The Supreme Court’s decisions from Alice and Mayo are beginning to really have their impact. A few examples:
- Walker Digital v. Google (D. Del. September 2014) (data processing patent invalid under 101 as an abstract idea) (Judge Stark).
- Genetic Tech v. LabCorp and 23AndMe (D. Del. September 2014) (method of predicting human performance based upon genetic testing invalid under 101 as a law of nature) (report and recommendation from Magistrate Judge to Judge Stark)
- Ex parte Cote (P.T.A.B. August 2014) (computer method and hardware for ‘phase shifting’ design data invalid under 101)
- Ex parte Jung (P.T.A.B. August 2014) (diagnostic method associated with epigenetic risk factors invalid under 101).
Some of the claims invalidated are listed below:
Walker:
1. A method for operating a computer system to facilitate an exchange of identities between two anonymous parties, comprising the steps of:
receiving from a first party first data including an identity of said first party;
receiving from said first party at least two first-party rules for releasing said first data including a rule for releasing said identity of said first party;
receiving from a second party a search request comprising at least one search criterion;
receiving from said second party second data including an identity of said second party;
receiving from said second party at least two second-party rules for releasing said second party data including a rule for releasing said identity of said second party;
processing said search request to determine if said first data satisfies said search criterion; and
if said first data satisfies said search criterion, then
exchanging said first and second data, except said identities of said first and second parties, between said first and second parties in accordance with said first-party and second-party rules,
after said exchanging step, upon satisfying said first-party rule for releasing said identity of said first party, transmitting said identity of said first party to said second party, and
after said exchanging step, upon satisfying said second-party rule for releasing said identity of said second party, transmitting said identity of said second party to said first party.
Genetic Tech:
1. A method to predict potential sprinting, strength, or power performance in a human comprising:
a) analyzing a sample obtained from the human for the presence of one or more genetic variations in a-actinin-3 (ACTN3) gene;
b) detecting the presence of two 577R alleles at the loci encoding amino acid number 577 of the a-actinin-3 (ACTN3) protein; and
c) predicting the potential sprinting, strength, or power performance of the human, wherein the presence of two copies of the 577R allele is positively associated with potential sprinting, strength, or power performance.
Cote:
1. A computer-readable storage device including code segments, to be executed by a computer, relating to a lithographic process technology, the computer-readable medium comprising:
a code segment for receiving a plurality of bins, each bin including a plurality of clusters corresponding to layout data, wherein each cluster represents a plurality of shapes in the layout data, the plurality of shapes having a proximity to each other determined by a grow operation; and
a code segment for phase shifting the plurality of clusters independently of one another.3. A method of using clusters in electronic design automation, the method comprising:
receiving data for a plurality of bins, each bin including a plurality of clusters, each cluster representing a plurality of shapes in an original layout, the plurality of shapes having a proximity to each other determined by a grow operation; and
using a computer, preparing a phase shifting layout for the original layout by phase shifting each of the plurality of clusters independently of one another.7. An electronic design automation program to be executed by a computer and stored on a non-transient computer-readable medium, the electronic design automation program comprising:
a source code segment designed to receive layout data in a bin and cluster format, wherein at least one bin includes a plurality of clusters, each cluster representing a plurality of shapes in the layout data having a predetermined spatial relationship to each other as determined by a grow operation; and
a source code segment designed to phase shift the plurality of clusters independently of one another.
Jung:
1. A computer-implemented method comprising:
receiving epigenetic information associated with at least one individual;
calculating, using a microprocessor, a risk utilizing the epigenetic information; and
transferring at least a portion of the risk utilizing the epigenetic information.
[…] In an interview with Gene Quinn of IPWatchdog, patent scholar Mark Lemley said “a majority of the software patents being litigated right now, I think, are invalid under Alice.” Last month PatentlyO shared a list of four patents that were ruled invalid where Alice was cited as a factor. You can see the list here. […]
[…] is a useful summary from Dennis Crouch, who gave a list of cases to […]
fngl51: an algorithm (and single purpose machine) that could find and mechanically retrieve a piece of information recorded on a piece of paper and stored in one of a billion file cabinets would be patentable
If the machine is described in objective structural terms to distinguish it from prior art machines, sure, go ahead and apply for a patent on that machine.
But if you require far less than that you must recognize that anyody with half a brain can sit around and claim “new” “single purpose machines” with “new algorithms” to find these “pieces of paper” (different shapes! different origins! different colors!) in “file cabinets (different shapes! different origins! different colors!) as you just did. How do you propose to examine all these “new machines”?
if it were done on a computer, using a variety of novel algorithms for search, retrieval, data compression, storage and transmission it would not be patentable.
Note that there’s no contradiction here if the requirement for objective physical structure is applied consistently to both “machines”.
In both cases, the tasks involve physical devices, with inputs and outputs. The task is identical, but the solution is expressed in a different manner.
In the case of the typical machine assisted information-processing claim, the solution is not just “expressed differently” than it is in a physically transformative process. Instead the solution is assumed because the “new machine” is claimed in terms of its function, which is logical and useful (thinking works!) or illogical and useless.
More specifically with respect to your hypothetical, however, the “tasks” are not “identical”. They are analogous in certain respects, but not identical. In part, that’s why we still rely on people to carry out the majority of information-processing tasks, even (or especially) “mundane” ones.
patent leather: Some abstract ideas (economic fundamental practices and who knows what else they will add) can never be “rescuable” unless combined with something else allowable (thus the abstract idea in the claim is ignored). Other types of abstract ideas do not fall in the previous category but the claim as a whole is abstract because it doesn’t have a practical physical result (e.g., just processing information).
Indeed, there are different kinds of abstractions and the exclusion of abstractions from 101 can manifest itself in different ways. We should focus on identifying what those different ways are in clear terms. Claims protecting ‘fundamental economic practices’ is a good start. Claims protecting objects with a particular “legal status” or distinguishing prior art methods by the recitation of abstract labels (“public” “copy protected”) or past history leaving no physical trace (“purchased from a person with a foreign accent”) are also right up there (if not worse).
Keep thinking! Because there are certainly more types than these.
I have a question about the meaning of “a claim is directed to”. From Flook, Diehr, or Alice, my understanding was that you could, in step 1 of the Alice test, utilize a subset of claim elements to define what a claim is directo to. However, in Planet Bingo CAFC 2014, Judge Hughes uses portions of the description and the appelant brief (see part II A, page 5).
Do you know a case that discusses in details what is meant by the “direction of a claim”?
Pika, I think it is code for “novel” subject matter.
I think it is code for “novel” subject matter.
Or possibly shorthand for “the difference between the claim and the prior art, whether that prior art is the cited prior art or the ancient practice of humans prior to the ready availability of personal computing devices.”
my understanding was that you could, in step 1 of the Alice test, utilize a subset of claim elements to define what a claim is directo to. However, in Planet Bingo CAFC 2014, Judge Hughes uses portions of the description and the appelant brief
The answer would seem to depend on the claim. Because one can be one’s own lexicographer it’s possible to draft a claim that, on its face, seems very different from what the claim is, in fact, “directed to” once it’s properly construed.
Another claim might expressly set forth what the claim is “directed to”, e.g., in the preamble. If that description is accurate, a court may cite the expression. If not, then a court may substitute it’s own words.
As an example of an inaccurate description, consider a preamble of a claim directed to “a method of improving a treatment”. If the subsequent steps do not, in fact, “improve a treatment”, then the court may observe, after construction of the claim in view of the specification and prosecution history, that the claim is directed to “the use of a correlation for determining possible treatments”.
Its code for I don’t want to think about, or at least type, all the particulars recited in the claim so I am going to distill the claimed subject matter down to a one to three word phrase.
This is fine if it is just short hand for typing and reading purposes.
The problem is when the gist becomes the focus of the “abstract idea” analysis as it has in many recent Supreme Court rulings. The gist, being a gist, is, almost by definition, an abstract idea. So ta da… the claim is directed to a machine that flies. Flying is an abstract idea. The claim would preempt all human flight, therefore it is directed toward an abstract idea and is therefore not a machine and not patentable subject matter.
Les,
There is a difference between the idea of something, and it’s real-world instantiation (if such exists). If the “something” exists or occurs in the physical world, beyond just in the mind, it is not abstract.
An individual’s “idea” of “flight” is abstract, but “flight” is not an abstract idea. It happens in the physical world. It can be recorded and measured. I have personally made it happen, with some balsa wood and a rubber band.
Concepts like “shadow accounts”, “debt”, “ownership”, “crediting”, “representing”: abstract. “Flight”: not abstract.
Preachin to the Choir Dobu
Sorry… mis read it.
“shadow accounts”, “debt”, “ownership”, “crediting”, “representing” as recited in the associated claims were not “concepts” they were things that were manipulated. For example, the shadow accounts were established and values within them were revised and updated. The accounts were maintained. Hence they are NOT abstract.
Put another way, flight is just as much a concept as shadow accounts.
How much does a debit weigh? What color is a shadow account? Can you take a video of representing?
These all have no existence outside the human mind. There is no difference whatsoever between a memory cell containing a “1” denoting the weight of a coconut, and a memory cell containing a “1” to denote the balance of a checking account.
Your system would have NOTHING as being abstract. Love? I’ll put a 1 in this (contact card, recipe card, vehicle record) if it’s something I “love”, and zero if it isn’t. Now “love” isn’t abstract any more, because I have a computer record for it?
The Wright Brothers did not patent flight but a specific flying machine, and the important claims referred to controlling the flying machine.
O/T, but nice to see patent monetizer Erich Spangenberg using his success to help others: link to cleveland.com
“help others”? He endowed an IP dept.
It’s hardly like he’s feeding starving children.
Dennis…in Walker vs. Google, judge stark emphasized the below quote from Alice. If one has to remove human ingenuity from patent claims and then interpret them, what else is left to protect? After all, don’t we call this INTELLECTUAL property? This logic would invalidate every patent, because all I have to do is ask the inventor what is the “inventive step” or the so called “idea” and then remove it from the claim and all I am always left is “nothing more”.
“It bears emphasis that, as the Supreme Court recently explained in Alice, 134 S. Ct. at 2354-55:
[I]n applying the§ 101 exception, [the Court] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into a patent-eligible invention. The former would risk disproportionately tying up the use of the underlying ideas and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.
Google relied on the non-precedential Planet Bingo. I think Planet Bingo should have won that case but I thought was poorly argued by PB’s attorneys (but considering the panel it was assigned to it was probably unwinnable anyway). Judge Stark in the Walker case relied heavily on the mental steps doctrine. That doctrine is what is going to swallow up all software patents, because any step in software can be performed in a human mind.
“Mental steps” was not even mentioned at all in Alice. Alice states an abstract idea is a fundamental economic practice. I can see that showing that a practice can be (and has been) performed mentally may be evidence that it is fundamental. But I think applying a dispositive mental steps analysis is no longer proper after Alice and this practice needs to be limited.
Can you please quote where Alice limits the abstract idea to economic practice? In fact Alice mentions:
“The “abstract ideas” category embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.’
Thus, if you just ignore the idea of using a propeller with wings, there is “nothing more” in inventing an airplane.
Thus, now INTELLECTUAL property is devoid of “ideas”.
I think scientist the way to think of this is that the SCOTUS has given the Fed. Cir. carte blanch to invalidate whatever they want. The Fed. Cir. Judges were appointed by Google who do not want any patents for their own self interest.
This is all part of the federal government being bought. Right now the replacement to Rader is being bought. Obama is probably milking it to get many millions for the Democrats.
“This is all part of the federal government being bought. ”
It couldn’t possibly have anything to do with the federal government preventing the abuse of its entitlement program to promote the useful arts.
Scientist, Thus, if you just ignore the idea of using a propeller with wings, there is “nothing more” in inventing an airplane.
I think you and I agree that the real problem with these cases is not that they are disembodied ideas, which would make them “abstract,” it is that the novel subject matter is nonstatutory. The Supreme Court jurisprudence confuses.
if you just ignore the idea of using a propeller with wings, there is “nothing more” in inventing an airplane.
I think the Supreme Court — the same Supreme Court who wrote Alice — made it perfectly clear in Prometheus that this is not the way their test is to be applied.
>>“Mental steps”
I think Taranto and Hughes will try to squeeze everything they can into Alice step 1. The mental steps is definitely another game of squeezing more in. Taranto wrote the mere simulation of human mental steps, which, of course, evinces such ignorance of science and technology to merit impeachment. I wonder if our Google Judge knows that about 1/2 of Ph.D.’s in cognitive science spend years trying to get computers to simulate human mental processes. Most likely is that he knows that and doesn’t care. We have barbarians now.
I would like to stick to the language of Alice. I am not able to confirm that this is limited to software or economic ideas. Whether it is new or old idea. Even if it is brilliant idea – such as an airplane.
I would like to know where in Alice that disputes above understanding?
You don’t make much of a point Ned. Funny how your information processor thinks there is a distinction between those numbers depending on what they are applied to.
Ned, your comment made me think of a question: what is the difference between a anti’s and squirrel’s brain related to computation?
Answer: there is no difference. According to the anti theory of science there is no equivalence between software/hardware/firmware and their thinking takes place absent hardware. They think in the ether. I am certain that is J. Stevens view of science.
But, maybe more accurately they know there is a difference but pretend there isn’t for the Google bucks.
As I said Night, your number is 46. That is what you improved information algorithm calculates.
Now tell us all, Night, whether 46 is the improved price of tea in China, the number of dogs in India, or the number of widgets one must sell in order to make a profit.
Patent leather, Alice states an abstract idea is a fundamental economic practice.
I assume you actually think this is true.
I think Alice is internally inconsistent (thanks Thomas), and we can all bang our heads against the all until the next Supreme Court case (which no doubt, will be equally cryptic). All those who say Alice’s guidance is crystal clear are reading it (along with the prior cases) very superficially as there are lots of logical snafus.
If all “ideas” were abstract, there would be no need for prong 1 and we could just have prong 2 (parker v flook test). I would explain my comment that Ned quotes as there are different “types” of abstract ideas. Some abstract ideas (economic fundamental practices and who knows what else they will add) can never be “rescuable” unless combined with something else allowable (thus the abstract idea in the claim is ignored). Other types of abstract ideas do not fall in the previous category but the claim as a whole is abstract because it doesn’t have a practical physical result (e.g., just processing information). The Cote case may fall into this category. I agree with David Stein below where he states this claim might possibly be rescued by adding “and then use the bin and cluster scheduling to control the industrial process.” Then, the claim is no longer directed to an abstract idea but to a technological process and I would say it would then be statutory. Obviously a similar limitation added to the Alice claims would have no significance. Thus, it is clear that there can be different “types” or “degrees” of abstract ideas based on how technical a subject they relate to. Diehr is a good example of this. You take away the press from the claim and you would be left with the “disembodied” type of abstract claim. But the practical physical application rescues it.
This is one direction the Fed Circuit can go in. They can also go in the opposite direction that all algorithmic features are “non-rescuable”. The sad part is who is ultimately going to be “right” and “wrong” will just depend on the random panel chosen.
it doesn’t have a practical physical result (e.g., just processing information)
So, by this reasoning, an algorithm (and single purpose machine) that could find and mechanically retrieve a piece of information recorded on a piece of paper and stored in one of a billion file cabinets would be patentable, but if it were done on a computer, using a variety of novel algorithms for search, retrieval, data compression, storage and transmission it would not be patentable. In both cases, the tasks involve physical devices, with inputs and outputs. The task is identical, but the solution is expressed in a different manner. Both are programmed, but the medium of expression is different. Why is it that algorithms expressed in gears and levers acceptable but ones expressed in electrons or photons not? Both are real.
fngl51, you’re preaching to the choir here. I’m just trying to make sense out of these decisions and the PTAB Cote Decision (but I wouldn’t give too much weight to that). The pendulum is clearly swinging in the other direction and we have to stop it where the powers that be agree it can be stopped before we return to the Flook test.
“Why is it that algorithms expressed in gears and levers acceptable but ones expressed in electrons or photons not? Both are real.”
I agree with you.
(and have not heard a good rebuttal)
“Hardware and software are logically equivalent. Any operation performed by software can also be built directly into the hardware and any instruction executed by the hardware can also be simulated in software. The decision to put certain features in hardware and others in software is based on such factors as cost,
speed, reliability and frequency of change. There are no hard and fast rules to the effect that X must go into the hardware and Y must be programmed explicitly. Designers with different goals may, and often do, make different decisions … the boundary between hardware and software is arbitrary and constantly changing. Today’s software is tomorrow’s hardware, and vice
versa.” A.S. Tanenbaum
“who knows what else they will add”
Would you patent leather buy a home if the government would tell you 10 years later if it comports to all the rules?
Why would one think this would be different for scientists or investors?
Scientist, I completely agree and many of my other posts are consistent with what you just said. Changing the rules 15 years later is shocking yet it seems to some that it is not a big deal (none of these cases even mention the presumption of validity.) I’m just trying to make sense out of it all and will also be jumping into the pool by going to the Fed Circuit with some claims (assuming the PTAB upholds some 101 rejections). Knowing my luck, I will walk in and see Hughes, Taranto, and Mayer on the panel. I’ll just walk back out.
patent leather, re: 22.1.3.1, I absolutely agree.
If a claim is fundamentally directed to an improvement in technology and actually claims that improvement rather than ends without actually applying the improvement, it certainly would be eligible. Some of the claims that have been declared unpatentable simply stop before applying the improvement to technology and that is why they were declared unpatentable. Others, as you correctly note, are not fundamentally directed to improvements in technology at all, and even though they have sufficient application, they remain unpatentable because there is no improvement to technology. The Supreme Court has identified at economics as an area that remain unpatentable even if sufficiently applied.
But having identified economics as an area that remains outside of patentability, it can be generally said that anything that is not directed to improvements in technology will also probably eventually be held not directed to patentable subject matter.
Ned, I don’t think that’s the correct way of looking at Alice. Under Alice, all one has to do is prove a concept “abstract”, then little can save the concept.
Consider a new and non-obvious encryption technique. Everyone agrees that it’s new and non-obvious. However, it’s based in mathematics (as all encryption is). The mathematics is “abstract”. The computer simply implements the mathematics, so isn’t doing anything new per se, and the computer itself is not improved (encryption just takes unencrypted data and makes encrypted data). Now, the end result — the encrypted data — is improved (say, much harder to decode for an attacker), but the computer is not.
Alice makes it appear that anything that operates on data to make improved data (e.g., modulation, encryption, many others) is unpatentable under 101. However, to me, a machine that performs modulation, encryption, and the like should be patentable.
I’ll give you an example. I’m working on a case now where the “idea” is that you receive data in a communications device such as a receiver. You process the data in such a way as to remove certain effects of interference. This is useful and new. However, it might also be “abstract”, as everything you do is really mathematical (though memorialized using words). If the Examiner were to state that this is “abstract”, then our options for arguing are extremely limited. Even though we have something new, not obvious, and useful, under Alice, these claims might not be allowed.
Scientist, I can hardly think that a scientist could fail to distinguish between an idea and an application of that idea, which the court was talking about in this phrase:
“[I]n applying the§ 101 exception, [the Court] must distinguish between patents that claim the building blocks of human ingenuity and those that integrate the building blocks into something more thereby transforming them into a patent-eligible invention. “
“I can hardly think that a scientist could fail to distinguish between an idea and an application of that idea”.
Ned. I cannot distinguish them. Tell me in my airplane example what is the “idea” and what is “application” of that idea? Once you say you ignore the “idea”, everything else is conventional. Tell me how you would write a claim for airplane which passes the Alice test?
Scientist, I’m not thinking that you get it. The idea is of a flying machine. The specification of the apparatus needed to fly is what is patentable. The claim might be to the apparatus but not to the idea. That is the distinction.
In contrast, there are kinds of ideas, for example economical principles, that are not directed to otherwise eligible subject matter, such as machines manufactures or compositions. Even if applied by reciting all the details necessary to accomplish the task, the subject matter remains outside the patent laws.
The difference between a flying machine and an economic principle is clear. One is an idea about something otherwise eligible like a machine. The other is an idea about something that is not otherwise eligible, like an economic principle.
I hope you see the distinction.
CAFC in BuySafe told us that the narrowest part of the idea can be be taken (see below quote). Thus, the narrowest idea is using propeller with wings, not the flying machine. Then everything else is conventional and old.
I do not see where in Alice it is limited to Economics. They just said IDEAS (see below quote). Please provide a quote in Alice to show that I am wrong. A computer is a machine like an airplane.
Quote from Alice:
“The “abstract ideas” category embodies “the longstanding rule that ‘[a]n idea of itself is not patentable.’
Quote from Buysafe: “the exclusion applies…even if the particular natural law or phenomenon or abstract idea at issue is narrow”
101 is like ISIS, a spreading cancer
The real problem we have now is a PTO stacked with Google APJs, shadow Google Director Lee, Google Judge Taranto, and Google Judge Hughes.
It’s the people that are implementing Alice that are the real problem. Obama said he would “fix” the problem on his own and his way was to appoint Google people to “fix” it.
By the way, Google has good reason to want to end all patents. The company really has innovated very little and accomplished very little. They are built almost completely on advertising and have said flat out that they are terrified someone will come up with a better way to search that would take away all their advertising, which they say could all disappear in a few months.
So, what does the beast with massive profits from advertising, the company that took all the advertising money from print media want to do? Why copy the new innovation, of course. The safe place for Google is to be able to copy others innovation.
Isn’t that a bit of a contradiction?
If their search is copied… and they can copy others…
Then there is a net balance.
Their search algorithm is obviously using semantic analysis… the key is what their algorithm is.
After that, it is just a huge amount of information.
So anyone that puts in the effort can replicate the function.
Google only has safety if they can go faster than anyone else. So far, they have.
Jesse, what Google is worried about is the next innovation. You have framed things by what we know.
Also, Jesse, you are right in that Google sees its competitive advantage as the huge infrastructure that can’t easily be replicated without large capital investment.
Now, boys and girls, think that through. If all that is true, then a start-up would need a huge capital investment, which it would never get without patents as Google would merely copy.
You know a good paper would be about the amount of copying that goes on now. The copying that goes on now is huge.
So why hasn’t Bing come even close…
It has the financial backing.
I don’t think it has a very good algorithm.
So it isn’t so easy to “copy”.
Most of what I see labeled as “copy” is more “imitate”. There is very little actual “copy” involved.
I don’t think it has a very good algorithm.
Perhaps a bit off topic, but how do you judge? Because if you can make reasonable assessment (a measurement) of the output of the algorithm haven’t you produced something concrete, just like the signal produced by an EKG (see below)?
Regarding quality, what is your assertion based on (presumably some objective measure)? Do you think that the difference lies in the algorithm or the size of the corpus over which the algorithm works?
True, it is hard to judge.
Mine is based on queries to both – I get better references from Google so far. More of what I’m looking for is in the first page or two.
Earlier, Bing couldn’t even find references to some Microsoft products that Google would find. Some searches for information about competing products would also come back with no results, or incorrect results.
And MS can easily support Bing… but it has to do a better job than Goolge; just as Google had to do a better job than Yahoo when Yahoo started to fail.
Night, are you saying that Google is not innovated?
You might ask the man on the street what company is more innovative, IBM, Apple, or Google. I might think that Google would win that battle.
The fact is that they have provided very few innovations that have provided them with revenue. The fact is there biggest fear is that someone will innovate to come up with a new search strategy and take away almost all their revenue over night. Those are facts.
That is why they keep researching, and investing in, more advanced search.
It is the business of “staying ahead of the competition”.
When businesses stop investing in research, they die.
MS could have done it. Yahoo could have continued research… but neither have. Thus Yahoo lost to a big MS wallet and had their search taken over.
MS can still do research. It just seems that most of it comes to nothing except patents to keep anyone else from doing it.
A propos the EPO test, here is a very recent EPO Decision:
link to epo.org
about a claim directed to a train of defibrillation pulses. As you know, methods of treatment of the human or animal body by thereapy are not eligible.
The Board of Appeal allowed the appeal, finding that the EPC does not require for patentability that what is claimed be tangible in the sense of material. It found that the claimed pulse train was of a concrete nature because the claimed pulse train results from an electrical signal and can be measured at any moment. The case was remitted to the Examiners with an order to grant the patent.
I mention the case in the hope that it corrects verious misapprehensions aired in these columns, about what is eligible for patenting in Europe and because it reveals the difficulty of using words like “concrete” or “tangible” or “physical” as a litmus test of eligibility.
Check out this new opinion from the CAFC, issued today: link to cafc.uscourts.gov
The case relates to pens that automatically digitize the user’s writing. (I.e., the pen records the movement of its tip during writing, transmits info wirelessly to another device that converts the info into a representation of the handwriting, so you have your notes stored electronically for later.)
Look at the first representative claim (on p. 6 of the opinion); it recites the following components:
a housing (btw, old & well-known );
a transmitter (also old);
a microswitch (also old); and
electronic circuitry (also old), defined functionally.
The point of novelty (if there is one) is the function performed by the recited electronic circuitry.
Now to get to my point: The claim is directed to the basic idea of using circuits to do useful stuff. Thus, it is clearly abstract, and clearly directed to in eligible subject matter. So where is the sua sponte invalidation under 101?!?!?!
The claim is directed to the basic idea of using circuits to do useful stuff. Thus, it is clearly abstract, and clearly directed to in eligible subject matter. So where is the sua sponte invalidation under 101?!?!?!
Are you being sarcastic or not?
sarcastic, I assume (and hope)
Functional claiming and statutory subject matter are not necessarily the same thing.
The claim, if it involves an algorithm even by inference, passes Diehr.
You smell ineligible subject matter not analyze claims as written for it; haven’t you read Alice?
Joe The statutory language of 101 would remain the same listing the patent-eligible categories of inventions, but any discussion of inventions encompassing the exceptions would have to be dealt with under 102 and 103. So you couldn’t patent gravity because your gravity is not novel. Is this a workable solution? Why or why not?
Of course you understand, Joe, that eligibility considerations have been part of 102/103 analysis for decades (e.g., the so-called “printed matter” doctrine). No sane patent system can function without such limitations because it would quickly be overwhelmed and exploited by purveyors and hoarders of j u n k, benefitting only those purveyors and hoarders at the expense of everyone else.
A straightforward example to get you focused on the problem is a claim such as the following:
1. A process comprising thinking about [insert new, useful non-obvious correlation].
That’s a “process”. But it’s an ineligible process. How do you “get rid of it” under 102/103? You can’t, unless you invoke eligibility considerations under those statues. Let’s look at a slightly more complicated example:
1. A process comprising reading a person’s medical chart and thinking about [insert new, useful, non-obvious diagnostic correlation].
Again, that’s an ineligible process. How do you “get rid of it” under 102/103? You can’t, unless you invoke eligibility considerations under those statues. Let’s take another similar example:
1. A process comprising using an old but otherwise eligible test to obtain data about a person, and thinking about [insert new, useful, non-obvious diagnostic correlation].
This is also an ineligible process. How do you “get rid of it” under 102/103? You can’t, unless you invoke eligibility considerations under those statues. This is the claim asserted by Prometheus, which turned doctors who were lawfully performing an old test into infringers when they took the additional step of merely thinking aboout the correlation.
Please try to understand that the fact that I can present numerous examples of ineligible claims does not mean that “nothing is eligible for patenting.” That would be a ridiculous leap of logic (but that doesn’t stop people from taking that ridiculous leap in the comments here every other day).
Please also understand that if you believe that society needs patents that turn practitioners of the prior art into infringers when they think about things, you are free to lobby your Congressperson to change the law to expressly include such patents. I am 100% confident you will fail at achieving your goal but by all means go ahead and try to do it.
There are many other examples that raise different issues. These issues are being addressed, in turn, by the courts right now because the public has turned the spotlight onto the broken patent system. I’m happy to discuss some of the other issues with you if you are still confused.
This is such sad reasoning. As if anyone believes this attempt: gee this doesn’t quite cut it, but maybe there is something that will.
The Church-Turing Thesis is being ignored. No wonder when they appoint non-science, non-patent law judges to the Fed. Cir.
Kind of funny too how the presumption of validity is being turned into prove to me that it is valid and at the PTO what we are seeing is “shall be granted unless” to prove to me……
Everyone has an angle. At the PTO the examiners are loving it. No more objective test. We just do whatever …
Related somewhat…
Indulge me on a wide integration here but check out the US in the International Property Rights Index
link to internationalpropertyrightsindex.org
I think the gist of the current political ideology is reflected in how the US treats various forms of property rights… notice IP has not yet “fallen into line”. No wonder the attack has begun to focus there…
Odd website. It is interesting (to me) that they do not include Mexico as part of North America.
Hmm. I can’t even find a definition (according to the site) of North America (members)
Something gives me pause when I see Finland at number 1.
Region profile: Finland
From 2009 to 2013, the overall IPRI score for Finland decreased by 0.6%. Despite continuing to lead the world in property rights, the IPRI remains stable at 8.6 points in 2013.
From 2012 to 2013 both the Intellectual Property Rights and Physical Property Rights components remain unchanged. However, from 2012 to 2013 Legal and Political Environment increased by 0.1 points. This increase is because of improvements in both Control of Corruption and Judicial Independence.
Category
Score Global Rank Regional Rank
International Property Right Index
8.6 1 of 130 1 of 19
Legal and Political Environment
8.9 1 of 130 1 of 19
Judicial Independence
9.3 2 of 130 1 of 19
Rule of Law
8.9 1 of 130 1 of 19
Political Stability
7.8 1 of 130 1 of 19
Control of Corruption
9.4 3 of 130 2 of 19
Physical Property Rights
8.3 1 of 130 1 of 19
Protection of Physical
9.2 1 of 130 1 of 19
Registering Property
9.4 11 of 130 3 of 19
Intellectual Property Rights
8.6 1 of 130 1 of 19
Potection of Intellectual Property Rights
9.3 2 of 130 1 of 19
Patent Protection
9.3 2 of 130 1 of 19
Copyright Protection
7.5 11 of 130 6 of 19
Who has been to Finland recently. I was given to understand that the place was a mess.
This is such sad reasoning.
What is “sad” about any of the reasoning in my comment?
The Church-Turing Thesis is being ignored.
Huh? What does this have to do with my response to Joe?
The second half of the sentence said why.
You know why with the Church-Turing Thesis. We have discussed this about a billion times.