Survey Response: Does the Amendment Violate the Written Description Requirement?

by Dennis Crouch

In an earlier post, I mentioned recently issued U.S. Patent No. 8,196,213.  During prosecution, the examiner rejected the pending claims as improperly claiming unpatentable subject matter under 35 U.S.C. 101.   In particular, the PTO submitted that the claimed “computer readable storage medium” could encompass transitory signals, which are themselves unpatentable.  In response, the applicant (Microsoft) amended the claims by adding an express limitation excluding “signals” from the claim scope.  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 application document did not discuss signals or directly define computer readable media other than having the functional qualities of being able to “store data that is accessible by a computer.” However, the application did list several examples of computer readable media, including “magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like.”

In a one-question survey, I asked Patently-O readers “does this patent claim violate the written description requirement?”  As discussed below, most readers (~75%) agreed that amendment did not invalidate the claim.

Of the 850 responses, almost half (46%) suggested that the claim is valid because the amendment does not go beyond what was originally described in the specification.  In its 2012 memo to examiners, the USPTO argued as much:

A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation “non-transitory” to the claim. . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.

See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).  I have some amount of difficulty understanding the explanation given by the PTO — that no new matter problem is created by the amendment “because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.” While the USPTO’s interpretation of the law is important during the prosecution process, no deference is given to this type of analysis when a court later considers a patent’s validity.

Another 22% also suggested that the claim is valid because “negative limitations such as this need not be disclosed in the original application.”  And 4% argued that the limitation should be ignored because it is found in the claim preamble.

Only one option in the survey led directly to an invalidity conclusion. 26% of responses suggested that the claim limitation excluding signals from the scope was improper because that limitation was not disclosed in the original application and that the claim is therefore invalid under the written description requirement. 

In my mind, this entire discussion is ridiculous.  The invention in this case (as in several hundred thousand other cases) is a bit of software. Yet, because of these odd rules setup by the U.S. Supreme Court (and their interpretation by the PTO) applicants feel they cannot be straightforward enough to simply obtain a patent on the software. 

*****

In the above discussion, I jump quickly between “new matter” and “written description” doctrines. During patent prosecution, the two doctrines are relatively inseparable. The PTO tends to issue new matter rejections under 35 U.S.C. 132.  Once a patent issues, the facts that would have created a new matter rejection at the PTO lead courts to invalidate claims for failing the written description requirement of 35 U.S.C. 112.

338 thoughts on “Survey Response: Does the Amendment Violate the Written Description Requirement?

  1. 301

    “Business Methods, it is clear that the people who argue that business methods are eligible for patenting other people have an agenda. The Supreme Court did not hold this. Rather they held that business methods are not categorically excluded. There is a difference.”

    No Ned, there is no difference.

    The claims are eligible to be classified in one of the four enumerated categories.

    Business methods have always been eligible to be classified in one of the four enumerated categories.

    When you and your fellow Sophist argued that business methods should be held patent ineligible in Bilski, the Supreme Court expressly refused to do so and in effect upheld their eligibility.

    These are the plain facts without any games, agendas, semantic word play, or sophistry.

    Business Methods are Patent Eligible Subject Matter.

    Always have been.

    And hopefully always will be.

  2. 300

    As I recall, the same question has been put to you for the better part of a month now without you supplying a straight forward and honest answer.

    Why is that, Ned Heller?

  3. 299

    Circle the illogical once again with Diehr being overturned by Prometheus where no such thing occurred (based on the actual and carefully chosen words of the Supreme Court).

    Ned, you are chasing your tale running in circles.

    This road has been already traveled and avails you not.

  4. 298

    Anon has explicitly and clearly pointed out the multiple and proper legal meanings of the term.

    You have only confused those contexts in all of your comments, Ned Heller. It is you that is not using the term in its proper legal significance. It is you that is the problem.

    It is quite clear who is playing the Sophist and it is not Anon.

  5. 296

    Mr. Word, why do you protest so much?  What is your agenda.  Why do you refuse, absolutely refuse to use the phrase authored by the Supreme Court in Bilski?

  6. 295

    If a business method is not subject to one of the exclusions, and is new and is useful, it passes 101.

    A business method does not pass 101 simply because it is a method.  Not all methods, machines, manufactures or compositions are eligible as a matter of law.  All must be new and useful, and all must not be subject to the exclusions.

    That is what I agree to.

  7. 294

    And that would be you Ned the Sophist as has been explained numerous times , the word has multiple legal meanings depending on context between singular claim and category.

    It is you that is using the term contrary to the proper legal sense by conflating the context of singular claim and category.

    How much more clearly can this be stated? The only way you can not understand this is by choosing not to understand.

  8. 293

    There is no problem using the term if one notes the context with which one is using that term.
    And yet, you have repeatedly, and no doubt purposefully, misused and conflated the context in talking about singular claims and categories of subject matter.

    How is that so many point this out to you, and yet you continue with the same purposeful conflation, AND at the same time accuse everyone else of conflating and causing confusion?

    There is clearly only one single person misusing the term. Only one single person attempting to play word games. There is no need to find a different term. There is only need for you to stop conflating the context of the term between singular claim and category of subject matter.

    This is not up for debate.

  9. 292

    “No claim, no class, no category is categorically eligible for patenting. But that is what you suggest when you say that “business methods are eligible for patenting.”

    Ned, that is simply not true.

    If I invent a conventional machine I can get a patent on the claims of my invention under at least the machine category.

    Like wise, If I invent a business method I can get a patent on the claims of my invention under at least the method/process category.

    Now of course I understand that all claims have to pass other test and analysis to actually become patented.

    But if the claims fit into one of the four enumerated categories the claims are “eligible” for patenting.

    Do you deny this?

  10. 291

    Mr. Serious,  you know you are arguing Rich's point from Application of Benson?

    1. Machines are eligible.  Genus
    2. Programmed computers are machines. Species.
    3. Programmed computers are eligible.  Logically follows.

    See the logic?

    The problem is that 101 require for patentablity not only "machines" but, also, "new" and "useful."

    What Rich tried to do in Benson, and later expressly in Bergy, is remove from 101 "new."  He expressly stated in Bergy that by splitting 101 from 102 in the '52 Act that congress intended that 101 be a threshold issue and that questions of novelty had no place in 101.

    Diehr endorsed that view.

    But that view is wrong and has now been overturned by Prometheus.

  11. 290

    Mr. Sophist, when someone intentionally uses a term that has a specific legal meaning in a sense contrary to that specific legal meaning, then the person who uses that term in that contrary sense is the person who is trying to cause confusion.

  12. 288

    Mr. Word Games, aka, Mr. A Hole,  no it is I who have carefully explained the Supreme Court holding to you.  You carefully explained to me what "eligible" means from a dictionary point of view, ignoring that the SC has used the term very selectively to mean one thing and one thing only: that a claim is patentable under 101.  They do not mean that a claim or category of claims are eligible for patenting generally, or even eligible for patenting under 101.  They mean, the claim is statutory under 101: eligible.

    Using that meaning, the term "business methods are eligible" means they are eligible under 101.  That is what it means.  And, this means they are statutory under 101.  It does not mean they are possibly eligible, or candidates for eligibility, or anything of that ilk.  The meaning is specific.

    However, even since Bergy, the courts have noted the confusion caused by the use of the term.  It is best that we all find and use a different term to avoid confusion.

  13. 287

    Ned, if business methods falls under a certain class or category, why would business methods not be included in that class or category?

    Serious,

    And for clarity please note I am not referring to any specific claim. I am only referring to the category or class.

  14. 286

    Clear sophistry and obfuscation:

    If “eligible” means a claim passes 101, then the phrase “business methods are eligible” has a clear meaning.

    Once again, in one sentence you have used the elgibility dicussion of the singular (claim) with the category (plural: methodS).

    This is NOT a case of using “eligible” in a non legal sense, as Anon has rightfully (and fully in context) pointed out to you nigh a month ago exactly the proper context the discussion should be held under and IT IS YOU that perpetually attempts deliberate confusion by messing up the singular and category notions.

    You are clueless as to even your most blatent sophistry.

  15. 285

    conflate what you do with my position.

    I’m pretty sure that there is no conflation in Anon’s stated explanation.

    In fact, it is clear that the only conflation is Ned Heller’s conflating context between singualr and category.

    And yet, he never seems to want to address that difference…

  16. 284

    Mr. A Hole, no I am not.  

    If "eligible" means a claim passes 101, then the phrase "business methods are eligible" has a clear meaning.  What you are doing is using "eligible" in a non legal sense and thus are confusing things.  Even Rich noted in Bergy the confusion cause by the use of the term "eligible."

    My I respectfully suggest, Mr. Hole, that you stop being an A, and start using the term the way is used by the Supreme Court — "not categorically excluded from eligibilty."

  17. 283

    then please explain, slowly that all of us can understatnd, why the SC did not say that “business methods” were eligible subject matter for patenting and not what it did say, that they were not categorically excluded.

    The words of the Supreme Court were already carefully and slowly explained.

    You chose to play the Umbrage game and ignore the poster that posted the answer.

    Why should someone try to tell you again?

  18. 282

    What I am also saying, however, is that no class of subject matter is categorically included.

    Again with the padantic word tricks.

    No one is saying anything is categorically included. This has been pointed out like a bajizillion times. No one, not even the Court uses that terminology. Why are you?

  19. 281

    Once again Ned is obfuscating the discussion betwen the context of singular claims and category discussions.

    For shame, you sophist.

  20. 280

    More, If, as you say then, "elibible" applies to 101 in the sense that "business methods are eligible" means that the question of their eligibility under 101 is to be determined, then please explain, slowly that all of us can understatnd, why the SC did not say that "business methods" were eligible subject matter for patenting and not what it did say, that they were not categorically excluded.

    Make it slow and clear.

    We wait.

    Now, then, you might also explain to us that when a court finds that subect matter passes 101, they hold that such subject matter is "eligible?"  What do they mean?

  21. 279

    May I politely suggest that we are not communicating.

    That happens Ned when you refuse to provide simple answers to simple questions and instead insist on your prevarications and agenda hunting tactics.

    To communicate, try to give simple answers to the actual questions being asked of you. Stop avoiding giving actual answers to the actual questions by continuing to peddle your false positions of Ned-desired “law.”

  22. 278

    Worth saving from the vanishing third page:

    Drinking and laughing at 6, with NAL, AI, JAOI, and Ping! said in reply to A Dark Light…
    6 simple points for simple 6:

    “1) I am not AI.”

    LOL! Quick let’s get Ned in on this. He is scare sheetless of AI too! Only thing that scares him more is anon’s questions. Ha Ha Ha!

    “3) You realize of course that the portion of Flook allowing dissection was overruled in Diehr, and that Diehr still holds even though Prometheus contradicts it, right?”

    Uh Oh! 6 brain just froze! The Anti Patent crowd runs from reconciling Promotheus with Diehr, like MM ran from the POD debate with NAL! Get those skirts out ladies!

    “4) You still cannot win for losing, as my post at 10:39 PM holds true.”

    LOL! 6 just got B slapped!!

    “5) Repeating your worthless position does not add any worth to the position.”

    LMAO! 6 got double B slapped!!!!

    “6) You remain a clueless tard, unable to even recognize when you have been B-slapped in a conversation. It’s amusing in an odd slapstick manner.”

    Spittin beer out my nose! 6 totally owned!

    This is better than a three stooges marathon!

    lolololol!

    Reply Jun 14, 2012 at 06:09 PM

  23. 277

    Poor Ned, right from the get-go off in the weeds again.

    The eligibility aspect of the statement pertains to section 102/103/112. It does not pertain to section 101. Assuming this is correct

    NO, NO, NO, a billion times NO. Eligibility is a 101 question. Patentability is a 102/103/112 question.

    These are terms of art. Use them correctly or do not partake in a discussion on the matter.

    except perhaps for new and useful machines, processes, manufacturers and compositions of matter.

    Again, off into the weeds and completely missing the simple logic laid before you. You make things unnecessarily complicated by saying this and then proceeding to the exceptions. Why the tom-foolery in even putting this thought out there? It is comepletely unnecessary. The “nominal” and “substantive” aspects is likewise completely unnecesary and unduly complicates things.

    As to the singling out, it is way beyond clear that it is you that singles things out. Why are you still even trying to pretend otherwise?

  24. 276

    "Eliminate a whole category."

    This is where you and your fellow soldiers of trolldem conflate what you do with my position.  I contend that the Supreme Court held that subject matter such as "business methods" were not categorically excluded.  I am not saying that any category is excluded.  What I am also saying, however, is that no class of subject matter is categorically included.

    But that is exactly what you do when you state that certain subject matter such as business methods are categorically eligible for patenting.  They are not.  No claim, no class, no category is categorically eligible for patenting.  But that is what you suggest when you say that "business methods are eligible for patenting."

  25. 275

    Business Methods, it is clear that the people who argue that business methods are eligible for patenting other people have an agenda.  The Supreme Court did not hold this.  Rather they held that business methods are not categorically excluded.  There is a difference.

    As I explained to anon, the courts seem to use the word "eligible" in the sense that if a claim is eligible for patenting, the claim is statutory under section 101, but still may not be patentable under sections 102/103/112.  Eligibility is intended to move the legal question from 101 to 102/103/112.  Thus when somebody says that a class of subject matter is eligible for patenting, they intend to move the subject of the conversation from 101 to 102/103/112.  In other words, they intend to do exactly what the Supreme Court did not intend to do.

  26. 274

    Anon,

    May I politely suggest that we are not communicating.

    1. Is apparent to me that no claim or class claims is categorically eligible for patenting.

    2.  The Supreme Court however has found that in least two cases that certain subject matter are not categorically excluded, these include programmed computers and business methods.

    3.  I believe that the Supreme Court and the lower courts are using the term "eligible" in the sense that a claim that is "eligible" qualifies as patentable subject matter.  The eligibility aspect of the statement pertains to section 102/103/112.  It does not pertain to section 101.  Assuming this is correct and I think you do agree that this is correct, stating that a claim is eligible means that a claim passes 101.

    4. From the above we can state that certain subject matter is not categorically excluded.  However we can also conclude that no subject matter is categorically included except perhaps for new and useful machines, processes, manufacturers and compositions of matter.  However, even these are subject to the exceptions and that if a claim is nominally to a process, it is still may fail section 101 if, despite its outward form, it claims a law of nature, for example.    What the courts seem to suggest aspect is that claims may have a nominal aspect and a substantive aspect.  Determining which is the case actually requires a novelty analysis, what in the claim is new.

    5.  Regards a wall the above, you seem to suggest that I'm singling out certain subject matter for special attention.  I think rather it is not me that is doing this.  Rather, anyone who suggests that certain subject matter, for example business methods, are categorically eligible for patenting are intending to mislead.

  27. 273

    Regardless of Ned’s nearly continuous obfuscation efforts and pedantic wordplay (and steadfast refusal to honestly answer questions put to him), there really is a straight forward application of law, and a proper ensuing discussion of patent eligibility.

    The four enumerated categories dictate the categories of eligibility at teh most macro level of abstraction.

    Any sub-category of the four enumerated categories, being a category that is part of the enumerated category, falls under the same discussion of eligibility – as a category.

    There are no exceptions. Medical methods are not an exception. Business methods are not an exception.

    This is clear and straight forward.

    ALL individual claims, for ANY single and particular application that falls under ANY enumerated category – and thus under any sub-category – must still be evaluated for eligibility in its own right.

    There are no exceptions. Individual claims that can be categorized as Medical methods are not an exception. Individual claims that can be categorized as Business methods are not an exception.

    This is clear and straight forward.

    ANY – and I do mean ANY attempts to twist this understanding to eliminate whole categories of matter as ineligible based on a category designation is the work of a Sophist and a perverter of law who is obviously out with a targeted agenda. There is no legal justifiable reason to pursue philosphical paths based on sub-categories of matter.

    This too is clear and straight forward.

  28. 272

    However, if it turns out that the only thing new is the particular musical score, then the claim takes on a whole new aspect.

    But should that whole new aspect be one of patent eligibility or patentability?

    There is a clear difference between the two and only a sophist would try to eliminate a whole category due an eligibility standard when a machine is clearly one of the four enumerated categories and the instant example should be eliminated on patentability standards.

  29. 271

    Ned,

    Is it not you that uses fallacious arguments making you in effect the Sophist here? I have not seen anyone, not even Les argues music should be patentable subject matter. So let’s burn the straw and get back on topic.

    You Ned Heller, have a fundamental belief that a Process by itself should not be patentable subject matter thus your agenda against business methods, software, medical methods and the like.

    You want to make an argument that business methods and software are just series of instructions which should be artificially labeled abstract ideas and declared non statutory.

    And although you have tried every dirty trick in the book to make that case you have failed because….

    There is nothing in the constitution, the statute, or the case law that says a process by itself is not patentable subject matter.

    And there is no Court case that requires any machines, transformations or technology in the claims at all.

    You lost that battle in Bilski.

    Lost it again in Prometheus.

    And lost it in Congress with the new AIA.

    Business methods and software are statutory and there is nothing you can do about it.

  30. 270

    Ned would have you believe that he is on the side of the innovator. But how can that be when he is against innovation rewards for entire categories of subject matter?

    Beware fo the mirror man, throwing his poisoned reflections of non-reality about.

  31. 268

    ANSWERS FROM NED!

    Why do you single out as a topic business methods?

    Why the inconsistency in the disparate treatment of categories of methods?

    Why the agenda against business methods in particular?

  32. 267

    Your response (as I cannot yet call it an answer) has slid into the third page and is not yet recoverable.

    But here is my response to your response:

    You state “if you need 200 words…” in a misleading turn of phrase, as I explicitly began my piece with “Ned, let’s put this on the table in its entirety.

    I did this for several reasons, not the least of which is your tendency to misconstrue context. And misconstrue you continue to do.

    My several paragraphs on the critical difference between singular and group is completely ignored. Somehow you want to make the distinction between the top level category only and all else. That is simply legal error and is unfounded and unsupported by any legal theory or notion except for your agenda.

    Further, “I believe I have responded to that post, just not like you wanted” is indeed correct. And you still have not. I did not call for a mere “response” – I called for answers.

    You have not yet given me answers.

    First point: consistency. When I say consistency, I do not mean the consistency of your attack on the distinct and particular category of business methods. You are only consistent in your inconsistency. I clearly indicated that the consistency that I am calling your attention to is consistency BETWEEN categories. This is plainly evident with my mention of medical methods – another point you have simply ignored. It was only in half-jest my mention of having a summer intern catalogue your responses and tally how lopsided against a psrticular category of methods patents – and in fact how inconsistent you are when it comes to discussions of categories. I really don’t need any such research. I no longer wait for you stipulation. It is a fact that you are inconsistent.

    This brings me to the question you STILL have not answered: Why? Note in particular that I am not asking “whether?” which is the question you insist on answering – and answering falsely. There is no question as to whether. The question is “why?”

    Why do you single out as a topic business methods?

    Why the inconsistency in the disparate treatment of categories of methods?

    Why the agenda against business methods in particular?

    Merely saying feebly in your response that you do not do so is as unavailing as it is untrue.
    Your statement of “I speak out endlessly about any statement that a particular class of subject matter other than the four listed classes ARE patent eligible subject matter without any qualification whatsoever.” is false on several levels. It is false as a statement onto its own, as even the four classes must still be vetted for patent eligibility – your use of “categorically” continues to be false and misleading. It is false as you speak out endlessly only on one particular class and have never spoken out on any other particular class.

    AS I look at the sum total of comments on this subject, there is also a major difference between us Ned and one that leads to my superior position in this debate and in my general knowledge of law.

    I look at people’s inputs and absorb them. You choose to ignore anything that you don’t like. You try to stick to your position even when such is shown to be weak and misguided. Take for example the discussion on set theory and the Supreme Court choice of language. A clear and rational expression of how the different abstract layers have been and should be viewed and you choose to ignore in its entirety with no logical reason given. You choose to mock that person and tell them to tell that to the Court – as if the Court would reproach that theory. In the court’s chosen language, the facts concerning the Supreme Court and their lessor level of patent law expertise only serves as a “obligatory fulmination” when perfectly valid rationale is supplied for reasons to choose better language.

    Your vehemence is sorely misplaced.

    “Obligatory fulmination” indeed, especially as can be seen that it is you that is ignoring the meaning of the words, and purposefully taking the discussion of eligibility out of the proper context of singular instance to category discussion as well as you continue to play word games with the improper use of the word categorically versus as a category.

    Ned, the questions you need to ANSWER – and not just respond to – are:
    1) Why do you inconsistently – and improperly – apply a category level view of eligibility to one category – at an abstraction level below the four enumerated categories
    2) Why do you have an agenda against this particular (sub-)category of subject matter?
    Answers (and not mere responses) are still required.

    We are appraoching the month mark since I first posted these straight forward questions to you. The fact that you have not given straight forward answers screams so loudly, that your meager “responses” cower and hide in the absence of truth from you.

  33. 266

    “Breyer is going to be a chargin’ his laser and disintegrating that np bro. Gl with your tar dation.”

    6, you, you are not a T-ard, you are a Tard-ette! Breyer made his rationale for dissection clear in Prometheus. And as wrong as it was, he is still bound by his own analysis. (See below).

    “Fourth, to consider the three steps as an ordered combi­ nation adds nothing to the laws of nature that is not al­ ready present when the steps are considered separately. See Diehr, supra, at 188 (“[A] new combination of steps in a process may be patentable even though all the constitu­ ents of the combination were well known and in common use before the combination was made”). ”

    I seriously doubt he will go beyond that reasoning and risk an all out confrontation with the conservative majority over Diehr. (Steven’s was the last liberal dog to try that and look how that turned out!) Point is a skilled draftsman can easily get around that analysis, which serves Breyer right for starting such a game in the first place. And even if Breyer does have the “power” to continue to move the goal post so to speak, you, 6, do NOT have any such power. You are bound by the analysis and the Courts holding. And Patent Attorneys will continue to kick your buttt all day long, at the PTO, BPAI, CAFC, and The Supreme Court!

    So take that Beach!

  34. 265

    Okay I finally found my post you were referring to and reread your explanation above.

    Thank you. Very enlightening and informative.

    I understand at a more in depth level now, even though I always knew just from simple logic that Ned’s reasoning was wrong.

    “”business method” is one of the four enumerated categories, because the four enumerated categories are the top level sets. Between the top level sets and the individual application is an abstraction layer called categories.”

    Yes, makes perfect sense. I doubt you will see any cogent response from Ned on your above point. He will give you the same excuse he gives anon and say the iphone ate his homework. Followed by the customary, you must be AI.

  35. 264

    Another repeated post as the show more comments link continues to misfire:

    Serious,

    Your point 4 in response to Ned below is a (slight) mistatement. It is just not germane whether or not “business method” is one of the four enumerated categories, because the four enumerated categories are the top level sets.

    Between the top level sets and the individual application is an abstraction layer called categories. Don’t be like Ned and be easily confused by the label “categories” in comparison to the top set level of “enumerated categories.” “Categories” are merely subsets within (completely within) the top level sets.

    When one discusses eligibility of anything other than an individual application, one is discussing eligibility as pertains to a group or category. As Anon points out, this discussion of “eligibility” must not be confused with a discussion of eligibility at the individual application level.

    Yes, business methods are a subset of the statutory category of process.

    Yes, as a category, business methods are eligible.

    As Anon states, this does not mean that any one individual and particular claimed business method is patent eligible. This is decidedly NOT due to Bilski. This is simply the meaning of patent law and applies universally to all any one individual and particular claimed method of any kind.

  36. 263

    What I do which is different

    Ned,

    What you do is engage in pedantic word play.

    What is the difference between your new phrase (and it is new, and I doubt even Anon has had a chance to comment on your new set of invisble clothes) of “statutory” and the previous position of “categorically eligible?”

    Your last sentence belies your entire argument, as that is exactly the distinction that Anon has been trying to drive home with you: the distinction between an individual particular case and any discussion of group or category eligibility.

    If only you would “get it.” I doubt that you ever will. Even your comment of “take your set theory to the Supreme Court” indicates that the basic logic eludes you.

    You simply have no clue that you are babbling incomprehensibly. You cannot change to begin to make sense because you don’t even realize that you don’t make sense.

  37. 262

    No Ned,

    You are conflating the singular and group category ideas as Anon continuously beats you up over.

    Bilski was a singular case. Bilski does not and cannot stand for all business method patents. Bilski as a singular case was ruled ineligible not because it was a business method, but rather because it was an abstract idea. It did not make it even to being a method patent under the law.

    You really are horrible at understanding case law, aren’t you?

  38. 261

    No Ned,

    You are once again misunderstanding Prometheus.

    Re-read pages 20 and 21 very carefully.

    You have to realize that Prometheus was indeed decided. And since the Court refused to entertain 12/103/112, the only basis even available for the decision was 101, which mandates that 101 was used as a threshold issue decider.

  39. 260

    “When somebody states that a particle claim or category of subject matter ARE patent eligible, I take issue with the statement as it suggests that a particular claim or category have the same statutory sanction as the four listed classes.”

    I simply wish to point out more dishonesty on your part.

    1. A particular claim is not a category or class.

    2. A category or class is essentially the same thing. See the Websters definition below:

    “class |klas|
    noun
    1 a set or category of things having some property or attribute in common and differentiated from others by kind, type, or quality : the accommodations were good for a hotel of this class | a new class of heart drug.”

    3. Processes are part of the four enumerated categories or classes.

    4. A business method is not one of the four enumerated categories or classes itself but is merely an application of an idea.

    Therefore business methods are statutory.

    PERIOD!

  40. 259

    “When somebody states that a particle claim or category of subject matter ARE patent eligible, I take issue with the statement as it suggests that a particular claim or category have the same statutory sanction as the four listed classes.”

    I simply wish to point out more dishonesty on your part.

    1. A particular claim is not a category or class.

    2. A category or class is essentially the same thing. See the Websters definition below:

    “class |klas|
    noun
    1 a set or category of things having some property or attribute in common and differentiated from others by kind, type, or quality : the accommodations were good for a hotel of this class | a new class of heart drug.”

    3. Processes are part of the four enumerated categories or classes.

    4. A business method is not one of the four enumerated categories or classes itself but is merely an application of an idea.

    Therefore business methods are statutory.

    PERIOD!

  41. 258

    “When somebody states that a particle claim or category of subject matter ARE patent eligible, I take issue with the statement as it suggests that a particular claim or category have the same statutory sanction as the four listed classes.”

    I simply wish to point out more dishonesty on your part.

    1. A particular claim is not a category or class.

    2. A category or class is essentially the same thing. See the Websters definition below:

    “class |klas|
    noun
    1 a set or category of things having some property or attribute in common and differentiated from others by kind, type, or quality : the accommodations were good for a hotel of this class | a new class of heart drug.”

    3. Processes are part of the four enumerated categories or classes.

    4. A business method is not one of the four enumerated categories or classes itself but is merely an application of an idea.

    Therefore business methods are statutory.

    PERIOD!

  42. 257

    “”Business methods can be claimed as processes. But whether they are statutory depends on whether they attempt to claim nonstatutory subject matter, such as abstract ideas. After all, this was the very issue decided by Bilski.”

    Methods and processes are the same thing. Just because you put the name business in front of method, or process does not change a method or process into something else. Methods and processes, are statutory, period. Therefore so are business methods, medical methods, software methods, potash making methods, rubber curing methods, and any other method or process humans can perform.

    The intentional dishonesty of your post is to assume that a process or method is the same as an abstract idea. But this is patently false. An abstract idea is not a process or method An abstract idea is something entirely within the mind. When the idea is applied it becomes a method or process and therefore is statutory subject matter. PEROID! It does not matter whether it is a business method, medical method, software method, rubber curing method, or any other application of an idea.

    Your burden then is to prove that an idea/concept can be performed in the mind and is therefore abstract, or if it can be applied and is a process.

    Whether the application is for business, health care, computers, rubber, or any other process is irrelevant for determining statutory subject matter.

    Now repeat after me please.

    There is no extra conditions on business, software, computers, rubber, medical, or any other application of an idea.

    They are ALL processes and methods.

    They are ALL statutory.

    PERIOD!!!!

    Any questions?

  43. 256

    O E, in the final analysis, you might be right.  One does have to add that the claimed machine, process, …. must also be both

    1. New, and

    2. Useful

    This is why Section 101 cannot be a threshold issue: One cannot know what a claim is actually claiming until one conducts a novelty analysis; and, until one discovers its novel subject matter, one cannot determine whether the claim is directed to a new and useful machine, process, etc., or whether it is instead directed to a law of nature, mental process or abstract idea.

  44. 255

    Repeated post as original has slid into no-man’s land:

    There is something seriously wrong with Ned Heller’s logic according to basic set theory.

    Ned proposes that the larger set of any of the four basic categories is categorically patent eligible while a subset of any of the four basic categories is not categorically patent eligible.

    Given that the larger sets of categories must include the entirity of the smaller sets of categories, Ned’s logic fails at the start.

    Ned either a) does not understand what the words “categorical” or “categorically” mean, or b) has a rudimentary dysfunction with the basic logic of set theory, or c) is pulling this stuff out of his @ss in a rather poor attempt to answer Anon’s questions.

    One final possibility is that all a), b) and c) apply.

  45. 254

    Ned’s “answer” was so bogus it broke the show-more-comments hyperlink.

    Way to go Liar Boy.

  46. 253

    O. Esser, take your set theory to the Supreme Court.  Even anon will agree that every claim is subject to analysis for whether a particular claim is attempting the claim nonstatutory subject matter.  Even anon will agree that no claim or kind of claim is categorically eligible.

    What I do which is different from anon is to assert that "machines, processes, manufactures and compositions of matter" are statutory.  The question remains however in particular cases whether the particular claim is claiming one of these or is instead attempting the claim nonstatutory subject matter.

  47. 252

    A serious question: "How is a business method any different than a process? " Answer: "Business methods can be claimed as processes.  But whether they are statutory depends on whether they attempt to claim nonstatutory subject matter, such as abstract ideas."  

    After all, this was the very issue decided by Bilski.

  48. 250

    There is something seriously wrong with Ned Heller’s logic according to basic set theory.

    Ned proposes that the larger set of any of the four basic categories is categorically patent eligible while a subset of any of the four basic categories is not categorically patent eligible.

    Given that the larger sets of categories must include the entirity of the smaller sets of categories, Ned’s logic fails at the start.

    Ned either a) does not understand what the words “categorical” or “categorically” mean, or b) has a rudimentary dysfunction with the basic logic of set theory, or c) is pulling this stuff out of his @ss in a rather poor attempt to answer Anon’s questions.

    One final possibility is that all a), b) and c) apply.

  49. 249

    Ned : “Machines, processes, manufactures and compositions ARE statutory subject matter, categorically eligible.”

    Okay Ned how is a business method any different than a process?

  50. 248

    Ned,

    I didn’t understand your answer. Can’t you please be honest and just say yes, or no?

    So once again…

    business methods are statutory subject matter.

    Do you deny this?

  51. 247

    Ned’s “answer” was so bogus it broke the show-more-comments hyperlink.

    Way to go Liar Boy.

  52. 246

    A serious, 

    Machines, processes, manufactures and compositions ARE statutory subject matter, categorically eligible.

    The question with regard to a particular claim or category of subject matter is whether they are patentable as one of these.  However, they are not categorically excluded (except, of course, for laws of nature, etc.).

    When somebody states that a particle claim or category of subject matter ARE patent eligible, I take issue with the statement as it suggests that a particular claim or category have the same statutory sanction as the four listed classes.  It is the suggestion that they ARE categorically patent eligible that is the problem.

  53. 245

    Ned, business methods are statutory subject matter.

    Do you deny this?

    seriously.

  54. 244

    Better, I have copies from my e-mail, which I have now posted.  There appears to be some problem with typepad, but I don't know what it is.  

  55. 243

    Anon, 

    1.
    Do you really think that somehow your posts are disappearing from BOTH Patently-O and your typepad account?

                Disappear?  Many are not posted to Patently-O.  I don’t know why.


    2.
    I have suffered through one lousy excuse after another, from not being able to
    find the message (unbelievable, as I addressed that message directly to you so
    that you would receive it – now THREE WEEKS AGO (and you responded directly to
    that very message twice without answering the questions) to you being “too
    busy.”

    I
    believe I have responded to that post, just not like you wanted.  However, not all my replies are posted.  So I will do it again, here.


    3.
    Now to make things ultimately simple for you, here is the post from thelink to patentlyo.com:

    A lot of discussion of “categorical” follows, ending
    in this:

    One can no more make a blanket statement that business methods are patent
    ineligible than one can make the statement about any other category of methods.
    That is the sole reason why the example of medical methods stings so much.

    Does Ned endlessly rail against medical methods? No.
    Why? And more importantly, why
    does Ned endlessly speak out against business methods?

    Anon,
    I speak out endlessly about any statement that a particular class of subject
    matter other than the four listed classes ARE patent eligible subject matter
    without any qualification whatsoever. 
    The SC has never held such a thing. 
    What the SC has held is that particular kinds of subject matter, e.g.,
    business methods and programmed computers, are not categorically excluded.  I believe the SC’s words were carefully
    chosen.   When someone uses a different choice of words,
    I believe they do so with a purpose and intent contrary to the purpose and
    intent of the Supreme Court.

    The question, Ned, is consistency.

    And, Mr. Anon, I am consistent.

    4. You throw out a quote from State Street, impliedly stating that business
    methods were errantly forced into the patent world. In doing so you confirm
    that you have an agenda, since not only do you not explain your inconsistency; you
    continue to seek to validate that inconsistency.

    You neglect to point out that I was responding to a
    post that suggested that State Street had not overturned a long accepted
    exclusion.


    5.One would have thought that the majority opinion in
    Bilski would have been enough. That the rationale accepted by the highest court
    behind Congress choice of enacting specific legislation would have been enough,
    but no – much like Stevens, who would rewrite law and directly countermand
    Congress from the bench, Ned continues his quest against an entire targeted
    category of methods.

                No, I
    continue my quest to combat statements such as “Business Methods ARE patent
    eligible” without any qualification when the SC did not hold that.

    6.This, rather than some “colloquial usage,” has the debate
    been about.

                The
    “whole debate” has been about Ned’s improper usage and selective category targeting.

    The usage of the legal term of eligibility simply is
    different when discussing an entire category, precisely because a category is
    not a specific instance. It is telling that the quote Ned pulls from State
    Street is the court’s renunciation of a categorical approach of denying
    eligibility
     to an entire
    group of subject matter regardless of individual claimed subject matter, a
    categorical approach that is clearly the focus of Ned’s agenda.

    One can – and should – talk about the
    eligibility of A claim, ANY claim, ALL claims – in their singular instances.
    But that does not mean that one cannot also discuss eligibility on a larger scale,
    on the scale of “as a category.” This is expressly, legally correct when discussing a doctrine,
    such as the business method exception to patentability, that itself treats the entire
    category as eligible or ineligible.

    The duplicity, then, is that Ned points to his
    opponents and rests his case on an alleged misuse of a legal term
    when it is Ned and his agenda that is misusing the term, obfuscating the
    singularity and the group aspects to suit his agenda. It is no accident that
    Ned rails against Judge Rich, whom he sees as personally responsible for the
    group (as a category) eligibility of business method patents.

    But that is simply what the law actually is.

    As a group, business methods are patent eligible. No
    one has ever said or implied that any member of
    ANY group
     gets a free ride
    past the individual and specific analysis of eligibility. Ned’s dance between
    the distinct and equally valid legal meaning of the term in two different
    contexts – group first, then singular instance – is what the debate has been
    about.

    Thus, properly framed and in clear context, Ned,
    explain your inconsistent treatment of the group, as a category and not in any
    singular instance of particular claimed subject matter, of business methods.
    Your agenda of reinstalling the discredited business method exception is
    clearly aimed at the group level, the as a category level. Why do you single
    out as a topic business methods? Why do you target the category of business
    methods in your endless posts?

    Anon, if you have to spend 200 words to qualify your
    meaning of BMs ARE PE, to square your statement with the holding of the SC, why
    do so?  Why don’t you simply use the
    phraseology of the SC?  BMs are not
    categorically excluded?

     

    There follows an obligatory fulmination.

     

    Let me conclude with this:

    1.    
    Machines,
    processes, manufactures and composition of matter are listed classes.

    2.    
    The listed
    classes ARE eligible subject matter.

    3.    
    A particular
    kind of subject matter not listed is NOT categorically eligible.  As well, they are not categorically excluded.

    4.    
    Because
    particular kinds of subject matter other than the four classes are not
    categorically eligible, it is misleading to suggest they are.

  56. 242

    Ned, it’s over dude and it’s official. You have replaced your mentor MM as the blogs resident troll in every category. You post more that MM every did even at his peak. And now you have found your POD Waterloo, with your anti business agenda!

    Maybe you can out run anon’s questions like MM tried to do with Noise Above the Law, but most assured your credibility is destroyed!

  57. 240

    6 simple points for simple 6:

    “1) I am not AI.”

    LOL! Quick let’s get Ned in on this. He is scare sheetless of AI too! Only thing that scares him more is anon’s questions. Ha Ha Ha!

    “3) You realize of course that the portion of Flook allowing dissection was overruled in Diehr, and that Diehr still holds even though Prometheus contradicts it, right?”

    Uh Oh! 6 brain just froze! The Anti Patent crowd runs from reconciling Promotheus with Diehr, like MM ran from the POD debate with NAL! Get those skirts out ladies!

    “4) You still cannot win for losing, as my post at 10:39 PM holds true.”

    LOL! 6 just got B slapped!!

    “5) Repeating your worthless position does not add any worth to the position.”

    LMAO! 6 got double B slapped!!!!

    “6) You remain a clueless tard, unable to even recognize when you have been B-slapped in a conversation. It’s amusing in an odd slapstick manner.”

    Spittin beer out my nose! 6 totally owned!

    This is better than a three stooges marathon!

    lolololol!

  58. 239

    Ned,

    Note what Anon says: the posts are not in Patently-O and they are not on your separate account. Even if it did not post on Patently-O, the post would be in your records.

    In other words, the excuse of “the dog ate my homework” has been exposed as a LIE.

    You never did answer Anon’s questions. This is clear from your stumbling on the “Predicting” thread.

    Here’s my prediction: Ned will find yet another (lame) excuse to avoid answering the questions.

    Survey says…

  59. 238

    First question:

    "Do you really think that somehow your posts are
    disappearing from BOTH Patently-O and your typepad account?"

    I don't know why some of my e-mail responses are not posted.  I now, often, but not continuously, check to see that my responses are posted.  But it is clear that not all of them are posted.

  60. 236

    IANAE, the effect is the same — claim scope cannot extend to signals.  However, if one adds the negative limitation to the claims, there are issues of WD support that might be raised, as Dennis OP suggests, if the specification does not make it clear that signals are not included in the disclosed embodiments, or the equivalents thereof.  

    There is also the issue of intervening rights if a claim limitation is added during reissue or reexamination.  Why not avoid that issue.  Forcing a claim amendment where not necessary to clarify claim scope is unwarranted given the potential adverse consequences to the patentee.

     

  61. 235

    If you have questions, tell me what they are or link to a post that has the question you want answered.

    FN Really Ned? We went through this TWO WEEKS AGO.

    One of the great things about having a summer intern is the ability to task that person with “research” that otherwise would not be done.

    Having done so for this particular matter, I offer Ned Heller a chance at redemption. His last chance.

    Think carefully Ned before you pile on lies to cover for other lies.

    You now state that you have responded to me this past Monday. Which thread and what time stamp marks this alleged response?

    Respond carefully – as if your credibility depends completely on your answer.

    Before you do provide that answer, and being aware of your prior excuse of Patently-O not posting your message, I want you to be aware of the fact that your typepad account contains a record of your messages. While my summer intern notes that that account has an odd datestamp feature, I have reviewed every single message of yours since you stated last Friday, June 8 at 7:23 PM on the thread “Avoiding Subject Matter Problems but Creating Written Description Problems” that you would take the time and read my questions and get back to me.

    Further, I have had each and every message matched between your typepad account and the posts as show up on Patently-O.

    Do you still want to stay with your line about having answered me?

    Do you really think that somehow your posts are disappearing from BOTH Patently-O and your typepad account?

    I have suffered through one lousy excuse after another, from not being able to find the message (unbelievable, as I addressed that message directly to you so that you would receive it – now THREE WEEKS AGO (and you responded directly to that very message twice without answering the questions) to you being “too busy.”

    Of note in regards to your being “too busy” is the fact that of the four major threads since your acknowledgement of having my questions – you have posted nearly twice as much as the second most prolific poster (6) and nearly twice as much as the third and fourth most prolific posters COMBINED (Malcolm and IANAE).

    Now to make things ultimately simple for you, here is the post from the link to patentlyo.com thread:

    “anon said in reply to Ned Heller…

    Ned, let’s put this on the table in its entirety.
    “One cannot say that any kind of methods are eligible subject matter without determining whether they are in fact claiming abstract ideas or laws of nature or natural phenomena. Every claim is subject to the exceptions. Every.

    Here’s where Ned Heller is playing word games and obfuscating:

    Ned is once again taking a specific singular instance and applying the Court’s rationale to a targeted, entire category.

    Note that Ned’s quote is dealing with subject matter, not as a category, but as an identified example. In Ned’s quote, it is in the specific instances, and thus singularly, that claims are determined to violate the judicial exceptions or not.

    Ned subtlely takes this quote out of that singular claim context and applies it at a doctrine level into a vendetta against an entire category of method claims in the first instance.

    That is a clear legal error. And it is deceptive to even attempt to paint the situation otherwise.

    Consider Ned’s misdirection:
    Thus, the term “eligible” has a specific meaning in patent law. It means that the claimed subject matter qualifies under Section 101 as patentable subject matter. The question still remain whether the claimed subject matter is patentable under 102/103/112.

    Thus further, when one states without qualification that a claim is eligible for patenting or that claimed subject matter is eligible for patenting, his meaning in that subject matter is patentable subject matter under 101, subject to disqualification under 102/103/112 for want of novelty and the like. The term is a legal term with a specific legal meaning.

    While it is true that the term has a specific legal meaning, it is Ned, not his opponents that then misuses that term. When Ned’s opponents talk about business methods, they clearly are talking about them not in a singular claimed matter, but as a category, a larger entity. Ned’s opponents are clear in which context the legal term is used – and used correctly.

    The ongoing discussion thus uses “eligibility” in a different sense than how Ned provides in his argument. The “trick” is that Ned, too, is using “eligibility” in this SAME larger group sense – and yet he is pretending NOT to. Ned is pretending that he is following the legal norms of the word in the sense of the singular instance. He is not.

    Cloaked is an attack on subject matter as a broad category and the legal term as applied against a singular instance of claimed subject matter. Ned would have everyone believe that those advocating for business methods to be deemed patent eligible are doing so recklessly. But it is Ned that is reckless. Ned twists a specific legal meaning and takes it from a singular instance context to apply it to an entire (and entirely targeted) specific category context. Clearly, it is the misuse and deliberate obfuscation of context that Ned uses in his arguments. The target of his agenda is clear and undeniable. He targets an entire category. Nowhere has he ever posted with such vim against any other category. It is Ned that is playing games with context.

    One can no more make a blanket statement that business methods are patent ineligible than one can make the statement about any other category of methods. That is the sole reason why the example of medical methods stings so much.

    Does Ned endlessly rail against medical methods? No. Why? And more importantly, why does Ned endlessly speak out against business methods?

    The question, Ned, is consistency.

    You throw out a quote from State Street, impliedly stating that business methods were errantly forced into the patent world. In doing so you confirm that you have an agenda, since not only do you not explain your inconsistency; you continue to seek to validate that inconsistency.

    One would have thought that the majority opinion in Bilski would have been enough. That the rationale accepted by the highest court behind Congress choice of enacting specific legislation would have been enough, but no – much like Stevens, who would rewrite law and directly countermand Congress from the bench, Ned continues his quest against an entire targeted category of methods.

    This, rather than some “colloquial usage,” has the debate been about.

    The “whole debate” has been about Ned’s improper usage and selective category targeting.

    The usage of the legal term of eligibility simply is different when discussing an entire category, precisely because a category is not a specific instance. It is telling that the quote Ned pulls from State Street is the court’s renunciation of a categorical approach of denying eligibility to an entire group of subject matter regardless of individual claimed subject matter, a categorical approach that is clearly the focus of Ned’s agenda.

    One can – and should – talk about the eligibility of A claim, ANY claim, ALL claims – in their singular instances. But that does not mean that one cannot also discuss eligibility on a larger scale, on the scale of “as a category.” This is expressly, legally correct when discussing a doctrine, such as the business method exception to patentability, that itself treats the entire category as eligible or ineligible.

    The duplicity, then, is that Ned points to his opponents and rests his case on an alleged misuse of a legal term when it is Ned and his agenda that is misusing the term, obfuscating the singularity and the group aspects to suit his agenda. It is no accident that Ned rails against Judge Rich, whom he sees as personally responsible for the group (as a category) eligibility of business method patents.

    But that is simply what the law actually is.

    As a group, business methods are patent eligible. No one has ever said or implied that any member of ANY group gets a free ride past the individual and specific analysis of eligibility. Ned’s dance between the distinct and equally valid legal meaning of the term in two different contexts – group first, then singular instance – is what the debate has been about.

    Thus, properly framed and in clear context, Ned, explain your inconsistent treatment of the group, as a category and not in any singular instance of particular claimed subject matter, of business methods. Your agenda of reinstalling the discredited business method exception is clearly aimed at the group level, the as a category level. Why do you single out as a topic business methods? Why do you target the category of business methods in your endless posts? I have commented previously about having a summer intern pound through the raw data of Ned’s posts by subject matter.

    But we both know what the result of that exercise would be, don’t we?

    Shall we stipulate your unhealthy bias?
    Shall we stipulate the fact that you do have a singular (category) target?
    Shall we stipulate that you have an agenda?

    Why the inconsistency Ned? Why the agenda?

    Reply May 24, 2012 at 07:49 AM

    Ned Heller said in reply to anon…
    Put it to rest, anon.”

    I include the first part of your immediate response and now DEMAND that YOU put your games to rest. YOU stop this.

    No more excuses.
    No more lies.
    Straight-up pure answers only. Your credibility is at stake. What you don’t say and when you don’t say it speaks more loudly than what you (most prolifically) do say.

  62. 234

    Why cannot the Examiner enter a 101 rejection that the claimed CRM reads on signals, with a suggestion that the applicant or the applicant’s attorney submit a disclaimer to the effect that the signals and other transitory media are disavowed?

    That’s different from an unsupported negative claim limitation how, exactly?

  63. 233

    IANAE, good post.  I will concede the point on scope.

    Under the law as it stand, it appears that a broad CRM reference covers both physical media and signals even if only physical media is disclosed.  To obviate a 101 rejection, we need a disavowal of claim scope by the patent applicant such that his claim does not extend to signals.  Amending the claim to add a critical exclusion not actually disclosed in so many words runs the risk of a WD problem down the road.

    So what can we do?  We know that disavowal can be made by representation in prosecution history.  Why cannot the Examiner enter a 101 rejection that the claimed CRM reads on signals, with a suggestion that the applicant or the applicant's attorney submit a disclaimer to the effect that the signals and other transitory media are disavowed?

  64. 232

    Shakes, of course the discussion of what Alappat held is entirely on point.  Did the court hold that programmed computer devoid of context are patent eligible per se, or did it hold something a lot more limited?  Otherwise, the bootstrapping that occurs from the premise that a programmed computer is patent eligible is horrendous.  B-claims are one glaring example.

  65. 231

    Hey,  Mr. A   Hole,

    Anon, last week, referenced a thread and several posts by time stamp that he wanted me to answer.  I answered anon's post Monday, in detail, in several replies directed to his original post.  To be sure, none of the posts he identified included the questions he wants answered.  One did include his complaints that I have not answered these phantom questions.  To which I again responded, "What questions?"   

    Anon, stop this.  If you have questions, tell me what they are or link to a post that has the question you want answered.

  66. 230

    Hey,  F o o l, read the rest of the opinion.  The examiner's position was upheld despite being inconsistent with the specification because he supported his views with extrinsic evidence.  

    Takeaway: Extrinsic evidence wins.

  67. 229

    6 simple points for simple 6:

    1) I am not AI.

    2) The power differential is meaningless to the conversation: no one is debating that a power differential exists. The conversation does include aspects of whether that power is being used in a legal and justifiable manner.

    3) You realize of course that the portion of Flook allowing dissection was overruled in Diehr, and that Diehr still holds even though Prometheus contradicts it, right?

    4) You still cannot win for losing, as my post at 10:39 PM holds true.

    5) Repeating your worthless position does not add any worth to the position.

    6) You remain a clueless tard, unable to even recognize when you have been B-slapped in a conversation. It’s amusing in an odd slapstick manner.

  68. 228

    If a claim is to CRM, the disclosure consists only of physical media, you seem to suggest that a court should construe such a claim as non statutory because one of ordinary skill would read the claim on signals.

    The disclosure doesn’t “consist only of physical media”, it recites media generally, and gives a number of examples that happen to all be physical. It’s clear that the general recitation of media is meant to apply as broadly as possible, and would be understood as broadly as possible, since the nature of the medium is irrelevant to the operation of the invention, and that’s how we all draft all the time – our specs are never limited to listed examples of an explicitly recited class.

    I reiterate at this point that I don’t believe a recitation of “storage media” could reasonably be read on a signal alone. However, it’s quite clear by now that “media” could.

    The problem with reading signals out of the claims is that we’re only doing it because we have a specific objection to overcome. There’s nothing in the spec to exclude signals. Do you think the inventor actually contemplated that his invention wouldn’t work for signals, or that he specifically wanted to disavow patent protection over signals? Of course not. They just happen to be subject matter he is legally not allowed to claim.

    Supposing the spec had written “SRAM” instead of “RAM”, and for some reason the applicant couldn’t claim DRAM. Would it be fair to amend the claims to recite “excluding volatile media”? All the examples in the spec would have been non-volatile, but the invention would have been just as applicable to DRAM, it would still have been the applicant’s clear intent to include as many media types as he could think of, and the recitation of “storage medium” clearly includes DRAM to a person of skill in the art.

    What if someone uses a media type not listed, but otherwise infringes the claim to a “storage medium”? Does he have a defense that the claim term “storage medium” should be interpreted narrowly and limited to the examples in the spec? Should we start pulling common features of the listed media out of thin air, and use them to construe a general and well-understood claim term? I should hope not. General claim terms are general, both for validity and for infringement.

  69. 227

    “We now know from hindsight that step (a) needed to include step (b) and the wherein clause as well. This way Breyer’s dissection trick can’t be used to support the rationale that the additional steps simply say “apply it”. If step (a) had been fully integrated with step (b) then Breyer would have found an application of the concept at each individual step as well as the claim as a whole.”

    Breyer is going to be a chargin’ his laser and disintegrating that np bro. Gl with your tar dation.

  70. 226

    “Either you were wrong to begin with (most likely), or we have a case where the Justices surpassed their constitutional authority and wrote law above what Congress provides, and is thus illegal (not likely, but arguable in a new light).”

    Or… I wasn’t wrong and the justices are doing no more than enforcing the caselaw that has been on the books for a hundred years plus. Either way.

    “The Court isn’t allowed to “pump up the power” because the constitution didn’t give them that power.”

    He obviously did just that in the case already as plainly Prom was more integrated than Flook, the last USSC case where they busted out the disintegration ray, and who are you going to cry to?

    Again, AI, you don’t seem to be down with the power differential bro. They have it, and you do not.

  71. 225

    “What if the examiner finds bicycle art and you want to exclude bicycles?”

    Then you move up the dep that has all the species into the ind. and strike “bicycles”. You are right of course that you couldn’t just leave the dep with the species down in the dep and then say “wherein the wheeled vehicle is not a bicycle and not a unicycle”

  72. 223

    “Do you really believe that this sentence would have any impact on an ordinary artisan’s understanding of what the applicant invented?”

    No, frankly I think an ordinary artisan understands them to not have invented ja ck s quat. Ones and zeros on a CD do not an invention make. Especially if you didn’t even bother to tell us the sequence. I think, or actually I know with 100% certainty, that anyone outside of the legal nonsense surrounding these claims knows good and well that there was no invention there. It took legal t omfoo lery by top legal minds to try to sho ehorn these claims into acceptability in the first place. Transitory and non-transitory ones are going in the garb age or will be translated into method claims ultimately. See Cybersource.

    “Is there any ordinary artisan who would read the spec and not understand that in at least some implementations software could be stored in a computer readable medium that isn’t a signal?”

    As I’ve already told you on numerous occasions now, he has WD for one (or a few) embodiment encompassed within the claim you propose he then be granted WD for.

    In any event, I will leave you the final word, I sign off from this portion of the thread.

  73. 222

    “Are you honestly taking the position that the applicant needed to explicitly disclose in the spec that in at least one implementation computer executable instructions configured to perform methods disclosed therein are stored in a computer readable medium that isn’t a signal?”

    If that is what he wants to come in and claim as his invention later on, he da m well better consider it. It’s called providing written description so that we know you possessed it at time of filing.

  74. 221

    “And you think an ordinary artisan wouldn’t understand the applicant to have possessed a computer readable medium which isn’t a signal?”

    See that’s the rub bro, as you note we get into semantics about the word “a” before “computer readable medium which isn’t a signal”. Yes, he had one (or a few) of them. Thus he did have “a” “computer readable medium which isn’t a signal”. However he is then going to draft a claim that uses “a” in an way to mean “any”. Did he have them all as is going to be encompassed by a claim which uses the word “a”? No. He did not.

    It’s a semantics difference that makes a ton of substantive difference.

    “I fail to understand why it is that you think an ordinary artisan wouldn’t understand him to have possessed a computer readable medium that isn’t a transitory signal. ”

    Once again, I do think he possessed “a” CRM that isn’t a transitory signal. I do not think he possessed all CRM’s that aren’t a transitory signal. And his claim is going to read on them all bro not just the one that he described and has WD for.

  75. 220

    That’s a mighty big dustcloud you’ve kicked up there Ned.

    Of course you realize that it doesn’t prove anything, and that you have not answered any questions or addressed any points in the discussion.

    Perhaps you might actually want to join the discussion, but be warned, joining the discussion means actually addressing the points that DESTROY your agenda, an agenda that is but a walking shadow, a poor player, that struts and frets his hour upon the stage, and then is heard no more; an agenda told by an i_diot, full of sound and fury, signifying nothing.

  76. 219

    Nice language Ned.

    You seem to get upset rather easily when your are shown to be full of BS.

    A better solution for all would be for you to simply stop shoveling the BS (it is not me that is “posting this kind of C R A P on Patently-O” every waking hour) and most assuredly, you are one of the maximum offenders on Patently-O.

    Do you even realize how often you post here?

    And as far as “engaging in real conversation, I see that you are STILL avoiding Anon’s questions.

    I see why you are offended: someone challenges the BS you shovel. How dare someone do so, you post in your own name, therefore it must be true [major eyeroll].

  77. 218

    Thus the typical BRI ignores the specification and takes the language the way it is written, and construes it as broadly as anyone can given the constraints of the English language. See, In re Morris. That is the holding of that case.

    Simply not true.

    From the case:

    Since it would be unreasonable for the PTO to ignore any interpretive guidance afforded by the applicant’s written description, either phrasing connotes the same notion: as an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”

    This is clearly NOT “ignores the specification.”

    Indignation at being exposed as a charlatan to follow.

  78. 217

    “can you ever turn an ineligible step of thinking a new thought into an eligible claim merely by adding a single old, conventional and patent-eligible step prior to the step of thinking a new thought? ”

    A false reductio ad absurdum. Truly a strawman repeated nauseous ad infinitum.

  79. 216

    IANAE, good discussion about BRI vs. proper construction.  If a claim is to CRM, the disclosure consists only of physical media, you seem to suggest that a court should construe such a claim as non statutory because one of ordinary skill would read the claim on signals.

    Would he though?  After reading the specification?  I don't think so.

    In the PTO, however, BRI seeks a broader construction, not limited to disclosed embodiments.  Thus the typical BRI ignores the specification and takes the language the way it is written, and construes it as broadly as anyone can given the constraints of the English language.  See, In re Morris.  That is the holding of that case.

    But, where, as here, one of ordinary skill in the art would not read the claim so broadly after reading the specification, the Commissioner should be a little more humane and show some mercy.  He after all, is not, Inspector Javert.

  80. 215

    1) Premise: no disclosure of signals;

    Disclosure of a class of media which is (let’s say) understood in the art to include signals.

    2) Where the ordinary construction by a court would not encompass signals.

    If that’s your reason to use a narrower construction than BRI, then what’s the point of BRI?

    Besides, it’s a bit of an inductive leap, since the courts are supposed to understand the claims as a person skilled in the art would, and if he understands the media as claimed to include signals, the claim will be found ineligible.

  81. 214

    IANAE, 

    1) Premise: no disclosure of signals; and 
    2) Where the ordinary construction by a court would not encompass signals.

    In these circumstances, I see no problem for the commissioner to require the examiner to make such a statement, perhaps requiring the applicant to formally state his agreement or disagreement.  If the applicant disagrees with the construction, and he specifically wants to claim signals, he can rebut the construction.

    If the claim issues without "non transitory" in the claim, it causes no problem at all given the examiner's statement, and the lack of disagreement by the applicant, to guide the court and given the assumption that a proper construction would not read on signals.

    The combination should be viewed as a "clear disavowal" of claim scope.

  82. 213

    “can you ever turn an ineligible step of thinking a new thought into an eligible claim merely by adding a single old, conventional and patent-eligible step prior to the step of thinking a new thought? ”

    Mad Man, that is a strawman question.

    Any thought, reduced to a step is no longer a thought.

    What is it you wonder?

    It is an act. An act is a physical behavior.

    Steps, A.K.A acts/behaviors, are all patent eligible, individually or in combination whether old, conventional or new.

    Now if you feel you have the intellectual capacity to broach this subject further then you may proceed.

    Otherwise feel free to return to running around screaming “9-0 suckie” like the Mad Man you truly are.

  83. 212

    No, I didn’t. A machine that is has no inputs and no output is useless. A machine must do “work” to be useful.

    If what you call a machine simply exists and does nothing, it may be a machine, but it is useless and cannot be patented.

    For example, a machine that consumes power and produces nothing more than heat is as patentable as the computer/boat anchor. Heat is marginally useful, but not substantially useful.

    So, you turn on a computer and it produces heat. No inputs and no outputs. It just sits there, doing nothing. Just how patentable is such a machine?

    But you say, a programmed machine is useful. Just how is a programmed machine that has no inputs and no outputs useful? It is not useful.

    The utility begins when the machine is connected into the real world, when it does something, when it does work.

  84. 211

    if BRI would ORDINARILY encompass signals […] a policy statement that requires the examiner to specifically state in his FAOM that he is construing the claims to not read on signals.

    A policy statement to not follow BRI and put it in writing? Sounds like a very bad way to address the problem of the PTO allowing claims it should not be allowing.

  85. 210

    American, if BRI would ORDINARILY encompass signals despite no mention of signals in the specification, I think the PTO could handle this matter by a policy statement that requires the examiner to specifically state in his FAOM that he is construing the claims to not read on signals.

    That would have been a very simple, clean, way of handling the problem.

  86. 209

    As noted in the 9-0 opinion, the claim effectively removed the “law of nature” (i.e., the correlation) from the public domain.

    MM, a law of nature is not a mental step. There is simply no way to spin this case about your mental steps test theory. Fact is a claim with an old step and mental step is statutory. Period. And you can’t prove otherwise?

    “You lost.”

    Lost what? One medical methods case is ruled non statutory and what, all medical methods are non statutory? Now I know where Ned got his logic!

  87. 208

    suckie it can be rightfully argued that this type of analysis is NOT the correct use of the Diehr doctrine

    LOL. It can be rightfully argued that you are beating a strawman.

    Here’s a question for you, suckie: can you ever turn an ineligible step of thinking a new thought into an eligible claim merely by adding a single old, conventional and patent-eligible step prior to the step of thinking a new thought? If you believe the answer is yes, please provide a hypothetical example and explain why such a claim is eligible. If you believe the answer is “no”, then please STFU and return to your habitual shrimping of GQ and his minions. Thanks.

  88. 207

    You forgot “conventional” and “well-known”. LOL.

    So did you, especially when it comes to all those beloved bio and DNA patents.

  89. 206

    Breyer did dissect claims in his analysis but not for the purpose of looking for an old step and mental step combination and then declaring the claims non statutory. That is your misguided fantasy. For you to believe that is the law and your mental steps test theory was what the case was about is delusional.

    As noted in the 9-0 opinion, the claim effectively removed the “law of nature” (i.e., the correlation) from the public domain.

    S-ck it, suckie. You lost.

    9-0.

    it certainly isn’t dissecting claims to find old and mental steps

    You forgot “conventional” and “well-known”. LOL.

    9-0.

  90. 204

    MM, you miss the point. Breyer did dissect claims in his analysis but not for the purpose of looking for an old step and mental step combination and then declaring the claims non statutory. That is your misguided fantasy. For you to believe that is the law and your mental steps test theory was what the case was about is delusional.

    Breyer put the claims back together and made his final decision when looking at the claims as a whole. In Breyer’s view, since the individual steps of the claim did not do what the claims as a whole did, the concept was not fully integrated in the claims and therefore was not an inventive application of the concept, like Diehr.

    Of course it can be rightfully argued that this type of analysis is NOT the correct use of the Diehr doctrine.

    But it certainly isn’t dissecting claims to find old and mental steps then simply declaring the claim non statutory either. The latter which is your self delusional wet dream.

    Now you may feel free to continue running around screaming 9-0! 9-0! 9-0! like the Mad Man you are.

  91. 203

    Mr. A Hole, the post was not directed to you.  

    Or was it?

    Who TF are you?  You spend your every waking hour posting this kind of C R A P on Patently-O.  Never engaging in real conversation, and maximizing your offensiveness in every possible way.  Why don't you just leave, you fricken A, Hole.

  92. 202

    Wrong, did I suggest that Prometheus was decided under 102?  I have many, many, many times suggested that I thought the government brief was consistent with Diehr which would argue that the case should have been decided under 102.  But it wasn't.  I was surprised, and have said so many times.

  93. 201

    Infringement, Alappat involved a digital circuit in a graphics display, and was claimed as such.   The majority opinion, in discussing 101, heavily relied on the specific application of the claimed elements to support its holding.  See below.  Alappat was not dealing with a programmed general purpose digital computer at all.  Furthermore, even it a programmed GP digital computer could be substituted for the very specific digital circuits claimed, the claim was still limited to a graphic display. 

    The court then discussed the "reasoning" of the Board that a programmed computer is categorically excluded.  The Alappat majority disagreed with this reasoning, observing that Benson had not categorically excluded the possibility.  But all that discussion of the reasoning of the Board is dicta.   The holding is that the claimed subject matter was to a specific machine:

    "Although many, or arguably even all,[22] of the means elements recited in claim 15 represent circuitry elements that perform mathematical calculations, which is essentially true of all digital electrical circuits, the claimed invention as a whole is directed to a combination of interrelated elements which combine to form a machine for converting discrete waveform data samples into antialiased pixel illumination intensity data to be displayed on a display means.[23] This is not a disembodied mathematical concept which may be characterized as an "abstract idea," but rather a specific machine to produce a useful, concrete, and tangible result.The fact that the four claimed means elements function to transform one set of data to another through what may be viewed as a series of mathematical calculations does not alone justify a holding that the claim as a whole is directed to nonstatutory subject matter. See In re Iwahashi, 888 F.2d at 1375, 12 USPQ2d at 1911.[24] Indeed, claim 15 as written is not "so abstract and sweeping" that it would "wholly pre-empt" the use of any apparatus employing the combination of mathematical calculations recited therein. See Benson, 409 U.S. at 68-72, 93 S.Ct. at 255-58 (1972). Rather, claim 15 is limited to the use of a particularly claimed combination of elements performing the particularly claimed combination of calculations to transform, i.e., rasterize, digitized waveforms (data) into anti-aliased, pixel illumination data to produce a smooth waveform.Furthermore, the claim preamble's recitation that the subject matter for whichAlappat seeks patent protection is a rasterizer for creating a smooth waveform is not a mere field-of-use label having no significance. Indeed, the preamble specifically recites that the claimed rasterizer converts waveform data into output illumination data for a display, and the means elements recited in the body of the claim make reference not only to the inputted waveform data recited in the preamble but also to the output illumination data also recited in the preamble. Claim 15 thus defines a combination of elements constituting a machine for producing an antialiased waveform.

  94. 200

    “Do you agree?”

    No, 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.

    It’s about time you stopped the farcial reading of law.

  95. 197

    Bipolar, OK.  I can accept this.  But it remains that Prometheus considered the conventionality of the administering and determination steps in its analysis.  Why?  The Diehr majority went out of it way to state that the novelty of the elements of the claim had nothing to do with the analysis.  However, in concluding, it had this to say:

    " On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101"

    They elaborated in fn. 15

    "The dissent's analysis rises and falls on its characterization of respondents' claims as presenting nothing more than "an improved method of calculating the time that the mold should remain closed during the curing process." Post, at 206-207. The dissent states that respondents claim only to have developed "a new method of programming a digital computer in order to calculate—promptly and repeatedly—the correct curing time in a familiar process." Post, at 213. Respondents' claims, however, are not limited to the isolated step of "programming a digital computer." Rather, respondents' claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured—a result heretofore unknown in the art. See n. 5,supra. The fact that one or more of the steps in respondents' process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101"

    Note the phrase:  "…a result heretofore unknown in the art."

    Even in explaining its holding, the court seems to requires a new result.  Do you agree?

  96. 196

    correction: the agenda driven, particularized vocal minority anti-business method and software crowd.

  97. 192

    Good drafting should make the inventive concept clear

    Better drafting should make the inventive concept clear enough – and unclear enough to be mallible for maximum coverage.

  98. 191

    somebody independently filed, the day before you did, on some other inventive concept, distinctly different from yours.

    Good drafting should make the inventive concept clear, so that it can be claimed in the case of “accidental anticipation”. However, if the anticipation is actually within your inventive concept, there may be nothing you can do. Even if you are only anticipated by one day, you have not made a new, useful, and non-obvious contribution to the art, strictly speaking.

    Looking at it from the other direction, if your “inventive concept” is described broadly enough to include that which may not be patented, and you don’t have a narrower or more focused inventive concept to fall back on, you might have a problem.

    But this spec didn’t have that particular problem. Six rather broad categories of statutory media were listed in the spec, and the examiner didn’t find art for any of them. The problem here is one of claim drafting, and the PTO is not a charity.

  99. 190

    I’m going to write one more response for your ta rd brain and that’s going to end my contributions to this old thread. I’ll try to make it a good and comprehensive one because I’m a nice guy.

    This conversation follows my (re?)discovering the actual Diehr patent some months ago via a wiki. Upon looking at the actual patent complete with art cited and rereading the decision the holding made even more sense to me than it did before, and how it fit with Prom was even more clear to me.

    What I had noticed was that the court called out specifically what the applicant thought they invented which included three separate parts. The three separate parts being steps all associated with accompanying structures in the spec that enable the steps to be performed. First they noted that they had super good gathering of temperature data aka “monitoring” so that they could get super good temp data for the rest of their process because the rest of the method required super good temperature data in order to not f up workpieces automatically instead of getting the perfect cure automatically every time. Second they noted that they employed a computer complete with algorithm involving the Arrhenius equation to constantly compute a new curing time based on the temperature data they had at the moment and compare it against the elapsed time of the cure. Finally they noted a third feature, autoopening the curing chamber when a signal was received from the computer. This is how the applicant characterized their method in simplified language compared to their actual claim.

    Upon inspection of the patent itself 6 did discover that, compared against the art of record, which is atrocious, there were many “new” structural features in the specification proposed to support the steps in the claims. Among these were placing thermocouples in what must have been indentations (to get them near/inside the cureing chamber) in order to get them in position to get the “closely adjacent” temperature measurements that are recited in the claims. Also there was a computer which had special information fed to it, logarithm tables and some variables and the arrhenius equation if memory serves. Finally there was an auto-opening electromechanical opening device. 6 noted that he doubted if an auto-opening electromech device was novel by itself however he noted one in combo with a rubber curing mold may well have been and appeared to be from the record. Likewise he figured a computer had at some point in the past been programmed with logarithm tables and the Arrhenius equation to work on data input thereto. Although no comparison against the elapsed time of a rubber curing mold had probably ever been done because according to the app and the art, nobody had ever taken good enough temperature data to enable that. Additionally the variables mentioned in the claims may well have never been sent to a computer before because there would have been no need based on the art of record because you couldn’t do anything with the computed values because you didn’t have good enough temp data to feed in. Finally, 6 noted that there likely were thermocouples and rubber molds in existence before this application, but at least according to the art of record they were never so arranged to get the temperature data required for this proposed method.

    Among those things there are two novel structures, thermocouple arrangements on a mold sufficient to get the great temperature data required. Notably 6 believed that putting them in indentations was the only way, however he was not specific enough for tar ds (who didn’t bother to read the patent) to note that those indentations had to get up closely adjacent or lead into the chamber itself to get the temp data required. If you don’t get good enough temp data you burn pieces and the Diehr method isn’t helping you. Likewise 6 noted an auto-opening device on a mold was also a novel structure based on the art of record.

    Finally, 6 noted the computer “programming” or arrangement with the mold may well have been novel based on the art of record, if not for anything other than the variables being fed to it specifically from a rubber mold.

    At this point it appeared blatant to 6 that there have been legions of attorneyt ards who, for 30 years at least, have considered the only novelty in the claim to be in the use of the Arrhenius equation to calculate a new cure time. This despite the USSC using language all throughout the decision that indicates that was not what they saw. Indeed, it appeared that the dissent may have been what was being relied upon by these attorneyta rds in characterizing what was novel about the claims at issue because the art of record suxed.

    Enter last week.

    Anonta rd 1 (you) stated that 6 was crazy because he subjectively believed everything in the claim to be old (presumptively meaning in 1 novelty destroying ref) except for the computer/computer programming and possibly the execution of steps in the computer. Indeed, this was a common attorneyta rd that we had on our hands.

    Attorneytar d stated unequivocally that the thermocouple around a chamber was not novel in re to 6’s instance that on the record before him it was.

    6 explained a bit further that he wasn’t talking about simply arranging them around a chamber. He was talking about putting them in indentations. Indeed, he should have been more specific and noted that they needed to be indentations that allowed the thermocouples to be closely adjacent to the chamber. Regrettably he was not so specific and the attorneyta rd ran wild.

    Attorneyta rd finally produces a reference, better than any reference on the Diehr record and presumes that this reference is sufficient to show thermocouples in indentations are not novel and thus the entire point 6 was making somehow makes no sense ivo this art that wasn’t on the record at the time of the Diehr decision. Blatantly the thermocoouples in the reference are not closely adjacent, but 6 had not been specific enough to tell ta rd attorney that the thermocouples had to be very close to get good enough temperature data to enable the whole rest of the process to not burn pieces.

    6 notes the good reference, congratulates the attorney ta rd on his leet search, and notifies him that the reference still isn’t quite a match for specifically what Diehr was calling for, as the thermocouples were not closely adjacent. But then also notes that even if he grants the attorneytard that it was, attorneyt ard is still lacking an auto-opening device so the novel structural arrangement is still quite novel even not considering the computer at all.

    Attorneyta rd then doesn’t understand 6 explaining this and calls for an explanation his ta rd brain can handle in such a manner that it does not appear that 6 is sticking his foot in his mouth.

    Enter now.

    The whole point of this discussion about novel structures etc. is to show that the USSC accepted what the applicant noted as being novel about his invention. This is so because the art of record was atrocious. The majority did not naysay the applicant because they had no art worth speaking of. Indeed, one dissenting justice, Stevens makes up or takes judicial notice of even more atrocious art as being relevant art in his discussion.

    That is to say, regardless of what attorneyta rds subjectively believed to be novel about Diehr for the last 30 years, the record was horrendous and the USSC made no such subjective assumptions. They then were approaching the claim as a wholly new thing, each individual step being wholly new because to them, on that record, it all was new. Indeed it even corresponded with an great temperature measuring auto-opening mold. This, coupled with the dissent and arguments made in the case lead to the infamous “claims as a whole” paragraph which now lives in infamy as supposedly being contradicted by Prom. It obviously isn’t contradicted at all. The art on the Diehr record simply suxored balls so you had to consider the whole claim as every single step was new. Indeed, to them, the whole shebang was completely new, on their record.

    Keeping that in mind, or even dismissing it out of hand because you are a ta rd, you will note that art cited now, after the decision was rendered, does not tell us anything about the actual decision or what it means because they only had the sux art on the record.

    That is to say, it doesn’t matter if the structures and accompanying steps that appeared on that record to be novel were not new, because the record suxed and the USSC wasn’t about to make any art up and the applicant did not admit those things were old (as prom notably did).

    Furthermore, it does not matter, even if we were to reevaluate the case on a new record built by the attorney tar d today, whether the thermocouple arrangement was novel or not because you still have not got yourself an auto-opener in that ref. And even if you find an auto-opener ref you will not have the thermocouple arrangement in that ref. Thus, we will still have a novel structure, thermocouple arrangement + autoopener device even setting aside the computer.

    In any event, I hope this helps you t ard, but this is all I’m going to say about the subject on this thread.

    Till next time tar damigos!

  100. 189

    I don’t think you understand the basics of Markush claiming, IANAE.

    Either that, or you are engaging in your typical straw-stuffing activies…

  101. 188

    Thanks. I’m grateful. I’m just exploring the American view of what Europe would call “accidental anticipation”. That’s where there is a genuine inventive concept but somebody independently filed, the day before you did, on some other inventive concept, distinctly different from yours. Both are entitled to a patent for their respective valuable and non-obvious contributions to the state of the art already made available to the public. Both are entitled to the issue of claims with a scope commensurate with their respective new, useful and non-obvious contributions to the art. It is just that, on a First to File model, only one of them can have a patent to “X”, per se.

    I see that the patent law of the USA has no use for any theory of “accidental anticipation”.

    One more thing I have to keep in mind, when advising US clients on EPC law.

  102. 187

    Or can you distinguish disclaiming member X (OK) from disclaiming member signal (not OK)?

    In a Markush group of A-Z where X is old, I think you would need support for specifically excluding X from your claim. If the spec describes all 26 members of the group as being the invention, and a group excluding X is not contemplated, nor is any reason for particularly excluding X contemplated, there was no possession of an invention that included A-Z but not X. I don’t think it would take much – a simple recitation that X is better for some applications but worse for others might even do the trick. And all that is aside from the glaring obviousness issue.

    If this were not the case, one would be able to file laundry lists of molecules (all R groups are essentially Markush groups because all permutations can be listed), and do the inventing later as prior art surfaces.

    In the “non-transitory” case, there is a Markush group of media described, but not claimed. The Markush group does not include any non-statutory medium, and the inventor was free to claim the entire list as his invention. What he did instead was to claim a broad class of media and disclaim from it an essentially arbitrary (except that it was the subject of an outstanding rejection) feature that happened not to be present in any of his Markush group members.

    If you describe “cars, bicycles, motorcycles, ATVs” and claim “a wheeled vehicle”, and the examiner finds unicycle art, can you exclude a unicycle from your claim? What if the examiner finds bicycle art and you want to exclude bicycles? Let’s assume the spec gives no indication that your invention would work any differently on different types of wheeled vehicles.

  103. 186

    If I understand IANAE right, then, extrapolating, he is saying that if, say, your invention is claimed as a Markush list of 26 molecules labelled A through Z, and it turns out that all except X are new, but X is old, it is simply not permissible to disclaim X from your A-Z claim.

    IANAE is that what you are contending? Or can you distinguish disclaiming member X (OK) from disclaiming member signal (not OK)?

  104. 185

    I fail to understand why it is that you think an ordinary artisan wouldn’t understand him to have possessed a computer readable medium that isn’t a transitory signal.

    Because “a medium that isn’t a transitory signal” wasn’t described in the specification, which is where the inventor is supposed to describe just what invention he has made and possesses.

    Assuming arguendo that the “medium” as described and claimed would be understood in the art to include a transitory signal (which I don’t agree with, but it’s the only way this discussion makes sense), there’s no reason in the spec for anybody to understand that transitory signals were meant to be excluded. He chose to use a term that includes signals, so he understood his invention to include signals. Otherwise, he would have used a narrower term.

    The mere fact that transitory signals are non-statutory does not inform the understanding of technical terminology by a person skilled in the art. It is entirely possible to draft claims to non-statutory or otherwise unpatentable subject matter, which is why sections 101, 102, 103 exist in the first place. Such claims are invalid, but they mean what they mean.

    It would be ridiculous if a patent applicant could specifically and narrowly exclude from his claim the scope of any prior art document or other PTO rejection simply because his disclosure is not coextensive with the unpatentable subject matter. You might as well write every claim preamble as “a novel, non-obvious and patent-eligible composition of matter, comprising:” and have done.

  105. 184

    “How is this magic “integration” going to help bro? Give us an example.”

    Sure, let’s take the claim at issue which is included below. We now know from hindsight that step (a) needed to include step (b) and the wherein clause as well. This way Breyer’s dissection trick can’t be used to support the rationale that the additional steps simply say “apply it”. If step (a) had been fully integrated with step (b) then Breyer would have found an application of the concept at each individual step as well as the claim as a whole. Of course we know Breyer should not have been dissecting claims in the first place and then claiming to not overturn Diehr. But it’s one big game with you anti patent types so we have to play along and always be one step ahead.

    “A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

    “(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointesti­ nal disorder; and

    “(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointesti­ nal disorder,

    “wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently admin­ istered to said subject and “wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently ad­ ministered to said subject.” ’623 patent, col. 20, ll. 10– 20, 2 App. 16.

  106. 183

    That’s why Breyer dis-integrated them.

    …so are you saying that Breyer took the law into his own hands and made new law?

    Sorry 6, you cannot win for losing here. Either you were wrong to begin with (most likely), or we have a case where the Justices surpassed their constitutional authority and wrote law above what Congress provides, and is thus illegal (not likely, but arguable in a new light).

    The Court isn’t allowed to “pump up the power” because the constitution didn’t give them that power.

  107. 182

    Held is movement. Black is white. Loss is win.

    add another: anything 6 says.

  108. 181

    No Ned, Prometheus was not decided on 102, so 101 was and still is a threshold issue.

    In fact, Breyer is quite clear that his “novelty” leaking into 101 is NOT the novelty of 102 (see pages 21-22 of the decision).

    You are making the express mistake Breyer is warning not to make.

  109. 180

    I do not understand what you mean by “a programmed GP digital computer is not patentable subject matter out of context.

    You do know that a programmed GP digital computer simply is not a GP computer anymore, right? You do understand what is meant by “programmed,” I hope. I note that you have issues with context on this subject matter to begin with (Anon’s posts immediately come to mind).

    But just so we understand each other, “programmed” entails purpose and application. Without purpose and application, you do not have “progammed.” Your reference to “See Benson” is inapposite. See Alappat.

    If the software under concern, that is, the software that is directly related to the patent claim has other uses than the specific application claimed, then the analysis would proceed as to any commodity type use. Granted, for some software there will be a commodity factor. But do not confuse breadth of claimed use with commodity. That would be a mistake.

    Your attempt to shoehorn one patent with one invention mistakes the purpose and availablity of multiple independent claims per patent. You are attempting too fine a read and you are confusing yourself. It is really not any more complicated than I posted.

    You misstate what I say when you indicate that some claims be construe to not require knowledge. I think that is what is called a strawman, as you have constructed a position not present and attacked your constructed position rather than what I posted. I posted that the knowledge factor is presumed. My statement accords with law. Do not misrepresent what I posted.

  110. 179

    Except it cannot be.

    You yourself say that the words chosen by the Supreme Court are chosen carefully and deliberately.

    If the Supreme Court wanted to reject any portion of the precedent (the most on point precedent at that), they would have used such words as to clearly indicate a rejection of the precedent.

    They did not.

    There is no reading into a decision as it has been written any rejection of any portion of the precedent as you have done.

    As my Boston friends say, “You can’t get there from here.”

  111. 178

    So just to be clear: Applicant discloses examples of a computer readable medium which isn’t a signal. Applicant claims a computer readable medium which isn’t a signal. And you think an ordinary artisan wouldn’t understand the applicant to have possessed a computer readable medium which isn’t a signal?

    Once again, I get where you’re coming from, but this isn’t a case where an applicant is trying to remove recitation of “spike” so the claim will encompass a spike-less medical device that was never disclosed ( as in ICU Medical v. Alaris), here the applicant is simply trying to claim something by referencing a computer readable medium (which he certainly isn’t asserting is new or innovative), and has examples in the spec of such computer readable mediums. The PTO expresses concern that the claim might improperly claim a transitory signal, and you think it’s improper for him to amend the claim to clarify that he isn’t trying to claim a transitory signal?

    Stepping back from semantic arguments, I fail to understand why it is that you think an ordinary artisan wouldn’t understand him to have possessed a computer readable medium that isn’t a transitory signal. Are you honestly taking the position that the applicant needed to explicitly disclose in the spec that in at least one implementation computer executable instructions configured to perform methods disclosed therein are stored in a computer readable medium that isn’t a signal? Do you really believe that this sentence would have any impact on an ordinary artisan’s understanding of what the applicant invented? Is there any ordinary artisan who would read the spec and not understand that in at least some implementations software could be stored in a computer readable medium that isn’t a signal?

  112. 177

    Bipolar, the result and analysis in Diehr is quite consistent with the result an analysis of Prometheus.  The math in that case was applied to a process that was otherwise patent eligible and modify the process to produce a new result.  

    However, the discussion of Bergy is entirely a separate and distinct matter.  Bergy stated that novelty was not party of 101 analysis.  Bergy stated that 101 was a

    THRESHOLD

    issue, to be decided before the novelty of any of the elements was addressed.  That is clearly what Rich advocated in Bergy.  Thus, if a claim nominally was to a machine, an article, a composition, or to a process limited to one of these in some manner, the claim was statutory … move on to 102/103/112.

    We were surprised, therefor, in Bilski that the SC seemed to reject the claims at issue in that case as claiming, in essence, a notoriously old hedging method.  They said it was "abstract."  But the problem they seem to suggest was that the hedging method  was notorious and well understood.

    During oral argument in Prometheus, Kennedy even admitted that they allowed novelty to "leak into" Section 101.  But, I was confident in Prometheus that the SC would follow the government's recommendation that the problem with the Prometheus claims was lack of novelty, the correlation simply being a mental step tagged on to an old process.

    So, when the Prometheus decision was handed down, I was shocked to see novelty being front and center to the 101 analysis.  The correlations were the discovery, but they were a law of nature.  Something would have to be "added."  But adding the routine steps of the prior art was not enough.  The fact that the added steps were old and conventional was what through me for a loop.  

    Anyhow, that is why I think Prometheus can be viewed as rejecting 101 as a threshold issue and it therefor must be read as rejecting Bergy  and Diehr to the extent it relied on Bergy.

  113. 176

    “You can’t just write up a fictional hypo that can only happen in your mind and treat it is if it could become real.”

    Umm hypothetical process claims are made up and debated for 101 statutory purposes on this board everyday, especially by you and the rest of the anti-patent crowd. Now, when it is clear you can’t win the debate and provide a rational and legal basis for rejecting the claim as non statutory/101, you whine about it being only hypothetical. What a crock of sheet. You just showed, once again what an intellectual coward and midget you really are.

    “Also in real life Neutrinos do have mass. ”

    “So you and some scientists wish to believe. The evidence is slim slick.”

    Oh I guess the Nobel prize committed should revoke those Nobel prizes they awarded for discovering Neutrinos have mass.

    “I can make so many 112’s on that claim it ain’t even funny.”

    Only the original issue being debated here is 101. So pull that Red Herring out of your azz and explain why the claim is non statutory under 101, or kindly STFU.

    A process for determining the speed of a particle comprising:

    1. Setting up a facility to house a LHC

    2. Pressing a button required for operating said LHC

    3. Observing a display

    4. Waiting for two Neutrinos to collide

    5. Watching the collision of said Neutrinos

    6. Pressing said button to cease operation of said LHC

    7. Deciding if said Neutrinos travel faster than the speed of light.

  114. 175

    Regardless, there is no way to reconcile Diehr/Bergey with Prometheus.

    And yet it must per Breyer admonitions that he was expressly all hewing to precedent, not overturning (or even unsettling) any precedent, and Diehr being most on point (best precedent).

  115. 174

    Primer, I agree that I was citing "b" when I should have been citing "c."

    However, regarding the rest of your post,

    1. While a program may only be useful in a GP digital computer, a programmed GP digital computer is not patentable subject matter out of context.  It must be claimed as part of a larger machine, such as a disk drive, or it must be applied to a new application.  See, Benson.

    2. Software may have uses other than in the specific application claimed.

    3. While one independently determines whether each claim is infringed, there is only one infringement per patent, on damage award, one injunction, under the theory that a patent claims but one invention.  One infringes patents.  

    So, if the sale of a component ordinarily would require knowledge for liability under 271(c), why should some claims be construed to not require knowledge?

  116. 173

    Bipolar, I think the majority in Diehr were somewhat persuaded by Rich in Bergey.  But, after State Street Bank, they realized what he was up to they may have changed their minds.  Regardless, there is no way to reconcile Diehr/Bergey with Prometheus.

  117. 171

    “If”

    They are integrated. Or they were anyway. That’s why Breyer dis-integrated them.

    But apparently you think their integration is insufficient. This being because Breyer can disintegrate them. Well ok, I’ll go along with that, for a small time, while I wait for you to give us a simple example. Hopefully in the softwarelol “arts”. Personally I don’t think you can integrate a softwarelol application enough to withstand Breyer’s disintegration beam. He’ll just pump up the power.

  118. 170

    Who cares if they’re old bro? They’re all three points of novelty over differing pieces of art.

    Once more, in English, WITHOUT shooting yourself in the foot,

    Try again.

  119. 169

    I just said that Prom did integrate their claim and you come in, noting the exact same thing that I just got through noting, except also noticing that the justice disintegrated and dismissed parts of it? How ta rded are you bro?

    Are you seriously that thick 6?

    If the claims in Prom are not integrated, such as the case as Breyer can dismiss portions that are not integrated, then the drafters of the Prom claims did not integrate, much less integrate them well as you actually stated, and the reverse of what ICST6IAT said. Quite clearly it is not the exact same thing.

  120. 168

    “This is a hypothetical ”

    You can’t just write up a fictional hypo that can only happen in your mind and treat it is if it could become real.

    “So you can’t make a 112 rejection. ”

    Lulz. Says you.

    See, AI, here’s the thing bro, you don’t recognize the power differential.

    “Also in real life Neutrinos do have mass. ”

    So you and some scientists wish to believe. The evidence is slim slick. Just last month they also went faster than light. Look how long that lasted.

    “So you couldn’t make a 112 rejection on that basis for a real case either”

    I can make so many 112’s on that claim it ain’t even funny.

    “I propose there is an enabling description that describes the detailed process.”

    Right, you’re proposing a fictional scenario that can only happen in your mind. 101.

  121. 167

    I just said that Prom did integrate their claim and you come in, noting the exact same thing that I just got through noting, except also noticing that the justice disintegrated and dismissed parts of it? How ta rded are you bro? Can you just not read? Or do you really have a hard time understanding what was written?

    But either way show us all the example. Shouldn’t take you more than a minute. And when I get done “dis-integrating and dis-missing” the parts of your claim I do not want to deal with I’ll lol just as surely as if you simply wrote down that you’ll be coming up short prior to giving me the example.

  122. 166

    “6 is emblematic of the problem with the office and examiners not knowing the art field making wild statements on no more than what they think the situation should be.”

    He said about an examiner who actually looked at the record aka the “situation”.

    Lulz.

    “Here 6 swings wildly when he is put to the task to show a novel physical structural feature in the Diehr claims.”

    So I just got through pointing out two, yet again, and you just … what? Ignore them?

    I understand your desire to ignore them, but really? Why ignore them? If you have some reason to, I’ll bite, go ahead, tell me why we’re ignoring them.

    “6 has offered only two other tidbits, the auto-opening door and the computer. Sorry 6, but each of those features were also old in the respective art as well ”

    Who cares if they’re old bro? They’re all three points of novelty over differing pieces of art.

    “The only novelty was the tie-in altogether”

    Obviously, but that tie-in altogether has three novel features over differing sets of art. Ya tard. Obviously they’re all old on their own, excepting the positioning of the thermocouples.

    “True novelty forces you to relinquish the argument that software makes a new machine as that is the only point of novelty in the invention.”

    Mmmm, not really, but you can keep dreaming it.

    “Of course, this is exactly what the rest of have known all along in a factual and legal sense. ”

    Excepting of course the USSC. Although you’re probably right that most “lawltards” that have been very confused for the last 30 years about Diehr thought they knew that. Which is of course, the whole point.

  123. 165

    I could have missed it but I think Prom “integrated” his steps pretty well.

    Could have missed? Most assuredly did miss. And miss badly.

    Did you not read the decision? Breyer dis-integrates and dis-misses the parts of the claim he does not want to deal with.

    But, you’re going to come up short in drafting upon software so far as I can see

    You really don’t know software arts either I can see.

  124. 164

    6 is emblematic of the problem with the office and examiners not knowing the art field making wild statements on no more than what they think the situation should be.

    Here 6 swings wildly when he is put to the task to show a novel physical structural feature in the Diehr claims.

    He misses and misses badly.

    And yet he still calls everyone else a tard.

    He attempts to weasel out of his task by stuttering with a 103 argument, but this is to no avail. 6, you were asked to show a movel feature, not that the features all taken together were novel. In other words, 103 for the group of features defeats your position, as 102 for each feature separately stills indicates the particular feature was not novel.

    6 struck out gloriously with the thermocouples, taking his friend Ned down with him, another who also likes to discuss art fields beyond his ken.

    6 has offered only two other tidbits, the auto-opening door and the computer. Sorry 6, but each of those features were also old in the respective art as well (according to your non-Alappat views). The only novelty was the tie-in altogether and the control of said tie-in residing in the great computer brain.

    True novelty forces you to relinquish the argument that software makes a new machine as that is the only point of novelty in the invention.

    Of course, this is exactly what the rest of have known all along in a factual and legal sense. Well, the rest of that are not on a blind legal crusade, that is.

  125. 163

    This is a hypothetical and we are assuming the description is enabled. So you can’t make a 112 rejection. Also in real life Neutrinos do have mass. Just very little mass. But nonetheless, mass. So you couldn’t make a 112 rejection on that basis for a real case either

    “How do you propose that you’re going to “watch” this? In your mind’s eye?”

    I propose there is an enabling description that describes the detailed process.

    Oh and I have not clicked on the yahoo link, but I can tell you whatever you are reading is not from me and has no relevance to our discussion or your failure to provide any factual or rational basis for rejecting the hypothetical claim. Whenever you are put to the test 6, you always go limp.

  126. 162

    “4. Waiting for two Neutrinos to collide”

    112 2nd as inoperative. Neutrinos either have no mass and do not “collide” or have so little mass that even with our best neutrino generators and detectors they would not “collide” and/or we would not detect the collision and would never know it happened. Ya tard. The jury is still out iirc on whether they actually have mass or not.

    Would you stop with your psuedo-physics already?

    How about drafting a claim to something that bears some resemblance to real life instead of your physics fantasies?

    Looks like you’ve been on yahoo answers asking questions again huh? I just had to see for myself that you’ve been screwing around thinking about this question as well.

    link to answers.yahoo.com

    Just keep pluggin’ away there scientist wanna be!

    “5. Watching the collision of said Neutrinos”

    How do you propose that you’re going to “watch” this? In your mind’s eye?

    Considering the whole “process” you just made up is nothing but a fantasy, I’ll give it a 101 because it can only happen in your mind. A tard’s mind.

    Now come on, I helped you out, now help me out. Why do you troll?

  127. 161

    “The point of novelty is the computer hook-up.”

    I’m not sure how you think I “proved” your point ya tard.

    I just told you that there are 3x “points of novelty”, or I told you in a previous thread. And there still are. Specifically, we still have thermocouples as one. Albeit, in light of your much better prior art, only thermocouples in little indentations CLOSELY ADJACENT to the mold cavity, or ACTUALLY LEADING INTO the mold cavity. And which, again, your art notably is irrelevant to the Diehr decision since they were ignorant of that art on that record. Still, I do wish that they would have had it. And second, an auto opener. And third, and finally, what the computer was doing. In your art it appears they had a computer attached, but not doing the same thing.

    So that’s 3x points of novelty all in the first claim, two of which, the positioning of the thermocouples and the auto-opening mechanism are tied to novel structures. If you’re having trouble seeing this then I’m supposing you haven’t bothered to read the claim, or you’re just bad at interpreting method claims. Although I suppose both might be the problem.

    I think Ned is capable of reading, there isn’t anything for me to set him straight on.

  128. 160

    6,

    The point of novelty is the computer hook-up.

    Thanks for proving my point.

    Now see if you can set Ned straight.

  129. 159

    Oh, Oh, Oh! I want in on this! So how about the same exact process with a twist!

    A process for determining the speed of a particle comprising:

    1. Setting up a facility to house a LHC

    2. Pressing a button required for operating said LHC

    3. Observing a display

    4. Waiting for two Neutrinos to collide

    5. Watching the collision of said Neutrinos

    6. Pressing said button to cease operation of said LHC

    7. Using the Arrhenius equation to calculate the speed of the Neutrino

    8. Deciding if said Neutrinos travel faster than the speed of light

    Yeah, Yeah, I know what ya thinking but it worked for me in Diehr and this is far more advanced than some 1800’s process for curing rubber!

  130. 158


    I just said that depends on specifically what the process is.”

    Here, let me walk you thru this.

    A process for determining the speed of a particle comprising:

    1. Setting up a facility to house a LHC

    2. Pressing a button required for operating said LHC

    3. Observing a display

    4. Waiting for two Neutrinos to collide

    5. Watching the collision of said Neutrinos

    6. Pressing said button to cease operation of said LHC

    7. Deciding if said Neutrinos travel faster than the speed of light.

    And let’s just assume for the hypothetical the claims have a complete 112 compliant fully enabled spec.

    Now, 6, what say ye? 101 statutory subject matter or not and why?

  131. 157

    “Probably, and if so, because they’re judicially excepted from being eligible.”

    6, exactly what judicial exceptions apply to ANY of the following processes?

    A process for humans operating the LHC machine.

    A process for how the LHC machine operates once it is started up by a human operator.

    A process for a new use of the old process for humans operating the LHC.

    A process for a new use of the old LHC machine itself.

    A software process that is integral to the operation of the LHC machine.

  132. 156

    “Don’t believe me? Just look up all the software and business methods being rejected and upheld by the BPAI and you will find this exact reasoning cited by the board every time. So what is a clever Draftman to do? Well the key is still integration. Check out paragraph 11 in Prometheus referencing Diehr. Take the concept you defined in the specification, which should be very vague and general, then make sure that concept is fully integrated in every step of the process, from the preamble to the wherein clause. Make sure the concept is so integrated that if any extraction, A.K.A. dissection is done, there would be no steps to perform and thus no invention. This goes double if there is any hard technology or conventional machines in the claims. True this is going to take extra work, and skill by the much feared and secretly revered Draftsman.
    But after all, are you not artists?”

    How is this magic “integration” going to help bro? Give us an example.

    I could have missed it but I think Prom “integrated” his steps pretty well.

    But, you are right that if you define the abstract idea up front and intentionally draft so that you are not encompassing all uses thereof then sure, you avoid 101 … which was the whole point of Benson et al. including myself for the last few years. But, you’re going to come up short in drafting upon software so far as I can see. Give it a shot, maybe give us an example.

  133. 155

    Well I have to say that you are less of a ta rd than I had originally thought you were, but a ta rd you still are even so. Congrats are in order for finding a better primary reference than the examiner himself found (after canvasing what appears to be some 50 subclasses).

    Even so, the “pockets” in which they have embedded their thermocouples are not anywhere close to the indentations which are being referred to in Diehr. In Diehr they want their sht right up on the surface of the material being heated, even to the point of going into the cavity if need be. But I will give you that you are close enough to meet the limitations in the actual claims (which are process), even if you might not be in reality. With your new and improved primary you may well come close to accomplishing what they put in the claims about taking the temperature from a position “closely adjacent” to the mold cavity, even though your pockets are obviously nowhere near closely adjacent. On the record before the office that appeared novel at the time.

    Perhaps, had the examiner had your reference here (along with a few other ones perhaps) on hand we would never have been saddled with the Diehr confusion for the last 30 years. Perhaps he would have been more content that a 103 wasn’t reasonable and wouldn’t have bothered with a 101. Or perhaps not. At the very least you would have received a shout out from Stevens in his dissent where he summed up what he thought was in the art. Your art is much better than what he would have used for the temperature reading.

    And, using your art as a primary and granting you your “interpretationlol” of the structure shown, you’re still lacking an auto-opener structure in conjunction with it brother. The structure proposed by Diehr is still quite safely in 103 territory even with your improved primary. Quite safely. And that is disregarding any computer hooked up.

  134. 154

    Ironically the Prometheus Court only gave more incentive to patent attorneys to become even more clever in how the specification is written and the corresponding claims are drafted.

    Now you have to make sure you define the concept in the specification so the PTO and the Court won’t. Because if the PTO has to define it they will simply say the process claim itself is the concept and thus pre-empts all uses of the concept and is therefore an abstract idea according to Benson.

    And if you try adding a machine in an amendment they will call it post solution activity according to Flook.

    Don’t believe me? Just look up all the software and business methods being rejected and upheld by the BPAI and you will find this exact reasoning cited by the board every time. So what is a clever Draftman to do? Well the key is still integration. Check out paragraph 11 in Prometheus referencing Diehr. Take the concept you defined in the specification, which should be very vague and general, then make sure that concept is fully integrated in every step of the process, from the preamble to the wherein clause. Make sure the concept is so integrated that if any extraction, A.K.A. dissection is done, there would be no steps to perform and thus no invention. This goes double if there is any hard technology or conventional machines in the claims. True this is going to take extra work, and skill by the much feared and secretly revered Draftsman.
    But after all, are you not artists?

  135. 153

    “First HDC is an abbreviation for Hadron Collider.”

    It’s an abbreviation used by ta rds. Which is why I called you a jackwad, but I guess I should have been more precise and said “ta rd”.

    “Next, weren’t you the Yahoo physics expert that disputed the fact that thoughts were energy? ”

    Um no. Although I will “dispute” that thoughts are “capacities to do work”. Although I don’t think that there is really any “dispute” as plainly they are not.

  136. 152

    “What about the process for humans operating the LHC machine?

    And other processes….?”

    I just said that depends on specifically what the process is.

    “6, are you going to reject any of the above for 101, and if so why?”

    Probably, and if so, because they’re judicially excepted from being eligible.

    “Any questions?”

    Why do you troll?

  137. 151

    Nothing wrong with arguing, as long as at the end of the day you recognize what the appropriate US law is.

    I enjoy when people choose to argue when they can’t win.

  138. 150

    If you say so. All the same, there is an impressive number of comments in this thread, from posters who want to argue about it.

  139. 148

    No. No. No.

    I’m running the EPO line (of course). You might not like it. But in practice, it does actually work. Are you going to tell me that the EPO’s approach doesn’t work, and that yours does?

  140. 147

    That’s part of the problem.

    Facts are what they are, regardless of hindsight.

    Just because you used hindisght to get to the facts does not make the facts disappear after hindsight is then set aside.

    It’s not like a criminal case and the fruits of a poisoned search are bared from consideration.

  141. 145

    Claim instead a carrier with the program on it

    Seems a bit of form over substance.

    As well as a bit of pedantic semantics.

    Are we forgetting that software is intrinsically different than a mere “recipe” in that software executes?

    Are we forgetting that any patent claim is mere words as such, and that the proper way of understanding the “as such” is to abstract up a level?

    Are we forgetting that software claimed in a patent is not a claim to the instructions “as such,” but rather to a component of a machine?

    Software is equivalent to firmware is equivalent to hardware.

  142. 144

    101 Expert, I regret that your post does nothing to help me “understand the nature of processes”. I continue to see a difference between “instructions how to proceed” and the process itself, that occurs when the instructions are followed.

    One claims the process, not the instructions. At least then the claim meets 101. The place for the instructions is in the specification. The purpose of the instructions is to enable the process.

    The claimed process is what produces a useful result. The instructions as such produce no useful result. A useful result comes only indirectly, when the instructions are followed and the claimed process is practised.

    Of course, in the case of programs for computers, there is plenty of scope to assert that you have “patented” your instructions, even when (as in Europe) you can’t claim the instructions as such. Claim instead a carrier with the program on it, or the computer with the program in it.

  143. 143

    “In essence, Diehr is at the same time strengthened AND contradicted.”

    What this means is that the Court made a mistake in this one case. Most agree the claims should have been handle under 102 or 103. However, what’s most important is that Diehr still controls, now after two Supreme Court 101 cases. There was no overturning of Diehr, or any precedent.

  144. 142

    “Of course software should be patentable. Just like cookie recipes, driving directions, and car repair manuals. They’re all just sets of instructions.”

    Well it all depends on the quality and type of instructions. Recipes, whether for cookies or curing rubber should be patentable if they’re effective and produce a concrete guaranteed result.

    Driving directions, due to the nature of the landscape changing either temporarily or permanently can’t produce a concrete guaranteed result, and therefore are probably not patentable.

    However instructions for fixing a car or building a new car, are patentable.

    Hope this helps you begin to understand the nature of processes and why they are an independent category of patentable subject matter.

  145. 141

    “In any event, if someone tried to claim the LHC as a machine and they recited its structure they’re not going to get any 101’s ya tard. ”

    What about the process for humans operating the LHC machine?

    What about the process for how the LHC machine operates once it is started up by a human operator?

    What about a process for a new use of the old process for humans operating the LHC?

    What about a process for a new use of the old LHC machine itself?

    What about a software process that is integral to the operation of the LHC machine?

    What about a a combination of all the old steps and old hardware of the LHC machine that produces a new result?

    6, are you going to reject any of the above for 101, and if so why?

    Since, I am sure your brain is about fried now let me answer for you.

    No, to all above!

    Why? Because a process is not the same as written matter, like poetry and creative writing.

    A process is not a liberal art.

    A process consist of a series of objective steps that produces a consistent guaranteed result.

    A process is a useful art.

    A process is statutory.

    Any questions?

  146. 140

    “if someone tried to claim the LHC as a machine and they recited its structure they’re not going to get any 101’s.”

    First HDC is an abbreviation for Hadron Collider. Next, weren’t you the Yahoo physics expert that disputed the fact that thoughts were energy? Whatever, well the HDC is a machine that fits in one of the four enumerated categories. PERIOD! Move on to 102, 103 and 112. And don’t start with that general purpose computer BS. A computer is a machine under 101 regardless of what it is programed to do.

    “As to a specific method, that would depend on the method. ”

    Processes and Methods are the same thing. Processes are statutory. PERIOD! Just like a machine, you move on to 102, 103, and 112. Anything that is purely imaginary, as is performed in your head is not. But there is NO such thing as a purely imaginary business methods ( try to last one day in business using purely imaginary methods) and there is no such thing as pure imaginary software. So don’t start with any of that Ned “Curly” Heller cr aap of treating processes differently than the other four categories. Every scientist working on the HDC would know this. Einstein would know this. But of course you are no Einstein.

  147. 139

    Why on earth would an article just like the one I read a few days ago make me weep? Iirc I was the one saying on these boards 4 mo ago that neutrinos probably did not go faster than light, and most scientists expected this.

    ” if anyone dared tried to claim the HDC”

    It’s the LHC you jackwad.

    In any event, if someone tried to claim the LHC as a machine and they recited its structure they’re not going to get any 101’s ya tard. As to a specific method, that would depend on the method.

  148. 138

    Well, why don’t you tell the examiner of that tire application that, you know, the tire was “configured” to do the function. When he says that he knows that and asks what this configuration is, and you reply “well we don’t know, but posita knows by magic, and nobody cares anyway!” he’ll give you your 112 and lol. And I’ll lol 2. Then you’ll go to the board and lose, and the CAFC and lose. And your case will come up right before they handle a softwarelol case where that applicant will win with the same argument while you lose. And you, in this situation, are the tire applicant, not the software applicant. How do you feel, as the tire inventor, about the double standard?

    To be sure, this is a hypothetical, I’m not really sure that a case like that has gone to the CAFC well argued. If it had we probably wouldn’t be having this conversation.

  149. 137

    The Three Stoo oges and Shemp of the anti-patent crowd can read it and weep.

    link to huffingtonpost.com

    Funny thing is if anyone dared tried to claim the HDC as a process or even the machine some IQ 6 Examiner would call it an abstract idea and reject it under 101.

    Then of course you would have some (Woo Woo Woo) Stoogette making a hundred posts about a 74 f art year old , never heard of a neutrino, or touched a computer, dea d Douglas opin on what is and is not technology. Ha!

    This is frea kin ridiculus really. Here we are in the 21st century arguing whether 21st century processes that have changed the very world we live in, promote the progress of the useful arts and should be eligible for patents!!!

    Here we are working on computers that perform complex information processing, we could NEVER perform in our heads, let alone on a sheet of paper and arguing if this very act of complex information processing should be unpatentable as something we could do in our heads!

    What type of circular insani ty is that!!

  150. 136

    Thanks Direct Patent … I’ll look up the case. My first thought though is it sounds like the court conflate direct and indirect infringement. If there’s no use but for infringement, then that just shows there is no “substantial non-infringing use.”

    Otherwise, what do we have — No other use at all is direct infringement; substantial non-infringing uses means no liability; and if it’s in between those two extremes you can get contributory infringement (if you can show the knowledge requirements, etc)?

    (Although, that’s pretty common. The Federal Circuit did that in its questions for the en banc hearing of Akamai and McKesson. If you read the briefs, I think most of the parties agree on that point.)

  151. 135

    3531996 gets more than close:

    FIG. 2 is a plan view of the metal lower die member, taken along line 2-2 of FIG. 1, with the heater cavoty, thermocouple wells, and the O-ring groove, below the surface of the die, indicated by phantom lines.

  152. 134

    where nobody in the world knows what structure implements that function

    Nice strawman. It’s too bad PHOSITA knows enough to know that structure (it’s called ‘configured’). The clue to you should be that software really does workon computers.

  153. 132

    “I am waiting for someone to challenge the USPTO’s statement as exceding its authority:”

    Idk about that, as examiner in chief the good director gets to decide what he considers to be a 112 violation and what he doesn’t. That literally is his authority.

    “If this same logic were applied to chemical compounds or any other form of structure, it would clearly violate the written description requirement. Thus, it seems the USPTO has essentially said, “It’s okay to ignore the statutor written description requirement *in this one case*.””

    I know right? But try explaining that to the 75% of your buddies.

  154. 131

    “Does a patent for a tire require a mention of a car be necessary for the claim to be patent-eligible?”

    Nope, but a patent for a tire that is claimed functionally where nobody in the world knows what structure implements that function requires a mention of the structure. And you’ll get a 112 1st if you forget it.

  155. 130

    “I was reacting to your post that the use of thermocouples alone was novel structure. ”

    You reacted to a post you imagined but was never actually posted? Good job Ned. Good job. You can look back in this thread and see that there are no such posts.

  156. 129

    “And yes, “thermocouples in an indentation in a rubber mold” was old in the art.”

    Cite your reference tard.

  157. 128

    It isn’t an argument. It is simply my noticing what the court reported, and what the art available indicates. Also, I noted that generations of lawltards seem to have overlooked this when they go on and on about the Diehr case.

    You’re probably right that “the gap” will be closed. But it won’t be closed with a 102. It would be closed with a 103, that is to say it is novel but they still wouldn’t have won their patent. Which is why they added additional limitations directed to other things.

  158. 126

    seem to insist that no mention of hardware should be necessary for the claims to be patent-eligible.

    Does a patent for a tire require a mention of a car be necessary for the claim to be patent-eligible?

    Does a patent for a retaining device require a mention of an end product that will use the retaining device be necessary for the claim to be patent-eligible?

    Patent eligibility is a nuclear bomb when compared to the handgun of patentability. You appear to be using the term inappropriately.

    EULA is a contract and is a comepletely different type of protection.

    Fin pig farmers, your grasp of patent law seems minimal at best.

  159. 125

    If the claim is an apparatus claim, and the component is sold,

    This is clearly under 271(c), not (b), and as noted, the required knowledge is presumed if the article is not a staple or commodity, or does not have other non-infringing uses. Clearly, B-claim components are not staples or commodities, and have no other non-infringing uses, and the presumption carries easily.

    Now imagine a patent with both kinds of claims. What is the law?

    Simple, infringement is a per-claim event, and not a per-patent event.

  160. 124

    A decent summary from Wikipedia:

    Direct infringement

    A person directly infringes a patent by making, using, offering to sell, selling, or importing into the US any patented invention, without authority, during the term of the patent.

    Indirect infringement

    While the United States Patent Act does not directly distinguish “direct” and “indirect” infringement, it has become customary to refer to describe infringement under 35 U.S.C. § 271(a) as direct infringement, while grouping 35 U.S.C. § 271(b) and 35 U.S.C. § 271(c) together as “indirect” ways of infringing a patent. Unlike direct infringement, which does not require knowledge of the patent or any intent to infringe, indirect infringement can only arise when the accused indirect infringer has at least some knowledge and intent regarding the patent and the infringement.

    35 U.S.C. § 271(b) creates a type of indirect infringement described as “active inducement of infringement,” while 35 U.S.C. § 271(c) creates liability for those who have contributed to the infringement of a patent. Both types of indirect infringement can only occur when there has actually been a direct infringement of the patent. Courts can find that there has been direct infringement, however, merely from circumstantial evidence that there must have been at least one instance where the inducement or contribution resulted in the practice of the patented art.

    35 U.S.C. § 271(b) covers situations where one actively induces the infringement of a patent by encouraging, aiding, or otherwise causing another person or entity to infringe a patent. A potential inducer must actually be aware of the patent and intend for their actions to result in a third party infringing that patent.

    35 U.S.C. § 271(c), or “contributory infringement,” is triggered when a seller provides a part or component that, while not itself infringing of any patent, has a particular use as part of some other machine or composition that is covered by a patent. If there are other valid uses for the product, however, or it is “a staple article or commodity of commerce suitable for substantial noninfringing use,” the seller has likely not contributed to a third party’s infringement under 35 U.S.C. § 271(c). (with the converse holding that if the item is not a staple or commodity or has no other use, then intent is presumed – software falls under this presumption)

  161. 120

    “Software controls and integrates computer hardware components.”

    Yet the militant pro-software patent types around here seem to insist that no mention of hardware should be necessary for the claims to be patent-eligible. Your definition, which is probably fair and reasonable, is quite a bit narrower than theirs.

    Isn’t software already protected though? Or are those ever expanding EULAs just for laughs?

  162. 119

    Hey Direct, do you think the Feds in the divided infringement case involving method claims are going to hold that A in my example, the party who does all the critical steps in the method but some non critical finishing steps is a direct infringer when he sells the component embodying the critical elements to the finisher?

    I can see such a resolution being “right.”

    But something is fishy.

    If the claim is an apparatus claim, and the component is sold, the infringement would be under 271(b), requiring knowledge of infringement and of the patent.

    Now imagine a patent with both kinds of claims. What is the law?

  163. 118

    The odd thing is that Prometheus claims that it has changed none of the precedents and in fact cite Diehr as most on point.

    In essence, Diehr is at the same time strengthened AND contradicted.

  164. 117

    fish, the government position seemed right, indeed.  However, the SC had the big picture in mind.  For two centuries, they had construed 101 (or its counterparts) going back to 1790 to determine when a claimed invention claimed patentable subject matter.  They seemed somewhat surprised that the government recommended a shift to 102/103.

    But, to be honest, that is exactly what Diehr told us to do, IMHO, when it cited In re Bergey just for the proposition that novelty had nothing to do with 101.

  165. 116

    anon, 

    Regarding Alappat, is it your position that the claims under consideration in that case, as construed by the court, covered 

    1. a programmed GP digital computer that only computed the formula and nothing more; or 

    2. a programmed GP digital computer that was expressly part of a graphics display unit where the output was ultimately provided to a display?

    I will discuss Benson later.

     

  166. 115

    See the Univis Lens case for a rationale about products that have no other use but for a patented invention.

  167. 113

    If the claim is to a computer programmed with software, and you don’t make, use, sell, offer for sale or import the computer, then you don’t directly infringe.

    Isn’t that black letter basic patent law. You have to have each and every claim limitation.

    Assuming computer-readable storage medium claims are patentable, you’d more likely get direct infringement there. The accused party is selling a CD, flash, drive etc, and if it is just offering the software for download, the party is at least using a hard drive somewhere.

  168. 111

    Ned,

    You continue to make spurious and incorrect statements of law, continuing to mislead with additions of “per se” and plainly errant views of the Supreme Court rulings.

    As I already addressed, NOTHING is “per se” patentable, let alone patent eligible. NOTHING.

    For you to take this line of reasoning for items of this category, and this category only is a matter of pure sophistry.

    Stop.

    As to “2. To state that programming converts a GP digital computer in to a SP digital computer directly contravenes Benson as well.” is not only directly false as Benson does not say this – much less hold this, but the law subsequent to Benson clearly states that programming creates a new machine. Alappat. And yes, that is a holding of Alappat, no matter how often you deny it.

    Your naked assertion of software as a component must be subject to 271(b) is conclusary at best and by no means established as law.

    Further, your logic is faulty at 5. above, as what Bilski holds in relation to both Benson and Flook is very different from what you are portraying. If anything, Bilski severely limits the applicability of both Benson and Flook, as each of those must be viewed through the lens of Diehr – let’s not rewrite the actual words of Bilski to suit your ends.

    And finally, no matter how much you go on about “bootstrapping” and your h_atred of Rich, you are not at liberty to dimiss the law that followed Benson, as quite prominently, the fact that that law was not assailed by the Supreme Court indicates the dicta from Benson. You misplace authority from dicta to holding when the plain law tells you otherwise. The fact that you don’t like that law and that law does not fit your viewpoint is immaterial to the actuality of that law.

  169. 110

    Direct, I agree with you.  I think the Feds are struggling with this issue right now in context of the divided infringement issue involving method claims.

    Univis Lens facts.  Method claim.
    If party A partially finishes article X,  B finishes it, then both should infringe where A is selling the material part of the invention.  The problem we have is simply this:

    Univis said what A was doing was contributory infringement.  If so, 271(b) require knowledge of infringement which the SC would hold requires knowledge of the patent.

    The Feds are in a pickle — caused by Judge Rich who drafted 271(b).

  170. 109

    Night, we generally agree on things, that is why.  

    Why 101 and not 102,  Prometheus.  I agreed with the government brief until the SC said that it was wrong.

  171. 108

    Night, "software is a component of a machine."

    1. A programmed GP digital computer without more is not patentable per se.  It must actually be a part of a larger circuit, or the computer must be adapted to do something new.  If a programmed GP digital computer were patent eligible without more, Benson would have been decided differently because the Supremes said they were there dealing with programming for a GP digital computer.

    2. To state that programming converts a GP digital computer in to a SP digital computer directly  contravenes Benson as well.

    3. Assuming the computer is adapted to a new use or part of a larger machine, it is patentable in context.  The software for such a machine is a component of a patent eligible machine.

    But, still the sale of the software as a component is subject to 271(b).

    4. But, without the programmed machine being patent eligible, the software for such a machine, itself not patent eligible, does not become patent eligible simply because is a component of a machine.  

    5. 4, flows both from Benson and from Flook, both as affirmed in Bilski.  In Flook, the Supremes held the claim not to be eligible because the math was applied to an underlying process itself too abstract, that itself was not patent eligible.

    All this is quite apparent from the bootstrapping that Rich engaged in Application of Benson.  His logic:

    a.  computers are machines; machines are patent eligible
    b.  a program that only is useful in a computer is patent eligible.

    The logic is impeccable, which means the premise is wrong.

  172. 107

    I think this is a losing argument, 6. Even a quick search also turns up U.S. Patent No. 3531996. That gets close to having the thermocouplers in the upper and lower die, you get pretty darn close. It’s not exactly “indentations in a rubber mold” but I’m sure with enough looking, the gap will be closed. Of course, eating valuable time arguing on the internet over the patentability of something long since expired tries my patience.

  173. 106

    6, mind your manners, there 6.  I was reacting to your post that the use of thermocouples alone was novel structure.  The modifications to the mold to use thermocouples in a manner to properly sense the temperature throughout the mold is indeed novel structure.  That point I do get and I do agree with.

  174. 105

    It’s obvious. Ned’s use of 101 is to eliminate entire categories from the patent world.

    It’s how he kills the patient, er, um, protects the innovation efforts of the little guys.

  175. 103

    Dear go d, you are an examiner and should know that a patent itself will not tell you if the physical structure is novel.

    And yes, “thermocouples in an indentation in a rubber mold” was old in the art.

  176. 102

    One way of looking at 271(b) or (a) is to look at the software and evaluate it. Does it serve as a “commodity” or having any other purpose except the use as direct infringment (a la Univis Lens 316 U.S. 241).

    In such an analysis, the Feds are more likely to come down on the side of direct infringement (and with the added benefit of mooting the entire so-called B-claim “controversy”).

    If the only possible purpose of the software is covered by a patent, then “knowledge” does not come into play, and the nature of a strict liability offense (that is, 271(a)) should dominate.

  177. 101

    Mark, in a circuit case I was involved with, we amended the claim to exclude a prior art circuit by adding just such a negative limitation. The examiner objected that the negative limitation was not in fact supported by the specification.

    If the negative limitation is critical to patentability, the law seems to suggest that the WD requirement requires support. I think 6’s posts above provide good arguments along those lines.

    IMHO, the PTO should not be requiring “non transitory” or their ilk to issue B-claims where the only disclosure of a memory is physical apparatus. But BRI may require the broad construction. Still there are more ways to skin the BRI cat than claim amendments. Perhaps instead the PTO should only require a statement in the prosecution history?

  178. 100

    Hey Night, I think I did say “equivalent.” I had in mind reciving signals, storing them, and later processing the stored signals to reduce noise or extract information or the like.

    Regardless, I was trying to discuss your analogy to circuits. Circuits do have inputs and outputs, while also processing information. If you are going to make the analogy, you cannot exclude critical aspects.

    Data processing, information processing, whatever you call it, is indeed, in my opinion patentable, because in my mind, the data processing is operating on real data, meansing, sourced from the physical world.

    However, merely calculating, without any application, is not patent eligible. This is like saying a black box sitting on the floor that does nothing at all is patent eligible as a machine because the box might be filled to the brim with discarded circuit boards. No, the box must actually do something useful first.

  179. 99

    Pinto, assuming the programmed computer with the software is otherwise is statutory, I think the big issue is whether sale of the software is direct or contributory infringement. In the end, I think the Feds will come down on the side of contributory because otherwise the patentee will avoid the requirment on 271(b) of knowledge of infringement.

  180. 98

    “novel physicl structure”

    Indentations in a rubber mold with thermocouples therein is not a novel structure? I’m rearranging the words so that your t ard brain might start to understand and you’ll stop skipping over subject matter.

    I have yet to see any art on this record discussing having INDENTATIONS in a rubber mold period, much less making those indentations large enough to put thermocouples in and even less actually putting thermocouples in those indentations.

    And yes, thermocouples in an indentation in a rubber mold is a “structure” distinct from a thermocouple sitting itself sitting on a desk or the floor or out “in the nether” as they are depicted in patents. Thermocouples in an indentation in a rubber mold is also a “structure” distinct from normal old rubber molds.

    Dear go d, go read the patent itself, it lays all this out for you. In excrutiating detail.

  181. 97

    Vic says “Who the h_e11 is Ned Heller? That n_utjob who incessantly posts that c_rap at Patently-O? Even if I knew that Ned Heller, I don’t know Ned Heller.”

  182. 96

    They want to patent disembodied math, medical methods, music or the like.

    Updated for Prometheus per the great Ned Heller Categorically Logic.

  183. 95

    LOL, considering the money spent on killing first to invent (and small businesses along with it), protection for universities, the Wilmer Hale bailout provision, etc., your remark on buying a new 101 brings the comedy.

  184. 94

    Good point, Sword. The Supreme Court had established conclusively that PHOSITA’s have common sense. Is it the other party to the negotiation that comes up short?

  185. 93

    “It’s in there” has the solution to the problem. You see if the court defines a new reality that one skilled in the art would not recognize as reality at the time of invention (nor ever), then I think the PTO can make up rules to deal with fairy tale reality created by the court.

    A signal that is not generated but somehow represents computer readable data. I wonder how that could be. Well, it is according to the court.

  186. 92

    Mark,

    The typical case is not one where there is a lack; but rather an over-inclusion based on factual reality as opposed to legal reality.

  187. 91

    It’s definitely a mess. But just because a court says that media can be delineated into transitory media and non-transitory media does not automatically mean that an originally filed specification has support for non-transitory media, regardless of what one skilled in the art would know.

    You can’t add the knowledge of one skilled in the art to the specification to fill in for a lack of written description in other areas–so why here simply because a court has noted this particular delineation?

    I’m waiting for someone to apply the USPTO’s reasoning to fill in for some other lack of written description in an application to see how the USPTO can distinguish…

  188. 89

    “Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.”

    Why does the PTO assume that the broadest reasonable construction is one that is non-statutory? Why not say it would not be reasonable to claim subject matter that the statute won’t allow you to claim and so we choose to interpret the claim in accordance with the statute. They can even put it on the record of the file history if they want to be sure that after issuance nobody tries to construe the claim to read on “signals.’

  189. 88

    Occam: the narrowest reason that can be and has been since Rome is money. A judgeship on the Fed. Cir. is money for life for almost nothing.

  190. 87

    So, in other words, under reality, one skilled in the art would say, well of course you meant to include signals, but under our new physical reality defined by the court of Moore, one skilled in the art would say, well you didn’t mean to include THOSE signals.

  191. 85

    I don’t know Mark. Is it exceeding its authority? Or is it that the court has defined signals to mean something so that one skilled in the art would have to agree that you didn’t mean to include these signals.

    Interesting that the court thnks it can just define reality in opposition to what science tells us. (We have oddly gone back to the dark ages, which I think is mainly been caused by corruption.)

  192. 84

    I am waiting for someone to challenge the USPTO’s statement as exceding its authority:

    “Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.”

    If this same logic were applied to chemical compounds or any other form of structure, it would clearly violate the written description requirement. Thus, it seems the USPTO has essentially said, “It’s okay to ignore the statutor written description requirement *in this one case*.”

    I am actually a fan of software patents and favor very broad patent coverage, but I agree that this is just a hand-waving exercise.

  193. 82

    Yes, we must be civil with those who repeatedly lie about what the law is to serve their agendas.

  194. 81

    6, the point was for you to show what was a novel physicl structure.

    How existing physical structure was used is a different matter.

    What is that fine description you bandy about? Tard.

  195. 80

    “The Duffas-corrupted system” is the thing that taught me

    Corrected.

  196. 79

    And, because someone said they invented something for some reason means that is what it is?

    The fact is software is a componenet of a machine and B claims make sense, fit the technology, and reflect the reality of the invention.

    So, why do we are why someone thought them up?

    (again, I have a strong urge to call you a monkey, but I don’t want another email lecture.)

  197. 78

    Ned, your latest stuff about needing physical inputs is another one of your bizzarro attempts to eliminate information processing from patent eligibility.

    Get that the law should adapt to what the technology is. This concept that information processing should be seen through the lens of old inventions is wrong. Get it. Instead of your bizzarro attempt to mold a new technology into old paradigns, flip it around. Imagine how information technology should be handled by the law. That is what patent law is supposed to do.

    And, the SCOTUS has clearly not held software to be ineligible for patentability. What the SCOTUS has done is create a bizzarro set of cases that would take me longer to teach someone than it would to teach them an introductory course on computer programming, which tells you that the SCOTUS has mad cow disease.

    When you or a paid advertisement yaps on and on about how to slice and dice these things, anyone with common sense knows you are wrong. Your little attempts are just sad and ridiculous. They would be funny but for the fact that the SCOTUS and this entire country has turned insane.

    Imagine Stern saying you have to tie your new technology to some old technology to be eligible for 101. Would it be possible to turn patent law around in a more wrong direction than what Stern proposed? No.

    (I’d call you a monkey but I get emails from Dennis lecturing me that it isn’t nice to call people monkeys.)

  198. 77

    JCD – well said and thanks for the excellent explanation. I do not at all deal with SW-type art and I understood your well stated explanation. Too bad u r not 6’s supervisor !

  199. 76

    Software controls and integrates computer hardware components.

    What components do cookie recipes or driving directions control and integrate?

    Your analogies, like fin pigs, do not fly.

  200. 74

    “One does not need to expressly disclaim these magical unicorns to have possesion of any other circle between the very largest circle and whatever other circle.”

    That is correct, you don’t need to SO LONG AS YOU HAVE DESCRIBED WHERE THAT LINE WHICH YOU ARE ABOUT TO DRAW WOULD BE IN THE APP AS FILED. Which is what normal applicants do routinely and properly.

    “The question you think does not mean d ick is the very question you need to address. ”

    Nope, it is only one of them. Which is something I have to school lawlta rds in from time to time. However, the lawlt ards I have to school in this don’t have as hard a time as you have had in picking it up.

    In addition, I most certainly am not “against the system” on this one. “The system” is the thing that taught me, and a whole slew of other examiners to do this. But, we’re supposed to give these poor basta rds some pity. All the while laying the hammer down on poor pitiable applicants that are actually bothering to advance the useful arts.

  201. 73

    Um no, you can make any claim amendment after initial filing you want SO LONG AS YOU BOTHERED TO TELL US ABOUT THE SUBJECT MATTER WHICH THE NEW LINE WHICH YOU’RE ATTEMPTING TO DRAW ENCOMPASSES AT TIME OF FILING. The whole point is that you didn’t tell us about that line and all which is within it at the time of filing. You told us only about a small corner of it, and you told us about something larger than it.

    Jes us, do I have to hold you tar d’s hands through everything? The whole point is that you never mentioned that new line you’re wanting to draw now. In normal amendments they did mention that new line they’re wanting to draw. At least the attorneys I talk to aren’t usually as ta rded as you guys are. Once I explain the issue, they roll over like a dog, because this isn’t the first time they’ve faced it.

  202. 72

    Did you also program an application circa 1970 using temperature data FROM THE NEARLY THE ENTIRETY OF A WORKPIECE OF RUBBER BEING CURED? You didn’t? Then st fu please.

  203. 71

    Annnnd? What? Were thermocouples hooked up to controllers/recorders IN TINY INDENTATIONS SPECIALLY MADE FOR THEM IN A RUBBER CURING MACHINE also certainly not new? Perhaps you can show us the patent number showing what I just go through telling you about, now three times.

  204. 70

    Of course software should be patentable. Just like cookie recipes, driving directions, and car repair manuals. They’re all just sets of instructions. We should totally be able to exclude other people from taking our favorite route to Grandma’s house.

    Come to think of it, we should be able to get a patent on every mirror that reflects a different scene, because it is technically structurally different (onacounta radiation pressure) from otherwise identical mirrors that reflected other scenes…

  205. 67

    But now Dennis seems to have fallen into the web of deceit as well.

    Now accusing the good professor because his agenda has been outed and he looks the fool.

    How pathetic.

  206. 66

    My what pretty dust you are kicking up.

  207. 65

    Well, obviously you don’t see, you are still around; unless of course you do see and are just luring about it.

  208. 62

    Thermocouples hooked up to controllers/recorders were certainly not new. See U.S. Patent No. 2676914. Specifically Figure 3.

  209. 60

    What is different about an equation and music from 101's point of view?  Both are ineligible patent subject matter.

    The point of bringing in music is to illustrate the problem with simply patenting a claim because it nominally is directed to a machine or an article of manufacture.  To do that, and that is what is being argued here by the sophists, would allow claims to unpatentable subject matter.

    1. Apparatus comprising;

    a player piano that rotates a scroll at a defined speed, reads perforations from the scroll and in response strikes per determined piano keys according to the location of the perforation on the scroll; and

    a scroll; 

    wherein the scroll in perforated in a defined pattern, the pattern comprising:

    a musical score.

    On the whole, claim 1 is patentable as a machine.  However, if it turns out that the only thing new is the particular musical score, then the claim takes on a whole new aspect.

      

  210. 58

    Except, Bad, if you read Siber's paper on the topic, you will see it IS the whole point. 

    I have had many discussion with Vic about IBMs problems in patenting and suing on its software patents.  IBM invented B-claims, and I presume, Vic led the charge in getting the PTO to accept them.  Regardless, read his paper.

    I don't have a link.  Call Vic and tell him I said hello.

    Thanks in part to Vicotr Siber, IBM’s chief patent lawyer at the time, “Beauregard claims” were devised to recast software as an article of manufacture: Computer program encoded in a computer readable medium. 
    link to acordiaiplaw.com

    link to bakerlaw.com

  211. 57

    A machine need not have inputs and outputs to be of use.

    Big difference, mr. sophist.

  212. 56

    No one (except the sophists) have ever attempted to patent music (or the like) or even kicked that dust and billowed that smoke. Look again at those trying to inject such into the argument!

    Ned, you are fooling no one. At all.

  213. 55

    You can get rid of the biggest sophist, trickster, liar, bilkster and thieve all completely within your own power. Just disappear yourself.

  214. 54

    precisely the whole point

    Like my moniker indicates: bad assumption.

  215. 53

    Bad Ass…, it doesn't?

    But that is precisely the whole point for B-claims in the first place …to avoid 271(b) and its requirements.

  216. 52

    My agenda is to do away with sophists, trickster, liars, bilksters and thieves.  The fact that you do not seem to get this places you personally squarely in the wrong camp.

  217. 51

    A machine that has no use is patentable?

    Regarding Alappat, what was that whole discussion in the case concerning a graphics display about, then?

    What was the holding in Benson?

  218. 50

    It doesn’t.

    It also doesn’t mean that 271(a) is magically avoided either.

  219. 49

    When will you get it Ned, that you cannot get rid of software as a category? And yet, that is what your agenda has been all along.

  220. 48

    Question on the patenting of software:

    Why should software uniquely avoid the requirements of 271(b), especially its requirement of “knowledge” of infringement which appears to require knowledge of the patent or the equivalent?

    If there is a problem with 271(b), why don’t we address it for all subject matter?

  221. 47

    The problem 6, is that magical unicorns exist in circles throughout the universe of claim circles. One does not need to expressly disclaim these magical unicorns to have possesion of any other circle between the very largest circle and whatever other circle.

    The question you think does not mean d ick is the very question you need to address. You not wanting to address it; now THAT means d ick.

  222. 46

    fish, the SC held that the claims in Benson were to a method of programming a computer. That is good definition of software.

    The problem is what the software

    D O E S!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

    When will people get it?

  223. 45

    A machine that is patentable does not necessarily have any inputs or outputs.

    You have made no point with your post.

    Further, once you program a general purpose computer, you no longer have a general purpose computer, you have a new machine. Alappat, passim. This is fact. This is law.

    Further still, you state SC has held. That is clearly false. Point blank, SC has expressly NOT held. Benson, passim.

    Misleading? No, Ned Heller, it is you that misleads.

  224. 44

    Clang, Clang, Clang the alarmist’s bells ring.

    They want to patent disembodied math, business methods, music or the like.

    Clang, Clang, Clang.

    But they cannot do so directly.

    Clang, Clang, Clang.

    So they compare programmed computers to circuits and ask, if one, why not the other?

    Many are fooled, but not the good folks at the Supreme Court.

    Supreme Court to Rader, GVR Ultramercial. Claims are not patentable just because they recite or use computers.

    But now Dennis seems to have fallen into the web of deceit as well.

  225. 43

    Night — a circuit is a machine. It has physical inputs and physical outputs.

    If you would confine yourself to programmed general purposed digital computers that had real physical inputs and real physical outputs (or something equivalent), I would have no objection to your comparison of computers to circuits.

    But the bottom line, the comparison without any limitation whatsoever, is misleading as it would lead to patenting subject matter the SC has clearly held to be unpatentable.

  226. 42

    it is an inquiry of whether he possessed specifically everything in that manner of grouping, i.e. the claim.

    Clearly wrong, as this would mean that there could never be any claim amendments after initial filing.

    Sorry, but the US system clearly states you are wrong.

  227. 41

    Augustus, is it your position that the only thing wrong with Bilski was that it was not tied to execution on a GP digital computer?

  228. 39

    Night, Dennis’ statement is somewhat bizzare since software has long been patentable subject matter — claimed a process steps — in specific applications such that the process produces a new and useful result.

    The sale of such software for the application contributorily infringes, provided the other elements of 271(b) are present.

    The whole controversy here is not about software, but about claiming software that only calculates numbers and has no specific application, e.g., the improved mathematics package.

    The secondary controversy is about so-called B-claims that end run 271(b).

    Dennis, if you read this post, I hope you consider it well.

  229. 38

    “it’s an inquiry as to whether an ordinary artisan would understand the applicant to have possessed a claimed invention.”

    No, I’m quite in agreement with you on that point. It is, as you say, an inquiry into whether or not an ordinary artisan would understand the applicant to have possessed the instant claimed invention. Indeed, I argued for it to be JUST THAT when it was Ariad argument time on these very boards. And I heard it from the judge’s own lips that day in court.

    And the issue is the applicant never thought to so limit his invention at the time of filing, in other words he never thought of an invention so limited. That is, he never had possession of that specific genus of little species. That is to say that the inquiry is not an inquiry into whether or not he had possession of ONE (or even a few) embodiments within a group of things encompassed by the claim, it is an inquiry of whether he possessed specifically everything in that manner of grouping, i.e. the claim.

    Note that this issue is not unique to this situation. It happens in all arts. And we bust em down every single time in other arts. What it boils down to USUALLY in other arts, practically routinely, is where the applicant will try to use some language to claim a big ol chunk of subject matter that just so happens to include his ONE very specific embodiment in terms that were never specified at the time of filing. It gets facerolled with a 112 every single time.

    Also note that this happens so often that I do not doubt that 75% of attorneys on this board are not familiar with this happening and/or disagree with 112 being applied this way.

    “Are you telling me that you do not believe that the specification conveys to an ordinary artisan that the applicant had possession of a computer readable medium that is not a signal? ”

    No, I’m telling you that he didn’t have possession of everything that is encompassed in that way of describing the CRM’s that he does possess WD for. Thus, the manner of describing those things, i.e. the claim, as a whole falls.

    “You don’t seem to want to answer this question, instead preferring to throw out weird hypotheticals and spin off into tangents.”

    I do not seem to be wanting to answer it because it has d ick to do with the issue that is raised. That is, if it were an argument in a response to an application I was handling that got a 112 I would tell you specifically that you’re not even addressing the specific grounds of rejection.

    Obviously the spec conveys to the ordinary artisan that the applicant had possession of ONE EMBODIMENT (maybe a few) of a computer readable medium that is not a signal. I do not take issue with that, what so ever. If you claim that one embodiment, or those few embodiments then I would not say anything.

    I, along with everyone who is familiar with the suject, take issue with something quite different than that. Specifically, the spec does not convey to the ordinary artisan that the applicant had possession of the ENTIRETY of computer readable mediums that are not a signal. Note that what I’m discussing is currently what is being claimed, and what you’re talking about is not what is being claimed. In a hypo app that doesn’t exist that is.

    You can see this visually if you’d like. Draw a large circle on a sheet of paper. That is the original claim, signals and all. Draw a somewhat less large circle inside the big circle. That is the amended claim. Now, draw a tiny tiny tiny circle within the less large circle. You have WD for the very large circle and the tiny tiny circle. You do not have WD for the less large circle. You never mentioned that circle from the get go, there is no reason to believe you possessed it magically.

    In any event guys I have more important things to go over and I have a guest coming in tonight so I’ll tty on the morrow.

  230. 37

    6, just for your info, I programmed an application circa 1970 using temperature measured from thermocouples. I was not under the impression at the time that thermocouples were new.

  231. 36

    I think your hypothetical misses the point. I do understand your position, but I think what you’re missing is that the written description requirement isn’t just an issue of semantics, it’s an inquiry as to whether an ordinary artisan would understand the applicant to have possessed a claimed invention.

    Are you telling me that you do not believe that the specification conveys to an ordinary artisan that the applicant had possession of a computer readable medium that is not a signal?

    You don’t seem to want to answer this question, instead preferring to throw out weird hypotheticals and spin off into tangents.

  232. 35

    74% of you seem to think that supports the exclusion of abstract ideas and software.

    An obvious misstatement of the results. You just can’t help yourself from spewing straw at every opportunity, can you?

  233. 34

    MM (aka paid advertisment), so all information processing routines and machines are poorly claimed?

    So, you believe that information processing claims rely more on functional language than circuit claims and chemical claims (also known as the art of claiming a known molecule)?

  234. 33

    Section 101 lists four examples of statutory subject matter that are neither software-on-a-medium nor abstract. 74% of you seem to think that supports the exclusion of abstract ideas and software.

  235. 31

    (1) What is a definition of “abstract” which covers software?

    (2) Where is “abstract” found in Section 101?

  236. 29

    And Congress just had an opportunity to address subject matter eligibility, but no one stepped up to purchase a section 101 amendment.

  237. 28

    You don’t have the prior art to back up that statement brosensky.

    Yes I do.

    And the prosecution history of that patent doesn’t provide it for you.

    It doesn’t have to. In fact, it could not because it was not a novel feature.

    Try again.

  238. 27

    You don’t have the prior art to back up that statement brosensky. And the prosecution history of that patent doesn’t provide it for you.

    Remember, the roles are reversed here, I’m taking the role of the person arguing for non-anticipation, and you’re taking the role of the person arguing anticipation. You’re probably not used to that role as you are a prosecutor used to the office telling you that something is not novel.

    If you’re going to be srs about this discussion on novelty, which I doubt you are, then you’re going to need a reference. I say it appears novel even today and I note that there is no art on the record of that patent to say otherwise. Also, the background of the patent explains what the patent applicant viewed as being the state of the art. And I’m not discussing it futher until YOU show that it is not novel. That is, with some art ya ta rd. Because you don’t have art on that because it doesn’t exist. THE YEAR WAS 1981 BRO. This sht was not advanced.

    I want you to take a minute and ask yourself, really look into your own soul and ask yourself, “am I not believing that this was novel because I WANT the only thing to be novel to be the use of the Arrhenius equation even though the USSC plainly told me otherwise? Or do I believe that this was not novel because I believe in 1980 the rubber curing art was supar advanced?”

    Btw, “Thermocouples around a cure chamber” was not the structure which I just told you about. They’re thermocouples IN LITTLE INDENTATIONS SPECIALLY PROVIDED FOR THEM IN THE CURE CHAMBER STRUCTURE around a cure chamber.

    Note that I take no position on the validity of that issued patent that is a question for a court.

  239. 26

    Yes, because Yahoo news has such a high level of veracity and science ficitonis “sorta” like inventing.

  240. 24

    “Do you agree that a magnetic cassette and a flash memory card are “computer readable storage medi[a] excluding signals”?”

    In the same way that they are “computer readable storage medi[a] excluding signals, SAILBOATS, MUGS, CUPS, MY RIGHT ARM, MY LEFT ARM etc.” That is to say, they are embodiments or examples within that description.

    “I understand what you’re trying to argue. You’re basically saying that disclosing a “hard drive” and then trying to claim a 10,000 RPM hard drive with an SSD cache, or disclosing “memory” and then trying to claim RAM dimms with a CAS latency of 7, would violate the written description requirement. ”

    I know, we both know from whence the other side is hailing.

    The question which you guys really want to know is: will the PTO and courts take pity on you guys?

    Stop trying to make it into some sort of a 112 discussion. We all know that the app in a hypothetical case that doesn’t exist didn’t say sht about the entire genus of non-transitory mediums and he had no intention of disclosing such at time of filing. He wanted all mediums. Period. Now, after Nuijten laid down some law, they’re reconsidering because one of the species they wanted is ineligible (although technically probably all of the species they wanted are ineligible, they just don’t know it yet). That is as plain of a 112 problem as ever is going to exist. There can be no realistic discussion on that point if you are discussing it with someone who is not a tard.

    That said, what you’re looking for is pity. And frankly, you have a better chance of winning asking for pity because the people in power are a pitying bunch. The PTO grants you pity currently every time they issue a B claim. The courts have granted you pity time and again refusing to outright ban software or B claims (if you could say that Cybersource hasn’t ended them). Your entire position rests on nothing but the generosity of the government system setup for people who are not you.

    Which brings us to what is amazing. What is amazing is that you’re getting that generosity thanks to applicants who actually work in and progress the useful arts and yet the PTO is harder on those folks. And that is my real issue that I have. I come into work every week and bust people’s balls over 112 1st in analogous situations IN THE USEFUL ARTS (as is the lawl and which I’m quite sure my spe will make me do). But then, to provide pity to the people WHO AREN’T EVEN PROGRESSING THE USEFUL ARTS and are claiming ineligible subject matter we are to make an exception. But we have no pity for those actually bothering themselves to progress the useful arts. If we’re going to coddle you then by mo fin go d da m we should be coddling the people bothering themselves to progress the useful arts.

  241. 23

    Thermocouples were not a novel physical structure, even those around a cure chamber.

    Try again.

  242. 21

    Thermocouples in little indentations on and all around the outside of a rubber curing chamber collecting temperature data, aka monitoring the temperature, was one. Notably that is the heart of what enabled the whole thing, it had, up until that point, not been known how to monitor the temperature to get a reading to be able to do such a computation because you need to know the temp of the whole workpiece of rubber being cured. And an electromechanical opening device on a rubber curing chamber at the position of the opening. You can read their spec, it’s all there. The patent no. is in the wiki on the case.

    Indeed, it might be said that there was a yet further novel physical structure in that you had a computer attached to those thermocouples and attached to the electromech opening device.

    None of the art cited showed any of that. You can find the art in the patent.

  243. 19

    In my mind, this entire discussion is ridiculous.

    Without a doubt. And look at who were the band leaders of the ridiculousness: the Vocal Minority of Ned Heller, MM, 6 and IANAE.

    And look at the voices rising up to crush them. Well done people.

  244. 18

    LOLZ: point of novelty

    Double LOLZ: rely on functional claiming (sort of like “purified” or “isolating”)

    T O O L

  245. 17

    seems the supremes are bent on derailing their efforts at a coherent system at every turn.

  246. 16

    +1

    This point is absolutely factuallyand legally true.

    Hardware is equivalent to firmware is equivalent to software.

  247. 15

    Let me try it this way:

    Do you agree that a magnetic cassette and a flash memory card are “computer readable storage medi[a] excluding signals”?

    If so, wouldn’t disclosure of these demonstrate possession of a “computer readable storage medium excluding signals”?

    I understand what you’re trying to argue. You’re basically saying that disclosing a “hard drive” and then trying to claim a 10,000 RPM hard drive with an SSD cache, or disclosing “memory” and then trying to claim RAM dimms with a CAS latency of 7, would violate the written description requirement. However, I think that this situation is a far cry from that, because, inter alia, while such hypothetical application doesn’t disclose hard drive speed or CAS latency, the case at issue DOES DISCLOSE examples of computer readable media that are not signals. Thus, it is very difficult to understand why the applicant cannot claim such a computer readable media that is not a signal. There is no doubt that the applicant could claim a magnetic cassette or flash memory card; I don’t understand why you would have a problem with the applicant generically claiming a computer readable medium that is not a signal. If an applicant can disclose several different types of optical drives and generically claim “an optical drive”, why can’t an applicant disclose several types of computer readable media that aren’t signals and then generically claim “a computer readable medium excluding signals”.

    Overall, as I noted previously, I believe you are conflating this with some bizarre antecedent basis issue. The question isn’t whether EVERY WORD that is recited is supported in the specification, the question is whether the invention that is claimed was disclosed sufficiently so as to convey that the applicant had possession of the claimed invention. Here, I can’t believe it is even being debated whether the applicant had possession of “a computer readable storage medium excluding signals”.

  248. 14

    NWPA You can’t just knock out software without also knocking out electrical circuits and many machines that were poorly claimed and rely on functional language at the point of novelty.

    Fixed.

  249. 12

    Congress is impotent and in any event will be controlled by the anti-software-patent lobby.

    (Hopefully, the FedCir will slowly steer the law in the right direction.)

  250. 11

    “You can’t just knock out software without also knocking out electrical circuits and many machines. You see, the “games” are nothing more than expressing what software really is.”

    Makes sense, NWPA

  251. 10

    ‘ SCOTUS has no business excluding software from 101.” I agree

    However, what is needed for software and business method types of inventions is a detailed updated PTO classification system so that examiners can locate relevant prior art and so that potential competitors can quickly/easily locate patents which they may infringe (or need to design around).

  252. 9

    “I would love to hear you try to explain how the specification does not “describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of” a computer readable storage medium excluding signals”

    Well, in a case that doesn’t exist, not the one being discussed in this thread, it is the same way that the specification does not “describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of” a computer readable storage medium excluding SAILBOATS, MUGS, CUPS, BROOMS, etc. on for days.

    “Why would an ordinary artisan not understand disclosure of “magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like” to represent disclosure of such a computer readable storage medium. ”

    Their being a description of embodiments of such a computer readable medium does not equate a disclosure that SPECIFICALLY excludes one single thing. In a hypothetical case not under discussion in this thread anyway.

    You may feel free to list out all the hardware in your spec, and thus exclude signals if you want, and you would of course have WD for that listing of hardware.

    “Why do you think that the applicant did not have possession of a “computer readable storage medium excluding signals”?”

    Because he never mentioned it, that is, he never described it/demonstrated possession of it as of the day of filing. In a hypothetical application that doesn’t exist. To be clear, the applicant may well be in possession of that language now that Nuijten was handed down, but he sure as f didn’t show that he was at time of filing.

    “I think that you are conflating antecedent basis with written description, ”

    No, I’m not.

  253. 8

    “You can’t just knock out software without also knocking out electrical circuits and many machines”

    Lulz. Yeah. Right.

    “You see, read Benson, the problem is that software is complicated and cannot be simply eliminated.”

    Nah. They simply chose not to that day. A bad decision on their part.

  254. 7

    I would love to hear you try to explain how the specification does not “describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of” a computer readable storage medium excluding signals. Why would an ordinary artisan not understand disclosure of “magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like” to represent disclosure of such a computer readable storage medium.

    Moreover, even if this language wasn’t in the specification, are you really arguing that an ordinary artisan wouldn’t understand that software disclosed in the specification could be stored on such computer readable media? Why do you think that the applicant did not have possession of a “computer readable storage medium excluding signals”?

    I think that you are conflating antecedent basis with written description, and somehow trying to read in some sort of requirement that the description has to disclose EXACTLY the recitation of the claim, rather than just being sufficient to convey to an ordinary artisan that the applicant had possession of the claimed invention.

  255. 6

    The problem, our little 6, is that they are not just drafting games–they are an interaction with the court that is playing games.

    You can’t just knock out software without also knocking out electrical circuits and many machines. You see, the “games” are nothing more than expressing what software really is.

    Sorry but it is simply just not as simple as a game, but rather a reaction to the SCOTUS trying to mischaracterize software as something that it is not–abstract. Benson is perhaps the worst opinion ever in patent law. SCOTUS going beyond its constitutional authority and trying to misrepresent software and hardware. You see, read Benson, the problem is that software is complicated and cannot be simply eliminated. Read the bizzarro EPO law on subject matter eligibility, and you get a flavor for how complicated it is.

  256. 5

    “In my mind, this entire discussion is ridiculous. The invention in this case (as in several hundred thousand other cases) is a bit of software. Yet, because of these odd rules setup by the U.S. Supreme Court (and their interpretation by the PTO) applicants feel they cannot be straightforward enough to simply obtain a patent on the software.”

    Agreed. Congress needs to get involved.

  257. 3

    On Diehr’s facts it simply wasn’t a good vehicle to do so. They had novel physical structures doing 2 of the 3 claimed novel steps.

  258. 2

    “26% ”

    Only 26% of responders aren’t idiots.

    In any event, I quite agree with you D, the whole argument is ridiculous. I say we send cases to the courts with “software” blurted out right in the preamble and whatever language describing the software the applicant wants to use coming next. Then, when we have a decision roundly condemning such, then we can turn our attention to these drafting games and knock them out soundly as what they are … drafting games.

  259. 1

    >applicants feel they cannot be straightforward enough to >simply obtain a patent on the software.

    This is exactly the problem and it makes patent applications and prosecution much more expensive. And, the SCOTUS has no business excluding software from 101. Just read Diehr where they explain that they could contrive a way to exclude software (information processing), but shouldn’t as this was before Congress.

Comments are closed.