En Banc Arguments This Week

by Dennis Crouch

On February 8, 2013 (this Friday), the Federal Circuit will sit en banc and hear arguments on two important patent cases. In CLS Bank v. Alice Corp the court will focus on the patenting of inventions implemented through software. The two particular questions highlighted in the en banc order are:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?; and

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

In addition to the parties, the Federal Circuit has also granted leave for the USPTO to participate at oral arguments. The USPTO’s brief focused on practical mechanisms for the process of determining § 101 eligibility. The agency wrote “the essential question under § 101 is whether the claim, properly construed, incorporates enough meaningful limitations to ensure that it amounts to more than a claim for the abstract idea itself . . . This Court should identify a non-exhaustive list of factors for district courts and examiners to consider in resolving that essential question on a case-by-case basis.”

The second patent case (argued first on the 8th) is that of Robert Bosch v. Pylon Mfg. In Bosch, the court is focusing on the “final judgment rule” that limits a losing party’s right to appeal until the district court judgment is finalized. Particularly, 28 U.S.C. § 1292(c)(2)  indicates that the Federal Circuit has jurisdiction over patent appeals once the case is “final except for an accounting.  The basic question on appeal is: Define “an accounting.”  The en banc order asks two particular questions:

a) Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred?

b) Does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this Court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided?

In its brief of the case, the U.S. Government argued that “accounting” encompasses the damage award. As such, the Government argues that appeal is appropriate once liability is determined. 

At the Supreme Court, oral argument in Bowman v. Monsanto (patent exhaustion doctrine) is scheduled for February 19; and FTC v. Watson (reverse payment settlements) is scheduled for March 25. Arguments for Association for Molecular Pathology v. Myriad Genetics, Inc.
have not yet been scheduled.

409 thoughts on “En Banc Arguments This Week

  1. 301

    I’ll just repeat it again, anon. It’s basic stuff. Maybe read it really slowly::”

    repeating it slowly may work in your alternative universe MM, but here in this one, your bogus theory is just that: bogus.

    No one outside of your little cirle has ever agreed with you.

    No One.

    The only people I’m aware of who refuse to “get it

    LOL – you forgot the two Amicus Briefs and the count I provided to you of how many times your bogus theory was used: ZERO>

    You also forgot (but no one else has, as it is archived here) that the USPTO also does not believe in your bogus theory. Quite in fact, they believe in 101 Integration Expert’s integration doctrine. You were even the very first person to post a link to that massive self-defeat of yours. That’s archived too. Perhaps even on Sam Hill.

    both wish the law were different

    LOL – like you wish with the exceptions to the printed matter doctrine? Or like with the judicial exception to patent eligible subject matter of products of nature?

    Like that?

    Epic MM FAIL

  2. 300

    MM,

    It is more than just “characterizing.” In fact, If you stuck with “characterizing,” then you would not be receiving your head back from me (yet again).

    Maybe you forgot – the comments here are archived, and we all can see what went down.

    It is about you recognizing WHAT is the law and posting in accord with that.

    You seem incapable of that. Just like you seem incapable of having the nuts to admit that you were wrong on the what the dead letter comment in Prometheus was too. Yes, that was archived as well. Instead of being forthcoming about that, you spend your time looking for youtube clips. Your snark might (just might) have some small effect if you were actually right about something that we discuss to begin with. As you are not, all your snark does is emphasize that all you have is snark. Vacuous and empty snark.

    And then you continue your intellectually dishonest ways by accusing others of dissembling. It’s easy to see where your self-loathing comes from.

    MM High Priority FAIL

  3. 299

    It is not the second law of thermodynamics.

    The Second Law is very clear on the point that information is not a conserved quantity. Information is always lost over time.

    Sorry to interrupt. You were about to tell us what “fundamental principle of physics” contradicts the Second Law. Be sure to copy the Nobel Foundation.

  4. 298

    It is not the second law of thermodynamics. And, what do I think it says or want?

    Do you need a remedial course on the difference between copyright and patent law? It sounds like you do.

    IANAE: it always amazes me at not only that you will troll any post of mine, but just how low you will sink to do it. You must have no morals or common decency.

  5. 296

    1) information processing takes space, 2) time, 3) and energy.

    So does writing songs.

    There is a fundamental law of the conservation of information.

    The Second Law of Thermodynamics. As usual, the law says the opposite of what you think/want.

    the beauty of information processing.

    Okay, fine. If it’s that pretty, you can have a design patent.

  6. 294

    As we approach D hour, let’s all remember:

    1) information processing takes space, 2) time, 3) and energy.

    There is a fundamental law of the conservation of information. Information is a fundamental principle of physics.

    Try to raise yourselves out of the mud of conflict and exalt the beauty of information processing. The information processing that drives cares, diagnoses cancer, builds cars, talks to you on the telephone help lines, etc.

    May the force be with Rader…

  7. 292

    the smoking wreck that is MM prompted his circle mate Ned to douse himself with gasoline and immolate himself

    My hands were cold.

    Marshmallows, anyone?

  8. 291

    You might want to review some of their latest decisions on point, starting where you left off – 1971 or so, apparently.

    LOL!

  9. 290

    Let me know if you are going to continue to post lies about the law,

    Characterizing the “exception to the printed matter doctrine” as “logically bankrupt horsesh-t” ready for the dustbin is not a lie.

    It’s the truth. Of course, you are incapable of discussing the matter without dissembling. But that doesn’t make it untrue. You were and continue to be incapable of discussing the Prometheus decision without dissembling. You were spectacularly wrong about that decision and, if you choose to defend the “exception to the printed matter doctrine” you will be proven spectacularly wrong about that, too.

  10. 289

    there is no affirmation whatsoever that anyone buys into your crrp [oldstep+newthought] theory.

    I’ll just repeat it again, anon. It’s basic stuff. Maybe read it really slowly:

    all claims with mental steps are not eligible. The presence of a “novel” mental step in a claim which otherwise recites only an old conventional step is a good indicator that the claim is ineligible.

    See, e.g., the Prometheus case. This has been explained to you many many many many many times.

    Ned understands this. I understand this. LB understands this. Dennis understands this. Jason understands this. IANAE understands this. MD understands this. Kevin Noonan understands this. I think even Gene Quinn might understand this.

    Spread the news. If any of these people disagree with me, they can let me know and I’ll take their name off the list.

    The only people I’m aware of who refuse to “get it” are two commenters who have trolled just about every thread relating to the issue since it was first presented: you and 101E.

    I think even Les and EG get it, although they both wish the law were different (not going to happen).

  11. 288

    101 is about categories.

    Yes, and interpreting what those categories mean is the function of the judiciary.

    You might want to review some of their latest decisions on point, starting where you left off – 1971 or so, apparently.

  12. 287

    No. 101 is about categories.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter , or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

  13. 286

    The test for breadth is 102 and 103.

    And 112. And 101. And whether the inventorship is correct. And whether withheld prior art is material. And so on.

    Bad breadth can get you rejected in all kinds of ways.

  14. 285

    Is the claimed item a list of steps? Tada, its a process. MOVE ON to 102 and 103.

    We’ll give you a moment to catch up on the last 40 years of Supreme Court caselaw about section 101, then?

  15. 284

    Because new is covered by 102 and is only redundantly included in 101…perhaps for emphasis.

    In any event, I have no quarrel with clear rulings that say something fails 101 because it is not new (assuming it is not). My quarrel is when they say a process (e.g. Bilski) is not a process because it is broadly described. That’s through the looking glass nonsense.

    The test for breadth is 102 and 103.

  16. 283

    Nonsense Ned.

    Is the claimed item a list of steps? Tada, its a process. MOVE ON to 102 and 103. No prior art need be considered. Similar reasoning applies to the other categories of patentable subject matter.

  17. 282

    Right, another absurd couple of rulings. Sound an alarm to notify a worker to open a door, not patent worthy. Move the wires from the alarm over to the door opening actuator… tada! Patent worthy.

    All desired result oriented non-sense.

  18. 281

    “I think they manifestly are physical acts, and this indeed presented a problem to the Supreme Court. This is why they came up with “preemption.”” Q.E.D

    Thank you Ned, my point exactly:

    “This is why they came up with “preemption.””

    They came up with preemption because they wanted a particular result and they couldn’t justify it by reliance on the law, so they legislated a new law from the bench. They “came up with” preemption. Exactly!

    What could be more absurd than preemption?

    Every patent preempts the claimed invention. THAT’S WHAT PATENTS DO.

    If a patent is so well written as to be valuable because it is difficult to work around, it must not be valid. aaaaaargh!

  19. 280

    if the Examiner rejects your claims for “failing” the MoT then you have a slam dunk reversal on appeal.

    Just like Bilski got reversed on appeal, right?

  20. 279

    Les, 35 USC 101 has pohl position sure but if you read it as a hole you will stumble across the word “new”. We no that judges do read the statutory provisions carefully before they dowhl out their findings. How then can you assert so confidently that new has no roll to play in there 101 jurisprudence?

  21. 278

    anon: “This is decidedly NOT what your position has been in conversation with me, Ned.”

    Ned flipped positions on me too. He is a very tricky lawyer.

  22. 277

    Ned: “A mental “step” in a claim is given weight to the extent to which it modifies a physical step to cause some new effect. ”

    Whooooa there Ned, this is not what you said or agreed to at Reply Feb 07, 2013 at 05:19 PM.

    Now I have not read the Government brief from Mayo but if you are referring to the argument(s) addressed and rejected by the Court why should I waste my time? I am only interested in the current law. And unless you can provide a citation that says otherwise, I do not believe there is any law that requires a mental step to modify a physical step to cause a new effect, in order for “the step” to have patentable weight. Which by the way sounds virtually the same as the transformation leg of the MoT.

    Which would mean that if your view is correct the Prometheus Court upheld the MoT as “the” test for patent eligible subject matter. However this can’t be the correct because the Court said the following:

    “Regard­ less, in stating that the “machine-or-transformation” test is an “important and useful clue” to patentability, we have neither said nor implied that the test trumps the “law of nature” exclusion. Bilski, supra, at ___ (slip op., at 6–7) (emphasis added). That being so, the test fails here.”

    Ned: “The math was integrated in Diehr because it modified a physical step to produce a new result.”

    The math equation was “integrated” into a computer, which was also integrated, with all the other steps, into the process as a “whole.”

    According to the Court “integration” does not rise and fall on individual steps. You MUST take claims as a whole. Which in effect is the essence of “integration”.

    You are very smart Ned. And I am glad there are attorneys like anon and the rest that catch you in these tricks. But even without them there is no way you are going to fool me or convince me that the Courts “Integration” stands for no more than Machine or Transformation.

  23. 276

    Breyer in Bilski has no force of law.

    We have been around that merry-go-round ride before.

    Why are you trying to dredge up arguments that failed before? They still do not work.

  24. 274

    LOL – but Intellectual Honesty is his Top Priority.

    Must have been (yet another) one of his blatant lies.

    Lying about honesty – truly a shameless being.

    Well, at least he provides a burning example of how not to post.

  25. 272

    Let me know if you are going to continue to post lies about the law, given that right now (right here in this reality) that such is controlling law.

    You might want to read up on the word Integrity too.

  26. 271

    What abou the exception to the printed matter doctrine.

    What about it? It’s logically bankrupt horses–t and it’s on its way to the dustbin of history.

    Let me know if you’d like to bet on that.

  27. 270

    LOL – contemplating this thread, it is apparent that the smoking wreck that is MM prompted his circle mate Ned to douse himself with gasoline and immolate himself in the hopes that the smokescreen of Ned burning out of control would lessen the ruins that MM lies in.

    Just like two wrongs do not make a right, all we actaully have is two smoldering wrecks on this thread.

    Way to go circle mates.

  28. 269

    You incorrectly tried to say that the dead letter comment was in relation to 101. I corrected you that it was to the judicial exception to 101, not to the law itself

    Wheee!!!!!!!!!! Look at him go, folks!!!

    link to youtube.com

  29. 268

    The printed matter doctrine, e.g., is born of these same considerations

    LOL. What abou the exception to the printed matter doctrine.

    You know, the one that you voluntarily admitted to knowing was controlling law?

    MM blatant lie FAIL

  30. 266

    Not sure, maybe it’s next to the one that makes you post in an intellectually honest manner.

    Can’t find that one, eh?

  31. 265

    something physically new

    Your canard is showing again (recall that the actual result in Diehr – the cured rubber – was not in fact something physically new.

    Ned, your logic is imploding all around you.

  32. 264

    I think they manifestly are physical acts

    …so then, accordingly to your own professed views here, the physical acts make this type of thing a valid method category…?

    Come Ned, you are in self-contradiction mode again…

  33. 263

    Sure. But all claims with mental steps are not eligible.

    Did I ever say such a thing?

    Kindly retire your strawman and try to keep up, son.

    LOL – nice litany of people – but outside of your circle, there is no affirmation whatsoever that anyone buys into your crrp [oldstep+newthought] theory.

    No one. Did you miss the count in the two briefs…?

    Oh wait, I gave you an assignment in that comment and you don’t do answers (against your style).

    MM retort FAIL

  34. 262

    Awww, that’s sweet

    No.

    That’s intellectually honest. You might want to read up on that concept (rather than just [shrug] and stand by).

  35. 261

    Do you still think this is silly? You have now so contradicted your own post at 11:00 AM as to be irrecoverable in this discussion.

    I suggest you think about finding that white flag.

  36. 260

    Ned,

    You have agreed to: any of your listed mental steps are “integrated” in a process as a whole, that includes at least one step of observable behavior, the process becomes patent eligible subject matter.

    Yet, your intitial premise of our discussion was that mental steps are NEVER allowable claim steps in a method claim.

    You cannot have them as both valid steps in a eligible method claim (my original position and one you disagreed with) and NEVER valid steps in a method claim (your position which I have completely dismantled).

    If you just want to say “Uncle,” just say “Uncle.”

  37. 255

    Excellent.

    But the encrypted signal is also transmitted or stored and later decrypted. I think we do need a case exactly here to tell us clearly how to claim these very important inventions and survive a 101 challenge.

  38. 254

    It is therefor a mistake to say that 101 is a threshold issue devoid of condiderations of novelty. To make it such would elevate form over substance, and make the analysis to look rather to whether the claimed subject matter was nominially directed to a machine, etc. That of course, was Rich’s position.

    But where would that leave us? The only novelty in a claim being unpatentable subject matter? Music, in the case of a piano player for example.

    The courts are that easily fooled. Nice try, Judge Rich.

    Indeed, it was a spectacular and inevitable failure on Judge Rich’s part.

  39. 253

    A method that produces signals is eligible

    What is the “physical” of the “make”?

    Your views are being crushed under their own weight of infeasibility.

    (any time you want to put downthe shovel would be a good time for you)

  40. 251

    Prior art SHOULD have no roll in 101 considerations.

    As we discussed endlessly here prior to the Prometheus decision, that can only be true if ineligible subject matter has no roll in 102/103 considerations (that was the government’s proposal – rejected by the Supreme Court 9-0 for sound reasons).

    Let me know if you need the reasoning explained to you. It’s very easy to follow. In a nutshell, if you want to keep patentees from protecting ineligible subject matter with trivial (“old, conventional”) limitations, you must have a legal methodology in place for ignoring either the trivial limitations in 101 analyses or for ignoring the ineligible limitations in 102/103 analyses. The printed matter doctrine, e.g., is born of these same considerations.

  41. 249

    A mental “step” in a claim is given weight to the extent to which it modifies a physical step to cause some new effect

    This is decidedly NOT what your position has been in conversation with me, Ned.

    Are you lying now, or were you lying before?

  42. 248

    anon, we see eye-to-eye on some issues. And, as you note here, our discussions are interesting. Let's try to stick to the merits and have some "fun."

    You should know, I actually listen to what you have to say and think about it. That does not mean I instantly agree…

    I see from your posts over the years that you too begin to more fully understand the issues because of our discussion even if you do not fully agree with my views.

  43. 246

    You cannot “leave it at that” and still maintain your main point that mental steps cannot be process claim elements.

    Self-contradiction is no way to go through life, son.

  44. 244

    Mayo: MoT not sufficient (you forget that the Court found that MoT was in fact reached).

    Bilski: MoT not necessary (only one of a very few items that was actually unanimous in the decision).

    Face it Ned – I know this stuff WAY better than you (it’s OK to admit that).

  45. 242

    As I posted yesterday, the current state of law does include mental steps as legitimate parts of process claims.

    Sure. But all claims with mental steps are not eligible. The presence of a “novel” mental step in a claim which otherwise recites only an old conventional step is a good indicator that the claim is ineligible.

    See, e.g., the Prometheus case. This has been explained to you many many many many many times.

    Ned understands this. I understand this. LB understands this. Dennis understands this. Jason understands this. IANAE understands this. MD understands this. Kevin Noonan understands this. I think even Gene Quinn might understand this.

    How about you, anon? Do you understand it yet?

    LOL. Of course you don’t. Keep your head in the sand. I’m sure it feels “safe” there, plus when you start digging to China you’ll already be facing the right direction.

  46. 241

    pathetic somersaults and incoherent ranting

    No such thing required – remember? things are archived here and your self-evident, self-defeat is there in black and white.

    You incorrectly tried to say that the dead letter comment was in relation to 101. I corrected you that it was to the judicial exception to 101, not to the law itself. Now instead of simplyhaving the nuts to admit that you were wrong, you got all in a huff because the correction came from “anon,” and you picked up your B$ chovel, hiked up your skirt and sprinted away for nigh a week.

    You really shouldn’t accuse others of drivel, as it is evident that that is not your first bottle of tequila.

  47. 240

    While you may ask politely for me not to ride, your other posts scream for me to do so.

    Guess which one I hear more loudly?

    (here’s a hint: you have some control over what I post – don’t post things that scream out for correction, and I won’t be presented with that choice) You cannot cry that I take the high road, when your actions give me that very path.

  48. 238

    Now that you have finally got the decision out, we can discuss the actual substantive reason why that particular “page cite” was being discussed.

    Do you know why?

    Yes, I brought the “dead letter” issue up in the context of a discussion with another commenter.

    “This approach, however, would make the “law of nature” exception to § 101 patentability a dead letter. The approach is therefore not consistent with prior law.”

    132 S.Ct. 1289, 1303 (emphasis added)

    Congrats! You found the actual quote after I told you where it was and you figured out how to copy and paste it into the comments section here.

    I suppose now we have to suffer through your pathetic somersaults and incoherent ranting as you attempt to explain how my original reference to the “dead letter” comment represented “a blatant lie”.

    [grabs popcorn and bottle of tequila]

    You might as get started. I would recommend showing your work to an English-proficient friend (assuming you have any) before posting your drivel here.

  49. 237

    in order to conduct an analysis under “claim as a whole,” one must know what is new and what is old

    I think you have things conflated. Not only that, but your predicliction for disssection is showing through.

    That’s like wrong on wrong – not making a right, but just doubly wrong.

  50. 236

    Les, in order to conduct an analysis under “claim as a whole,” one must know what is new and what is old. A lot of the 101 cases get to the decision stage with the patent owner or applicant admitting that the only thing new is the allegedly ineligible subject matter. But this, IMHO, does not preclude a 101 analysis after determining what is new and what is old.

    It is therefor a mistake to say that 101 is a threshold issue devoid of condiderations of novelty. To make it such would elevate form over substance, and make the analysis to look rather to whether the claimed subject matter was nominially directed to a machine, etc. That of course, was Rich’s position.

    But where would that leave us? The only novelty in a claim being unpatentable subject matter? Music, in the case of a piano player for example.

    The courts are that easily fooled. Nice try, Judge Rich.

  51. 235

    “You really expect MM to answer?”

    Of course not. MM, will NEVER engage in a substantive conversation let alone debate when it comes to “Integration”.

    He is too much of a intellectual coward and weakling.

  52. 234

    Les, I agree in principle that a computer process is a machine process and is not a mental step.

    That, again, was the vexing problem presented to the Supreme Court in Benson. We have their decision. The use of GP digital computer to conduct the mathematical steps is not per se patenble.

    Flook confirmed when its output was a number.

    Diehr confirmed, but then said that using the number to do something physically new was the point that the machine process became eligible.

  53. 233

    Dennis, it might be useful, if you could, to provide some information in a reply to exactly which post the reply is made. This will allow us to simply reply without first quoting the post.

  54. 232

    My statement regarding Benson was in response to this:

    "Are the operations of a computer in running software physical acts?"

    I think they manifestly are physical acts, and this indeed presented a problem to the Supreme Court. This is why they came up with "preemption." However, the subsequent jurisprudence confirms that the using a machine process to produce a number that then is not use to do anything usefule is not a process within the meaning of 101.

    Look at Bilski's summary of Benson: data in, data out.

    Therein lies the vice.

  55. 231

    101, See Benson about "mental steps." Also see the 9th Circuit case in Halliburton.

    I would also ask you to read the Government brief in Mayo.

    A mental "step" in a claim is given weight to the extent to which it modifies a physical step to cause some new effect. E.g., place an egg in boiling water, count to 100, then remove the egg. The counting to 100, albeit mental, takes time, all the while the egg cooks.

    Diehr: the math, like counting to 100, modified how long the mold stayed closed. This modified the process, producing a new and better molded product.

    The math was integrated in Diehr because it modified a physical step to produce a new result.

  56. 224

    Prior art SHOULD have no roll in 101 considerations. However, somewhere along the line a court said “abstract ideas” are not patentable, even if they are expressed as processes. Then, the Supremes repeatedly confused abstractness with novelty and obviousness. Accordingly, now what is abstract or not depends on the prior art.

  57. 223

    Again, i can’t tell to which post you are replying. But with the post immediately above yours, my point is that since thought is a process, mental steps are a process.

  58. 222

    I don’t know what you are replying to here Ned. Are you saying that what a computer does is not a process?

  59. 221

    Ned “101, the courts will also consistently held a mental steps are not process steps. ”

    Can you please provide the exact quote and case for that? Being serious.

    Ned: “A method that involves manipulation of mathematical representations of value, quantity, price, risk, and the like are not process steps.”

    What about the Arrhenious equation?

    Ned: “Add to a method that calculates these things conventional data-gathering, or using conventional tools to perform the calculation, adds nothing of patentable significance, at least according to Benson.”

    What about Diehr’s use of a digital computer to do the Arrhenius calculations?

  60. 220

    Thanks for the list Ned. The only problem I have is that some of your steps are not true mental steps. Meaning performed entirely within the mind. But nonetheless, when any of your listed mental steps are “integrated” in a process as a whole, that includes at least one step of observable behavior, the process becomes patent eligible subject matter.

  61. 219

    anon, and just where did you get the authority to tell posters here on Patently-O what they can do or cannot do, what they can say or cannot say? Who appointed you God or Emperor?

    More dust-kicking Ned. Aside from repeating the posted words of Prof. Crouch or his written use policies, I have never said what people can or cannot say.

    On the other hand, I have frequently and strenuously advocated against posting tactics that are dishonorable and intellectually dishonest. Do you really have an issue with that?

    Really?

    Stop trying so hard to NOT discuss the actual law here, as your efforts are only bringing more attention to the fact that you are not only floundering, but floundering badly.

  62. 218

    Rejected Ned.

    Neither necessary nor sufficient.

    Any other word from you contrary to this places YOU in direct violation of Supreme Court Holdings – se Bilski and Prometheus.

    You are not mutinying, are you Ned?

  63. 217

    Ned, I have been more than clear about what I am talking about: that mental steps can (and do under current law) form valid elements of valid and patent eligible claims.

    You are the one trying to derail this by strawman total-mental step claims, which I have expressly (and repeatedly) corrected you on.

    Your intellectual dishonesty is striking.

  64. 215

    J_ C_ , Ned – we are NOT talking about flaunting the holdings of cases.

    Get a grip – it was YOU yourself that provided a reference drawing the distinction between holding and dicta and CRITICIZING the passing off of dicta as law.

    You are out of control and way overboard.

  65. 214

    And now you’re telling me that the Supreme Court will issue orders that amount to war crimes?

    Obtuse? Is it on purpose? (Said in the best Andy Dusfrene tones)

    Ned – you at being quite ridiculous to attempt to apply the analogy so literally.

  66. 211

    Ned,

    With all of your attempted re-phrasing of my posts or outright ignoring what I am saying, I have to wonder why you are attempting to have a different conversation than the one I am involved in.

    Must you make the tanking of this conversation so obvious? I think that you would retain more integrity if you simply stated: “Anon, I respect the points you at making, but do not wish to discuss this area of law with you.

    Your struggles only draw more attention to the fact that your views on this subject are not in accord with actual law.

  67. 210

    And now you're telling me that the Supreme Court will issue orders that amount to war crimes?

    What are we obeying here then? God? The conscious of man? Some international treaty?

    Where does Rader get off? He must obey the Supreme Court and he doesn't like it, he's free to dissent. Anything else is mutiny, and if he does it intentionally and not by mistake, he should be impeached.

  68. 208

    It is mutiny if a judge refuses to follow proper authority

    You make a major mistake by not understanding the correct phrase.

    Blind and absolute obedience is never proper. If a platoon commander orders his soldiers to commit war crimes, who is guilty?

    Think Man.

  69. 207

    anon, the courts have held that claims can include mental steps. What I think they really mean is that a mental step can be used to modify a physical step to produce a new result. Diehr is the best example of this that I know.

    In contrast, Mayo ended in a mental step, the step of knowing what to do based on knowledge and data. That is exactly the kind of mental step which accords no patenatable weight. If the other steps in Mayo had been new, the present of the post mental step would have been explanatory in nature. But the others steps were "conventional." The whole of the claim's patentability reseted on this mental step.

    Now the cited basis of the SC was LON. Still it is evident that the result would be the same if the final knowing would be something in the business field, just as one example, or knowing where to drill, after looking at seismic data or X rays of someone's teeth in an second.

  70. 206

    Read the case – the rant agains software.

    Ned, this newfound ignorance of yours is tiring. We have discussed these matters several times and now you seem to want to bog down in matters that should be crystal clear.

    Why are you stalling?

  71. 204

    Ned,

    Your post here is some serious dust-kicking on a point I have already conceded: patents are not allowed on claims composed ENTIRELY of mental steps.

    But by trying to divert attention to this, you have FAILED to address the actual issue under consideration.

    Please stay focused and out of the weeds. Everything I have said has been accurate.

  72. 203

    Example of a mental step? Any step in mentally solving any math problem, or with the aid of pencil and paper to record intermediate products.

    A step of determining the beauty of an object.

    A step of imagining something.

    A step of being "satisfied."

    A step of determining time by counting.

    A step knowing what to do or not do based upon education, knowledge and data. This is distinct from actually doing something.

    And the beat goes on.

  73. 202

    Ned: “You seem obsessed with wanting to patent mental step”

    Ned, can you please provide an example of a mental step? Serioulsy.

  74. 201

    The statement in Lowry is meaningless bro, when the PTO “considers” claim limitations it nevertheless not bound to give all claim limitations patentable weight. We consider all limitations, but some limitations do not make the cut in terms of actually patentably distinguishing. Everyone knows this, Lowry was just restating the process the PTO always blatantly uses unless someone simply misses a limitation which happens, but is simply human error.

  75. 199

    Les, that was a problem in Benson, of course. The Supreme Court determined that using a computer to calculate the abstract method without using the results for anything new and useful was essentially the same thing as a patent on the abstract method per se.

  76. 195

    anon: “MoT is a clue. Not even THE clue. It remains neither necessary, nor sufficient. In other words, it is not a test, because what it means by “failing a test” does not apply.”

    Ned:

    I am going to agree with anon on this. For example, if the Examiner rejects your claims for “failing” the MoT then you have a slam dunk reversal on appeal. MoT is not a test and can’t be used to reject.

  77. 192

    Anon, I think the MOT is a viable test which, when properly applied, will tell us whether the claim is eligible. What the Federal Circuit did in Prometheus made a mockery of the test, because they applied the transformation part to the old elements that did what they always have done. The Supreme Court never suggested that this was a proper construction of the MOT test, which from the beginning was looking to whether the claim produced a new result.

  78. 191

    anon, and just where did you get the authority to tell posters here on Patently-O what they can do or cannot do, what they can say or cannot say? Who appointed you God or Emperor?

  79. 190

    It is mutiny if a judge refuses to follow authority. The proper way of handling things is to follow the authority and question it in comments, or file a concurring or dissenting opinion.

  80. 189

    Ah well, no one ever admits they are wrong on the internet. The best one can hope for is the tanking of which you speak.

    It appears from their silence that we have achieved said tanking.

    We Win!

  81. 188

    Les,

    I was trying to maintain separation of that argument.

    Quite frankly, it is more than Ned can handle, and he needs to understand that his improper obsession with MoT and what the true current legal understanding of mental steps as actual steps in a process claim are first, before we broach software. We are on the edge of his third party interests, and he may tank the discussion at any moment if he recognizes that he is on a path he cannot complete.

    I would also advise you to use the word “run” carefully. Ned has a habit of misconstruing that word.

  82. 185

    I meant what I said.

    Please stop trying to rephrase what I am telling you.

    The mental step is still a step. That it modifies another [Ned Canard omitted] step is significant (drop the physical canard, please), but this is evidence of nothing but the fact that the mental step is integrated into the claim as a whole.

    I have already granted that the claim as a whole cannot be ALL mental steps – that is simply not at issue here.

  83. 183

    The bad dicta from Douglas in Benson (per my 6:10 PM comment), and then in addition, the items per the Rader link.

    I do not understand why you are now confused. Are you trying to follow only be email again? (that has often not worked for you in the past)

  84. 182

    electrical wave on a wire…?

    You are getting close, but you are still captured by your false obsession with MoT.

  85. 181

    Is the sine wave on a view screen something physical? What if the item was directly lightwaves, as opposed to a viewscreen?

    Your “physical” obsession is a carryover from your false understanding of MoT.

    Please update your understanding according to current law and modify your posts accordingly.

  86. 180

    Ned,

    Stop trying to rephrase what I say. MoT is a clue. Not even THE clue. It remains neither necessary, nor sufficient. In other words, it is not a test, because what it means by “failing a test” does not apply.

    Any other spin you attempt is (rightfully) rejected.

  87. 179

    I asked for the claim and the application of your arguemnt to the claim.

    I expressly did not ask for your “interpretation” of the rest of the decision.

    Sorry Ned, but I do not put any stock in your interpretations, as they are tinged with third party interests.

  88. 177

    Anon, which you mean to say is that the presence of mental steps in claims does not make them ineligible. In order to provide patentable weight however, they must modify something physical. The new, modified physical step is what is significant.

  89. 171

    Anon, perhaps you should read the rest of the opinion because the dots and dashes were marked by the physical apparatus onto moving strips of paper. This is what was claimed in this is what the Supreme Court held was covered by the fifth claim.

  90. 170

    Ned,

    As I posted yesterday, the current state of law does include mental steps as legitimate parts of process claims.

    Please note and amend your posts accordingly.

  91. 169

    101, the courts will also consistently held a mental steps are not process steps. A method that involves manipulation of mathematical representations of value, quantity, price, risk, and the like are not process steps.

    Add to a method that calculates these things conventional data-gathering, or using conventional tools to perform the calculation, adds nothing of patentable significance, at least according to Benson.

    Where does that leave us? The new math has to be applied to produce something new and useful. That is exactly what Benson said.

    Of course, mental steps alone cannot produce something new. They have to modify something physical.

  92. 167

    Your position is that it’s a law you don’t like

    That’s not his position.

    Please don’t misrepresent his views.

  93. 166

    Les,

    I am not bothered by typos.

    This isn’t a court after all, and ethics are not impinged with typos.

  94. 165

    My position is and has been that it is only judicial activism, over interpretation and nonsense that excludes them and that they are included by 101.

    Your position is that it’s a law you don’t like, but the Supreme Court’s position is that it’s a law.

    Good luck with your protest.

  95. 164

    We were not discussing whats patentable.

    We were discussing whether 101, on its own, includes “laws of nature”, mental processes etc.. as patentable subject matter. My position is and has been that it is only judicial activism, over interpretation and nonsense that excludes them and that they are included by 101. As an example, I showed that the alleged law of nature E = mCC represents a useful process and therefor is included in 101.

    You can argue that E = mCC is not useful if you like. But, that argument would be abstract and should not be given and persuasive weight. :-p

  96. 163

    The were motivated to move because someone … designed and built a nuclear reactor,

    There you go. That’s the useful and patent-eligible invention.

    Just because someone applies math in an actual useful device, that doesn’t mean you can patent the math. I thought you guys would know that, since you’re such big fans of Diehr.

  97. 161

    Les,

    You made two errors:

    You assumed that IANAE cared that you were attempting to make an adult comment.

    You were at all impressed with IANAE to begin with.

  98. 160

    The were motivated to move because someone multiplied those numbers together and designed and built a nuclear reactor, boiler, turbine and generator accordingly.

    The other 75 % were motivated by heat generated by fossil fuels.

    I’m now less impressed with your schooling than I was.

  99. 159

    25 % of the electrons that were inconvenienced in the creating of this post were motivated to move by that processes.

    The electrons were “motivated to move” because you multiplied some numbers together? Were the other 75% smart enough to figure out on their own how fast they should be moving?

    And all this moving happened because you calculated their rest energy?

    I’m impressed. You must have attended at least two or three top-rated engineering schools.

  100. 158

    oh….and I would argue that it is a useful process since 25 % of the electrons that were inconvenienced in the creating of this post were motivated to move by that processes.

  101. 157

    They are included in the statue.

    E=mCC represents a process and I use it as shorthand for such.

    A method for determining an energy equivalent of an object comprising;

    determine the mass of the object;
    multiply the determined mass by the speed of light;
    multiply the product of the mass and the speed of light by the speed of light again, thereby determining the energy equivalent of the object.

    a process…

  102. 156

    About what? How ignorant and lazy you are?

    And instead of chasing you around for another week to get you to realize how wrong you were (and how right I am), here is the actual pincite (not page cite):

    This approach, however, would make the “law of nature” exception to § 101 patentability a dead letter. The approach is therefore not consistent with prior law.

    132 S.Ct. 1289, 1303 (emphasis added)

    LOL – MM accuse others of being ignorant and lazy when he is both FAIL

    btw – this too is archived.

  103. 155

    MD,

    You actually raise a good point or two.

    1) How can you determine if what is claimed is patent eligible, unles you first determine exactly what is being claimed (claim construction)? And how do you determine what is being claimed, unless you consider all the claim limitations?

    2) There is a difference between patent eligibility and patentability.

    I have actually addressed both of these thoughts in the past, highlighting the fact that the an incorrect question is often asked (even by Prof. Crouch), as well as defusing the purposeful obfuscation between discussing eligiblity on a category level (v. categorically) and at an individual claim level.

    Those willing to understand, embrace my posts.
    Those not willing, don’t.

  104. 154

    Somewhere up above, somebody quotes from Lowry:

    “FYI … the citation from Lowry is “[t]he Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art.””

    My question: when discussing 101 eligibility, can we dismiss Lowry as having no relevance whatsoever? Or does “the prior art” have a role to play, in 101 examination?

  105. 152

    NWPA,

    Learning to obfuscate rarely beats the other side.

    That’s a lesson constantly being ignored here at Patently-O.

  106. 151

    I’m happy to discuss any of the above, at length, if that’s what you want to discuss.

    You’ve made this offer in the past, and I countered with a better offer of dealing with the actual true drivers of poor quality blogging: mischaracterizations of law and others’ posting, spinning of facts, strawmen, unearned insults and the like. You know, your repertoire of posting tactics that swim in intellectual dishonesty.

    Rather than dealing with any if these true problems, you would rather [shrug] and stand by and continue your vacuous flailing because on the rare occasion you venture into substantive legal grounds you self-defeat gloriously and destroy your own agenda.

    Your duplicity is well archived.

    MM spin FAIL

  107. 150

    Yes, I went to school when people wanted to learn to understand not learn how obfuscate to beat the other side.

  108. 149

    Let’s revisit.

    The discussion began by talking about computer-implemented inventions. In that context, I said all limitations must be given patentable weight. FYI … the citation from Lowry is “[t]he Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art.”

    “Your failed attempt to pretend that (1) we were talking about the holding of In re Lowry and (2) that I somehow confused the case names is just that: a failed attempt.”
    What is it about my FIRST POST that “[a]ll limitations must be given patentable weight (In re Lowry)” that made you think we were not talking about the holding of In re Lowry? Try to stay focused.

    You wanted to SHIFT the conversation to the printed matter doctrine (e.g., Ngai). In my SECOND POST, I stated that the printed matter doctrine didn’t apply to computer-implemented inventions and reliance upon Ngai was misplaced. Try to stay focused.

    “Of course it has ‘factual relevance’ because we’re talking about contexts in which language recited in claims should be ignored.”
    It doesn’t have factual relevance to computer-implemented inventions. See In re Lowry. Try to stay focused.

    “We’re talking about changes in how the law is to be applied after, say, the Supreme Court gets hold of the case.”
    When is that going to happen? CLS Bank doesn’t even involve the printed matter doctrine. Try to stay focused.

    “You might wish to refresh your memory and revisit my discusion of the Federal Circuit’s Prometheus decisions on this blog”
    I told you before, I don’t care about that decision. Again, you are attempting to SHIFT the conversation.

  109. 148

    Meanwhile, every Justice agrees that the case law can and does change in response to unwelcome and unpredicted circumstances “on the ground”, so to speak.

    That’s a problem in patent law (as opposed to common law), wherein the constitution actually provides for which branch of the government to have authority to write patent law (and it is not the judiciary).

    And as I have pointed out, the Supremes are very careful to cloak their law writing in the implicit words already used by the branch of government with constitutional authority.

    This is a primary reason why Stevens lost his majority writing position in Bilski. He would have outright rewritten section 273.

  110. 147

    Also think about the method of presenting an aliased image on a screen.

    Or a method of encrypting data in an electronic transmission.

  111. 146

    Given the ancient, well-understood and ubiquitous functionality of computers,

    Tell me MM, are you using your originally bought computer from the 70’s without any upgrades?

    Really?

    Funny that, the patent law in this reality allows patents not only for machines, but for improvements thereof.

    MM legal logic FAIL

  112. 145

    The same hacks made the same…

    First he asks for SC cites, and then when given, he calls them hacks…

    MM legal logic FAIL

  113. 144

    I would recommend the following, for starters: if a chemical-implemented method recites only old steps (e.g., a. carbon atom; b. hydrogen atom (etc); c existing atomic and/or molecular bonding, then the “invention” is simply an abstraction

    MM Legal Logic FAIL

  114. 143

    6,

    Remember that speeding ticket you once had? You should revisit the case and use the MM-there-is-no-Supreme-Court-ruling-therefore-that’s-not-REAL-law argument.

    If the court laughs at you, you could pretend just like MM that the laughter is with you rather than at you. Then you can tell them that this legal theory is archived at Patently-O, and that everyone always takes MM seriously, that blatant lying in order to bolster your particular agenda is perfectly fine (but you might want to ask the judge to step out of court for that, you know, just to make sure that such statements with your ethical switch in the off position won’t get you into too much trouble).

    MM lesson FAIL

  115. 142

    That’s just it Ned – a mental step is a process step. That is the current state of law regarding mental steps in perfectly legitimate and eligible claims. Now granted, a claim cannot be composed ENTIRELY mental steps, but that’s not the same as non- physical steps, is it (think Nuitjen)?

  116. 141

    Ned’s a historian when he wants to be. It really is a shame he is so constrained by posting for third party interests, as that forces him to tank discussions just as they get interesting.

  117. 140

    LOL! Least. Self-aware. People. Ever

    Coming from the person who most self-defeats on this blog, that’s a pretty self-unaware accusation to make.

    Outside of your little circle, do you recognize the absolute vacuum of your integrity? Just [shrug] and stand by to affirm.

    LOL

  118. 139

    Justifiable hostility is a virtue – not a vice. Another name for it is Courage. It also goes by the name of Integrity.

  119. 138

    Ned, you are kicking up dust again. Treating dicta – and especially bad dicta – for what it is worth (especially by someone who knew the law far better than the Supremes since he helped write it) is not “defiant.”

    It’s called upholding the law.

    Further, in the article you provided a link to, Rader is absolutely correct in everything he said (not just eBay). That too is not defiant. Telling the emperor that he really isn’t wearing any clothes is not “defiant.”

  120. 137

    The making is the process described. It produces something new, physically new.

    Process is not making – you are conflating a result of a process and the process itself. Let’s not try to kick up dust with semantic word games. You will not prevail attempting that with me.

  121. 136

    It is not the exclusive test, you mean.

    No. I meant exactly what I said. Why the urge to restate what I said?

    Besides, it is not a test. It is a clue (it is not even THE clue).

    It is neither necessary, nor sufficient.

  122. 135

    Fifth. I claim, as my invention, the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

    What is the “physical” in this system claim? (Remember to not base your answer on intended purpose) what is “the claimed machine?” What is the “physical transformation?”

    If I were to “telegraph” to you verbally: dot dot dot dash dash dash dot dot dot, would I be infringing? Would even the addition of the use of pencil and paper matter (careful with your answer on that one)?

  123. 134

    If you’re suggesting that the “dead letter” comment isn’t in the section I’ve identified and discussed innumerable times since the case was published, then you need to have your mommy read the case for you.

    Talk about dissembling. But then again this is MM, the master of accuse others of what he does.

    I notice that you try to turn almost a week’s delay into finally providing the page cite into a “I’ve done this countless times” blatant lie.

    Now that you have finally got the decision out, we can discuss the actual substantive reason why that particular “page cite” was being discussed.

    Do you know why? Do you have the nuts to admit that you were wrong about what the dead letter comment was actually to? Remember, the pages are archived. This should be relatively easy for you. Now let’s see that precise analytical power in action: what incorrect reference did you use the dead letter comment to, and who corrected you?

    LOL – MM self-defeat again.

  124. 133

    Let’s be precise MM

    About what? How ignorant and lazy you are? Or what a dishonest dissembling hack/troll you are? How many times you used sockpuppets to create the impression that you were “battling” a “vocal minority”? Your inability to write in English without making a fool out of yourself? Pick one. I’m happy to discuss any of the above, at length, if that’s what you want to discuss.

    If you’re suggesting that the “dead letter” comment isn’t in the section I’ve identified and discussed innumerable times since the case was published, then you need to have your mommy read the case for you.

  125. 132

    Les:Hey! What am I? Chopped Liver?

    Well I have certainly enjoyed seeing you make chop liver out of Ned, and learned some things while watching. Who said this blog can’t be educational and entertaining?!?

  126. 131

    Ned: “How does one “make” a business method?”

    Ned, you do not make a business method so much as you “use” it.

    Besides, anon’s point above was that the courts have HELD that there is no technology requirement in US patent law.

    Would you address that please?

  127. 129

    Well, sure you do because I’ve given to you before.

    Ho_ly CRRP – now we jump to the “I’ve told you before” B$?????

    How F lame.

    Let’s be precise MM – the dead letter comment – Let’s see how “precise your analytical skills” are and remeber – these pages are archived.

    MM analytical skill FAIL

  128. 124

    Machine or transformation is not the law. See Bilski.

    Thus, your post at 6:29 PM is simply not correct.

  129. 123

    I still don’t have my page cite from you that you voluntarily offered to provide.

    Well, sure you do because I’ve given to you before. I analyzed the decision in detail immediately following its publication. I paid careful attention to the section regarding the government’s proposed non-101 “solutions” to the problem and the Supreme Court’s response at that time, and subsequently. Maybe you should ask one of your sockpuppets for the cite? ;)

    Or you can just refresh your memory again: slip op pages 20 (last paragraph)-22. It’s a quick read. I’m not going to translate every sentence for you although you might consider paying someone to do that.

  130. 122

    “Fifth. I claim, as my invention, the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

    The infringer used a difference code, but also used dots and spaces. The Supreme Court then said this:

    “The Columbian (O’Reilly’s) Telegraph does not profess to accomplish a new purpose, or produce a new result. Its object and effect is to communicate intelligence at a distance, at the end of the main line, and at the local circuits on its way. And this is done by means of signs or letters impressed on paper or other material. The object and purpose of the Telegraph is the same with that of Professor Morse.
    463
    Does he use the same means? Substantially, we think he does, both upon the main line and in the local circuits. He uses upon the main line the combination of two or more galvanic or electric circuits, with independent batteries for the purpose of obviating the diminished force of the galvanic current, and in a manner varying very little in form from the invention of Professor Morse. And, indeed, the same may be said of the entire combination set forth in the patentee’s third claim. For O’Reilly’s can hardly be said to differ substantially and essentially from it. He uses the combination which composes the register with no material change in the arrangement, or in the elements of which it consists; and with the aid of these means he conveys intelligence by impressing marks or signs upon paper—these marks or signs being capable of being read and understood by means of an alphabet or signs adapted to the purpose. And as regards the second patent of Professor Morse for the local circuits, the mutator of the defendant does not vary from it in any essential particular. All of the efficient elements of the combination are retained, or their places supplied by well-known equivalents. Its organization is essentially the same.

    464
    Neither is the substitution of marks and signs, differing from those invented by Professor Morse, any defence to this action. His patent is not for the invention of a new alphabet; but for a combination of powers composed of tangible and intangible elements, described in his specification, by means of which marks or signs may be impressed upon paper at a distance, which can there be read and understood. And if any marks or signs or letters are impressed in that manner by means of a process substantially the same with his invention, or with any particular part of it covered by his patent, and those marks or signs can be read, and thus communicate intelligence, it is an infringement of his patent. The variation in the character of the marks would not protect it, if the marks could be read and understood.”

    It is clear that patent was not for the particular code, but for the use of marks and spaces, recorded for interpretation.

    link to bulk.resource.org

  131. 120

    Once again – you have assumed that which you need to prove.

    The Category process simply is not subservient to the hard categories.

    Are you truly blind to this?

  132. 119

    but for the fact that Rader has a job.

    I bet Rader would not violate posting rules about third party interests.

  133. 118

    Ned,

    Let me reintroduce you to the very source that you yourself provided in a discussion highlilghtin the importance of distinguishing dicta from holding (and not letting dicta be ASSumed to be law).

    Do you remember that?

  134. 117

    a single act

    Nice non-sequitur – you assume the very thing you need to show, that is “act” is “physical”

    In other words, the point in contention was not “single” (it is beyond child’s play to divide any single act into multiple acts).

  135. 113

    anon, Douglas wrote for the Court, in unanimous opinions for G's sake.  The people who were out of step were guys like Rich who defied the court.

    And now we add Rader who publishes his defiance.  (Although I agree with  his remarks on eBay.)

    Then we have you.

    You sound so much like Randall,  that I would think you were the same persons but for the fact that Rader has a job.

  136. 112

    You understand that these threads are archived so anyone can see what actually went down?

    Do you, MM?

    Do you really?

    Then please square your blatant lies, or better yet, engage in discussions with at least a basic level of intellectual honesty. You ask for Supreme Court blessing, knowing full well that law simply does not require such to be the law that controls.

    You do not because you cannot.

    Your [shrug] and stand by your professed willingness to post in complete disregard of controlling law and actual facts, is well documented.

    Archived and ability to be witnessed:
    ONE MASSIVE MM SELF-DEFEAT

  137. 109

    haha [The Federal Circuit] is the law of the land … deal with it.

    All 9 Supreme Court Justices just called on the share line. They want to talk to you after they stop laughing their a–es off.

  138. 108

    Can you provide a citation from the Supreme Court so holding that Computers and software programs ARE a Court created judicial exception, (derived implicitly from the Congressional Statute of 101) ?

    The same hacks made the same “provide a citation” “argument” when defending the claims at issue in Prometheus.

    Yes, there is such a thing as stare decisis. Thank you high school civics class brown noser!

    Meanwhile, every Justice agrees that the case law can and does change in response to unwelcome and unpredicted circumstances “on the ground”, so to speak. Maybe the Supremes will do something significant when Columbian drug lords start patent-trolling US companies with claims to computer-implemented j–k.

  139. 107

    Vacuous – and unfounded.

    Funny, I still don’t have my page cite from you that you voluntarily offered to provide.

    Why is that?

  140. 104

    Ned – my question to you was how was any method “made?”

    You are once again going off into the weeds with your anti-BM proclivities.

    Stay on point. Do not attempt to make up Ned-law. As Justice Stevens failed to do, so too will you.

    (as a side note, I wonder if “proclivities” will re-awaken my Conscience, and if so, will my Conscience return with MM in tow and my long lost request for a page cite)

  141. 103

    There is defiance of the law alright – just not by whom you might think Ned.

    Revisit the loathsome dicta by Douglas (possibly the most anti-patent Justice ever) in Benson. Realize that as dicta, Rich was perfectly rightous in trouncing that dicta and not following it. Then realize that as part of that evolution, that Chakrabarty was birthed.

    We all know how you have failed to fully appreciate that decision in the past.

  142. 102

    the pro patent professionals have come out in force, with their best intellectual armor,

    LOL! Least. Self-aware. People. Ever.

    link to youtube.com

    a who’s who of the patent and innovation communities don black-ties (for the men) and elegant gowns (for the ladies). … The meal was a fabulous shrimp appetizer, followed by filet mignon and an incredibly rich chocolate cake and ice cream for desert. The wine flowed throughout the evening, and everyone had a great time.

    I guess that’s an ideal time for the servants to polish all that armor.

  143. 99

    LOL – It’s one section (not even separated into distinct paragraphs), and is read together – you are applying the evils of dissection now to the law itself.

    I have witnessed your statutory constructions before. They were abominable then, and they have not improved.

  144. 98

    Go cry to Congress

    Suckie the Suckpuppet is back!

    Looks like anon took a little trip to Cuckoo McPatentland again and returned with a few new “friends.”

  145. 97

    I explicitly cited In re Lowry and you came back with Ngai.

    Ah, yes, another stain on human discourse calling itself “haha”, lovin’ patents too hard, and engaging in half-witted rhetorical tricks because it has no bullets.

    You understand that these threads are archived so anyone can see what actually went down? Let’s revisit:

    You wrote: ” All limitations must be given patentable weight (In re Lowry).”

    Regardless of whether you found that quote in a magazine under your bed or some worthless Fed Cir case, the quoted proposition is false. That was what I explained to you. Your failed attempt to pretend that (1) we were talking about the holding of In re Lowry and (2) that I somehow confused the case names is just that: a failed attempt.

    All claim “limitations” are not given patentable weight. That’s an accurate statement. Can the Federal Circuit screw up very basic facts like this? Yes. They do it regularly.

    he printed matter doctrine … which has no factual relevance to the issues we are addressing.

    Of course it has “factual relevance” because we’re talking about contexts in which language recited in claims should be ignored. We’re not talking about your interpretation of how the law must be applied by some chickens–t judge in Alabama who’s afraid of being “overturned”. We’re talking about changes in how the law is to be applied after, say, the Supreme Court gets hold of the case. So you are wrong again: the so-called “printed matter” doctrine does have factual relevance to the discussion. Let me know the Supreme Court case which discussses that doctrine in detail, including its exceptions, and approves of it. How many current Federal Circuit judges were on the bench when your beloved “exceptions” to that doctrine were created?

    haha: it would be much easier for me if you just did not read the case law

    Fixed for accuracy.

    I read the case law closely and I’m very familiar with many of the Federal Circuit’s greatest hits and misses. You might wish to refresh your memory and revisit my discusion of the Federal Circuit’s Prometheus decisions on this blog. Then you can discover again how incredibly profoundly wrong your fellow Diehrbot hacks were about what people (including judges) are allowed to do when analyzing claims.

    I want to return to your strange statement about floppy disks with instructions being somehow outside the scope of the printed matter doctrine. I suspect you must have misunderstood me. If not, I’d like a bit more explanation (I know — hard work for you!). I’m talking about the following claim:

    1. A composition comprising an old kit and set of novel, non-obvious instructions for using the kit, wherein the instructions are provided on a floppy disk.

    Are you telling me that this claim is novel and non-obvious by virtue of the new instructions included with the kit? Let me know. That’s what you seem to be suggesting.

  146. 96

    Night, why don’t you give me one example of a non physical application that has every passed muster of the courts.

    I give you one: State Street Bank. They justified the patent because it produced a new price.

    Now, tell me what the Supreme Court said about THAT?

    Flook produced a number. What happened?

    Bilski manipulated numbers representing risk.

    In contrast, the numbers of Diehr were used to open the mold, a physical step. The SC approved.

    You quip only shows your continued defiance of the law.

  147. 95

    “Actually, you will find in Benson the opposite (you know, the quote that Ned refuses to even acknowledge).”

    I just found it in Newman’s dissent in Bilski. And since Bilski’s MoT and rationale was overruled as the sole test, 9-0 by the Supreme Court, it is indeed very powerful!

    “Nonetheless, this court now adopts a redefinition of “process” in Section 101 that excludes forms of information-based and software- implemented inventions arising from new technological capabilities, stating that this result is required by the Court’s computer-related cases, starting with Gottschalk v. Benson, 409 U.S. 63 (1972). However, the Court in Benson rejected the restriction that is imposed today:

    This court’s new definition of “process” was rejected in Gottschalk v. Benson
    In Benson the claimed invention was a mathematical process for converting binary-coded decimal numerals into pure binary numbers. The Court explained that a mathematical formula unlimited to a specific use was simply an abstract idea of the nature of “fundamental truths,” “phenomena of nature,” and “abstract intellectual concepts,” as have traditionally been outside of patent systems. 409 U.S. at 67. However, the Court explicitly declined to limit patent-eligible processes in the manner now adopted by this court, stating:
    It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.
    Id. at 71. The Court explained that “the requirements of our prior precedents” did not preclude patents on computer programs, despite the statement drawn from Cochrane v. Deener, 94 U.S. 780, 787-88 (1876), that “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” Benson, 409 U.S. at 70. Although this same statement is now relied upon by this court as requiring its present ruling, maj. op at 13 & n.11, the
    2007-1130 5
    Court in Benson was explicit that: “We do not hold that no process patent could ever qualify if it did not meet [the Court’s] prior precedents.” The Court recognized that Cochrane’s statement was made in the context of a mechanical process and a past era, and protested:
    It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.
    Benson, 409 U.S. at 71. Instead, the Court made clear that it was not barring patents on computer programs, and rejected the “argu[ment] that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ‘different state or thing’” in order to satisfy Section 101. Id. Although my colleagues now describe these statements as “equivocal,” maj. op. at 14, there is nothing equivocal about “We do not so hold.”

    Take that 6, Ned, MM, and all you anti software anti patent bigots!

    Bring on Alice!!

  148. 94

    I have replied elsewhere, but patents are awarded for machines, manufactures, processes and compositions, not for laws of nature, natural phenomena or principles in the abstract. There is a difference.

  149. 93

    Les, agreed. You discover a new law or phenomena of nature.

    But the patent is on the application of it to a new and useful end, namely, a machine, process, article or composition. The LON itself cannot be patented in the abstract.

    Les, may I politely urge you to one more time re-read Le Roy v. Tatham and O'Reilly v. Morse. You seem to get it, almost.

  150. 92

    "Flash of Genius" was more about how an invention was made. That is part II of 103, not part I. Part I was, according to Graham, a codification of Supreme Court case law.

  151. 90

    I've already replied, but I need to emphasize that principles in the abstract, laws of nature and natural phenomena are not "excluded." They are not included in the statutory grant of power — only new and useful machines, processes, articles or compositions may be patented.

  152. 87

    “Section 101, or its analogue, has been in the statute from its very beginning.”

    Right, and it does not denigrate mental steps, laws of nature, natural phenomenon, signals, transient inventions or “abstract ideas”

    All of that has been imagined by a judge:

    35 U.S.C. 101 Inventions patentable. – Patent Laws

    35 U.S.C. 101 Inventions patentable.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    link to mpep.info

  153. 85

    You don’t discover a new machine, unless Santa left it under the tree for you. You invent a new machine.

    You “discover” the cure for cancer, which the anti-patent crowd would say was a natural phenomenon, always there, just waiting to be found or you discover that E = mCC.

    That there were two original 101 cases that made up rules that were not in the constitution or the statute so the court could try to justify the decision it wanted to reach, in-spite of the law, does not change the nature of what they did.

  154. 84

    Excellent post anon. Since Ned fancies himself a patent historian, I am sure he will appreciate it.

  155. 83

    As far as I know no Court or Congress has ever said there is even a technology requirement for any section of the patent statute.

    Quite in fact, the courts have HELD that there is no technology requirement in US patent law.

  156. 82

    Ned,

    What was that quote about “principle” being one of the most misused (and misunderstood) words in all of patent law?

    Also, it is important to keep in mind that while Congress may have punted once upon a time to fully write the law (and leave it up to the Judiciary to define “invention,” that ‘gift’ was revoked in 1952 when the Court was deemed to be abusing that gift and making it too difficult to obtain patents (the related Flash of Genius saga). Congress at that time purposefully exchanged “invention” for non-obviousness and inserted 103.

    The Court, however, could not keep their fingers out of the patent pie and “invented” the implicit limitations of 101.

  157. 81

    Ned, your (historical) anti- process bias is showing.

    the invention must be able to be made

    How do you “make” a process?

    As I have noted before, the statutory category is “Process,” and not “Process to make one of the other Statutory Categories.”

    Once again, you are attempting to make something fit that will not. The four statutory categories are all on equal ground. The Process category (with all due apologies to Justice Story), is not subservient to or lesser than the “hard goods” categories.

  158. 80

    “Where does this get us when business methods are the subject of the claim? They have to use technology in some new way to move into patentable sphere. That to me is the key.”

    There are more than a few problems with this Ned.

    Methods for conducting business are not Laws of Nature, Natural Phenomenon, or especially Abstract ideas.

    Methods for conducting business exist in the real world.

    Methods for conducting business can be performed without any technology whatsoever.

    As far as I know no Court or Congress has ever said there is even a technology requirement for any section of the patent statute.

    So Ned how do you reconcile your statement, business methods have “to use technology in some new way to move into patentable sphere”, with the above points of fact?

  159. 79

    Les, but discovery is of a new machine, process, article or composition; not of a new principle, LON or natural phenomenon.  There is a distinction.  Section 101, or its analogue, has been in the statute from its very beginning.  Further, the two original "101" cases (Le Roy v. Tatham and O'Reilly v. Morse) also relied upon the statutory requirement to describe how to make and use the invention.  This is where they get that to be patentable, the invention must be able to be made, and it is for this that the patent is awarded.  Useful applications – physical applications.  Not just the principle (Pythagorean theorem) without any particular physical application of it.  

  160. 77

    The problem is that none of those excluded categories is excluded in the statute. They were each made up by some judge as an excuse to arrive at the result desired by said judge in particular cases and have been warped, twisted and expended upon ever since.
    I’m surprised flight wasn’t declared a natural phenomenon to render the Wright flyer unpatentable.
    There is no requirement for physicality.
    By the way, the statute specifically includes discoveries in the list of things that are patentable. What is there to discover but natural phenomena? Is the anti-biotic effect of penicillin a natural phenomenon or super natural?

    The fact of the matter is in each determination of “abstractness” made by the courts, the court concluded that the claims were abstract because they were obvious. If abstract means obvious, then 103 is the proper test.

  161. 76

    some new physical application is required

    (sigh) – the return of yet another canard.

    with the new music

    ARRRRRGHH – an even worse canard – the purposeful conflation of non-useful arts. Ned – please stop.

  162. 75

    Kudos to Anon, NWPA, EG, and all the rest for the educational, informative, and highly on point post in this thread. It is heartening to know the pro patent professionals have come out in force, with their best intellectual armor, in the dawn of a very important and strategic battle for the rights of “Actual Inventors” everywhere!

  163. 73

    You really expect MM to answer?

    I cannot even get him to give me something he offered to give me. The black hole even sucked up my “Conscience.”

    No actual answers will be forthcoming from MM. It’s not his “style.”

  164. 72

    Actually, you will find in Benson the opposite (you know, the quote that Ned refuses to even acknowledge).

    The merry-go-round rides are free today. all day.

  165. 71

    “By the way, I went to 2 of the top 5 rated engineering schools in the country, ”

    You always leave out that this was during the dark ages you dinosaur.

  166. 70

    NWPA,

    I think that you are assuming that IANAE doesn’t already know that he is wrong and that he is merely trolling you.

    He does like Calvinball spikes to the face though.

  167. 69

    “If anyone is confused as to why that 9-0 decision was reached, just let me know. It’s pretty simple to follow the reasoning.”

    Hello MM:

    Can you explain the Courts use of “integration” from the Prometheus case?

    Also can you explain why the USPTO relies extensively on Prometheus use of “integration” in the Offices Official Guidance for 101 statutory subject matter?

    Finally, if you can, please reconcile the Prometheus holding and teaching from that case with the Courts 101 precedents, in particular Diamond v Diehr.

    Thank You

  168. 68

    Les, the problem is that one cannot claim principles, Laws of Nature or Natural Phenomena in the abstract. Some inventive application, some new physical application is required. Funk Bros and Flook both require the application itself be more than trivial.

    Novelty analysis is useful for identifying the substance of what is being claimed, as in, the player piano (old) in combination with new music (new). The question then becomes whether the new music produces something new physically, something inventive?

  169. 67

    It’s important to recognize that computers are different from other machines. They have one purpose

    WRONG. Right from the get-go.

  170. 66

    Earlier occasions have stalled on the defining of “technical.”

    Surprising, given that that shoud be pretty interesting. Perhaps even laughable.

  171. 65

    In Morse, it was the apparatus of adapting voltage changes to repeaters or physical marks or signals on a moving tape.

    Um, guess again – that wasn’t only it – check out Morse claim 5 (drop the “applied to something physical” canard, please).

    Your key is not the key, not even a key.

  172. 64

    Thank you for this informative and education contribution. I shall be reading and studying this in it’s entirety.

  173. 63

    “Do favorite this post for next year after Alice makes a trip to the supremes who happen to say the exact opposite of what you just said regarding softwarez.”

    Can you provide a citation from the Supreme Court so holding that Computers and software programs ARE a Court created judicial exception, (derived implicitly from the Congressional Statute of 101) ?

    ::Silence::

    I rest my case

  174. 62

    MD, I think the way the courts state the issue is confusing. The original statement of the problem from Le Roy v. Tatham and O’Reilly v. Morse, discussing the Nielson case from England, made the point that principles in the abstract could not be claimed. Those case made analogies to laws of nature and natural phenomena — things that exist but are discovered, like the New World was once discovered.

    Morse made the point that practical applications, as in the Nielson case, of the principle were the stuff of patents. In the case of Nielson, it was the novel arrangement of a new blast heater. In Morse, it was the apparatus of adapting voltage changes to repeaters or physical marks or signals on a moving tape.

    Benson observed that performing a mathematical calculation on an old GP digital computer was essentially a patent on the mathematical algorithm itself, the apparatus being old and well known.

    Mayo observed that using a old test to develop old information that could be interpreted according to a newly discovered correltion was not enough.

    Funk Bros and Flook, both said that the application itself must be inventive, something new.

    Thus, if the only thing new is the principle or LON, and it is not applied to something physical to produce a new result, the claim is ineligble. Contrast Flook with Diehr.

    Where does this get us when business methods are the subject of the claim? They have to use technology in some new way to move into patentable sphere. That to me is the key.

  175. 61

    Yes, I read you MM. We have debated this topic on earlier occasions. But just for the interest of any new readers, I want to mention that it is the obviousness filter (as opposed to the eligibility filter) that at the EPO weeds out the stuff that is not fit for patenting. Europe thinks that to be eligible for 20 years of exclusive rights, new and enabled subject matter has to use technical means to solve a technical problem in a way that isn’t obvious. Other sorts of inspired entrepreneurial creativity don’t count towards patentability.

    Ignorant critics of the EPO are under the misapprehension that nobody can tell them what “technical character” means. However NWPA now tells us here in these columns that an ABA speaker has by now become expert at it. So that’s all right then. Anybody can learn it if they want to.

    An advantage of the EPO way is that it can laugh at irrelevant notions like “abstract” or “dissection”.

  176. 60

    IANAE:

    Your firstly, is a good point. What exactly is the SCOTUS talking about? I don’t think anyone knows least of all the SCOTUS.

    Your secondly is just silly.

    Your thirdly, the SCOTUS says it is abstract, but this has nothing to do with a PHOSITA? How could that be when a patent application is about enabling the claims and claim construction is how a PHOSITA would construe the claim.

    IANAE: for once in your life posit that you are wrong and try to work through this.

  177. 59

    finding the right level of abstraction to work on the problem. Know how to walk up and down the abstraction ladder.

    Firstly, I don’t think that’s the same kind of “abstraction” as we’re discussing under 101.

    Secondly, there’s nothing in patent law to say that everything engineers are taught to do is necessarily patent-eligible.

    Thirdly, as I pointed out just now, the legal question of whether a claim is abstract under 101 is absolutely nothing to do with what an engineer of ordinary skill knows.

    There you go. Three “offenses to patent law” to my one. I wonder how many of the country’s top law schools you had to attend before you managed to escape with a degree.

  178. 57

    IANAE:

    We are taught in engineering school to solve problems by:

    finding the right level of abstraction to work on the problem. Know how to walk up and down the abstraction ladder. Almost all of engineering is about.

    By the way, I went to 2 of the top 5 rated engineering schools in the country, and I was the same thing in both places by many professors.

    It is an offense to patent law not to know this.

  179. 56

    Also, I’d like to add that we’re dealing with the useful arts here bro, not the mamby pamby abstraction arts. There is no justification for not being rather liberal with the exclusion for abstract ideas. If yo sht ain’t well directed to the useful arts then yo sht needs to go downtown.

  180. 55

    “Only for those like you 6 who want a subjective test for what is an “abstract idea,””

    There’s nothing subjective about it brosensky. It is no different than the standard for definiteness used in the courts. As long as you can reasonably construe the claim then it is not indefinite. As long as the abstract idea can reasonably be considered to be an abstract idea then it is. A simple standard, nothing subjective about it. Indeed, evidence could be provided either way to help establish objectivity in any close cases (as if there are any).

  181. 53

    the printed matter doctrine applies … drum roll please … to P R I N T E D matter.

    So if I put the instructions on a floppy disk, the printed matter doctrine doesn’t apply? < ?i>”

    Great example of a post crrp, get caugh tin a blatant lie, run away, and come back and post crrp again.

    Stellar intelelctual honesty here defeated quite simply: THE EXCEPTION TO THE PRINTED MATTER DOCTRINE

    C’mon MM, you have voluntarily admitted you understand this as law.

    Prof Crouch, do we really need to ride this merry-go-round yet again?

  182. 52

    You mean the same 9-0 decision that dais it was not changin any of its precedents and pointed out that the same precedent was most on point, that was also confirmed in a glorious self-defeat post by MM (who didn’t even bother to read the link he posted to),

    That same “9-0 let’s dance a jog – but wait a minute, not in my backyard Baby” decision?

    LOL

    MM Spin FAIL

    (btw, still waiting for you to deliver upon your offer)

  183. 51

    “wishful thinking”

    Seriously MD? Have you bothered to read the decision, or are you purposefully acting like a rube?

  184. 50

    MD,

    Supposedly you have 40+ years of experience in the patent world and this “abstraction ladder” thing is new to you?

    Really?

  185. 49

    Questioner,

    Thanks for confirming that you merely intended to troll.

    Did you read any of my post? Did you read any of Newman’s dissent on page 28?

    Maybe you are one of these people who can complete the very short list of a single modern advanced country that has seen the light and eliminated all IP laws. A question for Questioner: Are you such?

  186. 48

    I see nothing has changed.

    You are correct. MM posts his banal stuff. MM is challenged. MM runs away. Rinse. Repeat.

  187. 46

    “And I suppose you think claims in the form [oldstep]+[newthought] are patent eligible but you’ll never be able to provide me an example of an eligible claim in that form.”
    Dodging the issue I see. I’ve never commented on that issue, and I personally don’t care. Try to focus.

    “The Federal Circuit was (and is) a reliably myopic institution.”
    QQ … it’s the law of the land … deal with it.

    “why is there a printed matter doctrine”
    According to the Federal Circuit in King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. Aug. 2, 2010), “[t]he rationale behind [the printed matter] cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.”

    “I never said otherwise.”
    Sure you did. I explicitly cited In re Lowry and you came back with Ngai. Try to focus my friend.

    “I merely pointed out to you that your broadly stated rule was false”
    Tell that to the Federal Circuit … they are the ones that wrote “[my] broadly stated rule” in the context of computer-related inventions.

    “There are exceptions to the rule”
    The printed matter doctrine … which has no factual relevance to the issues we are addressing. See In re Lowry. Try to focus.

    “if I put the instructions on a floppy disk, the printed matter doctrine doesn’t apply?”
    No …not even close. Read In re Lowry.

    Instead of relying upon your gut feeling as to what the law should be, it would be much easier for you if you just read the case law.

  188. 45

    Something is only abstract if PHOSIT can’t walk up and down the abstraction ladder.

    Something is only abstract if a person in the field can’t point to one thing and say it’s more abstract than another?

    Leaving aside your admission that people actually working in the art are taught in school that some of the things they do are abstract, since when is skill in the art relevant to the abstractness determination?

  189. 44

    Suckie the Suckpuppet is back!

    “shared by many, including many very highly skilled programmers”

    wooo wooo …. very highly skilled programmers agree with you!!!! I take it they are experts in patent law?

    Right. There are only two kinds of people opposed to patenting software. (1) People who know about software who are ignorant about patents and (2) people who know about patents but who are ignorant of software.

    All truly educated people agree with Suckie the Suckpuppet. It has always been thus.

  190. 43

    haha

    Right, except you’ll never even attempt to articulate what the problem is. And I suppose you think claims in the form [oldstep]+[newthought] are patent eligible but you’ll never be able to provide me an example of an eligible claim in that form. I’m very familiar with your kind of “misunderstanding.”

    In re Bernhart, the Federal Circuit in Lowry also stated “[t]he printed matter cases have no factual relevance where ‘the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.'”

    LOL. The Federal Circuit has stated a great many things that have since proven to be a–backwards, unworkable and ignorant. In re Bernhart is a quintessential example of thoughtlessly created and well-abused judicial t—let paper. The Federal Circuit was (and is) a reliably myopic institution and their early attempts to deal with computer-implemented inventions are no exception.

    The question for you and your fellow t–b–gers is: why is there a printed matter doctrine? What is the purpose of the printed matter docrine? I can hold a set of kit instructions in my hand. They are extremely useful and nobody will buy the kit without them. Why discount them?

    That’s Ngai … not Lowry.

    I never said otherwise. Try to focus, friend. Look up that definition of “strawman” again because you misuse the term at the same time you engage in the rhetoric. I merely pointed out to you that your broadly stated rule was false. There are exceptions to the rule because without the exceptions applicants will attempt to protect subjet matter that is not eligible for patenting.

    the printed matter doctrine applies … drum roll please … to P R I N T E D matter.

    So if I put the instructions on a floppy disk, the printed matter doctrine doesn’t apply?

    What about if the only “new” element in a claimed composition or method is an old computer screen with a new drawing displayed on it? Can I protect the new drawing that way? Why not?

    What if the instructions are on paper but according to the method they are ready by a computer, e.g., a robot chef or a robot driver? Does the doctrine apply then?

  191. 40

    “shared by many, including many very highly skilled programmers”
    wooo wooo …. very highly skilled programmers agree with you!!!! I take it they are experts in patent law? “No,” you say? What do they know about 35 USC 101 then? Why would we care what they think? We are talking about interpreting a statute … not rewriting a statute.

    “granting such patents is unnecessary and more likely counter-productive to the promotion of progress in the field of information processing”
    Policy argument …. talk to Congress.

    “The only ‘progress’ being promoted is progress in the art of filing patents so our investor class has something to play with at the Great Casino.”
    QQ QQ

  192. 39

    I’m troubled by the notion that a claim that requires a step of processing data on a digital computer can be dismissed as being directed to a process that is “abstract”. Doesn’t that do violence to the commonsense meaning of “abstract”?

    It’s important to recognize that computers are different from other machines. They have one purpose: to receive, store, “process” (including sorting and ranking) and transmit information.

    According to the current methodology of claiming “new” computers and “new” computer-implemented methods, it is enough to simply recite the old computer and/or the old method along with some generic, hand-wavey “new” information content that is being received/stored/”processed”/transmitted.

    Given the ancient, well-understood and ubiquitous functionality of computers, the question re abstraction is whether limiting otherwise ineligible information processing steps to their only relevant field of use is sufficient to render those abstractions patent-worthy.

    My opinion (shared by many, including many very highly skilled programmers) is that such a limitation should not be sufficient to confer eligibility. More importantly, granting such patents is unnecessary and more likely counter-productive to the promotion of progress in the field of information processing. The only “progress” being promoted is progress in the art of filing patents so our investor class has something to play with at the Great Casino.

  193. 38

    “Just like those new instructions in the kit turn the kit into a ‘new’ kit.”
    That’s Ngai … not Lowry. Remember … the printed matter doctrine applies … drum roll please … to P R I N T E D matter.

    As stated in Ngai, “the printed matter in no way depends on the kit, and the kit does not depend on the printed matter.” As stated in Lowry, “the Board erroneously extended a printed matter rejection under sections 102 and 103 to a new field in this case, which involves information stored in a memory.” Citing In re Bernhart, the Federal Circuit in Lowry also stated “[t]he printed matter cases have no factual relevance where ‘the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.'”

    “et me know if you have trouble following this”
    Let me know if you have trouble following Federal Circuit case law. Personally, I have problems following your concocted strawmen, but I wouldn’t be the only one.

  194. 37

    Newman: The Court recognized that a process claim may combine steps that were separately known, and that abstract ideas such as mathematical formulae may be combined with other steps to produce a patentable process. Id. at 187. The steps are not to be “dissect[ed]” into new and old steps; it is the entire process that frames the Section 101 inquiry. Id. at 188.

    Well, that “law” was recently obliterated by the Supreme Court in a well-reasonsed 9-0 decision that will never, ever be overturned. And thank goodness for that!

    If anyone is confused as to why that 9-0 decision was reached, just let me know. It’s pretty simple to follow the reasoning.

  195. 36

    All limitations must be given patentable weight (In re Lowry).

    Except when they aren’t.

    Consider, e.g., a set of instructions in a kit. See how that works? You look at the claim. You use your brain. You see a limitation that can’t be used to turn an unpatentable claim into a patentable claim (ask yourself why). You ignore that limitation.

    the “new” information being maniuplated makes new steps out of the old steps.

    Just like those new instructions in the kit turn the kit into a “new” kit, right? The substitution of “new” information make a “new step” out of an old step but it doesn’t make a new patent-worthy invention. Eventually you’ll get this, but probably not until the courts beat you over the head with it a couple dozen times.

    [old unpatentable claim]: A method of riding a donkey, comprising sitting on the donkey and reading a book.

    [new unpatentable claim]: A method of riding a donkey, comprising sitting on the donkey and reading a [new, previously undisclosed] book.

    [old unpatentable claim]: A computer-implemented method comprising receiving user information, storing said user information, and transmitting said user information when requested by said user.

    [new unpatentable claim]: A computer-implemented method comprising receiving user information, storing said user information, and transmitting said user information when requested by said user, where said user information relates to [a “new”, “non-obvious” type of previously undescribed user, e.g., a Chinese grandmother with two living adopted children in Alaska].

    Let me know if you have trouble following this. It’s easy to come up with more examples. It’s rather straightforward analysis, in fact, and there’s very little that is revolutionary about it. The only reason that “new” claims of this sort are granted is because of the thriving culture of incompetence and/or willful ignorance at the USPTO.

  196. 35

    I didn’t attend eng school, so this “abstraction ladder” is new and interesting for me. Thanks. And Newman is a chemist, right?

  197. 34

    NWPA, I cannot deny that to get marginal cases past the EPC test of eligibility it does help if you know and understand the EPC caselaw. For those who aspire to push the envelope there is no rest, but they wouldn’t wish it any other way, would they? Otherwise, why would an inventor employ you rather than some inferior patent attorney.

    Thanks for the feed. Is that it?

  198. 33

    Well, I don’t have time to look at the moment, but I thought the Bilski dissent had a discussion of walking up and down the abstraction ladder, which is what is taught in engineering schools.

    Something is only abstract if PHOSIT can’t walk up and down the abstraction ladder.

  199. 32

    Indeed! So what’s with NWPA’s “well defined in Bilski dissent by Newman”? Is this anything more than wishful thinking on your part, NWPA?

  200. 31

    Yes, it is ridiculous. Somehow you have to tie whatever you do to improving hardware.

    And, there is a jungle of case law that requires many hours to even begin to understand. Our IP community publishes articles on how to game the EPO system for eligibility. Great article in the ABA recently on it.

  201. 30

    Page 28 of Newman’s dissent in the link I provided is probably the closest you will come to a pincite MD.

  202. 28

    Dear banc:

    RE:

    “What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?; ”

    The test you should adopt, is that recited in the statutes.

    Whether an invention is described abstractly can only be judged in comparison to the prior art. Bilski was judged abstract because it “merely recited known hedging”, or if it wasn’t hedging, it was something declared to be known by at least one of the judges.

    Whether something is known or obvious is adjudicated by application of 35 USC 102 and 103.

    If only magnetic levitation apparatuses are known, then:

    A levitation apparatus comprising:

    a platform; and

    an anti-gravity engine mounted to the platform and configured to direct anti-gravitons downward relative to the platform

    is sufficiently specific as to not be abstract.

    If anti-gravity engines are known, then that claim is abstract and an allowable claim would have to recite additional details regarding, perhaps, the anti-Higgs Boson generator and associated deflecting plates.

  203. 27

    I see much on “abstract” in Newman’s dissent in Bilski 2007-1130, but no definition. Is there more than one Newman Dissent? Did I read the wrong one?

  204. 25

    Curious to see if Prof. Crouch has any statements as to the interaction of this information and the published statements in Patenly-O’s user policy about third party interests and posting limited to strictly personal views.

  205. 24

    While best read in its entirity (From 545 F.3d 943 available at /media/docs/2012/05/07-1130.pdf ), Highlights from Newman’s dissent include:

    Introductory paragraph:
    The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today’s electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today’s Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate.

    From page 4:
    Section 100(b) incorporates the prior usage “art” and the term “method,” and places no restriction on the definition. This court’s redefinition of “process” as limiting access to the patent system to those processes that use specific machinery or that transform matter, is contrary to two centuries of statutory definition.

    From page 7:
    The Court in Flook discussed that abstractions and fundamental principles have never been subject to patenting, but recognized the “unclear line” between an abstract principle and the application of such principle:
    The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “conception[s] of the mind, seen only by [their] effects when being executed or performed.”
    Flook, 437 U.S. at 589 (alterations in original) (quoting Tilghman v. Proctor, 102 U.S. 707, 728 (1880)).

    From page 10:
    The Court distinguished a claim that would cover all uses of a mathematical formula and thus is an abstract construct, as in Benson, from a claim that applies a mathematical calculation for a specified purpose, as in Diehr… and explained that the line between statutory and nonstatutory processes depends on whether the process is directed to a specific purpose, see id. (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” (emphasis in original)). The Court clarified that Flook did not hold that claims may be dissected into old and new parts to assess their patent eligibility. Id. at 189 n.12.

    from page 11:
    explained that the entirety of the process must be considered, not an individual mathematical step… and repeated that a practical application of pure science or mathematics may be patentable, citing Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939) (“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 and scientific truth may be.”).

    from page 12:
    It cannot be inferred that the Court intended, by this “e.g.” parenthetical, to require the far-reaching exclusions now attributed to it. To the contrary, the Court in Diehr was explicit that “an application of a law of nature or mathematical formula” may merit patent protection, 450 U.S. at 187 (emphasis in original), and that the claimed process must be considered as a whole, id. at 188. The Court recognized that a process claim may combine steps that were separately known, and that abstract ideas such as mathematical formulae may be combined with other steps to produce a patentable process. Id. at 187. The steps are not to be “dissect[ed]” into new and old steps; it is the entire process that frames the Section 101 inquiry. Id. at 188.

    (and it may interest Ned that Newman goes on to debunkk the English anti-method bias)

    from page 28:
    The court cited the Supreme Court’s distinction between abstract ideas and their practical application, and stated of the claimed rasterizer: “This is not a disembodied mathematical concept which may be characterized as an ‘abstract idea,’ but rather a specific machine to produce a useful, concrete, and tangible result.” Id. at 1544.

    And from page 34:
    (another interesting tidbit for Ned)
    This court and the Supreme Court have stated that “there is no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” [otherwise known as Point of Novelty] Allen Eng’g Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1345 (Fed. Cir. 2002) (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345 (1961)). This rule applies with equal force to process patents, see W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (there is no gist of the invention rule for process patents), and is in accord with the rule that the invention must be considered as a whole, rather than “dissected,” in assessing its patent eligibility under Section 101, see Diehr, 450 U.S. at 188.

    and on it goes. As I said, this is best read in its entirety.

  206. 23

    Me, I’m looking at the Questions a) and b) above through European eyes. I’m thinking, at the EPO, dissection and eligibility (under Art 52 EPC) is no longer an issue.

    Indeed, I’m wondering how much (if any) influence the settled law of eligibility under the EPC is having on i) the ongoing discussions at CAFC level and ii) discussion on this blog.

    In particular, I’m troubled by the notion that a claim that requires a step of processing data on a digital computer can be dismissed as being directed to a process that is “abstract”. Doesn’t that do violence to the commonsense meaning of “abstract”?

    I wonder, is there anything in particular that troubles you, gentle reader, about how eligibility is handled at the EPO?

  207. 22

    Ned is getting a new boss.

    • Day-to-Day management of http://www.patentprogress.org. This includes writing daily blog posts, editing blog posts, database management, following patent litigation closely, working with the patent group. Patent Progress is CCIA’s new website seeking to reform of the current patent system, specifically software patents, focusing on the smartphone wars and patent trolls. As part of the website, there is a database of cases, patents, scholarly articles and legal filings that needs to be kept current. Additionally, there is a team of bloggers posting for the site this person will be responsible for managing.
    • Work with CCIA member companies on development of CCIA patent policy positions.

  208. 20

    “if a computer-implemented method recites only old steps” … then it is unpatentable under 102/103.

    You confuse patent eligibility with novelty/obviousness. All limitations must be given patentable weight (In re Lowry). Thus, the “new” information being maniuplated makes new steps out of the old steps.

    Of course … keep ignoring the law as you have been for years now.

  209. 19

    Abstract means they have formed a circle and are assisting one another with one hand to the person on their right.

    Abstract is well defined in Bilski dissent by Newman. This is exactly what it should mean.

  210. 18

    “It really is not that hard”

    Only for those like you 6 who want a subjective test for what is an “abstract idea,” not an objective test. I’m still waiting for SCOTUS to define what they mean by an “abstract idea” that’s better than the definition Rader came up with in Research Corp. Technologies v. Microsoft: “[T]his court also will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so mani-festly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”

  211. 17

    What is that method in Deener all about? Would it make sense without machines? NO!!! The methods of processing grain changed and were refined due to the introduction of machines into the process.

    The exact same thing is going on now with information and computers.

    May the force be with Rader…

  212. 16

    !! Has the nature of information processing changed because of computers?

    If you can not say no to this question, then whether or not a method is carried out on a computer does make a different.

    In Deener, the method could be carried out by a human body. Does that make it patent ineligible?

  213. 15

    You do realize that when he spoke on treating software in an intellectually honest manner, that he was doing so with the Office stamp of approval, and thus your comment about “he’s a schmuck now” is quite meaningless, right 6?

    I see that logic still escapes you – have you permanently shelved your law school plans?

  214. 13

    “Fact, Computers and software programs are not a Court created judicial exception”

    Do favorite this post for next year after Alice makes a trip to the supremes who happen to say the exact opposite of what you just said regarding softwarez.

  215. 12

    “What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?;

    Integration Analysis. If you look at the complete history of the line of Supreme Court 101 cases, it becomes apparent that a new and useful process claim in general has a clear presumption of “Integration” and the presumption remains valid, and requires no further analysis under 101 unless the claims as a whole recite;

    1. A bare Court created judicial exception, (derived implicitly from the Congressional Statute of 101) or

    The first element of the claim is a bare Court created judicial exception (derived implicitly from the Congressional Statute of 101) followed by additional steps or claims that apply the judicial exception. In the case of the latter, analysis for extra-solution activity, (pre or post ) occurs to determine if the claims are integrated or instead pre-empt the judicial exception.

    Fact, Computers and software programs are not a Court created judicial exception, (derived implicitly from the Congressional Statute of 101. )

    Therefore new and useful computer and software programs are inherently “integrated” and thus are patent eligible subject matter.

    Simple as that.

  216. 8

    one but never underestimate the power of a mind eager to misunderstand.

    I am eager to understand where the H my offered page cite is from MM.

    And my popcorn.

    MM taunt FAIL

  217. 7

    This Court should identify a non-exhaustive list of factors for district courts and examiners to consider in resolving that essential question on a case-by-case basis.”

    Did the PTO offer any suggestions of its own for such “factors”? The test 6 proposes is a good one but never underestimate the power of a mind eager to misunderstand.

    I would recommend the following, for starters: if a computer-implemented method recites only old steps (e.g., a. receiving Data; b. determining if Data is X; c if Data is X, then transmit Y) , then the “invention” is simply an abstraction and/or an attempt to patent the “new” information and its use (as information).

    That test would be a big help in getting rid of the worst cr–p that’s out there. Pretty much any claim whose patentability depends on information content (e.g., “subsidiary account information” “security codes” “distinctive animal features” “credit scores” “web site quality ratings” “loan obligations” etc) being received/stored/provided by a POWERFUL COMPUTER BRAIN should be d.o.a.

  218. 3

    “I can’t wait to hear the oral arguments in all of these cases, but then again, I’m unabashedly geeky about this sort of thing.

    See, but I’m going to be in the courtroom itself.

    /oneup.

    I’m also going to lol uncontrollably if Rader tries to spew some nonsense. Surely he’s joking when he does that right?

  219. 1

    “identify a non-exhaustive list of factors”

    There is not really any point to identifying a “non-exhaustive list of factors” for folks to use in resolving that fairly easy question. Eithere such limitations be present or they are not. Observe the scope of a claim just to the abstract idea, and observe the scope of the claim before you, contrast them, and if there is pretty much, or exactly, no difference, then you’ve got yourself a 101. If there is a substantial difference, then the claim is fine. But do be sure to adjust the abstract idea as necessary to account for the applicant simply attempting to bury the actual abstraction at issue, because they will do that on occasion.

    It really is not that hard, and why the Fed. Circ. insists on not doing, while the PTO is in <3 with "factors", it is quite beyond me. If you cannot do it without "factors" or do not wish to do it period, then step aside and let someone who wishes to, and is able to do so, apply the law.

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