Facebook’s Privacy Patent

What do you think of Facebook’s new patent in terms of Section 101? The patent (No. 8,844,058) issued on September 24, 2014 covers a social-networking data privacy method that basically allows users to specify what data a third-party App can share with others and that information is conveyed to the App. Claim 1:

A method comprising:

maintaining privacy settings for a first user of a social networking system, the privacy settings comprising a setting specifying which data about the first user a third party application may share with other users in the social networking system, the third party application maintained by an entity distinct from the social networking system;

receiving from the third party application, in response to use of the third party application by a second user, a request for information about the first user;

determining by a processor whether the setting specifying which data about the first user the third party application may share with other users in the social networking system allows the second user access to the requested information; and

communicating, to the third party application, which data about the first user the third party application may share with other users in the social networking system.

The patent includes two additional independent claims that are parallel, but claim the associated computer system and software (stored on a memory).  The software was claimed as a “non-transitory computer readable medium storing one or more programs” in order to avoid a prior iteration of Section 101.

It seems to me that this case will be on the 101 chopping block.

187 thoughts on “Facebook’s Privacy Patent

  1. 11

    The “determining” operation might well rescue this claim from an adverse Alice ruling. But without resort to the disclosure, there is no way to know whether it places a limitation (e.g., a similarity/distance equation) on the breadth of this general claim language. Is this a trick question, Professor Couch?

  2. 10

    In response to eligibility concerns raised by a process claim, Les wrote: “So what? What is being claimed is process.”

    I wrote: “Mental processes are processes. Are they eligible for patenting”?

    Les responded: “A mental process is not being claimed.”

    …which completely misses the point of my question to Les and other commenters in this thread.

    You can’t rely on the recitation of “process” in 101 by itself to cut off discussion about whether a particular process is eligible and then refuse to answer an obvious question about where your argument plainly leads. That’s doubly true if one of your primary arguments against the Supreme Court’s decisions is to stretch its analysis to the breaking point to achieve some “absurd” result that no court is every going to reach.

    Why are so many of the proponents of functionally claimed computer-implemented information processing patents so cagey?

    Just be forthright and upfront with your assumptions and beliefs: can you protect a mental process with a process patent? What about a math calculation carried out mentally with a pencil and paper? Are there “magic words” that render claims immune from eligibility challenges and, if so, what are they?

    There’s little point in discussing the eligibility analysis framework of the Supreme Court or any other court if your arguments against the decision are premised on assumptions (e.g., mental processes are eligible for patenting because “its a process”; or information is eligible for patenting because “it’s manufactured”) that are far beyond the fringe of what anybody thinks is reasonable.

    At the very least, please make an effort to state the assumptions and, if you think that mental processes or information should be ineligible for patenting, explain exactly (not just by reciting the name of some patent statute) how you propose to keep lawyers from protecting such subject matter with patent claims.

  3. 9

    I am fairly new to this field and trying to understand it, but why would a “reduction to practice” test and/or statue change not ultimately be the right direction? If you can not reduce it to practice, what right do you have to protect it. Seems like you would get away from inundating the Office with terrible abstract applications. On software, if you could prove that it does what it does in some version of code (a reduction to practice) then shouldn’t you be entitled to protect that method? I know this may not be feasible but at first glance seems like the right direction…

    Like I said, I am new to this whole world so don’t massacre me with comments if this question is stupid.

    1. 9.1

      On software, if you could prove that it does what it does in some version of code (a reduction to practice) then shouldn’t you be entitled to protect that method?

      Well, you should be entitled to claim that code which actually works and protect it. It’s not clear why you should be entitled to claim all versions of working code based on your reduction to practice of one version.

      The bigger problem with “reduction to practice” as a generalized solution is that functional claiming is not the only problem with many computer-implemented information processing claims.

      Eligibility problems can easily arise even where the “innovation” has been “reduced to practice”.

      1. 9.1.1

        ” It’s not clear why you should be entitled to claim all versions of working code based on your reduction to practice of one version.”

        Let me try to make it clear.

        An invented process can be invented at a higher level than that of a particular implementation. While one is required to disclose the preferred embodiment, the patent laws recognize that it is not always practical to describe EVERY embodiment.

        For example, the third step in a process might be say, a filtering step. There are many ways to do the filtering. You could use cheese cloth, or a strainer or a colander or filter paper. The filter might be selected on a desire for speed of filtering or speed of clean up. If you dont want to have to clean a strainer or colander, you might choose to use the cheese cloth. If you would rather use something bio-degradable, you might go for the filter paper. It doesn’t matter to the claimed method, so long as the undesired elements are sufficiently removed.

        The invention is at a higher level and not dependent on the particular kind of filter used and so, it is sufficient that step 3 of the claims says : filter the stuff so that there is not more than 1 % of undesired crap.

        Similarly, where the process processes information or a signal, step 3 can also read: filter it, perhaps with some parameters describing the desired filtering effect or level. One of ordinary skill in the art will understand which of the available filters to apply, Bayesian, Gaussian, general low pass… whatever.

        There is no need to burden the patent office or the applicant with a list of every filter imaginable….

          1. 9.1.1.1.1

            I didn’t say that any of the filters was patenable. Filtering is just the third step in the example inventive/patentlabe process.

        1. 9.1.1.2

          Again, Les, there is a big difference between (a) the recitation of a “filter” in process claim that transforms matter, when accompanied by a description of suitable filters in objective structural terms in the specification; and (b) the recitation of a function of “automatically determining information X with an information processing machine” where there is zero new structure disclosed in the specification and an infnite number of coding possibilities.

          There is no need to burden the patent office or the applicant with a list of every filter imaginable….

          Right. And likewise there is no need to burden the patent office or the public with patents on every imaginable information processing function carried out by old machines whose sole purpose is the processing of information.

          The “need” is the need for improved machines, claimed according to their structural differences relative to machines in the prior art.

          If you can identify some reasonable middle ground, I think that would be helpful, Les. Trying to defend the worst claims out there (and this Facebook claim is certainly one of them) isn’t going to help your cause (whatever that is).

          1. 9.1.1.2.1

            I’m not defending the claim.

            I’m trying to defend the examination process.

            Through the looking glass pronouncements for the SCOTUS that method are not methods because they are old which makes them abstract and the other absurd pronouncement turns a collegial, logical, reasonable process into a painful acid trip that serves no one.

            101 is about categories. That’s all.

            If the claim is too broad or vague, use 102 or 112 and show it.

            The claim above is a claim to a process. 101 is passed. Move on to 102.

            1. 9.1.1.2.1.1

              101 is about categories. That’s all.

              Well, you’re wrong about that and the Supreme Court has explained why.

              More importantly, eligibility considerations do not disappear when you change the number of the statute used to examine claims. The analysis is the same whether you perform it under a statute called “101” or any other statute.

              Do you believe that all non-obvious subject matter of any use to anybody is protectable with a patent claim, Les? Just answer the question. If the answer is “yes” then it’s not the Supreme Court that is your biggest problem. Your biggest problem is that you need to convince an overwhelming majority of the public, including nearly all judges and attorneys who have thought seriously about eligibility questions for any length of time, that they are wrong and you are right.

              If I were you I’d start by asserting that information itself is eligible for patenting. Convincing people that mental processes are eligible for patenting is going to be more difficult sell (and don’t forget to file claims to protect your reasoning while you’re at it — it’d be a shame to win the battle and lose the war).

    2. 9.2

      If you can not reduce it to practice, what right do you have to protect it.

      The problem is not in reducing it to practice, the problem is in describing what is being done.

      If I conceive of a bow I can reduce it to practice. Let’s say I reduce it to practice. Now describe its structure and mode of operation. If you describe it in terms of pulling a string and bending wood to create tension and fitting a notched arrow and using the tension to propel the arrow, okay that’s great. But you could also describe it by simply saying it fires projectiles. “I’ve got a machine in my hand that fires projectiles”

      Of course, firing projectiles also reads upon the catapult, the gun, the cannon, and rocket launcher and the missile silo. The problem isn’t that the bow has or hasn’t been reduced to practice, the problem is when applicants are intentionally vague (by leaving out limitations or using functional language) in an effort to capture more than what they have invented.

      Describing a bow by saying it fires projectiles is abstract, and that is true whether you have the bow in your hand or not. That’s because the description, while nominally fitting the machine you have in your hand, is not an accurate portrayal of what you have. You have a particular type of machine that fires projectiles. That claim would be valid. A claim to any machine that fires projectiles would not.

      1. 9.2.1

        If it is the first machine that fires projectiles, the claim would be valid. Whether a claim is too broad or not is judged under 102 and 103. The specification must describe the preferred embodiment, not all embodiments.

        1. 9.2.1.1

          If it is the first machine that fires projectiles, the claim would be valid.

          What about a claim that first describes “a machine that automatically fires projectiles at moving objects.”

          Valid per se because … first? Or valid per se because “automatic”?

          What about a claim that first describes “a machine that fires projectiles, wherein the projectiles are protected by a design patent granted on September 24, 2014.”

          Valid per se because … first? What’s the analysis?

        2. 9.2.1.2

          If it is the first machine that fires projectiles, the claim would be valid.

          No it would not.

          Whether a claim is too broad or not is judged under 102 and 103.

          Not solely. The applicant has failed to enable the full scope of his claim and it fails under 112, 1st. The applicant has failed to describe or possess the scope of his claim and it fails under 112, 1st. The applicant is claiming an abstract idea and it fails under 101.

          In the particular example I gave (which I admit would not be the common one) the claim would also fail under 112, 2nd.

          If he was the first to invent a machine that fires projectiles, 103 might be the only requirement it passes.

          The specification must describe the preferred embodiment, not all embodiments.

          There’s more to 112 than best mode.

          1. 9.2.1.2.1

            Les you have this nasty habit of thinking that you can claim whatever non-obvious thing you feel like so long as you put similar words in the spec and a single embodiment is enabled. That is not the law.

            If there are in fact 100 completely different ways of achieving an end, one cannot invent the first way and seek to claim all 100. That’s what Morse was about. Moreover, even if one had a substantial number of the ways (say 50) they still couldn’t use the functional scope to reach the other 50.

            A claim to a genus requires possession and enablement of a sufficient number of species to fill the scope of the genus. A claim to functionality requires proof of possession and enablement of a sufficient number of structures which perform all of the different ways of achieving the function such that they fill the scope.

            1. 9.2.1.2.1.1

              ….and what is sufficient scope when nothing like it existed before?

              As far as we know, there may only be one way to do it. If the claim is broader than the preferred embodiment and the claim is original (filed with the application), then clearly the inventor contemplated the range of embodiment encompassed by the claim and therefore had possession of the range.

  4. 8

    This is a classic example of a claim that recites old technology with nothing more than technologically meaningless abstractions (e.g., labels and legal relationships) laid on top of the technology.

    Computer programs have “settings” — files that instruct the computer or its program(s) how to respond to data. That’s older than the hills (this method claim was written using several method steps but of course it might as well have just been written as a single step: “maintaining” a setting file, with a description of the functionality conferred by the setting file; that claim would also be invalid, of course).

    The method here recites four steps. The first step, (1) “maintaining” a policy (a “setting”) isn’t really a step at all but simply an excuse to list the terms of “the policy” which, of course, is ineligible for patenting on its own terms. You can’t patent a “service policy,” whether it’s an insurance policy or a restaurant policy (“no shoes no service unless you are an entity distinct from entity X!”). It doesn’t matter how complicated “the policy” is if all that is happening is that you (or your Powerful Computer Brain) is consulting “the policy” based on a query and responding based on the policy. The limitation about the legal relationship between the “entity” who “maintains” the “network”, on one hand, and the “third party application” referred to in the policy, on the other hand, is no more meaningful than a limitation requiring that the maintainer of the third party application be “bald” or “born in Toledo.”

    The last three steps are just the ancient steps of “receiving a request” from an outside source, “determining” how to respond based on a “policy”, and “communicating” information in response to the outside source. They add nothing.

    1. 8.1

      This is a classic example of a claim that recites old technology…

      Ah, so since it’s reciting a technological solution, it’s eligible subject matter under 101, but invalid under 102 or 103? I agree.

      1. 8.1.1

        so since it’s reciting a technological solution, it’s eligible subject matter under 101, but invalid under 102 or 103

        Completely wrong.

        Using an old technology for the very purpose for which it was designed is not a “technological solution”, at least not from the perspective of a functioning patent system.

        Ball points and paper are also “old technology”, as you’ll surely recognize. Does couching ineligible subject matter — even if that ineligible subject matter is incredibly useful and valuable — in that “old technology” also confer eligibility to the claim?

        Of course it doesn’t.

        1. 8.1.1.1

          Using an old technology for the very purpose for which it was designed is not a “technological solution”, at least not from the perspective of a functioning patent system.

          Using a new technology for the very purpose for which it was designed is certainly a “technological solution”, no? The only difference in the two statements is whether the technology is “new” or “old” – hence, both are eligible subject matter, and the distinction is that one is novel and the other is not.

          Ball points and paper are also “old technology”, as you’ll surely recognize.

          Absolutely. And as you’ll surely recognize, a ball point pen is a patentable device, no? And if you were the inventor of the ball point pen, then you could surely patent its method of use, no? It’s a technological solution – getting ink from a tube onto paper in a consistent width line without drying, blobbing, or needing constant refilling – so it’s surely eligible subject matter…
          … just not anything new. So it passes 101, and fails 102.

          Does couching ineligible subject matter — even if that ineligible subject matter is incredibly useful and valuable — in that “old technology” also confer eligibility to the claim?

          Does the sole fact that a device is old rather than new suddenly make it non-eligible subject matter?

          1. 8.1.1.1.1

            Does the sole fact that a device is old rather than new suddenly make it non-eligible subject matter?

            Yes. If a device is old, then it fails under both 101 (which requires a new and useful innovation) and 102. Either way you get nothing out of the patent system so it’s not clear why you or anyone else would find this the least bit upsetting.

            The greater difficulty you are having appears to be with basic logic.

            a ball point pen is a patentable device, no?

            It was, a long time ago. Not any more. Not unless you improve it and recite new objective structure in your claim that distinguishes your improved ball point pen from the ball point pens in the prior art.

            if you were the inventor of the ball point pen, then you could surely patent its method of use, no?

            Sure. Nobody is saying you can’t do that. Seems a bit redundant if you have the composition claim but knock yourself out. But don’t forget that you’ll need to recite your ball point pen in your method of use claims and those claims will expire at the same time as your ball point pen patent.

            Here’s the issue you seem to be missing or dodging: after your patent on the properly claimed new ball point pen is expired, neither you nor anyone else can claim the use of that “old technology” for, e.g., writing out a non-obvious insurance policy or a non-obvious movie script or a non-obvious mathematical correlation.

            Do you understand why that is the case? If you can’t understand that, then there’s not much point in continuing further with the discussion.

            I might also ask you whether you believe that information itself is eligible for patenting. How about mental proceses? If you believe the answer to those questions is “yes” then you’re argument is not with these Supreme Court decisions but with pretty much every reasonable person in the country. You’ve got a lot of work to do, if that’s the case, and probably you should be barking up some other tree.

              1. 8.1.1.1.1.1.1

                Please tell everyone what “new” means in section 101 and show your evidence.

                Also, while you’re doing that, try to recognize that the subject matter eligibility considerations I’m discussing and the accompanying analysis doesn’t disappear even if that term is deleted from that section of the statute.

                Lastly, it’d be nice if you were to express your views about whether any subject matter is, in fact, ineligible for protection with a patent claim. Or is it the case that if you use some magic words you can claim pretty much anything? It’s a serious question because, depending on your answer, there really isn’t any point in trying to explain to you the analysis used by the Supreme Court or any other court to tank these invalid claims.

                1. You are the one saying that the following claim is invalid under 101 as being directed to nonstatutory subject matter because it is not “new” under 101:

                  1. A table including: a base and four legs extending therefrom.

                  Please, answer your own question and show us evidence that “new” in 101 is not simply a reiteration of novel and nonobvious from 102 and 103.

                  Please also cite three cases, or hell even one case, that supports your theory that my table is out under 101.

                  Thanks in advance.

                2. You are the one saying that the following claim is invalid under 101 as being directed to nonstatutory subject matter because it is not “new” under 101:

                  1. A table including: a base and four legs extending therefrom.

                  Yes I said that. Your table is not new, is it? 101 recites “new”. Maybe you have a different definition of “new”? Seems like it fails both 102 and 101 to me.

                  You disagree? That’s nice.

                  It doesn’t change the analysis. It just changes the numbers we use when we discuss how to determine whether a claim protects ineligible subject matter or not.

                  Please answer the questions I asked you. If you refuse to answer them, I’d be curious to hear your reasons for refusing. Otherwise I can take a good guess.

                  Maybe you can also think about a claim to “An improved table, wherein said table includes: a base and four legs extending therefrom, wherein said base supports a book, wherein said book comprises [insert extremeley valuable useful non-obvious information here].”

                  Tell everyone if that claim is eligible or not, and why. Then tell everyone whether you believe that such a claim should be granted. If your answer is “no”, please explain to everyone how such claims are to be rejected without invoking any eligibility considerations.

                  Thanks in advanced. You’re obviously a very serious and intelligent person so your thoughtful consideration of these issues is greatly appreciated.

                3. Les, New in 101 is a reiteration that 102 and 103 must also be passed.

                  Compare 1790 to 1793. What changed and why?

                  1790: “he, she, or they hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used,”

                  1793: “he or they have invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or
                  used before the application”

                  I would like to point out that “new” was added in 1793, as well as “composition of matter,” but not known or use was retained, although limited to before the application.

                  New seems to be an additional requirement over and above not known or used before the application. What could they have possibly intended?

                4. Seriously, Evidence?

                  Federico:

                  “The definition does not modify in any way the statement in section 101 that a new machine, a new manufacture, or a new composition of matter, can be patented; if a machine is not new, if a manufacture or composition of matter is not new, it still cannot be patented. The decision of the Court of Customs and Patent Appeals in In re Thuau, 135 F.2d 344, has not been overruled by the statute. The holding of this decision is simply that an old material cannot be patented as a composition of matter, because it is an old material, and the fact that the inventor or discoverer may have discovered a new use for the old material does not make the material patentable. To this extent the decision is affirmed by the statute, although some of the statements made in the decision are not completely defensible. Remarks have appeared in a few decisions and elsewhere that new uses are not patentable. When such remarks are made with reference to a patent for a machine or a manufacture or a composition, which machine, manufacture or composition is in fact old as such, and the argument is made that that the patentee has discovered a new use or application of the old machine, manufacture or composition, there can be little to criticize in such remarks other than possibly a looseness of expression. But if such remarks are interpreted to mean that a new use or application of an old machine, manufacture or composition cannot result in anything patentable then such statements are not and have never been an accurate statement of the law. As stated in the Revision Notes, a process which involves merely the new use of a known machine, manufacture, composition of matter or material may be patented provided the conditions for patentability are satisfied.”

        2. 8.1.1.2

          Under your analysis, a ball point pen was not patentable because it uses old technology for what it was intended.

          Ink marks, balls roll, ink wells hold ink.

          Under your analysis, the Wright Flyer is not patentable because it uses old technology for what it was intended.

          lumber provides structural support. Sheets of cloth harness the wind. Rope pulls something or applies tension. pulleys guide rope and allow it to move or be pulled.

          Even if computers were designed to compute (in the abstract), that does not mean that every use of a computer is not worthy of a patent. The first program to convert spoken word to text was clearly novel and patentable. So are different, latter developed methods.

          1. 8.1.1.2.1

            Round and round and round you go, Les.

            You’re creating a caricature of the actual analysis and using the caricature to reach an absurd result. And then you are using that absurd result to attack the actual analysis when it really only reflects badly on your ability to understand the analysis.

            1. 8.1.1.2.1.1

              This is your analysis:

              “Using an old technology for the very purpose for which it was designed is not a “technological solution”, at least not from the perspective of a functioning patent system.”

              I agree that it arrives at absurd results. I didn’t apply a caricature of it. I applied IT.

              1. 8.1.1.2.1.1.1

                The context here is information processing, Les.

                Information processing “technology” is different from other technologies because, well, it involves information (as opposed to objective physical structure and transformations of matter).

                The first program to convert spoken word to text was clearly novel and patentable.

                The answer depends on what exactly was claimed, of course.

                [shrugs]

                Endlessly citing examples of old technology that you find sexy or appealing really isn’t very compelling in this context where we are trying to fix the broken patent system and avoid even bigger problems in the future. Nobody is concerned that a ball point pen was once patented or an airplane was once patented or a light bulb was once patented. The concern is with patents on, e.g., methods of enforcing a policy “on a computer.”

                1. Right. But the logic behind your proposed solution is absurd. All inventions are made with known components used for what they are meant for. There is no reason that using a computer “for what it was mean for” (computing in the abstract) should disqualify ones invention from being patentable just as there is no reason using wood, cloth and rope for what they are meant for (in the abstract) should have disqualified the Wright Flyer as being patentable.

                2. the logic behind your proposed solution is absurd.

                  No, it’s not.

                  All inventions are made with known components used for what they are meant for.

                  That’s not “the logic behind” my analysis. That’s the “logic behind” your analysis, which is absurd because it leads to you results that you know are absurd. My analysis doesn’t lead me to those absurd results because my analysis requires that there be some new objective physical structure in the claimed apparatus/composition that distinguishes it from the prior art.

                  There is no reason that using a computer “for what it was mean for” (computing in the abstract) should disqualify ones invention from being patentable just as there is no reason using wood, cloth and rope for what they are meant for (in the abstract) should have disqualified the Wright Flyer as being patentable.

                  Your comparing apples and oranges. More specifically, you’re comparing an old programmable computer created for the purpose of processing information with separated pieces of wood, rope or cloth. That, my friend, is absurd.

                  A better analogy to illustrate the claims sought by so many computer-implementers is a claim to a “new” airplane, wherein the “new” airplane comprises list of passengers who are not to be admitted on the plane, wherein said list includes Bill Bradski from Pittsburgh, Pennsylvania. Or a “new” airplane, wherein said airplane is “configured” to fly from Boulder to Denver at 10 a.m. on Sunday.

                3. Processes are the first listed category. Processes are described with verbs, not structure. There does not have to be “objective physical structure” in a process claim.

                4. There does not have to be “objective physical structure” in a process claim.

                  True enough. I was responding to a specific hypothetical proposed by a different commenter. The point being that if your new objective physical structure is recited in your process claim, you are well on your way to avoiding any eligibility concerns. I suppose you might run into a problems with a claim to “A process of identifying [insert new structure described in objective structural terms here].”

                  If you want to be confident that you’ve removed eligibility concerns from your process claim, then you’d be wise to include a new step or steps that results in a physical transformation of matter that wasn’t previously described or was otherwise “unsolved” in the prior art. Without that, you’re always going to be at risk of protecting an ineligible abtraction with your claim, be it information itself or some generalized information processing functionality that is no less repugnant to the public’s sensibilities (we already know that many patentees could care less about that).

                  In any event, the mere fact that your claimed process “transforms data” is of very little significance in terms of determining the eligibility of that process. In part, that’s because we all “transform data” all the time, every day, using our brains. And mental processes aren’t eligible. Adding a pencil and paper doesn’t change that. Nor does the addition of a ball point pen or a pocket calculator to those processes.

                  Perhaps now we should circle back to the issue of how you would like Examiners to evaluate information processing claims for obviousness. Previously, Les, I saw you provide a very interesting obviousness analysis where, in the course of your analysis, you argued that some extremely different structures were “equivalent” in the context of information processing. I thought it was a clever argument and possibly a winning one … but it struck me as the kind of argument that, if the PTO made it, you and other commenters’ heads would be exploding like a helicopter load of popcorn kernels dumped into a volcano.

          2. 8.1.1.2.2

            The first program to convert the spoken word was a table lookup… and not patentable. The signal analysis was also old… and used for signal analysis (I think it was an FFT).

            What was new was the interface that generated the numbers used, not the computer.

            1. 8.1.1.2.2.1

              Fine, then the umteenth method for converting the spoken word to text was patentable. For example:

              27. A method of applying knowledge-based rules in a processor-based system to recognize an input speech signal as a word in a natural language, the input speech signal comprising vocalic and non-vocalic intervals, each of the vocalic intervals having a pitch period, the method comprising steps of:

              capturing and storing the input speech signal;
              segmenting the input speech signal into a series of segments including vocalic intervals and non-vocalic intervals, the vocalic intervals having a frame length computed based on an estimation of the pitch period of the vocalic intervals of the input speech signal;

              generating an acoustic feature vector by characterizing the series of segments based upon acoustic events detected within the input speech signal;

              retrieving from a store a dictionary having a multiplicity of words, each one of the multiplicity of words described by a phonetic transcription and at least one acoustic event transcription; and

              comparing the acoustic feature vector to the acoustic event transcriptions of the multiplicity of words to select a word choice.

              link to google.com

              Knowledge-based speech recognition system and methods having frame length computed based upon estimated pitch period of vocalic intervals
              US 5799276 A

              1. 8.1.1.2.2.1.2

                Les, “generating an acoustic feature vector by characterizing the series of segments based upon acoustic events detected within the input speech signal;”

                It doesn’t say how to do this. The claim may be vulnerable from a over-claiming perspective.

      2. 8.1.2

        Ah, so since it’s reciting a technological solution, it’s eligible subject matter under 101, but invalid under 102 or 103? I agree.

        Haha, reciting a technological solution? Let’s be clear here – facebook’s own facebook mobile app meets every single limitation up there but for the ownership/maintenance by a third party. That code sure doesn’t distinguish as to which legal entity owns the facebook mobile app.

        So did facebook create a new technological solution or is facebook describing an old technological solution with a claim to the “new” idea of transferring IP rights? Is transferring IP rights a technological solution?

  5. 7

    First time poster, with a comment and a question.

    1. It seems that claims like this are doomed. We’ve had a lot of 9-0’s and I don’t think Congress has the will or the inclination to amend 101. While I agree that some of the opinions are ambiguous (What, precisely, is abstract?), the claims being invalidated have been egregious and deserved a quick death. That said, I do think that some software/business might have merit.

    2. How can we draw a line or craft a rule that excludes the worst of the worst (Bilski, Alice) while still allowing worthwhile software/business method claims? There was some discussion of this previously but the discussion didn’t progress much.

    Understandably, a lot of people invested in these types of patents are upset and focusing their attention on criticizing the SCOTUS. I think that, collectively, our energy would be better placed in identifying a solution that allows some software/business method claims while addressing the concerns of the SCOTUS, and others.

    1. 7.1

      Go, well everyone has been asking for a business method that everyone will agree should be eligible. Post one, any one, and explain why it passes muster.

    2. 7.2

      Go Arthur: 2. How can we draw a line or craft a rule that excludes the worst of the worst (Bilski, Alice) while still allowing worthwhile software/business method claims?

      You need to start by identifying what you think a “worthwhile” software or business method claim looks like. What makes that type of claim (the type you are envisioning) “worthwhile”?

      Many people (myself included) are of the view that granting information processing claims that, e.g., do not recite new objective physical structure distinguishing the “new” information-processing machine from the prior art are not “worthwhile” because, in part, such claims inevitably take the patent system over like a cancer (absent some radical changes to the patent system or some profoundly stricter rules about such inventions must be claimed and examined).

      One additional problem with patents on methods of doing business per se — e.g., accounting methods and marketing methods devoid of technological contributions — is that new methods of doing business per se hardly seem to be the sort of “Useful Art” that patents are necessarily useful for “promoting progress” in. Profits are the incentive for businesses to innovate new business models. That’s why we have capitalism. Businesses that can’t compete on business terms (e.g., because they can’t figure out how to relate to their customers) don’t deserve to be in business. And businesses that can compete should compete, for the public’s benefit.

      1. 7.2.1

        Fundamentally, I agree with both you and Ned. My post was mostly a reaction to those who only criticize the Supreme Court without offering a way forward.

        I just think the discussion suggested would be infinitely more productive than people continuing to insist the Supreme Court is wrong.

        I did do a brief search for a reasonable looking business method…and couldn’t find one.

        However, check out US 12/932,797. Can’t post the independent claim here, but check it out for a laugh.

          1. 7.2.1.1.1

            I do believe that’s the first time I’ve seen a 4-column claim 1.

            And it was allowed as filed without office action.

          2. 7.2.1.1.2

            MM, but the man (Stanley Benjamin Smith) has 21 patents of the same kind. But I must say, when I first read that claim, I laughed so hard, it took me several minutes to recover. It makes no sense, and spans 4 patent columns.

            Then the spec! “Data supply chains?” “Pricing configuration schema?”

            S B Smith? What if his name was Benjamin Stanley Smith?

            He might be collecting data to show just how broken the patent system and the patent office is. But the PTO is smart. First action allowance.

        1. 7.2.1.2

          “I just think the discussion suggested would be infinitely more productive than people continuing to insist the Supreme Court is wrong.”

          Spot on. Our peers in other fields routinely deal with SCOTUS decisions they view as disapointing. The most successful approach is invariably to get over it and counsel clients accordingly. Whining, like many among the patent bar seem to be doing, doesn’t work.

    3. 7.3

      2. How can we draw a line or craft a rule that excludes the worst of the worst (Bilski, Alice) while still allowing worthwhile software/business method claims? There was some discussion of this previously but the discussion didn’t progress much.

      There actually has always been a rule, and the rule is that functional claiming is not allowed. A claim using functional language is a claim to an end, rather than a claim to a means. A claim to an end is abstract and would allow the patentee to disallow superior competing products no matter how different in structure or mode of operation. Because those products would be disallowed, there is no incentive to research them, and there is no incentive to disclose because you couldn’t practice even if you did disclose. And there is no incentive for the inventor to further disclose any refinements to his invention because he already has the whole field locked up.

      A claim is abstract when it is directed to an end, not a means. This is most often accomplished via functional language. A claim is abstract if its novelty and non-obviousness lies in its functional claiming.

      1. 7.3.1

        Agreed.

        One question for those who wish to protect software and information processing machines with patents is whether they can be satisfied with only a tiny subset of particular utilities being eligible (e.g., improved computing speed) along with a requirement that evidence of such improvements is provided in the application as filed, wherein the improvement will need to be substantial and unexpected in order to obtain a patent, and wherein the improvement flows from the recitation of elements in the claim and is not recited merely as a desired result.

        That’s something they should begin thinking about it. Some of them already are, I’m sure.

  6. 5

    There are grammatical problems, but the intended meaning is clear. The claim is directed to a process. It is not abstract. It is not “directed to” “a fundamental building block”, it is not directed to a product of nature, it is not directed to a law of nature, it is not directed to mental steps, it is not directed to math. There is a machine. There is a transformation: the information given to the third part ap is filtered, limited, made smaller that it might otherwise be or at least unapproved information is transformed into information approved for dissemination.

    It addresses a real world problem. How to police information given to third parties without having to get into the nitty gritty of every third party ap that comes down the pike.

    I agree that someone will allege it fails 101, but it does not. Whether the Supremes recognize the error of their ways or not is a crap shoot. My money would currently be on No.

    1. 5.1

      But is the claim directed to a technical science or social science? A process of selecting information to make public can be considered a technical process of communication. But is the idea of telling a secret to one friend, or group of friends, and not another friend or group, only an abstract idea.

      Maybe I missed something?

      1. 5.1.1

        101 identifies the categories of inventions that can be patented. Processes are one of the categories. That is the end of the 101 discussion. There is no “technical” requirement. And if there were, who would be the judge as to whether something was “technical”.

        In any event, this claim is “technical” in that there is a network, and ap and a processor involved it performing the process.

        1. 5.1.1.1

          Maybe the more appropriate question to ask is whether the claim fits under the category of “to promote science and the arts”, and it seems recently that judges are actually deciding that question in the negative.

          1. 5.1.1.1.1

            Clearly Facebook thinks this feature is needed in order to promote the art of aps. Else they wouldn’t have spent the time and treasure to patent it. Anyone blocked by the patent would necessarily think so too.

            1. 5.1.1.1.1.2

              “Anyone blocked by the patent” Patents written on paper do not block anyone! The judicial process requires the patentee go before a judge to enforce the patent just as Dennis suggests.

              Good Luck!

          2. 5.1.1.1.2

            additionally, promoting science and useful arts is the enumerated reason the founders gave congress the power to secure to inventors and authors there exclusive rights.

            It is not a requirement of each individual patent.

              1. 5.1.1.1.2.1.1

                You agree that it is not a requirement, then you allege it is grounds for denial.

                You bucking for a position on the Supreme Court?

                1. and all laws that have unintended consequences should be repealed, I suppose.

                  If one person dies because they couldn’t get out of their burning car because of their seat belt, then the law that requires seat belts is invalid.

                  Is that it?

            1. 5.1.1.1.2.2

              It is not a requirement of each individual patent.

              No, it is. A statutory scheme without a utility requirement, for example, would be unconstitutional. Congress does not have the unlimited power to assign exclusionary rights on whatever it feels like.

                1. By that reasoning one need to be in a militia to own a gun.

                  Sure, if you completely ignore that the former is a grant of power to a government that was designed to be of limited powers, and the latter was a denial of power to that same government or if you ignore the factual differences that the people routinely kept guns on a personal level while Jefferson never gave out patents for any old reason, then yeah I guess guns and patents are exactly the same thing.

                  I just want to be clear here – the wright brothers first invented a machine that could fly. Are you suggesting that they could write a claim that would say “We claim all machines that can fly” and Congress could constitutionally write a statutory scheme that would give them exclusionary rights to all flying machines for 250 years?

                  The wright brothers invented a biplane made out of spruce, and a poor one at that. There have been countless structural changes since then, not the least of which is the invention of the helicopter. Congress lacks the power to grant the wright brothers a right to exclude the helicopter, no matter how broadly the brothers choose to describe their invention and no matter how lax a statutory scheme congress wants to create.

                2. “the wright brothers first invented a machine that could fly”

                  No, they didn’t. Many others were first. Even kites flew. Some with wings.

                  What they patented was a control system that worked.

                3. So, your legal reasoning is

                  the “in order to _______” preamble portion of the various articles of the constitution is controlling or ignorable depending on whether you like it or not?

                4. So, your legal reasoning is the “in order to _______” preamble portion of the various articles of the constitution is controlling or ignorable depending on whether you like it or not?

                  Well I don’t personally agree with the interpretation of gun ownership, but the court has always construed the bill of rights more liberally than the grant of powers in general for precisely the reason I said – the federal government is of limited powers. To ignore the particular requirements of the patent clause would result in the interpretation that Congress could essentially grant scopes that coincide with monopolies (i.e. preemption of entire fields) via the patent power. That isn’t how the patent office functioned during the times of the founding fathers (and Jefferson was a patent examiner and inventor himself) nor would it make sense in view of the first amendment (even if Congress originally had the power to monopolize claims to ideas, it lost the power with the bill of rights).

                  The history is pretty clear that patents have always been about claiming your particular way of solving a problem. This isn’t a claim to solving a problem. This is a statement that restricting personal data (“keeping a secret”) is a good thing, and the applicant would like to claim every way of achieving the good thing.

                  There is an eligible invention – facebook could describe what information it considers important to keep, how it allows users to input those preferences and how (in detail) it “determines” if the data can be given out (which I assure you is a set of basic true/false checks) and that claim would be obvious but eligible. Facebook chooses not to seek that invention because it is not commercially valuable. That’s fine. But that doesn’t mean they get a broader scope just because the broader scope would be commercially valuable.

    2. 5.2

      “the information given to the third part ap is filtered, limited, made smaller that it might otherwise be or at least unapproved information is transformed into information approved for dissemination.”

      Oh – you mean math. :)

      “information transformed into information” is nothing but math.

      1. 5.2.1

        There is no math involved here. Not that that matters.

        If you insist that math is being claimed, kindly identify the claimed equation.

        1. 5.2.1.1

          “determining by a processor whether the setting specifying which data about the first user the third party application may share with other users in the social networking system allows the second user access to the requested information;”

          1. table lookup (setting specifying which data about the first user)
          2. set membership (other users in the social netwrk system, second user)
          3. equality test (may share)
          4. assignment (data with second user)

          It can get a LOT longer if we try to go into math of the symbolic analysis of the claim…

          The computer can only process math.

          Any computer that does otherwise is usually taken out of service because it is broken.

              1. 5.2.1.1.1.1.1

                So jesse is your brain all math? Or equivalent to a computer that is all math?

                1. “Is your brain all math?”
                  Ambiguous question. The brain is composed of a few billion cells, each of which has quite a few million atoms.

                  If you actually mean “Is your mind all math?” then the answer is most likely, yes.

                  Equivalent to a computer? no. There are more available states in a single cell than can exist in a digital computer of current size. Even reduced simulations still take hours of computations for a simulated time of just a few microseconds. So simulations of a brain are VERY reduced (they might be close to an earthworm though). The higher simulations don’t have enough detail…

                  Now stepping outside of the emulation of an organic brain for a moment,

                  Watson is the closest thing currently in operation. They are still learning how to program it for learning… And it doesn’t have a very good feedback loop yet, so it can’t learn by itself. Watson still needs someone to evaluate the information before it is provided to the system for its own evaluation and storage.

                  The problem is still adding metarules to the system… People have to do that, the software can’t do it for itself yet.

                2. jesse: you have no intellectual foundation for your contentions. Instructions for a machine are math? A real machine with real circuits taking a real space, taking real time to work, and using real power is abstract math?

                  By the way jesse, what is math? Where is it?

                3. I’ll keep it simple:
                  “noun
                  1.
                  (used with a singular verb) the systematic treatment of magnitude, relationships between figures and forms, and relations between quantities expressed symbolically.
                  2.
                  (used with a singular or plural verb) mathematical procedures, operations, or properties.”

                  thus a act of mind. Wheither that be a simple one that does nothing but follow the rules of math, or an ant.

                  And since you don’t seem to know, instructions for a computer are nothing but math operations.

                  “A real machine with real circuits taking a real space, taking real time to work, and using real power is abstract math”…

                  never said that.

                  I said it emulates the math of boolean algebra combined with the math procedure called an instruction cycle.

                  The machine is a creation. Patent it all you want.

                  But the math that the machine can carry out should be off limits.

        2. 5.2.1.2

          Les, I second jesse’s observation. A GP digital computer has at its heart one or more ALUs. All they do is process data using math or logic.

    3. 5.3

      Les, from the point of view of hardware, how is a machine improved. I see you address how information flow in improved, but that is not the same thing, is it?

      1. 5.3.1

        If the machine is an information processor, then an improvement in the flow of information would improve the working of the machine, no?

        1. 5.3.1.2

          Abstract iDan, if the machine is altered, or if the machine is claimed as part of a process where there is a physical transformation, I would agree that the subject matter might be eligible.

          Take the latter, applied to data compression. The physical state of the signals or data storage of the information is changed. I think that might be enough.

          Alappat is another example. The physical display was altered even though the novelty was in the algorithm. The algorithm was applied to produce something new and that something new was clearly physical.

        2. 5.3.1.3

          Under CAFC jurisprudence related to means plus function (MPF) claims for a generic computer, the programming of a computer by an algorithm creates a new computer. So, your statements works there. I’m just not sure how much of that jurisprudence is valid after Alice, though they’re in two totally different areas (101 v. 112 paragraph 6).

          Under my theories, your statement is also valid, as the computer is programmed with a new and useful technique and therefore is a new and useful machine.

      2. 5.3.2

        I don’t know why your bring up improvement. Improvement is not a requirement.

        What machine are you referring to?

        The claim is to a process.

        The process appears to improve social networks.

        1. 5.3.2.1

          And “social network” is an abstract term. Originally from a “club” environment attempting to describe a group of people… Very much like “tribe”, though tribe has some physical characteristics (frequently genetically related).

            1. 5.3.2.1.1.1

              What is being claimed is a process.

              Mental processes are processes.

              Are they eligible for patenting, Les?

              You should make your views on this issue clear, Les, because otherwise people may think they are having a different discussion with you than the one they are actually having.

                1. Actually, it is.

                  The “mental process” is translated to math, with sufficient detail to allow a computer to make the decisions.

                2. impermissible gist.

                  the claim recites a network, an ap and a processor.

                  don’t read those out of the claim.

                  the claim does not recite a mental process.

              1. 5.3.2.1.1.1.2

                So, cite a document and rejected under 102. I’ve got no problem with that. Why didn’t you or your colleague do that?

        2. 5.3.2.2

          Les, even a process has to be new or improved, and the clue to eligibility is that it produce new or improved physical result, which, if you think about it, must be a new or improved a machine, manufacture or composition. That is essentially the holding of Diehr.

          Processes not involving involving a physical transformation are not statutory. The Supreme Court has not gone so far as to make this rule categorical, but they have never approved anything that does not produce a new or improved physical result.

          1. 5.3.2.2.1

            Ned –

            You know I don’t accept half of with the Supreme Court DOES say.

            Why on earth would you think I would accept as law something the Supreme Court has NOT SAID?

            1. 5.3.2.2.1.1

              Well Les, it is important to understand, I think, what the Supreme Court is saying. The problem is, of course, is that it is not using the English language in a way that is particularly clear.

  7. 4

    I would still like an explanation of how a machine, even let’s say a special purpose chip, can be “abstract.”

    I don’t think the abstract exception was ever meant to include anything really built.

    1. 4.1

      You seem to be purposefully misunderstanding the analytical approach, Night. Nobody has said that a machine is “abstract.”

    2. 4.2

      ^^^ This is the reality of the Alice decision.

      When one is enable to “gist” and – yes, the “nominalist” rhetoric is in play – meeting the words of the statute as far as the statutory categories is no longer “enough.”

      I would add that certain people will spend incredible energy spinning a very contrived retelling of history in order to preserve the statutory categories, but such a comment seems to offend key people.

    3. 4.3

      “I would still like an explanation of how a machine, even let’s say a special purpose chip, can be “abstract.””

      Claim 1. A method for doing something abstract.
      Claim 2. A special purpose chip for doing something abstract, comprising lots of detailed and well-specified components all laid out just so.

      … and then just argue that they stand and fall together, as in Alice. Poof, claim 2 is abstract.

      It may be expensive, but perhaps method and system claims should be delegated to separate applications. It may well save the latter, and if it means that only wealthy corporations can have valid patents, well… isn’t that the direction we’ve been going in already?

      1. 4.3.1

        Dan, I don’t misunderstand anything. I understand this very well. The fact that the SCOTUS did it and came up with some method judges can apply does not make it right nor does it mean that it makes scientific sense. All it means is that it is capable of being administered by the current legal system.

        Too bad you don’t understand that.

          1. 4.3.1.1.1

            To avoid any further confusion with DanH (even though I was here first ;) ), I’ve changed my handle.

        1. 4.3.2.1

          “How can you do something abstract? If you do it, its not abstract.”

          How would you define “abstract”, Les?

          1. 4.3.2.1.1

            I wouldn’t. I’d wait for the Supremes to do that. But like the Supremes, I know it when I see it. And if a machine is doing something, that something is not abstract.

            1. 4.3.2.1.1.1

              Oh, come on, we’re just as smart as those old fogeys are… Can’t we come up with a workable definition for “abstract” beyond your suggested “not able to be done by a machine”?

              Is a claimed method automatically abstract if it doesn’t recite performance by a machine?

              1. 4.3.2.1.1.1.1

                Of course not. A machine doing it is sufficient indication that it is not abstract. It is not necessary.

                1. Then “not ‘done by a machine'” isn’t even a definition we can use for ‘abstract’. Is there really no viable definition, in your interpretation?
                  And simply saying “yes, there is one, but I don’t know what it is until the Supreme Court tells me,” may be valid, but it’s a bit of a cop out.

                2. A machine carrying out the rules of math is no different than you carrying out the rules of math.

                  The rules of math are abstract.

                3. If the Supremes can cop out, why can’t I? They get paid more than me, get the whole summer off and have clerks that do their work for them.

                4. “A machine carrying out the rules of math is no different than you carrying out the rules of math.”

                  A machine picking crap out of cotton is no different than you picking crap out of cotton.

                  See how much sense your assertion makes?

                  “The rules of math are abstract.”

                  Even if that were true, so what?

                5. In both cases of the cotton,

                  SELECTING crap requires an abstract analysis of what is picked to decide if it is crap.

                  Math is an abstract activity. An exercise in logic. And that should not be patented.

                  How would you like it if logic gets patented? Would you like to have to pay a royalty every time you use logic?

                6. Les A machine picking crap out of cotton is no different than you picking crap out of cotton.

                  Right, Les, but there is a difference (recognized by most of us but apparently not you — please confirm) between physically separating distinct objects in a mixture, on one hand, and “doing math” on the other.

                7. Of course not. A machine doing it is sufficient indication that it is not abstract. It is not necessary.

                  That depends on how you define “doing it.” Does your computer have a “determine privacy settings” command? Or does it have a bunch of more basic commands which, when strung together, a human being would interpret as determining the privacy settings? Storing settings based on radio button inputs, comparison of booleans, that’s concrete. The claimed functionality up there is an abstraction of that.

                  That’s ultimately what the court is trying to get rid of – an applicant inventing one means of achieving something but laying claim to the end result. That’s the abstraction that patent law does not allow. You’re entitled to your way of doing things, not every way.

                  I would agree with you that 101 is perhaps not the best way to deal with the issue (I have always thought it was a scope of 112, 1st issue) but there’s nothing wrong with saying “claiming the end result is not allowed” while saying “and by the way, there’s no way you can prove you have every way of achieving the end”, the latter inherently creates the former.

              2. 4.3.2.1.1.1.2

                The dictionary helps sometimes.

                But as has already been pointed out, if you are trying not to understand the analysis, you probably won’t be able to understand it.

              3. 4.3.2.1.1.1.3

                Jesse –

                You assert that:

                :SELECTING crap requires an abstract analysis of what is picked to decide if it is crap.

                Math is an abstract activity. An exercise in logic. And that should not be patented.:”

                Please identify the components doing the abstract analysis of what is to be picked to decide if it is crap in the device described in this patent:

                link to google.com

                1. Actually, the cotton gin separates anything above a given size. It doesn’t identify crap.

                  What it separates out may include crap… but it also includes seeds for the next years crop, or for oil extraction.

                2. Please identify the components doing the abstract analysis of what is to be picked to decide if it is crap in the device described in this patent:

                  The modern day equivalent to what the computer-implementers are doing is to claim methods of using the cotton gin on “gin that was delivered by a carriage, wherein said carriage is embossed with a trademark” or “a method, wherein said method comprises maintaining a list of entities who are entitled to use a particular cotton gin, wherein at least one entity is a foreign corporation”.

                3. “Actually, the cotton gin separates anything above a given size. It doesn’t identify crap.

                  What it separates out may include crap… but it also includes seeds for the next years crop, or for oil extraction.”

                  I notice you didn’t identify the components doing the abstract analysis of what is to be picked to decide if it is crap in the device described in the patent.

                4. The operator puts dirty cotton in and turns a crank. The operator does not decide anything but to show up for work. Not all filtering is math.

                5. If you put dirty cotton in you get dirty cotton out.

                  Might not have big lumps in it, but deciding what is crap and what is not has not been carried out by the cotton gin.

                  The person that carries the results away still has to wash the cotton (even deciding on what detergent to use, bleaching…) or separating the crap from the seeds.

      2. 4.3.3

        and then just argue that they stand and fall together, as in Alice. Poof, claim 2 is abstract.

        I think the problem is you’re focusing on this:

        comprising lots of detailed and well-specified components all laid out just so.

        when you should be focusing on this:

        A special purpose chip for doing something abstract,

        Because Applicant isn’t claiming he invented the computer. Applicant is claiming he ran new code through a processor. If you were to create a system claim and say that the computer is placed inside a man-made concrete room, that wouldn’t help either, because the invention is still the code being run through the processor.

        Regardless, most of the time you could make a chip for doing something non-abstract if you just limit yourself to your particular means rather than claiming the end. That’s called 112, 6th, and its the proper way to be doing things.

        1. 4.3.3.1

          Regardless, most of the time you could make a chip for doing something non-abstract if you just limit yourself to your particular means rather than claiming the end. That’s called 112, 6th, and its the proper way to be doing things.

          Unfortunately, no. Claims 1-17 and 35-39 of US 5970479, one of the Alice Corp patents, only recited means. You know, those things under 112, 6th that the Supreme Court nonetheless held to be abstract?

          1. 4.3.3.1.1

            Claims 1-17 and 35-39 of US 5970479, one of the Alice Corp patents, only recited means.

            What was the corresponding objective structure distinct from the structure in the prior art?

            1. 4.3.3.1.1.1

              What was the corresponding objective structure distinct from the structure in the prior art?

              Are you saying “non-abstract” is equivalent to “novel”?

              What if you have two identical patent claims, each reciting “1. A system, comprising means for doing something awesome” and one specification shows a standard processor and the other specification shows an entirely new processor. Is one claim directed to a non-eligible abstract idea while the other is directed to an eligible apparatus?

              What if the “entirely new” processor is new, but is a combination of known sub-processors? Is it still eligible under 101, even if it will fail 103?

              1. 4.3.3.1.1.1.1

                Are you saying “non-abstract” is equivalent to “novel”?

                Nope.

                What if you have two identical patent claims, each reciting “1. A system, comprising means for doing something awesome” and one specification shows a standard processor and the other specification shows an entirely new processor. Is one claim directed to a non-eligible abstract idea while the other is directed to an eligible apparatus?

                Quite plainly, those two claims are not identical in scope when properly contstrued. Assuming this “entirely new” information processing device is described in objective structural terms distinguishing it from the prior art, I don’t see why there is an eligibility problem.

                What if the “entirely new” processor is new, but is a combination of known sub-processors? Is it still eligible under 101, even if it will fail 103?

                If the configuration of the combined old elements is set forth in the claim in objective structural terms then it could certainly be eligible under 101 and still fail under 103.

                Even as we speak all kinds of new eligible combinations of matter are failing under 103.

          2. 4.3.3.1.2

            Unfortunately, no. Claims 1-17 and 35-39 of US 5970479, one of the Alice Corp patents, only recited means. You know, those things under 112, 6th that the Supreme Court nonetheless held to be abstract?

            Just reading claim 1 I can see that isn’t true. It says “stakeholder input means” which apparently means a keyboard or network interface for receiving data, but then the claim goes on to say what type of data it wants entered, which is pure functional claiming. It’s no different than saying “a processor configured to…”. That claim is not directed to a processor (as clearly a processor is non-novel) it’s directed to the code being run through the processor. Same thing here – it’s a keyboard receiving input for…

            Regardless you seem to be missing the point – when a claim could be infringed by “anything that achieves this result, regardless of if it achieves it in the same manner as contemplated by the applicant” that claim is invalid. Whether you want to call it 101 or 112, 1st, that claim can’t survive, because patent law does not protect ends, it protects means.

            If I posit a telegraph (which is a machine that has a defined structure) and that telegraph achieves a result (printing at a distance) I get the structure of the telegraph and I don’t get the functional result, which ought to be pretty simple to understand, because there’s all sorts of machines that achieve that result that I haven’t invented, so under what basis could congress grant me a right to exclude others from using them? The telegraph has a particular structure and particular means of working to achieve the functional result, and those can be claimed. The end result can’t be. Facebook is free to disclose and claim their algorithms for achieving third party app privacy. Facebook is not free to claim the concept of achieving third party app privacy by writing a claim that reads on every possible means of achieving it.

            1. 4.3.3.1.2.1

              Just so we’re sure to be on the same page with respect to claim 1: Is claim 1 obvious over a reference that contains two keyboards, a hard drive and a processor connected to the hard drive? That is what a means-plus-only interpretation of claim 1 would yield.

              If you agree that you couldn’t find it obvious over just a citation of two keyboards, a hard drive and a processor, you are admitting the claim does not have only means plus limitations.

            2. 4.3.3.1.2.2

              Just reading claim 1 I can see that isn’t true. It says “stakeholder input means” which apparently means a keyboard or network interface for receiving data, but then the claim goes on to say what type of data it wants entered, which is pure functional claiming.

              You seem to be forgetting that the third word in “means plus function” is “function”. See MPEP 2181(B).
              I’ve noticed that many Examiners are confused about this concept and think that they can issue a rejection under 112, sixth paragraph – as in, they see a claim reciting ‘means’ and summarily reject it without bothering to make a written description analysis. You’ve repeatedly said that functional claiming isn’t allowed, despite the statute saying “an element in a claim… may be expressed as a means… for performing a specified function without the recital of structure…” Are you one of those Examiners?

              1. 4.3.3.1.2.2.2

                I’ve noticed that many Examiners are confused about this concept and think that they can issue a rejection under 112, sixth paragraph – as in, they see a claim reciting ‘means’ and summarily reject it without bothering to make a written description analysis.

                112, 6th is not a vehicle for rejection. You are correct that you must make a written description analysis, but you’re failing to take into account the ramifications of placing it in 6th. When you place it in 6th the statute commands that it will be construed to cover the structure in the spec and it’s equivalents, but OUTSIDE of 6th, the standard BRI applies, and a claim to “the function of doing X” literally covers ALL WAYS of doing X.

                By placing it within 6th, you considerably shrink the coverage and thus considerably shrink the enablement and description requirements. 6th is just a right to use MPF words to claim structures by different language. It is not true functional language. When you say “a module means for doing function X”, the system isn’t offended because you must include an algorithm and the claim is limited to that algorithm, so it’s no different than just sticking the algorithm in your claim to begin with.

                Conversely, a claim to “code that does X” is a strict functional claim. It is a claim to ALL of the algorithms which would achieve a result and unknown and possibly unposited-by-you algorithms that achieve the result would infringe the claim. This is the cardinal sin that must always be worried about – that you’re using imprecise language (discussing the result of your invention rather than your invention itself) to carve a larger scope than you have proven you have. Now, you do have to do a 112, 1st analysis to this as well, but the Supreme Court precedent is pretty clear that the result is always going to come out the same way. A claim to ALL ways of achieving something (unless the other limitations otherwise bind the functional language into a manageable state) isn’t going to be met because you can never prove you’ve enabled/described every way of achieving something.

                The history is that Morse used functional language, the USSC threw it out and then after that courts were interpreting claim language to be limited to the disclosures in the spec (i.e. they judicially created and randomly applied 112, 6th to give a smaller claim construction to save claims). Then in Halliburton the Supreme Court said no, you take the full range of the claim and construed “means for” by its full functional scope and summarily declared the claim invalid. Then in the ’52 act, Congress created 6th to give people a standard option of doing things the way they used to (thus overruling the claim construction part of Halliburton). But the overall holding of Halliburton is still correct and has never been overruled – when a claim comes along with a limitation that IS directed to the full scope of every way of achieving something, that claim is going to be invalid. That is functional claiming.

                1. Just to be clear, Random, the Halliburton court was concerned with the “apparent” the scope of the claim regardless of its narrowing construction accorded by Westinghouse v. Boyden Power Break. The apparent scope was very broad and regardless of the narrow scope of the claim after construction, the apparent broad scope was sufficient threat to intimidate people who would literally infringe the claim before the narrowing construction.

                  Moreover it is clear that if the broad claim covers only narrow embodiments and their equivalents, the claim itself does not inform as to the metes and bounds of the claimed invention as required by the statutes and by case law. In other words, such a claim is inherently indefinite.

                  Regardless of the significant problems caused by very broad claims that are construed in court to cover something significantly less, Judge Rich, then a mover and shaker from the New York Patent Law Association and representing all patent bar associations and in particular the Milwaukee Patent Law Association, urged that §112(f) be passed. He actually wrote it from an initial draft given him by the Milwaukee Patent Law Association.

                  I urged when I was chair of the AIPLA Patent Law Committee that we repeal §112(f). I was unable to persuade bar to do that despite the fact that nobody wanted to use the statute anymore due to recent cases providing very narrow construction of the corresponding structure and equivalents. However, the ABA IP section did vote to repeal §112(f) because of the indefiniteness problem.

    4. 4.4

      Not to sound like Malcolm, but consider the following claim:
      1. An apparatus comprising, a computer connected to a video display and configured to display the following video sequences: a) Malcolm Mooney is a patent attorney who files an application; b) Malcolm gets a 102 rejection and interviews the examiner with whom Malcolm falls in love; c) the examiner doesn’t like Malcolm and sends a final rejection which adds a 101 rejection. d) Malcolm falls in love with the examiner even more.

      Should this really be statutory? of course not. See 20050244804. there is no doubt this is outside of congressional intent for 101. You might say it should be rejected as being obvious, but adopting a rule that certain types of “informational” features in a claim are always obvious is a tempting solution but would probably end up backfiring. I can see some types of claims (such as video games) where the actual content being displayed may be part of the argument why it is non-obvious (e.g., displaying a certain sequence vs. another sequence depending on the player’s actions). Ultimately such an evolving doctrine (ignoring certain parts of claims in a 103 analysis) may end up swallowing all of software (perhaps even worse than Alice).

      The problem (as we all know) is the elusive definition of abstract idea and where you draw the line. Personally, I think the Alice claims were concrete enough to pass 101 and proceed to 102/103 (which it would not pass). Thomas’ simplistic approach is also problematic because I can think of some “abstract ideas” that adding a computer would be enough to push it over the fence into being on statutory ground. What is an abstract idea should be a balancing test (the USPTO Bilski guidelines operated this way) and whether it is tied to a general purpose computer should be one factor.

      I think Congress needs to step in and pass a CLEAR 101 statute. I don’t expect them to overrule Alice (personally I would support that but it will never happen) but clear lines need to be drawn.

      1. 4.4.1

        Of course not?

        Why?

        Its a machine.

        What if no prior art video displays were ever known? Would it not be a machine then? If your decision is influenced by the prior art, then you are not in 101 land, are you?

      2. 4.4.2

        “You might say it should be rejected as being obvious, but adopting a rule that certain types of “informational” features in a claim are always obvious is a tempting solution but would probably end up backfiring.”

        Not ‘obvious’, but simply lending no patentable weight – see, e.g., the printed matter doctrine.

        Regarding 20050244804, isn’t that anticipated by the movie Dark City? ;)

        “I think Congress needs to step in and pass a CLEAR 101 statute. I don’t expect them to overrule Alice (personally I would support that but it will never happen) but clear lines need to be drawn.”

        Agreed, but how? I think the suggest that was floated in a previous thread about “patentability extends to the limits of the Constitution” is inane… the Supremes certainly aren’t going to think that extends any farther than they already ruled.

        What about an addition that defines an abstract idea? Perhaps “an abstract idea is one in which each and every element may be performed mentally”? That devolves to the machine or transformation test, so maybe it’s out of favor.

        What about “an abstract idea is one that encompasses every possible way of achieving a result”?
        For example, “A method of time travel, comprising: traveling through time” is an abstract idea, in that the recited steps are coextensive with the boundaries of the idea. But “A method of time travel, comprising: channeling a 1.21 GW current through a flux capacitor positioned within a vehicle traveling 88 MPH, etc.” would not be abstract, as it is not coextensive with the idea – i.e. there are other potential ways to achieve the result of the abstract idea.

        The benefit of this latter definition is that it knocks out those way-too-broad claims that really shouldn’t survive, such as Mr. Bilski’s “method of hedging risk, comprising hedging risk” but doesn’t kill all software or even all business methods, provided they’re narrow enough.

      3. 4.4.3

        patent leather: I think it should be statutory. It is a machine. I think the problem here is simple to understand. And Rich made this point. So what if they trick it into being statutory? So what? The analysis then goes to 102, 103, 112 which is what was done in the head of the judge before. But, now let’s make this formal and require evidence.

        Moreover, in your example the solution is simple. The displaying of the video does not do anything. So, this would fall under 102 or 103. That is the proper way to think about it rather than saying well, if you claim a computer with a Monet attached to it, then it suddenly become ineligible.

        The way to think of this is what useful purpose does it provide?

        1. 4.4.3.1

          Don’t get trapped into the 101 game of saying gee there is something that doesn’t sound right, so let’s just call it abstract.

    5. 4.5

      Night, as Dan said, the principle problem seems to be the claim regardless of the disclosure.

      — 1. Chip configured to perform algorithm A.–

      where algorithm A is defined in the written description?

      vs.

      –2. Chip comprising: there following a detail list of physical structures and circuits.–

      There is a difference between 1 and 2. In 1, the hardware is claimed abstractly.

      1. 4.5.1

        The hardware isn’t really claimed “abstractly” so much as functionally. Nonetheless, it shouldn’t be a 101 issue, provided the specification provides adequate written description. Consider this:
        1. Chip comprising means for performing algorithm A.

        It’s explicitly limited to what’s described in the spec, but it’s not “abstract” if the spec describes all of the “detailed list of physical structures and circuits” that you included in your claim #2.

        1. 4.5.1.1

          Abstract iDan, I agree with you that the problem is a 112 problem. But it now appears that it is also a 101 problem.

          The Supreme Court considers cases like Wyeth v. Stone (any machine that cuts blocks of ice) to be abstract. The abstraction is in the machine.

        2. 4.5.1.2

          A iDan, I also agree with your point that the inclusion of means plus function actually will be claiming structure.

            1. 4.5.1.2.1.1

              Although, as I noted in a reply to Random at 4.3.3.1, the Supremes threw out some means plus function claims in Alice Corp.

      2. 4.5.2

        Ned, again you play this same game. It is claimed functionally and —–who is to interpret that functional claim—-PHOSITA.

        None of this is a problem for a PHOSITA. It is only a manufactured problem to try and end eligibility for information processing.

        1. 4.5.2.1

          Night, I wholly agree that the problem really is functional claiming, a 112 problem. But the Supreme Court is also treating it as a 101 problem.

          See, e.g., Rubber-Tip Pencil.

            1. 4.5.2.1.1.1

              Aaargh!

              One can take you to water, Night, but we cannot make you think.

              Are you actually reading what the Supreme Court said?

              The idea was good, but not patentable, but the device was not new.

              You are completely ignoring the part of the claim that claimed a new use for the rubber tip. Completely.

              That was ignored because of a reason. And what was the reason stated in the opinion, Night? What did they say?

    6. 4.6

      I don’t think the abstract exception was ever meant to include anything really built.

      He built all of the machines that employ all of the privacy settings for all of the third party apps there will ever be?

      Industrious guy.

  8. 3

    “issued on September 24, 2014”

    The management folks in the PTO need to track down who, what, where, when and why and take measures.

      1. 2.1.1

        For political reasons. You see, if Facebook has a patent like this and it is important to Facebook to keep a disruptive start-up at bay …. well then Facebook will back off the lobby blitz to kill all such patents – as a matter of subject matter exclusion – and will support traditional 102/103. In other words, pot meet kettle.

  9. 1

    The last three limitations are insignificant post-solution activity. Once you set a policy, there is no way it could be carried out but for applying the last three limitations. The first limitation is the kind that always annoys me as an Examiner.

    The machine does not know what “third party” means. Nor does the machine know what “maintained by an entity distinct from” is. There are programs, and the programs receive policy and the programs process the policy to implement the policy and do not care what fictional organization the “owner” or “maintainer” belong to. The only reason this patent could have issued is because the examiner couldn’t find that third party language and didn’t, you know, use his brain to say it was obvious anyway.

    It is clearly obvious over pretty much every privacy setting in general (making separable is an obvious act, legal ownership is systemically irrelevant).

    Beyond that, the claim comprises the abstract idea of confidentiality agreements with a field of use of computerized social networking. Because neither the structure of the settings nor the determining step are limited or detailed in any meaningful way, there is nothing substantially more and the claim fails under 101.

    “Hi, I’d like to patent telling Suzie to keep my secrets.”
    “You can’t do that.”
    “Hi, I’d like to patent telling Suzie to keep my secrets when Suzie is a corporation and my secrets are on the computer.”
    “Oh, okay then.”

    1. 1.1

      Two things bother me:

      1. It is said that our big brain is a consequence of the heavy data processing demands imposed by social networking, long ago. Did “social networking” (privacy settings, so to speak, keeping and breaking secrets that sort of thing) come at the same time as the genus homo sapiens acquired language skills? Or was it not until Mark Zuckerberg invented it?

      2. The claim contains the “magic words” that the determining step is performed “by a processor”. Is that enough, to limit the scope down to the kinds of social networking that are performed with help from a computer? What sort of determiner is not a “processor”?

      1. 1.1.1

        1. I doubt it occured at the same time. More likely (IMO) it occurred with the formation of villages, when walls were created to keep the weather out – it also kept the neighbors out.

        I’m basing that on anthropological studies of the Australian natives (no real personal privacy concepts) and isolated tribes in the Amazon (huts for secret rituals).

      2. 1.1.2

        Yes, processor is enough to limit the scope. One of ordinary skill in the art would understand that “processor” refers to an electronic device, if for not other reason than without that interpretation, the claim reads on 37% of all World War II movies:

        Third party ap: Where is your platoon?

        Network: My name is Joe, I am a corporal in the U.S. Army, my serial number is 7549871.

    2. 1.2

      What we see now is all these bizarro terms being bandied about. “Abstract,” “insignificant post solution activity,” and “substantial.” With no evidence. Just some non-science, non-technology judge who thinks anyone who took physics is a beanie head bozo, or a pizza eating geek that doesn’t need incentives to work as Posner put it.

      Not law. Law should not be a popularity contest. Please bring back Graham and overturn Alice.

      1. 1.2.2

        What about, Night, not claiming the hardware at an abstract level?

        — 1. Chip configured to perform algorithm A.–

        where algorithm A is defined in the written description.

        1. 1.2.2.1

          At an abstract level? You think that is a problem? Please see Bilski dissent by Newman.

          The question isn’t if it is at an abstract level, the question is it enabled to a PHOSITA.

          Man, this smoke and intellectual dishonesty is never ending.

          1. 1.2.2.1.1

            Please see Bilski dissent by Newman.

            “Dissents and $2.50 will get you a cup of coffee at Starbucks”

          2. 1.2.2.1.2

            Night, the hardware is claimed at such a high level of abstraction as to cover any and all circuits and means that perform the recited function. That is the problem the Supreme Court seems to be driving at, at least in part.

            That this is a recognized 112 problem as well is almost beside the point.

            1. 1.2.2.1.2.1

              >to cover any and all circuits and means that perform the recited function

              So, it is a scope of enablement problem. I would certainly hope that a claim to a function would cover all the KNOWN ways of performing the function by a PHOSITA otherwise specs will have to be 10’s of thousands of pages long.

      2. 1.2.3

        “Please bring back Graham and overturn Alice.”

        Oh, the irony. When SCOTUS struck down TSM and reiterated that Graham was the proper and only test for obbviousness, many of the same people whine now whined then. And NOW Graham is fine and dandy . . .

    3. 1.3

      “The last three limitations are insignificant post-solution activity.”

      Why not call everything after the preamble insignificant post-solution activity? Then you can handwave away the entire claim without requiring any evidence. It’s certainly consistent with the “I know it when I see it” abstract idea doctrine.

      “It is clearly obvious over pretty much every privacy setting in general… the claim fails under 101.”

      Why start from a conclusion regarding 103, and then kill the claim under 101? Simply because, again, the latter doesn’t require evidence?

      On the contrary, I think a strong argument can be made that this claim, while overly broad, is directed to a method that improves the working of the social network; accordingly, it falls within one of the handwavy judicial exceptions of Alice (both sides can be equally vague – isn’t it great case law?).

      That said, as you note, access control lists, non-disclosure agreements- heck, even MPEP 100’s confidentiality requirements describe specifications of which information of a first user may be shared with a third party or said third party may share with others. Is it really so hard to find prior art for privacy settings that, rather than knocking it out under 103, we have to make vague statements about “insignificant post-solution activity” and “there is nothing substantially more [than something less]”?

      1. 1.3.2

        Why not call everything after the preamble insignificant post-solution activity?

        The scope of everything after the first limitation is equal to “and implement the first limitation.” There is no way to implement a privacy policy but to receive a request, decide what to say, and then say it. The fact that they use pretty words to tantalize the small children does not further limit the invention.

        Why not add in the steps where the second user turns on their computer and boots up their third party app too, that would make it oh so much more limited.

        Why start from a conclusion regarding 103, and then kill the claim under 101? Simply because, again, the latter doesn’t require evidence?

        Why indeed, especially when 101 is a threshold issue. You’re the answer to your own question – everyone gets 103, not everyone gets 101, right?

        On the contrary, I think a strong argument can be made that this claim, while overly broad, is directed to a method that improves the working of the social network;

        Everything that has utility (and thus passes straightforward 101 application) improves the working of something. The exception to the exception is for improving the working of the computer itself, not for improving the working of something done on the computer. Those are substantially different subjects.

        Is it really so hard to find prior art for privacy settings that, rather than knocking it out under 103, we have to make vague statements about “insignificant post-solution activity” and “there is nothing substantially more [than something less]“?

        The patent issued, so apparently the answer is yes. That being said, because the Examiner was incompetent about 103 does not mean that it also passes 101 muster. That’s why you make both the 101 and 103 argument, btw, because you can’t assume that a factfinder will get 103 right.

        1. 1.3.2.1

          The exception to the exception is for improving the working of the computer itself, not for improving the working of something done on the computer. Those are substantially different subjects.

          Respectfully, I believe you’re disregarding the second half of the exception clause from Alice: “The method claims do not, for example, purport to improve the functioning of the computer itself… Nor do they effect an improvement in any other technology or technical field.”
          This is an improvement to “another technical field,” namely information security. :)

          That being said, because the Examiner was incompetent about 103 does not mean that it also passes 101 muster. That’s why you make both the 101 and 103 argument, btw, because you can’t assume that a factfinder will get 103 right.

          That’s also why we find people guilty as a matter of law even when a jury acquits, because you can’t always assume that the fact finder will get it right. Plus, then we can disregard any lack of evidence of guilt.

          1. 1.3.2.1.1

            This is an improvement to “another technical field,” namely information security.

            Oh come now, once you take the computer out of it you don’t even remotely have a leg to stand on. So when I tell you a secret and say “Don’t tell John” I’m engaging in a technological endeavour, hmm?

            The exception is designed to improve computers qua computers (i.e. their internal structure) or to improvements for other machines that just happen to be driven by software (i.e. a robotic arm for surgery where the arm is driven by code). I’m not a huge believer in a strict technological sciences argument, but to the extent others are this clearly isn’t what the court meant.

            For me it is enough that the claim is functional and directed to an ends. If we want to get into an argument that all information processing or all software isn’t patentable that’s another thing.

            1. 1.3.2.1.1.1

              Oh come now, once you take the computer out of it you don’t even remotely have a leg to stand on.

              Well, yeah – once you take the computer out of information security, it’s not really a technical field anymore, is it? In the same way, once you take the computer out of telecommunications, it’s not a technical field. In fact, take computers out of most technical fields, and they cease to be technical. But doesn’t that indicate that inclusion of the computer should be what makes patents in those fields subject eligible?

              The exception is designed to improve computers qua computers (i.e. their internal structure) or to improvements for other machines that just happen to be driven by software (i.e. a robotic arm for surgery where the arm is driven by code).

              But they didn’t say “improve computers or other machines” – they said “improve other technical fields”.
              My guess is that they wanted to include things like image processing and cryptography.

              For me it is enough that the claim is functional and directed to an ends. If we want to get into an argument that all information processing or all software isn’t patentable that’s another thing.

              But functional claiming is explicitly allowed (MPEP 2173.01).

              1. 1.3.2.1.1.1.1

                Abstract iDan, “For me it is enough that the claim is functional and directed to an ends. If we want to get into an argument that all information processing or all software isn’t patentable that’s another thing.”

                But functional claiming is explicitly allowed (MPEP 2173.01).

                It is apparent that you don’t know what Random is talking about.

                Random is talking about functionally claiming the invention, which, in most cases, happens when the precise point of novelty is claimed in results language instead of setting forth the novel structure, materials or methods that are disclosed. Cf., Morse claim 8.

                The CCPA and Federal Circuit has largely avoided the topic since ’52. But with the Supreme Court citing cases like Rubber-Tip Pencil, the functional claim now seems to present a 101 problem.

              2. 1.3.2.1.1.1.2

                But functional claiming is explicitly allowed (MPEP 2173.01)

                Oh really? Means-plus is explicitly allowed, but that’s not true functional claiming, as it forces a search of the spec for the structure and limits the invention to it, no structure, no valid claim. Where is describing a machine by what it does, rather than what it structurally is, “explicitly allowed”?

                The Supreme Court has a string of cases that outright said that functional language is almost always improper (See Morse, Wabash, Perkins Glue, Halliburton).

                Then the Federal Circuit came along in In Re Fuetterer and misused a single line in Wabash to completely ignore all the precedent and the federal circuit has been running with it ever since.

                So go ahead and quote the MPEP, which cites Swineheart, which is a federal circuit case, and I will stick with the Supreme Court. Sidenote – MPEP 2173, like Swineheart, discusses 112, 2nd. It has not been updated for Biosig, which approvingly cites Wabash. I’d caution relying upon Swineheart. (The court kicked Biosig back down, but the end result is going to be that it is not reasonably definite if functional language is used when structural language was available, listen to the oral arguments) Regardless, 112, 2nd isn’t the only means by which validity is determined. Swineheart itself points out that functional language causes overbreadth issues and then immediately dismissed them by saying that 112, 1st wasn’t the rejection before them. In other words, had the examiner made a 112, 1st as well as 112, 2nd rejection in that case, it would be clear your entire statement that functional language is “explicitly allowed” is based on a house of cards. Read Swineheart itself to see how couched the language is.

                Defining a machine by what it does, rather than it’s structure, almost always (and as it is commonly used today, does) results in overbreadth and is always invalid. A claim to a functional result is a claim to all ways of doing something. The most an applicant can disclose and possess is all the ways known to him. The most a PHOSITA would be enabled is by all the ways currently known (either to the art or to him). By definition one cannot prove that they know all there is to know on a subject.

                I have no doubt that Facebook has a single system for transmitting/determining a policy for privacy data with third parties. They do not have every system for doing it. Their scope is too broad and they fail 112, 1st. Similarly, their because their language is so broad and abstract, they have a 101 issue. And we’ve already agreed there’s a 103. This claim fails pretty much everything.

                1. Random, the PTO has to do a better job rejecting claims for functionality so that we can get a good case up to the Federal Circuit for decision.

                2. Random, the PTO has to do a better job rejecting claims for functionality so that we can get a good case up to the Federal Circuit for decision.

                  I am but a lowly examiner at the bottom of that totem pole. The argument will have to come from a post grant litigation.

Comments are closed.