In Mayo v. Prometheus, the Supreme Court is again addressing patentable subject matter. During oral arguments, Justice Breyer came-up with a hypothetical invention to help him draw the line on patentable subject matter.
JUSTICE BREYER: Suppose I discover that if … someone takes aspirin … for a headache and, you know, I see an amazing thing: if you look at a person’s little finger, and you notice the color [indicates that] you need a little more, unless it’s a different color, you need a little less. Now, I’ve discovered a law of nature and I may have spent millions on that. And I can’t patent that law of nature, but I say: I didn’t; I said apply it. I said: Look at his little finger.
MR. SHAPIRO: Sure.
JUSTICE BREYER: Okay? Is that a good patent or isn’t it?
MR. SHAPIRO: No … Well, because you — you’ve added to a law of nature [to] just a simple observation of the man’s little finger.
How would you respond to Justice Breyer’s idea with respect to 35 U.S.C. §101?
Do you really believe there is a difference ? If so, explain the difference and show an example of each. Or just be quiet.
“spent a lot of time discussing evolutionary biology with fundamentalists?”
So says the anti-patent fundamentalist of them all.
(Just think of Diehr as evolution, and you catch the drift – and don’t even go near computers)
I wonder, is not answwering “softball” questions a form of refusing to acknowledge certain facts?
“But your complete refusal to acknowledge that the societal cost of offering patent protection is not zero makes your argument seem disingenuous.”
At what point did I completely refuse to acknowledge a cost?
So up until my Notarizing my Power of Atty. Making Him a real lawyer instead of an Agent… Is what the finger is all about. I am going to be suing Agents.. Just plain old People. People that disrespected the Law over and over. Causing me more pain than anyone would ever imagine.
I seem to remember a certain rather vocal poster agreeing with the concept of not answering questions as cowardice.
This same poster has not answered this question, even though he called it a softball question.
What’s up with that?
What’s missing from the conversation is the fact that blocking serves as an impetus to innovation.
This anti-commons crrp is just that: crrp. Blocking is being looked at as a wall. When the less innovative walk up to the wall they stop and look confused. They say the wall is a “societal cost.” That is a feature, not a bug.
You can pay the patentee to walk through his door or you can innovate around the wall. Patents are published for a reason. Even though they are still a wall, the countrous of the wall are given. Stop crying and get busy figuring out something else.
I don’t doubt that patents encourage a certain amount of innovation, but your complete refusal to acknowledge that the societal cost of offering patent protection is not zero makes your argument seem disingenuous.
austin, have you spent a lot of time discussing evolutionary biology with fundamentalists? If you have, you might notice something familiar about Les’s “complete refusal to acknowledge” certain facts. It’s a real problem around here.
Just because patents on equations don’t exist currently doesn’t mean you couldn’t find some evidence, if it existed, to support the hypothesis that they would do what you say. You could look to other areas that have had coverage granted or revoked to look for similar effects. That being said, a few citations suggesting that “patenting everything” isn’t always good:
1. Andrews LB. Genes and patent policy: rethinking intellectual property rights. Nature Reviews: Genetics. 2002;3(October):3-8.
2. Kesselheim AS, Mello MM. Medical-Process Patents — Monopolizing the Delivery of Health Care. New England Journal of Medicine. 2011;355(19):2036-2041.
3. Carbone J, Gold ER, Sampat B, Chandrasekharan S, Knowles L, Angrist M, et al. DNA patents and diagnostics: not a pretty picture. Nature biotechnology; 28(8):784-91.
4. Heller M a. Can Patents Deter Innovation? The Anticommons in Biomedical Research. Science. 1998 May 1 [cited 2011 Jul 20];280(5364):698-701.
5. Cyranoski D. Arsenic patent keeps drug for rare cancer out of reach of many. Nature medicine. 2007 Sep;13(9):1005.
If you’re going to take a look at any of them, [1] has a discussion with a nice list of cases where gene patents actually inhibited innovation and information sharing. Your “common sense” example also doesn’t really make sense. There a many reasons to expect that the reward of patent protection would be necessary to encourage the development of pharmaceuticals while it wouldn’t play as large a role in developing things like E=mc2. High on that list would be R&D costs, but there are certainly many ways to differentiate between the two. I don’t doubt that patents encourage a certain amount of innovation, but your complete refusal to acknowledge that the societal cost of offering patent protection is not zero makes your argument seem disingenuous.
“I put processes in the same category as a machine.”
Why?
When an old process produces new information, is it repatentable? Now the answer clear is no, but why?
Because processes are defined by their steps, not by the result of the process.
Well.. I referred to a race not to be blocked because I you seemed particularly concerned with being blocked. I really think the promotion of progress comes from the encouragement to disclose rather than hold as trade secret. But to that you would say, but scientists publish now without patents. To that I would say, but that system relies on subsidies from a grant providing system that is inefficient because the unsuccessful get far more grants than do those that actually find the answer.
I can’t give you evidence of patents encouraging the discovery of formula because as it stands, you cant get a patent for a formula.
All I can offer you is common sense. If patents bring you Lipitor and Crestor, why wouldn’t the same forces bring you the next E=mCC.
“All the more reason that the guys with the shoulders a bit lower on the pyramid should be able to charge a royalty.”
I wasn’t disagreeing with that statement, but your previous logic is inconsistent with that line of reasoning. If, as in your previous statement, the motivating force of a patent system is so that you work faster so that you don’t get blocked, then you’re saying that a major function of the patent system is to block other people from working on various problems. This seems contrary to the entire purpose of the system: encouraging disclosure and innovation globally. Encouraging everybody gobble up every bit of IP to prevent themselves from getting blocked and in the process blocking everyone else is not an efficient way to promote innovation in today’s scientific climate.
“That’s just throwing out the baby with the bath water….usually not a good idea.”
I’m not throwing out the baby with the bath water. I agree that a patent system is good. I’m saying that it should also be robust in practice.
Regardless, you keep ignoring my requests to provide any actual evidence that supports your views on such widely applied patent protection.
“Every new discovery that comes out stands on the shoulders of dozens of previous innovations.”
All the more reason that the guys with the shoulders a bit lower on the pyramid should be able to charge a royalty. Otherwise the the system occasionally spits out a hero or three, with the rest of the guys not getting so much as a thank you during the speech from Oslo.
“Lots of non-novel, obvious stuff gets through the USPTO, and some of those claims cause a lot of problems. As a practical matter, it makes sense to make some categories of innovation ineligible.”
That’s just throwing out the baby with the bath water….usually not a good idea.
Talk, good take there. Presumptively patent eligible is more apt.
I put processes in the same category as a machine.
But, what is a process? That is the question. Clearly a process is more than an idea, or a series of mental steps, or a sequence of physical acts that does nothing useful.
When an old process produces new information, is it repatentable? Now the answer clear is no, but why?
“A machine that is useful (as opposed to a process which actually has to state its utility) is patentable per se. Why? It is among the listed categroies.”
Nothing could be further from the truth.
One – there is no such thing as anything being patentable per se. Not even machines (think time travel machine, think perpetual motion machine).
Two – The listed categories includes Process. Your particular selective treatment is disingenuous.
Get out of the weeds Ned.
I understand the theory behind why you’d want to offer protection. My request is for evidence that it’s actually true, especially in these extreme cases you’re pushing protection to. Again, what evidence exists that offering protection to things such as equations acts to promote innovation globally? Patent protection is not the sole motivating factor driving people to innovate, and it is not a system without costs.
“Advancement is encouraged because no one wants to be blocked from using the next great formula so everyone works very hard to be the first to find the next block buster formula and because formula are disclosed instead of being held as trade secretes.”
If that’s your line of reasoning, I don’t find it to be a very good one. With the state of science today, nobody is operating in a vacuum. Every new discovery that comes out stands on the shoulders of dozens of previous innovations. If your motivation to discover the next new thing is that you “won’t be blocked from using it”, then you’ve already failed, as most of your prior art will already be “blocked”. Discovering the next new thing becomes exponentially more expensive since you have to license all of the prior art before you even start trying to invent.
Even if I could be convinced that extending protection to cover “everything under the sun” would be beneficial in theory, there’s also the reality of the USPTO. Lots of non-novel, obvious stuff gets through the USPTO, and some of those claims cause a lot of problems. As a practical matter, it makes sense to make some categories of innovation ineligible.
SteveW: “Your proposed claim is not even a “purely mental process”,
Exactly, this is both the fallacy and lunacy of Malcolm’s argument.
Agree in principle. However, the list is what Congress and the courts deemed within the UA.
A machine that is useful (as opposed to a process which actually has to state its utility) is patentable per se. Why? It is among the listed categories.
A process does something useful. Until it does something useful, it is not a process at all.
I draw the line with novelty and obviousness.
x=yz is not patentable because its known. If we lived in a world where no one had multiplied two numbers before, where everything was done by repeated addition and you discovered the multiplication table, then you should, in my view, be able to get a patent for it. No one knew how to do it before. Granting the inventor 20 years of exclusivity in exchanged for telling the world about the multiplication tables does no harm. They weren’t able to use the tables before, because they didn’t know about them. Now they know about them and at least have the opportunity to pay for a license to use them or to plan to use them in 20 years when the technique is placed in the public domain. Alternatively, the discover keeps the info to herself, sets herself up as XYZ Accounting and makes a fortune in rapid record summarizing.
Advancement is encouraged because no one wants to be blocked from using the next great formula so everyone works very hard to be the first to find the next block buster formula and because formula are disclosed instead of being held as trade secretes.
Call me an anti-patent troll all you want, but it’s simply not true. If you can’t provide evidence that what you are asking for confers the benefit you say, then admit it, otherwise put up.
It may surprise you, but I have very few problems with copyright law. There are exceptions for fair use, and the practicalities of the systems don’t compare well.
IANAE You might consider actually reading Diamond v. Chakrabarty. Specifically, the very next sentence after the “anything under the sun” bit.
“This is not to suggest that 101 has no limits or that it embraces every discovery.”
I’m pretty sure that line is censored out of the Patent Txxbxgger’s Bible. Seriously, though, isn’t Ken Brooks supposed to be a registered attorney? That’s a pretty effin sad performance there.
Steve o turn your question back to you – WHY do you think purely mental steps are not patentable?
As I previously noted, Steve, Ned already provided one answer to that question: mental processes are the basic tools of scientific and technological work. Patenting mental processes does not “promote progress.” It promotes patenting. It promotes litigation. The grant of a patent requires that one’s conception be reduced to practice. That “practice” can not include merely thinking about the concept, and it doesn’t matter if the step of thinking is limited to a particular environment.
Other answers include: the unconstitutional limitations on free speech (and free thought) that are implicated by the granting of such claims; the fact that the public (and most of their representatives, i.e., the ones who aren’t being paid off to shill for these so-called “diagnostic” companies) would be absolutely repulsed if you told them that corporations are filing patents that can be used to sue people who are engaging in otherwises legal acts that are turned into illegal acts because of the thoughts they are thinking.
I merely disagree with you in that I think it’s wise to figure out where the truck is heading, and I think you are focused on the color of the paint.
I could the same about you, of course. I’ve been watching this particular “truck” very, very closely for about fifteen years now. And I’ve been watching shills for the “personalized medicine” “industry” pretend that without claims such as those at issue in Prometheus we’ll all be worse off. Nothing could be further than the truth.
Have to love the introduciton of “tragedy of the commons” into the conversation – coming from someone who has admitted a lack of working knowledge of patent law, all we have is anti-patent spouting.
Tell me what you think of life plus 70 as a “strong protection” of merely expressing yourself.
Ok, if we’re back to talking about what we *think* the law *should be*, why do you think that equations like E=mc2 should be eligible? And where do you draw the line? Of course it matters exactly how it is claims, but would any equation of the form E=mc2 be covered? How about x=yz? That’s a really simple equation. Does it matter what the variables mean? Does it matter if any of the variables are constants? Does it matter what the units are? Even if I did agree that patenting equations would be a good thing (which I don’t), I don’t see where you’d draw the line. Furthermore, what’s to prevent me from patenting all sorts of equations with no specific use? I could preempt the use of a lot of mathematics, even by using equations that may have never been explicitly published before.
I’m not saying that equations are not useful, or that we don’t want to encourage people to develop them. That’s certainly not true, and I think we both agree on that. My problem is that I’ve seen absolutely no evidence that extending patent protection to such abstractions does anything to encourage their discovery, while there is evidence to the contrary. You seem so concerned with protecting the individual inventor without taking into consideration the global impact of such strong protections. I know the intro to every patent 101 starts with explaining the tragedy of the commons, but the tragedy of the anticommons has severe implications as well.
Ken: “Ok let us try this again. 35 U.S.C. 101 places no limits on patentable subject matter. All one has to do is examine the legislative history and I belive either Diamond v. Diehr or Chakrabarty.”
You might consider actually reading Diamond v. Chakrabarty. Specifically, the very next sentence after the “anything under the sun” bit.
“This is not to suggest that 101 has no limits or that it embraces every discovery.”
Wether E=mCC passes the machine or transformation test is irrelevant (at least to the conversation I am having). I’m not arguing about what the law IS. I’m arguing about what the law Should Be. It is clear to me if you make a contribution like E=mCC you should be able to get a patent on it.
In any event, I could draft a claim to E=mCC that passed the transformation leg of the test.
A method for determining an energy equivalent of an object, the method comprising:
establishing a variable having one of: and undefined value, an unknown value and an initialized value;
determining a mass of the object;
transforming the value of the variable from one of the undefined, unknown and initialized state to a state of representing the energy equivalent of the object by setting the value of the variable equal to the determined mass of the object multiplied by a square of a speed of light.
“In fact, calculations that are literally impossible for a human to perform are not treated any differently than the pencil and paper capable kind”
But they are. See the otherwise recent silly CAFC case on software that places a caveat on the “purely mental steps.” That caveat was “practical” (as in, i_diot savants do not get to play a role in determining patent eligibility).
“You didn’t answer the question,”
Another accusation by the one who accuses others of what he does.
The laws according to MM:
Thou Shalt Dissect.
Thou Shalt Conflate.
…and,
Thou Shalt Not Answer Embarrassing Questions That Exhibit Limitations Of Your Legal Paradigms.
Still waiting for your answer to:
Why do you think claims including (but are not purely) mental processes are not barred?
Steve, Agree.
The discovery of a new property of old composition does not entitle one to reclaim the old composition, but only claim a new use of the old composition for the purpose of using the new property.
Similarly the Discovery of a new property of an old process does not entitle one to claim the old process, but to claim a new use of the old process.
These are self-evident propositions from the old school. The problem with the Prometheus claims is apparent when we consider the above self evident propositions.
Sent from iPhone
I truly understand what you are trying to say. However, “purely mental steps” in a patent claim is a concept that relies upon too many legal constructs to be meaningful. You are trying to derive what should be patentable from first principles, as if there is a patentability F=MA.
Where statutory law clearly applies, SCOTUS will try to apply it. Where there is none, they will look to the purpose of the law (promote innovation? probably…) and the public benefit. They may not, of course, agree on what those things really are.
Then, they will look to their precedents to see if their opinion about the patentability of it will write. If they have to extend or distinguish, so be it. There is plenty in almost any claim, including the Prometheus claims, to write it up saying that they are not directed to pure mental steps, if they choose to. There is also plenty in this area – and in many other areas that are not in any way controversial regarding 101 – to say that these claims are directed to pure mental steps.
They are NOT going into this case wringing their hands about whether these claims are purely mental steps. They will simply say (if they uphold the patents, which you already know my opinion about that) there is an administering step here, or that in determining the optimal dose one of skill in the art understands that it incorporates the use of those optimal doses, or… (I’ve supplied two – we could make a game out of 100 ways to describe these claims as not directed to purely mental steps).
To turn your question back to you – WHY do you think purely mental steps are not patentable? Beyond SCOTUS saying it, why specifically do you think SCOTUS say that? If you read Benson literally, any calculation capable of being done with pencil and paper is not patentable, even though this is clearly not the case (at least useful operations affected by such calculations, even where the operations absent the calculations may not be patentable).
In fact, calculations that are literally impossible for a human to perform are not treated any differently than the pencil and paper capable kind. If you try to claim calculations, per se, that are impossible for a human to perform mentally or on paper, it will nevertheless fail under 101 even though it seems like it could fit under Benson.
I merely disagree with you in that I think it’s wise to figure out where the truck is heading, and I think you are focused on the color of the paint. I’m signing off on this thread and leaving any last word to you, I’m sure we’ll get the chance to talk about this again. Cheers
SteveW Whether it is a purely mental process is a label that is applied after you determine whether it is patentable.
No, Steve, a purely mental process is a process comprised only of mental steps. Shall I write an example of a purely mental process in claim form? Let me know if you need to see an example of such a claim and I’ll write it out for you. Honestly, I don’t think you’re as dense as you seem to be at the moment. I do think that you are confused, perhaps because you have been drinking the kool-aid for a long time and haven’t thought about the issues very deeply.
I did answer your question, but it is your question, not mine and it remains irrelevant.
You didn’t answer the question, Steve. Ned did. The question was: why do you think claims to purely mental processes are barred? Ned answered the question … or at least he provided a Supreme Court case (one of many many cases that have unquestionably supported the barring of purely mental process claims) which included a terse explanation for the prohibition.
The question is relevant to Prometheus’ claims, of course, because Prometheus’ claims are effectively claims to mental processes, at least as far as practitioners of the prior art steps recited in Prometheus’ claims are concerned. The day before the patent issues, those practitioners are free (under the law) to practice those prior art steps and think whatever they want about the results of those steps. The day the patent issues and they read about it they become literal infringers when they think about the “new fact” disclosed in the patent. From their perspective, they were changed from innocent workers into lawbreakers because merely because they acquired knowledge. That’s exactly the result which the bar against claiming purely mental processes is intended to prevent. What is the rationale for allowing patentees to get around the bar against purely mental processes by merely reciting an old prior art step in addition to the “new” mental process?
If you still can’t see the relevance of my question, Steve, or you can’t admit to seeing it, well … you’re not alone. You’ve got a lot of sockpuppets keepin you company. 😉
austin: Those citations are definitely helpful. However, could you explain to me how Diehr is a more practical test than the preemption?
No one knows the parameters in preemption. Not the Government that represents the PTO, or the Supreme Court Justices of the United States. Where as an “application” involves doing something which is a behavioral action that is observable, repeatable, and measurable and thus totally objective. For example if I invent a process that tells you to do:
Step a,
Step b,
Step c.
and you will always get d.
That’s a statutory process and passes the (DCAT) Diehr Concept and Application test.
That’s the simplicity, objectivity, and efficiency of DCAT and why it should be upheld as the controlling test and not ignored, forgotten or subjugated.
Now it’s been a month or so since I last read Benson. ( I have had to read these 101 cases at least a thousand times each over the last 6-7 years because there are true anti patent types on this blog that will out right lie and/or twist the Courts words with their own opinions and try to pass it off as law.)
So, IIRC, and Benson is saying math equations alone are not statutory subject matter, then that is a Court created judicial exception, which means a rule arbitrarily made up by judges and not in U.S.C. Title 35 of the patent statute.
And in my opinion I disagree with the judges and feel math equations alone should be patentable but I understand and accept the law that says it is not.
But virtually everything else Benson had to say about 101 has been limited by Diehr and should be read through the words of the Diehr case. So Benson alone is largely irrelevant.
Ned,
See my post above. MMs claim is not a “purely mental process” in the ordinary sense of the word, and neither is the claim at issue in Mayo v. Prometheus. Whether it is a purely mental process is a label that is applied after you determine whether it is patentable. Benson and Cybersource are both policy-based decisions. They throw the magic words around, but they are discussing policy, not philosophy on the meaning of “mental process.”
Since the “purely mental process” argument is intended to divert attention from the real problem or matter at hand, it is a “red herring.” (credit to dictionary.com) Tell me whether the cookie claim or Prometheus are bad, and then you will know whether they are patentable.
“… anything that should be patentable will be deemed to not be a ‘purely mental process’ and anything that should not be patentable will be deemed to be a ‘purely mental process.’ We could have the transitory signal dance as well, which is also further nonsense.”
I did answer your question, but it is your question, not mine and it remains irrelevant. Your proposed claim is not even a “purely mental process”, proving how artificial the concept is anyway.
Whatever magic words you think up to be the test of patentability, artful claim drafting will be devised so the claims don’t fall into the category of your magic words. Then, we’ll be back to figuring out whether a given technology should be patentable or should not be patentable.
Next, you’ll ask me in exasperated tones why I refuse to tell you how many pink unicorns just left my living room.
You are looking at this backwards. You are trying to figure out if it is [insert magic words here], and you think that will tell you if it is patentable. If you figure out whether it is patentable, then you will know whether it is [insert magic words here].
Thanks for the actual reply (rather than just yelling louder that I don’t understand patent law). Yes, I’m a scientist/inventor in biomed/biotech.
Those citations are definitely helpful. However, could you explain to me how Diehr is a more practical test than the preemption? It seems that whether or not an invention has practical applications is as subjective as whether or not an invention preempts the prior art and/or nature. What am I missing? Ostensibly, any invention could have some sort of practical to a specific industry or process.
I find it a bit humorous that all of the citations you provided are consistent with what I’ve been saying while everyone else is yelling at me for being somehow anti-patent. Gottschalk v. Benson, in my reading, holds that an equation alone is not patentable under 101. I’ve never said that an invention that uses a mathematical formula should be ineligible for protection, which seems to be what Diehr says. Am I misinterpreting this?
Hello austin:
Are you saying you are a scientist but not an attorney? Are you an Actual Inventor? Because that is whom the patent system was established for.
Glad to have your views on the blog. And I hope you enjoy your time here. There are so some attorneys here and a few Actual Inventors too that post here.
Well the MOT is not a pretty good test, as you say. It is merely a clue at best to help determine if an invention is statutory subject matter. See (Bilski)
So the MOT can’t “legally” be used to deny an inventor his or her patent. That’s a fact.
Preemption is worse than the MOT because patents are supposed to preempt the practice of the invention. No one has an objective process for applying preemption so in effect it becomes dissection which is also not allowed. See (Diamond V Diehr.)
The best test is the Diehr Concept and Application test ( DCAT) and is “legally” the controlling test for 101 statutory subject matter.
The DCAT works exactly like the Court used it in Diehr.
You take the claims as a whole, including the concept.
Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process.
If the answer is yes you pass 101!
Its worked well for 30 years.
See the cite history as follows:
“The application of an abstract idea to a “new and useful end” is the type of invention that the Supreme Court has described as de- serving of patent protection. Gottschalk v. Benson, 409 U.S. 63, 67 (1972)”
( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).
( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.
(Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.
(Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)
Read the government brief. You will find some interesting law there.
Sockpuppet, you are a flame throwing denier. You speak as IF you were god. You lecture us. But, in truth, you have no idea what you are talking about. Ever.
Continuing with the analogy, would it make you feel better if I admitted we were in an English-speaking country? Because I readily admit that. I also wasn’t trying to imply what you apparently think I was by putting “constraint” in parentheses. I know firsthand that it can be easy to lose track of the big picture when you’re too close to the problem. It seems that most people here are soo concerned with protecting the individual inventor that they neglect the impact on society as a whole.
Stepping back from the shouting match, I’m really curious: what evidence do you have that shows that granting equal patent protection to everything encourages innovation globally? I personally have never seen any evidence to suggest that offering patent protection to things like mathematical equations or genes (without specific applications) does anything to promote innovation. I have seen plenty of evidence to the contrary, and gave one (albeit brief) such citation earlier.
I understand that it is a test, but that it isn’t definitive. However, it seems to me to be a pretty good test. From the outside, it doesn’t really look like there is any universally applied test to determine patent eligible material, hence a lot of these debates. Do you have any reading you could suggests that would get me up-to-date on the state of the field right now?
The test of whether or not a claim preempts the practice of the prior art (or nature) seems to me to be good in theory, but extremely difficult to apply in a consistent manner.
austin,
Aside from the rantings of some peculiar posters here, do you understand that Machine or Transformation is not the test, nor a requirement for patent eligibility?
“how about a more accurate one”
You are too full of yourself and your “first principle” position.
You say in one breathe that you are not denigrating lawyers, and in the next you jibe with “constraint” – obviously not understanding how the “constraints” of a legal system actually work.
This then is compounded by your twist of my analogy with an English speaker with native German speaker and you assuming the role of the native German speaker. Sorry – you have the roles reversed. You keep on forgetting that most patent lawyers understand TWO worlds whereas you understand only the one.
I am one of those that understnad both with my eleven years in the truly technical world before my seven years of being in the truly legal world. You are the one yelling louder in French and thinking that such makes your point.
It does not.
I’m not denigrating what lawyers do. I respect that there is definitely utility to having a patent system, and that the system couldn’t exist without lawyers. I’m denigrating the position that absolutely everything should be patentable, and the repeated unevidenced claims that a strong patent system always promotes innovation.
Because I don’t have the benefit (or constraint?) of knowing the outcomes of a century’s worth of patent law decisions, my approach to many of the issues tends to be from first principles. That is, the purpose of a patent system is to encourage innovation and the dissemination of knowledge by offering certain protections to inventors. From that perspective, offering patent protection to absolutely everything doesn’t really make sense. There’s no evidence to back up the claim that patenting everything always encourages innovation, but there is growing evidence to the contrary.
If you really want to go with your analogy, how about a more accurate one. It’s like you, as a native English speaker, having a discussion in German with a native German speaker. When he corrects your grammar and tries to explain the language to you a bit, you tell him he’s wrong and that you know the right way to speak German.
I’m not trying to tell you how I think the patent system does work. I’ve been trying to tell you why some aspects of how it has been working don’t really make sense from a scientific point of view and that there are reasons to question the assertion that offering strong IP protections to everything under the sun may be not be working to meet the ultimate goal of any patent system.
He’s always there.
I was called up to the Hill to show a couple how an old Slot Machine worked.It was broken. Never could got it to work. But I did not know it was illegal to have a WORKING Slot Machine. So you see I know now for sure I was being set up! But He was there making sure it still would not work. Sometimes I just didn’t realize just how much he has been there. So you see who I am doesn’t matter because He loves me no matter who I am. So if it doesn’t matter to him why should it matter to me?
Here I am born again. But this time it will really mean something to me. I will never again think in my darkest hour that He was not there. Ha was always there.
To me, it’s that the example of the formula alone doesn’t seem to pass the machine or transformation test, whereas the specific applications of the formula would, in my mind, pass that test. Could you explain to me why you think that an equation such as E=mc2 would, on its own and without a specified application, pass that test? And if it does pass that test, is there anything that wouldn’t pass that test?
Ned it is not an exhaustive list. You should read Federico’s commentary on the 1952 Act. Section 101 merely provides examples of that which is patentable. What SCOTUS needs to do now is define the requisite utility for patent applications. I have been saying this since 1992. Look a microprocessor has absolutely no inherent utility. Can we all agree on this? It has utility only and until it is coupled to a system, provided power and . . . don’t forget, ahve a program included therein to facilitate it doing something utilitarian; yet, you can get a claim to a microprocessor without all the other feature that allow it to work being recited therein. Why is that? Because it is implied that mental steps will be undertaken by the person of ordinary skill in the art to give an otherwise meaningless result of countless semiconductors processes utility. What is that utility? Once we understand this, we can understand the extent that mental processes can be applied to provide the requisite utility.
“you really, really, really believe that mental steps are process steps?”
This is one of the more absurd Nedisms I have seen.
No matter what the definition of the word “is” is, the word “is” is still the word “is.”
Do mental steps somehow occur above, below, outside, infused within other steps? Are they “magic?”
“Surely things of the mind, mental steps of any character, cannot be the stuff of patents.”
And yet, we fully embrace the hope, love and “extascy” of mental steps within a patent.
Go figure.
Ken, you cannot be serious. It defines patentable subject matter as machnes, articles, processes and composition. Process are defined to include art, and using machines, etc. Obviously they include as well, processes of making machines, articles and compositions.
So your statement that anything is patentable is just a bit broad.
Take for example, hope. Can you patent that?
Can you patent the love a child?
Can you patent extascy?
Can you patent delusions?
And so on and so on.
Surely things of the mind, mental steps of any character, cannot be the stuff of patents.
6, thanks. I got you thinking.
The anwser is not self evident, is it?
However I think the reason is simply this: hedging is an entirely mental concept, just as is price, value, beauty, ugliness, etc. They exist in our minds. They can be represented by numbers, but numbers too are mental concepts. Abstract.
So, when one hedges he reduces risk. The way it is done is described in claim 1. The process is mental. That is why it is abstract.
AI, do you really, really, really believe that mental steps are process steps?
JUSTICE BREYER: Ah. Now, we’re into the problem. And that is the problem of how much you have to add.
JUSTICE BREYER: If you look at the Court’s cases, they seem to say Flook, one thing, and Diehr another thing.
AI: Yes
JUSTICE BREYER: And so what is your view about how much has to be added to make it an application of a law of nature? And how would you put that in words?
AI : First, I would like to say I agree with “GENERAL VERRILLI: “If one says that it’s nonpatentable because all you are doing is patenting the application of a law of nature, you’re invalidating all those process patents.”
Second, according to the statute and this Courts precedent in Diehr all it needs to be is a step that is more than a silent, unexpressed thought. Otherwise we end up back at the MOT as the exclusive test which this Court struck down in Bilski and Mayo was in effect suggesting when you ask the same question of him.
So one such possible step could begin with the word “informing”.
Anything more and we end up down the slippery slope of preemption that is really the dissection of claims which this Court has said cannot be done to deny or declare an invention no patentable.
“I don’t recall that Bilski held that vice in the claim was the way it was claimed. I think they held that hedging or rather a method of hedging was abstract.”
Good for you, because that is what they said and it is what I said.
That said, the “vice” is always somewhat in “the way it is claimed”. You could always choose conciously to not claim an abstract idea. They choose to. Their bad. One could always choose conciously not to preempt the entirety or nearly the entirety of a given abstract idea. They choose to. Their bad.
“My real question is that assuming this, why was hedging deemed to be abstract?”
Because hedging, as a concept, is abstract in its nature Ned. I’ve already explained to you that I’m a fundamentalist, I do not deem it necessary to give “reasons” why a thing, for instance hedging, is abstract, it is abstract because that is its fundamental nature. One simply observes what hedging is and either finds abstractness there or not, one does not find “reasons” that it is abstract and then conclude that it is abstract. Although one could in at least some situations if one were so inclined. The USSC is not so inclined and neither am I.
It is the same way one does not observe a table and conclude it is abstract. One observes a table and concludes it is not abstract. One “observes” hedging in the mind’s eye so to speak and notes that it is abstract.
To help you understand, the determination is made in much in the same way one does not have to find “reasons” that a thorn bush is “prickly” for a thorn bush to be prickly. It is not prickly only because you found reasons that suggest to you that it is prickly, it is prickly by its nature. If you were wholly ignorant of the plant and yet touched it you would still find yourself pricked regardless of whether or not you knew anything about it.
Now you might say “well, I dissent” I think it is prickly only because I found reasons that it is prickly! And that is fine. That is your view.
However, a fundamentalist simply observes the qualities of the plant and notes the characteristics of the plant in relation to the world around it, including animals and people, and perhaps goes so far as to consider what would happen should an animal or human touch the plant. Prickliness, or not, will emerge as a fundamental quality of the plant. In an analogous way, abstractness, or not, will emerge as a fundamental characteristic. That is my view which is shared by the USSC.
Either way is fine, but my way, the way the USSC uses, is infinitely quicker and less work in the 101 analysis. That said, even I myself might deem to give “reasons” something was abstract if I thought it to be persuasive to the person to whom I was conversing.
Admittedly it is a rough analogy, but I think you might somewhat get the idea from it.
What may be of further use to you is to read a modern translation of the ancient philosophers and their thoughts on “reality”, “on being” and the qualities of each. Without a solid foundation such as this you may find yourself want to ever understand the concept for your day job.
“I don’t recall that Bilski held that vice in the claim was the way it was claimed. I think they held that hedging or rather a method of hedging was abstract.”
Good for you, because that is what they said and it is what I said.
That said, the “vice” is always somewhat in “the way it is claimed”. You could always choose conciously to not claim an abstract idea. They choose to. Their bad. One could always choose conciously not to preempt the entirety or nearly the entirety of a given abstract idea. They choose to. Their bad.
“My real question is that assuming this, why was hedging deemed to be abstract?”
Because hedging, as a concept, is abstract in its nature Ned. I’ve already explained to you that I’m a fundamentalist, I do not deem it necessary to give “reasons” why a thing, for instance hedging, is abstract, it is abstract because that is its fundamental nature. One simply observes what hedging is and either finds abstractness there or not, one does not find “reasons” that it is abstract and then conclude that it is abstract. Although one could in at least some situations if one were so inclined. The USSC is not so inclined and neither am I.
It is the same way one does not observe a table and conclude it is abstract. One observes a table and concludes it is not abstract. One “observes” hedging in the mind’s eye so to speak and notes that it is abstract.
To help you understand, the determination is made in much in the same way one does not have to find “reasons” that a thorn bush is “prickly” for a thorn bush to be prickly. It is not prickly only because you found reasons that suggest to you that it is prickly, it is prickly by its nature. If you were wholly ignorant of the plant and yet touched it you would still find yourself pricked regardless of whether or not you knew anything about it.
Now you might say “well, I dissent” I think it is prickly only because I found reasons that it is prickly!1111eleventyone!!! And that is fine. That is your view.
However, a fundamentalist simply observes the qualities of the plant and notes the characteristics of the plant in relation to the world around it, including animals and people, and perhaps goes so far as to consider what would happen should an animal or human touch the plant. Prickliness, or not, will emerge as a fundamental quality of the plant. In an analogous way, abstractness, or not, will emerge as a fundamental characteristic. That is my view which is shared by the USSC.
Either way is fine, but my way, the way the USSC uses, is infinitely quicker and less work in the 101 analysis. That said, even I myself might deem to give “reasons” something was abstract if I thought it to be persuasive to the person to whom I was conversing.
Admittedly it is a rough analogy, but I think you might somewhat get the idea from it.
What may be of further use to you is to read a modern translation of the ancient philosophers and their thoughts on “reality”, “on being” and the qualities of each. Without a solid foundation such as this you may find yourself want to ever understand the concept for your day job.
sockie: according to the fabled Ned logic, if Prometheus loses, there go all methods claims directed to medicine…
MM: Completely false. Nice try with the scare tactics, though. Kevin Noonan would be proud of you.
AI: So then it’s on the record you disagree with Neds logic. After all Ned Heller did spend better part a year so arguing:
1. That since Bilski’s claims were labeled a so called business method….
2. and those claims failed 101.
3. Then all so called business methods fail 101.
But of course Malcolm you still have a problem proving that any patent has ever prevented anyone from thinking. Thus your own whacko illogical theory fails just as miserably as Ned’s
A Dufresne: You know you are using dissection. Why is this even a question?
NH: Dissection, according to Diehr, involves ignoring the old elements of the claim. What we’re doing here, is ignoring the mental step(s).
AI: Steps in a process are the elements of a claim and you know that Ned . You are inherently and terribly dishonest.
Ok let us try this again. 35 U.S.C. 101 places no limits on patentable subject matter. All one has to do is examine the legislative history and I belive either Diamond v. Diehr or Chakrabarty. Patentable subject matter is found by a new, and sufficiently new (non-obvious) and useful idea. However, in order to be patentable a claim must be drafted that is sufficiently definite 35 U.S.C. 112, so that the metes and bounds of the patentable subject is defined. This requirement satsifies two requirements. First, and foremost, it satisfies due process notice. Congress cannot grant a monopoly unless the public is placed on Constitutionally acceptable notice of the monopoly. Secondly, it must be definite so that it satisfies the requirements of Title 35 United States Code.
As I stated before, I are pretty sure that the rule against patenting a law of nature comes from an incorrect interpretation of a 1920s Commissioner’s Decision concerning a camshaft, for a Cadillac, I believe. The camshaft was shaped according to a mathematical equation.
Nice comment, Ned. I don’t buy this concept of a “mental step employed to modify a physical step” that we’ve discussed before. But I certainly agree that Prometheus’ claims would fail that test as well. You also wrote:
Laws of nature claimed as such would be examples of mental steps which would not define a process.
And I would add that a fact claimed as a step of thinking about the fact, is for 101 purposes, no different than claiming the fact itself. Call it a law of nature or call it an abstraction. It doesn’t matter. As the government noted — ant this was completely uncontested by any of the parties or the Supreme Court — the addition of an old, prior art “transforming step” does not remedy the illegality of removing a process of merely thinking about the fact from the public domain (because the claim, if granted, precludes practitioners of the prior from thinking about the recited fact).
One humorous aspect of the Prometheus oral argument (and this may be in their brief as well) is their strange position that, even though their “invention” was the discovery of a biological fact (expressly admitted), their claim to a method of thinking about the fact did not “preempt” (shorthand for “monopolize”) the fact/natural law/whatever because, uh, … it might not really be a fact! And Mayo can get their own patent on claim to thinking about an improved fact, after they take a license from Prometheus of course and pay some damages for thinking about Prometheus’ fact. Or Mayo can spend another couple million litigating the “utility” issue, whic is probably really enablement, but that’ll only cost about a million dollars to figure out. But the important thing, Prometheus wants us to know, is that their claim really isn’t preventing Mayo or its employees from thinking about a new fact, even though Prometheus can’t stop anybody from practicing any of the other steps in their claim, just the additional step of thinking about that new fact. But the claim isn’t protecting the fact itself. Just thinking about the fact.
What a bunch of greedy slimeballs. I’m hoping somebody on the Supreme Court or one of their clerks has a functioning brain and can put two and two together. Prometheus’ claim (and claims like it) can be tanked on very narrow grounds which will have little effect on progress in medicine or any other art. Or, as you suggest Ned, the Supremes could just kick it back down to the USPTO to invalidate as anticipated (by ignoring the mental step), case closed.
Now that’s some refreshing and crisp legal thinking there Malcolm.
You have really outdone yourself.
“holding in Diamond v. Diehr, where the point of novelty in the claim was a mathematical algorithm,”
Diehr…. point of novelty….
HELLO McFly
“So what do we have? We have in the statutes a declaration that machines, articles, compositions and methods of making and using these are statutory. The difficulty always comes when one begins the claim beyond the statutory authorization.”
Who can point out the easy flaw in the flow of logic to this point?
Ken, section 101 does say that machines, processes, articles of manufacture, and compositions of matter are patentable subject matter. Three of these are clearly physical things. In addition, a process is defined in section 100 : “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. Not stated but implied is that “process” also includes the process of making a machine, article of manufacture and composition of matter.
So what do we have? We have in the statutes a declaration that machines, articles, compositions and methods of making and using these are statutory. The difficulty always comes when one begins the claim beyond the statutory authorization.
For example, are mental steps process steps? The government brief in Prometheus makes clear that they are not. Thus if a claim consists wholly of mental steps, it does not describe a statutory process.
Other difficulties occur when, for example as in the Prometheus case, mental steps are added to an otherwise physical process. Should this be treated under 101 are under 102? The government prefers 102, and I see no vice in that.
Then we get to the difficult issue of whether the operation of machine can be claimed as a machine or whether it can be claimed as a new process. Is this a section 101 issue, or is this a section 112 issue. It could be both, but I would prefer section 112. (In case you do not understand what I’m talking about, the operation machine typically is claimed as a programmed computer today, where the computer itself is old but it is programmed to do something new.)
In all of this, there lurks the issue of substantial utility. New machines, articles of manufacture, compositions of matter and processes typically have substantial utility. But not in all cases. A machine which does nothing useful does not have substantial utility even though it is machine. This clearly is an issue of section 101.
So we get to substantial utility in the context of the process claim. Inviting body punches in another thread argued forcefully that the real problem with the Prometheus claims is that they did not have a substantial utility actually claimed, albeit the information was useful. This is the clue, I believe. If you compare Benson Flook and Diehr, it appears that the only difference between patent eligibility, and patent ineligibility was whether the output of the “mental step” was put to (a physical) use in the claim.
Circling back to laws of nature and things found in nature.
1) Laws of nature claimed as such would be examples of mental steps which would not define a process.
2) Things of nature are old, even though that we may discover them. They truly are in the public domain.
Now we come to abstract ideas, finally. What are these? The Supreme Court in Benson listed abstract ideas in the same sentence as separate categories of patent ineligible subject matter. However, in truth, the way the Supreme Court applies the abstract subject matter test demonstrates that it is really applying a mental steps test. Thus when the claim presents an otherwise patentable process consisting of physical steps that have substantial utility, and the novel subject matter in the claim consists of mental steps, the question of patentability (as opposed patent eligibility) is whether, as in Diehr, the mental step is employed to modify a physical step in a functional way to produce something physically new. If it does not, it is not patentable, and makes no difference to me whether the determination is made under section 101 or under section 102.
The government brief seems to prefer 102. But this position seems at substantial war with the holding in Diamond v. Diehr, where the point of novelty in the claim was a mathematical algorithm, which is a species of mental steps.
Do you agree?
les,
That is because (and no offense intended) austin is not approaching the issue as a legal issue.
It is not that you need to be a lawyer to understand law, it is that you cannot denigrate what lawyers do just because you don’t understand that lawyers do what they do because you are dealing with law.
He is falling to the fallacy that a technical understanding gives him the superior edge, forgetting that most people (not all) that are in this field not only have the legal understanding but also have the technical understanding.
It’s like having a discussion in German who only knows but a few phrases and whose native tongue is French. When the discussion gets heated, the limited person (lingual) thinks that yelling louder in French will make the point more clear and carry the discussion.
There are times when all you can do is to recognize that the best you will reach is an agreement to disagree and point the person to a German class for him to better understand the actual conversation.
Other than pointing out that you dont think e=mcc should be patentable, you havent explained why….the industry advancing activity is the discovery of the formula….once you have that….the duck taping of a flux capacitor to a Delorien is so trivial it can be done in a barn….
I don't recall that Bilski held that vice in the claim was the way it was claimed. I think they held that hedging or rather a method of hedging was abstract.
My real question is that assuming this, why was hedging deemed to be abstract?
Sent from iPhone
Hi Ned:
I am not sure why you think I am on your side in this exchange. I am just enjoying watching Malcolm get intellectually B slapped up by SteveW.
Don’t you just think its a hoot the way MM wraps himself up in red herring fallacies and endless repeats the same irrelavant question, as soon as the weakness of his theory is exposed?
It’s like watching a marathon of the Three Sto ooges featuring all scenes with Curly! Yuk Yuk Yuk
“D_amn sure my answer is clear as crystal to anyone who doesn’t have his/head up his/her axx.”
D_amm sure whether or not your “answer” was “clear” was not the point – your “answer” was not an answer to the question asked.
D_amm sure that’s not an answer to Completely Related’s question.
D_amn sure my answer is clear as crystal to anyone who doesn’t have his/head up his/her axx.
“Pretty sure you are a fxxckin clxxlxx mxrxn just trxxllin here.”
D_amm sure that’s not an answer to Completely Related’s question.
You do like to avoid actually answering questions, don’t you MM?
“As I noted in my above comment, sockie: the question is impossible to answer directly because your premise is false and/or the question is not being clearly asked”
That’s strikes two and three, MM.
First strike is your non-answer at 1:53 PM.
Second, as plainly can be seen in the black and white of that 1:53 PM response, you never indicated that my question was impossible to answer directly (in fact, you imply the opposite by thanking me for the “softball” – unless it’s opposite day, “softball” just does not equate to “impossible to answer directly”).
Third, I am not sure why you may think the question is not clearly asked (again, the reference – your reference – to my question being a “softball” belies your current non-answer at 8:19 PM).
So, let’s see you actually answer the question I did ask (and yes, this has been directly before the courts).
Let’s hope you can help yourself.
-and by the way, your rendition of Diehr is missing an important holding, one that you are surely familiar with (and one that destroys your little attempt at introducing dissection back into the legal arena).
I think you have a penchant for bringing up irrelevant things. The method was listing of the physical steps necessarily needed to perform a specific “method of hedging” in the abstract. Limited perhaps by a certain industry (I don’t recall), but still, the claim intended to preempt a method of hedging risk in the abstract by claiming it the way they did. That’s it, the end of the “reasons” it “was” abstract. That is all of the analysis. The analysis is complete.
As to the 4th claim in Bilski I think they enunciated the reasoning sufficiently in decision. It had to do with further limiting the claim by specifying the various portions of the abstract hedging process where analyzed in an abstract Monte Carlo simulation. Further limiting a claim currently preempting an abstract idea with other abstractions isn’t likely to get you out of the woods so to speak. It just further complicates the abstract idea that is an issue. For instance, instead of preempting simply a method of hedging, they are preempting a method of hedging and analyzing the hedging, which is no less abstract than the hedging itself. As a matter of fact, the evil attorney in Mayo noted this, correctly, I do believe, in his oral arg. Although he stated it in a rather bad way.
You’re roughly on the right track I think Ned, but you try (seemingly force yourself) to get bogged down in “information” and “mental steps” far too often. I don’t know why you do this. F info and F mental steps. They are species of a broader genus exclusion, do not needlessly restrict yourself to the tiny species when performing an analysis. Apply the rule against fords instead of just the prohibition against F150’s so to speak. Not every abstract idea must only be pure information or a mental step. Bilski has little to nothing to do with “information” and even less to do with “mental steps”. Which is why the supremes didn’t mention anything about that in the decision.
sockie Pretty sure that “fabled Ned’s logic” is the application of a single example to rule an entire class (or category) of method claims.
Pretty sure you are a fxxckin clxxlxx mxrxn just trxxllin here.
mental processes are not patentable, as they are the basic tools of scientific and technological work
Thanks, Ned.
Of course, that’s just one reason that mental processes are not eligible for patenting. It’s a good one, but there are others. If you find someone on the street and tell them that it’s possible to be sued for drinking coffee (old transforming step) and thinking a “new thought”, you’ll discover there are other reasons.
sockie Why do you think claims including but are not purely mental processes are not barred?
As I noted in my above comment, sockie: the question is impossible to answer directly because your premise is false and/or the question is not being clearly asked. You might as well ask me when I stopped beating my horse (I’ve never owned one).
It’s certainly the case that after Bilski (at least) it is perfectly legal for a court to “bar” patenting of a claim that recites a mental step and a non-mental step. Wasn’t Bilski’s claim such a claim, after all? Even if not, the Supreme Court in Bilski made it perfectly clear that the option is theoretically available.
Let me answer the question that I think you are trying to ask, which is: why do you think that some claims that include mental steps and non-mental steps are not “barred.”
The answer to that question gets back to the holding in Diehr, a case you are surely familiar with (if not, see the summary in my previous comment). The mere presence in a claim of a step that would be patent-ineligible if recited alone is not sufficient to render the entire claim ineligible. For example, a claim reciting [new transformative step(s)]+[new mental step] or a claim reciting [new transformative step(s)]+[old mental step] does not raise any obvious eligibility issues (some may disagree with this). Of critical importance: those who are obviously and admittedly practicing only transforming steps in the prior art do not have to worry about being dragged into court for THINKING about something new.
I hope that helps.
Might research cost be somewhat correlated with non-obviousness?
It certainly does, at least if you’re the most patent-lovin judge on the Federal Circuit. Judge Newman infamously relied on the money spent by the patentee to find the patentee’s isolated enantiomer non-obvious in Sanofi-Synthelabo v. Apotex (Fed. Cir. 2008). Sanofi stands for the proposition that if you disclose a compound that you aren’t actually in possession of, spend a lot of money and waste time actually isolating it (even if you end up using an ancient, well-known method to do the isolation). Then rely on how much money and time you wasted to argue that it wasn’t obvious.
italic fix
Just for the record, I’ve fixed at least ten broken sockpuppet italic tags in the last week.
6, Bilksi:
The Supremes did not clearly state why the hedging method of claim 1 was abstract, but I think the answer is the follwing, and I wonder if you agree.
Like a mathematical algorithm that manipulates abstract concepts embodied in numbers, a hedging method manipulates abstract concepts involving risk. The risk factors can be expressed mathematically, and it was in Bilski claim 4.
The manipulation of abstract concepts such as numbers can be performed in a machine that deals in numbers, but they also can be performed mentally. Regardless of this point, Bilski did not require the abstract concept be performed on a machine.
So, in the end, while there were quasi-physical steps recited (placing contracts), they were, what, insubstantial? They provided inputs to a mental assessment of risk, and the process was terminated when risk was balanced.
This is all very similar to Diehr, except that the process there was terminated when measured pressure, temperature and time were right. The numbers, while abstract, represented real physical phenomena. Risk does not. And, neither does the result of a calculation in Benson. The answer does not represent anything physical. Just an abstraction.
In a sense, therefor, Bilski was an example of the abstract idea exception known as the mental steps exception. The process could be performed entirely by humans where the balancing was taking place entirely in the mind of a human being.
Once it became clear that Bilski was claiming a mental process, I don’t know why anyone needed to go to the next step and determine whether the claims preempted the concept. They did, because claims preempt what they claim. If they claim a mental process, they preempt the mental process. Preemption is a red herring, at least in Bilski, and probably in Prometheus as well.
What do you think?
AI, I’m glad to have you on our side for this one.
SteveW, may I interject here. Benson held that mental processes are not the subject of patents. link to scholar.google.com
Cybersource, citing Benson, reaffirmed that mental processes are not the subject matter of patents.
link to scholar.google.com
“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Benson link to scholar.google.com
Followed,
Cybersource, link to scholar.google.com
“The Supreme Court has stated that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (emphasis added). In Benson, the patent at issue claimed a method of programming a general-purpose computer to convert binary-coded decimal (“BCD”) numbers into pure binary through the use of a mathematical algorithm. Id. at 65. The Court focused in part on the mental character of the claimed process, stating:
The conversion of BCD numerals to pure binary numerals can be done mentally . . . . The method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary. And, as noted, they can also be performed without a computer.
Id. at 67. Thus, in finding that the process in Benson was not patent-eligible, the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas—the “basic tools of scientific and technological work” that are open to all. Id.”
Steve, you’re melting down. I would advise reading your comments carefully pressing the “post” button.
Why should I be on the hook to answer that question? I have not proposed that purely mental processes are barred, nor is it relevant.
You’re “on the hook”, Steve, because you refuse to answer the question, for some strange reason. We’re talking about claims which recite mental processes and which also effectively remove those mental steps from the public domain, at least from the perspective of those who are practicing the prior art. The question is certainly relevant. I’ve made all these points many times before.
Even if purely mental processes are barred
Excuse me … “if”? The bar against eligibility of purely mental processes is not disputed by anyone, Steve. At least, not anyone that I’m aware of. Certainly nobody on the Supreme Court and nobody on the Federal Circuit, nor in the USPTO, (nor any judge in any district court that I’m aware of, anyway). Neither of the parties in Prometheus v. Mayo dispute it. I assume you don’t either. Please confirm that you don’t dispute that purely mental processes are barred from patent eligibility. And then please let me know why you believe that bar exists.
I understand why you choose not to address these fundamental issues squarely, Steve. But do it anyway. Surprise me.
WARNING! Surgeon General Warning: If you should click that link your mind may very well melt and ooze on out of your ears if it plays on 720p.
A celebratory dubstep for all!
link to youtube.com