Director Kappos: Some Thoughts on Patentability

The following is a reprint from USPTO Director Kappos’ recent statement on patentable subject matter:

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The recent Federal Circuit decision CLS Bank International v. Alice Corporation raises some important points that offer insight on advancing prosecution of patent applications. In CLS Bank, the claims to a computer-implemented invention were found to fall within an eligible category of invention and not to mere abstract ideas. In answering the question of eligibility under § 101, I found it interesting that the court looked at the different roles of the various statutory provisions, § 101, 102, 103, and 112. Sections 102, 103 and 112 do the substantive work of disqualifying those patent eligible inventions that are “not worthy of a patent”, while § 101 is a general statement of the type of subject matter eligible for patenting. The court notes that, while § 101 has been characterized as a threshold test and certainly can be addressed before other matters touching on patent validity, it need not always be addressed first, particularly when other sections might be discerned by a trial judge as having the promise to resolve a dispute more expeditiously or with more clarity or predictability. The court in CLS Bank also recognized that the exceptions to eligibility—laws of nature, natural phenomenon, and abstract ideas—should arise infrequently.

Based on my experience, I appreciate the wisdom of the court’s discussion relating to resolving disputed claims by focusing initially on patentability requirements of § 102, 103, and 112, rather than § 101. I have found that when claims are refined to distinguish over the prior art, recite definite boundaries, and be fully enabled based on a complete written description, they do not usually encounter issues of eligibility based on reciting mere abstract ideas or broad fundamental concepts. Put another way, every business looks for opportunities to sequence workflow so that the first issues addressed are the ones that can simplify or completely resolve other issues. This is good basic management for businesses, and for patent offices.

While courts can resolve patent disputes in the most expeditious manner given the facts of the case, the Office has the unique duty of ensuring that all patentability requirements are met before issuing a patent. Applications that are presented in the best possible condition for examination with clear and definite claims that are believed to distinguish over the prior art and are supported by a robust disclosure will most likely not encounter rejections based on eligibility. Avoiding issues under § 101 can have a very positive effect on pendency and help examiners focus on finding the closest prior art, leading to strong patent protection. Hopefully, the guidance supplied by the Federal Circuit in CLS Bank can help us as we continue to work on reducing pendency and enhancing quality of issued patents.

226 thoughts on “Director Kappos: Some Thoughts on Patentability

  1. 226

    Yah NED,
    I said put it in the abstract. But that was when it was an appendage. Now it stands by itself as an improvement. So like a gun needs a bullet, and a fax needs a phone line, and a scanner needs to scan into the computer or onto the paper, they all got Patented. So in order to make the computer a better machine it needs Software. Turn the frown upside down.

  2. 223

    Mr. Integration, the SC did indeed say that ignoring new elements in 102/103 was forbidden.  Is that what you think the Diehr court meant?   Interesting take there Mr. Integration.

  3. 222

    Mr. Naughty,

    I discover an ideal correlation between height, age, sex and weight.  I claim the process of 

    1. Determining the height, age, sex and weight of the individual.
    2. Wherein a weight below the correlation indicates a need to eat more and a weight about the correlation indicates the need to eat less.

    I sue everyone in a class action who weighs himself because they infringe, as they already know their age, sex and height.

    Your verdict, Mr. Naughty?

  4. 221

    Mr. What, I know it must be hard to accept, but Prometheus did somewhat depend on the administering and determining steps being conventional.

  5. 219

    It’s rather amazing how in acts of desperation Ned and MM can’t resist blurting out lies. Anyway the score card posts always make me chuckle :)

  6. 218

    “But both in Bilski and in Prometheus, they did speak about novelty. Why?”

    They speak about it for two reasons.

    1. The Court is referring to any “new and useful” process under section 101. which is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” However, this should not be confused with Novelty under 102 § which covers in detail the conditions relating to novelty. See Diehr [Footnote 13]

    2. The Prometheus Court basically destroyed your views on Novelty that it was permissible to ignore steps that were old/non novel, at 101, 102, or 103. Prometheus made it clear such was not the case, even rebuking the Governments argument that seemed in favor of such a rule. Instead Prometheus upheld Diehr’s claims as a whole mandate and prohibition against dissection. See (Prometheus): “The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole. See Brief for United States as Amicus Curiae 27. But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be consid­ ered as a whole”). And studiously ignoring all laws of nature when evaluating a patent application under §§102 and 103 would “make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.” (22 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. Opinion of the Court)

    Diehr made clear the difference between “New” in 101, and “New” in 102 for Novelty. You seem to get confused or maybe purposely cause confusion between these two legal concepts. None the less there is a difference when they are discussed in Diehr, Bilski, and Promtheus, and the definitions have remained the same.

    Again if you, would just take the time to learn to properly perform “Integration Analysis” you would not be so confused. For the life of me, I don’t know why you, MM, and 6 are so afraid on this important legal concept!

  7. 217

    Other things historically, currently, and predictably wrong:
    Dissection Rules
    [oldstep] + [newthought] = ineligible recognized as the law and enshrined in Official Office Guidance
    Business Methods categorically ruled patent ineligible
    Software ruled patent ineligible

    Shall we go on?

  8. 216

    “Perform the Integration Analysis”

    The “look up at the scoreboard and smile” answer to the fantasy loving, tinfoil hat wearing, anti-patent vocal minority.

    Remember when MM self defeated all over himself, boasting about the Official Office Guidelines and being the very first to post a link to them, but didn’t bother reading them or noticing that they verified the postings of that “suckie” 101 Integration Expert?

    Lolz. I do.

    And that’s something that no one will ever forget!

    9 – 0 Baby! Time for MM to QQ over doing the Integration Analysis.

  9. 215

    What does it mean indeed. What does it mean when the Supreme Court says not only that it IS following it’s precedent (even as you say it is not) but also says that Diehr is the most on-point precedent of all!

    What does it mean indeed? And you think the Federal Courts are renegade and don’t listen to the Supremes? It looks like they listen only too well, that the follow the EXAMPLE only too well.

    What does it mean indeed? Many have been asked to square the Prometheus decision with the rest of the jurisprudence, and no one has.

    What does it mean indeed? Maybe the Supremes should tell us. Or as the author of this thread suggests, maybe Congress should step in and rescue everyone from the Supreme mess and TELL the Courts to stop screwing around on anti-patent witch hunts.

  10. 214

    Malcolm, true that about AI and all his guises. Historically wrong. Currently wrong. And predictably wrong. If he expresses his views on any question, we know what the wrong answer is right away.

  11. 213

    Sucktical And Mr. Heller, there is not a d am thing YOU can do about it!!!

    Chief Bromden will be by with the pillow shortly, Mr. McMurphy. In the meantime, relax and bite down on this wooden stick.

  12. 212

    Ned Your point is that novelty has or should have not relevance to 101. But both in Bilski and in Prometheus, they did speak about novelty. Why?

    Because after they chewed up Zombie Diehr and s–t it out, the Supremes wanted to put the steaming pile right in front of supersuckie’s nose so he could get a good whiff.

    Supersuckie’s never been the same since. Now supersuckie is an “Integration Zombie”, a species of Mayo Nays doomed to wander the blogosphere and spew gobbledygook.

    The important thing to remember is that supersuckie is wrong about everything, all the time. As long as you remember that, you have nothing to worry about.

  13. 211

    Sucktical It the mean time, stop saying they did not follow Diehr

    If they did follow Diehr, supersuckie, they didn’t follow it the way that you whored the case for two years. We know that because you were sure that Prometheus’ claims were valid because of Diehr’s alleged absolute prohibition against looking at the novelty of individual claim elements during a 101 analysis.

    You’ve conveniently forgotten your endless n-tsack ramblings on that point but we haven’t. And we never will! LOL.

  14. 210

    They followed Diehr on ALL points. So unless you have a specific point where they did not so follow, please stop saying they did not follow.

  15. 208

    “If the SC does not follow its own precedent, what does that mean?”

    When that happens let me know and we can discuss it. It the mean time, stop saying they did not follow Diehr, then recognize and perform “Integration Analysis” on all claims.

  16. 207

    101, I agree that they did follow Diehr to the extent of integration.   But that is not what you are talking about.  Your point is that novelty has or should have not relevance to 101.  But both in Bilski and in Prometheus, they did speak about novelty.  Why?

  17. 205

    101, OK.  Thanks.  But you don't have to tell me about Diehr anymore.   I know what it held.  The real question is whether it is still good law.  If the SC does not follow its own precedent, what does that mean?

  18. 204

    “No. But what can we do if they do not follow Diehr?”

    1. Recognize they did follow Diehr, ( integration)

    2. Perform “Integration Analysis” on all claims.

    ::Problem Solved::

  19. 203

    “they had to restrain their criticism of Diehr”

    Mr. Heller:

    You dream.

    You lie.

    There was NO criticism of Diehr.

  20. 202

    “Mr. Expert, they did not follow Diehr. So, what are you going to do about it?”

    I am going to cite “Prometheus Integration” to show the Court relied on and did indeed follow Diehr as it’s controlling precedent.

    I am going to cite “Prometheus Integration” to show that claim dissection ( strip away & ignore) is not allowed.

    I am going to cite “Prometheus Integration” to show that claims as a whole, is STILL the law of the land.

    I am going to cite “Prometheus Integration” to show that “Integration Analysis” is the key to as the Court said: transform a process into an inventive “application”.

    I am going to cite “Prometheus Integration” to show that the statute IS inclusive; which is in accord with 101’s broad patent-eligibility principles.

    I am going to cite “Prometheus Integration” to show that once a concept is “integrated” a process legally transforms into an inventive application of the concept and thus by law can’t be an abstract process.

    I am going to cite “IPrometheus Integration” to show that ANY software, computer, or pure business process that identifies a concept, application, and integration, when viewed as a whole, is 100%, slam dunk, 101 statutory subject matter!

    And Mr. Heller, there is not a d am thing YOU can do about it!!!

  21. 201

    Mr. Right, you have a point there.  Clarity has not been the watchword.  Perhaps they had to restrain their criticism of Diehr in order to get a unanimous verdict?  Diehr did exhibit a huge split between the majority and dissent, primarily caused by this issue.
     

  22. 200

    It’s not what Mr. Expert will do that counts. It’s what those “renegade” district courts will do.

    The fact that you have active precedent for two different directions means anything goes – just cite the (each still good) law that supports the decision of the moment.

    Thank you Supremes for your “clarity.”

  23. 197

    Mr. Heller:

    We are talking about Diehr. Not Rich specifically. Please stay on point. Now can you please cite the passage from Prometheus that overturned ANY aspect of Diehr?

    Yes of No?

  24. 196

    Mr. Heller:

    Can you cite the passage frpm Prometheus that overturned ANYTHING from Diehr? Just do that please, and you may win your argument.

  25. 194

    “For it is known that even if all elements are each old in the art, the combination (read that as integrated combination) may yet be patentable.”

    “There is no such thing as requiring an absolutely NEW element to earn a patent. Thus, the point of novelty is seen as the charade it is. The point of novelty is the claim itself, taken as a whole, checked for proper integration.”

    Excellent Analysis! Though I believe this will go right over MM’s head. Especially since it destroys his dissection of steps theories.

  26. 193

    Thank you Proper Credit:

    I do not believe you will ever see Mr. Heller give proper credit on “Integration Analysis” because it defeats his anti patent agenda. It has been my experience that he is a dishonest agenda driven blogger that will never acknowledge any law that discredits his attempts to declare business methods and software as non statutory subject matter. None the less “Integration” is here. The Supreme Court said so in Prometheus and the Office Guidelines instruct the entire examining corps to use “Integration” in there 101 analysis. These are facts that can’t be refuted.

  27. 192

    Mr. Q, we are talking only about Rich's idea that novelty has nothing to do with patentable subject matter.  That aspect of Diehr was not followed in either Bilski or Prometheus.  Is it a dead letter?

  28. 191

    This is a classic prior art problem

    answered with your own quote:

    Have you actually read that case?

    L A W of N A T U R E!!!!!

    Last I checked, I’m pretty sure the SC was adamant that “prior art” cannot take the place of patent eligibility.

  29. 190

    I know Prometheus was a butchered job, but Diehr not followed in the last two?

    You cannot possibly be thinking of Bilski, are you?

    NEWSFLASH: Bilski was a crushing blow to the anti-Diehr believers.

  30. 189

    Mr. expert, can you explain to me why Supreme Court has not followed Diehr's proscription on ignoring novelty considerations in the last two section 101 cases?

  31. 188

    The product is what is patented.  It must be an invention or it must be discovered. 
     
    You do know that Funk B. involved known bacteria?  What was discovered was not the bacteria, but a new property about them.  This is a classic prior art problem.

  32. 187

    “right now, the guidelines published by USPTO are limited to laws of nature, and do not apply (yet? ever?) to abstract ideas.”

    This is correct, however the SCOTUS has GVR Ultramercial in view of Prometheus, and the USPTO is waiting on the outcome of that case before it officially extends it’s “Integration” Guidelines to abstract ideas.

    This is what MM, Ned, and 6 all fear and dread but nonetheless the change is coming. What’s important to understand is that “Integration Analysis” IS inclusive; which is in accord with 101’s broad patent-eligibility principles. Nothing in our Constitution, Congressional record, or Court case law has changed this and for good reason. If the laws were narrowed with the tools of overly restrictive tests like M o T or various dissection methodologies like unlimited pre-emption, or selective surgical mental steps test, the door could be slammed shut on the on rush of new technologies, ideas, and ways of doing business that our world and global economy are dependent on for existence and prosperity. Like the Court said in Bilski:

    ” a rule that broadly-phrased claims cannot constitute patentable processes could call into question our approval of Alexander Graham Bell’s famous fifth claim on “‘[t]he method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth,’” The Telephone Cases, 126 U.S. 1, 531 (1888).”

    Bells claims as well as Morse 1-7, would pass concept, application, and integration, while the infamous claim 8 would fail. Diehrs claims 1-11 all pass concept, application and integration but claim 11 fails M o T, as well as an unlimited Benson based pre-emption analysis. ( See Stevens Dissent in Diehr arguing claim 11 fails Benson). While Prometheus claims passed M o T but failed concept, application and integration.

    What we learn from the above is that no ones pet category or subject matter is spared or unduly favored under Integration, while at the same time the broad door for 101 statutory subject matter is left open. Indeed, “Integration Analysis” is truly the key to a objective approach for establishing what is 101 statutory subject matter, and as the Prometheus Court said, “determining a process is an inventive application of a concept.”

    That 101 Statutory Subject matter turns on “Integration” after concept and application is a broad stroke of genius and much needed guidance provided to us by the Court. Let us all hope that the Patent Community opens it’s eyes so that we can all benefit from the new light.

  33. 186

    Excuse me but is Richard H. Stern a US Supreme Court Justice?

    Did he author the opinion in Prometheus or Bilski that expressly overturned Diehr?

    Until the Court actually overturns Diehr, the case remains good law and in control.

  34. 185

    Yes, 9-0 for integration Analysis!

    See From the Syllabus in Prometheus: “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.

    Also see the new office Guideline’s on Integration Analysis.

    “http://www.uspto.gov/patents/law/exam/2012_interim_guidance.pdf”

    Thank you MM for being such a champion of Integration Analysis and constantly promoting the 9-0 decision in Prometheus that introduced Integration as the key to statutory subject matter!

  35. 184

    But a product must be more than new and useful to be patented; it must also satisfy the requirements of invention or discovery.

    Given that the patent sense of discovery is not naked discovery, how does this not equate to a Product of Nature exception?

  36. 183

    Well, there may be some room for disagreement there Mr. Expert.  Richard H. Stern just sent me a copy of his most recent article on the topic.  It is now published in the European Intellectual Property Review, Vol. 34, Issue 8, page 502.  It is a good read.  He explains how the court in Prometheus reconciled is prior decisions.  

  37. 182

    Mr. Heller:

    The Court has not overturned Diehr in any way. In fact the prohibition of dissection has been buttressed with” Integration” in Prometheus. You would know this by now if you had read the Office Guidelines and performed “Integration Analysis” on Ultramercial’s claims.

    It is still not too late to accept the challenge.

  38. 180

    Furthermore, without patent protection

    I never suggested that one couldn’t protect his/her discovery of a previously unknown property of a pre-existing composition.

    The way to do that is with a method claim, wherein the newly discovered property is exploited in a manner that results in a substantial, patent-relevant transformation (e.g., administration as a therapeutic to a patient in need thereof).

  39. 179

    Mr. Bakels, If a claim is not enabled, it violates 112.  True, but is that the real problem with claims to LoN and abstract ideas.

    I claim, E=MC2, and disclose a handheld calculator.  How is this claim not enabled?

    I claim calculating BCD to binary algorithm.   I disclose a GP digital computer.  How is this claim not enabled?

    I claim calculating an updated alarm limit from generic measurements.  How is this claim not fully enabled?

    Now look to Morse.  While it does state the consequences of an abstract claim, it also said this:

    "Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed."

    Now we begin to see the vice in abstract claims. They are not applied to any use and do not need a specification on how to make and use.  They violate the essential principles of patent law, implicit in 112, p1, that patents are granted for practical applications only.

    Thus we have in Benson the declaration there that the principle vice there was that the claims were not applied to a useful end.  They was abstract, only specifying the means for calculation.  That was fully enabled, but it claim itself stood, in the terms of Morse, outside the patent law.

     

  40. 178

    If it is anything to you, Mr. Expert, I will agree that Diehr forbade dissection and any novelty analysis whatsoever.   The SC seem not to following its precedent in more recent cases.  Shame on them.

  41. 176

    If we are talking philosophy and policy, we are in the realm of opinions.  Telling one that his views are not the law is not saying much at all, as that is normally a given.  

  42. 173

    MM, one cannot reclaim a known product, machine or process simply because one discovers a new use for it.  This principle is true regardless of a the PoN exception.  
    But if the product is unknown, one should be able to claim it and is use.  There seems to be no sound reason that I can see for the PoN exception:  An explorer lands on Mars and discovers a microbe that stops aging.  The notion that that microbe is the common resource of all mankind is complete nonsense.  As I suggested, if the discoverer does not receive sufficient patent protection, he might keep the microbe secret and set up a clinic somewhere, such as the Cayman Islands,  providing his microbe as a service to the rich who can afford it.  

    The PoN exception truly is nothing more than an exception based upon public knowledge.  On cannot withdraw from the public domain knowledge already there.  Graham v. J. Deere.

  43. 171

    Malcolm, when that raw rubber fell on the hot stove and the inventor recognized something new, was he claiming an old product?

    Obviously the answer is no, and this issue was decided long ago by the Supreme Court in the case of Pennock v.  Dialogue.  One's own discovery is not prior art oneself.

    The discovery of a unique property of a previously unknown plant is not prior art to oneself in any sense.  Not only is the plant unknown, but this property is unknown.  Unless the discoverer reveals the secret of the plant, it will remain a secret.  Furthermore, without patent protection, it will likely remain a secret as the discoverer has no incentive to disclose the plant or it's utility to the public, unless, that is, he is trying to get the Nobel Prize.

  44. 170

    Mr. Glass, my opinion is my opinion.

    Yep, it’s Ned’s opinion alright: inconsistent AND consistently wrong.

    And squint as I may, I cannot see looking glass ever saying your opinion is the law.

    I do see him making a solid point that what you said does not fly, I do see you getting busted trying to correct him when he was not wrong, and I do see you self-failing in the realization that looking glass not only said nothing wrong, he nailed you in your prevarications and inconsistencies.

    No wonder you walk around with your eyes closed so much. If I saw what you would see looking back at me from the mirror, I would stick a sharp stick in both my eyes for relief too.

  45. 169

    MM,

    if one reads the statement with correct emphasis

    That’s some hatchet job.

    You got one part right. Your newly revealed acceptance of “different in kind.” Bravo on that at least. Nice to see you drop the pretentious “that’s gobbledygook” smokescreen.

    But you then try to obscure “new” by EFFECTIVELY parsing it out, and you attempt to inject items simply not there. “Correct emphasis” does not mean “make things up.”

    Your (premature) celebration of Prometheus 9-0 comes round to smack you across the face. Yes that decision concerned method claims. But the courts have been clear that the judicial exceptions apply no matter which enumeated category a claim may be drafted to. The common denominator is that you need something more. You cannot claim natural phenomena. You cannot even effectively claim natural phenomena.

    If you fail to achieve the “different in kind,” even structural claim limitations (and I am being generous with “isolated” or “purified” as “structural” since you didn’t say those explicitly, but we know that would be next), may not be enough. You are not rewarded with a patent for the “try.” You are rewarded purely on the result. If it takes a ton of effort and the result just is not different enough, then no patent. You cannot claim nature. You cannot even claim what is effectiely nature. And read correctly (no matter the emphasis), being “different” is not enough. You must be different in kind. Mere “structural limitations to exclude the ‘in the earth’ or ‘in the wild'” are not enough if your claim still effectively reads on those things.

    Your celebration of Prometheus must effectively cover not just the enumerated category of method or process, but all of the corresponding enumerated categories.

    While may not be a completely non-controversial statement, it is a completely accurate and logical one.

    Your attempt at playing “not in my backyard” is a clear pure wish. “The analysis can be quite different” is pure BS. The analysis is quite the same regardless of prior art or asserted utility or any other dust factor you want to try to kick up (including, but limited to “it’s expensive,” or “it takes a genius”). Again, if you fail to make a change that is enough to invoke the difference in kind, then you are still effectively claiming that product of nature.

    It really is that simple and that universal. “Effectively” does indeed have breathtaking power. Too much power to be constrained to just method patents. Too much power to be kept out of your backyard. The hangover of your celebration cannot be avoided.

  46. 168

    With his famous eighth claim, Morse claimed more than he actually invented (“any future application”, or whatever the words were). Indeed as yet unknown future applications are not (necessarily) enabled (=112).

    It reminds me of the 1966 Brenner v. Manson decision where the SCOTUS said that “a patent is not a hunting licence” (implying that things one may hunt are not within reach of the PHOSITA).

    Anyway, my only idea was that Kappos’ idea to focus on 112 (etc.) instead of the (cumbersome) 101 effectively still boils down to a 101 test, albeit under a guise.

  47. 167

    It has been my experience that Mr. Heller can’t cite any controlling legal authority for what he thinks because his thoughts/theories are not supported by the case law. All one need do to verify this is fact is look to the example of how Ned has ducked, dodged, and evaded, performing the USPTO Office Guideline’s on “Integration Analysis” on Ultramercial’s claims.

  48. 166

    MM:”That’s funny because the guidelines are very clear that any claim in the form [oldstep]+[newthought] must be found ineligible in view of Prometheus. ”

    Hello MM:

    Thats funny because there is no such holding in Prometheus. But thank you for promoting Prometheus 9-0 decision for “Integration” as it gives us an opportunity again to the inform the patent community that “Integration” is the key to determining statutory subject matter.

    First let’s remember that it’s Diehr’s concept and application analysis that is controlling precedent, with Prometheus’s “integration” as the key to as the Court said: “transform the process into an inventive “application”.

    Next what you must learn is that “Integration” is the antithesis of dissection. You cannot have an end result that is both integrated and dissected at the same time. Integration is inherently part of the analysis of patent claims. This was implicitly brought to light in Diehr, when the Supreme Court expressly ruled against dissecting claims, and mandated it’s claims as a whole approach. See ( Diamond v. Diehr ). In Prometheus, “integration”, not dissection, was made explicit with the Court using “integration” as the key in it’s analysis that relied on Diehr. See Prometheus referencing Diehr:

    ” In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. These additional steps transformed the process into an inventive application of the formula.”

    Finally we find “Integration” in four distinct sub sections of USPTO Guidelines for 101 statutory analysis. Changing everything from M or T to the buttressing of Diehr’s Concept and Application Test/Analysis. And as you will see, by reading the following Guidelines, any theories on dissection of mental or old steps are NOT included.

    1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration.

    This claim ( Diehr’s) would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.

    link to uspto.gov

    Thanks again MM for being such a good advocate for and promoter of “Integration Analysis.” If you need any additional instructions I am glad to help.

  49. 165

    Mr. Heller: “Then, from Prometheus, we turn to integration. Is the novel subject matter that is otherwise ineligible integrated into the process to produce something new? Clearly not”

    Mr. Heller:

    This is clearly NOT what the Prometheus Court said about “integration”. Here is the exact passage from the Prometheus case relying on Diehr as the case most on point for 101 integration analysis:

    “”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. ” (Emphasis added).

    Now from here we turn to the Official Office guidelines for performing Prometheus “Integration Analysis” . As you read the instructions you will see the Guidelines are based on Diehr’s “concept and application”. Most notably, there is NO point of novelty analysis in the Guidelines whatsoever.

    1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show integration.

    This claim ( Diehr’s) would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.

    link to uspto.gov

    What I suggest you do Mr. Heller, is perform the above “Integration Analysis” on Ultramercial’s claims. This way you can develop the legal skill set required to determine 101 statutory subject matter. And that concludes today’s lesson.

  50. 164

    Mr. Heller: “Then, from Prometheus, we turn to integration. Is the novel subject matter that is otherwise ineligible integrated into the process to produce something new? Clearly not.”

    Mr. Heller:

    This is clearly WRONG. You are describing dissection, while conflating 101 and 102. Integration Analysis is based on Diehr’s claims as a whole approach. Integration is the antithesis of dissection. But first permit me to teach you a lesson on the facts of the Diehr case, then I will show you how to properly perform “Integration Analysis”.

    Now, Diehr expressly prohibited dissecting claims at 101, especially to find Novel subject matter .

    See Diehr (Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. § 102 or the “nonobviousness” requirements of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101. Pp. 450 U. S. 185-191.)

    Next ,see what Diehr held regarding conflating 102 Novelty with 101 Statutory Subject Matter: (“While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86, 306 U. S. 94 (1939). [Footnote 11]
    We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is, at the very least, not barred at the threshold by § 101. In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. [Footnote 12] It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty. [Footnote 13]
    Page 450 U. S. 190
    The question, therefore, of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.” In re Bergy, 596 F.2d 952, 961 (CCPA 1979) (emphasis deleted). See also Nickola v. Peterson, 580 F.2d 898 (CA6 1978). The legislative history of the 1952 Patent Act is in accord with this reasoning. The Senate Report stated:
    “Section 101 sets forth the subject matter that can be patented, ‘subject to the conditions and requirements of this title.’ The conditions under which a patent may be obtained follow, and Section 102 covers the conditions relating to novelty.”
    S.Rep. No.1979, 82d Cong., 2d Sess., 5 (1952) (emphasis supplied). It is later stated in the same Report:
    “Section 102, in general, may be said to describe the statutory novelty required for patentability, and includes,
    Page 450 U. S. 191
    in effect, an amplification and definition of ‘new’ in section 101.”
    Id. at 6. Finally, it is stated in the “Revision Notes”:
    “The corresponding section of [the] existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions for patentability.”
    Id. at 17. See also H.R.Rep. No.1923, 82d Cong., 2d Sess., 6, 7, and 17 (1952).
    In this case, it may later be determined that the respondents’ process is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty under § 102 or nonobviousness under § 103. A rejection on either of these grounds does not affect the determination that respondents’ claims recited subject matter which was eligible for patent protection under § 101.)

    So, Mr. Heller I hope you have learned your lesson. Before you post again please read and learn to comprehend case law. Now in our next lesson I will teach you about the application of Integration Analysis, based on Prometheus and The Office Official Guidelines.

  51. 163

    What I think should be the law and what the law is are not always the same thing

    Easily the largest understatement of all time.

    Why stop at business methods or Chakrabarty? Why not list all of your thoughts?

  52. 162

    Correction: Please show me how a claim in the form [oldstep]+[newthought] can be deemed eligible.

    Apologies.

  53. 161

    Ned MM, 102(f) is gone. A tree existing in nature but whose properties are unknown is truly unknown in a patent sense.

    I repeat: if I discover that Folger’s coffee crystals can cure cancer when they are smeared on a frog’s butt under a full moon, I don’t get to claim “Folger’s coffee crystals.”

    The coffee crystals existed “in nature” in a manner that is identical to the way that the tree existed “in nature.” The tree is not new. The coffee crystals are not new.

    Let’s see if I can frame the issue I think that you wish to discuss …

    If I find a thing (i.e., a composition of some kind, living or not) “in the wild” (LOL) where that thing was not previously described but it clearly existed prior to my discovery and my claim covers the composition in its “wild” state, my claim is patentable? Note: I’m not talking eligibility. I’m talking patentability, under 102 or 103.

  54. 160

    See Chakrabarty: “Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.”

    This is actually a completely non-controversial statement if one reads the statement with the correct emphasis:

    Thus, a new “mineral … in the earth” or a new “plant … in the wild” is not patentable subject matter.

    No problems. If my novel, non-obvious composition as claimed excludes the thing “in the earth” or “in the wild” (by virtue of a structural claim limitation) and that difference imparts the composition with new, substantial utilities lacking in the composition found “in the earth” or “in the wild”, I get my claim (or I should). Note that the analysis (e.g., the extent of narrowing of the claim required to achieve eligibility) may be quite different for living organisms versus chemical compositions, and may differ even within those two huge classes, for any number of reasons (e.g., the prior art, the asserted utility, etc.).

  55. 159

    I just think it is wrong on inventions in general vis-a-vis the product of nature exception.

    Think wrong?

    Can you cite some authority for what you think?

  56. 158

    Except Ned, those were product claims ruled ineligible, and products of nature belongs to the same judicial exception as laws of nature: natural phenomena includes both (or are you forgetting such examples as crystals and plants?)

    Product claims Ned. Think simple (or simply think).

  57. 157

    we are here discussing the discovery of a unique tree not publicly known before

    Actually we are here discussing patent law. Please show me the claimed invention, Ned. The “issue” of “reclaiming a known product” may be different than “claiming an old product” but the analysis is not terribly different and the conclusion is certainly the same, for all practical purposes.

  58. 156

    MM, I know it is very easy to apply Prometheus to Prometheus. You say claims such as those in Prometheus, not exactly those in Prometheus.

    Actually, I say “claims in the form [oldstep]+[newthought], regardless of the old step and regardless of the new thought are ineligible for patenting.”

    I’m pretty clear and consistent about that. There’s really no way around the conclusion. Hence the 9-0 result.

    If you were an attorney you would understand that the discussion is precisely that, whether the claims in future cases will be considered like those in Prometheus or not.

    In 99.9% of cases, it’s a ten second analysis to dteermine whether the claims fall sufficiently within the Prometheus sphere of destruction. In 99.999% of cases it may require some modest time construing the claims.

    Kappos is not a big fan of Prometheus, and will not follow Prometheus until there is no other resource.

    That’s funny because the guidelines are very clear that any claim in the form [oldstep]+[newthought] must be found ineligible in view of Prometheus. Do you have another way of interpreting the guidelines? Please show me how a claim in the form [oldstep]+[newthought] can be deemed ineligible. Use a hypothetical claim and walk me through the analysis you imagine that “Kappos” will apply to “avoid” the ruling in Prometheus. I’m really curious.

  59. 155

    Fish, then we need to look to the Euro's and perhaps adopt something of their statutory law to fix 101 through 103.  I am not against that in principle.  I am sure the cognoscenti who bow to the Harmonization god would also agree.

     

  60. 154

    Maybe the Courts are wrong there too. After all, isn’t the simplest explanation that Ned Heller is never wrong (or is that is always wrong…)?

  61. 152

    that is where the decision should be made — for example, 101 does not mention “abstract” — and courts can’t even define it.

  62. 149

    Sorry Heller your view does not match what the Courts have said.

    And just like a non-match shown between actual inventor and named inventor, your argument lies broken, with you on the wrong side.

    Make sure that’s a lifeline and not an anchor being thrown in your direction.

  63. 148

    Leo, Judge Rich would be proud.  

    As to the obviousness analysis, I agree.  Pop music is a known type of music.

    Now, change the facts, to this:  I invent a new form of music, which I define in my specification.  Call it "minimalist" where the notes are repeated in groups, etc.  Then I claim the automatic music player that reads and plays encoded music from an encoded article of manufacture.  The specification lists examples from the player piano to the digital computer to the CD-Player.  The only thing new is the kind of music.  Let us assume the music itself is non obvious.

    Can I, as inventor of the new musical form, claim all electro-mechanical ways of reading and playing encoded minimalist music?

    The issue was, I believe, decided in Morse, where the claim was to all ways of communicating at a distance using EM.  However, there the court believed the claim so abstract and sweeping as to preempt all practical ways of implementing the abstract idea of communicating using the natural phenomenon, EM.    When the music is the only thing new, the claim is, for all practical purposes, on the music itself.

    But it is not clear that unpatentability can be achieved using only 102/103.  The SC in Prometheus actually ridiculed the government position that one could ignore non functional limitations under 103.

  64. 146

    Mr. Still, the problem you have is that title is statutory.  The named inventor has title.

    Whether someone else invented the invention, or independently invented the invention, has nothing to do with title unless and until the court orders a change in the named inventorship.

  65. 144

    Re-reading your hypo, Ned, it appears that you are assuming that you invented “pop music.” Good luck defining that sufficiently to meet the written description part of 112.

    Now, if you want to claim a player piano programmed to play your latest song, go for it. It seems a bit redundant though, since copyright protection is cheaper and lasts a lot longer.

  66. 143

    Public knowledge is not material to a 101 bar.

    See Chakrabarty: “Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.

  67. 142

    You need a better example, Ned. Forget the “music is ineligible subject matter” idea. The key issue with your claim is that the “pop music” doesn’t define the structure of your machine, especially since your “medium” is not even part of your claim. Your claim is to a player piano. Since any old player piano will play a medium encoded with (new) pop music, you are facing a 102 rejection.

    Even if you add the medium to the claim, and even if we accept that the encoded music on the medium is functionally related to the medium and thus to the claimed apparatus, you are still facing a 103 rejection. Since it has long been known to use a player piano with encoded media containing one of several styles, including classical and ragtime, for example, and since the existence of and encoding of “pop music” onto at least sheet music is known (I’m presuming you haven’t invented pop music), then it’s clearly obvious to encode a player piano roll with pop music and combine it with the known player piano.

    So, why do we need an abstraction/filtration test?

  68. 141

    Your questions have nothing to do with the facts of the matter.

    The first quesstion kicks up dust over competing soverwign rules of law – Totally off point.

    The second question deals with possible inchoate rights or actual interference, but is not addressing the large question that SD is talking about.

    It appears that the weeds are seaweeds. Need a life preserver thrown to you down there Ned?

  69. 140

    Malcolm, the discovery of a new property of a known product does not allow one to reclaim the known product. We agree on this.

    But we are here discussing the discovery of a unique tree not publicly known before. This is not the same issue.

  70. 139

    bar exams were not so easy to pass as the one’s you passed

    You assume facts not in evidence. I might even have a registration number lower than yours.

    Try again.

  71. 138

    Once, Mr. Try, bar exams were not so easy to pass as the one's you passed; nor law schools so easy to get a gentleman's C as the school from which you seem to have matriculated.

  72. 137

    “So why does the majority reverse the district court? Frankly, because “it is difficult to conclude that the computer limitations here do not play a significant part in the performance of the invention.” Maj. Op. 26. That suggests that the majority’s “manifestly evident” standard is more of an escape hatch than a yardstick. In other words, the majority has resurrected the very approach to § 101
    that the Solicitor General advocated—and the Supreme Court laid to rest—in Prometheus. I cannot agree”.

    Judge Prost. CLS Bank International v Alice Corporation.

    MM, I know it is very easy to apply Prometheus to Prometheus. You say claims such as those in Prometheus, not exactly those in Prometheus. If you were an attorney you would understand that the discussion is precisely that, whether the claims in future cases will be considered like those in Prometheus or not. CAFC will never say that Prometheus is wrong. They cannot. They will say that it does not apply. And as you can see, this is being debated in court (you will be happy to know that Bancorp goes more in your direction). By the way, you were right, the guidance is limited not to laws of nature, but to natural principle, and it is explicit in telling examiners to apply Bilski analysis to abstract ideas, no doubt because Kappos is not a big fan of Prometheus, and will not follow Prometheus until there is no other resource.

    A final thought, just where do you find that I do not think that Prometheus should be applied to abstract ideas. I don’t see the difference (I am with Prost in this), but so far, it’s 3 to 2 judges in CAFC (Prost was in the majority in Bancorp).

  73. 136

    Mr. Dog, not match?  The patent is invalid — at least until 102(f) is repealed.  

    Let me ask you a question about property rights.  A statute states that land titles flow from the sovereign through patents.  Whoever holds the land patent, or who is in privity with such an title holder, owns title by statute.

    The title owner has been in possession of a piece of land for 100years. 

    Another person sues to gain possession.  He has a deed from a Native American tribe that hunted and fished the land for as long as time could remember.  The deed is dated from a time before the title holder took possession.

    Who wins:  title holder or the person who has a deed from the Native American tribe?

    Another question:  two inventors.  A second inventor files and obtains a patent. Who owns the patent, the first inventor or the second inventor?

  74. 135

    Seems to me that you have been around (too long), so your attempted point about recently lowered requirements will not suffice to explain the situation.

    Try again.

  75. 134

    It looks like I was talking to you as well.

    Well, you can hang on your petard then, or if MM invites you, on his. My, won’t that be cozy.

  76. 133

    Mr. Heller,

    I was not talking to you. Don’t you have enough false answers to give to people talking with you?

    Let MM hang from his own petards.

    And by the way, I do not interject irrelevancies. My points are extremely relevant at showing others’ irrelevancies.

  77. 132

    Mr. Try, I know bar exams have weakened their requirements in recent years.  But it appears that the people they have admitted are almost handicapped in their mental faculties.  But, you would even know what I am talking about here, would you?

  78. 128

    The statute starts with the named inventor.

    And the Courts start with the actual inventor.

    Guess what happens when they are shown not to match?

    Give me your answer when you resurface.

  79. 127

    OK, try. Since you think you know what my point was, tell us.  Explain why, for example, a discoverer of a wild tree that has uniquely useful properties is not a discoverer and a discoverer of seedlings that have uniquely useful properties is under the Constitution.  (This is not an issue of statutory interpretation.   It is an issue of what the Constitution means per the cited SC case.)

  80. 126

    when will you begin to think?

    Ned, when will you?

    Try again (or in view of thinking, for the first time).

  81. 125

    The SC ’til this day has yet to rule any patent invalid because of a product of nature exception.

    And the price of tea in China is: £ 18060.4/lb.
    with a max bid of … 18129.67

    disclaimer: not to be confused with a butterfly’s wings flapping in China.

    See link to supertart.com

  82. 124

    suckie’s lack of reading comprehension skills is profound. Sub-infantile. Pre-fetal is perhaps most accurate.

  83. 123

    In other words, your ignorance and ability to deceive yourself is not without precedent.

    LOLS – so says the master as self-ignorance and ability to deceive himself.

  84. 122

    Old? In what sense were they old?

    In the sense that the trees as claimed existed before they were “discovered”.

    Pretty simple stuff, Ned. If I discover that Folger’s coffee crystals can cure cancer when they are smeared on a frog’s butt under a full moon, I don’t get to claim “Folger’s coffee crystals.” And no, that’s not “a problem”. Never has been.

    Never will be.

  85. 120

    Mr. Glass, my opinion is my opinion.  I do not state, as do you, that my opinion is the law.

    What I think should be the law and what the law is are not always the same thing.  I think we should ban BMPs, but I recognize that is not the law.  I think we should fix the product of nature exception, but I know that it exists from Chakrabarty.

  86. 119

    confused,

    Perhaps you are assuming that MM has a brain (he is known as the original strawman, after all).

  87. 118

    suckie Does the claim focus on use of a natural principle, i.e., a law of nature, a natural phenomenon, or naturally occurring relation or correlation? (Is the natural principle a
    limiting feature of the claim?)”.

    Right. So it’s expresssly not limited to “laws of nature.” Thanks for clarifying, suckie. I’m glad to be proven correct. Again.

    I meant CLS Bank International v. Alice Corporation as an example where the court struggled to determine validity under 101

    That’s nice. My point, suckie, was that 101 is very easy to apply when it comes to claims such as those at issue in Prometheus. That simple and clear point remains irrefuted. But go ahead and keep trying to refute it. Or just kick up some dust and run away, suckie. It’s what you do best, after all.

    But as long as you keep pretending that applying Prometheus is “a struggle”, I’ll keep asking you to present a claim in the form [oldstep]+[newthought] that you find difficult to analyze. That was the form that the claim took in Prometheus and, as anyone who reads the case and is willing to understand it, the Supreme Court found the claim very easy to destroy. It was a very straightforward 9-0 decision, and a very straightforward analysis.

    Of course, creationists find it difficult to understand how the earth could be more than a few thousand years old. In other words, your ignorance and ability to deceive yourself is not without precedent. I pity you because of that, just as I pity creationists (and their children even more so).

  88. 115

    Mr. Dog, you trace title from whom?

    The statute starts with the named inventor.  If it ends in assignments from the named inventor to a patent owner, why doesn't the patent owner, who is in privity with the name inventor, have good title.  

    This is really becoming hilarious.

  89. 114

    Mr. Try, the people who mouth things like “available to all mankind” are truly mind-numbed robots. They have no fricken idea.

    Ned, you realize, of course, that you are calling the Justices of the Supreme Court of the United States “mind-numbed robots” as well as the judges of this panel (and every other judge, attorney, inventor, and shtt, well everyone, that knows the law).

    It’s amazing that everyone else (literally, EVERY one else) is wrong but you and you alone are “correct.”

    Don’t you think that there is a simpler reason for what is going on?

  90. 110

    Ned,

    All of my ideas come from what you have actually written (and that’s why I supply the quotes).

    I assume nothing.

    In this instance, the article represents a point of view known to be at odds with your agendas. You have on more than one occasion outright stated that there should be a ban on business-method patents. Period. The coutervailing quote from the court is in direct opposition to your stated views.

    You cannot agree with the article as you profess and hold the views that you do.

    If you meant to say something else, by all means say it. If anyone “did not get it right,” that would be you.

    So again,

    W

    T

    F

  91. 109

    Mr. Try, the people who mouth things like “available to all mankind” are truly mind-numbed robots. They have no fricken idea.

    If the first discover had not discovered the unique properties of these two trees and confirmed them through testing, no one in the universe would have known about them.

    You tell someone that his investment in R&D and his bringing a new discovery to market, something that no one on planet earth knew about before, that he has no protection, then why would he disclose anything to the public? He would keep the trees hidden, and be the sole source for high quality lumber for as long as he could maintain the secret.

    Such decisions as this one only go to show that the Federal Circuit, and the some in the PTO, and a lot of other people who seem intelligent until they open their mouths, do not understand the words of the constitution: Promote! Progress!

  92. 108

    Obviously, you are the one who is wrong on inventions in general vis-à-vis the product of nature exception.

    What will it take for you to open your eyes and stop running into walls?

    Try again.

  93. 107

    Now, explain to the judge why the one who has statutory title does not have standing?

    Because that chain of title is shown to be broken. If the pirate is onthe wrong side of the broken chain, he has no right to be in court.

    At least try to ask a difficult question.

    Any who revolt against the law, walk the plank

    And you Heller are bound and determined to be first in line.

  94. 106

    Mr. Again, I agree the decision reads the way you read it. I just think it is wrong on inventions in general vis-a-vis the product of nature exception.

  95. 104

    Mr. Dog, I see you know your statutes, as in that the named inventor is the applicant and the applicant owns the patent application.

    Let’s see you figure that one out in court. Now, explain to the judge why the one who has statutory title does not have standing?

    This is going to be fun.

    Any who revolt against the law, walk the plank, Mr. Dog.

  96. 103

    Hey Heller, the patent act does not over-ride basic law, such as those dealing with standing and the ability to challenge standing. You are referencing law on interferences, which is but a small subset of instances where standing can be challenged.

    Maybe you should walk the plank too.

  97. 102

    discovered in nature

    MM states “Makes perfect sense to me“, thus self defeating on his “found in any bizarre location in nature” arguments (such as penguin intestines, arctic sea urchins or even unicorns or leperchauns or other fantasia found in MM’s mind [itself a mythical entity]).

    T O O L

  98. 101

    Had he simply applied for a utility patent, he might have prevailed

    Absolutely not. Have you read the decision and seen how the plant patent act recieved the rejection based on products of nature fromthe utility patent law?

    Try again.

  99. 100

    The distinction that the seedlings are the offspring of cultivated plants does not change the essentials: the patentee merely discovered the seedlings and their utility.

    Actually the essentials are changed and explained so in the decision.

    Try again.

  100. 99

    I do pity your clients, though (that’s a joke, son. Clients? Your clients? LOL).

    MM, it is more than a bit stale to use a joke that was first used on you.

    Your attempts to portray that you have clients (and are not just an Office lacky) FAIL.

  101. 98

    I am so sorry. Here, thank you for correcting me again:

    “C. INQUIRY 2: Natural Principle
    Does the claim focus on use of a natural principle, i.e., a law of nature, a natural phenomenon, or naturally occurring relation or correlation? (Is the natural principle a
    limiting feature of the claim?)”.

    And so sorry, again, I assumed you knew that I meant CLS Bank International v. Alice Corporation as an example where the court struggled to determine validity under 101, and with a particularly strong dissent by judge Prost. So sorry. Since we are commenting on a post citing Kappos’ musings on that ruling, I thought the reference was implicit.

    I learn so much from you.

  102. 97

    Ned we have the problem that the first to determine the uniqueness and special utility of the two trees is not protected if he grows and sells the acorn seeds from them.

    I have no idea what you’re talking about Ned. Maybe you need to get some sleep.

    Denying patents on old compositions is not a “problem” in my view.

  103. 96

    confused the explicit statement differentiating the new guidelines as only applied to laws of nature

    And then suckie quotes a passage that does not even use the term “laws of nature.” Yes, it’s really “explicit” suckie.

    Man, this blog has the d—-est trolls.

  104. 95

    confused: I repeat, those guidelines are aimed at “rules of nature”, and explicitly exclude “abstract ideas”.

    Repeat the “guidelines” all you want, suckie. The bottom line is that if one “discovers” or “invents” a novel abstraction or a novel “law of nature” or any other fact or even a fictional idea, one can not obtain a valid patent by presenting that novel abstraction/”law of nature”/fact/idea as a mental step in combination with a patent-eligible step that is merely old and conventional.

    You are, of course, free to disagree, just as you are free to believe that the moon is made of cheese. There are a few ignorami out there who will keep you company so you need not fear being left alone. I do pity your clients, though (that’s a joke, son. Clients? Your clients? LOL).

  105. 94

    confused I repeat, those guidelines are aimed at “rules of nature”, and explicitly exclude “abstract ideas”.

    Repeat the “guidelines” all you want, suckie. The bottom line is that

    By the way, that was a nice deflection you executed when it came to CLS

    Deflection? I had/have no idea what you were/are referring to when you brought up “CLS”. Perhaps you can type in complete sentences and indicate whether you were attempting to respond to something I said or attempting to answer a question that I asked. And perhaps you can try a bit harder to respond and/or answer. Typing in complete sentences would probably be a great place to start.

  106. 93

    While anon and I agree that pirates have no constitutional right to receive a patent, the new AIA does in fact authorize that patents be issued to pirates by removing the right of anyone to challenge inventorship outside of a proceeding under 135, 291.

  107. 92

    Malcolm, but then we have the problem that the first to determine the uniqueness and special utility of the two trees is not protected if he grows and sells the acorn seeds from them. Had he simply applied for a utility patent, he might have prevailed as it was he discovered and was the first to determine the unique utility of these particular trees.

    When one reads cases like this, one begins to see that the courts are not making the proper distinctions. They may be right on the Plant Act, but they are wrong on invention and the whole theory of product of nature.

    Notice that Congress specifically allows one to patent discovered seedlings. Why them and not discovered wild trees? The distinction that the seedlings are the offspring of cultivated plants does not change the essentials: the patentee merely discovered the seedlings and their utility.

    The irrationality of the whole doctrine is illustrate in this one comparison.

  108. 91

    I am not sure, Wake Up Call. Seeing how his brain works, MM could very well have read everything and understood nothing.

  109. 90

    confused,

    Perhaps you had thought that MM had actually read the guidance.

    He didn’t (at least before he self-defeated all over himself by proclaiming them first (and bowing to 101 Integration Expert in the process).

    There are still enough LOL’s to go around from that move.

  110. 89

    I submit to you the explicit statement differentiating the new guidelines as only applied to laws of nature and not to abstract ideas (don’t kill the messenger):

    “If a natural principle is not a limitation of the claim, the claim does not focus on the use of a natural principle and requires no further analysis under this procedure. If the claim focuses on an abstract idea, such as steps that can be performed entirely in one’s mind, methods of controlling
    human activity, or mere plans for performing an action, refer to the 2010 Interim Bilski Guidance to evaluate eligibility” (page 3).

  111. 87

    Wow. Such vitriol. I repeat, those guidelines are aimed at “rules of nature”, and explicitly exclude “abstract ideas”. I do think that is absurd, but unfortunately my mind, unlike yours, does not dictate how the world works. I think you are soon to be surprised. Or not. You are clearly omniscient. By the way, that was a nice deflection you executed when it came to CLS. It is impossible to catch you, I surrender to your obviously superior legal and grammatical mind, “LOL”. Forever confused by your use of logic, yours, Confused.

  112. 86

    Malcolm/Anon, we have a major product of nature case today that basically holds that one may not patent two trees discovered in nature under the Plant Act.

    Makes perfect sense to me.

  113. 84

    confused there is quite a bit of discussion on whether Prometheus applies to abstract ideas or only to laws of nature

    LOL. Where is this “discussion” taking place?

    CLS, which is commented by Kappos above.

    Are you making a statement? That’s not a sentence. Please try harder to articulate your thoughts.

    the guidelines published by USPTO are limited to laws of nature, and do not apply (yet? ever?) to abstract ideas

    So-called “laws of nature” are “abstract ideas”, particularly when those “laws” are presented in method claims in the form of mental steps.

    I’ll repeat it again and you can pass the informatoin along to the confused souls in The Land of Patent Law Ignorami where you apparently wander: all claims in the form [oldstep]+[newthought] are ineligible and it doesn’t matter if the [newthought] concerns a “law of nature” or a thought about your grandma’s lubriciously coated marital aid. The analysis is the same.

    Still confused? Let me know.

  114. 83

    It seems, Mr. Heller, that you are in agreement with Anon, and have let your Pirate as inventor walk the plank.

  115. 82

    suckie For it is known that even if all elements are each old in the art, the combination (read that as integrated combination) may yet be patentable.

    Nice strawman, suckie.

    All claims in the form [oldstep]+[newthought] are ineligible.

    Same with all claims in the form [oldstep]+[oldthought].

    Let me know if you find an exception to this rule, suckie. I know you won’t. So do you. But you’ll never admit it because you’re a dissembling a–h—.

  116. 79

    You are forgetting one very critical part of that 103 analysis: integration.

    For it is known that even if all elements are each old in the art, the combination (read that as integrated combination) may yet be patentable.

    There is no such thing as requiring an absolutely NEW element to earn a patent. Thus, the point of novelty is seen as the charade it is. The point of novelty is the claim itself, taken as a whole, checked for proper integration.

  117. 78

    Here’s THE clue [Bilski pun intended]:

    Substitute “a” for “the” when it comes to inventors (multiple) that are invited to the race with their inchoate rights.

    It is the one who crosses the finish line that has the patent rights. As long as each racer independently invents (i.e. is “a” true inventor, as opposed too say, oh, a PIRATE), then the law is good.

  118. 76

    Malcolm/Anon, we have a major product of nature case today that basically holds that one may not patent two trees discovered in nature under the Plant Act. In re Walter F Beineke, No. 2011-1459,-1460(Federal Circuit 06-Aug-12)(Dyk, Schall, Reyna) /media/docs/2012/08/11-1459 -1460.pdf

    In doing so, the Court had a lot to say about who is entitled to a patent generally. See, below. Basically, we are told, that patent may be awarded only to true inventors.

    “Congress in 1930 sought to change the existing rule that no plants could be patented while preserving the rule that plants found in nature were not patentable. Plants created by plant breeders were viewed as an “exercise of the inventive faculty” and thus deserving of patent pro- tection. In making this change to protect plant breeders, the 1930 Act also incorporated another fundamental tenant of patent law: that only the “inventor” could secure a patent application based on his own inventive efforts. All early patent statutes reflected the fact that a patent was only available to the true inventor. For example, the very first patent act provided a patent could be granted “upon the petition of any person or persons . . . setting forth, that he, she, or they, hath or have invented or discovered” something new and useful. Act of Apr. 10, 1790, ch. 7, 1 Stat. 109, 110 (permitting patents to be granted to anyone who had “invented or discovered”
    something that was “sufficiently useful and important”); see also Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117, 119 (applying to “any person or persons having discovered or invented any new and useful” invention). The patent act of 1793 required “[t]hat every inventor, before he can receive a patent, shall swear or affirm that he does verily believe, that he is the true inventor or discoverer.” Act of Feb. 21, 1793, ch. 11, § 3, 1 Stat. 318, 321. The Supreme Court likewise emphasized the requirement that the inventor must be the one seeking the patent, and that “[n]o one is entitled to a patent for that which he did not invent.” Agawam Woolen Co. v. Jordan, 74 U.S. 583, 602 (1868).5 ”
    FN 5 See also Pointer v. Six Wheel Corp., 177 F.2d 153, 157 (9th Cir. 1949) (“[I]t has been held repeatedly that a valid patent can only be granted to the real inventor [and] that the original and first inventor must make the appli-cation . . . .”); Milwaukee v. Activated Sludge, 69 F.2d 577, 587 (7th Cir. 1934) (holding that “[a] valid patent can be granted only to an actual inventor” and that “[t]he appli-cation must be made by the original and first inventor”). ”

  119. 75

    did suggest that had the determining step been less conventional, the claim may have survived 101

    reality check:

    We need not, AND DO NOT, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them.” (emphasis added)

  120. 74

    Mr. Dust, and when we determine the differences between that which is new and that which is old (103), just what are we doing? Ah, yes, that is it: abstraction and filtration. The old elements are not protectible, but the new may be if they are unobvious to a POSITA.

    But what if the novel elements are one of a LoN, a natural phenomenon, or an abstract idea. Prometheus confirms Diehr that if such is not integrated into the otherwise patent eligible portions of the claim, then we have a 101 problem.

  121. 73

    6, sure. But Prometheus did suggest that had the determining step been less conventional, the claim may have survived 101. As Malcolm has repeated pointed out, and as now confirmed by the SC, if the novelty is in the part of the process that is otherwise eligible, then we really have not 101 problem.

    This is why, IMHO, Diehr should never have gotten to the SC at all. The novelty was in elements that passed the MOT. So why did the PTO go ape over the portions of the claim involving mathematics?

    Makes no sense, at least in hindsight.

  122. 72

    Mr. Touch, who is in charge of the PTO? A man from IBM? What is IBM’s position on these issues? What is the PTOs?

    That said, how does one tell whether a LoN or abstact idea is being claimed?

  123. 71

    Remember when troll thought that Prometheus’ decision reinforced the theory of [old_step] + [new_thought] eligibility test but actually reinforces 101 Iintegration Expert’s integration theory? I do.

    LOL.

  124. 69

    That’s funny. CLS, which is commented by Kappos above. Have you read judge Prost’s dissent? Obviously not everyone has your clarity of mind. Not to mention that as of right now there is quite a bit of discussion on whether Prometheus applies to abstract ideas or only to laws of nature, indeed, right now, the guidelines published by USPTO are limited to laws of nature, and do not apply (yet? ever?) to abstract ideas.

  125. 68

    suckie self defeats

    suckie’s been on auto-self defeat for the past four or five years.

    Remember when suckie thought that Prometheus’ claims were eligible because they included a step reciting eligible subject matter? I do.

    LOL.

  126. 67

    confused I don’t disagree with Prometheus as seen by SCOTUS, by the way, but I also do not consider 35 USC 101 as simple, easy to apply.

    It’s sure easy to apply in claims such as those at issue in Prometheus.

    But let me know if come across a claim in the form [oldstep]+[newthought] that you think is difficult to assess for eligibility. I’ve yet to see one.

  127. 66

    There wasn’t much struggling with the aftermath of the Prometheus 9-0 decision. A quick and decisive guide promoting integration as the lynchpin of a 101 analysis is available.

    Also, if you were paying attention, you would have noticed that MM was the one who first provided a link to the guidance which promotes the views of 101 Integration Expert and self defeats MM’s [old_step] + [new_thought] theory.

  128. 65

    Sure. A unanimous decision reversing the decision of the second highest tribunal which in turn had reversed the District Court. So, an original decision of invalidity, a second decision of validity and a third for invalidity. The highest tribunal did not appear to struggle. The second highest did not appear to struggle either. Yet they disagreed. Hardly what I would consider a consensus. I don’t disagree with Prometheus as seen by SCOTUS, by the way, but I also do not consider 35 USC 101 as simple, easy to apply. Following this, a split decision in CLS, again on 101. Not to mention Bilski, where the decision was 9 to 3 en banc in CAFC, where SCOTUS also disagreed with Appeals in its reasoning even when reaching the same conclusion, and this with concurrent, differing opinions. This does not look to me like simple stuff.

  129. 64

    Well, Mr. Shill, if patenting pop music is just fine with you, that would be the result of Rich’s approach to 101:

    1. What is the claim directed to one of the four classes?

    Player piano. Check.

    2. Is the the claim new?

    A piano automatically playing pop music is new.

    3. Is the claimed subject matter obvious?

    Check.

    4. Is it described and enabled.

    Check.

    And there you have it. A claim to pop music limited to player pianos.

  130. 63

    confused The highest tribunals in the nation struggle with this issue

    There wasn’t much struggling regarding the claims at issue in Prometheus. 9-0. A short decision and utterly predictable if you were paying attention.

  131. 62

    Depends on what you want to cite from it. What do you suppose is worth citing from these general statements he made? Are you thinking he is abolishing compact pros? What do you take away from this mish mash of ramblings?

  132. 61

    Nichols v. Universal Pictures Corp.?

    Ned, you really need to understand and get a handle on the patent law stuff before you go about kicking up even more dust with non-patent law.

  133. 60

    ” then there should be no 101 problem.”

    Ned, making up categorical “rules” that are “underneath” the only “rule” that you cannot effectively patent judicially exempt subject matter avails nobody but ta rds. And it only avails ta rds in so far as it furthers their tar dation. There is but one rule.

    1. Thou shalt not claim judicially exempt subject matter, or effectively so claim.

    Anything other than that is simply tar dation you’re dreaming up to help yourself because you are suffering ta rdation.

  134. 59

    Claim as a whole analysis is a dead letter after Prometheus.

    You couldn’t be more wrong. See the Official USPTO guidelines released in response to Prometheus.

    Do you realize how out of touch you sound by trying to maintain your incorrect philosophy? And the Judge Rich crusade is more than old. It’s like you are an aged crackpot with a vendetta.

  135. 58

    and the novelty is in the music

    Music? Nice canard Ned.

    A New Light exposed this fallacious reasoning about a year ago or so.

    Try to use legitimate arguments if you don’t want to appear to be just a shill.

  136. 57

    Where are the Akamai and McKesson en banc decisions?

    Oral argument was heard in November 2011. It’s now been about 9 months since then. I heard from some commentators that it should come out this summer, so I guess there is still some time left for that prediction.

  137. 56

    Claim as a whole analysis is a dead letter after Prometheus.
     
    Besides, the source of this "claim as a whole analysis" seems to be none other than, drumroll…, Judge Rich himself.  He believed that in enacting section 103, that does include a claim as a whole approach to obviousness, Congress intended to assume within its parameters the whole of the determination of "invention."  He based his assertion or theory on the observed fact that section 101 jurisprudence prior to the enactment of the '52 Act was part and parcel of the determination of "invention." Under this theory, Judge Rich thought that considerations of patentable subject matter had to be taken under 103, and then as a whole.  The problem is, section 101 does not include a statutory command to consider claims as a whole in determining patentable subject matter.  That is limited to section 103.  Thus unless patentable subject matter is determined by section 103, Judge Rich's views are without statutory support.

    If Prometheus stands for anything, it stands for a solid rejection of Judge Rich's theories regarding the proper analysis of 101 and its relationship to 102/103.  After all, the government had argued Judge Rich's theory that 101 (and for that matter 103/112) could do the proper work of determining patentable subject matter.  This approach was rejected.

    Because the source of the claim as a whole approach comes directly from the rejected Judge Rich theory that section 103 controls the analysis of invention, there is no real statutory support for claim as a whole in 101 analysis.  Rather, the courts have consistently taken approach of abstraction/filtration, whereby the novel subject matter is isolated and determined, and then its relationship to the rest of the claim analyzed.  That approach is entirely inconsistent with the claim as a whole approach that forbids abstraction/filtration.

  138. 55

    fish, assume a player piano is old and the novelty is in the music,

    1. A player piano comprising:

    a piano; and

    means for reading a medium encoded with music and automatically playing the music on the piano; wherein said music consists of pop music.

    If we cannot abstract from the claim what the claim is truly directed to by some sort of abstraction/filtration method, we really do not know what the invention being claim truly is. To do this abstraction/filtration, we really need to know what is old and what is new.

    Then, from Prometheus, we turn to integration. Is the novel subject matter that is otherwise ineligible integrated into the process to produce something new?

    Clearly not.

    But if we cannot even conduct the abstraction/filtration step, we have nothing to talk about at all. What we have here is a claim to a player piano. That is a machine. But the problem is, from 101 purposes, that is old.

    Now the government argued that we can discount ineligible subject matter, such as music, tagged on in 102/103 analysis. The SC was not pursuaded. They rejected that approach emphactically!

    What seems clear then, we do need some sort of abstraction/filtration test. And, do you know who came up with that method, albeit in a copyright context? None other than Learned Hand. Nichols v. Universal Pictures Corp., 45 F.2d 119, 7 U.S.P.Q. (BNA) 84 (2d Cir. 1930)

  139. 54

    What is the proper format for citing a PTO Director’s blog post in an Office action, pre-appeal brief, or appeal brief?

  140. 53

    Mr. Looking, do you have any idea what it was that I agreed with? Your post seems to assume you know the answer, but let me assure you that you did not get it right.

  141. 52

    Reiner,

    What I took from Prometheus is that the problem of abstractness/LoN is not necessarily a 112 problem, but a 101 problem. Take a look at Morse. The court there suggested that if one were to claim a principle in the abastract, one would even need to file a specification because one was not even claiming a particular way to implement the principle. For example, what physical structure or process should I disclose for the following claim:

    1. A process;

    math step a;

    math setp b; and

    math step c;

    whereby one solves a particular mathematics problem.

    Is the above truly amenable under 112?

  142. 51

    The novelty is in the claim as a whole.

    Just like I said.

    Just like the Court in Diehr said.

    Pay attention, as you do not even seem to be aware of when you are driving off the road and into the weeds

  143. 50

    I don’t necessarily disagree with that. In fact, I don’t even disagree that there is little point to go back and forth about 101 when claims are not in condition for allowance. However, I see no point in not letting an applicant know that his/her claims would run into a 101 rejection if not amended. The Applicant can always come back and argue, or amend to avoid that. I don’t follow how it is more efficient to concentrate on 103 or 102, then, when allowable subject matter is found, send the customary “non transitory” (for example) rejection.

    The whole point is that if an examiner tells you that your claims are also rejected under 101, and your amendment (even if it is only to distinguish from prior art), overcomes that, then you can tell the examiner that it does so and how. If it does not, you can amend your claim to solve both issues, and then get an allowance without further delay.

    It’s funny to me that Kappos talks about delaying 101 analysis, but not, for instance about double patent, an issue that is indeed generally solved by amendment from prior art, and that has little relevance until an allowance is forecoming (particularly with respect to co-pending applications also being amended).

    By the way, how often does an applicant amend “computer-readable medium” to “non-transitory computer-readable medium” to overcome the prior art? Kappos, who used to manage IBM’s IP division, does not know that 101 in computer-related applications is not rare, but a common issue? Do we delay those too, or only the ones that have to do with Prometheus?

  144. 49

    Mr. Expert,  please explain the following, then (from Diehr):
     
    " It is possible using well-known time, temperature, and cure relationships to calculate by means of the Arrhenius equation when to open the press 178*178 and remove the cured product. Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time.  Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.
    Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold."
     
    From the above, the use of the equation is old.  The novelty is in the use of constantly monitoring the temperature inside the mold.   Do you disagree that the Supreme Court said this?
     

     

  145. 48

    The interim guidelines. Guidelines available to you until they get around to writing it out well.

    They are more than that 6.

    They are the Official Office Guidelines that you as an examiner are BOUND to follow.

    So even though you run and hide and refuse to take up 101 Integration Expert’s Ultramercial claims challenge on these boards, you ARE duty bound to apply the OFFICIAL integration steps in your job.

    I hope you fondly think of 101 Integration Expert every time you do your job.

  146. 47

    Ned,

    We have been through this before.
    I do know the facts in Diehr.
    You are still getting what was novel in Diehr wrong.

    Ned, THIS IS MY ART FIELD. Clearly, it is not yours.

  147. 46

    confused,

    I do not think you are understanding what I am saying.

    It is not a matter of which part of the law is applied – in compact prosecution, all parts are applied. Kappos is now saying that in effect there should be some give and take, some interaction between the applicant and the examiner in fine tuning the claims based on 102/103/112 before 101 is looked at.

    This would require non-compact prosecution.

    I don’t have a problem (per se) with non-compact prosecution. I merely point out that there are ramifications (when going final is legitimate, when appeal rights innur) that are tied to the compact prosecution regime, and that these ancillary items must also be evaluated if indeed the Office is making a break from its compact prosecution stance.

    This is not (necessarily) a rebellion against the courts.

  148. 44

    We have been through this before, and you are still wrong as to what was novel in Diehr.

    Your mistakes are still wrong no matter how many times you repeat them.

  149. 43

    Last I checked it is Congress that can get rid of 101, clarify or modify it. Neither the Supreme Court nor Kappos can change that. And 101 is not challenging because the Office hires ESL people. It is challenging because a Fedreal Court of Appeals issues a decision and is reversed by a higher court. The highest tribunals in the nation struggle with this issue, and insinuating that the issue is difficult because of the origin of examiners is plain ridiculous.

  150. 42

    That is what I think he is saying. I think he is saying that he does not agree with Scotus, that he stands by the government’s position presented to Scotus and rejected there. I don’t think he is talking about 101 in general, but about this particular analysis in view of Prometheus. It seems that he is picking the decisions coming in that he likes, and disregarding those he doesn’t like.

  151. 41

    Compact prosecution, as I understand it to mean that an Office Action is complete and all aspects are judged (101 as well as 102, 103 and 112), certainly does NOT fit with the Kappos quote of:

    I appreciate the wisdom of the court’s discussion relating to resolving disputed claims by focusing initially on patentability requirements of § 102, 103, and 112, rather than § 101. I have found that when claims are refined to distinguish over the prior art, recite definite boundaries, and be fully enabled based on a complete written description, they do not usually encounter issues of eligibility based on reciting mere abstract ideas or broad fundamental concepts. Put another way, every business looks for opportunities to sequence workflow so that the first issues addressed are the ones that can simplify or completely resolve other issues. This is good basic management for businesses, and for patent offices.

    If the Office is indeed retreating from a compact prosecution, because “[t]his is good basic management for [ ] patent offices,” will this necessitate the removal of “going final” on a second action? Is “due process” compromised if the Office goes final on a second action, but a first time rejection (e.g. a second action, first appearing 101 rejection)? How does this change impact the general nature of right to appeal (claims being TWICE rejected)?

  152. 40

    it is something I agree with

    compare

    The Court rejected… a ban on business-method patents

    W

    T

    F

    Ned, you jumped too quickly (again).

  153. 39

    Don’t let it get you down. The Afro Americans are better at singing, dancing, gymnastics, sports, and whateverrrrrrrrrrrrrrrr they feel like achieving in. Skin heads suck

  154. 37

    Gotta love the “other sections of 35 U.S.C. are easier” crutch. If 101 is so stinkin’ hard why not abolish it already? It must be getting truly rough over there – lately they’re using newly-minted ESL primaries instead of SPEs to conduct interviews and ratings of prospective hires. Weird.

  155. 33

    Correct me if I am wrong, but I think I remember in Prometheus SCOTUS telling the government that no, that 101 had to be analyzed separately from 112, 103, 102 etc… The Office theoretically performs compact prosecution, so I don’t see the point in reading my 103s before I read my 101s… or is Kappos essentially saying, well, “I hear you… but I disagree”?

  156. 32

    Sarah, please do not take offense but both of us should be avoiding cake and eating more fresh fruit, for dessert, instead, even on our sixtieth birthdays.

  157. 31

    The “invention” which needs to survive 102, 103, 112 and 101 challenges is the invention as claimed.

  158. 30

    Mr. categorical approach, actually it is something I agree with. You seem to have failed to understand that I oppose categorical statements, such as,

    “Business methods are patent eligible;” or

    “Programmed computers are patentable subject matter.”

  159. 28

    The novel subject matter in the claim…

    Horse hockey.

    You are attempting a point of novelty, and that is not what either Prometheus (properly read) or the Office OFFICIAL guidelines instruct.

    The point of novelty is the claim itself, read as a whole and viewed to see if integration is achieved.

    You are congratulating the wrong person Ned.

    The proper credit goes to 101 Integration Expert.

  160. 27

    Learn to read clown.

    Prom did away with the article, which stresses non-101 (non-preemption).

  161. 26

    6, if there is anything we have learned from Prometheus/Malcolm, is that that if the ineligble subject matter is not the novel subject matter in the claim, meaning that the novel subject matter otherwise passes 101, then there should be no 101 problem. Only when the ineligible subject matter is the only novel feature do we need to focus on 101.

    This implies that 101 should not be raised at all until after a search that determines whether the ineligible subject matter is the only thing new.

    If this had happened in Diehr, for example, the 101 issue would never have been raised, would it? The novelty there was the continuously monitoring of the temperature inside the mold.

  162. 25

    While I applaud the interim guidelines that follow the law ( integration) from the Supreme Courts ruling in Prometheus, need I remind you that the guidelines in and of themselves are not the law. Therefore any subsequent instructions that may veer from the Courts holding have no force of law. In language you cqn understand, you still have to do what the Court has told you. And the Court has said, “INTEGRATE!”

  163. 24

    “The approach in the article”

    The approach in the article wishes to do away with what it readily admits is the law.

    “Prometheus nailed the coffin shut on that approach in toto.”

    Prom just affirmed it ya duma rse. If you believe otherwise then you do not understand preemption.

  164. 23

    Would you do me a favor make me another Cake just like the last one. Butter Cream please, with 60 candles on it.And write out the same message, but could you use my FAVORITE Licorice! I’ll never forget anything you did to me, I promise!

  165. 22

    The approach in the article does away with your preemption 6. Do you really take it that is the law whether we like it or not?

    Meh, not really.

    Besides which, Prometheus nailed the coffin shut on that approach in toto.

  166. 21

    The Court rejected categorical approaches, such as an enshrinement of a machine-ortransformation test as the sole measure for a patentable “process,” or a ban on business-method patents, but it affirmed rejection of the patent claims in question, which concerned commodities trading hedging transactions, as drawn to an abstract idea.

    Clearly something Ned Heller would not agree with.

  167. 19

    But the words of the claim approach only emphasizes “clever drafting.”

    The fact that such also take it out of the subjective hands of the judges is merely besiides the point (wink wink, nudge nudge).

  168. 17

    Don, K man now understands that what we’re trying to do is make sure that no judicially exempt subject matter is preempt. As you are aware, I take it from your Weeds and Seeds, that is the law whether we like it or not.

  169. 16

    “I just read the Official Office Guidelines”

    The interim guidelines. Guidelines available to you until they get around to writing it out well.

    Just wait till the post comes up next week.

  170. 14

    Yes, any 101 determination should be based on the words of the claims, not on some “underlying inventive concept.”

  171. 12

    I’ll mention this.. the withdrawls again magic. They let him do the dirty work on the second one making it look legal HAHAHAHAHAHAHAHAH. otherwise they would have flipped for it! HAHAHAHAHAHAHAHHA~ magic

  172. 11

    Caution. Director Kappos does not mention a subsequent Federal Circuit decision that issued the day before his press release. Bancorp. v. Sun Life Assurance (Fed. Cir. July 26, 2012), written by Judge Lourie, reaches virtually the opposite conclusion as that in CLS Bank, the decision Director Kappos is so interested in. That is, Bancorp. holds that Section 101 applied to invalidate a claim to a computer implemented financial arrangement. Judge Lourie rather summarily distinguishes CLS Bank.

  173. 9

    On of the provisions Kappos refers to as a provision easier to test than § 101 is § 112. It has often been said that § 112 cannot replace § 101. The truth IMHO is that overly abstract subject-matter (that ought to be rejected under § 101 based o nthe “abstract ideas” doctrine) *cannot* pass § 112 because it cannot be sufficiently be described for the PHOSITA. So the § 112 test is a helpful indication for complicance with § 101. Still it does not replace § 101 since applications that do (rightfully) pass the § 101 still may not be enabled appropriately under § 112, simply due to neglicence.

    In sum, while Kappos pretends to shift the focus from § 101 to other provisions, effectively the § 112 test still entails a § 101 test, if under a different guise.

  174. 7

    6 “Preemption carries the day at the PTO!”

    Hello 6:

    I just read the Official Office Guidelines and there was no indication of “preemption” being widely adopted at the PTO, especially your abusive version. However I could not help but notice the Office particularly points out and specifically instructs the use of “Integration” in the 101 analysis.

    See “” link to uspto.gov

    1. To show “integration”, the additional elements or steps must relate to the natural principle in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application.

    2. Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the natural principle itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the natural principle with generalized instructions to “apply it.”

    3. A machine or transformation that is merely nominally, insignificantly, or tangentially related to the steps or elements, e.g., data gathering or data storage, would not show ‘integration.”

    4. This claim would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.

  175. 6

    Hopefully! We have a good line of cases now with Research Corp, Ultramercial, and CLS, all which rely on Diehr’s concept and application. Now with the recent Supreme Court Prometheus case relying on Diehr for “Integration” and the Office issuing Official Guidelines for “Integration Analysis”, the opportunity exist to finally stop baseless 101 rejections for good. The dissection and preemption abuses that ran rampant under Dudas can finally come to a halt.

  176. 5

    6: “Give 3x cheers for the triumph of the law! Preemption carries the day at the PTO!”

    Mean while back in the real world, the Official Office Guidelines teach “Integration Analysis”.

  177. 3

    There’s another post in the pipeline. Remember, you guys are a week or so behind in hearing about what gets posted internally. You’ll like the next one much better :) I promise. Turns out, these guys are actually all about applying the law now that they understand it. Although it will take awhile for that to “trickle down” to the troops.

    They’ll probably try to get on the bandwagon with the “manifestly abstract” nonsense (although I’m not for sure that they will try to follow the Circuit in not applying the law) until the supremes get around to knocking that down, but that is small potatoes compared to preemption being widely adopted.

    Give 3x cheers for the triumph of the law! Preemption carries the day at the PTO!

  178. 2

    I have written a letter. Each time I go back it asks me for my password to close. And then I go back and the letter is a mess. Don’t worry WORMIE I will rewrite it on another computer that is not wormed. Good try though. That’s why I write most things out lately so you can’t worm me.

    PS I will be sure to make a note of the WORM when I send the REAL one and only!

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