Federal Circuit Continues Split on Patentable Subject Matter

by Dennis Crouch

Myspace, Inc. v. GraphOn Corp. (Fed. Cir. 2012)

In yet another case, the Court of Appeals for the Federal Circuit has identified the wide chasm separating members of the court on issues involving patentable subject matter under 35 U.S.C. § 101. The majority opinion here – penned by Judge Plager and joined by Judge Newman – argues that courts should avoid the metaphysical question of whether an invention is unpatentably abstract whenever possible and instead focus on the conditions of patentability found in §§ 102, 103, and 112 of the patent act.

Judge Plager writes:

[C]ourts could avoid the swamp of verbiage that is § 101 by exercising their inherent power to control the processes of litigation, Chambers v. NASCO, Inc., 501 U.S. 32, 43 (1991), and insist that litigants initially address patent invalidity issues in terms of the conditions of patentability defenses as the statute provides, specifically §§ 102, 103, and 112. If that were done in the typical patent case, litigation over the question of validity of the patent would be concluded under these provisions, and it would be unnecessary to enter the murky morass that is § 101 jurisprudence. This would make patent litigation more efficient, conserve judicial resources, and bring a degree of certainty to the interests of both patentees and their competitors in the marketplace.

Judge Plager goes on to adopt the analogy to the Constitutional Avoidance Doctrine that Rob Merges and I suggested in our 2010 article titled Operating Efficiently Post-Bilski by Ordering Patent Doctrine Decision-Making.

In a sense, § 101 of the Patent Act can be thought of as the patent law analogy to the Bill of Rights of the Constitution. The latter sets in the broadest terms (“due process,” “equal protection”) the fundamental parameters of the citizenry’s legal right. In the context of patent law, § 101 similarly describes in the broadest terms the legally-protected subject matter an inventor can seek to patent: a “process, machine, manufacture, or composition of matter . . . .” The Supreme Court has wisely adopted a policy of not deciding cases on broad constitutional grounds when they can be decided on narrower, typically statutorily limited, grounds. Following the Supreme Court’s lead, courts should avoid reaching for interpretations of broad provisions, such as § 101, when more specific statutes, such as §§ 102, 103, and 112, can decide the case.

On the merits of the decision, the majority affirmed a lower court summary judgment holding that the asserted claims are invalid as anticipated and obvious under §§ 102 and 103(a) respectively.

In this case, the lower court never ruled on the question of patentable subject matter and none of the party briefs refer to Section 101, unpatentable abstract ideas, or Bilski v. Kappos. However, the majority felt compelled to discuss Section 101 based upon the dissenting opinion by Judge Mayer who opined that the patent intrinsically raises a threshold question of patentable subject matter that must be addressed.

Judge Mayer writes in dissent:

The issue of whether a claimed method meets the subject matter eligibility requirements contained in 35 U.S.C. § 101 is an “antecedent question” that must be addressed before this court can consider whether particular claims are invalid as obvious or anticipated. In re Comiskey, 554 F.3d 967, 975 n.7 (Fed. Cir. 2009). GraphOn Corporation (“GraphOn”) owns four patents, U.S. Patent Nos. 6,324,538 (the “‘538 patent”), 6,850,940, 7,028,034, and 7,269,591, which contain exceedingly broad claims to a system that allows users to exert control over the content of their online communications. This court must first resolve the issue of whether the GraphOn patents are directed to an unpatentable “abstract idea” before proceeding to consider subordinate issues related to obviousness and anticipation. See Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (noting that whether claims are directed to statutory subject matter is a “threshold test”); Parker v. Flook, 437 U.S. 584, 593 (1978) (“Flook”) (emphasizing that “[t]he obligation to determine what type of discovery is sought to be patented” so as to determine whether it falls within the ambit of section 101 “must precede the determination of whether that discovery is, in fact, new or obvious”); Comiskey, 554 F.3d at 973 (“Only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and . . . non-obviousness under § 103.” (citations and internal quotation marks omitted)). I therefore respectfully dissent from the court’s judgment.

The dissent agrees with the majority (and our) suggestion that § 101 be treated as analogous to the US Constitution – but argues that the statute “is the standard expressed in the Constitution and it may not be ignored.” Rather, the dissent writes “a robust application of section 101 is required to ensure that the patent laws comport with their constitutionally-defined objective.”

Below, I have excerpted claim 1 of the patentee’s U.S. Patent No. 6,324,538 with a 1995 priority filing date:

1. A method of publishing information on a computer network comprising the steps of: creating a database entry containing information recieved from a user of the computer network, wherein the information includes data representing text, a universal resource locator, an image, and a user-selected category; generating a transaction ID corresponding to the database entry; password protecting the entries; displaying the entries in accordance with the user-selected category; presenting the information to a user in hyper text markup language in response to a user’s request.

The dissent is correct that the invention as claimed is incredibly broad.  However, this is the exact type of case that is just as easily eliminated on grounds of anticipation or obviousness.

Note for a later post — the majority opinion is also important for its statement on the theory and practice of claim construction.

232 thoughts on “Federal Circuit Continues Split on Patentable Subject Matter

  1. Ned: “The key to the patentability of software related inventions has to be in the novelty and nonobviousness of the concept.”

    This logic is fundamentally flawed in the face in patent law.

    It’s the “application” of the concept that is required to be novel and non obvious.

    Never the concept itself.

    BTW, this applies to ALL processes and not just to software, or business methods too, for that matter

  2. The key to the patentability of software related inventions has to be in the novelty and nonobviousness of the concept.

    Right – and in this invention, it seems to be the classification of particular records. The classification seems like metadata stored for particular records in the database to enable searches based on out-of-band criteria. That seems interesting; I don’t remember learning anything like that in my graduate-level databases courses in 2004.

    Opponents of software patents are extraordinarily prone to assuming that any claim that’s easily understandable isn’t new. It fits their theory that the patent system is borked, so they jump to that conclusion very easily.

    It’s like the This American Life episode on patents, where the reporters (and LOTS of uninformed listeners) equated a patent entitled “bread refreshing method” with “a toaster.” They didn’t notice (or care) that the claims are explicitly limited to warming bread to between 2500 F. and 4500 F., which is between the melting point of steel (2700) and the temperature of the Earth’s mantle (4500). My toaster doesn’t seem to have those settings.

    David Stein

  3. THE USPTO had no right to publish my patent .. I didn’t pay for that? So 35 USC 157 is not legally met. And I am sure this letter from the Investment company telling me I am erased and it may be under another name I had. But just fill out this form. And we’ll be with you in a Jiffy. And lets hope that it all ties in to a neat little package, so Justice will be swift!

  4. Ahhh back from a nice week in the sun. I see that once again Ned has been beaten to a pulp, totally sliced, diced, and put in a can.

    But did he ever admit defeat?

    Did he ever congratulate the winners?

    Even the worse boxer when beaten will walk over to the victors corner and say congrats, if for nothing else than to show good sportsmanship.

    And now we have Ned, forced to admit business methods are patentable subject mater, and that there are NO extra requirements for process patents beyond U.S.C. 35.

    Only to see Ned limp away without even pledging to not repeat this non sense in the future, let alone apologize to the patent community.

    Yup, bookmark this thread because something tells Ned will be back to his same old tricks as soon as Dennis drops the next 101 bait in the water.

  5. MaxDrei,

    The system just are my post.

    I am not sure if I can capture what I wrote fully, so at the risk of appearing rude, I will be short.

    Your presentation concerning legal certainty could not be more backwards.

    While binding precedent may be susceptible to poor cases making bad law, such has nothing to do with legal certainty and can be corrected at the proper level of authority.

    I read your paragraph about Students as emphasizing a fluid nature that is the opposite of legal certainty. I don’t want to depend on advice of students such as Paul Cole (who I think was one of those crying out for a lack of legal certainty regarding “technical”).

    That lack of binding precedent increases rather than decreses the velocity of change. Given current (and I suspect continuing) backlogs and length of time between drafting and filing applicaitons and final enforcement through litigation, the more fluid changes are adverse to applications in the queue. This is a lack of legal certainty, not an abundance of it.

  6. BullsEye again. Yes indeed, what exactly is “technical”, and how much creep and envelope pushing is going on at the EPO?

    With >1000 Decisions per year, and no Binding Precedent, the 24 (it might by now be even more) Technical Boards of Appeal are revealing in their Decisions what they understand by “technical”. Creative drafters, prosecutors and advocates are helping them explore the limits of patentability.

    Students of that EPO decision stream pounce on any novel insights that shade the meaning of “technical”. Take advice from those students, if you want to know what “technical” currently means at the EPO. It was different 5 years ago and will be different again, 5 years from now. I think that such students (Paul Cole, for example) can tell you, with a high level of confidence, what claims will pass, and which will fail, if up for judgement today.

    This Binding Precedent thing: in a dense and evolving field like patentability at the margin, I think it can be an unfair burden on the court that has the last and binding word. Poor cases make bad law, which prejudices legal certainty.

  7. It appears that you and your interlocuors are closer than either of you thought.

    In parallel to defining “abstract,” cannot the same be said of defining “technical?”

    I seem to remember a few comments that aligned along similar difficulties.

  8. Bingo. Thanks again. Much appreciated.

    I am not in the camp that says every business method under the sun is within the ambit of “useful arts”.

    I am not in the camp of those that say that no business method can ever be within the ambit of “useful arts”.

    Rather, I say (like the EPO does) that “useful arts” is wide enough to embrace many present day business methods, but not all of them. Methods of doing business today are typically more “technical” than they were, with paper and pencil, in the 18th century.

    I am curious to know where, on this, I differ from SCOTUS. So far, all we have from SCOTUS is, if it’s “abstract” it ain’t eligible. What is abstract is not within the useful arts. For me, “abstract” is to SCOTUS what “lacking technical character” is to the EPO. Can anybody define “abstract” for me?

  9. Thanks MaxDrei,

    I think I see why there is such a fuss.

    You are saying two different things at the same time.

    As they say, “You can’t get there from here.

    Your interlocuors are not saying that the Framers had “nothing particular” in mind. What they are saying, it appears is the same as you are saying, that the embrace of the concept must be taken from contemporary meaning.

    What I don’t understand is your insistence on treating business methods as not part of that contemporary meaning.

    You are treating this embrace as one not allowed to move into the useful arts, whereas any MBA student or member of that art can tell you that it is a useful art. Certainly it is not a fine art, nor is it a performing art.

    Just a guess, but I think this is the critical point. You seem to be saying that the concept’s embrace can change with time on the one hand, and yet on the other refuse to allow a change to be embraced that clearly (and legally) has happened.

    It’s just a guess, but you also may be catching collateral flak from the “business methods are constitutional/non-constitutional” debate that Ned Heller wages. That is a sad situation as anyone advocating that business methods are not an item that falls under U.S. patent law does not have a grip on reality.

  10. Much appreciated, Guess, because your comment reveals the misunderstanding. What I am consistently saying is that what is embraced by “Useful Arts” is NOT “locked in” to the time of the framers.

    Suppose the Constitution uses the word “democracy”. We all know what “We, the people” means today. We know what “We, the people” meant in the Golden Age of Athens, when only a few percent of the population had a vote, and we know what democracy meant to the men who did the framing. While the concept of “democracy” carries the same dictionary meaning today as it did back in Ancient Greece, it is today implemented very differently from how it was in ancient Athens.

    So it is too, with “Useful Arts”. The concept has a meaning, but what is embraced by that concept changes with time. Why is this so difficult to accept?

    Take another example: “land vehicle”. The concept is the same, just as meaningful to a poster as to a Framer, but the material form which that concept takes today is very different from its form 220 years ago.

    Or are my interlocuors asserting that the Framers had nothing particular in mind, for the meaning of “Useful Arts”. It just sounded impressive and about right, or what?

  11. Wasn’t that called “swagger?”

    It’s only called “swagger” when it comes from one of Ned’s allies in the “GD War.”

    Otherwise it’s abuse.

    Political Correctness 101

  12. Try Again,

    No one is the master of MaxDrei’s “sorry a@@ postings.” Even as you smack him upside the head, he will continue to shill for that is his purpose, hi sreason for being. It really doesn’t matter what he clangs about, as long as he is clanging. Take away the Useful Arts argument and he will only retreat to some other Euro-trash position.

    He can’t help himself.

  13. Ned: “AI, do not state that I have argued that the MOT is a requirement of patent eligibility. I have many times stated the opposite.”

    AI: You have argue such in the past. Though I do acknowledge you no longer make that argument. Nose of Wax has already done an excellent job of pointing out the circular reasoning of this statement and thus keeping you accountable.

    Ned: But bone fide claims to new machine or to new articles of manufacture have never been found to be abstract.

    AI: Nose of Wax has already done an excellent job of pointing out the circular reasoning of the above statement and thus keeping you accountable @ Mar 11, 2012 at 11:24 AM. No need to reiterate it here.

    Our debate has come to an end.

  14. Just a guess, MaxDrei, but you might fare better if you stuck to the law and understood when the subject of your posts violate established rules of law.

    You cannot ignore the current state and merely say that the law is otherwise. Besides stirring the rabble rousers, what do you hope to accomplish?

    I do not understand, even with an open mind, what you hope to achieve by continueously posting on a point of law in an incorrect manner.

    As I have posted previously, you seem to engender quite the reaction by your blind adherence to a concept that is quite settled. One that is simply not settled as you want it to be.

    The plain fact of the matter is that Useful Arts are not locked into the time of the founding fathers.

    You choose to ignore this fact.

    That you also post to advocate an open mind to learning, yet continue to fail to see that an open mind won’t change the state of U.S. jurisprudence is at a minimum, a bit daft.

    I’m sorry that you are subject to the level of rudeness that you get, but in a way, you are asking for it.

  15. Max, don’t you have the distinct impression that all the posts of the descriptional monikers are penned by one person?

    OH NOES, THE TROLL-SOCKIE CONSPIRACY THEORY.

    It’s that readership I am aiming at, when I type my stuff.

    Are you really MaxDrei? For your sake, I hope that you are aiming at a different audience. The one you say you are aiming at holds their collective noses at your posts. It’s hard to tell whether that is because of the stench of the posts, or because the stench of the rotting horse carcasses next to your water trough.

  16. Ned, I agree that at least one self-congratulatory poster delights in selecting for each of his (it surely can’t be a her) postings a pen name that he thinks is apt for the point he wants to make. We don’t hear from “ping” any more, but I think he’s still posting, using different names. I think ping and AI are not the same person but who cares.

    I imagine a readership intelligent enough to take sense from postings and ignore the rest. It’s that readership I am aiming at, when I type my stuff. I can’t stop other posters misrepresenting what I write (and perhaps the fault is mine, for not getting my meaning across clearly enough). Others read those misrepresentations and find them attractive. There is a lot of force in the maxim that, if you repeat a misrepresentation often enough, some people start accepting it as no misrepresentation but, rather, as accurate. But the people that are seduced are not the people for whom I’m writing.

    You categorize their stuff as “abusive”. I see it as patronising and condescending. I think it reveals him/them as foolish. The more they write like that, the more they make my point. That’s fine with me.

  17. What really scares me is AI takes on the persona of the be all end all while poor Max acts like he does not have a License…. but at times Max slips into the Holiday Inn quintessential Janitor. And AI gets to sit at the Beach… What is fair in that? I think MAX needs to dump AI and show he really is a Janitor at Holiday Inn.

  18. Max, don’t you have the distinct impression that all the posts of the descriptional monikers are penned by one person? If split personalities were a real phenomena, we might say that that is what we were dealing with here, to a degree.

    I think they are all AI, but I am not sure. What is clear is that everytime AI appears, they appear and they argue the exact same points in the exact same abusive manner.

  19. What was just eaten… really didn’t say anything except for the relationship between Design and Utility is about as same as the relationship between Patent and Trademark. so why did you eat it? Why’d should be a word. I want to Patent it.

  20. I see that Max has avoided actually addressing the point of the 10:01 comment.

    Where are you, “astonished”? Max needs your eloquent command of legal writing to understand that he his trying to hold two incongruent thoughts at the same time.

    Have you no compassion for poor Max?

  21. You patronisingly write “thanks for playing” as if you were Gene Quinn, and the master of ceremonies round here.

    Thanks for noticing the patronizing tone. It was a deliberate rub-your-nose-in-your-own-crrp comment. It works great with puppies, who have shown a higher capacity for understanding than you have.

    And no, I am not the master of ceremonies round here, nor am I Gene Quinn (love the red herring). I am, however the master of your sorry a@@ postings and your continued efforts to subvert what US law stands for.

    It quite matters not that I think it’s me you are playing with (which I don’t by the way; nice strawman there, give the crayons back to Malcolm, he draws way prettier stick figures). I don’t have that big of an ego to think “me” is the important factor. Instead, it is quite apparent that you have an agenda of subverting what “useful arts” means. It is quite apparent that you continuously ignore the actual law on the subject, because that law does not jibe with your view of the world and how patents should work. I really feel sorry for you that the “useful arts” arguement does not suppport your agenda. Maybe you should try to learn and understand the legal point involved. Keeping your eyes closed and repeatedly saying “I don’t see” is no way of trying to understand, of trying to learn.

    Sorry Charlie, but such purposeful ignorance smacks straight into your “alleged” belief in propensity to understand. You are a close-minded patent bigot, and I relish showing “the readers” just how duplicitous your postions are.

    Self-deluded? Not at all. My posts have nothing to do with me and everything to do with what the US law is. Your posts, on the other hand, have everything to do with the belief structure you want to proselytize.

    But thanks for playing Max.

  22. I am the Actual Inventor! I am the Actual Owner of the Trademark too. The first one! I am the actual Owner of the copyrights.. that were filed in 1997 too. Although the 1998 one was like my first Drawings that they claimed they never got, I did not file that one!

  23. You patronisingly write “thanks for playing” as if you were Gene Quinn, and the master of ceremonies round here. You think I’m “playing”? You think that it’s you I’m playing with? You think I’m repeating “a lie”? You think “it” is not working?

    I leave it to readers to form a view, which one of us is the more self-deluded.

  24. But bone fide claims to new machine or to new articles of manufacture have never been found to be abstract.

    Isn’t that a bit of circular logic?

    The inclusion of “bone fide” [sic] changes the calculas of the statement, as by definition claims to machines (or system of machiens) that are abstract cannot be bona fide.

    Such claims are often found and dealt with by the courts under the guise of “mere added extra solution steps” or “field of invention” limitations.

    In truth then, claims to new machines or to new articles of manufacture can be found to be abstract, and AI’s position holds. Let’s not move the goalposts with adding “bona fide” to the discussion at this late date.

    And let’s notice when the courts are playing with form themselves.

    Applicants are not the only ones playing with form over substance.

  25. AI, do not state that I have argued that the MOT is a requirement of patent eligibility.  I have many times stated the opposite.
     
    Passing the MOT is sufficient.  That is not the same thing. 
     
    As to the rest of your points, it is true that at times machine and article claims are treated as methods for 101 purposes.  But bone fide claims to new machine or to new articles of manufacture have never been found to be abstract.  However, some article claims have been found to be things of nature — isolated DNA, for example. (Currently reversed by the Feds.)
     

     

  26. I remember working in the Pensacola area. I look outside and there is this person in a Lincoln.. looks just like JW… As soon as he spots me looking he takes off like he’s in the Daytona 500……

  27. AI, you are right to a degee  — claims formally stated to be claims to machines or articles of manufacture will be treated as method claims for 101 purposes.  We have on right now up for discussion here on Patently-O, Digital Vending.
     
    Form over substance.

  28. So it is too on the ambit today of ‘useful arts’.

    Except it’s not.

    By law.

    All you are doing is attempting to repeat a lie often enough so that it gains some semblance of truth.

    It’s not working.

    But thanks for playing Max.

  29. Not entirely sure that readers will follow you there, LMHYH. What I think you are saying is that Max’s “absolute” position is not what Astonished says it is. If that is what you are saying, you are right.

    To reiterate, one can assess the patent-eligibility of a claim of today by reference to the state of the art as it was yesterday 8the “relative” position) or you can assess its eligibility without any regard to what the state of the art had grown to, by yesterday’s date. The advantage of the absolute position is that you don’t have to look at novelty when doing 101.

    The absolute position involves assessing patentability relative to what we understand to be the ambit of “useful arts” today. That ambit, today, need not be the same as it was in the 18th century.

    Suppose the Framers had been writing about a “land vehicle”. Our understanding is a bit different today from what it was in the 18th century. But we and the Framers could agree on which of today’s vehicles are “land” vehicles. So it is too on the ambit today of “useful arts”.

  30. Max states “I had thought that SCOTUS… lest their definition prove less than future-proof

    Doesn’t this thought neccesitate the very opposite of Max’s premise that the Useful Arts were locked in place at the time of the founding fathers (Max’s “absolute” position)?

    If something has to be future proof, how can it be locked in place at the time of the founding? How can Max have this thought about future proof and have his incongruent thought about locked in place at a specific time?

    Maybe astonished will do everyone a favor and state this so very clearly. Don’t worry astonished, you won’t be adding to the substance, as you are merely asked to put this in proper form. Are you up for that? It’s your moment to shine.

  31. P@s Face,
    Why would you try so hard to get the Trademark only to hide it from me now? And they say I’m crazy?
    Maybe you need to see a Doctor. I don’t think that type of sickness has a label. Now I get it you do have a label. Rainman! Please leave the Savant at the Door!

  32. Ned: Citing this page does not help you win your argument that there is an extra requirement for processes beyond U.S.C. 35.

    In fact it does the opposite and drives a nail in the coffin so to speak, to your proposition.

    “Today, the Court once again declines to impose limita- tions on the Patent Act that are inconsistent with the Act’s text.”

    To sum up our discussion we have established:

    There is no MOT requirement for process.

    There is no extra requirements for processes whatsoever, that do not apply to machines, compositions of matter, and article of manufacture.

    Now, I would like to see you Ned Heller, behave like a true gentleman and scholar and concede you have lost on the above points in out debate.

  33. CORRECTION IN MY HYPOTHETICAL ABOVE:

    “Even though petitioners’ application is not categorically outside
    of §101 under the two atextual approaches the Court rejects today,
    that does not mean it is a “machine” under §101. Petitioners seek to
    patent concepts of a “machine”. Under Benson, Flook, and Diehr, how
    ever, these are not patentable “machines” but attempts to patent ab
    stract ideas.”

  34. WOW.

    Ned buries himself with a quote from Bilski!

    Worth repeating:
    Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text.

    Declines, as in, says NO. The Bilski decision does NOT go beyond the limitations of the Patent Act.

    This is what Actual Inventor has been saying all along. This is what Ned has been running from all along.

    Capture this page in your favorites folks. Ned has admitted defeat to Actual Inventor!

  35. Maxie: If indeed the Court has said that definitions should take their ordinary, contemporary, common meaning , then I believe the Constitutional Scholar has it right.

    The term Useful Arts can’t locked into 1790, nor locked into the present. The “Useful Arts, must be allowed to evolve with new innovations, so that we “Actual Inventors are able to promote the progress of the useful arts.

    I also agree with the Constitutional Scholar that you seem to want to lock down a definition of “useful arts, either in the past, or present, which of course would make it impossible for us to progress. Therefore your approach sounds highly unconstitutional. Hope this helps. Well, I am off to watch the sun set and enjoy the tropical air.

  36. Ned, your quotes do not show an extra requirement for processes, beyond U.S.C. Title 35 .

    The quotes only go to show the panel perceived Bilski’s patent application to be directed to an abstract idea.

    An abstract idea is a Court created judicial exception that applies to ALL the categories of patentable subject matter, not exclusively to processes.

    In another hypothetical case, the Courts could have just as easily said;

    “Even though petitioners’ application is not categorically outside
    of §101 under the two atextual approaches the Court rejects today,
    that does not mean it is a “machine” under §101. Petitioners seek to
    patent concepts of a machine. Under Benson, Flook, and Diehr, how
    ever, these are not patentable processes but attempts to patent ab
    stract ideas.”

    Same could be done for compositions, and articles of manufacture.

    Therefore the abstract idea exception can’t be an extra requirement for processes, that does not also apply to all the other categories of patentable subject matter.

    Now, for the record:

    1. You have been forced to concede the law does not require process claims to pass the MOT.

    2 . You have failed to prove there are “extra” requirements for processes, beyond U.S.C. Title 35, that do not apply to the other categories of patentable subject matter.

    :: Bangs Gavel::

  37. astonished,

    Your entire post is nothing but form over substance.

    You choose to comment on mere form and add nothing of substance to the conversation.

  38. especially given the frequency of your postings.

    OH NOES, it’s the great Troll-Sockie conspiracy!

  39. AI: "If the law does not require process claims to pass the MOT then where in, Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?"
     
    "Even though petitioners’ application is not categorically outside
    of §101 under the two atextual approaches the Court rejects today,
    that does not mean it is a “process” under §101. Petitioners seek to
    patent both the concept of hedging risk and the application of that
    concept to energy markets. Under Benson, Flook, and Diehr, how
    ever, these are not patentable processes but attempts to patent ab
    stract ideas."
     
    From Bilski, Synopsis desribing Section III
     
    Then,
     
    "
    Today, the Court once again declines to impose limita
    tions on the Patent Act that are inconsistent with the Act’s
    text. The patent application here can be rejected under
    our precedents on the unpatentability of abstract ideas.
    The Court, therefore, need not define further what consti
    tutes a patentable “process,” beyond pointing to the defini
    tion of that term provided in §100(b) and looking to the
    guideposts in Benson, Flook, and Diehr."

  40. That’s high quality gibberish there

    Huh? Why?

    that from SCOTUS no definition of “useful arts” has yet emerged.

    But SCOTUS has defined the term. Why are you having such trouble understanding this? The term is understood to have a contemporary meaning.

    You seem to think that the definition must be locked down (either your preference of at the time of the founding fathers, or at some other time of a Supreme Court decision). The fact that the term’s actual meaning floats with any current modern understanding does not mean that the Supreme Court has not defined the term.

    You are trying too hard to not understand.

  41. Great astonished, now that you are done with the English lesson, perhaps you can restate the message in more clear terms.

    You do understand the message, right? Or are you lost in the forest, so busy counting trees?

  42. “it was a combination pincite of more than one Supreme Court case, dealing with defining terms not otherwise explicitly defined”

    That’s high quality gibberish there, Scholar. My compliments. Thanks for confirming that from SCOTUS no definition of “useful arts” has yet emerged.

  43. Even your own comment is improperly formatted and error-prone (for example, you do not place an ellipsis at the beginning of a quotation to indicate the omission of material …

    LOL – That’s the best you can do? I wasn’t criticizing your formatting, my friend. But since you are clearly oblivious, let me hold your hand:

    One needs not understand what you purport the SCOTUS justices wrote in Bilski to see your treatment in the immediate context of reply to Anon is clearly a strawman per the Nizkor link.

    Burying your main point in the middle of a long sentence is usually a bad idea. This is especially true when your main point is expressed passively. Readers must pull a subject and verb phrase from your sentence to make sense of it; this is remarkably hard to do with the above sentence. I understand (after considerable effort) that the main point in this sentence is “your treatment is clearly a strawman.” Leaving aside the rather odd choice of the word “treatment,” the key verb here (“is”) is discovered only after crawling over and considering several action verbs (understand, purport, wrote, see). Making things worse, this key verb is separated from its subject by several rather unhelpful prepositional phrases. This is poor writing, whatever the context.

    “jurisprudence has been shown to have a view …”
    A bit wordy perhaps, but definitely not unclear.

    Wordiness is not the issue. “Jurisprudence” does not have a view. Personification can be a very effective rhetorical device when it puts a clear image in the reader’s mind. Here, however, it is confusing, and slows the reader unnecessarily.

    “pincites, for which, you greeted …” Being around the block more than once would help with this one.

    Perhaps, but I suspect that an understanding of the basic rules of grammar would help more.

    You do know that this is a comment section on a blog, don’t you?

    I certainly do. However, my guess is that your legal writing is even more convoluted than the missives you post here. Perhaps that works for you, but I bet you are annoying your readers in that context as well. You are not likely to accept advice from me, but I suggest that striving for clarity in this forum would be good practice, especially given the frequency of your postings.

  44. Where’s the definition; what is the elusive “pincite”?

    Asked and answered – more than once.

    btw, it was a combination pincite of more than one Supreme Court case, dealing with defining terms not otherwise explicitly defined.

  45. Max I understood him to be referring to EXAMPLE: Statute 263 (a)…. (a) would be the pincite. Or if I said a Dog a black Dog black would be the pincite… If I am wrong, I don’t get it either.

  46. Sorry AI, misunderstanding. I don’t want the definition of “pincite”. Note the semi-colon.

    Rather, I want the pincite which will take me, in Bilski, to the definition of “useful arts”.

  47. Now I want you to ponder this… “If” it was H.H. that made that diagnosis. Consider the source…. Consider the weight it would carry…. And I would then yell FOUL. That is a 3 point Shot. SWISHHHHHHHHHHHHHHH…….

  48. Oh and Maxie, I know you are trying to run interference and save our friend Ned from having to answer the question I asked, but Ned is going to have to face this on his own. He will either answer, or evade. Now I have a beach to attend to and don’t have one of those fancy phones that brings patently O to my lounge chair like Ned does, so I may miss the answer. But there are enough astute attorneys and commenters here to keep Ned accountable , if he so chooses to participate.

    You Maxie, on the other hand, will have to face your own legal hounds that have you cornered and up a tree on useful arts. I can be no assistance to you there.

  49. Maxie: Where’s the definition; what is the elusive “pincite”?

    AI: From google searches on legal pin cites I found the following:

    “A pinpoint citation, also known as a pincite, directs readers to the specific portion (page or footnote, for example) of a source that supports a stated proposition.

    For a source in which the first page is identified in the citation (such as a case or law review article), the pinpoint citation is located immediately after and separated by a comma and one space:

    Case. Century Indemnity Company v. Certain Underwriters at Lloyd’s, 584 F.3d 513, 528 (3d Cir. 2009).
    Law Review Article. Jeffrey P. Bauman, Standards of Review and Scopes of Review in Pennsylvania — Primer and Proposal, 39 Duq. L. Rev. 513, 516 (2001).
    But for a source such as a statute or book, the pinpoint citation is found directly after the title:

    Statute. 71 Pa.C.S. § 5302 (2010).
    Book. Black’s Law Dictionary 478 (9th. ed. 2009).”

  50. Do me a favour will you, AI. I am being assailed for my position on “useful arts”, am being told that SCOTUS in Bilski gave us a definition of “useful arts”. Anonymous posters keep on referring to a “pincite”. I don’t remember that definition though.

    You see, I had thought that SCOTUS in Bilski baulked at excluding “business methods” per se, as a class, from patent-eligibility. That makes sense, given the European experience since 1978, and given your view, that even methods of making coffins are business methods.

    I had thought that SCOTUS in Bilski was careful to avoid defining “useful arts”, lest their definition prove less than future-proof. That makes sense too.

    I daresay you have read Bilski more times than me. Where’s the definition; what is the elusive “pincite”?

  51. Ned, did you not say at Mar 09, 2012 at 03:34 PM, “the law does not require them to pass the MOT.” referring to “processes” as them? The answer according to the blog record of course is yes.

    Now, your postulation of Corning v. Burden, Cochrane v. Deener and Benson is noted but not what was called for, or the cases asked about. Please allow me to repeat the question in context:

    AI: “If the law does not require process claims to pass the MOT then where in, Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?”

    If your conjecture on Corning v. Burden, Cochrane v. Deener and Benson is supposed to be your answer then I must point out it is not a proper pin-cite, and not even a direct quote from any of the cases. And thus you have still failed to answer the question.

    If you are inferring that Diehr, and Bilski imposed extra requirements on processes as defined, or so instructed in Corning v. Burden, Cochrane v. Deener and/or Benson, you have still failed to provide the proper pin-cites to those quotes from Diehr, and Bilski.

    In fact you have never, as of yet, stated what those “extra requirements” for processes are.

    Now you have repeatedly, and some would argue deliberately, avoided answering the above question.

    So again, I ask, please answer the original question, which I repeat for clarity of the thread.

    AI: “If the law does not require process claims to pass the MOT then where in, Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?”

  52. AI, you didn't see the quote?  It must have been deleted or not posted by the "filter."

    However, if you look at the cases, they all rely on Supreme Court cases dating back to the 1800s for their authority. In all these cases, and there a lot of them, not once did the Supreme Court ever say they were interpreting a statute.

    So the practical matter, the very definition of a patentable process comes from the Supreme Court. In the original cases they, defined a patentable process in cases like Corning v. Burden and Cochran v. Diener.  These cases essentially describe what we now know to be the MOT. Thus if a claimed process falls within the MOT, it is a traditional process and is clearly patentable subject matter.

    Benson is probably the first case that I know of that turned to the "exceptions" to determine whether and how the exceptions applied to processes.  Thus, while a claim that passes the MOT was and is always patent eligible, a claim that did not, could run afoul of the exceptions; and the exceptions include claims to mental processes (steps) and claims that are abstract.

    That is what Benson was all about. It is been followed consistently since. The law regarding the patentability of processes is entirely Supreme Court case law, and it is completely nonstatutory.

  53. Responding to him by not answering his questions? By telling him (and still not giving pincites) about other cases?

    That’s what you do with everyone. Run away and hide behind false answers and smokescreens. How is that restraint? The acts of a charlatan, maybe.

    Hmm, a restained charlatan. So that’s like pulling the wool over your eyes gently?

    Or do you want to just fess up that you are making all of this up?

  54. Ned: “Regarding your question, I just reply with a long quote from Benson.”

    AI: Ned, I did not see a long quote from Benson. But even if you did provide one, that is not the subject of the question I asked you to answer. Please answer the question directly, honestly, and on subject. Here, let’s try again

    We have already established that you concede there is no requirement for processes to pass the MOT. What I am asking now, is

    Where in Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?

  55. Try again, I am discussing this with AI, not with you.  I'd wish that you would butt out.  AI has shown a lot of restraint and courtesy in his recent posts.  I will respond in kind — to him.

  56. AI, no you have not.  And I have responded to each of YOUR posts with the same respect you showed me.

    Regarding your question, I just reply with a long quote from Benson.

  57. I am not asking for links to the cases. That is not what a pincite is. Do you know what a pincite is? Can you provide a pincite, and not just a case name?

    Why are you getting mad when it is you that is not complying?

    I should be getting mad at you. How many times do you want to Try Again?

  58. Provide the proper cite and legal reasoning and your wish will become fulfilled.

    Futz about as you do and I remain, forever a thorn in your side.

  59. Ned, I have not been rude to you in any way in this exchange. I asked for Bilski and Diehr and you gave two other cases. Please provide the proper pincite for Bilski and Diehr. Here, let me repeat the question so it is all in context.

    We have already established that you concede there is no requirement for processes to pass the MOT. What I am asking is now, is where in Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?

  60. Ned: We have already established that you concede there is no requirement for processes to pass the MOT. What I am asking is now, is where in Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?

  61. Try, who do you think you are?  All one has to do is type those case names into any browser and you will find them.  Suggesting that I am obstructing justice or avoiding issue simply by not spoon feeding you the links is beyond the pale.  It is what if find so galling about even attempting a discussion with you folks.  Every conversation, no matter how polite to begin with ends in sh it like this.

    Begone you S O B.

  62. Ned: AI, I urge to actually read Corning v. Burden and Cochrane v. Diener. Your answer it there

    AI: Once again, and with all due respect , it does appear you have ducked the question I specifically asked you. I am not asking about Corning v. Burden and Cochrane v. Deener at this time, So I repeat the question:

    Ned: AI, the law does not require them to pass the MOT.

    AI: If the law does not require process claims to pass the MOT then where in the statute, or Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?

  63. Beg all you want, those cases are constrained to the facts therein. NEVER has MOT been elevated to an actual requirement with the passing of such meriting sufficiency.

    A clue is just not the same thing as a requirement.

  64. Urge you to actually read

    Is that a code phrase that you cannot supply a cite to those references and that the references as a whole are what you use to come up with your “feel” of the law on this subject?

    I am pretty sure the simple request was for you to provide a pincite.

    All I see in response is warm and fuzzy nothing.

  65. Ned: AI, the law does not require them to pass the MOT.

    AI: If the law does not require process claims to pass the MOT then where in the statute, or Diehr or Bilski is the extra requirement for processes, beyond U.S.C. Title 35 ?

  66. Try, get real.

    Simply read Benson. What cases did it rely on?  Cases all from prior to 1952.  Read those cases.  What did they rely on?  

    Their own cases.

    There is no statutory exclusion of laws of nature, etc.

    Get over it.

  67. Is “artifact” a fancy word for “Gee, I cannot give an actual citation because my meaning comes from my interpretation of the decision as a whole” ?

    In other words, you are still making things up.

  68. Ned, with all due respect, you did not answer my question. It is an honest and simple question that requires an honest and simple yes, or no answer. So I repeat.

    Do you believe that in addition to the conditions and requirements of U.S.C. Title 35, process claims must pass the MOT?

    Yes or No.

    If yes, please quote the section in Bilski that says so.

  69. No. Not Correct.

    Passing 1) alone is not good enough, and failing 1) alone is also not decisive.

    The test was only a clue (h_ate to use the phrase, so laden with emotion it is).

    In other words, even passing the test is not conclusive of patent eligibility. Failing or passing, something more is required. You will nootice that good office actions written in accordance with the Office directions post-Bilski still use the test, but only as a clue and always with some other clue.

  70. AI,

    Patentable if

    1) it passes the MOT; OR

    2) it passes some other test yet to be articulated by the Federal Circuit.

    This is an artifact of the holding by all nine justices of the Supreme Court that the MOT was not an exclusive test. Passing the MOT is sufficient for the subject matter to be patentable. Failing the MOT, though, is insufficient to declare that the subject matter is ineligible.

  71. Way, I invite you to read Mayer’s dissent on his point about stare decisis.

    As well, trace the history of double patenting.

    Finally, did you know that the law of invention was extra-statutory until 1952. The law of patentable subject matter grew out of the law of invention. It has never been codified, with one exception. There was some debate about whether the new use of an old machine could be claimed as a process. That ambiguity was ended by its specific inclusion in 100(b).

    There was a blog post last year, IIRC, that discussed patentable subject matter and lamented that Congress had not included in the new act any formal exclusions of “laws of nature” etc., that are now well established in the Supreme Court jurisprudence. This law review article recognized, as we all should, that the exclusions are not expressly stated in the statute, meaning that even though 102/103 says that one is entitled to a patent unless….; that language is not followed by the Supreme Court.

    Now Plager, as have I numbers of times here on Patently O, has pointed out that §282 limits the defense of invalidity to four sections of title 35: §§102, 103, 112 and 251. Clearly double patenting and patentable subject matter as well as substantial utility are not listed. They remain extra-statutory conditions.

    Now the question becomes whether Congress intended to limit validity defenses to those they enumerated in the statutes when they passed the ’52 Act. Plager is edging close to that. But this concept is so revolutionary that it will take time and discussion before it is accepted.

  72. AI, your selective quote twists my meaning beyond recognition.

    I think not. AI is just reflecting your posts. This excuse gets really old, really fast.

    If you have a problem with what you say, then learn to say it better.

  73. Okay Ned then let’s clarify:

    Do you believe that in addition to the conditions and requirements of U.S.C. Title 35, process claims must pass the MOT?

    Yes or No.

    If yes, please quote the section in Bilski that says so.

  74. At the same time, this answer is too broad, too narrow, and completely misses.

    Completely misses in that the claim to “patentable subject matter especially regarding process claims has always been extra-statutory” is what is to be substanitated. This is not done with a conclusory statement.

    Too narrow in that specific defense and exceptions are not included in the topic being discussed. There is no point to include any codificaiton related to the ’52 Act.

    Too broad in that the exclusion of the laws of nature was noted in the original comment as an exception to the topic.

    I have no idea what Ned is saying with “never coupled its jurisprudence to a specific statute

  75. AI, your selective quote twists my meaning beyond recognition.  Why do you even suggest that I should respond to an out-of-context quote that amounts to a misquote.

  76. Anon, but patentable subject matter especially regarding process claims has always been extra-statutory.  What about the '52 act is clearly indicates that Congress intended to overrule patentable subject matter and for that matter, double patenting, from validity?  These two defense have never been statutory in the first place.  There is double-patenting exception listed anywhere in the patent statute.  Neither is there an exclusion based upon laws of nature, etc.  We now loosely identify these defenses with 101, but the Supreme Court has never coupled its jurisprudence to a specific statute in either area.

  77. astonished is not the right word. Found dxmb would be closer.

    Let me see if I can translate So Very Clear’s post to a first grade level for you.

    … your treatment … is clearly a strawman …

    Max’s rebuttal post at 9:01 AM was a smokescreen. It had nothing to do with the first point that in the response to Anon at 2:37 AM, Max presented position Y (which is a distorted version of X).

    The Y and the X were noted at 7:30 AM in the post by All that straw and the horses won’t eat. Do you need me to explain that as well? Do you get how “too open” is distorted by Max to “persists in keeping an open mind” ?

    jurisprudence has been shown to have a view …

    A bit wordy perhaps, but definitely not unclear. You seriously cannot tell me that every case you have read in your schooling and career was never more difficult to decipher. No doubt, this was an attempt at politely saying that Max is simply dead wrong on what the meaning of the law is. Although I think directness on this point will be just as ignored as politeness, directness is far more fun.

    pincites, for which, you greeted …

    Being around the block more than once would help with this one. This is not the first time that Max has been taken to task for purposefully getting the Useful Arts meaning wrong. At one point Anon carfeully laid out pincites to Supreme Court decisions in an attempt to teach Max the error of his ways. Like that would ever work. Max doesn’t care whether he’s right or not. Max only wants to spew his agenda.

    Lastly,

    do you write legal documents in this manner as well?

    You cannot be serious with a question like that.

    You do know that this is a comment section on a blog, don’t you? The “rules” are not so tightly held. Even your own comment is improperly formatted and error-prone (for example, you do not place an ellipsis at the beginning of a quotation to indicate the omission of material, see link to kentlaw.edu )

  78. Ned,

    You took my comment in a different direction than intended, I was aiming more for the “and are not inconsistent with [the legislated Patent Act’s] text” limitation to anything the Federal Circuit (i.e. case law) comes up with. The case law cannot be incongruent with the text of the Act itself, and inserting an ultra vires limiting criteria that is inconsistent with the Act simply would not be allowed. The recent Golan case can again attest to exactly who has the upper hand when it comes to the patent law.

    As for your Office Action, you have a ready made start – personally, I would not stop there – as the examiner has improperly applied case law. The examiner has quoted from the CAFC decision in a portion that was expressly rejected by the Supreme Court case. That, without more, is clear legal error.

  79. I can’t help but wonder whether the irony in this post is intentional. “So Very Clear” has produced four sentences that are very nearly incomprehensible. “… your treatment … is clearly a strawman …” What does that mean? “… jurisprudence has been shown to have a view …” Does jurisprudence have a view? “… pincites, for which, you greeted …” What?

    Serious question, So Very Clear: is this just an artifact of hurried posting, or do you write legal documents in this manner as well?

  80. MaxDrei,

    One needs not understand what you purport the SCOTUS justices wrote in Bilski to see your treatment in the immediate context of reply to Anon is clearly a strawman per the Nizkor link.

    Besides that, the Bilski and other Supreme Court jurisprudence has been shown to have a view of Useful Arts not limited to the founding fathers. Anon even provided pincites, for which, you greeted with your typical “closed-eyes” I-cannot-see reasoning.

    The more you struggle to hold onto a view shown to be false, the more ludicrous your use of “an open mind to learn” becomes.

  81. I clicked on your Link, Nizkor, and found something about a lot of murders that took place in Europe in the years immediately prior to 1945. So I will assume you are not a patent attorney.

    I can see that you understand the concept of a straw man, but do you also have a page that explains what is meant in the Patents Clause by “useful arts”? Have you read what the nine SCOTUS judges wrote in the Bilski case? I think you need to understand that before you announce that I am the one who is arguing relative to a straw man.

    In any event, your statement:

    “the one here by MaxDrei is better due to the underlying propensity context”

    makes no sense. Sorry.

  82. Description of Straw Man

    The Straw Man fallacy is committed when a person simply ignores a person’s actual position and substitutes a distorted, exaggerated or misrepresented version of that position. This sort of “reasoning” has the following pattern:

    Person A has position X.
    Person B presents position Y (which is a distorted version of X).
    Person B attacks position Y.
    Therefore X is false/incorrect/flawed.

    This sort of “reasoning” is fallacious because attacking a distorted version of a position simply does not constitute an attack on the position itself. One might as well expect an attack on a poor drawing of a person to hurt the person.

    link to nizkor.org

    There are a few examples, but the one here by MaxDrei is better due to the underlying propensity context.

  83. The funny part is that both MaxDrei and Leo seriously think as they do.

    Clueless? try brainless. Of course, that fits with what Dorothy’s flaxen friend most needed.

  84. Hmm, Anon says “too open” and MaxDrei twists that to “if one persists in keeping an open mind

    It’s like MaxDrei is trying way too hard not to learn in his efforts to hold onto his chosen understanding.

    Anyone have the link to the definition of strawman that appeared on these boards awhile back?

  85. When I wrote that “you” means nothing, I was replying to postings coming from one or several posters who use a different name each time they post. So “who” are they? I don’t know.

    Nice of you to share with me your philosophy that, if one persists in keeping an open mind, one’s brains might fall out. No danger of that in your case, I’m sure.

  86. AI: In fact, are not all inventions subject to the same conditions and requirements of U.S.C. Title 35? Or, are you saying processes must meet additional requirements that machines, compositions, and articles of manufacture do not?
    If your answer to the above is yes, then please cite those additional requirements in the statute, and/or the Supreme Court case in Bilksi.

    Ned: Yes. ” But in addition, process claims must pass the MOT,”

    AI: Ned please cite in Bilski or in Diehr, which controls, where the majority said “process claims must pass the MOT”.

    I do not believe you can make the above citation because it’s simply not there. I do believe you are reading things into the Courts opinions that do not exist. Of course you can prove me wrong with the proper cite and finally have your victory and vindication.

  87. to the extent that I argue what appears to be existing law

    D_amm, my BS meter just went off the scale.

  88. No basis in statutory law?
    Obviously Plager agrees with you, and I agree to some extent. Plager relies on §282 for its limitation of the statutory defense of invalidity to Conditions for Patentability, which are §102 and §103, and §112 and §251. But then look at Mayer's dissent. He cites "stare decisis" as the authority to investigate 101 issues beyond statutory requirements set forth in section 282.
    Obviously, again, the requirements regarding patentability of processes has always , since at least Cochrane v. Diener and Benson, been subject to the exclusion we now know as "abstract concepts and mental steps."
    Just an example, check this from an office action that I am currently have before me:
    "Based on Supreme Court precedent (See also Diamond v. Diehr, 450 U.S. 175,
    184 (1981); Parkerv. Flook, 437 U.S. 584, 588 n.9 (1978); Gottschalkv. Benson, 409
    U.S. 63, 70 (1972); Cochrane v. Deener, 94 U.S. 780, 787-88 (1876)) and recent
    Federal Circuit decisions, a §101 process must (1) be tied to a particular machine or
    apparatus (machine implemented) or (2) transform underlying subject matter (such as
    an article or materials) to a different state or thing. In addition, the tie to a particular
    apparatus, for example, cannot be mere extra-solution activity. See Bilski v. Kappos, 95
    USPQ2d 1001 (US 2010).
    An example of a method claim that would not qualify as a statutory process
    would be a claim that recited purely mental steps.
    To meet prong (1), the method step should positively recite the particular
    apparatus (the thing or product) to which it is tied. This may be accomplished by having
    the claim positively recite the machine that accomplishes the method steps.
    Alternatively or to meet prong (2), the method step should positively recite identifying
    the material that is being changed to a different state or positively recite the subject
    matter that is being transformed.
    Based upon consideration of all of the relevant factors with respect to the claim
    as a whole, claim 46 is held to claim an abstract idea, and is therefore rejected as
    ineligible subject matter under 35 U.S.C. 101. The rationale for this finding is explained
    below:
    The claim includes an insufficient recitation of a machine or transformation
    because the involvement of machine, or transformation, with the steps is merely
    nominally, insignificantly, or tangentially related to the performance of the steps, and
    merely involves insignificant extra-solution activity."

  89. I would be please to reanwer, as you suggest, but I hardly knew what the question was as Actual Inventor did not include the question in his post that I read in my e-mail.

  90. anon, if we count all the posts to me as coming from one person, then the post count pro and con are equal.

    We have interesting discussions here on what Supreme Court meant in when it declared the claims in that case to be abstract. At best, the language they use in the case was obscure. Discussing what the case meant surely cannot be a crusade.
    We've had interesting discussions here on computers and just when a programmed computer becomes a new machine. Discussing this interesting topic surely cannot be a crusade to the extent that I argue what appears to be existing law and my opponents appear to be asking for an extension of existing law.
    We have had interesting discussions here about Prometheus.
    We have had interesting discussions here about articles of manufacture claims.
    It all of this, my viewpoint typically as that of the government. I find their positions on these topics quite persuasive.
    Now in all of this, save for Prometheus, my interest is more than just academic. I actually prosecute computer software and business method patent applications. I am seeking to understand, as best I can, the law in order that I can prosecute these patent applications and claims appropriately. I suspect that is your interest too.

  91. Excuse the last message as it crossed posting times with your reply.

    Ned, you do realizze that your reply introduces ultra vires legal reasoning and that it will be a waste of time trying to find such basis in case law. The fundamental reason is that beyond the three exceptions, the Supreme Court has always emphasized that case law must be in accord with the legislative law.

    Your belief that processes must meet additional requirements that machines, compositions and articles of manufacture do not has no basis in the legislative law.

    Zero.

    You are making things up out of whole cloth.

  92. The polite thing to do Ned would be to re-answer the question.

    Seriously, “Regardless, I did answer your questions as far as I know” instead of a new “yes” of a new “no”?

    It’s a straight up question and there is no excuse for your lack of a candid response. I lost it iin the emails is gone, because AI reproduced the question for you.

    I will afford you the same generosity:

    In fact, are not all inventions subject to the same conditions and requirements of U.S.C. Title 35?

    Or, are you saying processes must meet additional requirements that machines, compositions, and articles of manufacture do not?

    If your answer to the above is yes, then please cite those additional requirements in the statute, and/or the Supreme Court case in Bilksi.

  93. AI:

    "Are you saying processes ( including so called business methods) must meet additional requirements that machines, compositions, and articles of manufacture do not?"

    Yes.

    All claims must have substantial utility. But in addition, process claims must pass the MOT, or if they fail to pass the MOT, must pass some other test which the Supreme Court in Bilski left for the Federal Circuit to devise.
    That is not say that some claims that are normally directed to machines are articles of manufacture are not treated as process claims. The numbers of cases where apparatus claims have been treated as process claims for the purpose of section 101 analysis. And there is that recent case, believe it was CyberSource, where the Federal Circuit treated an article manufacture claim as if it were process claim.
    For case authority, you can start at Benson, then go to Diehr, then finally to Bilski.

  94. Further MaxDrei,

    You cannot ignore your way out of a problem that you have ignored your way into.

    There is a substantial lack of attempt of understanding on your part to understand what and why the case law on Useful Arts is. You keep on merely and close-mindedly repeating your belief and saying everyone else is not trying to understand – at the same time parroting that “you can’t see.”

  95. not seen in an era of industrial processes

    Ned, that is a meaningless tautology.

    Definitely not something that supports the crusade-level of your attention on the topic. Definitely not something that supports the innuendo and semantics that you apply to posts on the topic. Definitely not something that supports the “my objection has always been” because most of the time it is your posts that are instigating the matters. It is you that harp for Dennis to post on 101 cases, not AI. It is your posts that outnumber anyone else’s on the subject.

    So I repeat – again – my statement from above in response to your posting – again:

    Why do you even start down that path? All you are doing is inviting confusion and kicking up dust.

    Please stop.

  96. Ned, all I am requesting is a simple yes or no answer to the following question.

    Are you saying processes ( including so called business methods) must meet additional requirements that machines, compositions, and articles of manufacture do not?

    If your answer to the above is yes, then please cite those additional requirements in the statute, and/or the Supreme Court case in Bilks

  97. My e-mail said 5:46.  The blog itself may have said 8:46.

    Regardless, I did answer your questions as far as I know.  

    I assume you are AI.  I have received no emails on this topic today from anyone else that AI or anon.

  98. Morning, you make an assumption here that I actually read your posts or the blog.  I sometimes do, sometimes not. 

    If I receive a post in the mail, however, I try to respond.

    Now, since you refer to posts at particular times and I am responding by e-mail, I have no idea what you are talking about.  As far as I know, I was engaged in a rather polite conversation with AI and anon.  You, I presume, are not one of those two.

  99. Ned I have no post at 5:46 that I can find. Unless you meant 8:46 pm.

    Otherwise stop playing games!

    You and I have agreed on nothing until you address my questions above. I will repeat the most pertinent one.

    “Are you saying processes ( including so called business methods) must meet additional requirements that machines, compositions, and articles of manufacture do not?

    Yes, or No?

    :: Waits::

  100. What post?

    You have not addressed the points I made nor answered any questions I presented. at..

    Mar 07, 2012 at 05:29 PM

    Mar 07, 2012 at 08:42 PM

    Despite numerous commenters pointing out the flaw in your logic you have simply ignored it and continued on to the next topic, as usual.

    You brought this subject up without anyone asking or provocation, as usual.

    And this is why you are known on this board as dishonest Ned, a troll , and deserved to be vilified on this blog for such behavior.

    What you need to do now in any hopes of redemption is to

    Apologize for your lies.

    Admit you were wrong.

    And it while would be helpful if you explained your reasons, most important you should pledge to never say or imply again that business methods are non statutory subject matter, until, and unless, the Supreme Court expressly holds so.

  101. anon, you have to admit that software patents and BM patents raise issues or patentability not seen in an era of industrial processes.  Saying there are concerns is different from saying they are categorically excluded, which I do not say. 
     
    My objection has always been with the way some people say or suggest that Bilski held that BMs are eligible… then stop without more.  That quote is not accurate, and the suggestion that BMs are categorically eligible is not even close to what happen in the case itself.

  102. Exactly–see my earlier comment, second on this thread.

    The court cannot avoid 101 analyses in those instances where 102, 103, etc. are found to be satisfied and a pled 101 defense remains, or where only a 101 defense is pled.

    So where does that leave those litigants? The majority here is essentially acknowledging that 101 jursiprudence is cr@p, and that any decisions based upon the current formulation are in the best-case scenario unlikely to produce well-reasoned opinions, and in the worst-case scenario are unlikely to produce outcomes that further the interests of justice.

    Nice. The only thing to do is to brief and argue a case thoroughly, preserving all issues for appeal, then apply for cert to the SC and hope that it’s granted, because the CAFC has evidently decided to sit on its hands WRT 101.

    Ahh, the public sector. Where’s the accountability of the CAFC? Nowhere, that’s where.

  103. AI, regarding your post at 5:46.  We agree.  Just say things like this or that BMs are not categorically excluded, and we will get along just fine — at least on this topic.

  104. Ned,

    You are crusading again. Your comment of “That has changed dramatically with people trying to patent software and people trying to patent business methods” has an implicit meaning that such attempts should not be undertaken.

    This reinforces the problem with the verbiage and semantic games on “patent eligible” that you are discussing. In that sense, you indeed are to “blame.” People are sensitive to attempts to foreclose these areas completely from the patent arena, and your highly selective emphasis (along with other thoughts you have posted on the subjects) do invite such responses from AI and others.

    While a discussion on the merits may be worthwhile, endless repetition and unanswered points are not. You speak of patterns, but that is also a pattern easily noticed.

    So I repeat – again – my statement from above in response to your posting – again:

    Why do you even start down that path? All you are doing is inviting confusion and kicking up dust.

    Please stop.

  105. Mind you, as “you” is a meaningless concept

    MaxDrei,

    I would think the opposite.

    Understanding where someone is coming from helps a great deal in understanding and adjusting for bias and possibly incompatible views.

    While this does in fact develop over time and initially will be guessed at (the sense or otherwise factor is correct), it very much is “of consequence” to the answers given. The whole “mind open for learning” requires proper orientation. With no references, a mind too open is liable to have the brains fall out.

  106. You say you are a US practitioner. The world is full of “practitioners” of this, that and (especially) the other. For the time being I will suppose that you also are no Registered United States Patent Attorney.

    Mind you, as “you” is a meaningless concept, it is of no consequence what answer you give. On this thread, we each of us has to decide on the sense (or otherwise) of the postings without any knowledge of who is writing them.

  107. So, the one who for weeks now has been fixated upon my “reputation for dead horses at your trough”

    Sorry for stealing the line, but it fits you so well. And yes, deluding yourself is likewise apt, as you somehow convince yourself that you have an open mind for learning, yet close it to all views that don’t match your preconceived notions. The “everyone else must be wrong” and they must have a closed mind to learning is especially funny as I understand you not even to be a US practitioner. Us US practitioners must have everything wrong if we don’t match your EP wonderland model, is that it? I guess that your mind is open and ready for understanding but only if you are understanding the EP way.

  108. Max, I mean Pimple… The North Pole will be needing a Patent Atty. Someone has just invented the Ice Cube. And it seems he needs help making Models for his 100.00 Application that cost him 16 years to Discover and a MILIIOOONNNNNNNNNNN DOLLARS worth of work to get it just right.

  109. So, the one who for weeks now has been fixated upon my “reputation for dead horses at your trough” now reports his finding that I’m “deluding myself”. That is rich.

    What with Gene’s renewed energy, Sarah active again, a proliferation of nondescript gibberish posters, and excessive thread dilution, how’s the promised contributions filter coming along Dennis?

  110. The thought you profess about seeming so simple applies in reverse as well, as in, the Courts have spoken, and yet you refuse to change your position.

    It is one thing to say that “being desirous of understanding” is great when it is the other guy who needs to change his thoughts. But when it is you that needs to change, all of a sudden, it’s “so simple” that your view must be the right one and that the other guy must (again) change his thoughts.

    You are deluding yourself. Your reputation for dead horses at your trough is fitting.

  111. Concepts like “democracy” “criminality” and “greed” meant something to the Framers and carry the same meaning today. However, individual acts which, back then seemed fully democratic might, today, strike one as undemocratic: who gets to vote, for example. But the concept of “democracy” stays the same.

    So it is with the concept of the “useful arts”. Artefacts of today, which the framers could not have dreamed of, can still be categorized by us, today, as belonging to the useful arts, Y/N.

    Thus, at the EPO, some claimed computing methods belong to the useful arts and others don’t.

    It seems to me so simple. I can’t see how any professional reading here could misunderstand, unless he’s one of those that is “desirous of misunderstanding”

  112. Excuse me Ned, but you categorically ducked my question above, and with apologies to anon, whom I am sure is well in front of me in the line to get answers from you, I would really appreciate if you answer my question now.

    Here, I will repeat it below:

    In fact, are not all inventions subject to the same conditions and requirements of U.S.C. Title 35?

    Or, are you saying processes must meet additional requirements that machines, compositions, and articles of manufacture do not?

    If your answer to the above is yes, then please cite those additional requirements in the statute, and/or the Supreme Court case in Bilksi.

  113. AI:So why keep posting a lie that every patent professional and Actual Inventor too, can see right thru?

    Ned: Because AI, you continue to assert that business methods are patent eligible.

    AI: Okay, all jokes aside. I honestly don’t understand your logic here.

    Why exactly can’t I assert that business method patents are patent eligible?

    I happen to own them.

    I have nice certificates from the PTO for them.

    Neither the Court nor the PTO has told me otherwise.

  114. You haven't. 

    OK, I think you have.  But if you categorically withdraw all prior statements that could be interpreted that way, so be it.  I will drop it on my end.

  115. Because AI, you continue to assert that business methods are patent eligible.  

    You stop doing that and I will lay off.  We seem to agree to a great extent on everything else.

  116. “Look at your own boots to see the evidence of dust kicking. We really don’t need another several hundred post to rehash this.”

    No we don’t. But for reasons unknown, Ned obviously does.

  117. “If he didn’t have Business Methods to go after, what would he do? He would be forced to answer Anon’s software questions and then he would really be Fckd”

    LOL! Okay that was just plain funny. But seriously anon did beat Ned to a bloody pulp in that debate.

  118. Ned:I t is AI who is in effect insisting that Bilski, by analogy, held that BMs were valid when the court actually held that they were not categorically invalid.

    AI: Umm. No. Those are your words Ned. Not mine. My position has simply been,

    Before Bilski went to the Supreme Court, so called business methods were statutory subject matter. And after Bilski left the Supreme Court so called Business methods are STILL statutory subject matter.

  119. Ned: “My argument is with anyone who says or implies that business methods ARE eligible for patenting, with no qualification whatsoever. ”

    AI: Well, I have never said such.

    In fact, are not all inventions subject to the same conditions and requirements of U.S.C. Title 35?

    Or, are you saying processes must meet additional requirements that machines, compositions, and articles of manufacture do not?

    If your answer to the above is yes, then please cite those additional requirements in the statute, and/or the Supreme Court case in Bilksi.

    :: WAITS::

  120. Jezus Frekin Christmas!

    All this happened while I was on an over night flight and sleeping.

    Well, I posted before reading the entire thread but I would still like you to take the test Ned that I posted up thread.

    None the less I don’t have a Jihad, I simply point out this one lie you repeatedly post here on Patently O.

    Everyone seems to agree as well. I am sure even Dennis would agree .

    What I don’t understand, is why you keep doing it over and over?

    You are obviously intelligent.

    And you do know patent law.

    So why keep posting a lie that every patent professional and Actual Inventor too, can see right thru? Seriously. Can you give a reason?

  121. Ned: ”
    Keep, there is a quite a bit a difference between the statement that “business methods ARE eligible” and “business methods are not categorically excluded.” Let us see if you can logically detect the difference.”

    AI: Okay Ned, you went to law school right? Here is a basic test question.

    1. If someone went to the Supreme Court and argued that medical methods should be categorically excluded from eligible subject matter, and the Supreme Court said no, would medical methods then be eligible subject matter?

    Yes or No?

    ( Explain your answer )

  122. anon: “Why do you even start down that path? All you are doing is inviting confusion and kicking up dust.

    Please stop.”

    AI: Ned will never stop. It simply brings him too much joy.

    Never mind the disrespect he shows for the law and his fellow patent professionals.

    He will simply, twist, conflate, and obfuscate with the fallacious hunger of a great white shark.

    But at least he post under his real name.

  123. that the SC has categorically held that BMs are eligible for patenting without any qualifications or limits on that statement.

    Nope. Not at all what I’m about. I’m with Anon on this – see his post at 8:48 AM “Why do you even start down that path? All you are doing is inviting confusion and kicking up dust. Please stop.

    Can’t see that I’m to blame at all. There’s too much dust already kicked up.

  124. Blame, you are one of the a holes it appears.  A an hole takes an argument such as that Bliski held that BMs are not categorically excluded and then jumps to the conclusion the I am trying to exclude whole areas of subject matter from patentability when the real purpose of the A hole is to create the illusion that the SC has categorically held that BMs are eligible for patenting without any qualifications or limits on that statement.

  125. if for no other reason than to keep the comments section of this blog out of the gutter.

    Says the guy who counts as his allies MM and 6.

    Keep the LOLZ coming.

  126. Back in the day, I had to walk to school uphill, both ways.

    blah blah blah software
    blag blah blah business methods

    There is an arse, alright. He’s the one on the Crusade to smite whole sections of patent eligible subject matter.

    No doubt because Ned is paid to do this.

    He should be instructed to view things right, and failing that, should be beat to dust, spanked, or crushed.

  127. “I’ll care when it comes up on a lawlschool exam and not until.”

    So that would be when? Never?

  128. Max, the Shilling and his merry crew of interchangeable monikers seem to be one person, and that person, whoever he is, uses the same terminology in a very consistent basis to describe discussions here:

    “Beat to dust”

    “Spank”

    “Have been instructed”

    “Crushed”

    etc.

    You see the pattern?

    6 has even identified who this person is might be. He seems a blogger that uses the same terminology in his own blog.

    Regardless, this person is an unmitigated arse ..hole who needs to be banned if for no other reason than to keep the comments section of this blog out of the gutter.

  129. Kevin, good post and very persuasive.

    Back in the day, prior to the invention of computers, there was no need for a robust section 101 analysis for most patents. That has changed dramatically with people trying to patent software and people trying to patent business methods. This has forced us to carefully inspect claims involving either for whether they are claiming an improved machine or process, or whether they are claiming some manipulation of an abstract idea.

  130. In other words, you guys totally care about the rules of designating a few paragraphs as a dissent or a concurrence. I’ll care when it comes up on a lawlschool exam and not until. Just like everyone else in the world.

  131. I think, as a practical matter, that treating 101 analysis like a constitutional question is flawed because it only works in one direction–i.e. it only works if you can find some other reason to throw the patent out. If you determine that a patent is valid under 102, 103, 112, etc. you must still look at 101 to determine whether there is patentable subject matter unless the parties don’t contest the 101 analysis.

    I really think we need a robust judicial analysis of 101 and this is not the way to go about it. 101 analysis is more akin, in my view, to subject matter jurisdiction–if you don’t have patentable subject matter it really doesn’t matter whether any of the other validity requirements are satisfied.

  132. There are complete a holes posting here who do not know the difference between these two statements.

    1) The court held the patent to be not invalid; and
    2) The court held the patent to be valid.

    When the a holes assert that a particular class of process claims ARE patent eligible they are committing the same fallacy.

    Now A Hole, and I am addressing you, stop it with your diversionary strawmen.  There are no differences in kind between medical and business methods as far as I am concerned.  Both are NOT CATEGORICALLY EXCLUDED.  Both have to be examined for eligibility.  To suggest that I am saying anything different is where you, A Hole, drive the train off the tracks.

    It is AI who is in effect insisting that Bilski, by analogy, held that BMs were valid when the court actually held that they were not categorically invalid.

    There is a major difference, A Hole.

  133. You guys seem to considerably give a sht whether it is called a dissent or a concurrence. I could not give two dams, I simply stated what I believed to be the reason. If you guys have made up little rules about what this and that are to be called and he violated on your special rules then that is between you and him ya jackarses.

  134. Here’s a reality check for you. Take any post by AI and exchange “Medical” or “Chemical” or “Pharmaceutical” for “Business.”

    What is your reaction?

    Do you even have one?

    LOLZ, Ned don’t do anything that will conflict with his Holy Mission. Especially doing a reality check like that.

    If he didn’t have Business Methods to go after, what would he do? He would be forced to answer Anon’s software questions and then he would really be Fckd.

  135. What’s great is that you don’t even know why you are being spanked.

    And Leo is just as clueless.

  136. Good. Now just stop posting as you did at 7:57 PM. Everyone gets that Bilski’s claims failed. Everyone also gets that Business Method patents are no different than any other type of method patent.

    Rest your Jihad.

  137. The sophistry is yours, not AI’s, and certainly not Anon’s.

    Please re-read my posts. Each of them.

    You are the one trying to take a common sense reading and play sophistry games with it.

    Here’s a reality check for you. Take any post by AI and exchange “Medical” or “Chemical” or “Pharmaceutical” for “Business.”

    What is your reaction?

    Do you even have one?

    The only reason why a reaction exists, is you, not AI. You post hundreds of times in a manner not unlike a Jihad, based on a single category. This is not AI’s doing. This is not Anon’s doing. It is yours.

    Look at your own boots to see the evidence of dust kicking. We really don’t need another several hundred post to rehash this.

  138. And Keep, just to make it clear, I fully agree with you that all methods and processes must pass tests for patent eligibility. They are not per se eligible as machines, articles of manufacture, and compositions of matter. I am not disagreeing with anon at on that point. I have never disagreed with anon on that point. My argument is with anyone who says or implies that business methods ARE eligible for patenting, with no qualification whatsoever. That statement is flat out false and is not consistent with the Supreme Court opinion in Bilski.

  139. you’re being pilloried for asserting that the claim must be considered as a whole

    Leopold, can you explain this? This is not a part of my discussion with MaxDrei.

  140. If subject matter IS eligible for patenting under section 101 (as declared so often by Actual Inventor), there needs to be no “further” determination that it IS eligible.

    If however, the subject matter is is not categorically excluded, it still must be tested.

    I think the Supreme Court’s choice of words was carefully chosen. I think that AI’s choice of words is also carefully chosen, but for the purposes of sophistry.

  141. and that “useful arts” still means the same today.

    That’s the “absolute” position that is incorrect. You seem to engender quite the reaction by your blind adherence to that concept. As has been posted, US jurisprudence on the matter is quite settled.

  142. Let us see if you can logically detect the difference.

    Let’s see if you can.

    Or better yet, let’s see you explain this “quite a bit of difference” that you seem to want to create out of nothing but semantics in a logical, legal, cogent manner.

    As Anon puts it, your position is a fallacious one. All method types must be reviewed under 101, none are exempt.

    If you wish to make such strong statements as you would single out for Business Methods, you should also make such strong statements as “Medical Methods are not patent eligible,” “Chemical Methods are not patent eligible,” “Pharmaceutical Methods are not patent eligible,” or “ANY Method is not patent eligible.”

    Can you see the fallacy of your logic? Can you understand that no sane person would throw out that type of rhetoric?

    Can you see the semantic game you are playing? It is quite obvious. When the common person states that “ANY Method is patent eligible,” or “Pharmaceutical Methods are patent eligible,” or “Chemical Methods are patent eligible,” or “Medical Methods are patent eligible,” or “Business Methods are patent eligible,” the common sense understanding is that as a class, as a type, as a group, that the class/type/group is elgible for consideration for patenting under the law. You want to spin the phrase as somehow that something gets a free pass through the 101 filter. That is just not the common sense understanding.

    As Anon has pointed out, you are playing a game by trying to equate one sample with an entire class for your crusade to outlaw an entire class/type/group. I am just telling you something you are already know. I am just trying to keep the dust kicking down.

  143. Ken, how would you deal, then, with a completely abstract process that was otherwise novel and nonobvious?

    Suppose I claim the process of balancing risk by making contracts to both supply and purchase any commodity such that over the long term the price times quantity of each was approximately equal.

    Now assume that was novel. Would you grant the patent for it?

  144. Thanks Leo. What do you think? Am I now going to be told that the pillory is all my own fault, because I have not been expressing myself clearly enough.

  145. Well thank you kind sir. You’re not related to Shilling are you by any chance because I would not have supposed that anybody else could be capable of the absurd mental prejudice he exhibits, that “absolute” =

    “.. thinking that Useful Arts is locked into the time of the founding fathers, always leaving out business as a Useful Art.”

    because, at the time of the Framers, the arts of business simply did not exist.

    I have urged over and over again that at the time of the Framers, “useful arts” meant “all fields of technology” and that “useful arts” still means the same today. Innovative business methods were even more a key part of emerging civilised life in the late 18th century as they are today.

  146. The funny part is that you’re being pilloried for asserting that the claim must be considered as a whole, or “no dissection,” as it has been stated here. I’m pretty sure that this is precisely what some of your attackers have repeatedly said.

  147. Jack, I would agree with you to this extent that implementation of well-known concepts in software is trivial. The key to the patentability of software related inventions has to be in the novelty and nonobviousness of the concept.

    This is why I think that schmuch that founded Facebook should be given no credit whatsoever because he got the idea of doing a social networking website from others.

    Turning back to the case law, an essential feature of the Bilski opinion was that the concepts being claimed, hedging, were notoriously old. Even if they were claimed in conjunction with the computer, they should be unpatentable, perhaps not under section 101, but perhaps under section 103. But without any tie-in to any physical apparatus, clearly the Bilski claims were unpatentable under section 101 as an attempt to claim well-known concepts in the abstract.

  148. Maybe because you repeatedly make the mistake of thinking that Useful Arts is locked into the time of the founding fathers, always leaving out business as a Useful Art.

    In a sense, that view is an “absolute” one.

    It is also an incorrect one for US jurisprudence, no matter how many times you chose to ignore your error.

  149. Keep, there is a quite a bit a difference between the statement that "business methods ARE eligible" and "business methods are not categorically excluded." Let us see if you can logically detect the difference.

  150. Readers I am mystified by the excitement caused by my use of the word “absolute”. All I’m getting at is that, for 101, one should not take account of the prior art. One should not use the art to split the claim in to a portion that is old and a portion that is new, and then assess the eligibility relative to the new bit. Rather, one should set novelty and non-obviousness aside for later. For eligibility, the first stage of examination, just ask if the claim (as a totality) is directed to subject matter within the ambit of the useful arts.

    The former is the relative approach, the latter the absolute approach. What is so difficult to understand? How can I make it any clearer?

  151. For the “context” of Maxdrei getting a royal spanking on this subject, see

    link to patentlyo.com

    The lead in: For me it is clear that patent-eligibility is an absolute thing, unaffected by day to day expansion in the state of knowledge, the state of the art.

    Then watch him try to disclaim “absolute.”

    It’s great entertainment.

  152. Thus, think of gamblers/gamers/xxxxxxx/xxxxxxxxxx/xxxxxxx.

    Corrected for US Law.

  153. Zappa could have had a nice old chat with the Framers, all about what one means when one deploys the word “art”. They might be able to agree, that it all depends on the context.

  154. Frank Zappa once said, “Art is making something out of nothing and selling it.” I would tend to say a useful art therefore, might be considered as the “something” that sells for more than something else.

    If my abstract idea sells for more than another abstract idea, I’d say it is pretty useful (at least to me).

  155. I don’t say that the ambit of “useful arts” has to be frozen in to the time of the Framers. I just think that there is still today a distinct difference in meaning between useful arts, fine arts and performing arts and that the patent system is not there to promote the progress of fine arts or performing arts.

    After all, if the patent system is to promote the progress of useful arts, and if it has any success, then the useful arts are going to flourish and develop, but not so as they morph into performing arts or fine arts. In their own way, these latter also develop in their own way.

    Thus, think of gamblers/gamers/bankers/economists/traders. They are just as much an exponent of the performing arts as any stand up comedian.

  156. Abstract ideas should be eligible for patent protection….without the presumption of validity.

  157. Lies on top of strawman

    Would it be overkill to point out that once again Malcolm is doing the very thing that he is accusing others of doing?

    While it is usually MaxDrei that makes this particular egregious error, links to the Supreme Court decisions on “useful arts” have been posted more than once.

    Don’t you get tired of such vacuous posting Malcolm?

  158. Ned,

    You are once again digressing to a fallacious argument.

    There is no need to resort to the “categorically” strawman. Each and every type – or class – of method patent must face the 101 review. There are no exceptions. Singling out business methods is meaningless. The same rebuttals of medical methods, chemical methods, bicycle manufacturing methods, etc, etc, can be reposted to show that this line of thought is meaningless.

    Why do you even start down that path? All you are doing is inviting confusion and kicking up dust.

    Please stop.

  159. Mayer and Dyk are peas from the same pod when it comes to reaching for patent-eligibility issues under 35 USC 101 not raised by either party on appeal. See Dyk’s partial dissent in Intervet v. Merial.

  160. Equal protection in the Bill of Rights?

    Casual point of interest. The equal protection cause does not appear in the first ten amendments. If the Bill of Rights is considered to consist of only the first ten amendments, Judge Plager should have picked a better example.

  161. From 6’s link:

    disagreement with the majority opinion of the court which gives rise to its judgment.

    It is important to read to the end of sentences. Realize that Head Scrather’s “reach the same result” is critical.

    You might also try being thorough on your trips through wikipedia land and cover link to en.wikipedia.org

  162. Jack,

    Would you scream if I started coding by making up words as I went along, stringing them together without understanding, because they “sounded right,” blindly stumblng along and possibly getting some terms correctly and completely missing syntax?

    How do you think that such coding would work?

    Then realize that your legal argument holds the same weight. “all software is simply abstract thoughts in a recorded medium” – One giant BS error.

  163. Well, I’m a coder. Not a lawyer. But That patent looks to me like a massive case of criminal fraud. It is not possible, that someone ordinarily skilled in the art in 1995 could have put up this for a patent and not known that it had: 1) already been done and 2) was trivial – actually beyond trivial.

    The fact that it passed through as a patent can only mean that the patent office has failed and continues to fail at doing it’s job, and that there should be absolutely no “presumption” of validity of any of patent coming out of such a botched government office.

    Beyond the fact that all software is simply abstract thoughts in a recorded medium. It is no more patentable than my college Symbolic Logic course. But then since every program written is simply a complex symbolic logic statement, it is logical that it isn’t patentable. But mathematical logic doesn’t seem to apply here.

  164. In yet another case, the Court of Appeals for the Federal Circuit has identified the wide chasm separating members of the court on issues involving patentable subject matter under 35 U.S.C. § 101. The majority opinion here – penned by Judge Plager and joined by Judge Newman – argues that courts should avoid the metaphysical question of whether an invention is unpatentably abstract whenever possible and instead focus on the conditions of patentability found in §§ 102, 103, and 112 of the patent act.
    Wow and I bet they didn’t even cite my law review article which argued that point in 1992. Only took ’em 20 years to address the question that I posed and answered long ago. Of course back then people still cared about civil rights cases and patents were considered the purview of techies. Thanks for agreeing with me judges.

  165. “The flies in the face of the unanimous declaration that the BMs claims before it were abstract”

    Logic fail.

    A single case of claims “before it” do not speak for the entire class of claims. Quite in fact, the Supreme Court was explicit about this.

    AI: Ned knows this is illogical. He just repeats it to get a rise out of folks. Ned, among other things is a troll.

  166. “Too bad then that the fact of the matter is the useful arts have been determined NOT to be locked into the time of the framers”

    This is the Achilles heel of the anti patent crowds useful arts argument. To argue that only inventions of 1790 are within the useful arts would be to freeze innovation in time and tether progress to the industrial age. Not even Ned will dare make such an argument anymore,

  167. MM: One valid reason is that “conducting business”, like using one’s hand to pleasure oneself, is not a “useful art” as contemplated by the framers,

    AI: How do you know the framers contemplated this?

    :: Silence::

    More important when did the framers ever say such?

    :: Silence::

    And most important where did the framers write such in the Constitution?

    :: Silence::

    MM: To be even more crystal clear (since your profound ignorance is legend here), patents on “conducting business” are completely unnecessary and irrelevant and in fact counterproductive for the “promotion of progress” in such arts.

    AI: Cite please?

    ::Silence::

    MM: The existence of an economy is all that is needed to promote the art of “conducting business.”

    AI: But an economy can’t exist without the conducting of business. Therefore anything that helps promote the progress of conducting business helps to improve the existence of the economy.

    So once again, can anyone please give one valid reason why claims that help improve the conducting of business, should be non statutory subject matter? Oh and by valid I mean, citations to, or logic, applicable to actually supporting the intended point or claim.

  168. The flies in the face of the unanimous declaration that the BMs claims before it were abstract

    Logic fail.

    A single case of claims “before it” do not speak for the entire class of claims. Quite in fact, the Supreme Court was explicit about this.

  169. Thanks, 6, for staying in character, stating the obvious but completely missing my question. Mayer’s reasoning is different, but he reaches the same result: the patent is dead. Normally, when a judge reaches the same result by a different route, that’s called a concurrence, not a dissent. A dissent is when the judge disagrees with the majority’s result.

  170. Ned: like AI’s constant refrain that Business Methods ARE patent eligible?

    AI: Until they are ruled as ineligible, guess what? They are and remain eligible

    Ned:The flies in the face of the unanimous declaration that the BMs claims before it were abstract.

    AI: Yes. And so what?

    Ned: The Supreme Court was also unanimous in condemning State Street Bank’s “useful, concrete and tangible” test.

    AI: Umm..and so what?

    Ned:The MOT, the test AI condemns, was elevated by Bilski to the highest position possible short of declaring it the exclusive test.

    AI: The highest position is a clue? Hmmmm.. BTW, how does one pass a clue?

    Ned: At a minimum, I would suggest, that the SC would like to know whether a claim passed or failed the MOT before considering whether a claim that failed the MOT was nevertheless patent eligible.

    AI: Umm..the Supreme Court is not listening to you. Your side lost, remember?

  171. In truth, this requires a determination of what of the claimed subject matter was new

    No. It. Did. Not.

    There is absolutely no validity in purposefully conflating sections of law.

    ZERO.

    If you find yourself doing this, STOP. There is a fundamantal problem with the approach and NO GOOD can come of it.

    It is purposeful obfuscation and ONLY can lead to disorientation and confusion.

  172. Malcolm, you have been saying the following about these computer-implemented inventions for as long as I have been reading Patently-O. You are right,

    From Mayer’s dissent:

    “In 1995, when the parent application for the GraphOn patents was filed, the Internet had already undergone “explosive” growth. ’538 patent, col.1, ll.16-20. Further-more, the practices of posting and searching for information over the Internet and of creating a searchable computer database were well-established. See District Court Decision, 756 F. Supp. 2d at 1222-25, 1232, 1239-41. It appears, therefore, that GraphOn simply took the concept of allowing a user to control the content and categorization of his own communications and implemented it using conventional computer technology.”

    Ultimately, this sounds in obviousness and triviality: Given the broad idea and objective that was well known, it was trivial to implement the procedure in software.

    Kinda like that founder of Facebook, what’s his ugly face. Once the idea of a social networking site at Harvard was given him, it was trivial to implement. His subsequent arrogance, often expressed in the movie about him, wherein he seemed to believe that he, and only he, could have implemented Facebook, was posturing only.

    How can we grant patents to people of his ilk for inventions such as the one at bar? How? But we do.

  173. I agree. The more I think of it, I really like “Sterns” brief in Prometheus.

    In cases such as Benson, Flook, Diehr and Bilski, concepts of novelty bled into 101 analysis as the SC tried to determine what the inventor claimed to have invented. In truth, this requires a determination of what of the claimed subject matter was new and whether this new subject matter was applied to the old elements in a meaning way to make the claim as a whole directed to patentable subject matter, or whether they were not. If not, the claims failed all of 101/102/103 and 112.

    Cases such as O’Reilly v. Morse, which everyone recognizes as a 101 case, sounds in 112. Ditto Bilski and the claims in this case. If a claim is too broad, too indefinite, it fails both 101 and 112.

    Bilski also sounds as if the court held the claims to be obvious over the prior art hedging methods taught in business school. Thus the claims could equally have been condemned under either 101 or 103.

  174. Yeah sure, Deja Vu like AI’s constant refrain that Business Methods ARE patent eligible?

    What a friken joke.

    The flies in the face of the unanimous declaration that the BMs claims before it were abstract. The Supreme Court was also unanimous in condemning State Street Bank’s “useful, concrete and tangible” test.

    The MOT, the test AI condemns, was elevated by Bilski to the highest position possible short of declaring it the exclusive test. At a minimum, I would suggest, that the SC would like to know whether a claim passed or failed the MOT before considering whether a claim that failed the MOT was nevertheless patent eligible.

  175. a “useful art” as contemplated by the framers

    Too bad then that the fact of the matter is the useful arts have been determined NOT to be locked into the time of the framers.

    D_amm that thing about progress, it keeps changing.

    D_amm the fallacy about if there was no other way for advancment. Too bad that’s not a valid legal reason. It makes such pretty crayon stick figures on the paper table that MM gets to thrash.

  176. Does this claim present 101 issues, 102 issues, 103 issues or 112 issues, sockie?

    translated per the MM WHATEVER machine:

    Does this claim present 101102103112AdministrativeLaw
    AdmiraltyLawCommunity&EconDevelopmentCriminal DefenseImmigrationLegalServicesSupremeCourtAdvocacy Landlord/TenantLawCivLiberties&NatSecImmigration&MigrationElectionLaw LegalWritingForeignPolicyLegal HistoryAppellateAdvocacyAppliedCorporateFinanceArtandCulturalPropertyLaw Behavioral&InstEconomicsBusinessOrganizations CapitalPunishmentCivilLitigationPracticeComparative &IntlBioethics CompetitorConstitutionalLawCorporate Governance CrimPro:Charging&AdjudicCrim.Law&Administration CrimProDirReading:Investig CriminalDefenseCriminalProcedure:ResSemDev.ofWesternLegalTraditioEducationAdequacyProjectEmployment DiscriminationLawEmploymentandLaborLawEnvironmental Protec. ClinicEthicsEvidenceFamilyLawFederal Courts/FederalSystemFederalIncomeTaxationFederal Jurisdiction ImmigrationLawIntellectualPropertyInternational Criminal LawInternationlEnvironmentalLawIntl InvestmentLawNegotiationsInvestorLandlord/Tenant LawMaritimeLawLegalProfession:EthicsLegislation MediaLawMortgageForeclosureLitigNonprofitOrganizationsLegalProcedurePropertyProsecutionRegulating SexualityRegulation&InstitutionalDesignSecured TransactionsSecuritiesRegulationSentencingSourcing &ManagingFundsTortsTransnationalDevelopmntTrusts andEstatesUnjustEnrichm&PrivateLawWorker&Immigrant Rts issue, sockie?

    After all, it’s seamless, right?

  177. My statement about the seamless web is a statement of fact.

    Facts from the rubber room.

  178. Why is it that no dissenter or individual can ever give one valid reason why claims that help improve the conducting of business, should be non statutory subject matter?

    Lies on top of strawman from the Mr. Adult Depends Patentwear himself.

    One valid reason is that “conducting business”, like using one’s hand to pleasure oneself, is not a “useful art” as contemplated by the framers, in spite of how much adoration you have for such methods. To be even more crystal clear (since your profound ignorance is legend here), patents on “conducting business” are completely unnecessary and irrelevant and in fact counterproductive for the “promotion of progress” in such arts. The impetus to promote progress in such arts is “built in” to the “arts” themselves. The existence of an economy is all that is needed to promote the art of “conducting business.”

  179. I do believe that courts have the authority to raise such an issue at their leisure.

    I do believe that you need some basic education in how courts are supposed to work.

  180. How’s that for some critical thinking? Figure out why such reasoning is baseless, then come back.

    I’m back, sockie. The “reasoning” is not “baseless.” My statement about the seamless web is a statement of fact.

    A method of improving the treatment of a disease, comprising: thinking about a fact related to said disease.

    Does this claim present 101 issues, 102 issues, 103 issues or 112 issues, sockie? What is the most “efficient” means of disposing of such a claim, and why? For the record, the PTO has issued claims of similar scope.

    Time to grow up, sockie. Your mommy needs to get back to work to pay for your cheetos.

  181. seamless web… . All of the patents statutes are related to one another

    It’s one giant big WHATEVER.

    How’s that for some critical thinking? Figure out why such reasoning is baseless, then come back.

  182. Let’s see..

    dicta, plurality, minority= So what?

    Talk to me when you have a Supreme Court majority.

  183. There are too many errant crusade points in Ned’s tired retread message to comment upon.

    Can we just cut and paste a couple hundred posts from any of the previous 101 threads and call it a day?

  184. Because he perceived the claim being as being a business method.

    Why is it that no dissenter or individual can ever give one valid reason why claims that help improve the conducting of business, should be non statutory subject matter?

    I would like to see just one!

  185. We all agree on this, AI. But Mayer did point out the dicta from Kennedy’s plurality opinion that BMs might conceivably be patentable is a MINORITY opinion.

    Bilski:

    9 agree that the Bilski claims are abstract;
    9 agree that the MOT is an important test, albeit, not exclusive;
    5 agree that BMs are processes and are not categorically excluded;
    4 agree that BMs are excluded from patentablity because they are not withing the UA; and
    Scalia joined with Breyer to agree that In re Bilski’s flat out rejection of “useful, concrete and tangible” was correct:

    “Fourth, although the machine-or-transformation test is
    not the only test for patentability, this by no means indicates that anything which produces a “ ‘useful, concrete, and tangible result,’ ” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed. 1998), is patentable. “[T]his Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary.” Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U. S. 124, 136 (2006) (BREYER, J., dissenting from dismissal of certiorari as improvidently
    granted); see also, e.g., O’Reilly v. Morse, 15 How. 62, 117 (1854); Flook, supra, at 590. Indeed, the introduction of the “useful, concrete, and tangible result” approach to patentability, associated with the Federal Circuit’s State Street decision, preceded the granting of patents that “ranged from the somewhat ridiculous to the truly absurd.” In re Bilski, 545 F. 3d 943, 1004 (CA Fed. 2008) (Mayer, J., dissenting) (citing patents on, inter alia, a “method of training janitors to dust and vacuum using video displays,” a “system for toilet reservations,” and a “method of using color-coded bracelets to designate dating status in order to limit ‘the embarrassment of rejection’ ”); see also Brief for Respondent 40–41, and n. 20 (listing dubious patents). To the extent that the Federal Circuit’s decision in this case rejected that approach, nothing in today’s decision should be taken as disapproving of that determination. See ante, at 16; ante, at 2, n. 1 (STEVENS, J., concurring in judgment).

    In sum, it is my view that, in reemphasizing that the
    “machine-or-transformation” test is not necessarily the
    sole test of patentability, the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.”

  186. He thinks that they should have never reached the 102/103 issue and the claim should have died under 101 at the outset.

  187. I have just three points to make in response to this.

    1.Minority opinions are not majorities.

    2. Dissents are not law

    3. Steven’s is gone.

  188. Why is Judge’s Mayer’s opinion termed a dissent? His outcome is the same as the majority’s, so shouldn’t his opinion be termed a concurrence?

  189. I’m pretty sure that I didn’t make any “argument” in that post bro. I simply told you how to read the passage. You are of course free to read it incorrectly if you wish, but I make no argument regardless.

  190. I’m familiar with your grammatically-challenged arguments. They’re still grammatically challenged, to say the least.

  191. “All of the patents statutes are related to one another.”

    I guess that’s where your “It’s so obvious it’s not patentable under 101” theory comes from.

  192. Dennis rings the dinner bell and …
    Ned, MM, and 6 come out slobbering and blathering.

  193. Read it properly:

    Because technology companies are forced to spend enormous sums defending against vague (112) and overbroad (102/103)software (101) and business method (101) claims…

  194. abstract : asbtruse

    Synonyms: incomprehensible, muddy, obscure, vague …

    It’s a seamless web, sockie. All of the patents statutes are related to one another. I’m surprised you haven’t figured this out yet (LOL – you’ll never figure it out).

  195. “Because technology companies are forced to spend enormous sums
    defending against vague and overbroad software and
    business method claims…”

    Uh, aren’t those 112, 2nd and 102/103 problems, not 101?

  196. Continued:

    Mayer: Business Method Patent were condemned by the Supreme Court:

    “Bilski contains nothing to indicate that patents on
    methods of doing business will, as a general matter, meet
    section 101’s subject matter eligibility requirements.4

    Four justices of the Supreme Court concluded that claims
    drawn to methods of doing business are categorically
    ineligible for patent protection. Bilski, 130 S. Ct. at 3243
    (Stevens, J., dissenting) (emphasizing that “regardless of
    how one construes the term ‘useful arts,’ business methods are not included”). While the five remaining justices
    declined to categorically exclude business methods from
    the scope of section 101, the Court5
    had nothing positive
    to say about affording patent protection to such methods.
    To the contrary, the Court emphasized that “[i]f a high
    enough bar is not set when considering patent applications of this sort, patent examiners and courts could be flooded with claims that would put a chill on creative
    endeavor and dynamic change.” Id. at 3229.6
    In fact, the
    Court gave a broad “hint” that while such methods were
    not categorically excluded from the scope of section 101,
    the statute’s abstract idea exception might be an appropriate vehicle by which this court could invalidate patents
    on methods of doing business:
    [I]f the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should
    be conducted, and then rule that the category is
    unpatentable because, for instance, it represents
    an attempt to patent abstract ideas, this conclusion might well be in accord with controlling
    precedent.
    Id

    4
    The costs of our broken patent system are not abstract. See L. Gordon Crovitz, “Google, Motorola and the
    Patent Wars,” Wall St. J., Aug. 22, 2011. Because technology companies are forced to spend enormous sums
    defending against vague and overbroad software and
    business method claims, they have far fewer dollars to
    expend on research and development. Id. (“Hobbled by a
    costly patent system, the technology industry is not the
    engine for global wealth and productivity it could be.”).

    5
    Significantly, Justice Scalia did not join large sections of the plurality opinion. While he joined the portion
    of the Court’s opinion stating that business methods
    qualified as “processes” and were therefore not categorically excluded from the scope of section 101, Bilski, 130 S.
    Ct. at 3228, he did not join Part II-C-2 of the opinion,
    which states that “the Patent Act leaves open the possibility that there are at least some processes that can be
    fairly described as business methods that are within
    patentable subject matter under § 101,” id. at 3229.

  197. I admit I am torn here. Plager makes a good case that one should decide cases on the narrower grounds if possible. However, Mayer has pointed out that 102/103 as a whole has failed in the wake of State Street Bank. His opinion makes a strong case:

    “There are those who suggest section 101 should function as a wide and “broadly permissive” portal to patentability. Ultramercial, LLC v. Hulu, LLC, 657 F.3d
    1323, 1326 (Fed. Cir. 2011). They take the view that
    section 101 is a “coarse eligibility filter” and that other
    patent validity requirements—such as novelty, see 35
    U.S.C. § 102, non-obviousness, see id. § 103, and adequate
    written description, see id. § 112—should be used to weed
    out patents of dubious quality. Research Corp. Techs.,
    Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010);
    but see Classen Immunotherapies, Inc. v. Biogen IDEC,
    659 F.3d 1057, 1076 (Fed. Cir. 2011) (Moore, J., dissenting) (arguing that a method directed to a schedule for
    administering immunizations “claimed a monopoly over
    the scientific method itself” and was “so basic and abstract as to be unpatentable subject matter” under section
    101).

    There are several insurmountable problems with this
    approach. First, it has, as a practical matter, proved
    woefully inadequate in preventing a deluge of very poor
    quality patents. See Bilski, 130 S. Ct. at 3259 (Breyer, J.,
    joined by Scalia, J., concurring in the judgment) (noting that patents granted in the wake of State St. Bank &
    Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368,
    1373 (Fed. Cir. 1998), have “ranged from the somewhat
    ridiculous to the truly absurd” (citations and internal
    quotation marks omitted)). “[T]here is no evidence that
    relying on §§ 102, 103, or 112 will solve the problem [of
    poor quality business method and software patents]. This
    claim was made ten years ago. It is still being made now.
    At what point does this argument run out of credibility?”
    Gerard N. Magliocca, Patenting the Curve Ball: Business
    Methods and Industry Norms, 2009 BYU L. Rev. 875, 900
    (2009) (footnote omitted).

    Poor quality is probably not an entirely apt term. But, directed to subject matter that was declared unpatentable under Benson, Flook and Diehr, is certainly true.

    More in the next post.

  198. While I cannot speak to the actual 101 merits of the app since I haven’t reviewed them, the dissent at least displays a commanding grasp of the law on 101 and displays how it is well used. It is too bad that the majority does not treat the threshold matter of 101 as a theshold matter.

  199. I do believe that courts have the authority to raise such an issue at their leisure.

    Plus maybe Mayer simply wanted to make his presence known to the scallywags and scofflaws out there in software lands that continue their illicit patenting activities. A wise move in these lawless times where even the executive branch is in on the tomschemery.

    There are yet still good men on the bench. Some even who can read USSC decisions.

  200. a universal resource locator

    OOOoooooo … sounds so fancy!!!

    What an incredible p.o.s.

    Heckuva job, Dudas.

  201. the lower court never ruled on the question of patentable subject matter and none of the party briefs refer to Section 101

    What the F is a judge commenting on an unbriefed issue before him?

    The guy has got to go.

  202. There is nothing wrong with doing things efficiently.

    However, the outcome of 102, 103, and 112 tests is not known until those tests are actually carried out and the issues decided, right?

    So in the first instance, how can it be said that any analysis is more efficient to undertake than any other?

    Let’s face it, the 101 jurisprudence is cr@p–but that doesn’t prevent the CAFC from making “efficient” decisions on the basis of 101, it just means that the published opinions aren’t worth the paper they’re written on. The CAFC can, and does, decide very quickly even when they use 101 as a basis.

    Also, contrary to the sentiment impliedly expressed by the majority, neither 102 nor 103 jurisprudence is any great shakes–TSM? Inherency?. In fact, in my opinion, 101, 102, and 103 are all at the same jurisprudential level.

    What may be easier than something requiring de novo review, however, is something requiring some lesser standard of review–and therein may lie the heart of the matter, practically speaking.

    However, the CAFC burying its head in the sand will do nobody any favors when 102 and 103 are found to be satisfied, and a 101 issue is raised.

    101 is an issue that cannot be successfully avoided in the longer term–or even possibly in the short term. What the heck is going on?

    So they decide not to approach 101 when they can decide on 102 or 103? Where does that leave the cases with 101 issues? They are still there, they’re not going away. Does it mean that the CAFC will try to make them go away by deciding in the negative on 102/103 questions, for the sole purpose of avoiding 101? Of course not. They will remain.

    This type of thinking by the CAFC is penny-wise, and pound-foolish.

  203. “The methods disclosed in Bilski’s application and in
    the GraphOn patents are not unpatentable because they
    lack any practical utility. To the contrary, they fall
    outside the ambit of section 101 because they are too
    useful and too widely applied to possibly form the basis of
    any patentable invention.” – J. Mayer (in dissent)

    So according to J. Mayer only subject matter that is not useful or subject matter that is too useful is not patentable.

    Got it.

    Now somebody administer an Alzheimers test to this guy.

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