Software as an Abstract Idea

Amdocs v. Openet Telecom (E.D.Va. 2014)

In yet another case, a district court has invalidated a set of software patents as unduly abstract under Alice Corp., Mayo, and 35 U.S.C. 101.  In this case, E.D. Va. Judge Brinkema issued a judgment-on-the-pleadings that all of the asserted claims of the four Amdocs patents were invalid as patent-ineligible. The Decision.

In Alice Corp., the Supreme Court outlined a two step process for determining eligibility: (1) determine whether the claim encompasses excluded subject matter and then (2) determine whether the claim includes “something more” sufficient to “transform the nature of the claim into a patent-eligible application.”  As it turns out, neither of these tests are straightforward.

The patents-in-suit here relate to computer software designed for reporting network usage. Claim 16 of Amdocs Patent No. 6,836,797 is on point:

16. A computer program product stored in a computer readable medium for reporting on a collection of network usage information from a plurality of network devices, comprising:

computer code for collecting network communications usage information in real-time from a plurality of network devices at a plurality of layers;

computer code for filtering and aggregating the network communications usage information;

computer code for completing a plurality of data records from the filtered and aggregated network communications usage information, the plurality of data records corresponding to network usage by a plurality of users;

computer code for storing the plurality of data records in a database;

computer code for submitting queries to the database utilizing predetermined reports for retrieving information on the collection of the network usage information from the network devices; and

computer code for outputting a report based on the queries;

wherein resource consumption queries are submitted to the database utilizing the reports for retrieving information on resource consumption in a network; and

wherein a resource consumption report is outputted based on the resource consumption queries.

In applying Alice, Judge Brinkema first examined the claim to determine whether it is directed to an abstract idea.  Brinkema’s particular approach here follows the “gist approach” used by other post-Alice district court decisions.  Notably, to find the abstract idea, Brinkema “look[ed] past the mere claim language” to determine that the claim is “directed to the abstract idea of using a database to compile and report on network usage.”  It is probably important to pause here to consider what considerations make us think that a network usage database creation and report tool is abstract.  Unfortunately, Judge Brinkema does not.

At step two, Judge Brinkema looked for “something more” but found instead that “the claim does not add much” beyond the stated abstract idea.

In claim 16, a generic computer collects, filters, aggregates, and completes network communications information.  The generic computer then stores the information in a database, and queries the database to retrieve reports. Collecting, filtering, aggregating, and completing network information amounts to “electronic recordkeeping,” which is “one of the most basic functions of a computer.” (quoting Alice).  Similarly, storing and querying information in a database, and building reports based on that information, is one of the most basic functions of a database system. Accordingly, claim 16 is directed to a computer functioning in a conventional way, and a database functioning in a conventional way. The claim does not add any specific implementation beyond the abstract idea that information is collected and stored, and reports are generated.

The result then is that the claim is ineligible and thus invalid. The opinion similarly walks through other challenged claims and rejects them.  Throughout the opinion, the Judge’s largest concern appears to be that the claims lack “specific hardware” as well as “any detail” regarding how the claimed functions actually operate.

The Judge was also clear that overall novelty is irrelevant to patent eligibility. “That argument misses the point. The concern of § 101 is not novelty, but preemption.”

A person may have invented an entirely new and useful advance, but if the patent claims sweep too broadly, or only claim the idea that was achieved rather than implementation of the idea, § 101 directs that the patent is invalid. Amdocs’s asserted claims recite such conventional operation, in such a general way, that even if the inventor had developed an actual working system, the patent claims could foreclose fields of research beyond the actual invention. Accordingly, all asserted claims are invalid as patent-ineligible.

= = = = =

Notes:

Software?: Although the court made a few pushes for “hardware” in its analysis, it did not make any express statements that software is problematic from an eligibility standpoint. An open question following Alice Corp., is whether any claimed invention would be patent eligible if beginning with the preamble: “A computer program product stored in a computer readable medium…”

455 thoughts on “Software as an Abstract Idea

  1. Dennis, in case you did not see it already Judge Pfaelzer (the brighter bulb in the CD judiciary) tossed out a 101 challenge with a thorough debunking of the “point of novelty” analysis, trashed anti-SW patent fanatics

  2. Anon:

    Software is a manufacture.

    Software is copyrightable.

    Anon, what does the law require to register one’s copyright in software?

    1. Ned,

      Need I remind you that software is protected by different kinds of IP law for different aspects of what software contains?

      Once you have that thought firmly in mind, can you restate what you are trying to say in your post above?

    1. Why are there no repercussions for patent examiners who allow computer implemented c r a p since Alice? To the extent executives at the PTO do not crack down, it seems to me they too should be held responsible.

      And why is it the people behind State Street Bank and the decision to remove the reference to Hotel Security from the MPEP in 1996 not identified? Public shame is about all they are going to get today, but they should get it.

      I have already quoted Judge Newman’s dissent in In re Schrader, 22 F.3d 290 (Fed. Cir. 1994) as being the ultimate source of the whole State Street Bank fiasco. I can only hope she recognizes her mistake.

      Schrader: link to scholar.google.com

      1. Ned,

        Is this an example of the kind of computer implemented claim you don’t want to see any more of:

        5. In a system such as described for automatically compiling and recording statistics, the combination of a series of independent mechanical counters for recording the separate items, an electro-magnet for actuating each of said counters, a series of electric circuits including said electro-magnets, a series of contact-fingers controlling said circuits, and a strip perforated at predetermined intervals denoting separate statistical items, each of said perforations being located in line with and actuating one of the said con tact-fingers, whereby each perforation in the strip representing an item, quality, etc., is caused to actuate a contact-finger and thereby energize the electro-magnet whose circuit is controlled by the finger or fingers representing the item to be recorded on the mechanism actuated by the said electro-magnet.

            1. Fish, it is a bit early for such Decisions, isn’t it?

              Ned I liked the Link to Pauline Newman’s Dissent in Schrader. In it I found this:

              “Data representing bid prices for parcels of land do not differ, in section 101 substance, from data representing electrocardiogram signals (Arrhythmia) or parameters in a process for curing rubber (Diehr). All of these processes are employed in technologically useful arts.”

              I like her first sentence but quarrel with her second.

              The claimed subject matter was to running an auction in a way that would deliver more profit to the auctioneer. Running an auction is useful, and an art. The representative claim does not recite “on a computer” but, even if it had, I do not agree that running the claimed auction process on a computer puts the claimed invention into an art that is (in Newman’s words) “technological”.

              Perhaps she can herself see that by now. And as she had already appreciated by 1994 that, to a computer, data is just data, I’m already optimistic that, these days, she is capable of handing down really sharp cutting edge 101 decisisions on c-i subject matter. Perhaps. Fish, in due course reversing a Board Decision to reverse an Examiner’s 101 rejection. Coming very soon, to a screen near you. Very soon that is, in the context of how fast patent law moves.

      2. Ned,

        Should this computer-implemented claim issued as part of U.S. Patent No. 8,872,517 on 28 October 2014 be considered patent ineligible under 35 USC 101:

        1. A battery maintenance device for performing battery maintenance on a storage battery, comprising: Kelvin connections configured to couple to terminals of the battery; measurement circuitry coupled to the Kelvin connections configured to measure a dynamic parameter of the battery and a voltage across terminals of the battery, wherein the dynamic parameter is a function of a signal with a time varying component; a battery age input configured to receive battery age data related to age of the storage battery; computation circuitry configured to provide a test output related to a condition of the battery based upon the measured dynamic parameter and the battery age data; and an output configured to provide an output to a remote location.

      3. Ned my boy, there is NO shame in having a patent invalidated by Alice. Alice is capricious let the judge do what he/she pleases crxp.

        Go back to TSM, then you have a way to get things better. To tighten the screws.

        Examiners (and me) laugh at the dirt judges. Everyone knows it is I will do whatever I please test; thus, it holds no weight.

    2. Fish, as far as I know there is only one: Ex Parte Mark Peskin.

      There are several others that sort of reverse, but more based on the Examiner’s failure to create a prima facie case.

    3. Fish — likely that for such reversal decisions to have much value going forward, they’d have to be post-Alice anyway.

      Of course — including due to the large appeal backlog — we’re probably at least a couple of years from any of those.

      We’ll be seeing CBM post-Alice 101 decisions (though not non-applicable rejection-reversals) first; to give us some PTO’s insight.

  3. To Jesse at 18.3.1.3.1.1.

    Because something can be _described_ in the language of math does not mean that that thing being described _is_ math. Think of it this way. Imagine a complex machine, say an assembly line gizmo. The gizmo is full of cogs, sprockets, axels, counterweights, etc. Now there is an empty area where a new part can be added. Lets say a sprocket. And the machine operates according to the arrangement of the teeth on the sprocket. Someone finds that by a certain arrangement of the teeth, the machine becomes much more efficient. Now they want a patent on that new sprocket. Do they claim the precise physical makeup of the sprocket? No, because that would afford no practical ownership rights. They claim the sprocket in some general manner. In fact, they might well describe the sprocket in mathematical terms, say: “A sprocket with features X, Y, and Z (which allow it to operate within the machine), and with teeth arranged [in some mathematical patter, say a sequence or a function of angle].

    Now is that new sprocket “math”? Is the claim directed to “math”? A patent claim to software might use the language of math to describe properties of what is being claimed, but the claim itself, if properly drafted and valid, is directed to a real world thing but with properties described in part with abstract mathematical concepts.

    So to say things like “software is math”, or “software is just a proof” ignores the full picture. A more accurate statement would be: “software is a real world thing that configures real world machines to do beneficial things in the real world. The software can be described in mathematical notation, such as in valid sets of valid statements in a given programming language. That description can be used, directly in some cases, to build (e.g., compile) a tangible real world thing (a complex pattern of physical “bits”) that can be plugged into a flexible machine to configure that machine to start doing useful things that stem from the semantic behavior expressed in the valid sets of valid statements.”

    What yourself and others fail to appreciate is the distinction between expressions in languages (sets of symbols, patterns for valid words, lexical rules, grammar, etc.), for instance poems, with the real world things that they refer to. Any language, for instance English, can be used to describe things. Because those things can be described using a language does not mean that the _things being described_ are not real world things with real world import. Similarly, because a set of physical bits – a specially configured sprocket, if you will – can be described with a language (and maybe even it’s behavior can be proven with a logical proof) does not have any significance with whether instances of the bit patterns that correspond to the description (patent claim) should be “ownable”, because all things can be described with a language, and many of those things can be “proven”, like simple syllogisms.

    1. And because you use the term “software”, it might help to give that some agreed-upon meaning, such as the first sentence from Wikipedia: “Computer software, or simply software is any set of machine-readable instructions that directs a computer’s processor to perform specific operations”.

    2. hierarchyofpontificationbuckets,

      Thank you for your post. An example of a claim to software that is clearly not math:

      1. The combination, with perforated sheets of electrically non-conducting materials, said perforations representing statistical items, of electro-magnets and mechanical counters in circuits controlled by said perforated sheets, substantially as and for the purposes specified.

      From U.S. Patent No. 395,783 to Herman Hollerith

      There are several other claims in this patent that I’m sure a judge could find patent ineligible under 35 USC 101 based on the decision in Alice. For example, see Claim 4 which is a method of information processing:

      4. The combination, to form a system for automatically compiling and recording statistics, of a strip of non-conducting material perforated at intervals to designate separate items, grades, &c., pertaining to a single individual or object, a series of electric circuits, contact-fingers, or terminals in each of said circuit-s to vary the current in said circuits as each perforation registers with the corresponding contact-finger, and a recording mechanism for each item, grade, &c., operated by an electro-magnet included in a circuit whose current is thus varied by the con tact finger or fingers entering the perforation or perforations in the strip representing the item to be recorded, substantially as described.

      1. Right, mechanical automatons, mechanical piano players, etc. The debate is ultimately not about the nature of what should be patentable. It’s about distribution. What benefits from innovations get distributed to what persons.

    3. What you are forgetting is that English, like math, can be used to describe things. Both are just a communication tool.

      You don’t patent English expressions, neither should you patent math expressions.

      And software is just math expressions using a particular notation. Whether it is to a machine or to another person.

      There is no difference.

      1. Software came from math espressions. It remains math expressions.

        No matter how much you object to the fact that software is math, it will remain so.

  4. Here is claim 1 of U.S. Patent No. 8,875,308, issued to Google today. Let’s see how it stacks up against 101 analysis 😉

    1. A method comprising: receiving a designation of a relative privacy level for a user; receiving a selection of a group of other users for the user, wherein the other users within the selected group have individual privacy level values, and wherein the relative privacy level for the user corresponds to a user-specified level, relative to the individual privacy level values of the selected group, at which to set privacy level values for the user; and setting, using one or more processors, the privacy level values for the user based on the designation of the relative privacy level and the individual privacy level values of the selected group of other users, wherein setting the privacy level values for the user comprises: ranking the other users within the selected group based on the respective individual privacy level values for the other users; selecting from the ranked other users, one of the other users based on the relative privacy level for the user; and setting the privacy level values for the user using the individual privacy level values of the selected other user.

    1. FA, you said at issue today?!

      This is a travesty.

      Mdm. Director-to-be, I you enforcing the law only with respect everybody but Google?

      1. I have only skimmed the patent, but MPEP 2106 seems to be relevant.

        link to uspto.gov

        [In] Ferguson v. PTO, June 29, 2010 [the court finds] ineligible “methods … directed to organizing business or legal relationships in the structuring of a sales force (or marketing company)”.

        I did not see any mention of this issue in the office actions.

            1. What are the “users” of the claim – how is the Person Having Ordinary Skill In The Art to which the invention pertains, having been informed by the specification, understanding that particular term?

              Does BRI really stretch to “business or legal relationships”? (since business or legal relationships – themselves – are not users, I tend to doubt that your view does reach)

              1. Could.

                In the field, “user” normally refers to a person. But in a network “user” can mean a remote process – which could be a person, or software acting on behalf of a person or company.

                I have even seen it used in reference to “software agents”. The specific target cannot determine whether it is a person or an agent making the information request.

                1. Certainly.

                  Information has privacy requirements.

                  Or do you think your credit card doesn’t have privacy requirements?

                  Or the credit card issuance doesn’t have privacy?

                  Or the program that generates the random numbers used for secure communication?

                  These are all “agents” in one form or another that have “privacy” so that they can operate in a secure manner.

      2. Ned,

        Yes, it issued today. I was curious to see the kind of applications Google was filing, and today being a Tuesday it was a nice day to check.

        Personally, I see in practice, and understand, both sides of the raging 101 debate. But whatever the new eligibility test ends up being — it must be applied consistently and fairly to all applicants.

        1. Google is notorious for particularly bad applications and patents. The low quality is noted especially when those patents are evaluated against Alice standards, but also against §102 and §103. Programmers both inside and outside Google have told me about the low quality both in widely read online forums and in person.

          Now Google is also known for bringing patent litigation only in response to abusive patent assertion against its interests. A patent like this will probably never be tested in court because Google doesn’t pursue infringers.

          And Google might just be obtaining such patents for freedom to operate. Since the PTO is known to be continuing to issue mountains of garbage patents like this, Google wants to get some of its own just to avoid being sued by whoever else would have gotten this one.

          1. If true, there is no excuse for these patents. Google should not be filing them, and the guidance on §101, §102 and §103 is clear.

            Examiners that err in allowing crap patents or in rejecting quality patents should be losing their jobs. The quality of patents allowed can not be achieved as long as the USPTO employs hordes of crap examiners.

                1. Of course not.

                  They should never have been issued.

                  But when the examiners do not know the field and do not know where to look (or unable to look) for information that is exactly what happens.

                  And once it starts it isn’t easy to stop.

            1. “The quality of patents allowed can not be achieved as long as the USPTO employs hordes of crap examiners.”

              While I agree with the sentiment, lawlyers spent decades making the lawl appear a certain way so as to condition those “crap examiners” to examine in a certain way. I see no reason why the PTO should, or would be able to “turn on a dime”. Rome was not built in a day, nor was the ridiculous 101 standard. I see no reason we could rebuild Rome properly in a day or get the examiner corps all good to go in a day. Especially when the administration themselves are busily drafting slightly incorrect guidance as we just saw the other day.

              Now, when it comes to 103, meh, that’s a different matter, but even so, 103 is ultimately a conclusion of lawl, and most examiners don’t even understand that (much less how to find the facts in a 103). And that was how they were trained. To not understand it. That isn’t really their fault. That’s on the training.

              Even as to 102, again, there’s big problems in the training. Most examiners couldn’t tell you what a factual finding was or how to make one, or whether they could find a fact without a claim in front of them. They’ve been taught to “match elements” which is not really finding facts all that much. Again, that’s on the administrative staff here teaching things. And the QA people.

              I’m really not so sure that I blame the examiners so much of late. They’re a product of the rest of the system’s dysfunction.

              1. There is an awfully large fraction of examiners that lack basic skills in English.

                It has always been a given that examiners need to have a background in technology.

                Judging 101 issues requires a good grounding in epistemology and therefore in logic, semantics, and linguistics.

                A good start to improving patent quality would be to make all examiners take the current SAT and discharge all that don’t obtain at least 550 on the reading section *and* 550 on the writing section.

      3. Mdm. Director-to-be, I you enforcing the law only with respect everybody but Google?

        I doubt that she, personally, has anything to do with this – i.e., an edict from the top – because (1) we’d have heard about it, and (2) I don’t believe such conspiracy theories without pretty clear evidence.

        However, there is definitely an institutional bias for and against various clients. Over the years, examiners have made casual (and unsolicited) comments to me about various assignees that have made the following clear:

        For a newly assigned patent application, the very first item that most examiners look at is the assignee. And before they’ve even looked at the title, they have already made some tentative judgments about (1) the value of the patent, (2) the magnitude of their response, and (3) the outcome that they believe is desirable and/or likely.

        I’d be really interested in some per-applicant metrics of issued patents and abandoned applications. I don’t know how to approach that task in a way that’s objective and not heavily influenced by unrelated factors (“company (x) just has better patent practitioners than company (y)”; “company (x) just writes higher-quality patent applications than company (y)”; etc.), but if there were, I think that the results would be extremely revealing.

          1. “have a bias in favor of big companies.”

            It’s been my experience that “big companies” tend to do things correctly. And if not correctly at least they do whatever is at issue properly. Usually the first time, and if not the first time then they get their sht together quickly.

            I’m going to guess that is a reflection of the level of quality amongst the people they hire.

      4. Director-to-be, I you enforcing the law only with respect everybody but Google?

        You think that’s the only junky computer-implemented claim that issued today?

        Give me a break.

        Google has been patenting garbage forever and Steve Brachmann and friends has been fawning over their innovations for just long.

        There’s no PTO “bias” towards Google and you’ve no evidence of any. Most of the folks who swallow that lame line are the same folks who never saw an ineligible claim in their lives until “oh look a big bank got a junk patent no fair no fair!!!”

        As for some alleged “institutional bias” towards clients who have the money to hire decent lawyers and are less likely to make arguments like “cars are just automated walking” … well, I’m shocked. Shocked!

    2. Personally, if I were prosecuting this case, I would have beefed up the claim considerably, because as issued, this claim, at the least, has vulnerability under current 101 law. I would have clarified the technical context of the invention, at the least. Attorneys/agents, do remember that allowance != valid; be your own patent examiner.

      Some would call such edits “sleight of hand”, or “the draftsman’s art”. Although these phrases have a negative connotation, the draftsman’s art is usually a reflection of the law. For example, there’s a huge legal difference between a claim to a pure mathematical algorithm, and a claim to a machine that uses that algorithm to address some real world problem expressed in the claim. True, the difference in those respective claims can be brought out with some not-so-clever claim rote edits (and I do mean more that “by a computer”), nonetheless, those edits are required if valid claims are desired.

      Here’s a quick edit that if nothing more would at least reduce the vulnerability of the claims (additions in CAPS):

      1. A method PERFORMED BY ONE OR MORE SERVER COMPUTERS COLLECTIVELY COMPRISING PROCESSING HARDWARE AND STORAGE HARDWARE, , comprising:

      receiving, VIA A NETWORK, BY THE ONE OR MORE SERVER COMPUTERS, a designation of a relative privacy level for a user HAVING AN ACCOUNT STORED BY THE STORAGE HARDWARE, AND STORING THE DESIGNATION IN THE STORAGE HARDWARE;

      receiving a selection of a group of other users for the user, wherein the other users within the selected group have individual privacy level values, and wherein the relative privacy level for the user corresponds to a user-specified level, relative to the individual privacy level values of the selected group, at which to set privacy level values for the user; and setting, using one or more processors, the privacy level values for the user based on the designation of the relative privacy level and the individual privacy level values of the selected group of other users, wherein setting the privacy level values for the user comprises: ranking the other users within the selected group based on the respective individual privacy level values for the other users; selecting from the ranked other users, one of the other users based on the relative privacy level for the user; and setting the privacy level values for the user using the individual privacy level values of the selected other user.

      1. Whoops, somehow that was submitted prematurely. Anyhow, point made. The draftsman must think about what most likely will be found in any implementation of the invention (e.g., user accounts with stored respective privacy settings that control access to network resources by others, the network resources accessible per the user accounts, a security server/process that makes access decisions based on the privacy settings, etc.). Make the claim concrete and real with respect to what is being improved, and make the claim as broad as possible with respect to the kernel of novelty that provides the improvement, but tied into the rest of the claim.

  5. “It’s not “integrated” here either. “Do it on a computer” isn’t “integration.”
     
    According to the Supreme Court of the United states, YES IT IS. I elaborated on this at 15 in the thread. Go back to read again and understand the Courts Integration Analysis as applied in Mayo, Alice and supported by Diehr.  As far back as Benson the Court explained  “It did not so hold” that a process implemented on a computer could never receive a patent. What you so willfully fail to understand about “Integration” is that Integration is a process that can occur at many levels. “Integration” is not just a yes or no question.  A process can be “Integrated” into another process and so on, and so on, until it reaches a point the Court is legally satisfied with. The Supreme Court made it explicitly clear in Mayo that the exception “must” be “Integrated” {to the point} it no longer covers/pre-empts the exception itself.  The Judge in this case failed to conduct any “Integration” analysis and therefore failed to prove the neccessary pre-emption of “her” own made up abstract idea. Therefore the case should be overturned by the Supreme Court, based on it’s precedents.

    1. “That doesn’t really address his point, does it?”
       
      It addresses the point I was making. MM, and you do not speak to that point but instead go off on a separate tangent you wish to argue without reconciling your beliefs/theories with the Supreme Courts Integration Analysis.
       
      Now in the event you and/or MM want to get back on  track and face “Integration” Analysis, the fact is a process can be a series of objective steps that do not require a machine or the 18th century version of technology, and still be patent eligible subject matter. Now if the process is reducing an exception, such as a law of nature or a concept/abstract idea to steps, then the process as a whole must be “Integrated” into another ( process, machine, manufacture, composition) to the point the exception itself is not pre-empted. And that’s all the Court has held in Mayo and Alice. You anti software fundamentalist want to pretend the Court has ruled software and business methods as non statutory and that just did not happen.  And until any of your anti patent propositions are reconciled with the Courts “Integration” analysis you can consider them dead on arrival at the Supreme Court, no matter what a few misguided DC judges  might say.

      1. You anti software fundamentalist want to pretend the Court has ruled software and business methods as non statutory and that just did not happen.

        What a reductionist argument. There is a distinction between claiming a particular way to achieve an objective and claiming every way of achieving the objective. You’ve never been allowed to claim every way of achieving an objective, which is known as functional claiming. It’s just never been allowed. This has always been the analysis ever since Morse.

        1. “There is a distinction between claiming a particular way to achieve an objective and claiming every way of achieving the objective. You’ve never been allowed to claim every way of achieving an objective, which is known as functional claiming. It’s just never been allowed. ”

          You keep saying that, but it is not true. The Wright Bros did not invent ailerons and flaps specifically, but their claims to moving a portion of a wing our to the plane of the wing read on ailerons and flaps.

          1. Yet, they could take Curtis to court over the flaps even when the flaps were NOT part of the wing.

            It took the government to seize the Wright patent before aviation in the US could advance.

              1. No – they would have been out of business.

                Curtis very nearly went bankrupt as it was. No other company actually made airplanes (in the US). Beleriot could because the patents didn’t affect him in France.

                The Wrights patent war practically ceased all flight development in the US, even for themselves.

                Ailerons were invented in 1868, in England, so there was prior art – even though it was hard to find.

                1. Huh?

                  They nearly went bankrupt because they couldn’t make airplanes. Had they paid the royalty, they could have made airplanes.

                2. There probably would have been no “flight development” at all without the Wright brothers. I think what you want is for all ideas to be free to be used, without regard for what is sometimes required to bring some of those ideas into existence.

                3. “There probably would have been no “flight development” at all without the Wright brothers.”

                  You’re obviously not familiar with the tale of how flight developed in those early years. The wrights toiled long and hard to “prove” they were the first because other people achieved flight (better than the wrights did btw) not long after them and were more mainstream for a few years before the patents helped the Wrights into a relatively good position in the emerging industry.

                  It wasn’t as if the Wright’s achieved flight and everyone all of a sudden started copying them. Or that their patents started issuing an everyone else in that emerging industry was like “o that’s how to fly!”. Their little planes were somewhat “ramshackle” compared to other people’s as a matter of fact, prior to them getting their sht together.

                  Stop by the Smithsonian Air and Space museum sometime. It is a really remarkable story, but it isn’t one that leaves the Wrights looking like giants of the field like most idiots in the patent space think of them as.

                4. “There probably would have been no “flight development” at all without the Wright brothers. ”

                  You obviously do not know the story of early flight. Stop by the air and space museum at the smithsonian sometime to have your bubble of ignorance burst upon.

            1. Your understanding of “blocked” seems in line with your general knowledge of patent law.

              There is a reason why the adage “Necessity is the mother of invention” exists.

              Further, one patented invention does not block follow-on inventions because the basic nature of patents is NOT a right to use, but rather is what is called a negative right. Improvement patents exist – and they exist for inventors that are not the baseline item (the thing being improved) patent holder.

    2. ““Do it on a computer” isn’t “integration.””

      “According to the Supreme Court of the United states, YES IT IS”

      So now we know what all the crowing from 101 Integration Expert was about. 101IE refused to give us examples of all the valid patents he was going to file in order to overcome Alice, but he was sure enthusiastic about the possibilities to get garbage claims through with his magic words.

      Turns out that ‘do it on a computer’ is the critical brilliance trade secret that 101IE was hiding.

  6. At the end of the day, this is just nonsense. Any invention can be invalidated using a (1) gist, and then (2) what do you add test.

    This clearly puts 102 and 103 right into 101 and puts the judge in the position of being an expert. If there is any right to a trial by jury, then it has clearly been abrogated.

    This has clearly just made the 1952 Patent Act bad law. Graham bad law.

    Just unbelievable. But, then the SCOTUS did the same thing with anti-trust law once big corporations instructed them do so. So, not a surprise. Very disappointing, but not a surprise.

    One thing to consider is that where do people think the structure for such software is? Do you think your brain is the same as a squirrel brain? Your brain is structurally different which enables you to carry out information processing methods. This software is vast structure that is equivalent to hardware.

    Just think Elon Kholberg worried about AI. Makes one wonder how this would affect other parts of the law. Gee, judge you said that this is only an abstract idea so how could I do wrong by building a computer virus? How can one go to jail for an abstract idea.

    1. Or as the anti-patent claim there is no structure to software (which is so ridiculous as to equivalent to claiming that the sun orbits the earth), then how can one go to jail based on a structureless abstract idea?

    2. Plus, let’s not let this nonsense of the concept of an “abstract” idea ever be accepted.

      I challenge anyone to come up with a claim that can’t be invalidated under 101 using this nonsense method.

      Any chair. The abstract idea of a chair. Then do an analysis (102 and 103 by the judge) whether significantly more has been added.

      So, the SCOTUS has collapsed the 1952 Patent Act sections 101, 102, and 103 into 101 performed by a judge. Shameful. And even more shameful is that people on this board are not appalled by this no matter what they think of patents.

      1. “With artificial intelligence we are summoning the demon,” he said. “You know all those stories where there’s the guy with the pentagram and the holy water, and it’s like yeah, he’s sure he can control the demon. Doesn’t work out.”

        Wait. This is all abstract, so this can’t be possible.

    3. “At the end of the day, this is just nonsense. Any invention can be invalidated using a (1) gist, and then (2) what do you add test. This clearly puts 102 and 103 right into 101 and puts the judge in the position of being an expert. If there is any right to a trial by jury, then it has clearly been abrogated.”

      It is true §101 sometimes overlaps §102, Mayo v. Prometheus, 132 S. Ct. 1289, 1304 (2012) and there is a serious concern that Flook, Mayo, and Alice may be interpreted to require 102/103 analysis at the 101 stage despite Supreme Court’s explicit command in Flook and Diehr that it should not be so. I think the Supreme Court will probably take up another cert in the near future to address this problem; at least to explain the extent of this “overlap” and to distinguish between “purely obvious / conventional” from “obviousness” and “novelty”.

      “One thing to consider is that where do people think the structure for such software is? Do you think your brain is the same as a squirrel brain? Your brain is structurally different which enables you to carry out information processing methods. This software is vast structure that is equivalent to hardware.”

      So your argument is that a computer processor is like a human brain? With the exception of Skynet’s Neural Net Processor for Terminator Series 800, Model 101 (2027 edition or 2017 edition depending on John Connor’s changes to the timeline), computer processors are not self-aware brains. Therefore, your comparison is inappropriate.

      In any event, your argument does not appear to support your conclusion as you appeared to argue that the brain is the hardware / structure to carry out information processing methods rather than the software being the structure. Further, until a processor executes the software by translating software into instructions of “0” and “1” to perform certain process, software are simply codes expressing ideas (remember, software may be copyrighted). And that is the problem with patenting software.

      “Just think Elon Kholberg worried about AI. Makes one wonder how this would affect other parts of the law. Gee, judge you said that this is only an abstract idea so how could I do wrong by building a computer virus? How can one go to jail for an abstract idea”.

      The problem with software / process patents is that the line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “conception[s] of the mind, seen only by [their] effects when being executed or performed.” Parker v. Flook, 437 US 584, 589 (1978). There is no crime in building a computer virus as it would simply be an expression of concepts in one’s mind, but there is a crime when one executes the computer virus and spread it over the world wide web.

      The Supreme Court’s judicial exception precedents are not concerned with patents on software, but are concerned with patents on conception of the mind. Indeed, under a Constitution where freedom of speech / expression is sacred (even money, as a form of speech, are protected), how could one interpret the Constitution to allow Congress and Government to regulate conceptions of mind and to regulate what goes on in people’s mind? Simply put, if Congress and Government may not regulate what goes on in people’s mind, then how could an act of Congress be interpreted to authorize patents on “anything under the sun that is made by man” to include ideas and conceptions of human mind? It would be appalling if the Government could simply issue a patent on an idea so that people risks infringement by simply thinking about the idea.

      What is so troubling about the argument that by simply appending the terms “let a computer / processor execute the idea” would make the idea patentable is that the argument presumed that a processor is a structure sufficient to transform any conception of mind into patent eligible subject matter. By using this generic term of art, the government could potentially or actually regulate how people thinks. That is truely appalling.

      1. >computer processors are not self-aware brains. >Therefore, your comparison is inappropriate.

        Richard, what? The stuff of information processing for us is our brain. The stuff of information processing for computers is software + hardware. And, software/hardware/firmware are equivalent.

        1. NPWA : The stuff of information processing for computers is software + hardware.

          Utterly beside the point when the claims are reciting only the new functionality for the software or hardware.

          oftware/hardware/firmware are equivalent.

          Equivalently invalid when the claims have equivalent failings.

          It’s amazing that you seem incapable of figuring this stuff out.

          Go ahead and scream about the Church-Turing thesis some more.

          1. >Utterly beside the point when the claims are >reciting only the new functionality for the >software or hardware.

            Except that a PHOSITA (such as me) interprets the claims in view of the specification as enabling a set of solutions that we know.

            How is it that you have 10 hours a day to blog on this blog and your various other blogs?

            1. And that set of solutions is hardware/software/firmware.

              That is the way it works MM. I know you will deny reality. But that is reality.

              1. Malcolm is not denying that realty (contrast with Ned Heller who is).

                Malcolm IS saying that the Court has the authority to re-write patent law by effectively mooting the words of Congress in an anti-nominalisistic “the statutory categories themselves (e.g. machines, manufactures) are mere “magic words” that the Court can choose to ignore (never mind that this plainly violates statutory construction in an area of law designated by the Constituion as explicitly ruled by statutory law).

                1. “the statutory categories themselves (e.g. machines, manufactures) are mere “magic words”

                  That’s your position, as far as I can tell.

                  It’s also wrong.

        2. Night…

          The stuff of information processing for us is our brain.

          No, it is not.

          It is our brain + education + experience.

          That “+ education + experience” is our programming.

          1. You are (again) confusing the idea of software with software.

            Only one of these two things is something that exists totally in the mind.

            By definition.

            Why is it so difficult to recognize this fact?

            1. Software or codes are expression of ideas that may be the subject of copyright. However, software patents are not directed to the actual software codes, but the concept / functions behind the software; i.e., idea of software. This is where the line gets blurred and it is difficult to recognize whether a software patent is really an exclusive right for precluding people from thinking in a certain manner or an exclusive right on an application of such an idea.

              1. Sheer nonsense. Software/hardware/firmware patents are to machines and/or components to machines.

                All patents in some sense stop people from thinking in certain ways, i.e. you can think as you would think while you infringe the patent without possible consequences.

                You appear to be another software developer that psychotically programs and doesn’t understand what they are doing.

              2. Your blurred lines are not what you think they are – as ALL patents in EVERY art field are – in fact – on the ladders of abstractions.

                Think of the term used: embodiments.

                Sorry Richard, but it is still a mistake to confuse the idea of software with software. As I indicated only one of these is something TOTALLY in the mind.

                1. (btw, kudos to hierarchyofpontificationbuckets at 17.1.2 who expresses this same concept very nicely – he points out several of the items of discussion that I have put up on the table that my protagonists simply refuse to discuss)

        3. I thought software must be combined with hardware/firmware for it to be performed/executed. If software is equivalent to hardware, then you are suggesting that software does not need hardware and it is self-executing. In one words, a human mind is sufficient to execute / perform software. And this leads to the problem that is the very basis of the Supreme Court’s interpretation of 101, patents on human thought process.

          1. Richard,

            As has been explained many times with analogies to tires, rivets, and bullets, whether or not a manufacture must be combined with something else in order to perform is a meaningless distinction. This is because BOTH machines and manufactures that go into machines are statutory categories.

            There is NO relation to any such problem of patents on human thought process, as I have also explained that the copyright aspect of software dictates that there is a REAL difference between the thought of software and software.

            By definition, software is a machine component – a manufacture.

            This remains a baseline fact that you really must accept in order to move the dialogue forward.

              1. jesse,

                Sorry to disagree with you so much, but software being a machine component and a manufacture is a fact – no matter how much you might not like this for your own philosophical goals.

                No one has – and no one can – give me software that is not a machine component, because software is defined to be a machine component. There is no such thing as software that is made that is not made to be a machine component, because that thing is simply not software.

                The truism remains true no matter how much you say otherwise.

                1. because software is defined to be a machine component

                  Software is frequently written with no intention of running on a machine.

                  Instead, it is written to validate a math procedure. It may then be given to other people that may choose to adapt/rewrite it for their purpose.

                  That doesn’t stop it from being software.

                  Ever run across “pseudocode”? It isn’t for any machine – though it COULD be… if a suitable translator were written…

                  Even English has been used…

                2. jesse, as I explained what you describe as something NOT written for a machine is just not software.

                  You admonished another poster not to misuse language – that same admonition applies here to you.

      2. Richard: there is a serious concern that Flook, Mayo, and Alice may be interpreted to require 102/103 analysis at the 101 stage despite Supreme Court’s explicit command in Flook and Diehr that it should not be so.

        Nothing in Diehr or Flook precludes a comparison of the claims to the prior art for the purpose of determining the subject matter being protected by the claim.

          1. From reading your posts, and that of NWPA, it appears that your theories on “as a whole” would not allow the courts/pto to identify components of the claims at all levels; in effect, it is inappropriate to determine what parts of the claim constitute abstract idea and what parts of the claim constituted implementation of / something more than the idea.

            If that is correct, then it would be inappropriate for Diehr to identify the Arrenhius Equation from the rubber curing steps.

            I think the correct way to approach a claim as a whole should be similar to 103, as footnote 16 in Flook suggested. It is inappropriate to find a claim to A + B + C + D as obvious by simply finding that A, B, C, and D are known in the art. Rather, we have to determine whether A, B, C, and D functionally and/or structurally interact with one another to render the claim unobvious to one skilled in the art. Under this approach, we can still identify the components of the claim corresponding to A, B, C, and D.

            Applying this approach to 101, courts/pto are allowed to identify the individual components (abstract idea + steps of “something more”) and then determine, whether the components as a whole (or as “integrated” as 101 Integration Expert suggested), amounted to an application of an idea or just the idea itself.

            1. Nothing in my “theories” indicates that you cannot identify as you suggest.

              Identifying and improperly dissecting are two very very very different things.

              Integration is indeed key – as I have also explained when I dissected Malcolm’s pet theory and showed that it reduced to a banal disaggregation statement (applying fully to ANY set of disaggregated claim elements – quite apart from using ANY mental step elements.

              May I suggest that you read again my posts, as you do not appear to have grasped what I have said.

        1. Did you missed the part where both Diehr and Flook held that “novelty” is the concern of 102 and it is not relevant at all under 101? See my post at 9.2.1.2.2. Treating something as though it was a familiar part of the prior art (hence, not “new and useful”) even when it is in fact unknown at the time of the invention under 101 is completely different from factually finding something as being not novel under 102.

      3. It can’t be clear, because them meaning of “unpatentable principle” is unclear, as is the so-called 101 test. I guarantee you, I can take Amdocs judge’s reasoning and use it legitimately invalidate any patent. The decision is completely founded on the judge’s conclusions about the claims. The conclusions are not supported by any facts of record. There isn’t even any legal analysis; if you strip away the review of patent law, you end up with just a couple of sentences that are the judge’s “reasoning”. The bases of the decision are purely the opinions of a person who spends their life on the bench, rather than dealing with technology and the language used to describe it.

  7. So what about the Panda patent? Doesn’t it claim ineligible subject matter under 101?

    link to google.com

    The prosecution history is ridiculous. It was assigned to an extremely junior patent examiner.

    What’s happening? Major companies don’t get the scrutiny that small inventors get.

    1. For all intents and purposes the patent claims stake out a mathematical formula, but it is difficult to reject these claims on the basis of 102, 103, or 112.

      1. Garbage Joachim. You don’t know anything about math nor anything about prosecution to have made this statement.

        1. I hang out with Field’s Medal winners. Even if I don’t consider myself much of a mathematician, my professors at Harvard & Yale thought I was quite good at math.

          As for the prosecution history take a look at patent application 13/631,020 in Public Pair.

          link to portal.uspto.gov

          The prosecution history is simply amazing.

          1. Here are the reasons for allowance:

            After further consideration of the prior art of record, it appears that the prior art of records fail to disclose each and every element of the Applicant’s invention. Specifically, the prior art of record fails to explicitly disclose, wherein ‘determining, for each of the
            plurality of groups of resources, a respective group- specific modification factor, wherein the group-specific modification factor for each group is based on the count of independent links and the count of reference queries for the group; and associating,
            with each of the plurality of groups of resources, the respective group- specific modification factor for the group, wherein the respective group-specific modification for the group modifies initial scores generated for resources in the group in response to
            received search queries’ as recited in independent claims 1, 23 and 35.

            1. Then what should happen is that this patent is then found invalid based on the merits. Invalidating a patent with the wave of the hand method does not improve prosecution. There is no shame in having a patent invalidated with a wave of the hand. There is shame in having a patent invalided fairly using prior art.

              1. What does that have to do with it? The Church-Turing Thesis tells us that everything that a computer does could be performed by a pen and paper. So what?

                These inventions are machines that process information like our brains. The grain processor in Deener (early 1800’s case) could be performed by a person’s body. So what. Does that mean a machine that does what our body could do (like dig, or process gain) is invalid?

                You have a lot to learn.

                1. I would not hire you for patent prosecution.

                  MPEP 2106

                  link to uspto.gov

                  In addition to the terms laws of nature, physical phenomena, and abstract ideas, judicially recognized exceptions have been described using various other terms, including natural phenomena, scientific principles, systems that depend on human intelligence alone, disembodied concepts, *mental processes* and disembodied mathematical algorithms and formulas, for example. The exceptions reflect the courts’ view that the basic tools of scientific and technological work are not patentable.

                2. Try to separate discussions about legal opinions from consultations with clients on patent applications.

                  And try to separate the difference between a brain performing an information processing method and a computer performing the information processing method.

                3. BTW, here is the Church-Turing Thesis:

                  “The Church–Turing thesis states that a function on the natural numbers is computable in an informal sense (i.e., computable by a human being using a pencil-and-paper method, ignoring resource limitations) if and only if it is computable by a Turing machine.”

                  It helps explain why the Supreme Court rejects patent eligibility of a claim that involves nothing more than running a program on a computer.

                4. So, what are you Joachim? Math?

                  Don’t really get it do you? And yet you don’t want to think hard about this do you? Plus, you need to spend more time reading about the Church-Turing Thesis.

                  You sound like one of those mystics that believe thinking occurs outside your brain.

                  Plus, try to distinguish arguments about science and about the bizarre holdings of the SCOTUS.

                  Just think: software that can drive, identify a tumor, or write a court opinion better than a judge. Done by a machine. A machine. A machine.

                5. And, if you really care about science ask yourself: how can a machine that does not have a structural change from another machine perform a different function? Not possible. And, yet that is what the anti-patent propagandist tell us.

                  Think.

                6. These inventions are machines that process information like our brains.

                  And like our brains, what they process should not be patented.

          2. BFD for you. How about the merits of what you are saying is wrong.

            (I was trained in theoretical computer science by some of the best.)

            And I know few things (1) there is a difference between instructions to a computer and math; (2) any physical process can be modeled by math, which does not make the physical process math; and, (3) there is a difference between theoretical math and applied math.

            I also know that information processing takes time, space, and energy. That it is a physical process.

            1. Your professors were losers. A lot of computer science probably most consists of logic and math as Turing and Church realized long ago.

              Obviously there is a good chunk that deals with system control that is not so easily reducible to logic or math even if system control requires the use of logic or math.

              Diehr is an example of the computerization of system control.

              I am not sure expertise in computer science makes one a good patent analyst, but I invented some of the major techniques of modern computer networking back in 1990-1991.

              link to eaazi.org

              1. Good for you. “Your professors were losers.” That’s a laugh. I also studied mathematics. But, both my universities are more highly rated than yours in math and computer science. And those graduate ratings are based on the reputation of the professors. So, I guess my loser professors were more highly rated than your loser professors.

                How about the merits of the arguments….

                1. Great for you. I guess that means you don’t engage in real debate, but prefer appeals to authority.

                  I guess you forget to take a logic class as an undergraduate.

              2. It is a physical process of processing information. There have even been articles on theoretical limits to have much information can be processed with a given amount of energy.

                That is what we are talking about. Machines that process information. That is what the invention is.

                Don’t be fooled by the anti-patent propaganda. Use your training to think about this.

                1. It is a physical process of processing information.

                  Yes, it is. So patent the processor.

                  The information still should not be subject to patents.

                1. So? Law firms with lots of people on the staff with your qualifications hire me as an expert consultant in patent prosecution and litigation.

                  You have only been making ipse dixit arguments, and you won’t get SCOTUS to confirm a patent by calling its holdings bizarre.

                  Your comments indicate that you have no understanding of epistemology.

                2. And yes we hire people like you. Lots of credentials who famously will say anything for a buck.

                3. Did I say I care? How about you address the substance of the debate and stop puffing at me.

              3. JM, thank you for joining most of us here and pointing out that Night really has no idea what he’s talking about and he demonstrates it a day in and day out.

                He endlessly talks about Turing and about conservation of information as justifying claims to information processing in general and never coming to grips with the fact that information is simply not statutory.

                1. JMO, “Holocaust denier?” I didn’t see any a substantiation for that accusation in the linked post.

                  However, a lot of what JM says in the video about the conspiracies on Wall Street has been said by others. There he have even been prosecutions concerning what happened in the real estate caused financial collapse that have resulted in substantial settlements. So I think there is some substance to what he is saying.

                2. Well, JMO, JM seems to have stepped into some nasty hardball politics where his opponents are out to smear him. I assume he has a rebuttal and am willing to listen.

                3. I tried to post a reply, but it went to moderation.

                  As for my expertise, McDermott that prosecuted the latest google patent engaged me as an expert consultant.

                  Does Jmo have any expertise besides in libel?

            2. As for the Panda patent, if there were only 4 web pages in the universe, and only 10 users of the query system, the display ranking could be created entirely by (cumbersome) pen and paper calculations.

              Because of big data there is a push to computerize many calculations that previously had not been done on computers.

              Some of these computerizations are novel, but they are not patent eligible (nor would we want them to be), and at least one court decision tells us that patent eligibility is not established simply because a given calculation is only practical on a computer.

              One could say that in terms of patent eligibility, “Size does not matter.”

              Anyway the examiner of the Panda patent was completely clueless with regard to 101.

      2. What you overlook is that the meaning of a claim is as it would be understood by one of ordinary skill in the art. Interpreting a patent claim isn’t metaphysical exercise. It’s supposed to involve interpreting the language of the claim in a way that would be understood by those in the relevant field of art. I have written thousands of patent claims where the inventors or other computer programmers/engineers were able to read the claim, and understand what it meant in the real world. You can take any patent claim in any field and, without reference to the specification or the relevant technical argot, show that the claim is no more than an “abstract concept”. The Supreme Court even acknowledged that all patent claims involve an element of abstractness.

        But that’s not how it’s supposed to work. The patent claim, and it’s specification, is a communication between technical artisans. It tells such artisans how to practice the invention, and it tells them what would constitute infringing the disclosed invention. It’s not complicated. To argue that somehow the real world benefits brought forth by creative technical artisans should not be accompanied by limited ownership rights for the creator is turning a blind eye to reality. In reality, engineers, programmers, etc., often gifted in their field, invest time and effort to bring new and useful things to mankind. Go read sciencedailyDOTcom’s Comp. Sci. section to get a sense of the benefits from these efforts. There is no rational reason why, given the fair limits imposed by patent law, those creators should not be able to own that which they create.

        And calling such creations “math” or “abstract software” does not clarify the issue. It’s a smokescreen intended to avoid the nettling fact that such creations are put in use to benefit human beings. Like Google’s ranking algorithm you mention.

        I’ll be the first to admit there are probably thousands of problematic patents that have been issued by the patent office. The main problem is overbreadth (followed by unclear claim terminology) … claims with too much scope that are invalid based on prior art. But that’s expensive to prove, for an issued patent. So the judiciary has tried to come up with a tool to deal with these bogus patents. Unfortunately, like many new tools, it’s prone to misuse. Judges don’t want to deal with the time and complexity of a patent suit. They have a bias to dispose of cases by summary judgment. That type of case disposal is necessary for a healthy and efficient legal system. However, section 101 law (subject matter eligibility) presently allows for such disposals of patent suits in a way that avoids consideration of facts that are important to the merits of the suit. The current state of the law allows for too much subjectivity on the part of the decision maker.

        Whatever the public-benefit balances are concerning patenting of software inventions, such balances should be decided by the legislature, not the judiciary. As stated in Diamond: “In choosing such expansive terms as “manufacture” and “composition of matter,” modified by the comprehensive “any,” Congress plainly contemplated that the patent laws would be given wide scope.”

    2. JM, just reading claim 1, I agree. Pure math with abstract labels aplenty.

      “Performed on a computer” should be viewed as a red flag: more than likely invalid on its face.

      1. Sure. So should “performed with chemicals”, or “performed with electrons”. Ridiculous. The claim is a communication to a technical artisan. The issue is, what meaning to do they give to the claim?

          1. The only joke here Ned is that for some unknown reason you refuse to see the parallel of the logic you use in your anti-software stance with the exact same logic that leads to nothing is patent eligible in the corresponding ‘big box of electrons, protons and neutrons” counter example I have put on the table for discussion.

            It is the exact same logic.

            The fact that you keep running from that discussion point does not mean that that discussion point goes away. It just means that you are closing your eyes to the fallacy inherent in the logic you are attempting to use.

              1. And you run away from the fact that you cannot copyright math AND that software is not math.

                But you seem fine ignoring that little tidbit.

                (further, I have shared a link to someone from the love of “maths” camp that fully disagrees with you concerning what electrons, protons and neutrons themselves are made of)

                1. No confusion at all.

                  I know the idea of software, and the implementation of software, and the difference between the two.

                  And I know that any program is nothing more than a mathematical proof.

                2. Mathematical proofs are not constructed and manufactured for the utility that software is constructed and manufactured for.

                  You really need to recognize the limitation of your living in your math uber alles philosophical world.

                3. Yes they are.

                  It is a proof by demonstration.

                  To disprove the proof, just provide values that cause the wrong result…

                4. And it isn’t “math uber alles”.

                  It doesn’t rule the physical world.

                  All math can do is describe the physical world.

                5. There is real world utility from software that you simply refuse to see – or understand.

                  Sorry jesse, but your view simply fails to accord with reality.

  8. Claim 1 of the `065 patent is fun (highlighted in La Brinkema’s opinion).

    1. A computer program product embodied on a computer readable storage medium for processing network account information comprising:

    computer code for receiving from a first source a first network accounting record;

    computer code for correlating the first network accounting record with accounting information available from a second source; and

    computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

    Sort of like, you should, you know, get your store’s account info, balance your store’s accounting against what your bank shows, and make corrections (excuse me, “enhancements”) as needed.

    And oh yeah, gosh, do it on a computer, fer crying out loud.

    1. Forgot to ask this question.

      Which all ways of doing this on a computer are covered by this claim?

      And which ways would not be covered?

      1. The THIS of any claim is “covered” by the claim.

        The ways of doing THIS that are not covered by the claim are the ones that don’t do THIS.

        In this case, ways of doing THIS that do not receive an account record from a first source are not covered.

        In this case, ways of doing THIS that do not correlate the first network accounting record with accounting information available from a second source are not covered.

        So, to work around the claim you could get both pieces of information from the same source.

        Additionally, in this case, was of doing THIS that do not use the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

        So…you could simply do the correlation, but not enhance the first accounting record.

    2. Mr. Palmer, clearly the statutory part a claim relating to a computer is not improved. The rest of the claim is to information processing, and that is nonstatutory.

      I think the point is that one cannot claim nonstatutory subject matter by simply adding into the claim conventional statutory subject matter. I call this “festooning.” Another apt term that comes to mind is “sprinkling” a claim with conventional subject matter so as to improve its 101 aroma.

      Patent attorneys have a lot of different mechanisms to mask their sleight-of-hand. For the longest time the Federal Circuit played along. That time is now ended at the insistence of the Supreme Court.

      1. Ned says: > The rest of the claim is to information processing, and that is >nonstatutory.

        Finally, you reveal your true beliefs. But, obviously this is nonsense. And obviously you are not accounting for the equivalence of hardware/software/firmware (Mano.)

        And you are not accounting for the fact that information processing is a physical process that takes time, energy, and space. Nor that the MOST important law of physics is the conservation of information (Susskind).

          1. >>Curry-Howard correspondence

            I see the little nipping anti-patent dog is still at my heals.

            The Curry-Howard correspondence is relevant how? I can mathematically model any physical process and any chemical process. The fact that something in the real world can be modeled by math does not make it so.

            A physical process is occurring to transform information. It is really occurring. For real. Real energy, real time, real space to transform the information.

        1. And I believe you are misusing the word “information”.

          Physics definition of “information” is that of the properties of matter. Things like “spin”, “up”, “down”… These are physical properties that physics uses the term “information” for.

          1. Another non sequitur from you. So, nipping dog, I made an assertion you blab your nonsense, why? What is the relevance of your nonsense?

            I thought there was none. Now boy if you want to argue like a man, then try to counter that it is not a physical process and try to counter that information isn’t being transformed. (which by the way is what your dog like brain does and what its main purpose is.)

          2. And jesse, I am not misusing information. It is information processing. Information is being changed. That is the foundation of computer science.

            1. No it is not.

              Physics used up all the more common words to name things. So they started using additional words to name things in their context.

              You are misusing terms of physics in a different field where that meaning doesn’t apply.

          1. Please do throw mud at Susskind again. It was rather pretty funny watching you try to discredit one of the most respect physicist to push your anti-patent agenda.

      2. There is absolutely no precedential holding that “information processing … is non-statutory”. That’s what some might call “legal sleight-of-hand”.

    3. Claim 1 is one of the garbage claims issued by the PTO, with too much frequency for a good 5-10 year period when undermanned and lacking enough Comp Sci. examiners. Good riddance to claim 1. However, Dennis’ article looks at claim 16. For that claim, the Judge’s approach could be used to “distill” any invention to something “abstract” and “long in use”… The problem with the state of the law right now is that a U.S. patent, examined by the US Patent and Trademark Office, can be invalidated based on nothing more than a judge’s personal opinion/belief about what is or isn’t new, or is a fundamental building block, etc. There is far too much discretion for a busy judge to dispose of a case, in complex area of law, that will otherwise take a lot of time to litigate.

  9. Let’s assume for the sake of argument that the inventor and the judge both agree the concept of the invention is “using a database to compile and report on network usage.” And that the concept is abstract, and involved in the claims.  My question then becomes, where is the Judges Integration Analysis?  The judge clearly fails to apply the Courts “Integration” analysis and the decision should be overturned by the SCOTUS for at least this reason. By essentially ignoring the Courts “Integration” analysis this judge is thereby eviscerating the Supreme Courts rule that, ” in applying the §101 exception, we must distinguish between patents that claim the “‘buildin[g] block[s]’” of human ingenuity and those that “integrate” the building blocks into something more, Mayo, 566 U. S., at ___ (slip op., at 20), thereby “transform[ing]” them into a patent-eligible invention, id., at ___ (slip op., at 3).” [Emphasis Added]

    It is clear the Amdocs  method ( series of steps ) is “Integrated”, as are all fully enabled claims . It is also clear the process in this case is “Integrated” into a computer system. However what the  court  must now prove, is that the concept of “using a database to compile and report on network usage” is pre-empted even when”Integrated” on a computer and therefore falls into one of the implicit exceptions. Likewise all Amdocs has to prove is that  the concept is “Integrated” {to the point} it no longer covers/pre-empts the concept itself. Because as the Supreme Court said, “The latter ( referring to “Integrated”patent claims ) pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.”  (See Alice)

    1. The “integration” of an abstract idea for a new function is achieved by the recitation in the claim of the new structure responsible for that new function.

      1. You do understand that according to the Supreme Court there is no machine or transformation requirement. And neither is there a technology requirement for a patent claim to be eligible subject matter right?

        That brings us right back to the fact that all an Inventor need to do especially, with a method/process claim is demonstrate that  the concept is “Integrated” {to the point} it no longer covers/pre-empts the concept itself.

        1. You do understand that according to the Supreme Court there is no machine or transformation requirement. And neither is there a technology requirement for a patent claim to be eligible subject matter right?

          That doesn’t really address his point, does it?

          That brings us right back to the fact that all an Inventor need to do especially, with a method/process claim is demonstrate that the concept is “Integrated” {to the point} it no longer covers/pre-empts the concept itself.

          The claim needs to be directed to the conceived means of achieving the end, and not a claim to the end itself. MM is correct that it has to be structural – the applicant has to disclose the algorithm for achieving the functionality, not simply claim the functionality.

    2. It is clear the Amdocs method ( series of steps ) is “Integrated”, as are all fully enabled claims .

      The claim in Mayo was fully enabled but there was no integration of the abstract subject matter covered by the claim. What’s “clear” is that “full enablement” does not mean “integrated.”

      1. No one says it does. In Mayo the claim involved a law of nature/natural phenomenon, which like an abstract idea, is an implicit exception to 101 eligible subject matter. In that case the law of nature/natural phenomenon was not “Integrated” {to the point} it no longer covered/pre-empted the law of nature/natural phenomenon itself.

        1. Oh, and an enabled claim is Integrated, according to definition of that term, but the important take away is that in the Supreme Courts analysis the rule is that  the exception “must” be “Integrated” {to the point} it no longer covers/pre-empts the exception itself. Ignore this rule at your own peril.

        2. Mayo the claim involved a law of nature/natural phenomenon, which like an abstract idea, is an implicit exception to 101 eligible subject matter. In that case the law of nature/natural phenomenon was not “Integrated”/i>

          It’s not “integrated” here either.

          “Do it on a computer” isn’t “integration.”

          That ship sailed, bro’.

  10. I like this claim!

    Look, it’s a computer program product stored on a medium IN WHICH resource consumption queries are submitted to the database utilizing the reports for retrieving information on resource consumption in a network and IN WHICH a resource consumption report is outputted based on the resource consumption queries.

    Who knew such things could happen inside a computer program product stored on a medium? Here I was thinking that computer program products stored in mediums were mere data on a disk.

    KILL IT WITH 112 FIRE! To the stakes with it! lol.

    “The Judge was also clear that overall novelty is irrelevant to patent eligibility. “That argument misses the point. The concern of § 101 is not novelty, but preemption.””

    ^MY MAN!

    Still idk about this particular 101 holding. Meh, at least they’re getting the law right nowadays. Or near right in any case, even if they may or may not apply it correctly!

    1. 6, you forget that the skilled artisan in reading software claims doesn’t get confused by that sort of thing. The skilled artisan in reading software claims knows that the claim covers any and all software that “causes” any computer that ever existed or ever will exist to perform the recited function.

      Here’s something odd to ponder about these “computer-readable medium” claims. Take two CD-ROMs, call them A and B. Both are infringing on day 1 because on day 1 they are both “readable” by one computer (called computer X) and, when read by that computer, impart a certain functionality to computer X. On day 2, the operating system of the computer X is updated. The CD-ROMs are unchanged but now only CD-ROM B infringes the claim because CD-ROM A is no longer readable by computer X (i.e., the computer no longer performs the recited functionality after reading CD-ROM A).

      Just another one of the bizarre scenarios presented by the wacky — and thankfully crumbling — scheme that the Federal Circuit invented when it chose to allow software to be protected by patents.

      1. “6, you forget that the skilled artisan in reading software claims doesn’t get confused by that sort of thing. ”

        Oh I agree that they’re not confused, you don’t give them an indefiniteness 112. You give them an “impossible to make” 112.

      2. “Here’s something odd to ponder about these “computer-readable medium” claims. Take two CD-ROMs, call them A and B. Both are infringing on day 1 because on day 1 they are both “readable” by one computer (called computer X) and, when read by that computer, impart a certain functionality to computer X. On day 2, the operating system of the computer X is updated. The CD-ROMs are unchanged but now only CD-ROM B infringes the claim because CD-ROM A is no longer readable by computer X (i.e., the computer no longer performs the recited functionality after reading CD-ROM A).”

        Yes, I’ve been playing on that theme for 8 years now and those sorts of situations are indeed interesting.

    2. 6, I agree with your analysis about just how befuddled this claim is because a computer program on a CRM is simply data. It does nothing!

    1. Once again, I ask myself why a claim like this:

      1. A method for generating a single record reflecting multiple services for accounting purposes, comprising:
      (a) identifying a plurality of services carried out over a network;
      (b) collecting data describing the plurality of services; and
      (c) generating a single record including the collected data, wherein the single record represents each of the plurality of services.

      …is not simply being rejected under 35 USC 102 citing objective evidence that is readily available, and why we instead need to tear up the fabric of 35 USC 101 with squishy, subjective determinations to reach the same result.

      1. That’s a great question for the patentee, David.

        Why did they think they could get away with asserting that claim?

        Better question: why was the claim even presented to the PTO?

        What was the theory behind patentability?

        why we instead need to tear up the fabric of 35 USC 101

        Seems to me we’re just shining a flashlight on the teeth of 101 because a lot of people forgot that they were there.

        1. Not those aren’t the questions MM. Even if what you said is true, that does not give the judicial system the right to not apply the law.

      2. why a claim… is not simply being rejected under 35 USC 102 citing objective evidence that is readily available, and why we instead need to tear up the fabric of 35 USC 101 with squishy, subjective determinations to reach the same result.

        One very simple reason: we’ve made those tools far to difficult to maintain in litigation. Shifting the filtering of bad patents to 101 means that there’s no need to engage in ponderous, convoluted analysis seemingly required by 102 and 103.

        What’s more, what many people view as simple to reject under 102 or 103 is often anything but simple. It’s easy to hide by the individual words of a claim and avoid, or at least make it more difficult to find, invalidity.

        Plus, as this opinion shows, it’s a powerful tool to avoid engaging in the expensive, energy consuming tasks of patent litigation: you should never have been given this patent so therefore you don’t have a claim.

        1. Shifting the filtering of bad patents to 101 means that there’s no need to engage in ponderous, convoluted analysis seemingly required by 102 and 103.

          “Ponderous” and “convoluted?”

          Let’s consider the pro-forma Alice rejection:

          (1) Identifying a portion of the claim reciting an “abstract idea”;

          (2) Summarizing that “abstract idea” as the “gist” of the invention;

          (3) Saying that the “abstract idea” is (a) old; (b) well-known; (c) a “law of nature” (and identifying the law of nature); (d) a process that can be equivalently carried out in the human mind; (e) one of several types of subject matter that is not the type of thing that patent law was intended to protect, such as a financial transaction or a human relationship; or (f) some combination of the above;

          (4) Considering whether the “abstract idea” is limited to a specific field, such as by the preamble, which may or may not be limiting;

          (5) Considering the rest of the claim, deciding whether it adds “something more” to the invention, and if not, explaining why not;

          (6) Carefully preserving the mirage of patent-eligible subject matter, with a token reference to Diamond v. Diehr and some empty words about “exercising caution” in applying this analysis; and

          (7) Summarily dismissing the claim under 35 USC 101, tacking on some statements about “preserving the basic tools of research” and “defending the technology economy” (this step isn’t technically mandatory, but provides some nice grandstanding opportunities).

          Now let’s consider the typical 102 rejection:

          (1) Claim 1 is rejected under 35 USC 102 in view of Crouch. Portion A of claim 1 is shown in Crouch paragraph [0012]; portion B of claim 1 is shown in Crouch paragraph [0034].

          (2) There is no step 2.

          Yes, much thanks to the courts for saving us from the “convoluted” 102 analysis.

        2. Plus, as this opinion shows, it’s a powerful tool to avoid engaging in the expensive, energy consuming tasks of patent litigation: you should never have been given this patent so therefore you don’t have a claim.

          (1) 102/103 is a primarily-objective approach, where patentees and accused infringers can look at the references and say, “this document does / does not teach this point.” It is also a conversation based on technology: discussions of whether or not two technical descriptions are equivalent, or whether references can or cannot be used together, are premised upon technical analysis.

          101 is a completely subjective approach, where patentees and accused infringers argue over empty phrases like “abstract,” “gist,” “something more,” etc. Also, the discussion has no technical underpinnings – it is all posturing and pontificating about what “technology” is, which boils down to the parties saying: “Is not abstract!” “Is too abstract!” “Is not!” “Is too!”

          (2) Pre-Alice, the PTAB or the court would look at whether the analysis of the previous decision-maker was technically accurate, or whether there was a technical flaw in the argument.

          Post-Alice, every decider just looks at the claims anew to make the subjective “abstract” call. There is no reason to give the previous decision-maker’s opinion about “abstractness” any weight, since the only important criterion is: “did they agree with my thoughts about the ‘abstract’ issue?”

          Putting (1) and (2) together, there’s no way that Alice will reduce litigation and disputes.

          This is why legal processes typically strive to reduce judicial subjectivity… a fact which has been lost on the Supreme Court these past several decisions.

          1. 101 is a completely subjective approach,

            No, it’s not.

            If it were, we couldn’t predict which cases fail and which don’t.

            Just because you have trouble making the predictions, doesn’t mean that everyone else does, David.

            1. It is subjective, because you can read the Judge’s decision and there is a long chain of quasi-factual conclusions with _no_ support in the record. Things are so because the judge says they are… that’s the essence of subjective.

          2. If you want more objectivity in patent law, the answer is to require all compositions of matter and manufactures to be claimed in objective physical terms at the point of novelty.

            the discussion has no technical underpinnings

            That’s because the claims have no “technical underpinnings”.

            it is all posturing and pontificating

            Welcome to the law. That’s not going to change.

  11. Dennis: Notably, to find the abstract idea, Brinkema “look[ed] past the mere claim language” to determine that the claim is “directed to the abstract idea of using a database to compile and report on network usage.”

    The reason this step of “looking past the mere claim language” is important is because of all the “magic words” that software patentees have become accustomed to using in their claims to make either (or both) the “technology” and the “innovation” over the prior art appear to be far more substantial and “complicated” than it actually is. Most of the limitations recited in this claim are nothing more than ancient dust. It’s as if one claimed a “new” method of reading a book by describing in flowery terms such “steps” as “the translocations of optical focus points over said aligned font images”.

    The issue is, construed in its broadest reasonable sense, what is the claim purporting to protect? That question may be informed consulting the specification, of course, in addition to the prosecution history where the Examiner and the applicant (ideally) should have addressed the same question.

    It is probably important to pause here to consider what considerations make us think that a network usage database creation and report tool is abstract.

    One “consideration” would seem to be that a description of the new physical structure of this allegedly new “tool” is completely absent from the claim. So we are in the realm of the intangible = abstract. Put another way, a new function for an old object is described but the new structure for achieving that function is nowhere to be found. New “functionalities” divorced from new structures are abstractions.

    Unfortunately, Judge Brinkema does not.

    I disagree. The answer is in your own post: Throughout the opinion, the Judge’s largest concern appears to be that the claims lack “specific hardware” as well as “any detail” regarding how the claimed functions [sic].

    The claim is ridiculous on its face. It’s asking a lot for a judge to apply any reasonable rules to a claim that is, itself, little more than a word salad amounting to “medium has code that says make a database and look at it … and, uh, network usage.” Give the guy a break.

    1. “It’s as if one claimed a “new” method of reading a book by describing in flowery terms such “steps” as “the translocations of optical focus points over said aligned font images”.”

      lol.

      “One “consideration” would seem to be that a description of the new physical structure of this allegedly new “tool” is completely absent from the claim.”

      Yep.

    2. Malcolm, I don’t understand why Dennis continues to struggle with the concept that the invention must be in the statutory subject matter in cases where the nonstatutory is mixed with the statutory. He seems genuinely befuddled.

      In this case, is clear that the claimed invention does not purport to improve any of the computer hardware, or any otherwise statutory computer system. The claim recites these nominally, with the novel subject matter directed to information processing. And, if information is nonstatutory, and it is, so is information processing.

    3. I don’t necessarily disagree with the outcome, but the outcome is a result of a procedural sham. Overbroad claims should be addressed through 102/103, not 101.

      1. Overbroad claims should be addressed through 102/103, not 101.

        You forgot 112.

        More importantly, 101 is concerned about mere than mere overbreadth, and so is the judge.

  12. Reaching the “right” decision for the “wrong” reasons gets us nowhere.

    US patent law remains doctrinally impoverished. “The gist approach”. What a joke.

    1. The “gist approach” is just shorthand used by certain people (Dennis included …. unfortunately) in an attempt to describe more colloquially the legal reasoning being used. I think that’s a mistake, personally.

      I’m not aware of any Supreme Court opinion or Federal Circuit opinion wherein the term “the gist” was used as a term of law. Likewise, none of Dennis’ descriptions of any of these cases legally binding on anybody.

      1. “gist approach”…”legal reasoning”

        Thanks for the laughs MM.

        “I’m not aware of any Supreme Court opinion or Federal Circuit opinion wherein the term “the gist” was used as a term of law.”

        Of course not. That phrase has extremely negative connotations to patent practitioners, and for good reason.

        If it walks like a gist and talks like a gist, it probably is one.

        1. That phrase has extremely negative connotations to patent practitioners, and for good reason.

          That’s a good reason for Dennis to stop using it, then, to describe perfectly good opinions that have zero chance of being overturned.

          Thanks for reminding him of that.

      2. Let me familiarize you:

        II. DISTILLING THE INVENTION DOWN TO A “GIST” OR “THRUST” OF AN INVENTION DISREGARDS “AS A WHOLE” REQUIREMENT

        Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v.Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole’”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987), cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled claims down to a one word solution to a problem).

          1. Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied,

            No. they have to do with it being improper to distill the claims down to a “gist”. Which is what Supremes have been doing, at least since Bilski, and what the court did here.

            1. What critical language is being “disregarded” here, Les?

              It’s hard to take you seriously or even understand what you’re complaining about when you appear to be believe that the mere recitation of any eligible subject matter in a claim renders the claim per se eligible.

              As you know (or as you have been informed, anyway, by the Supreme Court and many many many other bright and knowledgeable people) your view of the law is plain wrong. And it’s not going to change.

              To the extent Dennis’ use of the phrase “the gist” feeds into your misunderstanding about what is going on with these cases, that is on more reason that Dennis should avoid using the term.

              1. No. Dennis should keep on noting the occurrence of impermissible “gist” type reasoning, when it occurs until YOU and the COURTS realize the error of their ways.

                The entirety of the claim is what is “critical.” If you ignore the prohibition against “gist” type reasoning, then you can distill any claim down to an abstract idea and declare that abstract idea to be ineligible.

                The Wright Flier patent was directed to the abstract idea of stabalizing and controlling the flight of an aircraft by changing the shape of the wing. Mr. Edisons patent was directed to the abstract idea of converting electricity to light. Mr Whitney sought to patent the abstract idea of mechanically cleaning cotton. and so on….

                1. If you ignore the prohibition against “gist” type reasoning, then you can distill any claim down to an abstract idea and declare that abstract idea to be ineligible.”

                  That may be. But I’ve seen no evidence that the courts or the PTO is doing that. Certainly that didn’t happen in this case.

                2. The Wright Flier patent was directed to the abstract idea of stabalizing and controlling the flight of an aircraft by changing the shape of the wing. Mr. Edisons patent was directed to the abstract idea of converting electricity to light. Mr Whitney sought to patent the abstract idea of mechanically cleaning cotton. and so on….

                  SO what?

                3. News flash, Les: some guy on the Internet raving about how “everything is ineligible” doesn’t change anything and it’s not persuasive to anyone.

                  All you are doing is demonstrating that you have little or no understanding of the issues or the legal reasoning.

                  Comparing the claims that are being tanked in 2014 to the claims describing airplanes, electric lights, or the cotton gin is ridiculous. The comparisons make you look ridiculous.

                  If you could show that new devices and compositions of matter claimed in objective structural terms were being invalidated left and right by the thousands every day, then you might have a point. But that’s not happening. And it’s not going to happen.

                  What’s going to happen, slowly and surely, is that you are going to change your turn or become increasingly marginalized (to the extent that’s possible).

                4. “That may be. But I’ve seen no evidence that the courts or the PTO is doing that. Certainly that didn’t happen in this case.”

                  It happened in Bilski. It happened in Alice. And it happened here.

                  It happens in any case that includes the phrase “the claims are directed to” where what follows is something other than the actual claim language. I happens most clearly where the ruling includes the phrase “directed to the abstract idea”

                5. MM:

                  You said:

                  News flash, Les: some guy on the Internet raving about how “everything is ineligible” doesn’t change anything and it’s not persuasive to anyone.

                  All you are doing is demonstrating that you have little or no understanding of the issues or the legal reasoning.

                  Comparing the claims that are being tanked in 2014 to the claims describing airplanes, electric lights, or the cotton gin is ridiculous. The comparisons make you look ridiculous.

                  If you could show that new devices and compositions of matter claimed in objective structural terms were being invalidated left and right by the thousands every day, then you might have a point. But that’s not happening. And it’s not going to happen.

                  What’s going to happen, slowly and surely, is that you are going to change your turn or become increasingly marginalized (to the extent that’s possible).”

                  I think it is clear that you understand the power and light of the truth I speak. That is why you are terrified to let even one post of mine go by without a counter comment. I appreciate your concern for my marginalization. How far to the margin will I have to be pushed before you stop worrying about what I say?

                6. In this thread:

                  Les says: “but but but I should be able to control what the claim is about using claim language to bamboozle courts and the PTO!”

                  Courts say: “nah bro”

                  Les says: but but but no gisting!

                7. Les: I think it is clear that you understand the power and light of the truth I speak. That is why you are terrified to let even one post of mine go by without a counter comment.

                  I’d be happy to let your posts go by without “counter comments” if they weren’t dripping with misinformation about subject matter ineligibility.

                  We didn’t arrive at this juncture by “accident.” Nobody here is trying to “destroy the patent system” and nobody is trying to change the system so people can’t claim new airplanes, or new electric lights, or new machines of any kind because “anything” can be “characterized as abstract subject matter.”

                  With this claim in particular, we’re talking about a claim to an allegedly modified (but otherwise well known) object that allegedly imparts allegedly new functions to a second (old) object. But the claim doesn’t recite any new structure! It just recites the imparted function. That claim just screams out “Invalidate me.”

                  But somehow such bizarre claims became “normalized” and then they quickly became “essential” for a certain class of applicant/attorney to earn his/her living writing them. Meanwhile, a huge number of other people watched in horror and disgust or, worse, when we tried to engage you in a reasonable discussion about the problems created by that scheme, we were derided as anti-capitalists trying to return the country to the “iron age.”

                  Now that the tide is finally turning and some semblance of sanity is being injected into the system, we have to listen to these “arguments” about the Supreme Court “not having any clothes.”

                  You need to figure out a way to persuade the Supreme Court that you are a reasonable person and that you understand the issues that are being raised by claims to otherwise ineligible subject matter (“looking at a relevant look-up chart and stating what you find there”) performed “on a computer” or, worse, claims that recite some old computer readable medium with instructions printed on it that allow some mysterious computer to function differently after the instructions are read by it.

                  I really don’t think you are going to have much luck doing that with your “arguments” that, in view of Bilski, Mayo and Alice, all airplane claims are ineligible because “they are directed to the abstract process of flying” or whatever “argument” it is that you’re pushing on the block these days.

                8. In this thread 6 said:

                  The words in the claim have no meaning. The claim says what I say it says. All the words can be ignored. You can’t control what a claim means by putting words in the claim.

                9. “The claim says what I say it says.”

                  That’s what we do you know Les, it’s called “claim construction”. Judges do it too! Better write your claim well so that we are able to do it how you want us to!

                  “The words in the claim have no meaning. ”

                  Sure they do! The exact meaning you intend for them to have in fact! That’s what all this is about Les, finding what “meaning”, in the real world, the words in the claim in fact have! For instance, yonder man intends his claim to cover all uses of a certain binary to BCD conversion. Yet another yonder man intends his claim to cover all uses of a certain manner of hedging risk. Still yet another man intends for his claim to cover practically everything to do with a BRCA gene.

                  “You can’t control what a claim means by putting words in the claim.”

                  Sure you can! That said, it is gen erally very very difficult to change what subject matter is being claimed without essentially rewriting the whole claim.

                10. I think that’s correct. If you think about it, every claim is abstract. In fact, every word in the English language is an abstraction. A word, or a claim for that matter, merely points to a particular one of Plato’s “forms.” You could turn it around (as Plato did) and say that those forms are actually what is real and what we see in the world are mere flickering shadows of those forms.

        1. Or even more succinctly:

          Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.

          …as per Diamond v. Diehr – which every major opinion, including both Alice and Mayo, cites with approval.

          1. David, that passage doesn’t mean what you seem to think it means.

            I’ve explained why elsewhere in this thread.

            I assume you and your clients also understand why because you’re a really smart guy. Right?

            1. I thought you said:”I’m not aware of any Supreme Court opinion or Federal Circuit opinion wherein the term “the gist” was used as a term of law. “

                1. Nevertheless, the courts first step is to distill the invention down to a gist.

                  In Alice, I believe they distilled the claim down to “intermediate settlement” thereby ignoring all the particulars about shadow account establishment and maintenance.

                  The call the step :determine if the claim encompasses an abstract idea. They might as well have called it: determine THAT the claim encompasses an abstract idea, because any claim can be so distilled.

                2. the courts first step is to distill the invention down to a gist

                  For the sake of argument, let’s assume that’s true. So what? That’s not a problem as long as you don’t stop there. And, as Dennis notes, the judge didn’t stop there.

                  Likewise with Diehr: if you dissect the claims and find ineligible subject matter and then say “ineligible claim!” then you’re doing it wrong. But that’s not what’s happening in these cases.

        2. “Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.””

          I agree entirely. That’s why it is inappropriate to consider what the courts are actually doing (considering the subject matter as a whole) as distilling to a gist.

          1. I agree entirely. That’s why it is inappropriate to consider what the courts are actually doing (considering the subject matter as a whole) as distilling to a gist.

            Umm… that’s some pretty fine clothes on the emperor there, 6.

            From Merriam-Webster Online:

            gist: the main point or part; essence.

            When a court looks at this claim:

            1. A method comprising: a computer serving a set of one or more Web pages for a loyalty program of an entity to one or more remotely located client machines, wherein the Web pages are able to be rendered within a client-side browser as a graphical user interface on the one or more client machines, wherein upon being rendered within the client-side browser said graphical user interface shows a quantity of non-negotiable credits, wherein said non-negotiable credits are loyalty points of the loyalty program possessed by a member, wherein upon being rendered within the client-side browser the graphical user interface comprises a conversion option to convert at least a subset of the shown non-negotiable credits into a quantity entity independent funds, wherein said entity independent funds are different loyalty points of a different loyalty program of a commerce partner, wherein said entity independent funds are possessed by the member, wherein an agreement exists between the entity and the commerce partner, wherein the agreement permits members to convert the non-negotiable credits to the entity independent funds in accordance with a fixed credits-to-funds conversion ratio, wherein the agreement specifies that the entity is to compensate the commerce partner in an agreed upon amount of cash or credit for conversions of non-negotiable credits to entity independent funds, wherein said agreed upon amount is a multiple of a quantity of converted non-negotiable credits, wherein the entity independent funds are redeemable per the different loyalty program for commerce partner goods or for commerce partner services, wherein the commerce partner is not said entity, wherein in absence of being converted the non-negotiable credits are not accepted as payment for commerce partner goods or for commerce partner services; the computer responsive to receiving a message indicating a selection of the conversion option, processing the selection to effectuate changes in the served set of Web pages; and responsive to the processing, the computer serving one or more Web pages or Web page updates that include the effectuated changes to the one or more remotely located client machines, wherein upon being rendered within the client-side browser the graphical user interface is updated with the effectuated changes, wherein the updated graphical user interface shows a reduced quantity of non-negotiable credits possessed by the member in the loyalty program, said reduced quantity resulting at least in part from the subset of non-negotiable credits being converted into the quantity of entity independent funds in accordance with the fixed credits-to-funds conversion ratio.

            …and then begins its 101 evaluation with this:

            Notwithstanding the prolixity of the claims, they recite a very simple invention: a computer-driven method and computer program for converting one vendor’s loyalty award credits into loyalty award credits from another vendor.

            …I don’t believe it’s possible to deny that the court is engaged in stating the “gist” or “essence” of the invention.

            1. David, what they’re really doing is the inverse of what they say they are doing: their first looking to see whether or not the statutory subject matter is new or improved. If not, the rest of the claim is nonstatutory in a simply describe it as a gist.

                1. “why the Court was reluctant to apply the same process to Diehr’s invention”

                  They pretty much did. If you bother yourself to read the decision and the prior art and the arguments made by counsel. Pay attention to the part in the decision where the justices bought the applicant’s argument.

                  “which can readily be summarized as: “using the Arrhenius equation to estimate the progress of heat-curing a compound.””

                  You’re leaving out the auto-opening and the temperature gathering which were both novel over the closest piece(s) of art. Under Ned’s analysis either of those were sufficient to halt the analysis as they were really (in the court’s eyes) just claiming a normal and novel useful arts machine operating procedure with the equation tossed in for kicks (or for limiting the claim down to that which was at that time enabled).

                  Also, that is kind of a bad way of summarizing Diehr’s claimed method.

                  If you’re going to summarize it try: using the Arrhenius equation to know when to, and also to, automatically open a rubber curing machine utilizing temperature data collected. That’s what they actually were doing. They didn’t care one whit about abstractly estimating the progress of heat-curing a compound. They wanted to specifically auto-open the machine, and just happened to use the estimate in so doing so the rubber didn’t burn. If they had tried to simply get a claim to estimating the progress of heat-curing a compound then they probably would have gotten a 101.

                2. If you’re going to summarize it try: using the Arrhenius equation to know when to, and also to, automatically open a rubber curing machine utilizing temperature data collected.

                  (1) The word “rubber” is only used once in Diehr’s claim, and that’s in the preamble: “operating a rubber-molding press.” It doesn’t actually state that the thing being cured is rubber – indeed, the press is for “precision molded compounds,” and the body of the claim only refers to “said compound being molded.”

                  Diehr’s claim is not limited to curing rubber – it is usable to control the heat-curing of any composition.

                  (2) The claim does not directly state: “using the Arrhenius equation, estimate the curing progress of the composition; and when the estimated curing progress reaches a desired level, open the boiler.”

                  Diehr’s claim is much more squishy than that, in terms of the connection between the equation and the decision:

                  repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is where v is the total required cure time,

                  repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

                  opening the press automatically when a said comparison indicates completion of curing.

                  In other words: “Perform some integrations that somehow use the Arrhenius equation together with the temperatures, and compare a total curing time with the elapsed time.”

                  But there’s a noticeable gap here: Arrhenius’s equation doesn’t actually tell you a curing time. When you feed in the temperature and the activation energy of the material, you get out a rate constant. Translating the rate constant to an actual time requires additional steps which are not mentioned. As such, Diehr’s claim reads like: “Apply the Arrhenius equation to some sensor data in the process of obtaining this useful data, and then use the data to control a device.”

                  So how did Diehr’s claim survive the Court’s review? And why does the Court consistently cite it as patent-eligible subject matter, when it would fail if presented today?

                3. “The word “rubber” is only used once in Diehr’s claim, and that’s in the preamble: “operating a rubber-molding press.””

                  I quite agree, but look at how the USSC lapped up the arguments presented to it! Also consider for a moment what the “subject matter” of the claim is as opposed to the mere words being used to claim the subject matter. Remember, we’re looking for the eligibility of the subject matter, not necessarily “the claim”.

                  “Diehr’s claim is not limited to curing rubber – it is usable to control the heat-curing of any composition.”

                  Maybe you should read what the supremes had to say about that. Oh look, the first sentence tells you what the majority thinks about it! “Respondents filed a patent application claiming invention for a process for molding raw, uncured synthetic rubber into cured precision products. ”

                  And oh look how the applicant characterized their invention (aka the subject matter being claimed)! “Respondents characterized their contribution to the art to reside in the process of constantly measuring the temperature inside the mold and feeding the temperature measurements into a computer that repeatedly recalculates the cure time by use of the mathematical equation and then signals a device to open the press at the proper time.”

                  And oh look, here’s how the majority bought into what the applicant argued! “The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products.”

                  “Diehr’s claim is not limited to curing rubber – it is usable to control the heat-curing of any composition.”

                  Gl with that claim construction argument, the supremes don’t appear to be buying that argument and the office doesn’t even appear to have made that argument. Because it is a dmb argument as the body makes repeated references to the preamble. Hck, it is replete with references to the preamble.

                  “The claim does not directly state: “using the Arrhenius equation, estimate the curing progress of the composition; and when the estimated curing progress reaches a desired level, open the boiler.””

                  Nobody said it did. Why bring that up?

                  “Diehr’s claim is much more squishy than that,”

                  Which explains why there was a dissent. But you have to recognize what claim construction the majority was going with first. And also consider what they felt like was even the subject matter that the applicant was attempting to claim.

                  “In other words: “Perform some integrations that somehow use the Arrhenius equation together with the temperatures, and compare a total curing time with the elapsed time.””

                  … And then AUTO-OPEN. Why do you keep on neglecting the key feature of auto-opening which nobody else could do without burning rubber? Just stop neglecting it bro.

                  “Translating the rate constant to an actual time requires additional steps which are not mentioned.”

                  I haven’t looked into this, but even if you’re correct, so wut bro?

                  “As such, Diehr’s claim reads like: “Apply the Arrhenius equation to some sensor data in the process of obtaining this useful data, and then use the data to control a device.””

                  Mmmm, not really, but at least in part.

                  “So how did Diehr’s claim survive the Court’s review?”

                  Me and Ned just got through explaining that to you and you don’t seem to be listening, and instead appear to be making up your own little fantasy versions of what was happening in Diehr. You need to be focusing on what actually DID HAPPEN in the decision. Try to think about it from the majority’s point of view instead of your own point of view. Just for a minute put yourself in the shoes of a member of the majority. Then read the decision. Or read it, then put yourself in their shoes, then read again.

                  “And why does the Court consistently cite it as patent-eligible subject matter, when it would fail if presented today?”

                  Um, because it would pass today. Again, methods of operating rubber curing machines are pretty much all patent eligible SUBJECT MATTER :/ . And they always will be.

                4. And then AUTO-OPEN. Why do you keep on neglecting the key feature of auto-opening which nobody else could do without burning rubber?

                  Because the courts are happy to overlook anything that looks like the straightforward application of the abstract technique. If the abstract technique produces a result, and the claim then states: “Use the result for its obvious, intended purpose,” the courts are happy ignoring that terminal step as a version of: “apply it.”

                  For example:

                  “A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising: (functional method), and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.” (McRO v. Activision)

                  Let’s say that the court invalidates a claim like: “A method of defragmenting a memory device, comprising: (applying a best-fit technique to choose an optimal location for each data block).” Do you really believe that the courts would find this claim patent-eligible by tacking on the phrase: “…and then relocate the data blocks in the memory according to the optimal locations” will confer patent-eligibility? The extreme hostility of the courts (“wax nose” and all that) seems to provide a clear answer.

                5. David, I second 6’s remarks.

                  Simply, in Diehr, the Supreme Court held that the use of the nonstatutory subject matter in an otherwise conventional process resulted in an improvement to that process and was for that reason statutory.

                  If you think about the printed matter doctrine, a functional relationship of the nonstatutory subject matter to the statutory so as to improve the statutory is all that is of required for the claim as a whole to be patentable subject matter.

                6. “Because the courts are happy to overlook anything that looks like the straightforward application of the abstract technique. ”

                  AH HAH! You’re making progress! See? But that’s where you’re a tiny bit mistaken! The courts “overlook” the application in the claim if the “application” is “the only application” or “all of the possible applications rolled into one big statement of ‘an application'” or if the ahem, “application” is part of the abstraction itself. The courts do not “overlook” the application if it is in the claim AND is but one of many thousands or millions of applications of the abstract idea at issue. In Diehr it was well known that the abstract idea in question (the equation) can be utilized for thousands of different things, none of which were put in any risk by the instant claim. That is why it survived ultimately! Also note that is exactly why they said it survived.

                  That is the difference between Diehr and your run of the mill case that gets 101’d.

                  “If the abstract technique produces a result, and the claim then states: “Use the result for its obvious, intended purpose,” the courts are happy ignoring that terminal step as a version of: “apply it.””

                  Now that is most likely correct on some or most occasions. But not because the “result” or “the application thereof” or “use” was “obvious”. It is instead because the “use” or “application” is all (or substantially all) of the uses or applications of the abstract idea.

                  Fortunately for Diehr his “use” for his abstract idea (the equation) was just one of many thousands. So he didn’t have any problems along those lines.

                  “For example:

                  “A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising: (functional method), and applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.””

                  Um, yeah. Protip: your “application” cannot itself be an abstraction like “outputting some numbers in a set to control the imaginary lips of imaginary characters made up of a human’s mind’s perception of pretty colors on a compooter screen”. Else you goin get your “application” “ignored” or else simply considered as part of the abstract idea itself (as I believe was what actually happened). Also, one other protip: make sure that your SUBJECT MATTER is eligible in the first place, here I doubt controlling lips of imaginary characters is eligible subject matter as in, ever. But gl trying.

                  “Do you really believe that the courts would find this claim patent-eligible by tacking on the phrase: “…and then relocate the data blocks in the memory according to the optimal locations” will confer patent-eligibility? ”

                  Nah bro, sounds like more abstraction tacked onto abstraction. Again, get your subject matter right from the get go and you’ll be in business. Head on over to the foundry, or metal working shop and start inventing instead of going to pixar’s animation shop or microsoft’s UI lab and you’ll be rolling in eligible subject matter. Hey presto!

                7. I don’t believe it’s possible to deny that the court is engaged in stating the “gist” or “essence” of the invention.

                  There’s nothing wrong with paraphrasing what a long-winded flowery hand-wavey claim covers, nor is there anything wrong with describing in straightforward language what the inventor contributed to the art.

                  The only problem with using the word “gist” is that it seems to confuse people who are very, very prone to being confused by anything having to do with subject matter eligibility.

                  In this instance, David, you seem to be confused into thinking there’s something wrong per se with summarizing what a claim purports to cover. There isn’t. Never was. Never will be.

                8. In Diehr it was well known that the abstract idea in question (the equation) can be utilized for thousands of different things, none of which were put in any risk by the instant claim. That is why it survived ultimately! Also note that is exactly why they said it survived.

                  Tell that to Prometheus, which sought to take the “abstract concept” of measuring metabolic products, which can be used for “thousands of different things,” and then sought to use it for a specific purpose. (In fact, Prometheus’s claim was much more limited than Diehr’s: whereas Diehr simply recites “curing a composition” in a “rubber-molding press,” Diehr specified measuring the metabolic products of exactly one compound and for exactly one condition.)

                  Of course you wouldn’t; you’d say what the Court did – that a general concept does not become patentable by reciting its use for a specific purpose, i.e., as a “field of use” limitation. As the Court wrote in Prometheus:

                  As the patents state, methods for determining metabolite levels were well known in the art. Indeed, scientists routinely measure metabolites as part of their investigations into the relationships between metabolite levels and efficacy and toxicity of thiopurine compounds. Purely “conventional or obvious” activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such law.

                  By the same token: If Arrhenius’s equation is known, then stating its use for rubber-curing, along with the straightforward and obvious result of its application to the field (i.e., “open the boiler”), does not make it patent-eligible. Preemption is not the point here: the point is that an “abstract concept” (and a centuries-old one at that!), coupled with a straightforward application of its use, requires invalidation under Alice.

                  ===

                  Now that is most likely correct on some or most occasions. But not because the “result” or “the application thereof” or “use” was “obvious”. It is instead because the “use” or “application” is all (or substantially all) of the uses or applications of the abstract idea.

                  The Mayo Court acknowledged that doctors frequently use the “abstract idea” of measuring metabolites of thiopurine compounds to adjust dosage. Prometheus sought to secure protection of exactly one such measurement, and was denied – not under 102/103, but under 101.

                  It is impossible to square Diehr with Mayo under your rationale: same scenario, opposite results. And that, of course, is my point.

                9. ““abstract concept” of measuring metabolic products”

                  The law of nature, rather than “abstract concept” (though it really was an abstract concept as well as a law of nature since it was a correlation) at issue in that case was a bit narrower than that. Here you’re just trying to broaden up the judicial exception at issue so as to say that you’re claiming less than the whole. But there are narrower judicially excepted subject matter which may also be at issue, as there was in Prom.

                  “In fact, Prometheus’s claim was much more limited than Diehr’s:”

                  Yes, it was much more closely tailored to exclude the entirety (or substantially the entirety) of the uses of the correlation at issue in the case. We know. And that’s why it fails. That’s why I said it would fail before the USSC told us it did. And lo and behold it did. Wow, super hard to predict.

                  “Of course you wouldn’t”

                  That’s correct, I wouldn’t. Because I know what I’m talking about. It’s da lawl!

                  “If Arrhenius’s equation is known, then stating its use for rubber-curing, along with the straightforward and obvious result of its application to the field (i.e., “open the boiler”), does not make it patent-eligible. ”

                  If only you (and the office in the 80’s) had a reference teaching “AUTOMATICALLY opening the boiler” and did a 103 analysis you may have a leg to stand on. As is, you don’t. You (and the office at the time) also don’t have an enabling primary reference that includes data gathering step because prior to their patent (they allege anyway and the supremes bought) nobody was able to get the data well enough but they put their thermocouples in a good arrangement that enabled the data to be gathered well enough.

                  Again, the auto-opening is important for this reason. I know you want to call it obvious, just like others before you, but ya don’t have the EVA, EVAD, EVA, ev? Eve? Evedenciaries? Evidence? Oh wait, evidence! That’s what you don’t have to support your obviousness conclusion!

                  Not to mention the PTO didn’t even make that argument at the time, and the supreme majority didn’t buy it (note the stevens minority did, and that’s another reason why there was a dissent).

                  See, problem is, you follow Stevens on some things bro. The majority saw the obviousness etc. different than you do.

                  “Preemption is not the point here:”

                  Preemption is always the point brosefus. If you ever think otherwise you’re mistaken. To be sure, not necessarily complete preemption. Sometimes it is only substantial or “undue” preemption at issue. You know how the lawl is.

                  “The Mayo Court acknowledged that doctors frequently use the “abstract idea” of measuring metabolites of thiopurine compounds to adjust dosage. Prometheus sought to secure protection of exactly one such measurement, and was denied – not under 102/103, but under 101.”

                  I quite agree, they sought to secure protection of the CORRELATION. As the supremes told you to your face. Several times. Whether you call a correlation a lawl of nature or an abstract idea it is excepted. Period. They seek protection for it they’re out. Again, period.

                  They did not seek to preempt “measuring metabolites of thiopurine compounds to adjust dosage”. I agree. The USSC agrees.

                  They sought to preempt x correlation that I cannot remember off the top of my head but which you can find ez enough in the decision. The USSC agrees. Perhaps you can agree with me and we can call it a day and you’ll be satisfied.

                  “It is impossible to square Diehr with Mayo under your rationale”

                  That’s true, it is impossible to “square” them, because they’re already in perfect square alignment.

                  The only reason they don’t appear square to you is because you don’t agree with the majority on some fundamental things in the case. Like whether auto-opening was obvious or was instead their advance to the art. You also don’t think that the claim being in the rubber curing arts further bolsters (if doesn’t outright cinch) the eligibility of the claim. The USSC majority did. It’s you that don’t like what the majority did in Diehr. But then, to top that off, you get all flustered about them thinking about it differently than you.

    2. They are implementing Hotel Security without saying they are. Even if they did not intend to implement Hotel Security, they are conducting the same analysis: in claims of mixed statutory and nonstatutory subject matter, the invention must be in the statutory.

  13. Amdocs Patent No. 6,836,797 describes a program for processing logs remotely. The analysis of the logs can certainly be described in lambda calculus. It is therefore pure math. Receiving and storing remote logs is not novel. The combination receiving, storing, analysis, and dispatching output is an obvious combination for the last 30 years at least.

    1. It is not pure math. It is applied math. Applications of math are patentable.
      If it is obvious, then invalidate it under 35 USC 103.

      The Examiner disagreed with your analysis on that point, however.

          1. Flight “can be described” by a set of formulas. That does not mean an airplane is an abstract idea.

            Nobody here is claiming any thing remotely similar to a “new airplane”.

            The claim here is more similar to a “new” method of flying an airplane that differs from old methods merely by the recitation of a new destination and a computer “with code” that controls the autopilot.

            That’s ineligible.

            1. Don’t change the subject or hijack the tread.

              Mr. Martillo implied that because the claimed method of a patent could “be described” via the abstractions of lambda calculus, it was therefore not eligible.

              That is faulty logic. One does not follow the other. To show that, I gave an example where I assumed, Mr. Martillo would agree that the application of the logic he proposed delivers the wrong result.

              1. Les, it was you who made the bizarre leap from “flight can be described in terms of math” to “airplanes are ineligible.”

                This is a mistake (or a rhetorical sleight of hand) that the software patenting proponents make all the time.

                You are confusing the function of the device with the device that performs the function (exactly the problem with the claims to these “new” information process “devices” — go figure).

                A new airplane described in objective, physical terms to distinguish it from old airplanes is certainly not ineligible merely because “flight can be described in terrms of math.” Nobody (except you) is making that argument. Certainly Joachim wasn’t making that argument.

                1. It is not a mistake or slight of hand to show that the test you want to apply fails.

                  You’re argument is circular. You are saying that it is only proper to apply your test to something that you already decided should fail the test.

                  Anyway. I’m not talking to you. I am talking to Mr. Martillo about the test HE wants to apply. His test is: Can it be “described by math”? If the answer is yes, he says it is abstract and not eligible.

                  The Wright Flyer can be described by math…. That’s all.

                  You say, but the Wright Flyer is a physical thing. I say a CDROM is a physical thing.

                2. It is not a mistake or slight of hand to show that the test you want to apply fails.

                  It’s not my test. It’s your test.

                  And my test isn’t failing. It’s working.

              2. And just so there’s no confusion, Les:

                1. A new plane, wherein said plane is configured to show a movie, wherein said movie comprises scenes depicting [insert new, non-obvious and entertaining plot here].

                is certainly ineligible for patenting. And nothing about that should surprise anybody.

                More importantly, it’s the sort of thing that should always be in the back of your mind when anybody is discussing patent eligibility.

                We are having the discussion for a reason. The reason is that the gates were opened way too wide by some short-sighted legal decisions. Those gates are closing now and an era is ending.

                1. I read the patent as claiming all possible lambda-calculus formulations of log string processing in conjunction with receiving remote log messages and with outputing the analysis.

                  We need to identify which element of the claim is pure logic (by identifying which part can be described by lambda calculus) because otherwise novel analytic knowledge could be used to claim that there is a novel or non-obvious combination of existing technologies to create new synthetic knowledge that can legitimately be staked out in a patent claim.

                  In other words, there is nothing in the claim that can be considered new, novel, or innovative posterior/empirical knowledge, which can be legitimately staked out.

                2. “In other words, there is nothing in the claim that can be considered new, novel, or innovative posterior/empirical knowledge, which can be legitimately staked out.”

                  If that is the case, we have no objection to the claim being invalidated on THAT bases. Just kindly provide a bit of proof that the claimed method is not novel. Just cite some evidence that the particular method claimed was done by someone else prior to invention by the named inventor.

                3. Les, you are missing the point of my comment. Given the formulation of the claim, there is without doubt an innovative combination based in some new or unique form of string processing, but that string processing would be purely analytic knowledge that could be described by the lambda calculus and therefore reasonably ineligible under “abstract idea” doctrine.

                4. You are missing my point. It does not follow that because something “could be described by the lambda calculus” that it “reasonably ineligible under “abstract idea” doctrine.””

                5. Joachim, to understand where Les is coming from you need to understand that Les believes that if there is any subject matter recited in the claim which would be eligible on its own terms, then the claim is eligible, period, regardless of whether that eligible subject matter is old or new.

                  That’s an untenable position for very easy to understand logical reasons, but Les won’t cop to that. Just fyi.

                  It’s very easy to understand why the softwoare patenting proponents insist on very strict interpretations of “reading the claim as a whole.” It’s because they want to return to the era where a “magic word” gets them past 101, after which they can rely on the dust-kicking and wordsmithing and the exhorbitant costs of expert battles to “monetize” their otherwise ineligible processing claims.

                6. Les, If the procedure can be fully described by the lambda calculus, it is a logical or mathematical proposition and therefore ineligible subject matter. Diehr cannot be fully described by the lambda calculus, but Benson can be.

                7. I am happy that you recognize that opening the press automatically when a said comparison indicates completion of curing is sufficient to make a claim eligible.

                  Likewise, putting the code on a CDROM is sufficient. It make the claimed subject matter a concrete article of manufacture.

                  On the other hand the pair of rulings that are Flook and Diehr are absurd. If the invention in Diehr powered an alarm indicating that a worker should open the press, the claim would not be valid? really? move the wires from a motor to a bell…and now you can’t patent it? Really?

                  The Supreme Court is WRONG

                8. Maybe I’m splitting hairs here, but I don’t know what you mean by SCOTUS is wrong.

                  From my perspective, that’s kind of impossible. In our system, they are the highest body that interprets laws. Simply put, what they says goes. Whatever the SCOTUS says will be enforced by the courts and law enforcement. Thus, they can’t really be ‘wrong.’

                  However, I do often disagree with the Supreme Court’s analysis or wish they’d come to a different conclusion. However, that usually requires a reversal, congress passing a new statute or, in some cases, a constitutional amendment.

                9. Arthur. 101 as passed by Congress is pretty clear. The Supreme court has twist out of all recognition. Congress should not have to pass another law to undue what SCOTUS has done. The judicial exceptions are not in the law.
                  The were dreamed up by SCOTUS. That’s what I mean by SCOTUS is wrong. What if Congress repassed 101. Would that be enough to make the judicial exceptions go away?

    2. Joachim,

      Your analysis states that the invention “is an obvious combination for the last 30 years at least.” If that is so, why not reject this under 103, obviousness? This is exactly what is wrong with the new 101 rejections. It inherently imports an obviousness analysis into 101.

      1. Isn’t looking at the combination (the synthetic knowledge staked out by the claim) the second step of the Alice test? Here the claim involved (slightly) more than analytic knowledge (I hate the SCOTUS terminology), but the something more was not sufficient to provide 101 eligibility.

        1. If looking at combinations of prior art is part of a 101 analysis, then what good is 103? The something new should be interpreted as “does the claim add a limitation so that an entire industry is not covered by the claim,” not something new over the prior art. This analysis should be performed on each limitation of the claim, not a generalization of the claim. Ignoring limitations in the claim for any part of a patent eligibility analysis is improper.

          1. Ignoring limitations in the claim for any part of a patent eligibility analysis is improper.

            The limitations aren’t being “ignored” but rather they are being acknowledged as purely functional and therefore worthless for conferring eligibility.

            If you want to add something new to an old device to render that device eligibile for patenting, that “new” something can’t be “new information” or “new instructions”. It should be be something with objective physical structure. Otherwise you are just claiming some new functionality. New functionalities aren’t eligibile subject matter.

              1. are you suggesting that functional claiming is now prohibited based on the new 101 standard?

                Nope.

                Are you suggesting that the fact that you can’t patent an allegedly “new” object over an old object purely on the basis of some new “function” ascribed to the “new” object is something fresh in the world of patent law? Because it’s not. Not at all.

                But it is a fact, and it’s going to bite a lot of people who chose to stick their heads in the sand for the sake of invalid patents like this one. Good riddance.

                1. “Are you suggesting that the fact that you can’t patent an allegedly “new” object over an old object purely on the basis of some new “function” ascribed to the “new” object is something fresh in the world of patent law? Because it’s not. Not at all.”

                  Agree it is not a new concept. This analysis is already set forth in 103. What I am saying is that rejecting claims over prior art is improper for a 101 analysis.

                2. What I am saying is that rejecting claims over prior art is improper for a 101 analysis.

                  No, it’s not improper at all and the Supreme Court has addressed this issue point black in Prometheus. You should focus your attention on understanding the logic of that decision because it is extremely important and it’s not going away.

                  It’s essential to be able to compare the limitations in a claim with the limitations in the prior art because, for many claims, that’s the only way to determine if the claim protects ineligible subject matter. Here’s a simple example to help you understand this fundamental concept:

                  1. A method comprising (i) drinking caffeinated coffee and (ii) thinking about a new, non-obvious Matisse painting (disclosed for the first time in the patent application).

                  Now, consuming a drug is generally eligible subject matter but the particular step recited here is old. The new step — thinking about the Matisse painting — is ineligible. The claim as a whole is ineligible because it protects the ineligible subject matter. I drink coffee. The claim turns me into an infringer when I think about this new painting. See how that works? This is incredibly important to understand. This is what Mayo v. Prometheus was about.

                  The bottom line is that there are no “magic words” that get you across the eligibility hurdle. There are “clues” that cut in either direction, but no “magic words.”

          2. Chakrabarty is about a nonnaturally occurring manufacture or composition of matter – a product of human ingenuity having a distinctive name, character, and use. Diamond v. Chakrabarty, 447 US 303, 309-10(1980). Let us not insult each other’s intelligence by pretending that the claim is not a software claim disguised under the thin veil of a hardware and as such, is software a manufacture or composition of matter? Its neither so i don’t see how Chakrabarty applies.

            Based on available precedents, the Supreme Court bifurcated 101 “new and useful” from “novelty” under 102 and “obviousness” under 103. Under 101, basic tools of scientific and technological work are treated as though it was a familiar part of the prior art, even when it was in fact unknown at the time of the claimed invention. Parker v. Flook, 437 US 584, 591-92(1978) (“Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” it is treated as though it were a familiar part of the prior art.”). O’Reilly v. Morse, 56 How. 98, 120 (“he claims a patent, for an effect produced by the use of electro-magnetism distinct from the process or machinery necessary to produce it”…”And a patent for such a claim is as strongly forbidden by the act of Congress, as if some other person had invented it before him”)

            101 does not stop to solve whether it was more than the skill of the art to combine prior art references to make obviousness determinations. MacKay Radio & Telegraph Co. v. Radio Corp. of AMerica, 306 US 86, 94 (1939) (“But we do not stop to solve the problem whether it was more than the skill of the art to combine the teaching of Abraham with that of Lindenblad and others who had pointed out that the arrangement of the wires at an angle enhanced directional radio activity along their bisector. We assume, without deciding the point, that this advance was invention even though it was achieved by the logical application of a known scientific law to a familiar type of antenna”). However, 101 does distinguishes purely “conventional or obvious” (obviously, “purely obvious” and “obvious” are two different concepts) steps that are insufficient to transform an unpatentable basic tool of scientific and technological work into patent eligible application of such tool because patentable subject under 101 is not like a nose of wax which may be turned and twisted in any direction. Mayo Collaborative v. Prometheus Labs., 132 S. Ct. 1289, 1298(2012). Flook, 437 US at 590.

            One major misconception about Diehr is that it is inconsistent with Flook. While Diehr corrected a misinterpretation of Flook where judicial exceptions should be distinguished from application of judicial exception by reading the claim as a whole rather than by dissection, Flook, 437 US at 594 n. 16 (“Section 103, by its own terms, requires that a determination of obviousness be made by considering “the subject matter as a whole.” 35 U. S. C. § 103. Although this does not necessarily require that analysis of what is patentable subject matter under § 101 proceed on the same basis, we agree that it should”), Diamond v. Diehr, 450 US 175, 188, the statement that “the novelty of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101” in Diehr merely affirmed Flook’s holding that “Novelty” was not a determining factor at all under 101. Flook, 437 US at 591 (“Indeed, the novelty of the mathematical algorithm is not a determining factor at all”).

            Rather, “novelty” is the concern of 102. Diehr, 450 US at 190 (“§ 102 covers in detail the conditions relating to novelty”). Diehr recognized that “new and useful” refers to type of subject matter eligible for patent and that judicial exceptions are not “new and useful”. Diehr, 450 US at 189 (“the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.”) Id. at 185 (“Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas”). Id at 195 (“The mental-steps doctrine was based upon the familiar principle that a scientific concept or mere idea cannot be the subject of a valid patent”).

            To the Supreme Court, “new and useful” determination under 101 must be made prior to factual findings about “novelty” and “obviousness” under 102 and 103. Flook, 437 US at 593 (“The obligation to determine what type of discovery is sought to be patented must precede the determination of whether that discovery is, in fact, new or obvious”). Accordingly, there is no conflation between 101 and 102+103.

            Additionally, 112 is an imperfect tool to ensure that exclusive rights granted has a scope limited to inventors’ discoveries (“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). Under Federal Circuit precedents, A claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. Union Oil Co. v. Atl. Richfield Co., 208 F.3d 989, 998 (Fed. Cir. 2000). It is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation. LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005).

            Under these standards, it is entirely possible for Morse to disclose sufficient variations of his delicate machineries for printing characters at a distance using electromagnetism to enable the claim to the use of electromagnetism to print characters at a distance, however developed. Additionally, it is also possible for Myriad to enable the claim for genetic code in isolated BRCA genes, which would include a molecule of BRCA gene + one additional nucleotide pair and that Myriad did not invent. Ass’n for Molecular Pathology v. Myriad, 133 S. Ct. 2107, 2118 (2013). Without 101, these claims would have satisfied the conditions of 102, 103, and 112 to pre-empt entire fields of science to prevent all future development of these basic tools of scientific and technological work as the scope of such patent protection extends to not only what the inventors discovered, but also discoveries not made by the inventors.

            If anything, enablement under 112 only supplements the pre-emption analysis of 101. Therefore, i would argue that the Supreme Court did not conflate multiple patent statutes, but allow one statute to supplement another in order to ensure that as a whole, these statutes are consistent with “To promote the Progress of Science and useful Arts, by securing for limited Times to…Inventors the exclusive Right to their…Discoveries”.

            Indeed, at a time when even money, as a manifestation of speech, is protected under the Constitution and Government may not so regulate without strict scrutiny, it would be unbelievable that government could regulate ideas and thoughts, which speeches are mere expressions thereof, through patents. While 101 “new and useful process” does not prohibit informational / data processing steps, “new and useful process” does prohibit the idea of informational / data processing without particular applications thereof. In that manner, the district court is correct to hold claim 16 patent ineligible.

            Claim 16 calls for gathering of network communication usage information to generate data records in a database about network usage by users across a network, this database may be useful for queries to generate a report.

            Under Step One, Claim 16 contains a principle for gathering information to generate a database and a motive that such database should be useful to generate a report. Since the Supreme Court held that fundamental truths, original cause, motives, algorithms and mental processes or abstract intellectual concepts are abstract ideas ineligible for patents, Diehr, 450 U.S. at 185-86 . Gottschalk v. Benson, 409 U.S. 65, 67 (1972), Claim 16 contained two abstract ideas. They are treated as though they are familiar parts of the prior art regardless of whether they are in fact unknown at the time of the claimed invention.
            Under Step Two, we asked whether there are something more? In another word, are there unconventional or non-generic steps not necessarily required by the principle? Ultramercial, Inc. v. HULU, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013) (“whether implementing the abstract idea in the context of the claimed invention inherently requires the recited steps…steps were those that anyone wanting to use the natural law would necessarily use”). Mayo, 132 S.Ct. at 1298 (“Anyone who wants to make use of these laws must first administer…so the combination amounts to nothing significantly more than an instruction to doctors to apply the applicable laws…”). id. at 1299-30 (defining conventional steps as steps that must be taken in order to apply the laws in question).
            Further, even though application of a judicial exception to a known process may well deserve patent protection, Diehr, 450 U.S. at 187, is application of the principle in question to a known process an ordered combination that is more than just purely conventional or obvious steps that amounts to adding the words “apply it, however developed”?
            The computer codes for collecting network communication usage information across a computer network necessarily requires collecting such information, whether in real time or in past times, from a plurality of network devices at a plurality of layers. This is similar to Flook’s B[1] = Bo (1.0-F)+PVL(F), 1 > F > 0, Bo is the current alarm base, K is a predetermined alarm offset, and PVL is the present value of a process variable in hydrocarbon conversion necessarily requires the step of measuring the present value of the process variable.
            The computer codes for completing a plurality of data records on the network communications usage information corresponding to network usage of plurality of users and storing such record in a database are necessary steps to the extent that by definition, database is a collection of records on particular information. In effect, this step simply provides the motive of a generic database, to gather a record of network usage by each user. This is much like creating shadow credit records and shadow debit records for the motive of exchanging credits and debits at a particular time in Alice.
            Further, computer codes for making resource consumption queries to generate reports on user consumption of network resources are merely motives, much like Flook’s motive that B[1] = Bo (1.0-F)+PVL(F) be used for catalytic conversion. As a whole, the claim amounted to a per se recital of two abstract ideas in chronological order that posed a serious danger of pre-empting the use of these two ideas. Accordingly, my opinion is that the Court is correct in holding the claim ineligible.
            Finally, recitation of A computer program product stored in a computer readable medium for reporting on a collection of network usage information from a plurality of network devices is purely obvious. “Purely obvious” should mean something different from “obvious” to the extent that it is “purely obvious” that the sky is blue, that LCD panel is useful to display something, that a computer USB drive saves data, and subject matter that are so obvious that there is no need to determine whether there is teaching, suggestion, motivation, predictable substitution of known methods and other KSR factors. The preamble, even given patentable weight, is purely obvious because it amounted to apply the following ideas using a computer.
            Now if the claim recites details about how the records are generated and what this predetermined report is, these details may very well transform the claim into patent eligible implementation of the two abstract ideas.

            1. too long didn’t read most of it, but I tuned in at the end.

              “Now if the claim recites details about how the records are generated and what this predetermined report is, these details may very well transform the claim into patent eligible implementation of the two abstract ideas.”

              Hilarious!

            2. Richard, I think that was a summary of the Supreme Court jurisprudence on section 101. It does seem confused.

              I think the analysis of Hotel Security is what they are really following, and it is a lot simpler:

              When a claim mixes statutory subject matter with nonstatutory subject matter, invention must be in the statutory subject matter.

              Now there, wasn’t that a bit simpler?

              1. Now if you could only get that pesky business of the fact that the SCOTUS has never said that information processing is non-statutory out of the way, then you might have an argument.

                Yes, let’s all use case law before computers were even invented and before modern philosophy of the mind.

                Anti-information processing patent propaganda.

                1. “Now if you could only get that pesky business of the fact that the SCOTUS has never said that information processing is non-statutory out of the way, then you might have an argument.”

                  Right, because SCOTUS has to go category by category to finally knock some sense into you guys. How many years will it take for them to address all ineligible categories? 100? Forever?

                  “Yes, let’s all use case law before computers were even invented and before modern philosophy of the mind.”

                  The law typically remains the same regardless of what inventions come about so far as I’m aware. Likewise, I’m not sure that philosophy somehow magically changes the law. That’s what got the federal circuit into trouble most likely. Thinking new philosophies somehow impact the law.

                2. Benson does not hold that information processing is non-statutory.

                  In fact, the Court in Benson goes out of its way to say that such is not what they are doing.

  14. Yet another poor decision by a jurist that has zero experience with patent law, or at, at a minimum, prior technical experience. The attorneys that spent a whole career learning technical specialties and the intricacies of the patent system are being swept aside by judicial opinions crafted by jurists without the intellectual ability to understand technical concepts.

    From Wikipedia: Brinkema was born in Teaneck, New Jersey. She received her B.A. from Douglass College in 1966 and undertook graduate studies in philosophy at University of Michigan, Ann Arbor (1966) and New York University (1967–1969). She earned her M.L.S. at Rutgers University in 1970 and her J.D. at Cornell Law School in 1976.

    1. In point of fact, her background is not bad for analyzing 101 issues. An abstract idea is a concept of epistemology. An attorney unfamiliar with epistemology and linguistics is probably not properly educated to deal with eligibility under 100.

    2. Interesting. I came to the opposite conclusion.

      That is, I think if you cannot explain in simple terms to a district judge, who is undoubtedly very bright, why this patent should exist: then it should fail.

      I’d go further and make the same argument about a juror.

      The law, including patent law, impacts the entire public. Everybody should be able to understand it. With some help from attorneys, no doubt.

              1. Wrong again. Patentability has several SEPARATE requirements. For example, you seem to be conflating patent eligible with new and non-obvious. They are SEPARTE requirements. Hope that helps.

                1. That is what patenting software is doing.

                  Just because it might be new and non-obvious still shouldn’t make it patentable.

    3. Yet another poor decision by a jurist that has zero experience with patent law, or at, at a minimum, prior technical experience.

      We need decisions like this and McRo v. Activision, where purely technical inventions with clear technical effect are being rejected as “abstract.” The more egregiously the district courts overreach, the faster the CAFC and Supreme Court will be forced to reign in the currently unlimited scope of the Alice decision.

      (And it’s going to be fun watching them struggle to “clarify” their earlier comments – inventing boundaries that contradict the complete subjectivity of the Alice rationale… and pretending that the boundaries have been there all along, but no one else could see them.)

      1. We need decisions like this and McRo v. Activision, where purely technical inventions with clear technical effect

        What makes this invention a “purely technical invention” with “clear technical effect”? i.e., what’s the test for “purely technical” and “clear technical effect”?

        It looks like functionally claimed garbage to me and I imagine it looks that way to most people who know what a computer is, how it works, and has a decent high school education.

  15. New steps to proving invalidity:
    1. Generalize the details of the claim language, omtting some limitations entirely if necesary.

    2. State that the generalization of the claims is an abstract idea.

    3. State that the generalization of the claims does not add something new to the field.

    This can work for ANY claims. It is dead wrong.

  16. How much of the software the patent owner here alleges is unique, novel and not an abstraction is disclosed and enabled in the patent specifications? There is no discussion of that in this decision, yet would not that seem logically relevant to the question of whether or not something is abstract or not?

    1. One rarely identifies what is alleged to be novel in a specification. What is generally the specific combination of elements recited in the claims.

      What matters is what is in the claims.

      1. Of course, but it certainly matters whether their is any spec enablement support for what is beng claimed in the claims, not just for 112 but to be consistent with arguing in litigation, as here, that what is claimed is novel and not abstrct.

        1. The issue is the wording of the claim.

          If the spec detailed thousands of lines of code for each claim element, I don’t see it having any bearing on whether “computer code for filtering and aggregating the network communications usage information;” is deemed to be “abstract” or not….unless its interpreted as “means for”, which i didn’t see any hint of here…and which it shouldn’t be…. as the magic “means for” phrase was not included in the claim.

    2. How much of the software the patent owner here alleges is unique, novel and not an abstraction is disclosed and enabled in the patent specifications?

      Which aspects do you believe are not enabled by the specification?

    3. Paul, I don’t think a claim the pure software is going to ever pass the Alice test primarily because there is no improvement in computer hardware or technology.

      1. Pure software cannot improve computer hardware or technology.

        Some examples of “pure software that improve computer hardware or technology”:

        (1) Thread management techniques identify and suspend background processes in order to conserve processor cycles and extend battery life, and can bring them back to life so quickly that the user can’t even tell that they weren’t running.

        (2) Memory defragmentation techniques compact data into contiguous blocks of physical memory, thereby speeding up the reading and writing of that data, and allowing other data to be written contiguously to consolidated blocks of free memory.

        (3) Hashtables allow a desired record to be found among millions of records with one or two steps, rather than requiring an exhaustive search.

        (4) Checksums enable the detection of the modification or corruption of stored data, and that allow the computer to recover lost data through reconstruction.

        Do you agree that these techniques “improve computer hardware or technology?”

        1. No hardware improvements anywhere.

          #1 optimizes a task, not the hardware.
          #2 does the same.
          #3 is just a different algorithm, but nothing hardware.
          #4 detects failures, again, not an improvement of hardware.

          The word “technology” is vague. Do the changes improve the software? yes. But that should not make it subject to a patent – after all, they are all math, being applied to math.

          1. #1 optimizes a task, not the hardware.
            #2 does the same.

            Sort of like how Diehr’s claim didn’t “optimize hardware,” but “the task of determining the progress of curing a compound?”

            1. Nope. Not even close.

              It didn’t even determine the progress – but made an assumption.

              Since it was based on time, all it needed was a simple mechanical clock.

                1. well, time and temperature, I should have said.

                  That still shouldn’t make the software patentable any more than it made the formula used patentable.

        2. David, without getting into the details of each of the claims, if the claims are claimed in the context of an improvement to a computer system, as are the claims in Alappat, I think the computer system, which is otherwise statutory subject matter, is improved even if the only difference between the old and the new is software.

          The improvement has to be in subject matter which is otherwise statutory.

          Again think of the printed matter doctrine. While printed matter alone is nonstatutory, if it is functional with respect to the statutory so as to improve the statutory subject matter, then the claim as a whole defines statutory subject matter.

          I speak of pure software here in the same context as with printed matter that has no functional relationship to the underlying subject matter so as to improve it.

  17. What a circus sideshow. Each one of these decisions is stepwise more absurd than the one which preceded it.

    1. Bluto, why of course, the sky is falling – on business method and pure software patents. But this is the whole point, is it not?

      1. The Supreme Court said specifically that that was NOT the point. However, it seems that they were too short sighed to see that that would be the effect.

  18. Your Honor:

    “A person may have invented an entirely new and useful advance, but if the patent claims sweep too broadly” then it should only take the Patent Examiner 10 minutes to find art to reject the claim under 35 USC 102.

    Also, the is a claim to a manufacture, a computer readable medium. It is PURE hardware.

    1. Maybe I am misinterpreting the claims, but it seems like the claim is directed to software, not hardware. From the preamble:

      “A computer program product stored in a computer readable medium…”

      Isn’t that a lot like “an abstract idea stored in a brain…”

      Let’s assume we agree that a software and hardware in a claim together can be statutory, this claim just seems to tell us where the software resides, not how it improves the functioning of the machine itself?

      Help me out here.

      1. “Isn’t that a lot like “an abstract idea stored in a brain…””

        Do explain how you came to this correlation.

        1. I wasn’t make a statement, I was asking a question in response to a previous post.

          The previous poster said the claim was directed to PURE hardware. In my post, I explained that it appeared to me that the claims merely recite the location of the software and are therefore not directed to purely hardware. My question is more along the lines of: how does reciting the location of the software in the preamble make the claims directed to purely hardware?

          Not trying to be confrontational, just curious. Apologies if my “brain comment” revives previous debates, that is not my intention.

            1. “Its a claim to a computer readable medium. For example, a CDROM. Thats hardware.”

              That’s what I thought too Les!

              But since when have you seen a CD ROM that has this happening inside of it?

              “resource consumption queries are submitted to the database utilizing the reports for retrieving information on resource consumption in a network

              and

              a resource consumption report is outputted based on the resource consumption queries.”

              Last time I saw a CD it was just a lump of plastic sitting there! It had nothing so complicated as all that going on inside of it!

              1. Why did you start the quote where you did. That quote begins with the word “wherein”. the language above the wherein describes computer code. Clearly the stuff that comes after the wherein further describes aspects of the computer code.

                The claim does does not indicate activity is going one in the CD. The claim describes activities controlled or called for by the computer code on the CD.

                …but you knew that, right?

                So, what was your point?

                1. “the stuff that comes after the wherein further describes aspects of the computer code.”

                  So all that stuff happens inside the computer code? I’ve never seen computer code with things like that happening inside of it. Computer code is 1’s and 0’s bro. Not steps.

                  I started the quote where I did because that is where the applicant started drafting like a re t ard.

                  “The claim does does not indicate activity is going one in the CD. ”

                  Well that’s a relief. Maybe they should write the claim to indicate such. Chefs in ‘Merica are unforgiving of such things.

                  “…but you knew that, right?”

                  Brosef, I know what they intended, and what they wrote. I also am familiar with Chefs in ‘Merica, and if I were opposing counsel I would beat them across the brow with it.

                2. “So all that stuff happens inside the computer code?”

                  No. The computer code is FOR the various functions.

                  You do know what computer code is right? Computer code is executed by a processor. It is that execution that carries out or provides the functions.

                  But you knew that. Why are you being so obtuse?

          1. It’s a claim to a “computer program” stored on a readable medium. The limitations describe the code for the program in purely functional terms.

            Of course such a claim protects software.

            An old CD-ROM (or any other “computer readable medium”) does not and can not become patent worthy because of the information printed on it, especially when that information is described only in terms of its functionality.

            B-claims are dead as doornails and nobody will ever succeed in enforcing one if the defendant refuses to back down.

            That’s been true since forever. All it took was smart defendants willing to make the arguments.

            1. “It’s a claim to a “computer program” stored on a readable medium. The limitations describe the code for the program in purely functional terms.”

              So what? It is still a “manufacture.” and it passed the low hurdle of 101.

                1. It’s a given that it is a manufacture.
                  – but the Court does not care.

                  It’s a given that some claims are to machines.
                  – but the Court does not care.

                  The Supreme Court has basically dismissed any of the categories in their “gist” mantra.

                  This is the opposite extreme of “nominalism” – but you do have a slight problem with the Court taking this rather non-implicit step of removing the statutory categories under 101. That problem is pretty clear under the “doctrines” of statutory construction (you cannot make the words of Congress so disappear).

              1. A “book” is also a “manufacture” Les.

                Try to patent a new book based only on the new, non-obvious useful information printed in the book. You’ll get a 101 rejection. It might be a 101 rejection disguised as a 102/103 printed matter rejection, but the issue is eligibility and you won’t get an enforceable claim.

                There’s nothing new about this concept. It’s necessary and essential to any patent system with restrictions on what is and what is not eligible subject matter.

                1. This analogy is logically incoherent and denies basic truth about what a computer is/does and what a book/is does. Matter printed onto the pages of a book does not and can not cause the book to do anything.

                2. Bluto: Matter printed onto the pages of a book does not and can not cause the book to do anything.

                  Same is true of information printed on a CD-Rom.

                  The CD-ROM and the book both just sit there. They don’t “do anything” except store the information for retrieval. The fact that the information in the book or on the CD-ROM can impart “functionality” to a machine that is configured to read the information doesn’t change the analysis.

                  This analogy is logically incoherent

                  No, it’s very logical.

                  denies basic truth about what a computer is/does and what a book/is does.

                  No, that’s not true at all. There’s no “denial of basic truths.” Okay, maybe you’re denying the “basic truth” that machines can read information printed on paper but that’s about it.

                  The “basic truth” is exactly what I told Les. If your lawyer is telling you differently, you need to find a new one.

                3. “Same is true of information printed on a CD-Rom.”

                  Really? In what world do you live that a CD-Rom can’t cause a computer to behave differently when used by the computer?

                  How is that again that printed matter can cause a book to do anything?

                4. Matter printed onto pages of a book does not and can not cause the book to do anything.

                  Data printed onto layers of a CD-ROM does not and can not cause the CD-ROM to do anything.

                  The surface of a CD-ROM contains tracks with pits. A CD-ROM is inserted into a CD player. The CD is made to spin in the CD player. A laser is aimed at the surface of the CD-ROM which has the tracks and pits. The CD player “reads” the data encoded to the tracks.

                  The CD-ROM is made to spin. The CD player “reads” the data. The CD-ROM performs no actions (on the CD player or on anything, except perhaps exert pressure if you insist on being obtuse). The CD player does perform actions on the CD-ROM.

                  Your argument is logically incorrect and denies the basic physics of what happens when a CD-ROM is used in a computer.

                5. We all know what a CD-Rom is, thanks bert.

                  Let’s try to be less dense/fastidious and consider the same “printed material” that is stored in memory of a computer. Tell me that those instructions don’t cause the computer to provide a host of functionalities (methods) that would not be present if the “printed material” were excised from memory.

                6. Just a point of order about the “a book doesn’t do something”. You could make a computer that uses character recognition/etc to scan a book and execute the commands therein, just as in a CD-ROM. Of course it is easier if its on a CD, because that is a book specially adapted to be read by a certain kind of computer part, but they are nonetheless the same. From a principled point of view.

                7. With all due respect, Bluto, you need to raise the level and tone of your arguments.

                  I wasn’t born yesterday. I’m very familiar with the “arguments” that software patenting proponents rely on and I know when someone (e.g., you) isn’t up to the task of defending them.

                  I’ll give you a helpful hint and suggest that at this stage in the game it would be wise for proponents of software patenting to find better arguments rather than double down on the worst ones.

                8. Bluto Tell me that those instructions don’t cause the computer to provide a host of functionalities

                  Tell me where any actual computer-readable “instructions” appear in the patent claim.

                  They aren’t there. This is a fantastically huge problem for your “argument” and until software patenting proponents begin taking reasonable steps to address it — steps that require a complete re-write of the status quo — they are going to keep losing in very big ways. Just watch and see. And yes I do know what I’m talking about because I knew we’d get to this point and I knew why and I told you about it for your years. The next shoe is going to drop very shortly.

                9. Alex:

                  “you could make a computer that uses character recognition/etc to scan a book and execute the commands therein”

                  Again, how is it that a book with printed matter can provide this functionality? How does one “make a computer” that does X, Y, and Z? Oh yeah, that’s right, it’s called instructions (i.e., software) that are executed by a processor.

                  Can a book perform a method?

                10. Any time I see “legal discussions” in patent law using things such as books or movies, I know that we have left the domain of trying to have a real discussion.

                  What did that one guest writer call it? “Not even wrong”

      1. One cites a dated video of some kid doing it, or a report of a kid doing it. Else one allows the claim.

        In any event, one does not reject it under 101, as it is a process.

    2. Les, the is a claim to a manufacture, a computer readable medium. It is PURE hardware.

      My, my, aren’t we showing our nominalist’s stripes today.

  19. “It is probably important to pause here to consider what considerations make us think that a network usage database creation and report tool is abstract.”

    It seems you’re jumping ahead in the analysis. Judge Brinkema did not say that a network usage database creation and report tool is abstract. She said using a database to compile and report on network usage is an abstract idea.

    1. Thanks Thomas – Elsewhere in the opinion, Judge Brinkema did link together the method and the system and the software – saying that they are all equivalent for 101 analysis.

      1. “Elsewhere in the opinion, Judge Brinkema did link together the method and the system and the software – saying that they are all equivalent for 101 analysis.”

        All equivalent for result, anyway. If you’re referring to page 12 of the opinion, that was not part of step one or step two of the analysis. It was procedure taken from prior cases for determining that the product, method, and system claims rise and fall together.

  20. Dennis: “It is probably important to pause here to consider what considerations make us think that a network usage database creation and report tool is abstract.”

    What hardware is improved?

    That’s right. None.

    This is pure information processing and such is not eligible because information is non statutory and information processing is nonstatutory.

    It is good the courts are getting it right.

    1. “This is pure information processing and such is not eligible because information is non statutory and information processing is nonstatutory.”

      Nonsense, Ned. Informational/data processing is a much statutory as any other processing technology. Where does 35 USC 101 specifically exclude information/data processing? Nowhere, and that’s the problem with the broken Alice test which is utterly subjective, pays no adherence to prior precedent, especially Diehr and Chakrabarty, is brazen unconstitutional overreach by the Royal Nine, and conflates multiple patent statutes.

      1. EG, Where does 35 USC 101 specifically exclude information/data processing?

        Nice strawman argument there — just like Rich’s strawman in State Street Bank.

        1. No strawman, Ned. Just pointing out that there is no specific exclusion of information/data processing in 35 USC 101.

          Note also this statement from Diamond v. Chakrabarty: “We have also cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’ United States v. Dubilier Condenser Corp., 289 U.S. 178, 199 (1933).” So who is engaging in “strawmen,” Ned?

          1. No doubt, EG, that there is no express exclusion of information processing; but that does not mean that information processing is statutory. We do have a statute – that defines statutory subject matter (other than processes) as new or improved, useful, machines, manufactures, or compositions. Information is not one of these.

            Clearly a process that only manipulates nonstatutory subject matter is itself nonstatutory. For example, a number is nonstatutory. A mathematical process therefore is nonstatutory as such only manipulates numbers. Another example might be “love.” A process of “making love” cannot possibly be statutory, although I can imagine USPTO issuing such a patent because they are not equipped with any reasonable tools to deny patents to processes involving nonstatutory subject matter. But to do so a make a laughingstock not only of the patent office, but of the patent system.

            But there is no exclusion of mathematics because mathematics can be used to improve otherwise statutory processes or otherwise statutory machines. Diehr is a very good example of such a statutory process that was improved by the use of nonstatutory subject matter.

            So even if information is not excluded by some statute from eligibility does not mean that information is statutory. Information clearly is neither a machine, a manufacture, or composition of matter.

                1. Dennis, one cannot patent information, period.

                  If the PTO continues to issue patents on information, we still have a problem.

                2. 1. A method for producing a high moisture, non-fat cheese sauce comprising
                  (a) heating a mixture comprising skim milk cheese having from about 40% to about 60% moisture and a milk protein source having from about 3% to about 70% moisture to an elevated temperature of from about 160° F. to about 190° F. with agitation so as to form a homogeneous mixture of said cheese and said protein source;
                  (b) continuing said agitation at said elevated temperature while adding a polyphosphate salt, starch and a gum to said heated mixture;
                  (c) continuing said agitation at said elevated temperature for a period of time sufficient to gelatinize said starch and permit said polyphosphate salt to interact with the casein of said cheese and said protein source and form a stable, high moisture, non-fat cheese sauce having from about 70% to about 90% by weight of water; and
                  (d) packaging said cheese sauce while the temperature of said cheese sauce is above about 100° F.

                  Publication number US5304387 A
                  Publication type Grant
                  Application number US 07/891,732
                  Publication date Apr 19, 1994
                  Filing date Jun 1, 1992

                  1. A method of preparing a pizza comprising the steps of:
                  forming a pizza shell;
                  applying a predetermined quantity of sauce to an upper surface of said pizza shell to form a pizza base;
                  cooking said pizza base at a first predetermined temperature for a first predetermined time period;
                  maintaining said sauce in an uncoagulated state during cooking of said pizza base;
                  cooling said pizza base for a predetermined time period;
                  applying a predetermined quantity of pizza toppings; and
                  further heating said pizza base having said predetermined quantity of sauce and said predetermined quantity of pizza toppings thereon at a second predetermined temperature for a second predetermined time period.

                  Publication number US3360385 A
                  Publication type Grant
                  Publication date Dec 26, 1967
                  Filing date Sep 9, 1964

                  1. Method for forming a cranberry relish comprising the steps of (a) comminuting whole cranberries to form particles substantially all of which are less than one-half inch in maximum dimension but greater than 0.001 inch whereby there are present. in said relish discrete identifiable cranberry particles;

                  (b) cutting orange peel to form cube-like particles ranging in size from about one-eighth to one-half inch;

                  (0) adding the comminuted cranberries to a water solution of sugar and rapidly heating the resulting mixture to a temperature between about 180 and. 200 F.;

                  (d) adding the orange peel particles to the heated mixture and rapidly further heating to a temperature between about 200 and 215 F. thereby to form a relish product; and

                  (e) cooling the relish product as rapidly as possible to at least F. to protect color and flavor.

                  Publication number US3360385 A
                  Publication type Grant
                  Publication date Dec 26, 1967
                  Filing date Sep 9, 1964

                3. You are mistaken Jesse. METHODS are patentable subject matter. A recipe is a method of making something. Such methods are patentable.

                4. Les, The way things are EVERYTHING is a method, or something USED in a method.

                  Even thinking is a method.

                  I can accept a method where the goal of the method produces a physical object. But not all things in those “methods” should be subject to patents.

                  Like math, thinking,… or software.

                5. I see no reason to exclude new mathematical algorithms. No one can explain way a new recipe for making a drug should be patentable but a new recipe for calculating prime numbers should not be.

                6. Not “thinking” in the abstract. But, I have no problem with claims that recited new methods of thinking.

                  For example Einstein should have been able to patent something like:

                  A method of determining the energy equivalent of an object, the method comprising:

                  determining a mass of the object;
                  multiplying the determined mass of the object by the square of the speed of light to determine a mass- square of the speed of light product; and
                  identifying the determined mass-square-speed of light product as the energy equivalent of the object.

                7. Les, A recipe is a method of making something. Such methods are patentable.

                  May I suggest, Les, that you have a hard time distinguishing between a set of instructions and the actual method.

              1. Les, I see no reason to exclude new mathematical algorithms.

                Exclude?

                I am pretty sure that you recognize that a mathematical algorithm per se is simply information. You can write it in a book. Does the publication of the book infringe?

            1. “Clearly a process that only manipulates nonstatutory subject matter is itself nonstatutory.”

              More rhetorical nonsense, Ned. To use my late father’s expression, your statement “doesn’t hold soap.” Even assuming (but not conceding) that the information itself is nonstatutory, that doesn’t mean that a process that manipulates nonstatutory subject matter thereby becomes nonstatutory. What if you develop a seismic process that analyzes the underlying ground and determines what the strata are, thus the likelihood of oil being present. The ground and the strata aren’t statutory, but the process for determining what strata is there and likelihood of oil being present certainly isstatutory. There’s simply no expressed requirement in 35 USC 101 that a process, to be statutory, must itself manipulate, measure, etc., any statutory subject matter.

              1. I don’t believe the strata are being manipulated in this case.

                You are measuring (ie. creating information) physical events that can be used to derive other information.

                Now, you ought to be able to patent the process you follow to perform the measure. But after that, no.

                1. Irrelevant, Ned. Changes nothing as to why your argument that information/data processing technology is patent-ineligible “doesn’t hold soap.” Only you and the Royal Nine choose to ignore the express words of 35 USC 101 that has no such exclusion.

                2. EG, your problem, it seems, is that you will not accept, almost like a religious fanatic will not accept facts inconsistent with his belief system, that information is nonstatutory.

                3. “EG, your problem, it seems, is that you will not accept, almost like a religious fanatic will not accept facts inconsistent with his belief system, that information is nonstatutory.”

                  Ned, I could also say that “your problem” is that you can’t accept a difference of opinion. What you state is an opinion, not facts. Please understand the difference. That you believe, as opinion, that information/data processing is nonstatutory I don’t accept because I also don’t accept that there are these implicit “exceptions” to what 35 USC 101 expressly considers to be statutory subject matter, which includes processes. Only you and the Royal Nine believe that. I don’t for reasons already stated, including what I cited above from Chakrabarty. Get over it and move on.

                4. EG, but it requires no exception at all to find that information is nonstatutory. We have a statute after all. It has words. Those words have meaning. They have judicial interpretation.

                  Information is neither a machine, a manufacture or a composition.

                  This is not the case of something that is otherwise statutory that must be excepted.

                5. “EG, but it requires no exception at all to find that information is nonstatutory. We have a statute after all. It has words. Those words have meaning. They have judicial interpretation.”

                  Ned, please address my point which isn’t whether “information” is statutory but whether “information/data processing” is statutory. 35 USC 101 is clear that a process, is a process, is a process. There is no exception in 35 USC 101 that says a process involving “information/data” is nonstatutory. And there is no, repeat no case (including Alice, Mayo or Bilski) that says information/data processing per se is nonstatutory. That you believe otherwise doesn’t convince me one iota. Again, move on, this debate is going nowhere.

                6. EG, simply put, a process that only manipulates information and nothing more — not applied — can only result in what?

                  Information.

                  That is why information processing is nonstatutory.

                7. “EG, simply put, a process that only manipulates information and nothing more — not applied — can only result in what? Information. That is why information processing is nonstatutory.”

                  Ned, that’s just circular reasoning that proves nothing. Also (again), where do the cases say that information/data processing is per se nonstatutory? As far as I’m concerned, the debate is OVER.

                8. Hey Ned,

                  Check out the bio on Herman Hollerith (inducted into the Inventors Hall of Fame in 1990): link to en.wikipedia.org .

                  Note also U.S. Pat. No. 395,783 (Apparatus for Compiling Statistics) and U.S. Pat. No. 395, 782 (Art of Compiling Statistics), both granted January 8, 1889 (over 125 years ago). Do you still want to argue that data/information processing is nonstatutory?

                9. EG, machines for information processing are patentable. The greatest of all time, the computer.

                  I limit my remarks solely to methods having information in and information out. Benson is an example. Even confining the method to a computer was not “enough.”

                  The touchstone is that a method must produce a new and useful result. (Benson). Information out is what we got in Benson. That clearly is not “enough” and is not the kind of result the Supreme Court is looking for.

                  For case after case after Benson, the Supreme Court described mathematical processes as non statutory. Suddenly, they call them abstract in Bilski. But, in truth, they are non statutory and not an “exception” to an otherwise statutory process.

                10. “EG, machines for information processing are patentable. The greatest of all time, the computer.”

                  Then Ned, how do you explain the grant to Hollerith of U.S. Pat. No. 395, 782 which is on the art (process) of compiling statistics? Here’s Claim 1: “The herein-described improvement in the art of compiling statistics, which consist in, first, forming or arranging a stardard or templet indicating the relative position in which each itme or characteristic of the individual is to be recorded; secondly, forming a record of each individual or thing by locating index-points representing the characteristics of the individual and bearing a determinate relation to each other and to the standard, and , finally submitting said separate records successively to the action of circuit-controlling devices for operating the registering devices representing statistical items to be compiled, whereby each statistical item or combination of items when contained in the record of any individual is accurately registered.

                  In other words, data/information processing has been recognized as patent-eligible now for a century and a quarter. That’s fact, not opinion, something that makes the concurring opinion in Alice by Sotomayor et al. that “business methods” are patent-ineligible look foolish and out of step with the reality that is over a century old. It also makes the broken Alice test look even more arbitrary and nonsensical.

                11. EG, even if the claim includes nonstatutory features, If there is invention in the statutory the claim is eligible.

                  Since Hollerith is alleged to have invented the new machine that processed the inputs, the claim remains eligible even under Alice.

            2. “Clearly a process that only manipulates nonstatutory subject matter is itself nonstatutory.”

              Thats not clear at all Ned:

              9. A digital filtering method comprising:
              calculating a filter coefficient based on parameters inputted by a user;
              filtering an input RF signal in an FIR filter using the calculated filter coefficient;
              calculating a ripple coefficient of the signal filtered from the FIR filter; and
              filtering a ripple with a ripple filter using the calculated ripple coefficient,
              wherein the calculating the filter coefficient comprises calculating the filter coefficient in a coefficient calculation unit based on at least one parameter of a bandwidth, a frequency information, and the number of channels, which are inputted by a user through GUI.

              Publication number US8792536 B2
              Publication type Grant
              Application number US 13/526,666
              Publication date Jul 29, 2014

              link to google.com

              1. 1. A method for an Inverse Fast Fourier Transform (IFFT) in a communication system, the method comprising:
                determining an IFFT size based on a number of input information symbols, the IFFT size being the smallest power of two (2) that is greater than or equal to the number of input information symbols; and
                performing an IFFT operation based on the determined IFFT size,
                wherein the performing of the IFFT operation based on the determined IFFT size comprises:
                determining a number of butterfly corresponding to the determined IFFT size, and
                performing a butterfly operation based on the number of butterfly,
                wherein the butterfly operation includes processing the information symbols based on corresponding at least one of radix-22 and radix-2 patterns.

                Publication number US8724716 B2
                Publication type Grant
                Application number US 12/327,796
                Publication date May 13, 2014

    2. To quote a wise man: “Nonsense Ned.”

      1. Hardware improvement is not a statutory requirement.

      2. Hardware is improved.

      If you are talking about what it actually claimed, the computer readable medium is improved by being configured to carry the recited computer code. If you are talking about the computer that ultimately reads the computer readable medium and operates accordingly, it is improved by its new ability to perform the functions provided by the code.

      1. “…the computer readable medium is improved by being configured to carry the recited computer code”

        By that phrase it can also be said to dis-improve the medium as it can no longer be configured to carry some other computer code.

        It can also be said that the code disimproves the computer by causing additional overhead.

        1. Yes. But “improvement” is in the eye of the beholder.

          And “improvement” is not a requirement for patentability. Just non-obvious novelty within the enumerated categories.

      2. the computer readable medium is improved by being configured to carry the recited computer code

        “Recited computer code”?

        LOLOLOLOLOLOLOL

    3. Ned,

      If a device that performs information processing is non statutory, devices as the following are non-statutory: clocks, watches, tachometers, speedometers, televisions, monitors, oscilloscopes, Geiger counters, etc.

      Do you believe all of these devices are non-statutory devices under 35 USC 101?

      1. If a device that performs information processing is non statutory

        I don’t see Ned making any such argument.

        That raises the question: why are you making it?

        New information processing devices are certainly statutory. But they need to be distinguished from prior art devices based on something more than the mere recitation of their “new” information-processing functionality.

        Get it?

        I hope so. It’s not like we haven’t been telling you this for years.

      2. Mr. rational, it is not a question of whether the device that performs the information processing is statutory or not. This is another red herring/straw man argument long pursued by the likes of Judge Rich and some members of the Federal Circuit.

        In cases of claims that Mick statutory subject matter with nonstatutory subject matter, the novelty has to be in the statutory subject matter, e.g., the machine in the case of a programmed computer.

        1. Ned,

          So is your position that a mechanical watch that uses gears, springs and cams to provide a particular functionality would be statutory but a digital watch that uses software to provide the exact same functionality would not be statutory?

          1. I am not sure what the issues are. I could build a rubber mold controller that would provide the same functionality as Diehr but would work in a purely analogue manner by means of differential metal expansion. I could write a valid patent specification and claims for the new analogue rubber mold controller. The new claims would be quite different from those of the Diehr patent. I doubt there would be any interference between the claims of my analogue rubber mold controller and those of Diehr’s rubber mold controller.

            1. What if you constructed a digital controller using cams, gears, punchcards, etc. to provide the same functionality as in Diehr, wouldn’t that infringe the Diehr?

          2. Mr. Rational, obviously if one removes gears and levers etc. from a watch and substitutes a programmed digital signal processor of some kind, the overall claimed still remains patentable and for the same reason that Supreme Court ruled the claim as a whole patentable in Diehr – the nonstatutory subject matter is functional with respect to the statutory subject matter so as to improve the statutory subject matter. Thus there is improvement in the statutory subject matter as required by section 101.

    1. And not for the better. Another example of why the Alice test is utterly broken. The brazen unconstitutional overreach continues.

      1. From my point of view it is an improvement.

        Given any initial assumption (as derived from “requirements”) the result of programming is always a logical deduction given the rules of mathematics.

        Thus any programs are just a deduction based on the given requirements. Now translating those requirements into the initial conditions is hard. And that can be creative (even if it means ignoring some of the “requirements” as being contradictory to the other requirements), but that is outside the math.

        Once the initial conditions, and the goal, the result is always achieved by rigid, mathematical deduction.

        1. So your position is that clocks and watches should not be patent eligible under 35 USC 101, because their “programming” just provides results based on an initial condition?

          Also, with respect to clocks and watches, the initial conditions is usually considered the easy part, i.e., setting them to the current time. “Programming” these devices to keep providing the current time has generally been considered the hard part with respect to these devices.

          1. Clocks and watches don’t process information (assuming the mechanical ones for the time being).

            They use gears and inertia (with gravity or a spring) to unwind a spring at a mechanically set rate.

            No information there at all.

            1. First of all, watches do process information (the passing of time) and provide information (the time). Do they generate that information out of thin air? No. The receive and input (a start time) and process it bast on F=mA. In your example, the F comes from a spring. There’s a formula for the force of a spring too….

              Second. Are you agreeing that mechanical watches are patentable but asserting that digital watches are not?

              Its only electronic devices that are not patent eligible in your view?

              Why? Because you can’t see the movement of electrons?

              1. Are you agreeing that mechanical watches are patentable but asserting that digital watches are not?

                That would depend on the claim describing the “digital watch”, wouldn’t it, Les?

                watches do process information (the passing of time)

                A cake processes information (the temperature of the oven).

                A shadow processes information (the position of the sun).

                Of course I’m joking. But you’re not joking … are you, Les?

                1. Let me rephrase.
                  Watches process information, a start time and the force of a spring and the weight of a mass and the fact that the mass has traversed a cycling path, driven by the force of the spring. That is, a watch counts cycles and adds that count to an initial setting and displays the result.

                  Different watches achieve that count differently, presumably with different degrees of stability and power the process differently. That is, they embody different methods, different patentable methods, some of which are implementable in generic computers.

                2. No…

                  Watches only process mechanical forces.

                  Not information.

                  Any information extracted from the watch is done entirely in your mind.

                3. Watches can be thought of as process mechanical forces to generate information. The generated information is displayed of the face of the watch.

                  Another way to think of a watch is as processing information generated by the mechanical forces, such as the position of a cog moved by the mechanical forces.

                  Either way, you are wrong. Watches process and display information.

                4. Les,
                  Watches can be thought of as process mechanical forces to generate information.

                  Another way to think of a watch is as processing information generated by the mechanical forces, such as the position of a cog moved by the mechanical forces.

                  Either way only takes place in your mind.

                  Not in the watch.

                5. Jesse –

                  “Information processing consists of an input-output function that maps any input sequence from χ into an output sequence from ϒ. The mapping may be probabilistic or deterministic.”

                  That is exactly what a watch does (mechanical or otherwise).

                  link to en.wikipedia.org

                6. no. A watch does not.

                  A “watch” is just a mechanism to provide a nearly continuous output force at a given rate.

                  There is no information input other than setting that rate – and that rate is set by a person going “it is too fast” or “it is too slow”.

                  Any information output is created by the person interpreting the positions of some “arms”, which are assumed by that person to indicate a time. If the “time” is wrong, the person can move the arms… The mechanism has no effect on the “information”, it just keeps turning as long as it has power.

                  Even water clocks don’t process information. The person does by reading the water level.

                  It is the mechanism that should be patented. Not the information that is derived from the mechanism.

                7. Jesse –

                  “There is no information input other than setting that rate – and that rate is set by a person going “it is too fast” or “it is too slow”.”

                  You are clearly wrong.

                  There are many inputs. There is the built in input of the rate as you note. There is the input of the current time being set, there is the input of the wound spring. there is the input of the movement of the thingy that makes the tic-toc sound, there is the input of the time being reset for daylight savings or not and time zone changes as well as drift corrections.

                  All of that is mapped to the current position of the hands on the face of the clock.

                  A watch processes information.

                8. You are clearly wrong.

                  There is the built in input of the rate as you note.

                  Which is not information, just a tension. The “information” is not the tension – it is how you interpret the tension.

                  There is the input of the current time being set

                  Which is interpreted by you, not the clock.

                  there is the input of the wound spring
                  Which is also not information, just tension.

                  there is the input of the movement of the thingy that makes the tic-toc sound

                  Which again is just a force. Any information is what you assign to it, but is not anything inherent in the clock. Gravity and a pendulum, but again, there is no inherent information there, other than how YOU interpret it. They both will work the same without any input, as Galileo noticed with the pendulum.

                  there is the input of the time being reset for daylight savings or not and time zone changes as well as drift corrections.
                  Which is how you interpret the forces. It is not inherent in the force itself.

                  Replacing the hands with a disk… or removing the hands.

                  The clock still works.

                  Take the mechanism out and you can use it to drive a music box, or a toy car. Which is why they are called “clockwork” mechanisms.

                  The thing I’m trying to make clear is that any “information” is derived only by your mind. Not the mechanism. The mechanism only responds to physical forces. Not information.

                  Any clock can be both wrong, and right, at the same time. It depends on the viewers context. The two viewers could be in different time zones – thus the clock is both right and wrong.

                9. “Replacing the hands with a disk… or removing the hands.

                  The clock still works.”

                  I’m not saying a broken watch processes information. I am saying a watch processes information.

                  “Take the mechanism out and you can use it to drive a music box, or a toy car. Which is why they are called “clockwork” mechanisms.”

                  We are not talking about music boxes, but since you brought it up, a music box processes information. It coverts the bumps one the drum into musical notes of the audio variety.

                  By the way, by moving the clockwork, you made a new machine!

                  The thing I’m trying to make clear is that any “information” is derived only by your mind. Not the mechanism. The mechanism only responds to physical forces. Not information.

                  I didn’t say the watch derived information. I’m saying it processes information. The physical forces are among the information being processed.

                  Any clock can be both wrong, and right, at the same time. It depends on the viewers context. The two viewers could be in different time zones – thus the clock is both right and wrong.

                  I didn’t say watches were always correct. I said the process information. You process information, don’t you? Are you always correct?

                10. Les, the clock isn’t broken.

                  It works just as it was designed to work.

                  Just because there are no numbers doesn’t break the clock.

                  And I didn’t move the clock for it to be wrong and right. The person moved, not the clock.

                  The information is in the person, not the clock.

              2. I didnt say the watch interprets information. I said it processes information.

                …information is any kind of event that affects the state of a dynamic system that can interpret the information….

                the winding of the watch is an event that affects the state of the dynamic system “watch” which interprets the information into a series of watch hand positions.

                1. So now gravity is a “information processor” just because the tides flow regularly…

                  Or the earth is an information processor because it rotates…

                  Nope.

                2. Yup:

                  Information processing is the change (processing) of information in any manner detectable by an observer. As such, it is a process that describes everything that happens (changes) in the universe, from the falling of a rock (a change in position) to the printing of a text file from a digital computer system. In the latter case, an information processor is changing the form of presentation of that text file. Information processing may more specifically be defined in terms used by Claude E. Shannon as the conversion of latent information into manifest information (McGonigle & Mastrian, 2011). Latent and manifest information is defined through the terms of equivocation (remaining uncertainty, what value the sender has actually chosen), dissipation (uncertainty of the sender what the receiver has actually received), and transformation (saved effort of questioning – equivocation minus dissipation) (Denning and Bell, 2012).

                  link to en.wikipedia.org

                3. Double Yup:

                  “An object may be considered an information processor if it receives information from another object and in some manner changes the information before transmitting it. This broadly defined term can be used to describe every change which occurs in the universe. As an example, a falling rock could be considered an information processor due to the following observable facts:

                  First, information in the form of gravitational force from the earth serves as input to the system we call a rock. At a particular instant the rock is a specific distance from the surface of the earth traveling at a specific speed. Both the current distance and speed properties are also forms of information which for that instant only may be considered “stored” in the rock.

                  In the next instant, the distance of the rock from the earth has changed due to its motion under the influence of the Earth’s gravity. Any time the properties of an object change a process has occurred meaning that a processor of some kind is at work. In addition, the rock’s new position and increased speed is observed by us as it falls. These changing properties of the rock are its “output.”

                  In this example, both the rock and the earth are information processing systems, because both objects change the properties of the other over time.

                  If change occurs, information is processed.”

                  link to en.wikipedia.org

                4. There is a universe of difference between “process that describes”, and “process that IS”.

                  One is information. The other is reality.

                5. And “An object may be considered an information processor…” is not a property of the object – it is a property of the observer.

                  The object IS even if there is no observer.

                  As I said, and entire universe of difference.

                6. Apparently the definitions of information and information processing are not properties of society as a whole, and the fields of physics and thermodynamics in particular, but properties of the observer.

                  …if you are going to make up your own definitions for words, there is little point in discussing this with you.

                7. If you keep associating information to where there is no information…

                  Just because you can think of a physical body as information, all you are doing is associating a math description with a physical body.

                  And forgetting you are doing that is doesn’t change the physical body.

                  Reminds me of the “Indian Weather Rock”.

                  It tells you if it is raining (ie. it is wet).
                  It tells you if the sun is shining (ie. you can see it).

                  Yet, it is still a rock.

                1. Oops, you went completely circular. So is the machine patent eligible because it’s a machine, or is the patent eligibility determined by what the machine does?

                  I have bad news. You just invalidated all machine patents with this logic. All machines are directed to solving some abstract problem. “Locating grain in a bin.” “Measuring grain in a bin.” Both abstract, so the machines that perform these functions are patent ineligible. Maybe you should come around for another pass and try again.

                2. “locating a grain in a bin” is not a patentable function.

                  The machine that locates a grain in a bin should be.

                  BTW, that is how fruit sorters work… sorting fruit is not patentable, yet the machine that can sort them is.

                3. That doesn’t even make sense.

                  People have been finding a grain in a bin for around 10,000 years.

                  And rats and mice for just as long.

          2. So your position is that clocks and watches should not be patent eligible under 35 USC 101, because their “programming” just provides results based on an initial condition?

            It never ceases to amaze me how far off the reservation defenders of patenting software functionality will wander just to make some argument that “if software isn’t eligible, then nothing is eligible.”

            When new physical clock and watch mechanisms are routinely patented according to the same terms under which software is patented (= essentially none at all, other than a cursory comparison to the prior art to ensure that nobody ever strung the same words together in a sentence), then maybe you’ll have a point. Until then, it’s just a bad habit.

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