Since Bilski, the USPTO has been understandably struggling with its patentable subject matter procedures. This is especially true in the area of computer software.
U.S. Patent No. 8,196,213 issued this week to Microsoft and is directed to a method of verifying un-trusted code. The original application included claims directed toward “a computer readable storage medium” loaded with varous instructions arranged in a novel manner. In July 2011, however, the examiner and the art unit’s Supervising Patent Examiner (SPE) mailed a final rejection of the claim based upon their conclusion that the claim impermissible encompassed unpatentable subject matter under 35 U.S.C. 101. The examiners reasoned that the storage medium classification was broad enough to include signals and that signals are unpatentable under Section 101. See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).
In response, Microsoft amended the claims – adding an express limitation that excludes signals. The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued.
The original patent document never discusses signals and only defines computer readable media by reference to various elements “which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like may also be used in the exemplary operating environment.”
The Question: Should the PTO have rejected the amendment for failing the written description requirement?
I think this case will not reopen and get final result
Hold, not really.
According to your own theory, they must have been simpletons and sophists to not use the very exact words that the Supreme Court so carefully chose.
Mr. Hold, there are many, many, many, many cases that do not limit Benson to method claims. Why? They deem claims to machines as being drawn to methods. Now, pray tell, just why would they do that?
And, what words are these?
Hold, Benson involved, according to the Court, a claim it characterized as one for programming a computer. But, you say that the a programmed computer was somehow not involved in Benson, that the Supreme Court was saying nothing at all about programmed computers?
Don’t have to.
Read Benson and read it carefully. That simply was not the issue under consideration.
For someone who preaches as to which words the Court used, you do a pretty shabby job of paying attention to which words the Court used.
And those that actually read the actual words so carefully and precisely chosen by the Court.
Unless you think that the only simpletons and sophists think that the Court’s actually chosen words can be heedlessly and recklessly disregarded…
When you play by the exact words, you d i e by the exact words.
Don’t have to: it wasn’t at issue in Benson.
Read Benson and read it carefully. At issue in Benson were process claims. That is all the Supreme Court opined about, thus that is the limit of their holding.
I will agree with this to the extent of 103's statement: "Patentability shall not be negatived by the manner in which the invention was made."
Logic, no one but simpletons and sophists would agree that the reasoning of Benson was limited only to process claims.
Hold, explain how the programming of the Benson claim did not change the machine?
Mr. A Hole;
Why don't you read and respond to what I post, not to your strawman mis-characterization of what I post. Talk about people who do not read carefully…..
The proposition you propose is the the same as what you propose with business methods. Because the SC left open the possibility that a programmed computer could be statutory subject matter, you reason they HELD that they were eligible. This kind of thinking pollutes every post you make.
Ned types it and still doesn’t get it:
“the last sentence of § 103 TO ABOLISH the test it believed this Court announced in the controversial phrase ‘flash of creative genius’
Flash of Genius is dead. As long as it is understood that the level of patentable invention is not Flash of Genius, we will ALL be happy.
“I intended no insult to you regarding bootstrapping.”
Ned obviously intended no answer either (he still hasn’t given one).
Ned’s idea of “bootstrapping” is any simple logic in areas outside of his agenda.
“since point 4 flows naturally from the prior points”
The Supreme Court in Benson did not think point 4 flowed naturally from the prior points and only addressed process claims.
There is something wrong alright: Ned.
“without any change”
It’s a good thing then that the law (and reality) make sure that programming does in fact change the machine.
A L A P P A T
“why do you think…”
1) Because they are not patent law experts.
2) Because ideological (philosophical) factions were involved. Ignoring the reality of who sits on the bench, and thinking that law is pure and chaste because it comes from the Bench is the worst kind of naiveté.
3) Holdings have been quoted accurately. You are getting lost in the weeds of dicta. Benson did not have a holding on programmed computers. Benson was explicit about what it’s holding in relation to programmed computers was:
“It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”
It’s about time you stopped the farcial reading of law.
Chrissakes, just look at Prometheus.
This sounds more like Ned’s example of one labelling an entire category.
But, but, but,… Prometheus was about medicalmethods, therefore all medical methods are ineligible.
T O O L
Computer,
An improved computer may indeed be patentable. I do not dispute that at all. But most advocates are not talking about patenting improved computers, but are instead talking about patenting software. What they do is dress up the claim to software but adding in conventional elements with no new functionality between the software and the conventional elements.
Just as in Benson, the USE of a GP to run the software is not patent eligible. Flook and Bilski would add that adding conventional extra solution activity adds nothing. Prometheus made it clear, as did Benson, that adding conventional elements without any change in how they work is not enough.
Thus, we have had endless discussions here about the differences between a new computer and the use of an old computer to run software, but the advocates here on Patently-O refuse to even discuss the distinction, insisting that the Federal Circuit somehow overruled the Supreme Court and has held a programmed computer is patent eligible regardless of any new use to which it might be put simply because using a computer to run the software makes it a new machine.
Help me, why do you think the SC in Bilski used "not categorically excluded?" They used similar language in Benson discussing programmed computers?
Their language was carefully chosen and chosen for a purpose.
I think that to the extent you and others refuse to accurately quote the holdings of the cases, you must be doing so for a reason.
Help me,
I intended no insult to you regarding bootstrapping.
I simply pointed out just how Rich was bootstrapping in Benson. He did this
1. Machines are eligible.
2. Computer are machines Computers are eligible.
3. Programmed computers are computers, which are machines. Programmed computers are eligible.
4. A method of programming a computer limited to use in a computer is patentable because a programmed computer is a machine, which is eligible.
The Supreme Court examined only point 4, and held the claims in that case ineligible despite their limitation to computers. But, since point 4 flows naturally from the prior points, there is something wrong in one of them.
Obviously, it is point 3 that is wrong.
Dorothy, "entire concept?" I recall Graham acknowledging that Cuno may have been overruled, but that the rest of its jurisprudence following Hotchkiss was endorsed. The Court did not decide that any precedent was overturned, not even Cuno.
Compare, from Graham,
"The questions, involved in each of the companion cases before us, are what effect the 1952 Act had upon traditional statutory and judicial tests of patentability and what definitive tests are now required. We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago 4*4announced by this Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), and that, while the clear language of § 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."
…
"It is undisputed that this section was, for the first time, a statutory expression of an additional requirement for patentability, originally expressed in Hotchkiss. It also seems apparent that Congress intended by the last sentence of § 103 to abolish the test it believed this Court announced in the controversial phrase "flash of creative genius," used in Cuno Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941).[7]16*16 It is contended, however, by some of the parties and by several of the amicithat the first sentence of § 103 was intended to sweep away judicial precedents and to lower the level of patentability. Others contend that the Congress intended to codify the essential purpose reflected in existing judicial precedents—the rejection of insignificant variations and innovations of a commonplace sort—and also to focus inquiries under § 103 upon nonobviousness, rather than upon "invention," as a means of achieving more stability and predictability in determining patentability and validity.The Reviser's Note to this section,[8] with apparent reference to Hotchkiss,recognizes that judicial requirements as to "lack of patentable novelty [have] been followed since at least as early as 1850." The note indicates that the section was inserted because it "may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out." To this same effect are the reports of both Houses, supra, which state that the first sentence 17*17 of the section "paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness."We believe that this legislative history, as well as other sources,[9] shows that the revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability."
That’s quite an impressive record and reputation you have built up there for yourself, eh Ned?
“The programmed computer must actually do something new and useful within the useful arts to be patentable. A programmed computer that calculates BCD to binary, or plays the new song, or computes risk, is not.”
Why not? A toaster that toasts four slices of bread is patentable over a toaster that toasst two slices of bread, at least at 101.
So why shouldn’t a computer which is much more sophisticated and advanced than a toaster, be patentable?
If we are promoting innovation why take a cool innovation like a programmed computer and not allow it to be patentable?
I just do not understand the logic here.
Now I know some are saying hey you can’t patent the song, or the BCD ( Whatever that is), but that is not what the patent is on.
My computer plays music and for that it should be patentable, I don’t care whose song or music it plays.
The music has a copyright, right? So people can still record it, play it , sing it print it, write it all they want.
But programming a computer to do any of that stuff is cool as sheet and should be patentable.
Now, I am going to make some patentable toast for breakfast.
“I was busy last weekend, and didn’t have time.”
What was Ned doing that he didn’t have time to answer Anon’s questions, even after a week after he was finally lead to the passage like a puppy lead to his own pile of crrp, and two weeks after the original post?
Let’s look at a count of Ned’s posts this week only on the two Patently-O threads of AVOIDING Subject Matter Problems but Creating Written Description Problems and Survey Response: Does the Amendment Violate the Written Description Requirement?
Jun 05 – 4
Jun 06 – 24
Jun 07 – 32
Jun 08 – 15
Grand Total – 75
75 times of being “too busy” to be honest. 75 times after the excuse of “I didn’t see it, unbelievable as it was, was removed.
“But, even if you personally carefully choose the context, there are other who do not carefully choose context”
Ned, it is clear from Anon’s posts that it is you that is the one not carefully choosing context.
Why are you having a hard time understanding this?
You fall immediately into the same mode of improper context with your statement of “there are other who do not carefully choose context, but blatantly say that business methods or programmed computer are patentable subject matter” which is a statement of categories and not individual applications; a statement that is clearly appropriate under the eligibility context of a category discussion.
It is as if you do not want to understand what Anon is plainly saying.
If a discussion on eligibility is only dealing with the cateogry level, saying a category is patent eligible is correct. It is understood that for anything and everything in categories of patent eligibility. individual claims in individual applications also must pass 101.
“Help, the problem you may be having is that I am responding to what we here affectionately refer to as sock puppets”
Yes, I think that is the problem. I was hoping that you would respond to me instead of to others. Your explanations still do not help me understand the intended insult with your use of the term “bootstrapping.”
Your point of novelty reply does not address the concerns I raised, and your example with music is not answered by the Prometheus case example. Prometheus was concerned with what was needed to make the application of a natural law enough to qualifiy for a patent. Your present example is along the lines of a useful art/non-useful art discussion and is inapposite to Prometheus.
Your Flash of Genius reply is off-point and quite frankly incorrect. I did mention that Flash of Genius is something I understand. Your attempts to equate Flash of Genius with any and all views on obviousness is, pardon the pun, an obvious error. The doctrines are clearly different, and as noted, Flash of Genius was expressly abrogated by Congress when they wrote the patent act of 1952. Whether or not the doctrine has been attempted to have been revived and reinserted into patent law is quite a different matter. Clearly understanding what Flash of Genius is, and understanding the fact that it is not the same as the 1952 act of Congress obviousness law is important to prevent backsliding and corruption of law. Flash of Genius should not be revived by the courts as a mechanism for controlling any perception that the bar to granting patents is too low. That is an improper role for the courts. That is the role of Congress.
I asked you to explain only one thing and you provided three “answers”, none of which explain the one thing that I asked.
“I agree that “flash of genius” could be misconstrued… So, if 103 overruled just the one case, what about all the others?”
Double strawman bonus
1- no one said Flash of Genius could be misconstrued, so your “agreement” is bogus. Just like your advocacy for something that is not the law.
2- no one said only one case of Flash of Genius was abrogated. The ENTIRE concept, regardless of how many cases was EXPRESSLY abrogated.
Did you rob one of the little pigs to get that much straw?
I addressed Alappat in a previous post.
I agree that "flash of genius" could be misconstrued. However, read in context of the cases he was relying upon, that phrase was not new to Douglas, but was rather commonplace in Supreme Court jurisprudence. So, if 103 overruled just the one case, what about all the others?
The better view, is that it did overrule all the others as well. Which means, Douglas was not the culprit. He was simply following the law as expressed by his colleagues in numbers of cases before him.
Another, more benign view is what I said, all it means is that the work of one of ordinary skill in the art is not patentable. But, then, how does one tell that a particular work is beyond the skill of the ordinary mechanic? Obvious? Kind, rather than degree? Work of genius? All were used by the Supreme Court from time to time.
anon, I will look at your questions and get back to you. I was busy last weekend, and didn't have time.
In the meantime, why don't you simply use the language of the the SC — not categorically excluded? It boggles the mind that you refuse to do so. You go on an on that your choice of phraseology has an acceptable meaning in certain contexts. But, even if you personally carefully choose the context, there are other who do not carefully choose context, but blatantly say that business methods or programmed computer are patentable subject matter. A casual reader is not fooled by why some of the commentators here make such statements.
“a. programmed computers are machines, machines are PE;
b. the program of a programmed computer is a component of machine, it too is therefore eligible.
The premise wrong.”
Ned,
Again with the spurious and conclusory – and unfounded – statements.
The plain fact of the matter is that a programmed computer is a particualr machine and machines – as a category ARE patent eligible. This is actually the state of law. Alappat.
“machine are PE” Absolutely – in the proper context of that word in relation to a category discussion. Stop conflating the category discussion with the separate individual application claim discussion that must ensue for every single claim – no matter what category.
And to join in on the Flash of Genius issue. Your statement of “but it is the same thing” is nowhere close to being true. Not in any way, shape or form. Flash of Genius was abrogated by 103. It is sophistry to attempt to revive what was explicitly rejected by Congress.
Help, the problem you may be having is that I am responding to what we here affectionately refer to as sock puppets, people who use the moniker section of a post for comments. We at times cannot tell who we are talking to. So our responses become mixed up.
1. Bootstrapping:
a. programmed computers are machines, machines are PE;
b. the program of a programmed computer is a component of machine, it too is therefore eligible.
The premise wrong.
2. PON.
a. Claim to a player piano with a scroll that plays music.
b. Claim to a player piano with a scroll that plays music.
In a,, all player piano elements are a new combination. The music is just explanation of what the combination does.
In b., all the player piano elements are old. The music is the only thing new.
The SC says, when the only thing new is unpatentable subject matter, handled patentability under 101. See Prometheus in its discussion of the government position.
Regard FoG, Douglas's views were not new, but were found in numbers of cases before him on what the difference was between the work of one of ordinary skill and the ordinary artisan. We today call this obviousness, but it is the same thing.
“anon, if you do not mean categorically, do not say “ARE” without qualification.”
“Programmed computers ARE patent eligible.”
What does that sentence mean?
If instructed by a Judge, what would a juror understand the phrase to mean?”
We have been through this and I am positive that I was quite clear. I outlined the entire premise in one post and responded directly to you so that your email style of viewing would not miss the post. Excuse after excuse is all I have gotten from reminder after reminder.
In a nutshell, when discussing the term “patent eligible” the context of whether you are talking an explicit singular case or a group or category of subject matter dictates the proper understanding.
So NO Ned, it is you that needs to use the proper meaning of the term and STOP the blatant conflation between the two different proper uses. I need no qualification on the use of eligibility when the discussion is on a category level. You need to STOP conflating the two levels of the word.
In other words:
“What does this sentence mean?” depends on context.
“If instructed by a Judge, what would a juror understand the phrase to mean? ” also depends on context, but most likely may mean a singular instance, since a court’s case or controversy requirements still mean that a particular case is at hand in order for a Judge to be instructing a group of jurors.
You rail on about sophistry, and yet, AGAIN, the comment section of this legal blog finds you applying sophistry by what only can reasonably be termed deliberate obfuscation of a term and in particular the application of that term out of the proper context of its meaning.
As I discussed at least at link to patentlyo.com at May 24, 2012 at 07:49 AM, – and far more numerous places regarding your blatant misuse of “categorically” – you have been put on notice of the properness of discussing categories of items and patent eligibility as opposed to individual applications and that individual particular application’s eligibility. There is no reasonable excuse for you to continue to misuse and purposefully clud discussions with your singular/group mismatching of “eligibility.”
Furthermore, and ever so telling, you apply this obfuscation selectively. Nowhere do you apply the passion for outlawing a category – a whole group regardless of individual claim merit or construction – as you do with business methods and software-related patent applications. And you offer no plausible, rational reason for this highly unbalanced, selective and unfounded vendetta.
Not once, not twice, not even three times, but at least four times I and others have provided you a link to the thread, along with specific time stamps that identified this clarity of context regarding eligbility and my questions that you have refused to answer regarding this plainly overt tendency of yours in direct comparison to my steadfast and uniform treatment of patent law. You have responded to my posted questions twice – once initially and a second time on link to patentlyo.com on May 31 at 9:50 PM, but neither time – and at no time – have you actually answered my questions. “Looking at my questions,” as you state you will on that thread on June 1 at 7:21 PM is not enough.
You say that you want a mature dialogue, but your actions say otherwise. I repeat: we have not gotten past anything if you continue to avoid answering my inconvenient questions and you continue to post spurious positions of law.
Sorry, Good post and good points all.
I accept the pretext regarding Douglas's impeachment might seem to be facially valid, but if that is all there was, I think it was woefully inadequate grounds. Taking bribes for decisions is grounds for impeachment. Anything below that is questionable unless it demonstrates systematic corruption.
We all know that Ford went after Douglas because of his liberal view on the first amendment. Silencing the opposition by bringing up criminal proceedings or impeachment threats is, in my humble opinion, much more of a problem than what Douglas was alleged to have done. What Ford did was fundamentally wrong and must be condemned.
…so you are a loser and an antagonist.
Yippee for you.
Here’s a hint for success (have you heard of that?): most normal people don’t like antagonizing others and creating battles they lose.
Approval is over-rated. If you want approval, buy a puppy. If you want results, if you want success, look me up.
“It is ‘retrieved’ from the far end.”
Only that you aren’t retrieving it from the carrier wave. Instead, if you are retrieving it from the far end, you are retrieving it from some type of storage device (e.g., a hard drive, memory, etc.) in which the data is stored.
It’s not a matter of winning of loosing. It is a matter of making you lawyers run around like chickens with your heads cut off. Sad part it is SO easy to do. You all get so defensive & aggressive whenever your inbred “training” is threatened. All you understand is group-think. Is it any wonder lawyers have lower approval ratings than Congress (which has too many lawyers itself).
Held is movement. Black is white.
add another: loss is win.
“Pot, black”
fits just like “lawyer, non-lawyer” or “trained, untrained.”
This is not a debate you will win.
Pot, black.
The dialogue of grown ups is often misunderstood by children.
Now run along little child.
The above “grown-up” discussion sounds more like a bunch of 7 year-olds arguing over a toy. Just a lot of shouting & yelling with no reasoning.
Read all the above & tell me again WHO are the grown-ups!
It is “retrieved” from the far end. You know, like a dog. 🙂
Why isn’t Ned screaming for the nullification of all medical method patents?
With Bilski, one case was enough to light a fire under him to remove all business method patents.
With Prometheus, the same should be true for all medical method patents.
Where is the outrage? Why the selectivity?
I read your post to Really and I am not any closer to understanding what you are attempting to belittle with the bootstrapping comment.
I am also confused by your statement about parts of claim where novelty lie. First, this is dissection and second, eligible claims can exist composed completely of non-novel elements. In fact, almost all inventions are composed of non-novel elements as captured in the phrase “there is nothing new under the sun.”
Thank you for the IBM case, but I am now confused as to why you introduce that case. What do you think the case supports?
Also, your posts comparing Flash of Genius and 103 do not make any sense. You denigrate 103 calling it unworkable in one post and in the next call it the codification of Flash of Genius, which it is expressly not, as history is clear that 103 was written to abrogate Flash of Genius.
“And YOU are the one that says YOU know the laws & rules of prosecution??”
God, not another examiner that doesn’t know how to read.
“phrases used in the claims must find clear support OR antecedent basis in the description.” Notice the word “or”. As such, antencedent basis is NOT A REQUIREMENT. Clear support is sufficient. A DVD, an example of a storage medium, does not include a signal. Hence, clear support has been provided. Moreover, there is no requirement for antecedent basis.
“Gerald Ford … once tried to impeach Justice Douglas.”
As alleged, Douglas accepted payment for an article published in a magazine, “AVANT GARDE” that was the successor to a magazine, “FACT,” the publisher of which, Ginzberg, had a case pending before the Federal Courts for libel. Ultimately, Ginzberg appealed an adverse opinion in which SCOTUS declined to hear the case but Douglas dissented (while not recusing himself).
It seems to me, based upon of this version of the facts, that Ford had a legitimate concern.
“What I think is really happening is that the USPTO is following the Federal Circuit which under Judge Rich and now under Judge Rader were and still are fighting Benson tooth and nail because they do not agree with it”
Benson is simply bad law. The facts, as presented, are wrong, and it was written by a judge that had no clue about the issues.
“However, you may be right that the USPTO is part of the problem because they joined the revolt when they began to issue Beauregard claims.”
The Benson method claim 8 clearly passes 101 under MOT. The reason why Douglas considered it to be “abstract” was likely because Douglas didn’t understand the claimed process in the least.
Baseball Player to Batboy, “hold the ball for me, it is from my first hit as a major leaguer.”
Batboy (also a former patent examiner), “sure thing, I’ll store it for you.”
[Batboy throws ball into stands]
Baseball Player to Batboy, “what are you doing? I told you to hold it.”
Batboy, “it was being held/stored as it was flying through the air.”
Baseball Player muttering to himself, “f’ing id-iot”
There is a difference between a contrived definition and a reasonable definition that is reflective of the ordinary and customary meaning given to the term by those of ordinary skill in the art — from vast experience with the USPTO, I know that they teach you the opposite.
Sending something is not storing it.
Your analysis fails because you forget that YOUR CONTRIVANCES DON’T COUNT. The analysis must begin with how one of ordinary skill in the art uses the term.
I’ve seen this type of analysis hundreds of time before. You begin with the conclusion (i.e., X is construed to mean Y) and then contrive an analysis to get there. After a few twists and turns you come up with an analysis that if told to one of ordinary skill in the art, they would look at you if you had 3 eyes and 2 noses.
“If you do not consider the wave carrying the data a storage, can you please explain why it isn’t?”
Easy … I want to store data for later use. I send it out as a signal. 2 seconds later, I want that data. Ooops, not there anymore. That data is a thousand miles away. Hence, the data was not stored. If the data cannot be later retrieved from the alleged storage medium, then it wasn’t stored in that medium. FYI — there is a difference between retrieving and receiving.
What is the dicta from Benson? (quotation marks optional)
And Ned always accuses others of what he does. Picked that up from Malcom. What else did you pick up from Malcolm? Have you filled your prescription for it?
You have nothing to say because you have been caught with your pants down. Again.
That makes no difference to your original point about YOU interpreting the law, now does it, oh one with ZERO training?
Perhaps you should be quiet, the grown-ups are trying to have a discussion.
You may have been trained to interpret the law.
You still do not make it.
And YOUR interpretation is no more or less valid than the next lawyer even if you both view a decision diametrically opposite. Which, as seen here, happens often.
I agree with FYI. In general, this is the way most SPEs operate.
It’s wrong, but part of it has to do with the number of examiner’s that they have to supervise in addition to all the rest of the cr@p they have to do (sig panels, special projects, details at the academy, etc.). Not justifying the actions. Just stating the way it is. And it needs to be changed if quality is to improve.
Problem is most SPEs have in the area of 70-100 cases to review a PP. IF they spend only 1 hour per case no time is left for even meeting with the examiner before the case is turned in or anything else. And before you say it, yes, you can find at least one error in maybe 10 minutes. THAT is not sufficient. The SPE (or other reviewer) needs to find ALL the errors & instruct as to how to correct them. Doing it piecemeal is horribly inefficient for both the examiner and the SPE.
Are you familiar with what a carrier wave is?
A carrier wave is a waveform (e.g., sinusoid) that is modified (often by frequency or amplitude – you know, like in radio). That modification imparts data to the original base waveform. That modified waveform (carrier wave + data) are transmitted & some time later received. Many definitions of carrier wave include language like the wave “carries” the data while it is being transmitted.
How is the carrier wave that is carrying data not temporarily “storing” the data on the carrier wave? For this question, at least, never mind PTO policy or court decisions. Just use common sense.
If you do not consider the wave carrying the data a storage, can you please explain why it isn’t? And I am talking actual function not just semantics.
An sock puppets are always right (in their own minds), even if the facts do not support their views.
tlaopdnr
You and OWL Holmes have it backwards.
As I have explained, Congress in 1793 left it for the courts to define what the constitution meant by "invention" and "discovery." This they did. In '52, congress enacted 103. Graham held that this endorsed their holding in Hotchkiss and cases interpreting Hotchkiss. Nothing ultra vires here at all.
See Graham for more detail.
my god, what bootstapping.
I have nothing to say.
I stand for a patent system that works best, with the lowest cost for the startup. That is where true innovation takes place and that is where patents are invaluable.
From Cuno:
"We may concede that the functions performed by Mead's combination were new and useful. But that does not necessarily make the device patentable. Under the statute, 35 U.S.C. § 31, R.S. § 4886, the device must not only be "new and useful," it must also be an "invention" or "discovery." Thompson v. Boisselier, 114 U. S. 1, 114 U. S. 11. SinceHotchkiss v. Greenwood, 11 How. 248, 52 U. S. 267, decided in 1851, it has been recognized that, if an improvement is to obtain the privileged position of a patent, more ingenuity must be involved than the work of a mechanic skilled in the art. Hicks v. Kelsey, 18 Wall. 670; Slawson v. Grand Street R. Co., 107 U. S. 649; Phillips v. Detroit,111 U. S. 604; Morris v. McMillin, 112 U. S. 244; Saranac Automatic Machine Corp. v. Wirebounds Patents Co., 282Page 314 U. S. 91U.S. 704; Honolulu Oil Corp. v. Halliburton, 306 U. S. 550. "Perfection of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable." Reckendorfer v. Faber, 92 U. S. 347. The principle of the Hotchkisscase applies to the adaptation or combination of old or well known devices for new uses.Phillips v. Detroit, supra; Concrete Appliances Co. v. Gomery, supra; Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., supra; Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U. S. 69; Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., supra; Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U. S. 490; Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350. That is to say, the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain."
From, Reckendorfer (one of the cited cases),A double use is not patentable, nor does its cheapness make it so. Curtis, secs. 56, 73. An instrument or manufacture which is the result of mechanical skill merely is not patentable. Mechanical skill is one thing; invention is a different thing. PerfectionPage 92 U. S. 357of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable. The distinction between mechanical skill, with its conveniences and advantages and inventive genius, is recognized in all the cases.Rubber Tip Pencil Co. v. Howard and other cases, supra; Curtis, sec. 72b.The combination, to be patentable, must produce a different force or effect or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; if not so, it is only an aggregation of separate elements."
See also the cited Philips v. Detroit case:
"It is plain, therefore, that the improvement described in the patent was within the mental reach of anyone skilled in the art to which the patent relates, and did not require invention to devise it, but only the use of ordinary judgment and mechanical skill. It involves merely the skill of the workman, and not the genius of the inventor. The following cases illustrate the subject:In Hotchkiss v. Greenwood, 11 How. 248,"The above explains what Douglas meant. Flash of genius was not truly new, but had long been a way of distinguishing the skill of the ordinary mechanic from "invention." The case law generally explained that difference must be one of "kind" rather than degree.
Quite the contrary, OWL Holmes nails it. In essence, the Court is taking an activist hand in writing patent law since it FEELS Congress has not made it tough enough to get a patent.
There is no other way of looking at Court-made law. If the executive branch is faithfully applying the law made by Congress, there is no basis for the Court to say anything about the ease of obtaining a patent. If the executive branch is not faithfully applying the law made by Congress, the basis for the Court to rule a patent invalid is already available and there is no need for the Court to make new law to make it more difficult to obtain a patent.
Quite clearly, any Court-made patent law MUST be ultra-vires.
“I have long and hard argued against their party line”
No, Ned, you have not.
You cannot expect anyone to believe that you don’t get it that the real party line of big corporate is no patents for business methods and software, can you?
Have you really drunk so much koolaid that you cannot figure that out?
Who benefits most from no patents on business methods and software? Hint: it is not the small start-ups and entrpreneurs. It is the established big corporates who can use their might in other ways to compete beyond innovation. Innovation is the key to the small start-ups and entrpreneurs and it is NOT a leap from your agenda of denying whole sections and whole categories of patents to understanding just who you are shilling for.
Innovation is protected by patents. Your crusade against protection for innovation leaves only one single reasonable conclusion. All else is smoke and sophistry.
RE your comment of “antecedent basis is for claims, not support in the specification.”
Maybe you should check out 37 CFR 1.75(1):
“The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”
And YOU are the one that says YOU know the laws & rules of prosecution??
To the extent that you do not understand the difference between Flash of Genius and 103, you are forever lost.
You simply don’t know what you don’t know.
I advice you to understand this difference before you post again in ignorance.
And before you ask, my telling you won’t make you understand. This is something you have to learn on your own. It would be like a three dimensional being explaining the third dimension to a two-dimensional being.
Will, you do not seem to understand that "flash of genius" was the law long before Section 103. It meant then, and means today, something beyond the ordinary skill in the art.
You might want to actually read the cases Douglas was citing for how they used the term.
If anything, 103, to a degree, codifies the "beyond the ordinary skill in the art" standard, does it not?
Morely, I see.
What is the "holding" of Benson?
OWL Holmes, you obviously do not know what you are talking about.
Charles, obviously you have me confused with the typical big corporate shill. I have long and hard argued against their party line. I favor FTI, and end to reexaminations, repeal of eBay in favor of mandatory injunctions except when the government is the infringer, and so on. How you can leap from my support of Douglas, who if anything was anti-big business, into thinking I favored big business is quite a leap.
Benson: "We do not hold that programmed computers are precluded."
Rich, Anon, AI and numerous sock puppets: "Programmed computers ARE eligible."
Instruct the jury. Move on to 102/103/112.
The sophistry never ends. In the words of Scalia, "We are not st 'pid."
IBM v. US, 298 US 131 (1936)
http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=298&invol=131
"On the trial appellant offered to prove its ownership of patents which, it asserts, give it a monopoly of the right to manufacture, use, and vend the cards, separately, and in combination with its sorting and tabulating machines, of which, it insists, they are a part. It argues that the condition of its leases is lawful because it does not enlarge the monopoly secured by the patents, and that the trial court erred in refusing to consider appellant's patent monopoly as a defense to the suit.Appellant's patents appear to extend only to the cards when perforated, and to have no application to those which the lessees purchase before they are punched. The contention is thus reduced to the dubious claim that the sale of he unpunched cards is a contributory infringement of the patents covering the use of perforated cards separately and in combination with the machines. See Carbice Corporation v. American Patents Development Corp., 283 U.S. 27 , 51 S.Ct. 334; Motion Picture Patents Co. v. Uni- [298 U.S. 131, 137] versal Film Mfg. Co., 243 U.S. 502 , 37 S.Ct. 416, L.R.A. 1917E, 1187, Ann.Cas.1918A, 959; McGrath Holding Corp. v. Anzell (C.C.A.) 58 F.(2d) 205; cf. Leeds & Catlin v. Victor Talking Mach. Co., 213 U.S. 325 , 29 S.Ct. 503."
Regardless of how you feel (unworkable or not), the point of the matter is that you are advocating for something that is not law (Flash of Genius) and ignoring something that is law (103).
Your improvident personal feelings aside, Rich is right because he wrote the law. The Supreme Court in Douglas is wrong becasue that law was expressly written to over rule the wayward Court.
The fact that you don’t get this, or don’t want to get this does not change the reality of the situation.
Help, I agree with the Supreme Court and disagree with Rich. You should consider that Rich was just the tip of the spear and that the majority of the patent bar disagreed with Justice Douglas. Giles Sutherland Rich was appointed to the two member committee to review the Federico draft by the APLA. But they were to coordinate and represent not only the APLA, but also all patent bar associations in United States. This is what they did.
As many can tell you, Section 103 is all but unworkable as a statute. Even after 60 years, the rules regarding obviousness are unclear. If you wanted to improve the codification of the law of "invention," I think we might look to Europe. They seem to have gotten it right.
Invalid for lack of written description under MPEP 2173.05(i): “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993).”
See, the post to Really about 15 minutes ago.
6. obviously there are problems in the PTO. I wish you well.
fish, see my reply to "Really" just a few minutes ago. The 102 approach to patent eligibility issues is rejected in Prometheus. If the only novel subject matter in a claim is ineligible subject matter, the analysis has to proceed under section 101.
I really like the part of your post when you said that the USPTO had overruled Gottschalk v. Benson. What I think is really happening is that the USPTO is following the Federal Circuit which under Judge Rich and now under Judge Rader were and still are fighting Benson tooth and nail because they do not agree with it. However, you may be right that the USPTO is part of the problem because they joined the revolt when they began to issue Beauregard claims.
Obviously some do not agree with Justice Douglas. I earlier mentioned that the "smartest," the "greatest" president in American history, Gerald Ford ("Poland is not under Soviet domination"), once tried to impeach Justice Douglas. What this is say about Gerald Ford and what does this say about Justice Douglas?
Really, "You can argue that the program code doesn't distinguish them from other forms of storage medium (and hence, unpatentable under 35 USC 102). However, it is an easy argument to make that they are different."
Before Prometheus came down, I may have agreed with you that the proper solution to the problem of Beauregard claims would have been under section 102 and not under section 101. After all that is the approach the government advanced in its opposition to the Prometheus claims. However in Prometheus, the Supreme Court made it clear that claiming apparently novel, but otherwise unpatentable subject matter, is not a section 102 problem, but a section 101 problem. To understand this point, it'd be useful to read the government brief and the Supreme Court's response.
The big take away from Prometheus on this issue is that the Supreme Court will not abide drafting gamesmanship by patent practitioners that will dress up otherwise unpatentable subject matter by adding claim elements that are old and conventional and whereby the interaction of the unpatentable subject matter with the old and conventional elements is unchanged.
It is clear from the way Judge Rich once thought about the problem is exactly the way you currently think about the problem. Take a look at his opinion (excerpt below) below in Application of Benson, where he concluded that the claims that the Supreme Court eventually held to be in violation of section 101 were patentable because, in his opinion their, only use was in a programmed computer, a kind of machine that was patent eligible as a matter of law because machines were one of the four classes. This kind of thinking would believe that if the claimed subject matter is normally within one of the four classes, that one should move on to section 102 to determine whether it's patentability.
Prometheus is decisive that this kind of analysis is rejected.
From Application of Benson:
"Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines — the computers — are in the technological field, are a part of one of our best-known technologies, and are in the "useful arts" rather than the "liberal arts," as are all other types of "business machines," regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?"
Are you not familiar with 37 CFR 1.75(1) “The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”
The holding of Benson is the law, but only so far as it has been modified by subsequent Supreme Court decisions, notably Diehr and Bilski.
The dicta of Benson has never been the law.
“the ones that make & interpret the laws. You no more do this than examiners”
One slight difference: lawyers are trained and taught to interpret the law. That’s what makes a lawyer a lawyer.
It’s a slight difference that makes all the difference in the world.