view” patent-ineligibility under 35 USC 101 with respect to isolated gene sequences. I wouldn’t be surprised if Cyberspace ended up being before the en banc Federal Circuit where it could be a real judicial “donnybrook” on this issue of what claimed processes are (and are not) simply to a “mental step.”

  256. 12

    This practice of invalidating thousands of patents, years after issuance, through litigation involving only one patent and a couple parties, and on the basis of mushy, directionless common law, is truly odd. Like this decision or not, it’s not a good way to direct an economy.

  257. 11

    No. See my post summarizing the history of the leadup to Benson. The essence of the what is claimed is the programmed computer, and it is analyzed as a process for 101 purposes. If it passes muster under the MOT, that ends the inquiry. If it doesn’t, it is abstract if it can be performed by a human. This is 100% flipped from the original CCPA cases on the topic that were reversed in Benson.

  258. 10

    Second thoughts on 102. Use it as a 112 squeeze. If the claim to a DVD is unclear as to the pattern of laser pits on its surface, then, prima facie, the subject matter of the claim is not patentably distinguished from old DVD’s. So, novelty not yet established. Claim drafter: more clarity please

  259. 9

    On another note…When assigning numbers to a Drawing they go 1,2,3,4,5,6 or 122,123,124,125, or 10,20,30,40,50,etc… So when the ball was in “YOUR” court why didn’t you fix it before moving on and doing the same to the next Application?

  260. 8

    Sorry Chuck. I see it was you not 6 who urged 103.

    6 wonders how one would use 103. Which was the pre-CAFC Decision in which the writer pointed out that a piece of music defies analysis under 103? That writer might now agree that you can’t perform an obviousness analysis either on the subject matter of this claim 2. Ergo, its subject matter is self-evidently not fit to be patented. See the EPO for how it’s done, in practice.

    Chuck urges 102. Can’t see that, myself. I’m not happy with decisions that announce that a DVD is a mental act but I would be equally unhappy with any decision that stretching 102 to find novel things lacking in novelty.

  261. 7

    It is important to understand that the Patent Office was right on programmed computers in 1968 when their guidelines indicated that programmed computers were not patentable per se, but only when they produced a new result, and that the CCPA of that same era was 110% wrong when it ultimately held, in Benson, that programmed computers were patentable as “new” machines regardless of use. That case, Benson, was then overturned in Gottschalk v. Benson.

    “he Patent Office published notice of its intention to prescribe guidelines for the examination of applications for patents on computer programs. See 829 Off. Gaz. Pat. Off. 865 (Aug. 16, 1966). Under the proposed guidelines, a computer program, whether claimed as an apparatus or as a process, was unpatentable. 11 The Patent Office indicated, however, [450 U.S. 175, 198] that a programmed computer could be a component of a patentable process if combined with unobvious elements to produce a physical result. The Patent Office formally adopted the guidelines in 1968. See 33 Fed. Reg. 15609 (1968).

    The new guidelines were to have a short life. Beginning with two decisions in 1968, a dramatic change in the law as understood by the Court of Customs and Patent Appeals took place. By repudiating the well-settled “function of a machine” and “mental steps” doctrines, that court reinterpreted 101 of the Patent Code to enlarge drastically the categories of patentable subject matter. This reinterpretation would lead to the conclusion that computer programs were within the categories of inventions to which Congress intended to extend patent protection.

    In In re Tarczy-Hornoch, 55 C. C. P. A. (Pat.) 1441, 397 F.2d 856 (1968), a divided Court of Customs and Patent Appeals overruled the line of cases developing and applying the “function of a machine” doctrine. The majority acknowledged that the doctrine had originated with decisions of this Court and that the lower federal courts, including the Court of Customs and Patent Appeals, had consistently adhered to it during the preceding 70 years. Nonetheless, the court concluded that the doctrine rested on a misinterpretation of the precedents and that it was contrary to “the basic purposes of the patent system and productive of a range of undesirable results from the harshly inequitable to the silly.” Id., at 1454, 397 F.2d, at 867. 12 Shortly thereafter, a similar [450 U.S. 175, 199] fate befell the “mental steps” doctrine. In In re Prater, 56 C. C. P. A. (Pat.) 1360, 415 F.2d 1378 (1968), modified on rehearing, 56 C. C. A. P. (Pat.) 1381, 415 F.2d 1393 (1969), the court found that the precedents on which that doctrine was based either were poorly reasoned or had been misinterpreted over the years. 56 C. C. P. A. (Pat.), at 1366-1372, 415 F.2d, at 1382-1387. The court concluded that the fact that a process may be performed mentally should not foreclose patentability if the claims reveal that the process also may be performed without mental operations. Id., at 1374-1375, 415 F.2d, at 1389. 13 This aspect of the original Prater opinion was substantially undisturbed by the opinion issued after rehearing. However, the second Prater opinion clearly indicated that patent claims broad enough to encompass the operation of a programmed computer would not be rejected for lack of patentable subject matter. 56 C. C. P. A. (Pat.), at 1394, n. 29, 415 F.2d, at 1403, n. 29. 14 [450 U.S. 175, 200]

    The Court of Customs and Patent Appeals soon replaced the overruled doctrines with more expansive principles formulated with computer technology in mind. In In re Bernhart, 57 C. C. P. A. (Pat.) 737, 417 F.2d 1395 (1969), the court reaffirmed Prater, and indicated that all that remained of the mental-steps doctrine was a prohibition on the granting of a patent that would confer a monopoly on all uses of a scientific principle or mathematical equation. Id., at 743, 417 F.2d, at 1399. The court also announced that a computer programmed with a new and unobvious program was physically different from the same computer without that program; the programmed computer was a new machine or at least a new improvement over the unprogrammed computer. Id., at 744, 417 F.2d, at 1400. Therefore, patent protection could be obtained for new computer programs if the patent claims were drafted in apparatus form.

    The Court of Customs and Patent Appeals turned its attention to process claims encompassing computer programs in In re Musgrave, 57 C. C. P. A. (Pat.) 1352, 431 F.2d 882 (1970). In that case, the court emphasized the fact that Prater had done away with the mental-steps doctrine; in particular, the court rejected the Patent Office’s continued reliance upon the “point of novelty” approach to claim analysis. Id., at 1362, 431 F.2d, at 889. 15 The court also announced a new standard for evaluating process claims under 101: any sequence of operational steps was a patentable process under 101 as long as it was within the “technological arts.” Id., at 1366-1367, 431 F.2d, at 893. This standard effectively disposed of any vestiges of the mental-steps doctrine remaining [450 U.S. 175, 201] after Prater and Bernhart. 16 The “technological arts” standard was refined in In re Benson, 58 C. C. P. A. (Pat.) 1134, 441 F.2d 682 (1971), in which the court held that computers, regardless of the uses to which they are put, are within the technological arts for purposes of 101. Id., at 1142, 441 F.2d, at 688.

    In re Benson, of course, was reversed by this Court in Gottschalk v. Benson, 409 U.S. 63 (1972). 17 Justice Douglas’ opinion for a unanimous Court made no reference to the lower court’s rejection of the mental-steps doctrine or to the new technological-arts standard. 18 Rather, the Court clearly held that new mathematical procedures that can be conducted in old computers, like mental processes and abstract intellectual concepts, see id., at 67, are not patentable processes within the meaning of 101. [450 U.S. 175, 202]”

    link to caselaw.lp.findlaw.com

    From Steven dissent in Diehr.

  262. 6

    I’m wondering: What if Cyber had presented claim 2 beginning “A DVD containing blah blah blah”. Could Judge Dyk still have written “CyberSource has not met its burden to demonstrate that claim 2 is “truly drawn to a specific” computer readable medium, rather than to the underlying method….”.

    Judge Dyk warns about exalting form over substance. To my mind, the “substance” of claim 2 is a manufacture. In construing it as a process claim, he is the one who is exalting “form” over the true “substance” of the claim.

    As 6 says, why didn’t the court knock down claim 2 using 112, or even 103. This Decision will have unfortunate consequences, and does not help legal certainty.

    In Europe, mental acts are statute-barred. But that bar is not effective against a claim to a DVD. A DVD is not a mental act. The US statute does not include a bar on the patent-eligibility of mental acts. But all the same, there are better ways (112, 103) to squash claim 2 than this.

  263. 5

    Just to be clear, we’re apparently back to the claim construction manner which Stevens wished us to use in Diehr. Notably, he especially wished us to use it in the context of 101…

    “any judge can conceive of “the underlying invention” in terms that would render it patent-ineligible.”

    And the subjectivity is the beauty of the analysis. Don’t dismiss that out of hand good sir. Invalidating patents is an art, of the highest form.

    “Why does Dyk have to screw things up by bludgeoning claim 2 with 101? ”

    I presume it’s because all Dyk had was a club and everything started to look like a nail. The club being 101.

    “While I don’t think the result is bad – I would never grant a patent on this – would it have been so difficult to nail claim 2 under 102 or 103 instead of 101?”

    What are you going to reject it over? Brittany’s latest album?

    “What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick?”

    Well hopefully it gets invalidated as it deserved to be a week ago, unless, of course, you managed to MIRACULOUSLY do what everyone else is required to do in such a claim and set it forth in terms of its structure.

    “By Dyk’s reasoning, the data gathering is insignificant, and the comparing is s something that could be done using mental steps, so the fact that I’m claiming a machine is irrelevant in the 101 analysis (even though Abele, upon which he relies here, apparently would have come out differently had the claim at issue there been directed to such a specialized machine.)”

    Well that would depend on how you claimed the machine now wouldn’t it? Did you try to use functional wonctional language? Silly rabbit! Trix are not for patent attorneys!

  264. 4

    It was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness, it was the epoch of belief, it was the epoch of incredulity, it was the season of Light, it was the season of Darkness, it was the spring of hope, it was the winter of despair, we had everything before us, we had nothing before us, we were all going direct to heaven, we were all going direct the other way, claims to CRM’s were patent eligible, claims to CRM’s were not patent eligible – in short, the period was so far like the present period, that some of its noisiest authorities insisted on its being received, for good or for evil, in the superlative degree of comparison only.

    ^I think that pretty well sums it up.

  265. 2

    “Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.”

    Say what? The “underlying invention”? Whatever happened to the claim defining the invention? What a load of @#$% – any judge can conceive of “the underlying invention” in terms that would render it patent-ineligible. Claim 2 is clearly directed to an article of manufacture, viz. a computer readable medium, and the inquiry under 101 should end there. Why does Dyk have to screw things up by bludgeoning claim 2 with 101?

    While I don’t think the result is bad – I would never grant a patent on this – would it have been so difficult to nail claim 2 under 102 or 103 instead of 101? What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick? By Dyk’s reasoning, the data gathering is insignificant, and the comparing is s something that could be done using mental steps, so the fact that I’m claiming a machine is irrelevant in the 101 analysis (even though Abele, upon which he relies here, apparently would have come out differently had the claim at issue there been directed to such a specialized machine.)

    ‘Scuse me while I call the janitor to clean up what I just left on floor after reading this decision.

  266. 1

    “Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes.”

    Say what? The “underlying invention”? Whatever happened to the *claim* defining the invention? What a load of @#$% – any judge can conceive of “the underlying invention” in terms that would render it patent-ineligible. Claim 2 is clearly directed to an article of manufacture, viz. a computer readable medium, and the inquiry under 101 should end there. Why does Dyk have to screw things up by bludgeoning claim 2 with 101?

    While I don’t think the result per se is bad – I would never have granted a patent on this – would it have been so difficult to nail claim 2 under 102 or 103 instead of 101? What now happens to my claim on a medical device that measures a parameter in a sample (the parameter not previously having been known to be significant in the diagnosis of disease X), compares the measurement to a baseline, and if the deviation is beyond some delta tells me the patient is sick? By Dyk’s reasoning, the data gathering is insignificant, and the comparing is something that could be done using mental steps, so the fact that I’m claiming a machine is irrelevant in the 101 analysis (even though Abele, upon which he relies here, apparently would have come out differently had the claim at issue there been directed to such a specialized machine.)

    ‘Scuse me while I call a janitor to clean up what I just left all over the floor after reading this decision.

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