A few recent Section 101 cases at the PTAB

By Dennis Crouch

Patenting Software: Ex Parte Betts [Computer Associates], 2013 WL 3327142, Appeal 2010-004256, Application 11/132,649 (PTAB 2013) (“[W]e conclude claims 14-26 encompass software without physical embodiment, i.e., software per se, which is an abstract idea and not a “process, machine, manufacture, or composition of matter,” as required by § 101.”)

Patenting Software: Ex Parte Krause [HEWLETT-PACKARD], 2013 WL 3246398, Appeal 2010-012129, Application 10/442,401 (PTAB 2013) (Claims directed to an “end station” within a network having an “aggressive timer.” “Appellant contends that the Examiner erred in rejecting [the] claims … under 35 U.S.C §101 because the claims recite an “end station,” which is defined as hardware. Appellant’s argument does not cite evidence to rebut the Examiner’s interpretation that the claim encompasses either hardware or software. Accordingly, we decline to reverse the rejection.”)

Patenting Software: Ex Parte Barsness [IBM], 2013 WL 3362954, Appeal 2010-011009, Application 11/316,285 (PTAB 2013) (Claim directed to “computer-executable instructions tangibly recorded on a computer-readable media” construed to include “non-statutory, transitory embodiments.” “[W]e find the Specification states the invention is capable of being distributed in the form of a wireless signal when exchanged from one signal-bearing medium to another. This falls within a propagating electromagnetic signal per se and thus, is not directed to one of the statutory categories.”)

Patenting Software: Ex Parte Svendsen [Concert Tech], 2013 WL 3363110, Appeal 2011-001873, Application 11/837,876 (PTAB 2013) (Claimed media “control system” could be implemented as software. “As such, we are not persuaded by Appellants’ argument that the mere recitation of a “control system” (even if the Specification describes it as being associated with a memory) is sufficient to make the claims patent-eligible under 35 U.S.C. § 101 . . . as it does not play a significant part in the performance of the claimed steps.” In short, the broadest reasonable interpretation of the claim language leads us to construe the “control system” as being directed to a computer program per se, which, as drafted, renders the claimed subject matter not patentable under 35 U.S.C. § 101. See Gottschalk v. Benson, 409 U.S. 63, 72 (1972).”

Patenting Method that Could be Performed by a Human: Ex Parte Xu [HEWLETT-PACKARD], 213 WL 3363011, Appeal 2010-009107, Application 10/767,075 (PTAB 2013) (“[C]laim 1 as a whole is directed to a sequence of steps that can be performed by a person. Accordingly, claim 1 is drawn to patent-ineligible subject matter and invalid under § 101.”)

Patenting Device Attached to a Human is OK: Ex Parte Robert S. Bray, 2013 WL 3293616, Appeal 2011-013427, Application 11/686,054 (PTAB 2013) (“The claims recite a device positioned between two vertebrae not, for example, a human comprising a positioned device. The claims relate only to the correct placement of the device in the human patient, and as a whole, do not encompass a human organism. There is nothing in the statute, and we are unaware of any case, that categorically excludes such devices.”)

350 thoughts on “A few recent Section 101 cases at the PTAB

  1. 350

    Ned,

    Can you prove that you do not understand law in any more strident fashion then:

      The Supreme Court in Benson announced that in creating a patentable category called process, they had authorized claims that describe the processes of particular machines or which transformed articles into a new state or thing. We use shorthand to describe this. The shorthand is MOT.“?

    Really? The Supreme Court created the patentable category called process? Seriously? The short hand of MoT? Really? Why are you continually ignoring what the Supreme Court did in Bilski, flatly rejecting the en banc CAFC treatment of MoT? There is a mockery going on right now, alright. The mockery is your insane attempts to re-elevate MoT and ignore the plain words of Bilski.

    As to your comment of:

      You simply revert to denials and personal attacks.
      Then you thump your chest and claim victory.

    this is exactly what you are doing – calling me names, avoiding the points I have raised and merely repeating your merry-go-round of claiming victory in your odd agenda. Your method of parsing the Supreme Court was exactly what I used against you in the Myriad case, highlighting Chakrabarty and Funk. You disagreed and vanished repeatedly when I asked for some (any) legal backing for your alternative view. And once again, you come and merely repeat yourself ad infinitum (and ad nauseum), proclaiming ‘victory’ and yet, ignoring the fact that the holding of Bilski plainly destroys your attempts to make MoT a requirement.

    Stop the MoT worship.

    Unlearn what you grew up with – that is not the law. Try to be literate in the 21st century sense.

  2. 347

    LOL, it ain’t MY fault that your spell checker don’t check allcaps words.

    That’s on YOU, tr0llomite.

    What you were questing after is anthropomorphication, not anthropomoprohication.

    The latter describes a mop that looks like a dude going to Branson, Mo (for his hick vacation).

  3. 346

    101, if the ineligible subject matter is applied in an inventive way, it is eligible. I hope you would at least agree with this proposition.

    The Supreme Court has held in Diehr/Prometheus that when ineligible subject matter is integrated to a process that passes the MOT that it is eligible. This is not to say that it held that when an eligible subject matter is not integrated into a process that does not pass MOT it is ineligible.

    I don't know how many times I can make this distinction, but I am not saying that the Supreme Court has held that being integrated into a process of passes the MOT is required. But it is sufficient. It is sufficient because that was the holding of Diehr as clarified by Prometheus.

    The Supreme Court in Prometheus also discussed the Federal Circuit opinion below and how it applied its version of the MOT. Simply because some elements of the claim passed MOT is not sufficient the Supreme Court determined. The ineligible subject matter must be applied in an inventive the way to those elements for the MOT to be sufficient.

    The Supreme Court could have also said that the Federal Circuit application of the MOT made a mockery of Diehr, but they were polite.

     

     

  4. 345

    101, let’s be clear. I have quoted you the relevant passages from Prometheus and from Diehr.  You have not here, or ever that I can recall, deigned to address the holding of Diehr or the clarification of Diehr in Prometheus.  You simply revert to denials and personal attacks.  Then you thump your chest and claim victory.
     
    The Supreme Court in Benson announced that in creating a patentable category called process, they had authorized claims that describe the processes of particular machines or which transformed articles into a new state or thing. We use shorthand to describe this. The shorthand is MOT.

    The Diehr court held that when the ineligible mathematics was applied to a process that was eligible, e.g., because it transformed an article, namely rubber, into a new state or thing, the claim considered as a whole was eligibe. Note that the process consider as a whole in that case was a process that "passed" the MOT because it transformed rubber into a state or thing. The claim was held eligible because the mathematics was applied to that process.  We can assume that if ineligible subject matter is applied to a particular machine that the claim, considered as a whole, might also eligible.

    Prometheus discussed Diehr and determined that the reason that the Supreme Court held the claims there eligible was that the mathematics was "applied" in a process that otherwise was eligible. The application "transformed" that process. In other words the underlying process was changed in an inventive way by the application of the ineligible subject matter.

    The Prometheus court further determined, in the case before them, that the correlations, the law of nature, in this case was not applied to the other steps so as to transform them. The Supreme Court phrased the question before it as this:

    "The question before us is whether the claims do significantly more than simply describe these natural relations. To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no." (Emphasis in original)

    That is the test announced in Prometheus. Does the claim apply the ineligible subject matter in an inventive way, which certainly was the case in Diehr because the mathematics there was used to transform a process that itself transformed an article into a state or thing.

    What we learned is that if the ineligible subject matter is integrated into a process that passes the MOT as in Diehr, the claim is eligible under 101. If it does not, and the ineligible subject matter is not being applied, then the other elements in the claim must be inventive, and if they are not, the claim as a whole is not eligible

     
     
     

  5. 344

    Ned: “This did not occur in the claims before it in Prometheus and therefore the claims did not, when considered as a whole, pass the MOT.”

    101 Integration Expert: Sorry Ned, the Prometheus Court literally said passing the MoT was “irrelevant”. Your entire “Integration into the MoT” theory was not the reason or even a factor. The Court said the claims failed because the claims as a whole pre-epmted a law of nature, just like I told you.

    See : “The first of these transformations, however, is irrele­vant. Regard­less, 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.” Prometheus, /media/docs/2012/03/10-1150.pdf

  6. 343

    Ned: “The majority opinion said this repeatedly. In other words, ..”

    101 Integration Expert: Ned, if you have to say, “In other words” then the majority did not say it at all, let alone repeatedly. In reality, “in other words..” means your words. And your words are not the law! Thank you Lord!!

    ..Ned: Once the underlying subject matter passes the MOT and the ineligible subject matter, the mathematics, was integrated into this underlying subject matter, then the claim, considered as a whole, was eligible. The fact that you did not get this is frankly amazing.

    101 Integration Expert: Actually it would quite amazing if I did get this since what you wrote is no where to be found in Diehr. To the contrary Diehr warns against an analysis focused on the “underlying” subject matter for the following reason:

    “To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to “underlying” principles of nature which, once known, make their implementation obvious.” Diamond v. Diehr – 450 U.S. 175 (1981) [Footnote 12]

    Any questions?

  7. 342

    Ned: How many times do I have to quote Diehr to you before you get it.

    101 Integration: Just once, showing the Diehr Court saying “Machine or Transformation test is the same as Integration Analysis.” And you win. If you can’t you whine. But you still lose.

    Ned: In order for integration to work, there first must be underlying subject matter which is otherwise eligible for patenting.

    101 Integration Expert: The statute does not say that. Congress has not said that. The Supreme Court of the United states has never said that. Not even the MPEP says that. In fact, the only one that has said; “In order integration to work, there first must be underlying subject matter which is otherwise eligible for patenting” is Ned Heller on Jul 18, 2013 at 02:20 PM. And your words have no force of law. Thank God!

    Ned: “The ineligible subject matter then must be integrated into that. Integration as clarified by Prometheus means the underlying subject matter must be transformed. It is simple as that.”

    101 Integration Expert: Yes, in your view. However, the Prometheus Court never said that. In fact, such a statement is in conflict with the legal context of the “term” integration, which I supplied at Jul 12, 2013 at 05:28 PM. In fact eligibility does not turn on the state of “underlying” subject matter because such an analysis would necessitate searching for the “gist” of an otherwise “integrated” process or other statutory category. And as the Supreme Court told you in, Aro Mfg. Co., Inc. v. Convertible Top Co. – 365 U.S. 336 (1961); “ .. there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent”..Ibid

  8. 341

    “..they transformed the process into an inventive application of the formula.”

    Yes, the process as a whole was “transformed” into an inventive application of the formula. This sentence does not say as you claim, a process “must” transform materials into a different state in order to be a statutory process, A.K.A. the transformation leg of the M.O.T. Nor does the paragraph say Diehr held that a process “must” transform materials into a different state in order to be a statutory process. And neither does the sentence say, nor anywhere in the paragraph you quote does it say “integration” is defined and limited to a process that is tied to a machine, or transforms materials into a different state or thing. These are facts you can’t refute.

  9. 340

    He wants everyone to believe that a process is subjugated and tied to the other categories in 101.

    Exactly correct – he seeks to change the actual words of the statute – without any citation to authority whatsoever.

    This reflects his 21st century illiteracy and his inability to unlearn the Justice-Story-English-Law-Did-Not-Recognize-Process-Patents-Even-Though-The-US-Congress-Explicitly-Did, and to learn the proper place (as equal) that the process category shares with the other statutory categories.

    He then compounds his known ethical duty (even to third parties) to acknowledge controlling law by attempting to portray his Desired-State-Of-Law as real law.

    Watch him now try to derail the conversation (again).

  10. 339

    Yes, I am familiar with that quote. I am the first person on the blog to state that quote and bring “Integration” to the attention of our patent community here. Remember? But more important anyone reading that quote from Prometheus, and then reading your own words will see that what you write in your own words is different than what the Court said. Furthermore you ducked my question up thread, which is:..How do you reconcile your views with the fact that with the exception of a manifestly claimed law of nature, physical phenomenon, or abstract intellectual concept, a process standing alone is statutorily integrated?

    :: Usual Silence::

  11. 338

    “Quote all you want Ned – you are STILL ignoring what was said in Bilski and STILL parsing and misconstruing Supreme Court law.”

    You are exactly right. Never mind the fact that what Ned quotes from the Court is not the same as what he then writes in his own words. He has never reconciled his views with the fact that with the exception of a manifestly claimed law of nature, physical phenomenon, or abstract intellectual concept, a process standing alone is statutorily integrated. He wants everyone to believe that a process is subjugated and tied to the other categories in 101.

  12. 337

    Quoting a passage from a case, then proceeding to ‘interpret the passage in you “own” words, followed by declaring the case held your own theory, is not quoting a holding from a case. If you used such twisted logic on me in court, I would beat you 5 minutes . And if you dared argue such before the expert Chief Judge Rader, for example, he would wipe the floor with you. I can just hear him say, now; “Where does the case “say” that? I need that “exact” quote!” Followed by admonishing you for using your “own” interpretation, as the Courts holding. Don’t believe me? Just listen to the oral arguments in Research Corp or any recent 101 case. The expert Judge of the expert court eats intellectually dishonest attorneys like you for lunch.

  13. 336

    Your post at 2:17 is total B$ Ned.

    Circular conjecture on your part and nothing more.

    The three positions you choose – I am correct on all three, thank you very much.

    Can I play the Mary Katherine Gallagher game too?

      Are you aware that I am rubber, and you are glue, and whatever you say to me bounces off, of me, and sticks to you? So put that in your, back pocket.

    Actually put your naked conjecture somewhere else.

  14. 335

    This is just like your (attempted) semantics game with ‘categorically’ versus ‘as a category’

  15. 334

    That is quite different

    That is quite some linguistic nonsense Ned.

    Read what you just wrote at 2:12 – s l o w l y

  16. 333

    Quote all you want Ned – you are STILL ignoring what was said in Bilski and STILL parsing and misconstruing Supreme Court law.

  17. 332

    makes no friggen difference

    Absolutely and positively incorrect.

    The ‘WHATEVER’ school of law is not of this world.

    WHen something does not pass the Useful Arts, then none of the other doctrines are apposite. Trying to apply them leads to logical nonsense.

    I have explained this many many many times now.

    Pay attention.

  18. 331

    Of course, AAA JJ, and all attorneys want to get maximum protection under the law for their clients too.

    …but for certain NIMBY’s, such is strictly only for their ‘idealized’ clients – you know the ones, the ones that are not part of the 1%, the ones who would not want patents in the first place, the ones that believe like Jane believes.

  19. 330

    Ned: The Supreme Court then clarified that the basis of the holding in Diehr was that the ineligible elements, the Math, there were integrated into that old process, the whole process that passed MOT because it transformed matter into a new state, in a way that transformed that old process into something new, i.e., it produced properly cured molded rubber.

     
    101 Integration Expert: Wrong. Again, that’s YOUR distorted and twisted interpretation. Not the Courts words.

    I quoted your the language. I will quote it to you again:

    From Prometheus at 1298-1299:

    "The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. Those steps included "installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time." Id., at 187, 101 S.Ct. 1048. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional. And so the patentees did not "seek to pre-empt the use of [the] equation," but sought "only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process." Ibid. These other steps apparently added to the formula something that in terms of patent law's objectives had significancethey transformed the process into an inventive application of the formula." (emphasis added)
     

  20. 329

    Ned: In the Prometheus claims, the old elements of the claim did in fact involve
    transformations, but the new elements, the ineligible correlations themselves,
    were not integrated into that old process but instead only used results of that
    old process.

    101 Integration Expert: Wrong. That’s YOUR distorted and twisted interpretation. Not the Courts words. In Prometheus the claims as a whole ( integrated) still pre-empted a manifest Law of Nature. Case closed.

    101, the Lower Court in Prometheus had held and demonstrated beyond question that the steps of administering a drug, drawing blood, and then testing for metabolites involved transformations. The lower court held that these elements of the claim involved transformations and because they involved transformations the claim had passed MOT. The Supreme Court of course reversed. They agreed that these elements had passed MOT. The problem was that the ineligible subject matter, the correlations, were not integrated into that process. See this description of the holding of Diehr, where they described that in order to pass MOT, the ineligible subject matter must be integrated into the underlying process so as to transform it. This did not occur in the claims before it in Prometheus and therefore the claims did not, when considered as a whole, pass the MOT.
     

     
     

  21. 328

     

    101 Integration Expert: The only problem in interpreting Diehr is the one you are having twisting it to be limited to a Machine and Transformation test, and your ignoring Diehrs requirement to consider claims as a whole.

    101, the Supreme Court did not in Diehr say that subject matter that did not pass MOT was not eligible. What it did say that the claim before it, considered as a whole, was eligible. The consideration as a whole was intended to include the underlying subject matter that was eligible because it passed MOT, it transformed an article into a new state or thing. The majority opinion said this repeatedly. In other words, once the underlying subject matter passes the MOT and the ineligible subject matter, the mathematics, was integrated into this underlying subject matter, then the claim, considered as a whole, was eligible. The fact that you did not get this is frankly amazing.
     

  22. 327

    101 Integration Expert: The Machine or Transformation test is not the same as Integration Analysis. The Court have never held such. While it is true a claim that has a machine or transformation "integral" to a process may be statutorily integrated, a process can be statutorily integrated, even without passing the MoT. On this congress and the Supreme Court have been clear.

    ?

    How many times do I have to quote Diehr to you before you get it. In order for integration to work, there first must be underlying subject matter which is otherwise eligible for patenting. The ineligible subject matter then must be integrated into that. Integration as clarified by Prometheus means the underlying subject matter must be transformed. It is simple as that.
     

  23. 326

    Anon, your premises then illustrate again and again and again that you do not understand the law. Your position on the holding in Bilski is one example. Your position on the holding in Alappat is another. Your position on the holding of Benson is a third.
     
    How can we even begin discussing examples if you do not even understand what cases have held?
     

  24. 325

    Anon, know it is you that throws the MOT under the bus. The Supreme Court in Bilski only ruled that the MOT was not the exclusive test. It did not rule that the MOT was not a test in the sense that if the claimed subject matter passed that test it nevertheless could be ineligible. What the Supreme Court suggested was that it had failed the MOT test, that the subject matter nevertheless could be eligible. That is quite different.
     

  25. 324

    Anon, it makes no friggen difference why the particular subject matter is ineligible.  We pick music only because there is no dispute that it is ineligible.  The law does not vary, or at lease should not vary, depending on the type of ineligible subject matter. If you disagree with this please explain why?

     
     
     

  26. 323

    Isn’t there somebody on this site always chastising the PTO to get it right the first time?

    Everybody would like the PTO to get it right the first time, AAA JJ.

  27. 322

    on that point he’s dead on.

    Thank you, thank you very much (said in the best Elvis tones)

  28. 321

    “I think there might be some 112 issues there…”

    Fair enough. But that only leads me back to the question of shouldn’t these SPE’s and QAS’s at least have some knowledge of the law. There was no way in heck that the 101 rejection on page 5 of the examiner’s answer was going to be affirmed. Zero analysis, totally conclusory, and thoroughly inapposite to the boiler plate case law cited by the examiner.

    The applicant filed an after final response, a pre-appeal, and an appeal. More than sufficient opportunity for somebody to step in and say, “Hey, this 101 ain’t gonna fly, but you may want to consider making a 112, 2nd or 4th rejection.”

    Isn’t there somebody on this site always chastising the PTO to get it right the first time? While I don’t always agree with that poster’s views, on that point he’s dead on. And if they can’t get it right the first time, how ’bout the second time? At least by the third time for crying out loud. Otherwise, what’s the point of having all these overpaid, underworked, know nothing, do nothing GS-15’s?

  29. 320

    Ned: The Supreme Court then clarified that the basis of the holding in Diehr was that the ineligible elements, the Math, there were integrated into that old process, the whole process that passed MOT because it transformed matter into a new state, in a way that
transformed that old process into something new, i.e., it produced properly cured molded rubber. 

    101 Integration Expert: Wrong. Again, that’s YOUR distorted and twisted interpretation. Not the Courts words.

    Ned: Because of the clarification, we now understand that the
underlying process to which the ineligible subject matter is applied must pass
MOT. 

    101 Integration Expert: Wrong. Again that’s your interpretation. There is no we. There is no “must pass MOT” anywhere in the law. The Supreme Court never said such.

    Ned: Further, the ineligible subject matter must be integrated into that process in a way that transforms it.  In a sense we have a double transformation.

    101 Integration Expert: Wrong. You totally made that up. Double transformation requirements? That is complete non sense. Do you lol while typing this up?

    Ned: I hope you understand that the Federal Circuit seem to deliberately misinterpret the MOT in Prometheus in a way that made a mockery of it. 

    101 Integration Expert: Oh the irony! You are the one deliberately misinterpreting the Doctrine of Integration in a way that makes a mockery out of the law.

  30. 319

    Ned: Yes and no. 

    101 Integration Expert: Wrong. The Machine or Transformation test is not the same as Integration Analysis. The Court have never held such. While it is true a claim that has a machine or transformation “integral” to a process may be statutorily integrated, a process can be statutorily integrated, even without passing the MoT. On this congress and the Supreme Court have been clear.
    Ned: The Federal Circuit’s opinion in Prometheus illustrated the problem of
interpretation of the Diehr holding. 

    101 Integration Expert: The only problem in interpreting Diehr is the one you are having twisting it to be limited to a Machine and Transformation test, and your ignoring Diehrs requirement to consider claims as a whole.
    Ned: In the Prometheus claims, the old elements of the claim did in fact involve
transformations, but the new elements, the ineligible correlations themselves,
were not integrated into that old process but instead only used results of that
old process. 

    101 Integration Expert: Wrong. That’s YOUR distorted and twisted interpretation. Not the Courts words. In Prometheus the claims as a whole ( integrated) still pre-empted a manifest Law of Nature. Case closed.

    Ned: The Supreme Court then clarified that the basis of the holding in Diehr was that the ineligible elements, the Math, there were integrated into that old process, the whole process that passed MOT because it transformed matter into a new state, in a way that
transformed that old process into something new, i.e., it produced properly cured molded rubber. 

    101 Integration Expert: Wrong. Again, that’s YOUR distorted and twisted interpretation. Not the Courts words.

  31. 318

    why you have so much difficulty communicating with others.

    Another Malcolm-like rhetorical tool: feign ignorance and then project it.

    And just as this fails for Malcolm, so too it fails for you Ned.

    Point blank, I have no difficulty in communication with others. Others have the difficulty that after communicating with me, it is obvious that their agendas no longer can be seen as viable. Those with an ounce of intellectual honesty will stop and think about this – and thus become literate in the 21st century sense of the word. Others, clench tight their eyes and fervently desire NOT to understand so that they can hold onto their agendas and their soapboxes.

    Your silence (on the MANY points I have provided) remains my gold.

  32. 317

    Not agreeing with “my premise” is not agreeing with the law.

    As I posted Ned, you don’t have to agree that the law as is is what the law should be. But you have an ethical obligation (yes, even to third parties on a blog) to acknowledge what is controlling law. Even Malcolm has admitted to such with the exceptions to the printed matter doctrine (and even though THAT toasts his agenda to a crisp).

    As to answering most of my posts: sorry, but pure B$.

    Even on this thread I posted about four or five points you have absolutely refused to even touch – things like anthropomorphication and the exception to the printed matter doctrine.

    AS to strawmen – AGAIN, stop with the Malcolm accuse-others-of-that-which-you-do, as I have introduced NO strawmen here, and quite in fact (as already noted) I have merely set your strawmen ablaze.

  33. 316

    Ned – It is not I.

    It is the Supremes – THAT is one of the holdings of the Bilski decision overruling the en banc CAFC decision.

    As I have said before – it is plain and simple:

      Bilski: MoT NOT REQUIRED
      Prometheus: MoT not sufficient

    And like I have asked before (a question you STILL have not answered): what part of this do you not understand?

  34. 315

    How does this address the point about music not being a Useful Art and thus not germaine to the discussion?

  35. 314

    Anon, I don’t agree with your premises just as I do not agree with any of your strawmen.  If I tried to answer most of your posts, most of the time I would have to first clarify that you are misquoting me, and probably are doing so with a purpose.

     
     
     

  36. 313

    I thought you’d say that  the claim passed 101 because a player piano is a machine and the claims as a whole is still a machine.
     
    You seem to adopt the 103 version of “claim as a whole” that looks to the differences from the prior art.  That, I think, is proper. 
     
    Do you agree?

     
     
     

  37. 312

    I also note Ned – that instead of actually addressing the point of my 6:11 post – (and we both know why you NEVER address any of the ethical points I raise) – you instead tell a blatant 1ie that posts on your positions are distortions.

    Funny then, how you NEVER tell me what it is that I am actually distorting. YOu constantly disagree with me, which means that you do not agree with what I say – or you constantly are (to your agenda) de@thly silent as to the points I raise.

    As I have posted in essence many many many times – your silence screams volumes and WHEN you choose to be silent speaks so loudly that your agenda curls up in a ball and d1es.

  38. 310

    It’s not only the quote Ned – it is your treatment of the quote AS IF it had ANY force of law.

    It does not.

    You need to be more careful in your posts to indicate that you are advocating a change in law – and not how law is now.

    As I have said MANY times – I have no problem with people having an opinion – but put forth that opinion as if it were law – and we will have problems.

  39. 309

    Instead you say things like Bilski held

    held?

    And you claim that I misread others (on purpose?)

    Ned – stop the accuse-others-of-that-which-you-do Malcolm trick.

    Stop it NOW.

  40. 308

    we all know why you don’t want to talk about music: you don’t want to really discuss why a claim to an old player piano that plays new music is not eligible.

    1) who is ‘we?’
    2) YOU apparently have no clue – even with my repeated emphasis on the VERY BASIC notion of the Useful Arts. The vary fact that you have the audacity to write (fully falsely): You implicitly agree that the point of such a claim is to claim the the music. indicates base deception – at best.
    3) Your total refusal to acknowledge the Useful Arts angle (along with the nearly half dozen or so other key points that I repeatedly ask you to acknowledge and discuss) show exactly which one of us is being intellectually dishonest (hint: it’s you).

  41. 307

    Ned I gave you a chance to clear things up and all you did was recite your own distorted views and make a mockery out of the statute, and Supreme Court case law. So how do you reconcile your views with the fact that with the exception of a manifestly claimed law of nature, physical phenomenon, or abstract intellectual concept, a process standing alone is statutorily integrated?

  42. 306

    anon, your statement illustrates why you have so much difficulty communicating with others.  You don't address what they say.  You address what you think they said —  and that is being charitable because I think what you actually do is deliberately misquote them.

     
     
     

  43. 305

    anon, we all know why you don't want to talk about music: you don't want to really discuss why a claim to an old player piano that plays new music is not eligible. 
     
    You implicitly agree that the point of such a claim is to claim the the music.  This is a step forward for you.  Otherwise, there wouldn't be a section 101 problem with a claim to an old player piano with new music.

     
     
     

  44. 304

    anon, I have quote Breyer’s opinion in Bilski often.  I carefully identify the opinion to be that of Justice Breyer and not of the majority.
     
     However, when I ask you to tell me what the holding of Bilski is, you never do.  Instead you say things like Bilski held that business methods are eligible for patenting.  That is not what the Supreme Court said and you know it.

     
     
     

  45. 303

    LB: the device only infringes claim 3 when it’s actually positioned in the body?

    Correct. I have no idea what the point of this claim is, either. Either the implant is new and non-obvious (in which case this claim is pointless because the independent claim is infringed) or it’s not (in which case a method of inserting the obvious device would be the appropriate way to seek coverage, assuming that the method itself is non-obvious.

  46. 302

    I agree with you, AAA JJ, but those are some odd claims. Claim 3, for example:

    3. The implant device of claim 1, wherein the device is positioned between two vertebrae through a lateral opening exposing a lateral side of the vertebrae.

    Through a lateral opening in what? And the device only infringes claim 3 when it’s actually positioned in the body? And the same device, in the same location, is not infringing if it was positioned through some non-lateral opening?

    I think there might be some 112 issues there – it’s not clear to me whether the vertebrae, or the lateral opening, are part of the claimed apparatus or not. If they’re not, does claim 3 really add any limitations to the claimed device.

    Also, who infringes? The doctor, by putting the device into place? The patient, by “using” the device?

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