Right Round: Comparing US and European Software Patent Eligiblity

Guest Post by Michael Williams. Williams is a UK and European Patent Attorney and Partner at the London based Cleveland-IP firm.

In the book “Through tAlicehe Looking-Glass”, Alice compares her drawing room to the one reflected in the mirror.  She notes that everything is the same “only the things go the other way”.

In the recent Alice Corp[1] decision, the US Supreme Court set out a framework for assessing whether claims are patent eligible under 35 U.S.C. § 101.  In this article I shall compare this framework with that used by the European Patent Office, and consider the similarities.

The US Alice Approach

In a memorandum dated June 24, 2014, the USTPO has set out its Preliminary Examination Instructions to the Patent Examining Corps in view of the Alice Corp decision[2].   In the Instructions, a three stage framework is set out which is summarized below:

  1. Determine whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does not fall within one of the categories, reject the claim as being directed to non-statutory subject matter (§ 101).
  2. If the claim does fall within a statutory category, determine whether the claim is directed to an abstract idea. If not, proceed with examination of the claim for compliance with other statutory requirements.
  3. If an abstract idea is present in the claims, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. If there are no meaningful limitations in the claim, reject the claim as being directed to non-statutory subject matter.

The Examiner should then proceed to examine the claim for other patentability requirements, whether or not a rejection under § 101 has been raised.

I have illustrated the three-stage “Alice” approach in Figure 1.

Fig1

The EPO approach

The approach of the EPO to claims with potentially excluded subject matter is summarised below.

  1. Examine the claim to establish whether it relates to excluded subject matter as such. This is done by assessing whether the claim has a technical character.  If there is no technical character at all, the claim is rejected under Article 52 EPC for relating to excluded subject matter as such[3] .
  2. If the claim has technical character, it is examined for novelty and inventive step. In the case of inventive step, it is determined whether the invention involves an inventive step in a technical field.  If the claim lacks an inventive step in a technical field it is rejected under Article 56 EPC.

In the case of a claim with a mix of technical and non-technical features, the following steps are followed when assessing inventive step[4]:

  1. Identify the non-technical aspects of the claim,
  2. Select the closest prior art on the basis of the technical aspects,
  3. Identify the technical differences from the closest prior art,
  4. Determine whether or not the technical differences are obvious.

If there are no technical differences, or if the technical differences are obvious, the claim is rejected for lack of inventive step.

I have illustrated the overall approach in Figure 2.  In order to facilitate comparison, I have separated the approach into stages which correspond roughly with those of the USPTO approach.  I have also assumed that there are differences between the claimed invention and the prior art (otherwise there would be lack of novelty).

Fig2

Comparison of the two approaches

A comparison of the flow charts in Figures 1 and 2 shows a striking similarity between the first stages of each approach.  In each case, it is in effect determined whether the claim relates to no more than excluded, or ineligible, subject matter.  In both cases this acts as a filter to weed out claims which do not have any technical subject matter.

The second stages of each approach also bear comparison.  In the case of the EPO, it is determined whether or not the claim includes both technical and non-technical features.  In the case of the USPTO it is determined whether the claim is directed to a (non-technical) abstract idea.  However, since the claim must contain some technical subject matter (or it would have been weeded out at stage one), this is akin to determining whether there is a mix of technical and non-technical features. In both cases, the second stage flags up cases where there might still be a problem with excluded subject matter.

In the third stage of each approach we come to the nub of the matter.  It is here that borderline cases will stand or fall.  It is therefore worthwhile analysing this stage of each approach.

In the case of the EPO approach, the technical and non-technical features of the claim are first separated out.  The technical features which are not present in the prior art are then identified.  It is then determined whether or not those technical features are non-obvious.  In doing so, it is assumed that the non-technical features are already present in the prior art.  If the technical features which are not present in the prior art are obvious, the claim is rejected for lack of inventive step.

In the case of the USPTO approach, stage three involves determining whether there are any elements in the claim which amount to significantly more than the abstract idea itself.  This in effect requires two steps, as follows:

  1. Identify the elements which are not an abstract idea, and
  2. Determine whether those elements amount to significantly more than the abstract idea itself.

It is notable that step a is similar to the EPO approach of identifying the non-technical aspects of the claim.

With regard to step b, this begs the question: how much more is “significantly more”?  According to the Instructions there must be “meaningful limitations” in the claim, but how meaningful do they have to be?

We can assume that the elements which must be “significantly more” than the abstract idea are technical (since otherwise the claim would have been weeded out at stage one).  It is also the case that, in order to be “significantly more”, those technical elements must be meaningful.  If they must be meaningful, does this mean they must contain the inventive concept?

My guess is that, in practice, persuading the USPTO to allow claims of this type is probably going to involve arguing that the elements which are significantly more than the abstract idea are somehow tied in with the inventive concept.  Otherwise they would not be “meaningful”.  This then starts looking very much like arguing for non-obvious technical subject matter; in other words, an inventive step in a technical field.

There will of course be differences between the two approaches, not least due an imprecise alignment of the concepts of “abstract” and “non-technical”.  However it seems to me that both approaches are seeking to achieve something similar, namely, an assessment of whether the innovation itself lies in a non-excluded field.

Thus, to my mind, we are now in a situation where, in practice, the two approaches are considerably aligned, albeit “the other way round”.

Alice2Conclusion

As readers of the book will recall, when Alice actually goes through the looking glass, she finds it to be completely different from what she first saw.  I suspect that, as case law and practice develop, we will find that USPTO and EPO practice will differ.  However it is notable that, at least on the face of it, there are now considerable similarities.

= = = = =

[1] Alice Corporation Pty. Ltd. V CLS Bank International, et al

[2] http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf

[3] Guidelines for Examination in the European Patent Office G-II, 2.

[4] Guidelines G-VII, 5.4

340 thoughts on “Right Round: Comparing US and European Software Patent Eligiblity

  1. 15

    On Oct 14, 2014 11:09 AM, “Mark” wrote:

    Dennis,

    You left out an important component of the USPTO Guidance on the two part abstract idea analysis, as set forth in Mayo. 

    “Thus, an invention is not rendered ineligible simply because it involves an abstract concept. In fact, inventions that “integrate” the building blocks of human ingenuity into something more by applying the abstract idea in a meaningful way are eligible.”

    The keyword here, as the Court has set forth, is “Integrate”.  In the concluding analysis, the claims must be considered as an Integrated-whole. This is still the law.

    Because any Integrated claim can be dis-integrated and described as being “directed to” an abstract idea, since all inventions are abstract ideas at their conceptual core. 

    Therefore attorneys and their clients must hold the PTO and the judiciary  to the fire of the law and force the issue of Integration Analysis.

    If an examiner, or a judge dis-integrates a claim, the question must be asked, why did you dis-integrate the claim?  And where did the authority to do so come from?

    If  not, and this type of thinking is allowed to permeate our judicial system, all of patent law will be swallowed up into a legally and intellectually bankrupt abyss. 

    1. 15.1

      I’m a little unsure what you mean when you say the claims have to be considered as an integrated whole.

      The Mayo framework seems, to me at least, to require considering the non-abstract and abstract elements of the claim separately.

      “Taking the claim elements separately, the function performed by the computer at each step of the process is ‘[p]urely conventional.'”

      Can you give an example of a claim that would fail when non integrated but would pass when integrated and explain why?

      I’m just trying to understand your position.

      1. 15.1.1

        g0 Arthur: “The Mayo framework seems, to me at least, to require considering the non-abstract and abstract elements of the claim separately.”

        Yes, you are correct. However what many in the patent community fail to understand about Mayo is that in the “concluding analysis” the claims are considered as an “Integrated Whole”. You can avoid this error in reading Mayo by asking , for what purpose, or end, are the elements initially being considered separately ?

        A) Is it to “dissect” the claims into abstract and non abstract elements and ignore the abstract elements?

        B) Is it to “filter “out the eligible from the non eligible subject matter, such as an equation, and only give weight to the remaining eligible subject matter?

        C) Is it to “carve out” the gist or underlying concept and ignore the the elements that apply the concept?

        D) None of the above.

        The answer is (D), none of the above. 

        Mayo was quite clear in explaining why the elements were initially considered separately. 

        “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.”

        They keywords are “finally” which let’s you know this is the concluding analysis, and “ordered combination”, which lets you know the claims are being considered as an “integrated whole”.  And to further underscore this point Mayo explains, 

        “In Diehr, the overall process was patent eligible because of the way the additional steps “Integrated” the equation into the process as a whole.”
        (Emphasis added)

        1. 15.1.1.1

          “Can you give an example of a claim that would fail when non integrated but would pass when integrated and explain why?”
           
          Diehr is a good example. If you dis-integrate the claim  and consider the equation as the novel subject matter, and ignore the additional steps which are conventional, Diehrs claims are non statutory subject matter.
          On the other hand if you consider the equation as part of the claim, as an Integrated whole, then the overal process is statutory subject matter.
          The only time the Court has considered the separate elements, since Diehr is when the claim is
          1. A law of nature/natural phenomenon.-( Mayo)
          2. An eqaution, which is like an abstract idea.-(Bilski)
          3. A concept that can be reduced to math which is also like an abstract idea.-(Alice)
          Likewise, any claim to subject matter  outside the useful arts, and that falls sqaurely in the visual, performance, literary, and liberal arts is considered like an abstract idea. And therefore the analysis would require looking at the individual steps and comparing the steps to the Claims”as an Integrated  whole.
          This is step two of the two step test based on the Mayo framework. As you can see from the Court cases mentioned above the test is not a whole sale license to dissect claims, but instead is a framework for considering all claims as an “Integrated whole, in the concluding analysis.

  2. 14

    This definition of software issue business is silly. Go back to the beginning. The von Neumann architecture. If you understood this, then you could not argue that software is not a component and that it has no structure. The whole idea was to move the architecture of the machine into memory and build a little simulator for the architecture so it did not need to be hardwired. Scientific fact!!

    The abstraction of the programming language merely adds a layer of abstraction on top of this.

    This is scientific fact. This is not disputed by any credible person in computer science or electrical engineering.

    So, you anti-patent people can psychotically make up nonsense, but that is scientific fact.

    1. 14.1

      bert: do they claim the whole computer/system and what it does or just their part of it?

      Bert, that is a red herring. Nvidia could do either. I have written patent application for graphics cards for a different manufacturer.

      The fact is Bert that software is really just hardware. The whole machine is just a way to reduce the hardware by building a simulator. In fact there is a heavy cost for this in that GPC + software is much less efficient then special purpose hardware. Scientific fact. Not psychotic anti-patent nonsense.

      1. 14.1.1

        Whether it is a red herring or not, do they? Or do they just claim their component?

        The software is not hardware.

        Do everything with special purpose hardware and I think I’d be happy for you to have a patent (obviously depends on what your hardware does) but if you take the easy way out and build software and use someone else’s invention (ie the computer) to do whatever you want to do then I don’t think you deserve a patent.

        And I know what psychosis is and I don’t suffer from it. It is not kind to state such things. Anon says that I insult him but I don’t, unless a challenge to answer properly is an insult.

        Your notion that anti-patent advocates (which actually is a misrepresentation of my stance) are psychotic is insulting.

        1. 14.1.1.1

          “take the easy way out”…?

          You quite miss the FACT of the equivalency*** between software and hardware and software and firmware.

          *** and it bears repeating (sadly) that equivalency is not the same as “exactly the same,” as certain people are sure to try to kick up dust with the “exactly the same” misdirection.

          (you are incorrect in how you are portraying any type of your action insulting me, by the way)

          1. 14.1.1.1.1

            in what way do software and hardware operate in substantially the same way?

            by your definition a deisel engine is the same as a petrol engine. if you don’t look under the hood then everything looks the same

                1. bert,

                  I have explained – several times now, across many threads.

                  You mistake my posts as “non-answers” when I am merely summarizing previous posts.

                  It is just not certain how much would need to be explained to you – do you have any understanding of what the ladders of abstraction mean? If you want more, then the onus is on you – the archives are here, general patent law courses are available.

            1. 14.1.1.1.2.1

              You still monologue….

              But here’s an active task for you take:

              You believe that “software does nothing,” then remove ALL software from your computers and tell me how much you can do.

              We both know why you will not – cannot – complete this task. You simply – and unequivocally cannot DO it.

            2. 14.1.1.1.2.2

              Used to do it all the time.

              Though that was with PDP-8s and PDP-11s.

              It is also done every time with a new CPU is created.

              The most recent time I did it was last year – that was to work on a stack machine that had no physical existence.

              The only reason it is difficult now is due to vendors choosing to make it difficult.

              Not because it has to be.

    2. 14.2

      So get that NO CREDIBLE PERSON would say that software is anything but the INSTRUCTIONS to this hardware simulator that we call a CPU.

      There are two camps that dispute this: the ignorant programmers that don’t understand the abstracts they work under and the anti-patent judicial activist.

      1. 14.2.1

        Irregardless, programs are written by and for people.

        The numbers that are generated can also be read and interpreted by machines is no accident, but design.

        People read programs to fix them. People read programs to analyze how the math works (that is part of computer science – math analyzes itself for errors, and to identify new math truths).

        And that simulator of yours – it is defined by math, but implemented in real, physical parts. No issues with patenting that.

        Everything else is just abstract information that should not be patentable.

        And finally the judges are seeing through the snow that has been thrown at them.

        1. 14.2.1.1

          Sorry jesse, but program are NOT written for “math truths.”

          You really need to break free from that “maths” mindset – programs are written to have some meaningful utility – and it is that utility that guides the inclusion into patent protection.

            1. 14.2.1.1.1.1

              Dr. Knuth’s belief system is quite separable from the science.

              please engage your own critical thinking skills and stop the lemming approach.

                1. jesse, you are monologuing again and not listening – le’s try this one more time: Dr. Knuth’s belief system is quite separable from the science.

                2. Your “trust” is a belief-system driven “logic.”

                  You are behaving illogical – and in an unthinking lemming manner.

                3. Dr. Knuth has earned that trust.

                  Patent law (as represented by the people professing to be experts) has shown itself to be illogical by denying the field of math, where logic rules all.

                  Every CPU embodies the definition of a math system. If it did not, it would not work…

                  Engineering, and science in general, embraces math, but does not rule math.

                  Only patent law seems to be trying to rule that which cannot be ruled. What will happen is that the development and use of math will just move elsewhere, as did the field of encryption (and recently much of science itself).

                4. …earned that trust…?

                  No – think man – think for yourself and do not be a lemming when it comes to the separable aspect of belief.

                  Your “math rules over all” sounds exactly in the “Universe is really only maths” philosophy. Come back to Earth.

                5. You are misconstruing (and I’m being polite) what I said.

                  I SAID “… field of math, where logic rules all.”

                  I did NOT, and WOULD NOT” say “math rules over all”.

                  Math does not rule physics. Math can only describe some aspects of physics.

            2. 14.2.1.1.1.2

              I have read his books Jesse. I am sure what I am saying is consistent with the content of his Art of Computer Programming series.

                1. I don’t think so Jesse. I spent years being an expert on the analysis of algorithms.

                2. What you have to square Jesse is that equivalence of software and hardware.

                  Not only that but with a special purpose chip —think now—how is that different than having equations describing how a chair operates?

                3. The special purpose chip is physical device.
                  The chair is a physical device.

                  Both are patentable…

                  Now any microcode software in the chip is not part of the patent – it should be excluded.

                4. Really? “…years being an expert on the analysis of algorithms”?

                  You did know that the algorithms are just software… So who read that software?

                5. >You did know that the algorithms are just software… So >who read that software?

                  Jesse: it is information processing.

                6. And how is that different from math? It follows the same rules, the same logic, and gets the same results.

            1. 14.2.1.1.2.1

              Please define “math truths,” as you appear to be using a line of thought akin to “without natural laws, NOTHING would ‘run‘.”

              1. 14.2.1.1.2.1.1

                ..then be prepared to accept the significant real and legal difference between “math” and “applied math.”

                1. “legal difference” does not mean actual difference. It is just another “legal” fiction made up to claim control over some other field.

                2. applied math is not what you think it is.

                  applied maths is the use of maths to describe reality, ie physical interactions.

                  applied maths is not the application of maths to solve a problem.

                  for example, encryption is not applied maths even though it has real world applications.

                  similarly, the generation of prime numbers is not an applied maths problem even though it is used in the real world.

                3. lol sorry bert – you are in the wrong terrain and applied math is exactly what I think it is.

                  You really do need to understand the complete picture.

                4. Quite the opposite jesse (and bert) – you two have disassociated yourselves and your infatuation with ‘maths’ and have divorced yourselves from the real world aspects.

                  Time to wake up and look around you – software is real – it really is a machine component and a manufacture in its own right. It is not something purely of the mind (such is only the thought of software). Two machines, once identical, are no longer identical when one machine is reconfigured with the addition of the machine component of software. This is reality.

                5. Quite the opposite jesse (and bert) – you two have disassociated yourselves and your in fa tuation with ‘maths’ and have di vorced yourselves from the real world aspects.

                  Time to wa ke up and look around you – software is real – it really is a machine component and a manufacture in its own right. It is not something purely of the mind (such is only the thought of software). Two machines, once identical, are no longer identical when one machine is re configured with the addition of the machine component of software. This is reality.

              2. 14.2.1.1.2.1.2

                my definition of math truths would be logic but may not necessarily be limited to that alone.

                i’m afraid i’m not clever enough to work it out, nor knowledgeable enough to know whether there is the possibility that computers can work without logic, nor do i know of any part of maths that works without logic – to me it is fundamental – but i wouldn’t discount it. could anyone enlighten me here?

                a simple example of a maths truth would be

                if 4 < 5 then true

                1. think in terms of ANY engineering domain then, and your logic makes all fruits of all engineering off limits from the patent system.

                  As I have pointed out – the arguments you use are not anti-software patent – they are anti-patent.

                2. anon, the “fruits of all engineering” are real physically existing devices.

                  The math is not part of it.

                3. Exactly as engineering uses math, so software uses math

                  Software is more than math, hence copyright protection inures (for the aspects of software that fall under that domain), hence patent protection inures (for the aspects of software that fall under that domain).

                  You can keep on monologuing and keep on denying the facts that are all about you – those facts remain nonetheless.

                4. math does not use math jesse.

                  You are slipping here – you are really saying that a person using math may nest the use of the math – but there is no person involved in the inventions as claimed – only machines and manufactures.

                  You need to recognize this fact.

                5. Slipping yourself.

                  Math is applied to math… Otherwise compilers could not work… Even computers would not work.

                  “information” is an abstract concept – and claiming it is “real” doesn’t make it true – it can be considered a lie. At best it can be polity referred to as “an error”.

                6. Again jesse you are caught up in monologuing and you are not reading the comments:

                  math does not use math – you cannot empower math so.

                  A person may use math in a nested fashion – but that is quite distinct from the innovations and inventions under discussion. Compilers “using math” to work does not support your view and rather supports my view – such is the dominion of the patent world and such clearly evidences the reality that software is NOT something purely in the mind. The fact that a machine can use math in this manner removes the Platonic element of your “abstract” and makes it very much real – and very much the domain of patents.

                  Reality intrudes. Open your eyes and stop running into the walls.

                7. No it doesn’t.

                  Abstract algebra is a field of math that can be used to define systems of math.

                  Which is where the computer came from.

                  And I haven’t run into a wall.

                  Just because a machine can also follow the rules of math has no effect on the math. It remains just math.

                  No matter how you breast beat or trumpet, the Curry-Howard correspondence remains. Software is just math.

                8. “Software is jus math.”

                  On its fact this is ridiculous. The computer, takes time, space, and energy. Information is processed. The conservation of information tells us that work has to be done to transform information.

                  Where is math?

                  You cannot escape physical reality with “math.” Ask yourself what is math? Where is it? Think. Where is math?

                  Instructions that process information.

                9. Actually jesse, I think I’ve found something with which anon and I agree. Software is more than maths.

                  Software is expressive. I’ve seen some beautifully written software with wonderful comments. My attempts, by comparison, were crude and inefficient, though they worked. And this is why the source code (as a body of work*) deserves copyrighting. The executable object code is also copyrighted as it is a derivative.

                  I’m afraid your thoughts are alien to me anon when you say that I am anti-patent and that my logic makes the fruits of all engineering off limits. Please reference where you explained this previously.

                  I see a light bulb and I can express the power output by the bulb as heat and light as a calculation based on the resistance of the filament and the electrical input. I can also describe how the individual parts are manufactured and then assembled to produced the finished product. This description could form the basis of a patent. I don’t understand how I’m anti-patent.

                  *that is not to say that a significant function shouldn’t be copyrightable in its own right.

                10. Congratulations bert on your pregnancy of realizing that the “software is math” argument is a fallacy. I do hope that you are able to convince jesse of his error (I came close when I pulled him along a discussion featuring why copyright protection is available for software even as it is not available for math).

                  Now keep in mind that software has multiple aspects, and it is merely the expressive aspect that garners copyright protection and that other aspects garner other forms of intellectual property protection.

                  I do hope that you are aware of the limits of copyright – as your comment “*that is not to say that a significant function shouldn’t be copyrightable in its own right.” betrays a deep lack of understanding – function is not within the copyright realm. I will give you one guess which realm covers that.

                  I also eagerly await your self-education on the exceptions to the judicial doctrine of printed matter and the very real difference of Set C printed matter and Set B printed matter that exists – especially in non-software domains. You should take note of how I phrase this, as the the typical way it is phrased for patent professionals has been mistreated on these pages. The base statutory language simply has no provision against printed matter and it was a judicially created doctrine that sought out to eliminate Set B type of printed matter. It is a bit of a misnomer to use “exception” as Set C is merely an exception to an exception to the Congressional law. Set C is not an aberration, but rather a restoration that occurred upon realization of the difference in printed matter that exists between Set B and Set C printed matter.

                11. I have always said software is a written language of math. Annotations are extra, but do not normally exist – and on their own, are rarely sufficient…

                  And math can be beautifully written..and wrong, or even poorly written.. but correct. That is the nature of writing. One of the best things about math is that things poorly written can be logically refactored/simplified/clarified without changing the result. In software terms, it is called “optimizing”.

                  Math has been copyrighted for years, as each publication demonstrates. Now, does the publication include non-copyrighted materials? yes. Just as a phone book does.

                  But the organization and presentation of the facts being provided in the math are still copyrighted. Just the facts of the math are not.

                  That still doesn’t have anything at all to do with claiming a reality that doesn’t exist.

                  One of the truths of math is that any math system considered interesting by mathematicians is either complete, but inconsistent (ie, they have a logical contradiction), or they are incomplete (not all math expressions may be specified), but consistent.

                  Math systems that are both complete and consistent are not considered “interesting” by mathematicians. Yet, it is JUST such a math system that is defined by a CPU. The number system used is well defined (and limited), the operations available (and combinations of those operations) are well defined (and limited). Now those limits are quite large… but are still finite. Trying to map the set of real numbers into the limitations forces the real numbers to be “incomplete”. A large set, but still limited (there are both holes in the set, and have a limited number of values).

                  The limits don’t remove the math system from the field of mathematics.

                12. jesse,

                  You dive deeper into the weeds without knowing it.

                  a written language of math…? like a map is a pictorial “language” of the land…?

                  You realize of course, that the map is not the land, right?

                  You realize of course that types of software languages (such as C#) are the language – and are not software, right? Software is written with language, but is a Set C type of written matter and such is fully under the domain of patent law.

                13. No.

                  C# written in C# is still software, and is still the language C#.

                  Your statement would say that written English is not English.

                14. anon, your comments betray your deep lack of understanding of software and also a slight ambiguousness of my words. If you knew software you would have understood my context and not made that mistake.

                  The “significant function” to which I refer is actually a named section of code which in C would be enclosed in {} and contain a number of lines of code. It could also be referred to as a module or procedure or subroutine

                15. I am well aware that functionality is not copyrightable. I watched the Oracle v Google trial with a great degree of interest. The context in which I was talking was exemplified in that case with the java function called rangeCheck, which was really rather trivial.

                  my potentially copyrightable version of the rangeCheck function is

                  goldilocks(porridge, too_cold, too_hot){
                  if temperature <too_cold
                  throw bowl;
                  if temperature <too_hot
                  throw bowl and drink water;
                  if porridge = 0
                  throw bowl;
                  }

                16. My goldilocks version is different and (arguably) expressive, but it is still rather trivial so may not be copyrightable.

                  Individual lines of code, such as
                  a = a + 1;
                  or
                  x = 3a + b;

                  or small combinations of such are not copyrightable. Larger combinations may be copyrightable if they contain some element of creative expression, which may be realised with (but not limited to) different names for variables, functions (ie like goldilocks above) and comments.

                  You may note some similarity between my examples of individual lines of code and algebra, aka maths. This is not by mistake, nor is it by luck. You could say that it is the fundamental natural law of computing and computers (whether they are digital or human). Afterall, computers were designed to do maths.

                  So, to summarise, software is maths.

                  Source code is copyrightable if it is expressive enough. If it isn’t expressive enough then it isn’t likely to be copyrightable, though this situation is currently in flux owing to the CAFC’s decision and Google’s recent appeal in the Oracle v Google API suit.

                  Source code, as it is known today (in the form of languages such as C, java, pascal, etc is derived from earlier languages which were designed to convert human readable words into computer readable (ie processable – we’ll have none of these anthropomorphication complaints) data, ie 1s and 0s.

                  If you were to argue that software shouldn’t be copyrightable because the executable object code is a number, ie lots of 1s and 0s, and therefore not expressive then I would argue that the object code is copyrightable as a derivative of the source code which is copyrightable as it is expressive.

                17. sorry for the multiple posts. I think the word bo ring and gen erally were stopping me posting it all in one go.

                18. bert,

                  Sorry, but your replies show such a degree of NOT understanding copyright basics that a response is not possible. Logically, it is akin to me being a three dimensional person asking you, a two dimensional being to understand that you can escape your binding circle by stepping over that circle. In a nutshell, you need to not only understand the technical/philosophical terrain of “maths” but the terrains of applied math in the real world and the aspects of what the legal world are set to provide protection for. You need a basic level of understanding across the board – and the (self-proclaimed) “deeper” understanding only in “maths” simply will not compensate.

                  You claim that I show “misunderstanding” of words – while you continue to show an even deeper misunderstanding of when intellectual property laws apply.

                  I take some small solace in the fact that you recognized that software is more than just math – you have at least taken a small step that jesse refuses to take. I think the semantics of “maths” is what trips you up. That is why I have in the past shared a link with a certain philosophy (re; Tegmark) that takes the Platonic-like treatment evident in “maths” (and yes, I fully understand the philosophy) and applies it across the board (which in truth is where jesse is coming from, even if he is unaware of that himself).

                  See also link to discovermagazine.com

      2. 14.2.2

        Let me get this straight, you say that

        No credible person would say that software is anything but the instructions to a CPU.

        Which translates to

        A non-credible person would say that software is not instructions to a CPU

        I say that,

        Software is only instructions to the CPU.

        Therefore I am a credible person.

        Now that we have established that I am credible:

        Software does nothing.

        A CPU does something.

        Software is not hardware.

        1. 14.2.2.1

          You are confusing the “is” and the putting that “is” into action.

          One cannot put “nothing” into action and have a new capability not present before.

          That would be the logical equivalent to magic.

            1. 14.2.2.1.1.1

              I am not the one who is confused – I full well recognize that to have something “do” you first have to have the something.

              You cannot have a nothing “do.”

              You are the one attempting the sophistry of defining the object ONLY as an action. Real world software is a deliverable – an object. It may be a written object, but written objects (Set C printed matter) carry patent weight.

              This is the reality that cannot be denied. No matter what your belief system is, this is a fundamental fact that remains.

              1. 14.2.2.1.1.1.1

                Only physical devices can “do” anything.

                Nonphysical devices are called ideas, abstract notions, writings. Which “do” nothing.

                Denying reality is what is wrong.

                1. Shall we visit (again) the physicality aspect of copyright, jesse?

                  You really do have to accept the difference of the thought of software and software. Software is simply not something purely of the mind.

                2. …and once again, you really do need to understand that there is a real AND a legal difference between Set C printed matter and Set B printed matter.

                  Until you face this fact, it is you that is denying reality.

                3. And software, like the math it is part of, is still just a language, and like any language, may be written down for the purpose of communication.

                  A “difference” not based in reality is (politely) a fantasy.

                4. You are still denying the very real AND very legal difference between Set C printed matter and Set B printed matter.

                  Your monologuing is pure denial until you come to grips with this reality.

                5. Anon,

                  I asked below for a definition of Set C printed matter (a definition of set B would be good too, and any other sets) since I have been unable to google these terms or find them on this website.

                6. I mentioned that my answer was blocked.

                  You can use the site archives – do you know how to do that? (look for the magnifying glass)

                7. i have tried searching the archives using the magnifying glass, a search on “set c” brings up marital assets but it seems impossible to find anything relevant

                8. Very likely it wasn’t blocked… but too long. There appears to be a limit to the size of text though I haven’t worked out how long that is.

                  One of my posts was “blocked”… but submitting the same text in limited length (in my case, one or two paragraphs of relative short text) worked fine.

                9. Also check out link to uspto.gov

                  and the definition of “manufacture:” iii. Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by handlabor or by machinery.

                  yes – handlabor of writing software results in an article produced from raw or prepared materials (and note the combinations aspect is met).

                10. Interesting…. as

                  iii. Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by handlabor or by machinery. Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193,

                  Would deny your “software manufacture” statement.

                  And Nor can one patent “a novel and useful mathematical formula,” would also seem to disallow software.

                  Your link does include the fiction that a program makes a special purpose computer out of a generic computer… But it also qualifies that with “in effect”, which implies that that really doesn’t happen.

                  That entire section has a fair amount of arm waving/

                11. BTW,

                  “…article produced from raw or prepared materials…”

                  Sorry – software is not produced from raw OR preprared materials. The sentence appears to be towards NEW materials… Which doesn’t happen – even with ROMs which are write once, though I grant it gets more vague there – the software isn’t directly written for a ROM… It is written on paper, markboards, … almost anything BUT a ROM; mostly because it is too expensive to debug.

                12. And if you insist that is still raw or prepared material…

                  Then so is a novel, or a cookbook… Neither of which are patentable.

                13. Thanks for the link anon. So we have:
                  All printed matter, which is divided into two mutually exclusive sets which are,
                  the judicially unallowable printed matter because it is just words
                  the judicially allowable because they are more than words and have function.

                  Below I said:
                  The Printed Matter Doctrine: printed matter is not entitled to patentable weight
                  The Exception: unless the printed matter and the substrate have a new and unobvious functional relationship.

                  1) Software encoded on a substrate has no functional relationship with the substrate. It has a functional relationship with the processor that processes it and it is the processor that functions, not the software.

                  2) Ignoring 1), any functional relationship between software and the substrate on which it is encoded it both old and obvious and is the function for which the substrate was created.

                  3) Ignoring 1) and 2), the software creator did not create the substrate, nor did the creator create the method of encoding the software on the substrate, nor the method of processing the software.

                  For these 3 reasons, and there may be more that I haven’t explored, the exception to the printed matter doctrine is inapplicable to software.

                  Unfortunately, your link has failed to amaze me and I have used your Set B and Set C definitions without knowing what they are.

                  Software is not a part of Set C as noted in parts 1), 2) and 3) above.

                  I suppose point 3) is a little dodgy but I’d like to ask whether you know of any cases where someone has taken something produced by someone else, printed on that item then obtained a patent on that printed item? Or have all cases been where someone has patented something that they assembled/produced and printed themselves?

                  My point being is that if you think software has a functional relationship with the substrate on which it is encoded then you must compare that to text encoded onto paper.

                  Beyond the process of encoding the software to the substrate or encoding the text to the paper there is no functional relationship with the substrate or the paper.

                  The only functional relationship between the encoded software or the encoded text and something else is with the processing unit, whether that is a chip or a human.

                  Is a book written in braille patentable? If not, why not?

                14. Handlabor… interesting. Going back to the early computers where switches were adjusted by hand, would this mean that throwing a switch results in a new manufacture?

                  Moving a gear stick in a car must also do the same.

                  In each of these cases we have fulfilled your (the statute’s) definition.

                15. close – but you still exhibit an important miss: it is not a “judicially-allowed” Set C as much as it is a recognition that the Congressionally allowed matter includes Set C.

                  This is an important legal distinction based on constitutionally allocated authority to write patent law.

                  It is also a FACTUALLY important difference to note that there exists a factual difference between Set C printed matter and Set B printed matter.

                  While those versed in legal training can readily understand what is meant by “exception,” it is too easily obfuscated to the links such as yourself (with no snark) that are easily confused with legal wrangling – hence my restatement and emphasis to distinguish what is judge made and what is not.

                  The post I made (that is still blocked) went into some detail as to why your three points fail – as I do not know what blocks the post, I will not repeat the argument here. Suffice to say that there is in fact a functional relationship because in fact software does work – else wise we would not be having this conversation as no one would be seeking patent protection of something that did not work.

                16. As to your “book: analogy, I have already discussed the FACT that such is a nonstarter – not even wrong – and that you must use examples from the Useful Arts – not things like literature or music. You really do need to understand that you cannot engage that fallacy in our discussions.

                  As to the “car in gear” or “toaster-setting” analogies, I have also in the past debunked these examples and explained that you have merely run into the limit of the analogy – and have not addressed the actuality that software does in fact change a machine – you cannot “use” software that you have first not added to – and configured the machine – to use. You miss that first important step wherein the change is effected.

                  A counter analogy is my big box full of electrons, protons and neutrons. Such a box merely needs the analogized configuration to produce any and all future possible inventions, as any and all future inventions (of the physical type) are reduced to what I have “in my box.” As you should be able to logically grasp – this very same type of logic you wish to use obliterates ALL patents – not just software patents – and hence, your logic is anti-patent, not just anti-software patent.

                17. ..and to your “earlier” model of a n actual person re configuring things by actively changing switches – you need to recognize the invention that removes the person from the “equation.”

                  Such a change is exactly the type of change patent laws are meant to protect – an improved machine.

                  Machine components – as manufactures – are also meant to be protected under patent law.

                  This is the simple facts of reality and law that serve as a baseline for discussion. This is not because “anon says so,” but rather, anon says so because it is as it is.

                18. Well, colour me confused. Where does the printed matter doctrine come from? Everything I’ve read, for example Semiotics 101: Taking the Printed Matter Doctrine Seriously says that it isn’t from the Patent Act, which would mean Congress. I was under the impression that judges created it. If I’m wrong here, please let me know. It is rather crucial and would explain why I’m going so wrong.

                  Who says where Set B starts and Set C starts?

                  For the judges to say where Set B is they are also saying where Set C is. It has nothing to do with Congress anymore. Congress may have written the act but deciding what lies in Set B and Set C is no longer up to them. Set C is Congressionally allowed, I get that, but it’s the judges that have decided what gets put in Set C.

                  When there are only a choice of 2 sets, how can a arbiter of what gets included in one set not be the arbiter of what gets included in the other set?

                  What is the new and non-obvious relationship between software and the substrate?

                19. You say, “Software does work”. If that is so, what my CD containing Adobe Illustrator X do if I do not put it into the CD drive?

                  What is the functional relationship of the software to the substrate on which it is encoded if there is no connection to a processor to process it?

                20. Your definition of manufacture is being selectively used. Do a tick-box exercise. You are basically saying, “because”.

                21. My definition of manufacture is certainly not selective and is in accord with all uses of the word in the patent context.

                22. In this example, how do you get software onto the machine if not by way of the substrate?

                  There must be a functional relationship – else you could not do this.

                  This is yet another baseline fact that you need to understand and accept in order to have a dialogue on the topic. You may not like this, but that is the way that it is.

                23. Anon, the CD doesn’t do anything…

                  There is no relationship between software and the CD…

                  Anymore than there is between the information in a book and the book… Neither do anything.

                  and the definition of manufacture is in the context of material. Not information.

                24. bert,

                  You need to alleviate your own confusion – along several lines.

                  First and foremost, Congress wrote patent eligibility to be open ended and it was the Court that attempted to constrain that. So no, you will not find Congress specifically enunciating a list of items that are patent eligible.

                  In critical part this is necessary given the fact that innovation cannot be known a priori.

                  What is the new and non-obvious relationship between software and the substrate?” – that is not a requirement for the exception to apply, to apply, there must merely be a functional relationship – it is the invention that requires a new and non-obvious finding, not the functional relationship alone.

                  Further, your understanding of all of this has no effect on the reality of all of this. I do hope that you can find the understanding – and as I mentioned, you are step closer than jesse in realizing that software is more than just math – but you are STILL stuck in the “math philosophy” zone and you discombobulate yourself with “maths” (plural) and you do not even realize that you have stepped away from reality into that philosophy zone.

                  You need to grasp the three different zones: the philosophy, the reality and the law. You are trying too hard from only the philosophy zone.

                  I wish you well on your journey of understanding.

                25. Software is pressed onto a cd. it is a physical action that does not involve the usual encoding and burning that you are used to

                26. “You need to grasp the three different zones: the philosophy, the reality and the law”..

                  so now you state that the law isn’t part of reality…. :)

          1. 14.2.2.1.2

            software is data does nothing.

            a cpu is an object and processes data (ie does something)

            logic is not magic though it may be indistinguishable from magic by somone who doesn’t understand it.

            1. 14.2.2.1.2.1

              A tire without a car does nothing.

              Manufactures that are machine components do nothing without the integration into the machine.

              Your argument here is stillborn.

              1. 14.2.2.1.2.1.1

                Wrong.

                It is subject to gravity. It has mass. It still provides padding.

                I have seen many uses for tires without a car. A swing. Dog watering bowel, planter, fish trap …

                As usual, you ignore reality.

                1. sophistry from you – use the tire as it would be patented…

                  It is a strawman argument to use other physical aspects as those are not under discussion – those are not the aspects of the manufacture to the machine that is pertinent to our discussion.

                  Stay focused.

                2. Of course it is.

                  Software, like the math it is part of, has many uses. Communication is its primary purpose. It is a logical writing in a given language.

                  Or have you forgotten how PGP was “legally exported” when exporting encryption was illegal?

                3. I am more than pretty sure that you do not want to venture into the area of encryption and patentability.

    3. 14.3

      Key word you missed night – SIMULATOR. As in NOT REAL.

      And that was NOT the Von Newman design – that was IBMs incorporation of microcode.

      Von Newman only wanted to replace the pegboard with an electronic version – ie. main memory.

      And you forget where the “program” came from in the first place. The Turing machine. The program was supplied as input to the Turing machine, and could then allow any Turing machine to emulate any other Turing machine.

      So, you patent people can psychotically make up nonsense, but that is scientific fact.

    4. 14.4

      Just my opinion, but I think we’re sort of missing the forest for the trees here, so to speak.

      I think most reasonable people agree that the first software-hardware system, and improvements to such systems, are patent eligible.

      What people have trouble with is when ‘improvements’ to the software distinguish the system from the prior art using abstract ideas.

      In MANY of the patents I have seen, what seems to distinguish the claims from the prior art is the particular labels applied to software components or the arrangement of information. (A first hotel database is totally different than a stray dog database, that sort of thing).

      Yet, most reasonable people also seem to agree with the general principle in Diehr.

      So the issue becomes, to me at least, how to decide when improvements in the software are sufficient to confer patent eligibility. So far all we have is the Mayo framework, which I find a little ambiguous.

      Please let us know if you have a more clear standard.

      1. 14.4.1

        go,

        May I recommend that you look into the patent concept of inherency, and that patent law fully allows improvements to machines (and manufactures).

        Your post here sounds in the debunked “House” fallacy – that the first computer – and the first computer alone – could have earned patent protection. As I have pointed out, this violates the Morse case, as your position necessarily includes in that very first computer all future improvements.

        The truth of the matter is that the just because the machine known as the computer can be changed easily and new capabilities created with the existing “box” of hardware, does NOT mean that all future inventions – even (or especially) ones not yet even contemplated – are already “in there” in the inherency doctrine sense.

        As I have also pointed out with my analogy to a big box of electrons, protons and neutrons, the logic you attempt to use – and the ignoring of the fact that it is configurations that are the inventions – would annihilate ALL patent law; the logic is anti-patent because the logic does not stop with software.

        1. 14.4.1.1

          It is “in there” as all it takes is a mathematical derivation to identify one.

          And logical derivations are not supposed to be patentable.

          1. 14.4.1.1.1

            You continue your monologuing jesse.

            No matter how many times you repeat yourself, it just does not make it so.

            (ps, you do realize the difference between “math” and “applied math,” right?)

              1. 14.4.1.1.1.1.1

                The fact that you believe there is no difference does not make it so.

                The plain fact is that there is a difference. BOTH a real and a legal difference.

                Until you unclench your eyes and see this, all that you are doing is monologing according to your belief system and ignoring both the real world and the legal aspects of that real world. In order to proceed with the dialogue, you need to come to grips with the pertinent foundational facts.

                1. I know the rules of math and how that math works.

                  Guess what “applied math” is still math. It works exactly the same. The word “applied” has no meaning to the math.

                2. LOL – you are back in the “world” of “everything is ‘maths'”

                  Time to join the larger reality of the planet Earth, jesse.

                3. Nope.

                  That WOULD be fantasy. But that appears to be yours, not mine.

                  Math is not physical – it may be used to describe reality, or at least, portions of it. But that doesn’t change math.

                  As NASA found out when it lost their Mars probe… The math was right. The physics was not…

                4. You still want ot exist purely in your ” ‘Maths’ uber alles” world.

                  Such is not the real world jesse. Come back to the real world.

  3. 12

    anon,

    you frequently state that software is a component of a machine. i dispute that and say that software is an input.

    when nvidia produce their graphics cards they are rightfully called components. when nvidia are patenting their new hardware, do they claim the whole computer/system and what it does or just their part of it?

    1. 12.1

      bert,

      You can “dispute” it all you want – does not change the fact that software is a machine component.

      The fact remains nonetheless.

          1. 12.1.1.2.1

            It is a fact by definition – and yes, by reality.

            Long ago I invited anyone to provide a sample of software that was not meant to be a machine component – no one was able to provide any, because such a thing does not exist. You are confusing the thought of software with software. You are confusing the possible components or elements of software with software.

            In reality, software is a machine component. Such is a bedrock understanding that you must have in order to discuss software at all, let alone discuss software in the patent law context.

            1. 12.1.1.2.1.1

              No it is not a component. It is merely a description of a math procedure.

              It remains an abstract concept.

              The fact that a machine can interpret written procedures doesn’t stop the written procedures from being an abstract concept, nor does it stop being a math procedure.

              As for software that isn’t a machine component, the CRC math handbook has a lot.

              And before you claim those formula and procedures don’t count as software, remember that the Mathematica application interprets those same formula and procedures when it reads them.

              1. 12.1.1.2.1.1.1

                Sorry jesse, but it is a component – by definition.

                You don’t have to like ti – but you do have to accept it.

            2. 12.1.1.2.1.2

              software is a machine component.

              Software is instructions written for a computer and encoded onto a computer-readable medium, a medium which includes a transient signal.

              A machine component is something that has a physical existence separate from the machine.

              How much does the typical software weigh?

              Such is a bedrock understanding that you must have in order to discuss software at all, let alone discuss software in the patent law context.

              Maybe that’s true in some echo chamber that smells like your gym socks but it’s not true in the real world. Try again.

              1. 12.1.1.2.1.2.1

                Sorry Malcolm, but your definition does not accord with the understanding that a person having ordinary skill in the art to which the invention pertains would have.

                Funny though, it does mirror your predilection (also in error) to take the viable OPTION of writing a claim in objective structural terms and thinking that such an option is the ONLY legal way of writing a claim.

                We both know though, that the law allows more than just claims written purely in objective structural terms, right?

                What I post is true in the real world. Your attempted insult notwithstanding.

                1. Sorry – real world intrudes.

                  Software does nothing, is nothing.

                  In actual fact, software is written for people.

                  That it can also be translated into numbers for a machine to interpret mathematically is a benefit, yes. It is how a lot math is intended.

                  But the language used to write software is for people.

                  You DO know that patents are not supposed to cover abstract ideas, right?

                2. Ned – how can I have a definition here (“your definition”) when you immediately accuse me of never providing a definition?

                  Truth is, I have provided a definition – and it does exist. Software is defined as a machine component, a manufacture, built by the hand of man for a utilitarian purpose.

                  It is that simple.

                3. anon, your “definition” is wrong.

                  It isn’t anywhere near what computer science calls software.

                  And that makes your use of “software” incorrect.

                4. sorry jesse, but my definition is accurate. That it does not accord with your belief system makes it no less accurate.

              2. 12.1.1.2.1.2.2

                I’m not sure you actually understand what software is. You appear to be confusing the blue prints – i.e., the flowcharts, algorithms, and descriptions, which are what appear in patent applications from the actual software.

                This would be like me looking at the blue prints for a machine and saying “what does that machine weigh?”. You would respond, “well those blueprints are not the actual machine.” I suggest you research the transistor.

                1. Jesse, whether anon is confused or not, he will not be tied down to any working definition of software. What he does is tell others that their definition is wrong.

                  Now, he might say, as he often does say, that I don’t have to define anything here as I have done that before, when, in fact, he never has. I have been observing anon for a good time now, and he has never, to my recollection, offered a definition of software, let alone of what a programmed computer is.

                  Just for example, when he says that software is on a disk, and a claim is to a programmed computer, he will not answer the simple question of just how close the disk must be to the computer before the computer is considered to be programmed by the software on the disk.

                2. Ned, I think you are right.

                  He constantly confuses what software is.

                  I suspect he has never had contact with the foundation of computer science, abstract algebra.

                3. Anon, Have you ever heard of diskless nodes?

                  They have no software. In the original use, they didn’t even have a BIOS, but had something else connected, over possibly miles of wireless or fibre optic cable…

                  It is a fantasy that a machine magically “changes” just because you set some configuration… Like changing gears in a transmission suddenly changes the car into a different car…

                4. Just thought of this analogy.

                  Would you say that a computer with software is similar to a player piano with a music roll?

                  The music roll allows or causes the player piano to be able to play a new song.

                  If so, would we say that each player piano/music roll combination is individually patentable?

                5. Ned,

                  Here too an accurate reply is not allowed.

                  go – you fall into an OLD fallacy of attempting a discussion within the useful arts using a meme outside of the useful arts. A guest author in the past has termed this “the Pauli priniciple” – not even wrong – you seek to have an impossible discussion by attempting to use music.

                6. I think I get what you’re saying.

                  So the distinction you’d make is that a computer with new software produces a useful result whereas a player piano with a new music roll does not?

                  Presumably, we both agree that player pianos and music rolls are patent eligible.

                7. Anon,

                  If the piano player is adjusted slightly so that we have the roll, the pumps and levers etc but instead of piano wires which resonate when being hit by the hammer we have a slightly different structure.

                  This modified player piano has 9 keys which are linked to a position on a tic-tac-toe board (a display) – let’s say middle C4 and the next 8 white keys up to D5

                  Each position on the tic-tac board can show 3 different values, blank, O or X. At the start of the game we have a board with only blanks.

                  When a hammer hits it’s wire a new value is shown in one of the positions on the board if the position has a blank. Each time the hammer hit changes a position from a blank a toggle is set to make the next change to the other value.

                  If a position on the board already shows a O or an X then that will not change.

                  When there are 3 in a row the machine stops.

                  We insert a piano roll with just music and wait for the results. Depending on the music we could be waiting for a while.

                  My player piano does more than just play music now. It operates a display. I’d say it’s patent eligible.

                  Do different piano rolls make for separately patent eligible machines? They operate in exactly the same way to produce different, or similar, results on the display.

                  If it’s a matter of complexity, we can increase the number of pixels in the display and hook them up to all the 88 keys on the keyboard, then there’s the foot peddles which can increase the complexity even more.

                  At it’s heart, my new dis-play-er piano is doing exactly the same action despite the introduction of new music.

                  I can further alter my dis-play-er piano to change from O to an X or X to an O (instead of limiting it to changes from blank to O or X).

                  I then create piano rolls to display “Hello World!”, “The quick brown fox jumps over the lazy dog”, etc.

                  I add a device to my dis-play-er piano roll, I’ll call it an “adder”. This adder can take the input from 2 notes which are struck at the same time when the sustain pedal is pressed and store the result somewhere for use later.

                  If I’m careful enough and add a few other bits my dis-play-er piano will evolve and become a fully functioning computer. I’d like to get to that point by version 11. I’ll call it the DPP-11. The main things it does are calculations and then results are displayed.

                  I would be able to craft a piano roll to play music that would be able to do things that computer’s today can do. To do different things all I have to do is switch piano rolls.

                  Is each different piano roll creating a different machine?

                  Each piano roll is ROM, they’re just not compact. They contain data that the DPP-11 processes.

                  Try not to dodge, like you usually do.

                8. Bert,

                  That is a much more intelligent way to ask what I was trying to get at.

                  I’m simultaneously happy that you were able to articulate my thought and irritated at how clumsy my post now appears.

                  Thanks!

                9. Actually, it shouldn’t need a display…

                  After all, a blind person can usually still hear and touch.

                10. Bert,

                  As I have never engaged you (at least this moniker) in a conversation, there is not way that I can “dodge, like [I] usually do

                  You end poorly, with an attempt to insult that simply misses the mark.

                  You also start and complete your example poorly, being as you attempt with great diligence to concoct a music-like example even after I explained that one engages in fallacy when one tries to use a non-useful arts example (the not-even-wrong syndrome).

                  This has been explained before. Just because you do not like the explanation does not mean that the explanation is a “dodge.”

                  If you are now engaging me under a new pseudonym (hey – I’m not judging) than I would tell you straight up that I do not dodge on this issue – but as I just mentioned, the PROPER legal understanding may be one that you don’t like – but that is not a dodge.

                  Dear go,

                  Do not feel amiss about the manner of your question. You asked plainly and my answer holds. There is no glory in trying to be too clever by half, as bert has done. Such a flowery attempt is also a simple “not even wrong” no starter.

                  All he achieves is a even more profound display of his lack of basic understanding of patent law.

                11. jesse,

                  That is your opinion, your feeling, your belief, of which you have full right to have.

                  Unfortunately (for you) to have a discussion on the matter, such conclusory opinions are of no weight.

                  You really do need to care about the law – and about reality. The mere strength (and repetition) of your beliefs just are not compelling.

                  You need more.

                12. anon, the entire field of computer science doesn’t agree with you.

                  That isn’t just an opinion.

                  That is a mathematical fact.

                13. You add hubris to your lack of knowledge jesse, as I have many in the field of computer science that agree with me.

                14. Jesse,

                  I know I didn’t need a display. I was considering using a panel of light bulbs or a line printer as with early computers but I thought a tic-tac-toe would be mechanically, physically and structurally apt.

                  Anon,

                  We have actually discussed prior user rights and you referred me to Madsted, which I went away and read. I still can’t see why you argued the way you did. It seemed contradictary.

                  It wasn’t an insult, it was a request based on observation. You could view it as a challenge.

                  You say that I’m “not even wrong” without explaining why. You say, that I have provided a non-useful arts example yet my machine is a computer whether you like it or not. It can produce useful technological results depending on the roll used. You appear to dislike my computer just because it produces music.

                  The only fallacy I see is your argument that:
                  Music cannot be patented
                  This machine produces music
                  This machine cannot be patented

                  (If the above is the wrong interpretation then please clarify.)

                  I do not claim to be a lawyer so I cannot argue in a lawyerly manner and I cannot see the legal (or logical) flaw* in what I have said or think which is why I come onto this website which does have lawyers so that I can express my views and try to understand why, or if, my views are legally wrong. I do occasionally get answers which I consider worthy so I will go and research them. If I can think of a cogent argument before the thread dies then I’ll come back to it, but if I can’t then I mentally give the other person a winning draw. Not being a lawyer means I’m unable to respond quickly enough but you should be able to.

                  * legal flaw… judges sometimes get it wrong so I cannot rely on their views 100% of the time and need further explanation. This is, I think, a reasonable view to take as you will acknowledge some decisions aren’t made with the right argument. (We will obviously differ on which decisions we believe are right or wrong in some instances).

                15. bert/bob,

                  You say you do not understand law, yet want to judge that law through your “technical-belief” system…

                  Is that logical?

                  As ‘bob’ – if I recall correctly – I asked you to understand the Set C and Set B printed matter distinctions. It appears that you have not yet done so. The distinction between the two sets of printed matter is very much real. And very pertinent. You cannot be justified in your attempted insult of dodge, when I have provided you the foundation from which to properly understand the discussion at hand.

                  Further, you continue to insist that I am using the word “manufacture” incorrectly, when I am not using that word incorrectly. Sorry, but I am not using the term in the way that you wish to categorize my use – as a metaphoric equivalent to story telling. You show an inability to separate the koolaid “software is like a book” meme that you no doubt have imbibed in from the slashdot/techdirt mantra. But no, I am using the term from real life engineering/building product sense: there is a deliverable product manufactured by the hands of man that is a computer component. Every bit [pun intended] a manufacture as the computer case, the resistors (configured in series, configured in parallel, or both), or any type of monitor device.

                  The “not-even-wrong” aspect of your fallacy remains there – no matter the lack of my ability to explain it to you, nor the lack of your ability to learn of it yourself. You simply cannot draw a useful analogy with the concept of music (it is just not possible). That you continue to attempt to do so merely shows that you have not yet come to a beginning level of understanding of the concept of patents to be able to partake in any meaningful discussion. I get that you come from the technical side, and that this is something that you just don’t understand yet. I don’t have any animosity towards you for that (contrast that with those that try to use the music meme and that DO have legal training – such is purposefully misdirective, and I am reminded of Matthew 7:15).

                16. Are you saying that I am unable to form an opinion which differs from the law as it stands because others more qualified to understand law have judged so?

                  Is it logical to have slaves? Or to distinguish based on race or religion or sex?

                  Is it logical to legislate that pi = 3?

                  The law isn’t always right and it sometimes takes others who are not formally qualified to point that out.

                  I do not recall the Set C and Set B issue and whilst I have searched for these distinctions I have been unable to find them.

                  I would like to understand them but without reference I’m afraid it would be impossible.

                  So, with regard to manufacture, a story is manufactured when it is encoded on a CDROM (back to PMD I think – see my point below).

                  Software is data, encoding it to a machine readable medium does not mean you have manufactured it.

                  I have not drawn an analogy, I have built a computer which just happens to use a player piano as it’s foundations.

                  Does a computer have to be made of silicon chips? Instead of the piano roll, if I use the keys to enter data does that make a difference? I’m still using a keyboard.

      1. 12.1.2

        I agree with you, anon. Software allows a device to do something it previously could not without the software. Therefore a device executing the software is a different machine than is a device that is not executing the software or that does not have the software. From that perspective, software could be considered to be a machine component.

        1. 12.1.2.1

          One difficulty PatentBob comes from the limitation of the human language. Software is most easily described by what it does. This aspect is merely an artifice of language though, and the describing by doing must not be confused with the notion that software – as a manufacture – does not exist of its own accord.

          It surely does (witness the copyright requirement and the notion that the thought of software just is not the same thing as software).

          Thus, my well-honed used of the word “anthropomorphication” or rather, the proper understanding of the word is critical to any discussion in patent law of this topic. When one truly grasps why the mental steps doctrine fails – and must fail – to claims directed to machine and machine components, one can rise above the cloud of dust.

          1. 12.1.2.1.1

            It is no more “anthropomorphic” than believing an ant thinks.

            The ant just follows instructions…

            As does a person doing tax preparation…

            And a computer.

            If a person following directions can’t have the directions for tax preparation patented, then neither should software.

              1. 12.1.2.1.1.1.1

                Didn’t say they were my instructions.

                Remember the original definition of “computer” – it was a person that computes.

                The original “software” were the instructions given to that person to carry out with given data. The entire process took a room with a lot of people just following the instructions. It didn’t matter what the people thought about, as long as they didn’t deviate from the instructions.

                This is part of what makes mathematics hard for people – they are easily distracted, forget steps… and get the wrong answer. Performing computation is a difficult thing to do for long periods of time.

                That is why the original Babbage difference machine was created – to eliminate errors from the results.

                It is even hard for programmers to do right – which is why they get programs wrong so often.

                Eventually, programs will be written by other programs…

                What then, going to allow the program to own the patent on the software it wrote?

                All the computer does, all it CAN do, is follow the rules. Just as any human computer should do. If following rules is abstract and nonpatentable for humans, then it should be the same for a machine.

                1. The original definition of a computer as a person has ZERO meaning in the patent sense to a person having ordinary skill in the art to which the invention pertains.

                  You REALLY do need to care to understand the terrain of the discussion jesse.

                2. You are monologuing again – art must be understood in the patent sense. You are refusing to understand this context.

                3. THAT is what is not “art”.

                  Patents are a way of someone to take over control of others work, at least in this instance.

                  All programs are nothing but the logical derivation of a mathematical result from a given set of conditions, and goals. Patents are thus a method used to prevent thought.

                4. LOL – to prevent thought…?

                  Do you recognize how deep into the weeds you are here? How confused you are as to what software is, if you think software is thought, or is used to control or prevent thought?

                5. Actually, it is.

                  Patenting a math procedure means it is not allowed to be derived by logic.

                  Tough. Software is just a means of communication. A written mathematical language.

                6. If you don’t like the answer, then yes you can copyright math.

                  Every as every math proof shows.

                  and every program source.

                7. …says the man who refuse to know anything about the field of law because “he does not like it.”

                  How logical is that?

                  …says the man who refuses to accept that software is not something purely of the mind, that software is not “maths,” as that term is used in the law, that aspects of software imbue multiple aspects of intellectual property protection -according to multiple aspects of what software is.

                  How logical is that?

                  No, jesse, all that you are doing is clinging desperately to a mantra that you have drunk deeply of. You are acting irrationally. The plain fact of the matter is that if you start with two computers exactly alike and each devoid of any software, and then you configure only one of those computers with software, then you do in fact have two different machines – no person need be present – no person’s “mentality” involved – just the two machines. There is no “magic.” There is no “purely of the mind” involvement in recognizing the factual difference. And while the two machines may still weight the same, there is no reasonable question that the two machines are in fact different. You cannot be just as little bit pregnant with this logic. This is not a “sometimes” thing.

                8. It is quite logical.

                  Math doesn’t change just because somebody says it isn’t math.

                  It is still math.

                  And I’m not desperate at all. I’m not dependent on illusion.

                9. You are very much dependent on the illusion that somehow what is being discussed is something (magically) still something PURELY in the mind, when it is factually clear that such just is not so.

                10. Again no.

                  I know math as a written language. Software is just a written expression of math.

                  And nothing you have said changes that truth.

                11. Set C printed matter and Set B printed matter

                  …that is the truth you need to face.

                  Until you do, you are just monologuing – and doing so without reason or care.

          2. 12.1.2.1.2

            Software allows a device to do something it previously could not without the software. Therefore a device executing the software is a different machine

            That’s a pretty broad test for what constitutes a “different machine.”

            Is a car a “different machine” when a different person sits in the seat? Or when its empty tank is filled with gas? Why or why not?

            What about a steam shovel holding some grey gravel. Is it a “different machine” from a steam shovel holding gold gravel? Seems like it must be according to your argument. After all, the machine with the gold gravel can’t immediately dump grey gravel out of its bucket.

          3. 12.1.2.1.3

            Software is most easily described by what it does.

            That’s true of a lot of things.

            But at some point our patent system — with the help of some judges with a keen interest in writing patent law — started to treat software very differently from other types of “innovations”.

            The ill effects of that decision on the patent system came home to roost in short order. And that’s why the decision is being “undone.”

          4. 12.1.2.1.4

            It is not the limitations of the human (English) language which are difficult. It is the constant misuse of the human (English) language where the limits of what a word originally means are expanded which makes it difficult. This is not only your anthropomorphication but more.

            Would you agree that software is a set of instructions? Or do you have some other definition for it?

            You say “Software is most easily described by what it does”. Yet what does software do? A computer computes the software input it receives, that is, the computer “does”. The software itself “does” nothing. It cannot.

            Software is executed, as in “carried out” or “performed”.

            An instruction is executed. An instruction does not “execute” or “perform”.

            Please describe what software does without making the mistake of describing what the machine does when it is executing software.

            Furthermore, you say that software is a manufacture, I guess because it is manufactured, that is, made by hand or man. This is a metaphorical use of the word and is the same as manufacturing a story. Again, you are misusing words to suit your needs. If anthropomorphication is wrong, then so are metaphors.

            Software is a language – a language of numbers which a computer is able to process. Software is manufactured as much as a language, such as English, is manufactured.

            1. 12.1.2.1.4.1

              sorry bert – my accurate replies are not allowed.

              you will have to remain mired in your misunderstanding.

              1. 12.1.2.1.4.1.1

                I think I’ll call for a default judgement then.

                I’d request some simple yes/no answers:

                1) Would you agree that software is a set of instructions?
                2) Is an instruction executable or an executor?
                3) Is it accurate to say that “to manufacture a story” is a metaphorical description of how a story comes into being?
                4) Is software a language?

                You lambast MM for not answering questions properly yet here you are doing it yourself.

                1. I lambast Malcolm who professes to be an attorney and whom NEVER answers the questions put to him. He has volunteered admissions as to knowing and understanding the legal terrain of Set C printed matter – but posts as if that understanding belonged on some foreign world.

                  Your comparison is ill-conceived.

                  Before I answer your questions – in order to better gauge the depth of the answers needed – how familiar are you with patent law? Do you understand the exceptions to the judicial doctrine of printed matter? Do you understand that patent weight inures to Set C printed matter, but not Set B printed matter? Do you understand my prior post that I am using manufacture – not in the “manufacture a story” metaphor manner, but in the true manufacture under patent law manner? Do you understand that C# is a language (as contrasted with your question)?

                  Have you ever read Sun Tzu? You should understand the terrain about you for our conversation (note that I am NOT saying that you need to be an attorney, or that non-attorneys cannot be included in the dialogues here – but you do need to understand that which you want to discuss, and not just from a technical perspective.)

                2. until a year or so ago i posted as bob, but somone else uses that moniker now.

                  you are using the word manufacture as a noun. however, the point i badly made is that your use is incorrect.

                  a manufacture is something that is manufactured. the problem is software is not manufactured except in the metaphorical sense in the same way that a story is manufactured. by your definition a story is also a manufacture, as is a thought or an idea or even a yawn.

                  you’re now bandying around the printed matter doctrine and its exceptions? a judicial exception to a judicial exception?

                  i understand the pmd and i’ll come back to it and my reasons for not agreeing with the exceptions with it. it is bad law. i’m on a phone with low battery.

                  i thought you didn’t like judicial exceptions, but obviously only when they’re not in your favour.

                3. bert,

                  It will be immensely helpful in your analysis of the exceptions to the judicial doctrine of printed matter to make note that such apply to far more than just the software arts (measuring cups and magic hats and such are not computers).

                  I think that if you take the time to reason through this fact, you will gain a deeper perspective, and be able to separate some of the mantra that is heaped on the masses from the slashdot/techdirt propaganda machine.

                4. I do understand that c# is a language. What is your point?

                  I am an observer of patent law. I read and observe and I know of no “set c” printed matter. It seems that “Set C” of printed matter is not known to many websites which comment on the printed matter doctrine and it’s exceptions, not even on this website is it specifically mentioned, except perhaps within the comments which I don’t know how to search. Is it something you made up?

                  The Printed Matter Doctrine: printed matter is not entitled to patentable weight
                  The Exception: unless the printed matter and the substrate have a new and unobvious functional relationship.

                  1) Software encoded on a substrate has no functional relationship with the substrate. It has a functional relationship with the processor that processes it and it is the processor that functions, not the software.

                  2) Ignoring 1), any functional relationship between software and the substrate on which it is encoded it both old and obvious and is the function for which the substrate was created.

                  3) Ignoring 1) and 2), the software creator did not create the substrate, nor did the creator create the method of encoding the software on the substrate, nor the method of processing the software.

                  For these 3 reasons, and there may be more that I haven’t explored, the exception to the printed matter doctrine is inapplicable to software.

                  Yes, I have read Sun Tzu, many years ago. I can’t think why you think it applicable as we are not at war. And what makes you think that I’m not applying any principles of the Art Of War now in conversing with you?

                5. bert, it is a waste of your time to try to converse with anon. I simply skip over his posts as he rarely contributes anything on this topic.

                  But you are right about anon’s mantra. He uses words in in a the manner of a sophist. Clearly he wants software patented even if it is abstract.

                6. Ned,

                  Your name-calling is out of place. I am not a sophist, and your tendency to skip – or simply disappear – from conversations when those conversations get a bit too “inconvenient” for your represented third party interests has long been noted on the record.

                  Such non-engagement simply cannot move dialogues along, but rather highlight the fact that you are not interested in dialogues, are you? You cheer only those that already agree with your viewpoint, and you refuse to address the many points that I have put on the table for discussion.

                  Please spare me your hypocrisy.

                7. here’s a challenge for you anon, try to reply without insulting me.

                  i keep trying to answer your points. if i’ve missed any, please let me know. it’s not essy tracking the conversation on my phone.

                8. anon, I honestly mostly just skip your posts for the reasons stated. You rarely bring anything to the table on 101 that is technically sound. You simply want to patent software. It is clears as day.

                9. in fact, insult me. it’s not like you’re holding a knife to my throat. i know what i know and i try very hard not to insult, at least whilst i’m on the line, and i try not to provide ambiguousness or inconsistencies.

                  i’ll not think any less, or more of you. you’re just some person across the pond with a different view. i’d hate to think that everyone thought the same as me on everything.

          1. 12.1.2.2.1

            the weight of software is not pertinent – stop the obfuscations Ned.

            Can you obtain copyright on something that weighs nothing? The weight of software will vary with the media that the software is captured on.

            Let’s not be disingenuous here and pretend that software is some magical thing which only exists in the mind. Software exists. It is real.

            1. 12.1.2.2.1.1

              Actually you can.

              Speeches are copyrighted – you aren’t allowed to listen to some of them…

              1. 12.1.2.2.1.1.1

                listening is not thinking.

                You also misapply fair use doctrines.

                Seriously – you do not understand the terrain of the discussion here, and this impedes your ability to have that discussion in any meaningful manner.

                1. Fair use only allows parts. Or major commentary.

                  Unfortunately, a number of speeches are not available for such analysis. Kings “I have a dream” speech being one of them.

                2. Your lack of knowledge is showing again.

                  It is as if you want me to hold a conversation with an ant under my boot.

                3. seriously, what has fair use to do with copyrightability?

                  fair use is irrelevant, would not exist or be needed if something could not be copyrighted

                  you complain of my “insult”, which was actually a request yet you are happy insulting jesse. another thing which makes me wonder whether you are attrmpting to mimic MM. now was that an insult or an observation? to be honest, i’m not sure.

                4. Sorry bert, but the very questions you ask indicate that you do not understand the topic being discussed. It is not logical to expect you to understand answers when you show that you do not understand the basic concepts.

                  It appears that to give you an explanation that you would understand would take far more than a reply on a blog. I suggest that you take a survey course at your local college, or look into the historical nature of intellectual property.

              1. 12.1.2.2.1.2.1

                You are not grasping the Set C versus Set B distinction.

                Printed matter can have patentable weight.

                This is reality.

                1. Invalid?

                  Because of how your feel? Because of your belief system?

                  Please excuse me as I give your opinion the absolute non-weight that it deserves.

                2. Sorry jesse, but that is just not so – your version driven by your belief system is NOT indicative of computer science.

  4. 11

    Look, my hope for Alice was that they would not apply the Mayo framework, the 2-step framework that depends on inventive concept, whatever that means. And instead of distinguishing Mayo on the grounds that it was in a very peculiar technological environment and very specific facts, the court in Alice wholeheartedly embraced the Mayo idea. So now we have a new form of non-obviousness which they call, you know, not conventional, well known, used in the past, et cetera. And it’s way too subjective, and it mixes up obviousness notions with eligibility notions, and it’s impossible to make sense out of it. You can’t tell whether inventive concept is exactly the same as the 103 or it’s a lower hurdle, or it’s a higher hurdle. So if it’s the same then it doesn’t add anything. If it’s a lower hurdle, how meaningful is it? If it’s a higher hurdle, how unfair is it because it’s now made ineligible all sorts of things, hundreds of thousands of patents that were eligible before Alice and issued before Alice. So I think it’s a very unfortunate decision and instead of limiting the harmful effects of Mayo or the chaos created by Bilski it’s actually made those effects even worse.

      1. 11.1.1

        But, now we have the Google CJ Taranto and Hughes to tell us that well, it doesn’t matter, ’cause we never liked science in the first place.

        1. 11.1.1.1

          We know you don’t.

          You also don’t seem to like the supreme court, even though it is in charge of the interpretation of laws.

          1. 11.1.1.1.1

            Non-substantive harassing remark. Jesse: you should either provide a substantive response–particularly to the extended quote–or not respond.

              1. 11.1.1.1.1.1.1

                Jesse: I posted something highly relevant to the post. You harassed me because you don’t like it as it is not anti-patent.

                1. Nope.

                  “… ’cause we never liked science in the first place.”

                  That was obviously true in your case.

            1. 11.1.1.1.1.2

              NWPA: Non-substantive harassing remark.

              You’re pretty much the punchline for your own unfunny joke at this point, gramps.

              Keep up the great work.

    1. 11.2

      how unfair is it because it’s now made ineligible all sorts of things, hundreds of thousands of patents that were eligible before Alice and issued before Alice.

      There’s nothing “unfair” at all about denying eligibility to functionally-claimed computer-implemented information processing junk that should never have been granted in the first place.

      There’s more to come, by the way. Maybe you should think about “getting used to it” instead of crying about it here, day after day after day, and spouting off your paranoid theories about who is trying to “destroy” your precious patents.

      Or is the issue that you and you’re fellow “innovators” are starving and can barely afford to eat anymore now that the casino doors are closing on you? Let everyone know.

      1. 11.2.1

        So, in your haste to harass me you didn’t even bother to figure out those were the words of Judge Michel.

  5. 10

    The EPO approach is four squares with Hotel Security and its current vestige, the printed matter doctrine that is handled under 102/103, but giving no weight to the printed matter unless it is functional with the statutory subject matter.

    Alice is like the EPO/Hotel Security approach, but under 101, where the claim survives if the non statutory is significantly more that the abstract idea itself.

    In the end, I think if the statutory subject matter is integrated with the nonstatutory ala Diehr, then we in the US move on to 102/103 and give weight to the integrated non statutory subject matter. If there is no integration, there must be invention in the statutory — but in that case, the claim never was directed to an abstract idea in the first place.

    1. 10.1

      As far as I understand the printed matter doctrine, I don’t think the two approaches can be considered identical (even allowing the substitution “printed matter”/”features lacking a technical character”).

      The idea of “filtering” non-technical features and assessing obviousness on the features that remain is just one half of the approach (the first of the two holdings of T641/00 “Comvik”, the case that basically defined the current approach). Equally important is the second holding, i.e. that the non-technical features can appear in the formulation of the problem to be solved (which would be considered impermissible hindsight in case of technical features), in particular as a constraint to be met. This means that also in some (not all) cases where a functional relationship between technical and non-technical feature can arguably be established, and where the non-technical features are not disclosed by any piece of evidence, the invention might ultimately be found obvious under the EPO approach.

      Mr Williams above tries to explain this situation by saying that the non-technical features are always “assumed to be present” in the prior art, but you need to work out the various steps of the problem-solution approach to see how this turns out in practice (T1670/07 is a good decision to see various implications of “Comvik”, and I think helps to understand why T641/00 was decided the way it was).

      1. 10.1.1

        Thanks.

        It looks like the EPO is still a bit confused.

        Would that we all just read Hotel Security and stop trying to reinvent the wheel.

        1. 10.1.1.1

          I think you are the one “reinventing” here Ned – as Prof. Crouch has reminded you, you are attempting to cite non-controlling law as if it were controlling.

          Please do not misrepresent the law so.

        1. 10.2.1.1

          >Alice is like the EPO/Hotel Security approach

          Alice is like the flash of genius (and as such should be wiped out by legislation making it clear to the SCOTUS that they should get out of the patent business and law making business in patent law.)

    2. 10.3

      As Prof. Crouch has reminded you Ned – the case law you present is not controlling case law.

      You only weaken your credibility by such tactics.

  6. 9

    “In the case of the EPO approach, the technical and non-technical features of the claim are first separated out. The technical features which are not present in the prior art are then identified. It is then determined whether or not those technical features are non-obvious. In doing so, it is assumed that the non-technical features are already present in the prior art. If the technical features which are not present in the prior art are obvious, the claim is rejected for lack of inventive step.”

    I find this a very nice way to explain the EPO approach for those who are not familiar with European patent prosecution, however I think that the whole post is misleading when it refers to a comparison of “eligibility” tests. The EPO “eligibility” test is actually nothing more than Step 1 in Figure 2 (which, in EPC terms, corresponds to determine whether the subject – matter in the claim can be considered an “invention” to begin with). The rest of the flow chart shows an inventive step analysis, which at the EPO must be done according to the problem/solution approach. It’s this integration that makes – at least in my opinion – the assessment of computer-implemented invention relatively predictable (there is of course a grey area, but in most cases applicants can determine whether they are in the clear or whether they are taking their chances when filing a given invention).

    As long as the US do not follow this approach for assessing non-obviousness, and as long as considerations concerning eligible subject – matter are kept separate from those applied for assessing obviousness, it’s a bit disingenuous to draw parallels between the two jurisdictions, because even when the two offices get to the same result they do so using two completely different legal frameworks. At most, the US approach could be compared to the UK’s “contribution” approach, which has now long been abandoned at the EPO, but still shares with the EPO approach the focus on “technical character”.

    1. 9.1

      it’s a bit disingenuous to draw parallels between the two jurisdictions, because even when the two offices get to the same result they do so using two completely different legal frameworks

      Exactly right – and as we approach the 100 post mark, the most glaring miss of the article has yet to be noted.

      Let’s see if anyone can identify the biggest difference between the two sets of sovereign laws (hint: it is related to the explicit rather than implicit re-writing of law by the Court in Alice).

      1. 9.1.1

        Exactly right – and as we approach the 100 post mark, the most glaring miss of the article has yet to be noted.

        Make that the 200 post mark, and the most glaring miss still has not been discussed.

        Here’s another hint: link to patentlyo.com

        1. 9.1.1.1

          as we pass the 300 plus mark, the most glaring miss of jurisprudence remains un-discussed.

          This is not by accident – such is yet another inconvenient fact.

  7. 8

    Note that Williams characterizes the EPO Approach as involving the step of selecting the “closest” prior art. I take issue with this.

    The new Edition of the EPO’s MPEP, which takes effect on November 1, clarifies that it is not required to find the “closest” art but only a prior art starting point that is “realistic”.

    And therein lies the heart of the trans-Atlantic difference of understanding.

    For the EPO lies in “First to File” country, where claims are judged on their filing date, a date later than the date on which they and their supporting specification are written.

    Because that writing comes earlier in time than the date on which the validity of the claims is judged, it is fair to hold Inventors to the words of their own choosing, when they draft their patent applications.

    They are entitled to full faith and credit for what they say is their technical field and what technical problem they tackled and solved. But they can’t then complain if that, their unliateral statement, is used, to fix a realistic prior art starting point for judging the patentability of what they suppose to be their Invention.

    And so, dear Readers, there is no longer any need to agonise on such difficult notions as whether an idea is “Abstract”.

    You’ll see. With time. (As the USA gradually adjusts its mindset to First to File notions of claim validity.)

    1. 8.1

      The selection of a closest prior art is nothing more than the application of a couple of heuristics (based on common sense) in order to select a starting point among the available documents/disclosures; it is a necessary step of the approach, at least in practice, when an inventive step is acknowledged, because otherwise all possible starting points should be taken into account to verify that none of them leads, in fact, to the invention. On the contrary, when an objection of lack of inventive step is sustained, it is sufficient for the starting point to be “close enough” that a reasoning according to the “problem-solution approach” can be convincingly built (this is the case referenced by the Guidelines); still, choosing the starting point in conformity with the closest prior art criteria is usually helpful for crafting objections which are “robust” in case of amendments.

      This has, in any case, very little to do with the presence of non-technical features in the claim and, in my opinion, even less with the first to file system under which the EPC operates. In particular, inventors are as a rule not “entitled to full faith and credit for what they say is their technical field and what technical problem they tackled and solved”. Although the applicant gets the benefit of the doubt when it comes to assessing the technical effect of the various features of the claims, the technical problem that is the basis for the inventive step assessment must ultimately be objectively determined. This means that it must credible against the backdrop of the prior art that the office has found or that was submitted to the office. If, in view of what is already known, the technical problem stated by the applicant is not credible (e.g. because the differences with the closest prior art are not those that the applicant expected them to be or because there is sufficient evidence in the prior art that the claimed features do not, in fact, solve the problem), then the problem gets reformulated.

      1. 8.1.1

        I welcome this chance to clarify what I wrote above.

        What do I mean by “full faith and credit”? Not what LBZ supposes.

        Supose I have invented an improved stent strut matrix, that better complements the quasi-elastic deformation of a NITINOL stent. I could claim “A stent…..” but I don’t. Deliberately, I limit my claim to “A self-expanding stent…..” deliberately to exclude stainless steel stents (which undergo plastic deformation, a totally different deformation mechanism). For the EPO to choose as prior art starting point a balloon-expandible plastically deforming stent that fortuitously just happens to have a stent matrix within my definition is not “realistic” and not fair to the inventor. This is what I mean by giving credit to the Inventor, for what she chooses to claim.

        I agree that it is part of the job of the Examiner to check that what is claimed does indeed solve the technical problem which the Inventor is announcing as solved by the invention. No “free pass” there, I agree.

        My point about “First to File” is that it does away with the thinking that everything that happens after the conception of the invention is disqualified by hindsight knowledge from use in obviousness arguments. With First to file, the date of conception is irrelevant. We are judging obviousness as of the day before the filing date, relative to anterior events, one of which is the careful writing of the patent application to put the invention in the best light relative to the known prior art. To be fair to the Inventor, we should give full faith and credit to those advocacy efforts to reveal the invention in its best light. That’s what the EPO Approach does. In the context of First to File, it is (sorry) nonsense to dismiss the EPO Approach with the argument that inadmissible hindsight is being used to fix the prior art “starting point”.

        That’s all I meant.

  8. 7

    It is sad to see the PTO mess up 101, like all the time.

    If you’ve found out that the claim is “directed to” an abstract idea in the listed step 2, then the analysis is over. The whole of steps 2 and 3 is being performed to tell whether or not the claim is “directed to” an abstract idea.

    For that reason the listed step 2 should be “figure out whether the claim involves and abstract idea/natural phenom/law of nature.”

    Then, step 3 ultimately figures out whether or not the claim is “directed to” the abstract idea or not.

    This is not rocket scientry people.

    1. 7.1

      “If you’ve found out that the claim is “directed to” an abstract idea in the listed step 2, then the analysis is over”.

      Straight from Alice, “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. Id., at ___, 132 S.Ct., at 1296-1297. If so, we then ask, “[w]hat else is there in the claims before us?” Id., at ___, 132 S.Ct., at 1297. “

      1. 7.1.1

        Yes, I’m familiar with the recent wording of the Alice decision and the semantic nightmare it has spawned in places like IPwatchdog.

        In the Alice decision they were not creating a formal framework, they were simply noting how the *writing* itself in the decisions themselves had flowed in the past. You can do the “step 3″ above at any time. You can do “step 2″ at any time. Step 3 is not a safety zone from failing step 2.

        In Alice they were just saying look, first we look to see if the claim is even arguably “directed to” some sort of excepted subject matter. Just to see if there is even a hint of a problem. If there isn’t then we move on. If there is then we take note of what else is in there. Finally though the ultimate determination is going to be whether or not the claim is in fact “directed to”/”preempts”/”substantially preempts” the excluded subject matter at issue.

        If you can tell just from the first inquiry (because you can already tell there isn’t anything else in the claim) then you’re all set in “step 2”.

        And that is why Alice has created a sht storm of semantics and will ultimately create a sht storm of substance. All because i iots like you like to soundbite instead of learning to read in context.

        1. 7.1.1.1

          Well put, 6.

          There’s quite a few patent attorneys out there who need really really simple rules, written for kindergartners, or else their heads explode.

          It’ s not clear whether they are ignorant or whether they assume that a simple rule will be easier to “draft around.” Probably both.

          1. 7.1.1.1.1

            This is actually a curious phenomena. Constitutional lawyers who represents clients who might face the death sentence or life in prison always deal with nebulous tests like the Primary Purpose test for determining whats considered “testimonial” for 6th Amendment confrontation or the 4th Amendment Reasonableness test: (1) determine whether the individual, by his conduct, has exhibited and actual / subjective expectation of privacy and (2) determine whether the individual’s subjective expectation of privacy is one that society is prepared to recognize as reasonable.

            Yet, for some reason, patent lawyers expect a bright line test and expect the Supreme Court to hold their hands at each step.

            1. 7.1.1.1.1.1

              I don’t think patent lawyers demand bright line tests. I think what patent lawyers demand is a test that can be used for 100’s of thousands of patent applications a year.

          2. 7.1.1.1.2

            “There’s quite a few patent attorneys out there who need really really simple rules, written for kindergartners, or else their heads explode.”

            It is a sad state of affairs, it really is. It isn’t just quite a few patent attorneys, apparently now the federal agency that’s mostly going to be applying this had its head explode as well. Looks like the USSC’s work is never done and they will have to police their own language to the nth degree to not give people anything to soundbyte to make up new standards.

        2. 7.1.1.2

          “All because i iots like you like to soundbite instead of learning to read in context.”

          Would this be part of the context: “The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas”. Mayo, 132 S. Ct. at 1293.

          Since all inventions at some level embody some kind of judicial exception, i don’t think you’ll ever get to move on as in “Just to see if there is even a hint of a problem. If there isn’t then we move on”.

          id_iots like me define context as totality of all the Supreme Court precedents, not just the part that you like.

          1. 7.1.1.2.1

            Well put Richard. 6, leave the interpretation of Alice to attorneys and follow your guidelines and the MPEP. That is your job.

          2. 7.1.1.2.2

            ^^^ “not just the part that you like

            Such selectivity runs rampant with the soap-boxing that goes on here.

            Until valid counterpoints are acknowledged and integrated by the ideologues, there will be NO true conversations here.

            1. 7.1.1.2.2.1

              Until valid counterpoints are acknowledged and integrated by the ideologues, there will be NO true conversations here.

              LOL. “True conversations”?

              Maybe you should try the sockpuppet approach again, “anon”. That worked really well for you.

              1. 7.1.1.2.2.1.1

                Malcolm,

                You posted six times inside of twenty minutes on this single thread and NOT ONCE had anything intelligent to add to the conversation.

                Not once.

                As to “sockpuppets,” you are the reigning king with your multitude of sockpuppets at PatentDocs, all the while you whined incessantly as to how that was “the worst thing ever.”

                Your duplicity continues.

                Eight years and running.

                Try adding to the conversation instead of your meta-bickering.

          3. 7.1.1.2.3

            “Would this be part of the context: “The Court has recognized, however, that too broad an interpretation of this exclusionary principle could eviscerate patent law. For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas”. Mayo, 132 S. Ct. at 1293.”

            Sure is.

            “Since all inventions at some level embody some kind of judicial exception, i don’t think you’ll ever get to move on as in “Just to see if there is even a hint of a problem. If there isn’t then we move on”.”

            Hmmmm, I do it every day. It really isn’t that hard in the actual useful arts.

            “id_iots like me define context as totality of all the Supreme Court precedents, not just the part that you like.”

            I wish you did. Instead you toss out the whole rule and the entire point of the rule in favor of creating some sort of nebulous safety zone that doesn’t exist. Good luck with that. The supremes appear willing to go the extra 1000 miles to help you guys along.

  9. 6

    link to ipwatchdog.com

    This article probably explains the problems with the US test the best.

    Note that there is not really a way to draw a line between circuits and software, so the technology test at the EPO is essentially a test that says given the current architecture of the computer is this drawn to improve the operation of that architecture, which is insanity.

    1. 6.1

      I do agree, though, that the contours of the new Alice law are not completely understood, but at this point only the real anti-patent crowd deny that Alice is legislation that obliterates the 1952 Patent Act.

      Note—that the judge says exactly what I have been saying on here that Alice is the flash of genius redux and as such should be legislated away (by the Congress).

      1. 6.1.1

        Another interesting note by Stoll on that blog above is that the areas where the SCOTUS has just re-written 101 to limit patent eligibility are the same ones where we are number one in the world. So, where is the empirical evidence there is a problem? There isn’t any, because there isn’t a problem.

    2. 6.2

      Actually there is a simple way.

      “Is the item in question interpreted by the instruction cycle?”

      A simple yes/no. If yes, then it is software.

  10. 5

    Is the analytical structure described in Figure 2 patentable over that shown in Figure 1? There’s the same number of triangles but more squares and arrows in Figure 2.

    If only the PTO would grant more patents covering analytical methods for evaluating the eligibility and validity of patent claims. Then we would quickly innovate ourselves out of the present situation. Right?

    1. 5.1

      Probably patent ineligible under Alice Step One because it is a mental process, which is a judicial exception defined by the Supreme Court.

      1. 5.1.1

        You have to understand that MM believes that computers think too. MM believes there should be a mental steps doctrine for computers ’cause, ’cause. He intentionally over and over again mixes brains thinking vs. computers performing information processing methods.

        Part of the rhetoric of the anti-patent movement.

        1. 5.1.1.1

          you have to understand that MM believes that computers think too

          You have to understand that NPWA has been repeating this nonsense for years because, well, he doesn’t have much else to say. I suppose it’s better than listening to him pop off about how people who disagree with him about software claims are like “rapers and killers.” No doubt he’ll be returning to that tune again soon enough.

          1. 5.1.1.1.1

            Again, you do not respond to the substance. Do you intentionally mix up human brain thinking with machines performing information processing ?

            Anon has said yes about 1,000 times. I have read you do this about 1,000 times at least. It is part of your intellectually dishonest rhetoric.

            Now respond to what I said.

            1. 5.1.1.1.1.1

              Do you intentionally mix up human brain thinking with machines performing information processing ?

              Me? Nope. The folks who write the computer-implemented information processing patent claims are the folks who routinely do that, as has been demonstrated to you on hundreds of occasions and which is now being acknowledged regularly by the courts.

        2. 5.1.1.2

          He intentionally over and over again mixes brains thinking vs. computers performing information processing methods.

          Because “determining” is a sooper dooper technical term in the “computer arts.”

          Sure it is.

          1. 5.1.1.2.1

            Bizarre non-sequester MM. Anon has pointed hundreds of time when you intentionally try to mix-up computer performing methods of information processing with human thought. You did not address the substance of my comment, again.

            You merely harass people on this board who are not anti-patent.

            1. 5.1.1.2.1.1

              you intentionally try to mix-up computer performing methods of information processing with human thought.

              Again: the “mix up” is occurring in the claims to “new machines” which recite no novel structures but rather only information-processing steps using the same language that people use to describe information processing by other well-known “computers”, e.g., human brains.

            2. 5.1.1.2.1.2

              NWPA,

              It appears that no commenting debunking obvious errors is being allowed here – some people are just WAY too sensitive (but alas – sensitive to the wrong things).

              The truth hurts – and that truth is being gagged.

  11. 3

    Personally, I would get rid of “stage 1” for the US, since no one knows what a “machine” is and I doubt now a “machine” encompasses a computer. Furthermore, this doesn’t seem to be part of the Alice rules. One starts with determining whether there’s an “abstract idea” and heads downhill from there.

    For instance, compare:

    1) An integrated circuit comprising a ton of specific circuitry defined to carry out an abstract idea.

    2) A computer with software, the software defined to cause the computer to carry out an abstract idea.

    To me, even though the first is technically a “machine” (and I personally think a computer is a “machine” too), both of these claims have the same function, to implement the “abstract idea”. Why does the form of the claim matter under Alice?

    1. 3.1

      Why does the form of the claim matter under Alice?

      PatentBob, you are mistaken.

      Under Alice, the form of the claim does not matter. Revisit the case and see that the statutory category being met was stipulated by both sides and was not at issue before the Court.

      It is critical to understand that the Court not only has taken a stand against any “nominalist” view of the statutory categories, they have completely wiped away even squarely meeting a statutory category as somehow being able to evade their implicit (now explicit with the also-undefined word “technological”) law-writing.

      1. 3.1.1

        they have completely wiped away even squarely meeting a statutory category as somehow being able to evade their implicit (now explicit with the also-undefined word “technological”) law-writing.

        In fact it’s always been the case, for a long, long time, that claims “squarely meeting” the statutory categories have been ineligible.

        Mental processes leap immediately to mind as a quintessential example. Similar processes carried out with ball point pens and pieces of paper are also ineligible.

        And wouldn’t you know? Those processes are all forms of information processing. Go figure.

        1. 3.1.1.1

          And here I was thinking of something more on point – you know, machines and anthropomorphication….

          1. 3.1.1.1.1

            You can think about whatever you want. You can even think about it in bold text, if it’s more fun for you that way.

            [shrugs]

      2. 3.1.2

        Anon: “. . . the statutory category being met was stipulated by both sides.

        That’s a bit of a stretch.

        Both parties stipulated that the method claims required the use of a computer. They did not stipulate that the claims were directed to the use of a computer, so that stipulation by itself is not enough to make the claims read on a statutory category.

        Quoting the honorable Justice Thomas: “We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.

        1. 3.1.2.1

          My comment is not a stretch at all Dubo.

          You do realize that “directed to” is where the stretch comes in, right?

          Please let’s not have you accuse me of the very thing that you are doing.

          1. 3.1.2.1.1

            Anon,

            Repeating the part you’re ignoring:
            “. . . generic computer implementation fails to transform . . .”

            Nine-zip, mon frere.

          2. 3.1.2.1.2

            anon squarely meeting a statutory category

            A claim directed to an ineligible abstraction with only conventional “computerization” steps layered onto it does not “squarely meet a statutory category.”

            It does squarely represent an example of trying to draft your way around an obvious eligibility problem, which is a practice that you should have learned by now is not very effective. I mean, you can fool some of the people some of the time but you aren’t fooling most of the intelligent people in the room, including those Supreme Court Justices you are constantly attacking.

            1. 3.1.2.1.2.1

              My “attacks” are directed to a clear breach of the separation of powers doctrine.

              What are your attacks directed to?

              1. 3.1.2.1.2.1.1

                My “attacks” are directed to a clear breach of the separation of powers doctrine.

                That’s nice.

                1. Your reply does not answer my question.

                  Of course, I am sure that you are well aware of the non-answer.

      3. 3.1.3

        I remember visiting an “Apple” store in China. On the surface, it really really looked like an Apple store. Except that once I went inside, it was plainly clear to me it was just a place that sells electronics that looks like iPhone but its really just all counterfeits. The Chinese called such place as “advertising a sheep but selling a dog”.

        Same idea here, while a claim seemingly recites one of the four statutory categories, the substance of it is really about a law of nature, a product of nature, or just some intangible ideas. It really isn’t hard to draft a claim like that.

        The hard part is to figure out an uniform standard to distinguish such claims from those that are really about one of the four statutory categories without degenerating into some form of “i know it when i see it”.

          1. 3.1.3.1.1

            In this Country, only the Nine Supreme Court justices get to engage in their very own “gisting”. We don’t have the Constitutional authority to do so.

        1. 3.1.3.2

          It isn’t hard. Rich set-up the 1952 patent act to do just that. All of this is because some patents made it by 103 when they shouldn’t have. The SCOTUS has reacted by wiping out the 1952 patent act.

          1. 3.1.3.2.1

            To be more precise NWPA, it was the pre-Judge days of Judge Rich in his role of helping Congress write the Act of 1952 that provides the set-up that you talk about here.

            That should be distinguished from his later role as interpreter of the Act.

            But it should be clear that there was (nor could be) any judge (or Justice) with a better understanding of the 1952 Act than Judge Rich, could there be? One would have to seriously question anyone who would show disdain for the level of wisdom that such a judge could bring to the law.

  12. 2

    Michelle: in practice, persuading the USPTO to allow claims of this type is probably going to involve arguing that the elements which are significantly more than the abstract idea are somehow tied in with the inventive concept. Otherwise they would not be “meaningful”. This then starts looking very much like arguing for non-obvious technical subject matter; in other words, an inventive step in a technical field.

    In the US, what is required is not merely an inventive step “in a technical field” but an inventive, eligible step/combination that is, in fact, technical and not abstract. This has important (and necessary) ramifications for information processing claims which are the reason

    And therein lies the rub for applicants who have “innovated” only ineligible subject matter, e.g., a “new” correlation. They can’t protect that “innovation” with a patent, regardless of its importance or value and regardless of what “field” that “innovation” might be limited to by a claim. It’s ineligible for patent protection.

    This means that they can’t protect that “innovation” by an old data gathering step prior to the step of thinking about the correlation. And they surely can’t protect that “innovation” by claiming a step of telling someone about the correlation. From Alice, we also know that they can’t claim “a computer, wherein the computer stores the correlation” or “wherein the computer is configured to apply the correlation to input data”.

    So what to do? Invent something eligible, like a bona fide new machine or composition, and describe it structurally — not functionally — to distinguish it from the structures of the prior art machines. Or invent a process with a new step or series of steps that results in a physical transformation of matter that’s new in the art.

    1. 2.1

      >In the US, what is required is not merely an inventive step “in a technical >field” but an inventive, eligible step/combination that is, in fact, technical >and not abstract.

      Except that is not in the statute. You anti-patent people are going wild. Why not just say, we anti-patent people have hood winked the SCOTUS and those bozos are willing to put down anything we say at this point.

      1. 2.1.1

        Under the Constitution, or at least how Article III was interpreted by the Supreme Court, The Supreme Court decides what is in the statute and what is not in the statute. Its their world, we (including you) just live in it.

        1. 2.1.1.1

          Absolutely wrong Richard.

          Writing a map is simply not the same thing as reading a map.

          If the founders wanted the authority to write patent law to be with the judicial branch they would have said so.

          1. 2.1.1.1.1

            How do you suggest we overturn Marbury v. Madison? Unless that is overturn, while you may say the Court is writing patent law, the Supreme Court would simply say they are just interpreting “new and useful” in 101 to avoid striking it down as being unconstitutional and they always get the final say.

            We all have our subjective sense of right and wrong. Now, whether we could persuade others to accept that subjective sense of right and wrong and transform it to be the objective standard of right and wrong for scoeity as a whole, thats a whole different story.

            1. 2.1.1.1.1.1

              My position is in accord with Marbury.

              I suggest you reread that case. That case does NOT stand for the notion that the Supreme Court has ultimate power to rewrite the laws anyhow it sees fit to do so.

              That case stands for the notion that a separation of powers very much exists in our government. While that case dealt with the power struggle of a very minor Justice of the Peace commission and a power struggle between the Executive and Judicial branches, you should note that the current power struggle is FAR more important (that struggle being between the Legislative and Judicial branches when it comes to writing patent law).

              This struggle calls for the opposite of the Chamberlain like “peace for our times” that has been called for. The ends (no matter how those ends align with any philosophy) do not justify the means.

  13. 1

    It this directed to an abstract idea?

    A tool for lifting heavy objects, the tool comprising:
    a pivot; and
    a lever placed off center upon the pivot, thereby providing a short side for being placed under an associated heavy object, and a long side for being urged downward in order to pivot the short side upward thereby lifting the associated heavy object.

    1. 1.1

      It looks like an old lever.

      It’s not an invention. It’s not new. It’s both ineligible and unpatentable.

      Here’s a better question: is the following claim directed to an abstract idea?

      A tool for lifting heavy objects, the tool comprising:

      a pivot; and

      a lever placed off center upon the pivot, thereby providing a short side for being placed under an associated heavy object, and a long side for being urged downward in order to pivot the short side upward thereby lifting the associated heavy object,

      wherein said heavy object is a copyrighted film, wherein said film depicts giant mice doing battle with purple lizards.

      Directed to an abstract idea? This claim, by the way, has far more in common with a lot of computer-implemented patent claims than it does with claims in the “lever arts”.

        1. 1.1.1.1

          Les – he gives you an answer (and yes, it cannot be correct under the law, conflating as it does different sections of the law and pretending that there is no difference between patent eligible and patentable.)

          1. 1.1.1.1.1

            pretending that there is no difference between patent eligible and patentable

            I’m not “pretending” that there is “no difference” between eligibility and patentability.

            Claims can be both ineligible under 101 and unpatentable under different sections of the patent act. It happens all the time. There’s nothing at all unusual or unexpected about that.

            it cannot be correct under the law

            In fact it is correct.

            conflating as it does different sections of the law

            There’s no “conflation.”

            It’s interesting watching you two struggle so mightily in defense of a claim to an ancient lever. What’s the point of that?

            1. 1.1.1.1.1.1

              There is nothing like a flat denial of what is plainly evident.

              Of course, the plain black and white here is easy to see through.

            2. 1.1.1.1.1.2

              MM even your leader Lemley admits that Alice is a new law that makes no sense and is there to wipe all the “bad” software patents.

              That is the new battle front.

            1. 1.1.1.1.2.1

              Under Step One, the claim recites a “useful clue” of patentability; i.e., a tool or machine. So we proceed to Step Two.

              Under Step Two, the claim recites a principle of lifting a heavy object using a pivot and a lever. Flook required us to treat this principle as though it was a familiar part of the prior art even when it is in fact novel under 102 or non-obvious under 103. The question is: are there something more?

              There are really two parts to “are there something more”: (1) is the something more purely conventional or necessarily required by the principle? (2) is the something more purely obvious? One must be careful in distinguishing “purely obvious” of Mayo from “obvious” under 103 because Diehr’s statement “It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection” must hold true.

              Nevertheless, i think it would be reasonable to say that placing one side of the lever underneath the heavy object while urging another side of the lever is purely conventional because the physical principle of how a lever operates on a pivot necessarily requires such manner of operation.

              Now the question is, whether providing the short side underneath the heavy object while urging the long side downward is purely obvious? I think it would be purely obvious. I remember watching a national geographic show on how two binary stars revolve around one another. They gave the example of why a heavier star moves slower than its lighter companion star. They compare that to a gymnast and a very heavy weight on opposite side of a lever with a pivot in between. According to the example, if they are of equal weight, then placing them at equal distance from the pivot would balance the two sides out. However, once you start adding weight, you have to move the gymnast further away from the pivot while moving the heavier weight closer to the pivot to balance it out.

              So “providing the short side underneath the heavy object while urging the long side downward” is purely obvious as a matter of law of physics or principle set forth by engineering mechanics (statics, to be exact).

              If the claim recites a mathematic equation that correlates the weight of the heavy object relative to the placement of the heavy object from the pivot as well as the amount of force required to urge the longer side down, in addition to a particular manner (degree, orientation, angle etc) in which the force is applied to minimize human effort, then it may be patent eligible. Even if such method is obvious under 103, it is not purely obvious to be barred at the threshold by 101. The Supreme Court meant it when it declared “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”.

            2. 1.1.1.1.2.2

              Again, can someone explain to me the difference between “it’s old” in the context of 101 and “New”in the context of anticipation?

              If something is old, we dispatch with it under 102, not under 101.

              1. 1.1.1.1.2.2.1

                I too would preferred the European/Hotel Security approach.

                But 101 is said to be a first step — Judge Rich is responsible for this. See, In re Bergey. But now we are stuck with it.

                1. No Ned – once again you misrepresent. Congress is responsible for this change. Please do not attack Judge Rich.

          2. 1.1.1.1.3

            Under your standard / definition of “conflating”, are laws allowed to overlap with one another? Or no overlap whatsoever is allowed?

            1. 1.1.1.1.3.1

              The ability to write common law exists in lots of areas.

              Patent law is explicitly NOT one of those areas.

              So unless allowed by Congress (and I have provided examples of how such allowances have been made explicit), the judicial branch has no authority to write patent law – not even to “preserve” the law against constitutional infirmity. One does not allow one type of constitutional infirmity (breach of separation of powers) to “save” another supposed breach.

              I say “supposed” because you also have a critical subjective conjecture element in the reasoning given by the Court: some non-present merely possible future “non-promotion” – which violates the case or controversy requirement for Article III authority.

              1. 1.1.1.1.3.1.1

                the judicial branch has no authority to write patent law

                But they do have the authority to interpret it which is something they are asked to do on a regular basis.

                And of course “anon” has no problem at all with courts “writing patent law” if that patent law makes it easier for “anon” to obtain or enforce his precious patent rights. And that’s the way it will always be with “anon.”

    2. 1.2

      I’m not sure I understand the question. It seems pretty obvious that you’ve described a machine? A long time ago, it would have passed 101, 102 and maybe 103. (Picturing cavemen discussing statutes is kind of funny btw…).

      I don’t mean to speak for MM, but his comment indicates he believes the machine fails 102 because it is just a lever and also fails 102 because it is not new (any new and useful…) Maybe I’m missing something but it seems like it would be hard to argue that your comment is directed to an abstract idea.

      1. 1.2.1

        It would be hard for most, but not for all.

        MM believes it is abstract. That is why he refuses to answer the question I asked. He knows that saying so will highlight the absurdity of his position and that of Judge Thomas.

        1. 1.2.1.1

          I see, I see. Maybe I should clarify, then.

          I don’t think the functional language you include would distinguish your level over a lever without such language. But I think it adds clarity to the relationship between the different components so I don’t think it renders the claim ineligible per se.

          But I would be bothered if you tried to argue that the functional language distinguishes the lever from another lever with identical structure.

          We can all agree with that, yes?

          1. 1.2.1.1.1

            Well, you and I can agree with that. I did not suggest it was new. I only asked if it was abstract.

            1. 1.2.1.1.1.1

              … and still your insightful question remains unanswered Les:

              “Is this directed to an abstract idea?”

              Easy answer.

              But difficult, painful repercussions (especially for MM) if answered honestly.

              1. 1.2.1.1.1.1.1

                Steve,

                It should be readily apparent that there is no interest in owning those repercussions. Having a monologue instead of a dialogue means that you don’t have to care about what is put on the table for an actual discussion. You can make some off-hand deflecting quip, ignore the counter point and continue on speaking as if no one said anything at all.

                1. there is no interest in owning those repercussions

                  But apparently there is great interest in trying to pretend that other people own “these repercussions,” whatever they may be or however you arrive at them.

                  Keep digging. I like it when you talk about Edison and the Wright Brothers, too, as if that proves how serious you are.

                2. Malcolm,
                  I do not understand the “digging” reference, nor Edison or the Wright brothers (since those are not my memes).

                  Can you try to post something on point?

              2. 1.2.1.1.1.1.2

                Easy answer.

                But difficult, painful repercussions (especially for MM) if answered honestly.

                ROTFLMAO.

                Let me know when this claim gets to the Supreme Court.

            2. 1.2.1.1.1.2

              I did not suggest it was new. I only asked if it was abstract.

              And why would you (or anyone else) care whether I think that a claim describing an admittedly unpatentable lever (!) is “abstract”? Serious question. What on earth are you hoping to achieve here?

              As I indicated in my original response to your question, it doesn’t look particularly abstract to me. It just looks old. Really, really, really old. Older than monkeys, even.

              Now answer my question: does your claim look more or less directed to abstract subject matter than the claim I presented? i.e.,

              A tool for lifting heavy objects, the tool comprising:

              a pivot; and

              a lever placed off center upon the pivot, thereby providing a short side for being placed under an associated heavy object, and a long side for being urged downward in order to pivot the short side upward thereby lifting the associated heavy object,

              wherein said heavy object is a copyrighted film, wherein said film depicts giant mice doing battle with purple lizards.

              Unlike your claim, my claim is directed to something new. And my claim has a lot more in common with the invalid claims that fall under Mayo and Alice. Do you see that, or are you still sincerely worried that your imaginary claim to an ancient lever is going to be unfairly denied according to some imaginary legal “theory” that doesn’t exist?

              1. 1.2.1.1.1.2.1

                I believe (and Les, please correct me if I am mistaken) that it is rather important to delve into the reasoning regarding the Supreme Court jump from merely old to being the undefined “abstract.”

                Caring about how the means used gets you to the legal ends is what everyone SHOULD care about. Such is far, far far more important than the particular facts of a case, as it is that reasoning that is carried forward to the application of law to the facts of the next case.

                As an attorney that you profess to be, I would fully expect you to recognize this, and can only look at your intent to deflect the point being put on the table for discussion by Les as an indicator that you do not want to discuss Les’s point. You quickly move to a demand of an answer to your question – too quickly in fact. Let’s understand what Les is trying to say here first. Let’s give him a little respect.

                1. The back and forth has gotten a little out of control, don’t you think? Seriously.

                  Probably not my place, but c’mon people.

                2. go,

                  Getting to the right question (as captured in my response at 1.2.1.1.1.2.1) is CRITICAL.

                  And you are correct – it takes WAY too much effort in trying to get the DIALOGUE to the critical point.

                  Unfortunately, this is not by accident.

    3. 1.3

      My dictionaries define abstract as being “apart from concrete realities, specific objects or actual instances”, and “an idea not having physical or concrete existence”.

      This tool, as defined, seems to have a specific, physical, concrete existence and on that basis would not meet the dictionary definition of abstract.

      I could *create* an Abstract from those words, e.g. “using mechanical advantage”, and that Abstract would be abstract. But it doesn’t follow that the original words were abstract.

      Of course it is not a new tool, but the question of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter.

    4. 1.4

      The words “tool”, “pivot” and “lever” I know. Is there anybody (even a judge) who does not know them. They need no explanation, no definition. The concepts they bring to mind are older than humanity. I see nothing in the Les claim beyond that.

      Archimedes, with what he said about moving a particularly large object with a particularly long lever:

      link to en.wikiquote.org

      was certainly referring to an abstract idea.

      But perhaps if there had been a Greek patent system back in the day, like the American one up till yesterday, and if Archimedes had been more of an entrepreneur, and more concerned to promote the progress of the useful art of moving Planet Earth, he would have tried to patent his abstract thought. Who knows?

      1. 1.4.1

        Sad that you do not appear to grasp the fundamental aspect of ladders of abstraction.

        There is nothing – nothing at all – that actually exists as you would put it: need no explanation, no definition.

        ALL words – as words, only exist with some explanation, some definition.

Comments are closed.