Examination Guidelines on Patent Eligibility

The US Patent Office has released a new set of guidelines for judging patent eligiblity based upon the Supreme Court’s recent quartet of Bilski, Mayo, Myriad, and Alice.  The guidelines do not carry the force of law but are designed to serve as a manual for examiners when determining eligibility.

The guidelines follow the same two-step analysis described in Mayo and Alice. And,  although the two-step test was not applied directly in the cDNA case of Myriad, the guidelines suggest that the test is uniform across the subject matter areas.   However, the particular examples show that the USPTO intends to be less aggressive at finding eligibility problems with products of nature or natural phenomenon as compared those directed toward abstract ideas.

It will take some time to digest these, but the info is below:

166 thoughts on “Examination Guidelines on Patent Eligibility

  1. 17

    Since my post of last week still awaits moderation, I asked the question again and see if it makes it through the filter this time.

    If DNA shorn of surrounding material is not eligible, why is adrenaline shorn of surrounding material?

  2. 14

    These guidelines are a more timid version of previous guidelines written to appease the unlawful decision in Ultramercial III. However they do not take into account the recent DDR decision in which the majority intuitively considered the claims as an “Integrated” whole, and followed with a subsequent preemption inquiry to determine that the claims did not cover the building blocks of human ingenuity.

    Notice these guidelines only tepidly mention claims as a whole (Integrated) and outright ignore preemption, as the the Ultramercial III panel did.

    However, Integration remains the law of the land until the Supreme Court says otherwise.

    And for all of the anti patent lobby popping corks of champagne, remember, the Ultramercial panel is not THE three. And even if they were, never forget, 3 the new 4, still does not make 5.

    1. 14.1

      101,

      Below, you state that a claim that recites “a computer configured to calculate the attraction between two particles according to Newton’s law of gravity…” is patent eligible.

      To defend this, you cite Diehr. Respectfully, you have not internalized either Mayo or Alice. Mayo provides the framework. Alice applies the framework to computers.

      One of Alice’s explicit holdings is that the implementation of an abstract idea (or law of nature) on a generic computer is not enough to meet step two of Mayo.

      I agree that Diehr remains good law, I would suggest it is a case wherein there was ‘enough’ to meet prong 2 of Mayo. You should focus your efforts on distinguishing Diehr from Alice: why was the claim in Diehr eligible but the claim in Alice not?

      The claim I recited simply has no chance. It is explicitly the application of an abstract idea on a genetic computer.

      1. 14.1.1

        go author: the problem here is that step 2 of Alice is a 103 analysis which over rules Graham. But, so you would agree with us if there was something more that transformed it into patent eligible subject matter (to use the gooey gunk language of the justices who formerly had respect).

        So, one can use 103 properly or Alice and by-pass the 1952 Patent Act.

        1. 14.1.1.1

          I think I agree with what you’re suggesting. If there is ‘something more’ in the claim other than an abstract idea, the claim is eligible (Mayo step 2).

          I also think (maybe you agree) that the question of: What is something more? is the most ambiguous part of the Mayo test. I think Alice is clear that generic implementation on a computer is NOT enough, but I don’t know for sure, in the abstract, what IS enough.

          Diehr makes me think that the MOT test is an important clue in ‘what is enough,’ but as our friend anon would point out, it is only a clue…

          1. 14.1.1.1.2

            Go Author: “I think Alice is clear that generic implementation on a computer is NOT enough, but I don’t know for sure, in the abstract, what IS enough.”

            The answer is, Integration.

            The Court told you that explicitly. Do I really need to provide the exact quote, again?

      2. 14.1.3

        You are wrong again. I didn’t cite Diehr. I cited Mayo which reconfirmed Diehr as controlling precedent. And as Mayo told you, the reason Diehrs claims were patent eligible was because the claims were, “integrated.”

        And as I told you “Integration” is the reason your hypothetical can be eligible. The same “Integration Analysis” applies to Alice as well.

        What you have done is completely ignored integration. But no matter how you ignore it, and/or feign ignorance, integration is indelibly etched in Supreme Court precedent and only the Court itself can change that now.

        1. 14.1.3.2

          Richard wrote: “If we allow A to claim a computer configured to calculate the attraction between two particles according to Newton’s law of gravity, however developed, we are effectively granting A a patent over not only A’s discovery, but also taking B’s discovery. That would be plainly against the clause “To promote the Progress of Science and useful Arts.”

          First, your Constitutional hypothetical did not show how software, computers or business methods are not within the useful arts. Nor did you show were the Constitution says that an exception, such as Newtons Law, is unconstitutional when “Integrated”. When subject matter is legally “Integrated”, it is not claimed, as “however developed”. So that argument fails as well. Furthermore, simply filing a patent first, before another inventor who discovers the same thing, does not prevent the Constitutional mandate to “promote the progress”, as you imply. All inventor B would need to do is file an Improvement patent, and innovation continues to progress.

  3. 12

    link to en.wikipedia.org

    So, let’s be real here. This is abstract art that is supposed to be the first “purely” abstract art. These supposedly “abstract” claims do not correspond to the abstract art. The supposedly “abstract” claims clearly convey structure and meaning to known elements.

    1. 12.1

      Seriously think about this. Are these claims really abstract in any sense other than that the SCOTUS has made up a new word and overloaded abstract with a new meaning: any judge can invalidate any claim if they don’t like it.

      1. 12.1.1

        I think you’re almost there, NWPA. Let’s talk about Mayo because it is a ‘smelly art’ as you like to say.

        Think about what the people in Mayo were actually doing. Administering drugs, sampling blood, measuring concentrations of chemicals. All pretty tangible stuff. No one would argue there is anything ‘abstract’ about what the parties there where doing.

        BUT….and this part is absolutely critical…the CLAIMS amounted to protecting a correlation, which is an abstract idea. The claims were therefore ineligible.

        Just as a reminder: here is the claim:

        (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

        “(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

        wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

        wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.” 623 patent, col.20, ll.10-20, 2 App. 16.
        ****

        Can you see that while the infringing activity was not abstract (it included real world steps) the claims themselves protected an abstract idea? That difference is critical. Once you get this aspect of Mayo, you can apply the same analysis to information processing claims in much the same way.

        1. 12.1.1.1

          There is nothing abstract about the correlation. And I will go further and say that Mayo was absolutely decided wrongly. Methods of treatment are eligible, but here they have actually figured out how to adjust the properly level of treatment without iteration and they are penalized for it.

          The correlation is not abstract and is not a law of nature.

          1. 12.1.1.1.1

            “There is nothing abstract about the correlation.”

            Imo all “correlations” are abstract because they are merely how we humans are observing the correlated activity to date SO FAR. But in the USSC’s opinion they settled on lawl of nature or natural phenom iirc. In any event, whatever the correlations are in that case, they are judicially excepted.

            1. 12.1.1.1.1.1

              >all “correlations” are abstract because they are merely how we >humans are observing the correlated activity to date SO FAR

              How does that make it abstract? Closing a facet is merely how we humans perform the steps to close a facet to date SO FAR.

              1. 12.1.1.1.1.1.1

                “How does that make it abstract?”

                Our ideas about what we’re observing are necessarily abstract brosef. Check the definition.

                As in, for ch rist’s sake, would you please do us all a favor and stop asking how something meets the definition of a simple English word? Use google if you’re that lazy.

                1. Really. So you know what the definition of abstract is according to the SCOTUS. Please tell us. The patent bar has been yearning for an answer to that question.

                2. “Really. So you know what the definition of abstract is according to the SCOTUS. Please tell us. The patent bar has been yearning for an answer to that question.”

                  It’s just your standard run of the mill definition dude.

                3. Sorry 6, but you are wrong again.

                  You should notice that the Supreme Court refused to provide ANY defintion for “abstract” – not even “your standard run of the mill” definition.

                  If the Court wanted the standard run of the mill defintion they would have merely stated that they were using the standard run of the mill defintion.

                  They expressly did something else.

                4. At the very least, the definition of “abstract” comprises the standard definition of a disembodied idea lacking physical structure (which would include a correlation).

                  But go ahead and pretend that you don’t already know that and it’s “all so confusing and mysterious.” After all, pretending to be stone ignorant has worked so well for your team so far.

                5. “If the Court wanted the standard run of the mill defintion they would have merely stated that they were using the standard run of the mill defintion.”

                  What they want is to leave it open to stop lawlyers from arguing around whatever they put down. So as to allow it to evolve with the term.

                  It really is that simple bro.

                6. Ever hear the terms “void for vagueness,” or “ex post facto?”

                  And Malcolm, at the very least, you making up at-the-very-least definitions are ALSO explicitly what the Court did not do.

                7. “Ever hear the terms “void for vagueness,” or “ex post facto?””

                  They’re the ones making it bro. They’re not likely to void their own creation for vagueness or supposed ex post factoness.

                  You really don’t get governance do you?

                8. You think the answer of “They’re the ones making it bro flies for violating basic legal principles and you ask if I “get governance”….?

                  “Bro” you need to get a clue.

              1. 12.1.1.1.1.2.1

                “That don’t make it right.”

                It does under this thing called “da lawl”.

                You might be somewhat familiar with it.

                1. Not really 6. My guess is that this nonsense will get legislated out or overturned in the next 20 years. This is just nonsensical crxp the SCOTUS generated so that judges can kill any patent they want.

                2. “My guess is that this nonsense will get legislated out or overturned in the next 20 years.”

                  I’m truly interested to hear you say that.

                  However, the way things are going I’m afraid that the nonsense that will get “legislated out” are the currently enunciated judicial exceptions and likely software and biz methods as well.

                  But, we’ll see!

          2. 12.1.1.1.2

            You are absolutely right NWPA. There is nothing the anti fascists can cite to prove otherwise. And this goes for the unlawful three in the Ultramercial III case.

            1. 12.1.1.1.2.1

              The discovery of a principle in natural philosophy or physical science, such as hot air would promote the ignition of fuel better than cold, is not patentable. O’Reilly v. Morse, 15 How 62, 116 (1852). The reason being that the principle must be regarded as well known according to Neilson v. Hardford; Parker v. Flook, 437 US 584, 592 (1978).

              Isn’t a correlation just a principle of physical science?

              1. 12.1.1.1.2.1.1

                It is scope of enablement. Moreover, what is that correlation? Methods of treatment are patent eligible. Isn’t that correlation just a more exact way of determining a treatment.

                Besides, the hot air to promote ignition is patentable for what the invention has enabled.

                In my opinion, what we are seeing is such a gross ignorance of science and innovation that the SCOTUS has absolutely no idea what they are talking about.

            2. 12.1.1.1.2.2

              Someone wrote: “Can you distinguish the “integration” of those claims in Alice over the “integration” of the Newton example above?”

              While it is correct the exception in Alice claims was “Integrated” in a computer system, therefore doing more than Bilski, which was only Integrated in a math equation, at best, the claims as a whole preempted the exception on a computer, in effect doing no more than Benson, and less than Diehr. However in the Newton hypothetical, you are landing a spaceship on the moon. And that is significantly more. And you know it’s significantly more because the calculation is “Integrated” so that the equation itself is not preempted by the all the steps of the claim. This, “integration analysis” has been the framework of every Supreme Court case since Diehr. And, as evident, no one can refute it.

            1. 12.1.1.2.1.1

              That you have just picked a word and are saying it is that–abstract or witch, but with no real definition. No objective way to understand what the word means to you.

              1. 12.1.1.2.1.1.1

                Well, I agree with you here to some extent. IF you believe some information processing claims are patent eligible (encryption is a common example), separating the eligible claims from the eligible claims can be ambiguous in some cases. I don’t think that means the Mayo test is unworkable. Case law just provides the guidance on the exception, like a million other areas in law. But I’ll grant you that it isn’t always easy.

                But the law of nature exception, as shown in Mayo, seems pretty straight forward.

                I mean, if a claim recited “a computer configured to calculate the attraction between two particles according to Newton’s law of gravity…” I assume we could agree this claim protected a natural law, and there isn’t a whole lot of ambiguity about that? Maybe there is something I’m missing here, but laws of nature seem pretty easy to spot.

                1. “I mean, if a claim recited “a computer configured to calculate the attraction between two particles according to Newton’s law of gravity…” I assume we could agree this claim protected a natural law..”

                  You assume wrong. Newtons law in that example is “Integrated” same as Arrhenius equation was in Diehr. Therefore it would be eligible. And you can’t cite any Supreme Court case law, Congressional statute, or Constitutional clause, that says different.

                  Deal with it.

                2. I don’t think there is a problem with the program. The scope of enablement is what the inventor deserves and only if it is nonobvious (among other things.) With your hypothetical it would be obvious so the claim shouldn’t be allowed.

                  I’ve challenged people to come up with one example where witch word “abstract’ has been used where 103 would not have done the job. Not one set of claims yet.

                3. That is the thing to understand is that if they take Newton’s law and do something that is nonobvious then they should get a patent.

                  This whole notion of overbroad and get more than they deserve etc is always lacking one thing — A REAL EXAMPLE AND NOT HYPERBOLE.

                4. 101,

                  I am honestly shocked that you’d say that. Can’t tell if you’re just trolling, but I’ll bite.

                  1. Step 1 of Mayo, the claim is directed to the abstract idea of Newton’s law, a law of nature. Laws of nature are not patentable.

                  Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are `manifestations of … nature, free to all men and reserved exclusively to none.'” Chakrabarty, supra, at 309, 100 S.Ct. 2204 (quoting Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948)). (FROM MAYO)

                  2. Generic use of a computer is not enough to render the claim patent eligible.

                  We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention. We therefore affirm the judgment of the United States Court of Appeals for the Federal Circuit. ALICE
                  ******

                  This is not a difficult case, 101.

                5. Go Author wrote: “Can’t tell if you’re just trolling, but I’ll bite.”

                  Oh really? Chew on this.

                  “In Diehr, the
                  overall process was patent eligible because of the way the additional
                  steps of the process [integrated] the equation into the process [as a
                  whole. ]450 U. S., at 187. These additional steps transformed the
                  process into an inventive application of the formula. ) [MAYO
                  COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S.
                  (2012) 3 Syllabus] (Emphasis Added).

                  You cited nothing that overturned this explicit analysis and holding of the Supreme Courts precedent by the Court itself.
                  And until the Supreme Court of The United States says otherwise, the law is as follow, any inventor that applies and “integrates” any new and useful law of nature, natural phenomenon, or abstract idea into a process, manufacture, machine, or composition, has patent eligible subject matter.

                  And there is no one on this blog, or the next, or any court that can cite any Court case law that says different. Swallow it.

                6. “You assume wrong. Newtons law in that example is “Integrated” same as Arrhenius equation was in Diehr. Therefore it would be eligible. And you can’t cite any Supreme Court case law, Congressional statute, or Constitutional clause, that says different. Deal with it.”

                  Case Law:
                  A procedure for solving a given type of mathematical problem is known as an algorithm. Gottschalk v. Benson, 409 US 63, 65 (1972). The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. Id. at 71-72.

                  A process to calculate the attraction between two particles according to Newton’s law of gravity is simply an algorithm or procedure to solve a math problem. Adding a computer to “calculate it” is not “something more” required by Alice since recitation of a computer is a generic “apply it”.

                  Further, such claim would be a generalized formulation for programs to solve mathematical problem just like the binary conversion in Benson. Benson, 409 US at 65. It is the specific application from that generic formulation that is patent eligible, not the generic formulation itself.

                  Constitutional Clause:
                  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.

                  Suppose A discovered program application #1 of using a computer configured to calculate the attraction between two particles according to Newton’s law of gravity.

                  Further, suppose B, but not A, discovered program application #2 of using a computer configured to calculate the attraction between two particles according to Newton’s law of gravity.

                  If we allow A to claim a computer configured to calculate the attraction between two particles according to Newton’s law of gravity, however developed, we are effectively granting A a patent over not only A’s discovery, but also taking B’s discovery and made it A’s.

                  That would be plainly against the clause “To promote the Progress of Science and useful Arts, by securing for limited Times to…Inventors the exclusive Right to their…Discoveries.

                7. Richard, were you run afoul of the law is failing to view Benson through the lens of Diehr, as Bilski at 14 said to do. And when you view Benson as controlled and cabined by Diehr you look for in this case, equations, to not only be applied, but “integrated” so that the claim does not preempt the equation itself. (See Mayo).

                  Integration is what makes the use of Newtons famous law eligible subject matter.

                  Now Richard, you are correct in that merely using a computer to caculate Newtons equation would not allow you to patent the equation any more than if you had worked the problem with pencil and paper.

                  However, let’s say you are using the leapfrog finite difference approximation system to numerically “integrate” Newtons equations for an astrophysical simulation of gravitational pull to land a spaceship on the moon. In this case you have yourself a patent eligible process. The fact that you may need one more computers to run the process, and have steps to calculate and maintain time, update velocity and impact in order to safely land the ship would in no way negate the eligibility of the claims as a whole. Again, see Diehr. And nothing in Alice changed Mayo, Bilski, or Diehr. Indeed, Alice reiterated, the lntegration Analysis from Mayo. See Alice, page 6, paragraph 3. And you can take that to the bank. Or in this instance, the Supreme Court of The United States!!!

                8. 101,

                  Under your analysis the claims in Alice would have been found eligible. Have you read the claims in Alice? Can you distinguish the “integration” of those claims in Alice over the “integration” of the Newton example above?

            2. 12.1.1.2.1.2

              I think Go Arthur if you spend time thinking this through you will see I am right. I know people that do research who have said well then why would we look for these correlations. We can’t work for free.

              1. 12.1.1.2.1.2.1

                I think you will find that most of these correlations show up everywhere…

                Any drug testing program will show them.

                Patent the drug, not the correlation.

              2. 12.1.1.2.1.2.2

                I know people that do research who have said well then why would we look for these correlations. We can’t work for free.

                There’s a humongous difference between “granting a patent on a correlation” and “working for free.”

                Those people you allegedly know must be incredibly dumb. I discover correlations all the time. So do lots of other people I know. None of us are starving.

                Get a life.

        2. 12.1.1.3

          “BUT….and this part is absolutely critical…the CLAIMS amounted to protecting a correlation, which is an abstract idea. The claims were therefore ineligible.”

          You are wrong Go Author. A naturally occurring correlation, is just that. A naturally occurring correlation. Or as the Court says, a Law of Nature. Neither is abstract. Prometheus claims covered/protected a law of nature in the form of a naturally occurring correlation, which is a Court created exception. And that is why they were ineligible. Must important for you to understand is that software is NOT abstract, a law of nature, or p
          natural phenomenon, and therefore is not a Court created exception. Same goes for business methods.

          1. 12.1.1.3.1

            I’ll differ with you about programs not being abstract…

            They are still math – just as e=mc^2. Can’t patent a formula, shouldn’t patent a program.

            1. 12.1.1.3.1.1

              You cannot copyright math either jesse (and please do not attempt to move the goalposts to something more than math, like a math book)

              You cannot copyright a thought of software either (actually, you cannot copyright a thought of anything)

              Still waiting for you to join the dialogue jesse.

              1. 12.1.1.3.1.1.1

                You still cannot copyright a formula either.

                Yet you can copyright a proof.

                As for cannot copyright a thought – no, you can’t.
                But you CAN copyright an expression of a thought.

                Still waiting for you to join the universe anon.

                1. You do realize that an expression of a thought is different than the thought, right?

                  Beautiful self-FAIL, jesse.

            2. 12.1.1.3.1.2

              “Can’t patent a formula, shouldn’t patent a program.”

              An algorithm or procedure for solving a given type of mathematical problem is a generalized formulation for programs to solve mathematical problems. Gottschalk v. Benson, 409 US 63, 65 (1972). From the generic formulation, programs may be developed as specific applications. Id.

              He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. Funk Bros. Seed Co. v. Kalo Co., 333 US 127, 130 (1948).

              Based on the above, if claims are drawn to a program that was developed as a specific application of a generic formulation, then that program is patent eligible.

        3. 12.1.1.4

          I’m having trouble following your argument. Could you articulate the “abstract idea” being protected here?

          1. 12.1.1.4.1

            Are you referring to the claim from Mayo v. Prometheus that I posted?

            There the correlation was that the concentration of a certain chemical in the blood above a certain amount meant you gave the patient too much of the drug. Similarly, a concentration of a the chemical in the blood below a certain amount meant you gave the patient too little drug.

            From Mayo:

            “Prometheus’ patents set forth laws of nature—namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm. Claim 1, for example, states that if the levels of 6-TG in the blood (of a 1297*1297 patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×108 red blood cells, then the administered dose is likely to produce toxic side effects. While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation sets forth a natural law.”

  4. 11

    Having read the second file of chem/bio composition-related eligibility guidelines, I must say that the authors of that document come across as a hundred times more thoughtful and articulate than the document with Lee’s name on it. I’m not particularly surprised by that … but it is disappointing that the PTO can’t step up its game when it comes to describing the eligibilty issues raised by information processing nonsense. It’s not like people haven’t been discussing this stuff for decades.

    With respect to the “mdc_examples_nature-based_products” guidelines, at first glance it seems internally consistent and consistent with the widely held (and reasonable) belief that neither Myriad nor Mayo represented even a modest assault on the patenting of new man-made compositions. Myriad is treated as a very narrow hurdle and Mayo, of course, is concerned with tying up ineligible information with methods.

    My two major criticisms of the “nature based guidelines” are

    (1) the lack of any attempt to “drop the other shoe” so that applicants are aware that some of these “eligible” claims are per se failures under the other patent statutes (or otherwise extremely unlikely to be unpatentable). Why not just come out and say so in a single sentence and help applicants save some money and time? Why force them to read five other documents of “guidelines”?

    (2) the lack of any serious, coherent attempt to address the eligibility issue created when an applicant uses multiple overlapping claims — each of which may be deemed eligible according to the USPTO’s current guidelines — that have the combined effect of achieving exactly what the eligibility restrictions are intended to prevent, i.e., blocking all practical applications of the naturally occuring product in question.

    Lastly (and somewhat off the topic of the natural compositions guidelines) I didn’t see where the PTO has addressed directly the issue of “field limited” uses of old information-gathering technology, i.e., broad claims that “limit” a composition or machine to a previously undisclosed use where that use falls squarely within the genus of understood purposes for the technology (e.g., use of a microscope or a probe to study previously subject matter that wasn’t previously described in the art). Perhaps the PTO believes that’s more of an obviousness inquiry, or a utility inquiry. Either way, the limitless granting of such claims tends to keep old data-gathering technology out of the public domain (where it belongs).

  5. 10

    As noted below, the guidelines are clear that the following categories of “innovations” are ineligible for patenting as abstractions.

    comparing new and stored information and using rules to identify options

    • using categories to organize, store and transmit information;

    • organizing information through mathematical correlations

    Here’s a practical question: client comes to you with an “improvement” for a robot car which consists of software that takes information collected by car (and any peripheral devices associated with the car, such as satellilte information), categorizes that information, then compares the received information with information in a “look up table”, where the table provides the appropriate response to be taken by the car in response to the information. The client is particularly excited because the specific information in question relates to different classes of injured animals that are found lying in the road, further categorized by the degree of injury.

    The client has not written any software and the client is aware that “no case law” requires that any software be written. It’s not clear that the client has ever programmed a compuer before. The client says that “Google is going to do something like this and I want to be ready to cash in when they do.”

    You understand that the “innovation” is ineligible but you really need the money. Besides, some guy on a blog says that he is still “getting claims through” the PTO.

    Question: What “magic words” do you insert into the claim so that you can obtain this unenforceable patent for the client?

    1. 10.2

      well, first you do a little search (which of course didnt actually happen, and nobody can prove did happen *wink wink*) to find a collection of vehicle components that covers virtually any vehicle configuration on the market, BUT *and this is the important part* would force an examiner to put together at least a two reference 103 to meet. Then you toss in your software parts. Maybe spruce it up with some language *fleshing out* the relationship between some well known processor and memory components, including some inherent signaling between components is a plus.

      Wait for the non-final with the 101.

      Argue, and make it lengthy 10-12 pages or so of argument on art and 101 and dont amend (this scares the new examiners). Maybe you get lucky and he gives you a second non-final to try and make you happy (silly examiners), but he keeps the 101. Make a conciliatory amendment that doesnt move the ball. Examiner gets excited, and goes final.

      File a pre-appeal.

      Now the game has really started because its a roll of the dice of whether you get a SPE that doesnt want the extra work of reviewing an appeal brief or dealing with complaints, and subsequently tells the examiner to “just give them another action” (happens all the time *wink wink*). Now we are at possibly a third non-final but definitely a second. Retort with another lengthy set of arguments, no amendment.

      Now the examiner is stuck.

      He knows that going final means having to write another non-final because its going to be pre-appeal time again, and he also knows that writing too many non-finals raises red flags about his quality. His next logical step: hit up his primary/SPE for an allowance to end the suffering, and he will start the conversation with: ive already reopened once and have done two/three non-finals. SPE shrugs and says “we gave it our best shot, and it doesnt look too abstract to me anyway, you are probably being too strict on those”.

      *poof* notice of allowance.

      there you go, thats how it works. but im sure you knew that already.

      1. 10.2.1

        its a roll of the dice of whether you get a SPE that doesnt want the extra work of reviewing an appeal brief

        SPEs review those things? In my experience, the SPE and appeal conferee don’t want to pretend to be judges, so unless the rejection is truly outrageous, they pass it up to the Board.

        1. 10.2.1.1

          Depends on the area, depends on the SPE – but the savvy keep track and know who backs down easily and makes the examiner write another non-final.

          There are entire practices built around this process flow or some slight variation on it.

          That said, to the average applicant its a roll of the dice. But one with some pretty favorable outcomes if the dice favor (and filing a RCE if it doesn’t).

          In my experience, this game works about half the time without getting specific to certain areas. Definitely worth the extra effort of writing the pre-appeal.

        2. 10.2.1.2

          “SPEs review those things? In my experience, the SPE and appeal conferee don’t want to pretend to be judges, so unless the rejection is truly outrageous, they pass it up to the Board.”

          Yeah right!

    2. 10.3

      “As an example, a robotic arm assembly having a control system that operates using certain mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility. ”

      Looks like even if your vehicle is controlled using “mathematical relationships,” PTO says thats fine, thus paying homage to the “physical” domain once more.

      1. 10.3.1

        PTO says thats fine,

        The USPTO is the captured gency that brought us the mess in the first place. I’d take their advice on what is “clearly” eligible with a big grain of salt.

        a robotic arm assembly having a control system that operates using certain mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships

        Depends on the claim. If you or anyone else doesn’t understand that by now, you shouldn’t be involved in any way with the US patent system.

        To put it another way: the term “robot arm” is not a magic word that confers eligibility to a claim. Robot arms are old. Robot arms are conventional. Controlling robot arms with math is old. Your innovation is an old robot arm that uses some “new math”? Or is it a “new table” or a “new data structure” that the otherwise old robot arm is “looking up”.

        Sounds like an eligibility problem. At the very least, there’s nothing “clearly” eligible about that innovation.

        Maybe when the USPTO develops some practical, coherent method of examining “new math” against all the “old math” and logic in the prior art, we can have some sort of patent protection that “promotes” your innovations. Until then, all bets are off because if the “new math” isn’t being examined in any meaningful way then the granting of such claims is a problem for everybody who isn’t directly invested in “monetizing” such claims. And that spells trouble for the “innovators” of such claims. Or haven’t you noticed?

        Like I’ve said before: there’s more to come. Much more. And all of it was predictable, and predicted.

        1. 10.3.1.1

          You seem to suffer from amnesia – to repeat from your own post:

          “…As noted below, the guidelines are clear that the following categories of “innovations” are ineligible for patenting as abstractions.

          …Question: What “magic words” do you insert into the claim so that you can obtain this unenforceable patent for the client?”

          Answer – as I stated before – no magic words are required. The guidelines do not, in fact, prohibit the subject matter you described, or make it “ineligible” so the answer is as I stated.

          You can then wrestle later on with the patent after it issues, but now you are stuck with a patent that has been reviewed and immunized by the PTO against the most recent “Alice in Wonderland” caselaw.

    3. 10.4

      I think the better course of action would be to advise clients with thousands of issued patents and pending patent applications directed to software to immediately cease payment of all maintenance fees because some guy on a blog said to do so (flying in the face of 30 to 40% of court cases post-Alice).

      Or to fire such a client who isn’t quite ready to do so or whose patent portfolio is defensive rather than offensive.

      I’ve been reading these boards for a few months now, and I must say that you do an excellent job controlling the narrative and avoiding answering questions that would result in even a hint of contradiction, so props for that. Especially with this new comment engine that places new posts up top. Truly top-notch. Does your employer know how much time you waste on these boards? I’m sure you stay late to account for that wasted time, right?

      1. 10.4.1

        I posted to this blog yesterday, in another entry, asking the moderator – the good professor – whether he finds the noise of excessive and redundant posting by a certain individual problematic, and calling for some regulation. That post was deleted by the moderator, it seems. Professor, your entries are excellent, but have you noticed the decline in meaningful comments from a variety of attorneys/agents/examiners who used to participate in these discussions? Maybe the time needed to read around a certain poster’s feverish, repetitive, and often belittling posts have led others to also shy away from the Patently-O comments section.

  6. 9

    I think this document proves that “abstract” has no meaning other than we don’t like it. Shameful piece of judicial activism that has caused undue harm to the patent system. I hope you are proud Stern and Lemley.

    1. 9.1

      Just imagine a real human being that respects the law. And then look at what you have wrought in this document. Benson is the source of all evil.

    2. 9.2

      The thing that is just so bizarre about this is that these judges are holding that machines that do what the judges do for a living are ineligible for patentability because they are abstract.

      Any scientifically trained mind should have a problem with that.

      1. 9.2.1

        Or even J. Ginsburg’s statement in Alice about patents not being for organizing human behavior. Think how strange that is. The managers and elite of the society typically are responsible for the rules that organize human behavior. Now we have machines that are –probably sadly–organizing human behavior are we are just starting to get there. Soon the machines will be organizing us to an extent that is frightening. But—again–we have the judges telling us that machines are not fit to do the work of the managers.

        Really weird.

      2. 9.2.2

        NWPA,

        They’re judging that the claims cover an abstract idea. That is not the same thing at all as saying real life machines are abstract. I think this distinction explains a lot of our disagreements thought.

        1. 9.2.2.1

          Go Arthur, dig into that a bit and ask yourself what would claims look like then that would not be abstract that are performing the functions claimed.

          I think if you dig into this you will find that this is judicial activism and it is simply not true that they are objecting to the claims.

  7. 8

    58 pages just to say “hur, don’t let them claim abstract ideas, natural phenom, or lawls of nature in any way shape nor form. Just say no.”

    1. 7.1

      As interesting as that redefinition of California’s boundaries may be, I (and I imagine many others) don’t have time to delve into it. Can you give us the gist?

      1. 7.2.1

        NWPA,

        The adjective “objective” is of course a boogeyman term used obsessively on these boards by a particular poster who deigns to make the use of terms sounding in functionality ever an issue; neglecting the fact that Congress opened wide the use of such language in the 1952 Act –see Frederico.

        The point – as aptly demonstrated by the examiner RH is that while such an option of description is always available, some art fields are simply more amenable to using different (and fully legal) options.

        108 pages of mind-numbing detail is what Malcolm supposedly clamors for, and yet as seen here, we are immediately responded with a “I’m too busy, give me something else” response.

        ALL art fields have developed language making it easier to read and understand, and yet (as I am sure that you are aware), it is one art field in particular that has been attacked (and that great word: anthropomorphication</b) constantly ignored.

        Perhaps we will see an end to the obvious gaming and attacks of the use of terms of functional description, but I doubt it. Can you imagine the accusations of "you are just trying to hide the invention" if we were to follow Malcolm's desire and post in 108 pages per claim “objective physical structure” style?

        1. 7.2.1.1

          OK. I get it. I think the average information processing application would be about 1200 pages and refer to 100’s of external sources.

          Lemley is a never ending source of misery.

            1. 7.2.1.1.1.1

              Sounds similar to the procedure for nucleotide sequences. I don’t see the problem.

              This obvious point has been made to both of these two individuals hundreds of times over the years. While they will only occasionally admit it, the key distinction — in their minds — is that they are super dooper important and entitled to special treatment.

              The idea that practitioners in the so-called “software arts” are using a consistent, formal terminology to describe either the data that is being processed or how it is being processed is a joke. That’s the last thing they want to be forced to do because then the complete lack of innovation in most of the claims being filed would be transparent.

  8. 6

    To the degree and extent that these latest guidelines contradict and are contrary to the interim guidelines … is at least the same degree and extent to which their reliance on by examiners, the PTO, and judges to reject claims in applications and find invalid those in duly issued patents were both legal error.

    So now what are examiners (whom share no blame since they were operating on the explicit instructions of the PTO) supposed to do?

    Cancel / amend those 1,000’s of 101 rejections that have already gone out?

    Permit new / amended arguments against such rejections to be made by applicants and patent holders who have had their claims rejected / ruled invalid?

    And what are the courts — who also relied on the interim guidelines — supposed to do? “Call back” their holdings / decisions? Issue new ones?

    Any reliance on interim guidelines — whether during prosecution, PTAB proceedings, or in litigation — was a denial of due process.

    1. 6.1

      What about all the claims that were allowed that should have been rejected? They’re still churning out ineligible claims.

      8909551, IC1:

      1. A method of expedited direct or indirect application approval and processing related to purchase of goods, services or programs, the method comprising the steps of: (a) providing at least one processing software program resident on a credit sale and loan processor computer having a server and a data storage device, the processing software program having or accessing at least one seller-selected consideration criterion wherein the seller has possession of at least one collateralizable article; (b) populating predetermined identification information fields resident in the software with application-relevant information associated with a prospective individual purchaser of the collateralizable article under the control of a seller using an input device and transmitting the application relevant information to the credit sale and loan processor computer, wherein the application-relevant information also includes data regarding the collateralizable article; (c) verifying the application-relevant information by the credit sale and loan processing software and generating at least one verification result command, the verification result command being one of either a computer-generated verification signal or a computer generated nonverification signal; (d) upon receipt of a computer-generated verification indication, analyzing the application-relevant information against qualification parameters resident in the at least one software program and generating at least one output solution, wherein the output solution is one associated with a concluded credit sale transaction that is assignable by the seller to a financial institution.

      1. 6.1.1

        analyzing the application-relevant information against qualification parameters resident in the at least one software program

        Good grief.

        How on earth does this sort of nonsense get out of the patent office?

        1. 6.1.1.1

          Good grief why do these judicial activist think that an attitude is a rejection. Try to follow Graham instead of spitting on claims and you might get a little respect.

      2. 6.1.2

        If they amend step (d) to describe particular program steps for how to perform the analysis and how to generate the solution, then the claim would probable be strong enough to survive Alice Step Two.

    2. 6.2

      Any reliance on interim guidelines — whether during prosecution, PTAB proceedings, or in litigation — was a denial of due process.

      That’s a bit of an overstatement. Anyone who received an adverse decision on the basis of the PTO’s guidelines had an opportunity to appeal it.

    3. 6.3

      From my experience the whole thing is just madness. Alice fuses 101 and 103. Graham has been overturned. The examiners have no idea what is going on. A typical situation that would arise from judicial activism.

    4. 6.4

      those 1,000’s of 101 rejections that have already gone out?

      How might any single applicant leverage this fact? Aside from how threadbare and conclusory the Alice rejections have been, its apparent that virtually ANY claimed invention can be reduced to the application of some “abstract idea”. What’s persuasive to me about how ridiculous the standard (or lack thereof) is the breadth of topics that the patent office claims to be “abstract ideas”, “an idea of itself”, a “fundamental economic practice”, etc. One can only see that picture in the aggregate, not in any one case (missing the forest for the trees).

  9. 5

    Fromt the Interim Guidelines:

    Abstract ideas have been identified by the courts by way of example, including
    fundamental economic practices, certain methods of organizing human activities, an idea ‘of itself,’ and mathematical relationships/formulas.12 The types of concepts courts have found to be abstract ideas are shown by these cases, which are intended to be illustrative and not limiting:

    • mitigating settlement risk ;

    • hedging ;

    • creating a contractual relationship ;

    • using advertising as an exchange or currency ;

    • processing information through a clearinghouse ;

    comparing new and stored information and using rules to identify options

    using categories to organize, store and transmit information;

    organizing information through mathematical correlations;

    • managing a game of bingo ;

    • the Arrhenius equation for calculating the cure time of rubber ;

    • a formula for updating alarm limits ;

    • a mathematical formula relating to standing wave phenomena ; and

    a mathematical procedure for converting one form of numerical representation to
    another

    There is a world of pain right there for vast numbers of claims that seek to protect information processing logic.

    The unfortunate thing is that the PTO could have done a much better job of providing examples of ineligible subject matter that has not yet been challenged in the courts or that nobody but the most deeply confused “innovator” would dream of patenting. It’s these latter class of applicants that Examiners need to be ready for and there really is no reason that the USPTO couldn’t have helped everybody out with more specific guidelines.

    Information isn’t eligible for patenting. Never was. Never will be. It’s the quintessential example of abstraction. Why not just spell it out for Examiners and everybody else so there’s no confusion?

    It doesn’t matter if the information is stored or published or displayed on a book page or a newspaper page or a TV screen. It doesn’t matter if it’s stored on a hard drive or in “the cloud” or published on a computer display. It doesn’t matter if it’s the world’s most valuable information or if a million might perish tomorro if it’s never revealed to anybody. Information is not eligible for patenting.

    Why dance around this basic fundamental truth that is driving so much contemporary jurisprudence? Why can’t the PTO just spell it out for everybody?

    1. 5.1

      So, you get paid to be an information processor MM and you think that a machine that can do your job shouldn’t be eligible for patentability.

      Sounds more like a Luddite than a patent attorney.

      1. 5.1.1

        a machine that can do your job shouldn’t be eligible for patentability

        Certainly not if this “machine” is claimed functionally in terms of the otherwise ineligible information it’s storing or transmitting, or the information processing logic that it’s “executing”.

        There’s nothing radical or controversial about that proposition. Not for most people anyway. And definitely not for the Supreme Court.

        Was anyone surprise to see ABL’s cert petition denied? I wasn’t. Good riddance.

        And more to come.

        1. 5.1.1.1

          >Certainly not if this “machine” is claimed functionally in terms of the >otherwise ineligible information it’s storing or transmitting, or the >information processing logic that it’s “executing”.

          A functional claim merely maps to known solutions and solutions enabled in the specification. So that is a non-answer that is a judicial activist’s nonsense.

          1. 5.1.1.1.1

            Justice Sonia Sotomayor: “It sounds like you’re trying to revive the patenting of a function”

            One could reasonably conclude that functional claiming will be in some serious trouble in the near future.

            1. 5.1.1.1.1.1

              Or reasonably not.

              Given that Sotomayor was actually flagged by ex-President Clinton as being judicial activist, and given that she is on the shrinking contingent that would over-write the direct words of Congress (re business methods) – the 3, the new 4, is still not 5 contingent, it is the opposite of what you post that appears reasonable.

              Sorry hound, your dog just won’t hunt.

              1. 5.1.1.1.1.1.1

                So… None of the justices could simultaneously not want to *explicitly* (note the word here) eliminate business methods, but would want to limit/eliminate functional claiming?

                Thats what you are saying right? That in order to fall into the camp of wanting to limit/eliminate functional claiming, you MUST also want to eliminate business methods.

                Hmm… Seems like there may be a small leap in the logic of your post.

                1. Is that what I am saying…?

                  Not at all.

                  Not sure either how you made the jump to even attempt to put those words in my mouth (or the mouth of the Court).

                  I merely pointed out that you want to expand from a sample of one (and an activist one at that) to somehow call it “reasonable” that the entire Court somehow shares that view….

                  My “small leap” is like a divide between two sections of sidewalk compared to your Grand Canyon.

              2. 5.1.1.1.1.1.2

                Gonna be 9-0 brosef, none of those justices want anything to do with the CAFC’s judicial activism trying to overrule the USSC.

            2. 5.1.1.1.1.2

              Yes hound it is in trouble. Lemley’s paper on functional claiming is a map for judicial activism. And there are so many ignorant Google judges on the Fed. Cir. now that anything could happen.

              The Fed. Cir. has turned into a court of the Google paid for appointments. The criteria seems to be: ignorant in science, ignorant in patent law, ignorant in innovation, but a burning desire to “reform” the system by limiting patent rights ’cause, ’cause.

        1. 5.1.2.1

          Given the vast surplusage of irony on the Internets, there must be a blog somewhere where “true Luddites” tr0ll the “wannabe Luddites”.

          You seem to be some sort of expert on the subject, NWPA. Maybe you already know the answer.

    2. 5.2

      Why dance around this basic fundamental truth that is driving so much contemporary jurisprudence? Why can’t the PTO just spell it out for everybody?

      Because the PTO doesn’t create law. In many instances I side with you on ineligibility, but I still think interpretation of 101 is up to the courts, not the PTO. (And just to extend an olive branch to the other side – Congress has a mechanism for disagreeing with the courts).

      1. 5.2.1

        There is no “new law” implicated by the statement that “information is ineligible for patenting.”

        Again: abstractions are ineligible for patenting. Information is the quintessential example of an abstraction.

        Need more? Just ask.

        Or just take a breath and ask yourself why even more people aren’t trying to patent information. After all, there is nothing on earth that is easier to create and people have been doing it for a long time, including some really smart people who understood the patent system and the legal system generally.

        1. 5.2.1.1

          All it says is that “a mathematical procedure for converting one form of numerical representation to another” isn’t available for patenting. I still read that claims directed to, for instance, encryption (which is converting one form of numerical representation to another) is still patentable (and should be and always has been), since one is claiming more than the procedure.

        2. 5.2.1.2

          So you don’t think it would be new law, but you do think the PTO needs to say it. Why? If there’s no new law, then why does it even need to be said?

          1. 5.2.1.2.1

            So you don’t think it would be new law, but you do think the PTO needs to say it. Why?

            As a reminder so that people don’t lose sight of the fundamentals and try to take advantage of that oversight.

            Why in the world would anyone find that objectionable?

    3. 5.3

      • the Arrhenius equation for calculating the cure time of rubber ;

      Are you saying that the executive branch is now getting in the business of writing patent law – and trumping the Court’s Diehr case…?

      1. 5.3.1

        If you look closely at the guidance, it’s clear that Diehr’s claims pass the Alice/Mayo test because even though they claim an abstract concept / natural phenomenon (step 1), they add something more that is significant enough to avoid claiming the judicial exception itself (step 2).

    4. 5.4

      Well, if those are correct, it should end all software patents, including anything involving encryption or image processing.

      1. 5.4.1

        jesse – How would the examples cited bring to an end patenting of compilers, operating systems, search engines, communications modules, and other worker programs? Are these not patentable software? Or did Chicken Little write the Guidelines?

        1. 5.4.1.1

          a mathematical procedure for converting one form of numerical representation to
          another

          Which includes a compiler – That is what it does, transforming one sequence of numbers into another…

          using categories to organize, store and transmit information;

          Appears to cover Email and search engines…

          comparing new and stored information and using rules to identify options

          Would cover browsing and using a search engine… as well as various e-mail clients.

          :)

          1. 5.4.1.1.1

            Where do you get the idea that a compiler is simply a procedure for converting one form of numerical representation to another? Do you believe software is math? If you do, you do not understand software.

            Compilers perform many other functions, the simplest of which is interstatement optimization. There is not necessarily a one-to-one concordance between the source language representation of the process, often English-like, and the object code, if such exists. In Benson, a string of numbers in BCD was converted into binary which is a 1-1 relationship.

            There is a common misunderstanding that the interior of a computer is populated with numbers. It is not. Computers work on electrical or electronic signals or pulses which control the various parts of the hardware. An interpretive compiler converts a process in source language directly into a machine-implemented process.

            Your other examples fail for similar reasons.

        2. 5.4.1.2

          As for operating systems, what they do is manage resource allocations using mathematical algorithms…

          Plus the fact that operating systems are about 60 years old in technology. (re queues, priority queues, sorting and such), none of which should be patentable…

          Not even encryption – which is another transformation of a sequence of numbers into another sequence…

          1. 5.4.1.2.1

            “A process is not unpatentable simply because it contains a law of nature or mathematical algorithm”. Clearly, you also do not understand what operating systems do. Yes, they may contain an algorithm here and there but what they do is allocated scarce resources – memory, mass storage, processor time – and process events including interrupts. They do not have to do this based on algorithms unless you consider, for example, a FIFO queue an algorithm.

            As to the 60 year comment, you, again misunderstand what patents do. They do not prevent the whole world from writing any operating system. One of the key issues in Alice and other SCOTUS decisions, is pre-emption. You cannot seriously believe that the OS running Windows 8.1 or any touch-screen OS is identical to a sequential process OS such as Exec II. Or do you? Surely there are novel and useful parts of 8.1, thus those parts are patentable.

            1. 5.4.1.2.1.1

              Operating systems ALL work on algorithms. And yes, a simple queue is one such algorithm. So is LRU, so are priority queues, so are sorting procedures. Nearly everything in Windows or Linux was well known by 1980 – most of it developed by either IBM or Bell Labs.

              Actually touch-screen has nothing to do with it – that is still a sequential process. Command interpretation should still be a sequential process… even if through a fancy device.

              Adding clock interrupts is a well known method to share resources… It even works in libraries where you have to return the book even if you aren’t done with it, and check it out again.

              Identical to Exec II? nope. Different hardware requires a different implementation.

              Windows 8.1 novel? hardly. An improvement on 8.0, yes. But not novel.

              Useful parts of 8.1? Not sure, a lot of people don’t think so. Especially the security aspect of it. Even though that HAS improved, it still (in my opinion) hasn’t quite reached the capability of UNIX or Linux in 2000.

              Patentable? no.

      2. 5.4.2

        The Supreme Court explicitly indicated an open door for inventions that improve the functioning of a computer, for example. I’d say increasing security is an improved function.

        1. 5.4.2.1

          Actually that isn’t a function of the computer.

          That is a function of information…

          That it can be evaluated by a computer is a side effect of having a logical expression of the idea of security. One problem is that “security” means different things to different people, and they follow different rules.

          That same function is also carried out by people. Before computers existed, it was carried out by banks, mail services, military organizations… any group of people that chose to agree on a set of rules identified as “security”.

    5. 5.5

      The long list is qualified by “The types of concepts courts have found”. Concepts. The list is not a list of verboten things that might be part of a claim, they are things that claims covered at the conceptual level. World of pain? Hardly, but if it makes you feel good, run with it fella. In fact, the demand for agents/attorneys with high understanding of software is going up.

      Used to be, a law firm could hire any person with a registration number to work on software-related patents, and they could often bluff their way through with clear lack of understanding and with poor results. Often, this resulted in obtuse and over-broad claims written in unorthodox terminology to hide the lack of understanding. No more. Savvy applicants will be seeking agents/attorneys who really know the technology that they’re advocating and know how to describe and claim it in a way that clearly communicates the invention and its bounds to those skilled in the art.

      1. 5.5.1

        Speaking of concepts, quick – what comes to your mind with the concept of “kitchen table?”

        What are the chances that if you made an objective physical description down to a picture claim, and I did the exact same, that our two pictures would match?

        Gee, do we have catastrophic ambiguity here? Does this mean that “kitchen table” is “Abstract?”

        Did someone say “witch?”

        She turned me into a newt once (I got better) – said in the best Monty Python tones.

        1. 5.5.1.1

          Interesting…

          Kitchen table – about a thousand images of various shaped surfaces in a cooking area (yes, I think in images first, not words).

          an objective physical description down to a picture claim..: none.

          Gee, do we have catastrophic ambiguity here? Does this mean that “kitchen table” is “Abstract?”

          Nope. A kitchen table AS A CONCEPT is abstract.

          What I think of as a kitchen table is not necessarily the same as what you think of as a kitchen table. But in both cases they will be some form of relatively flat surface in a cooking area.

  10. 4

    “Illustrative and not limiting” is meant to guide the Examiner’s to try to apply the principles of the cases and not look for exactly the same factual context. I think this is correct.

    My point is that the Examiner’s have not been told to follow different set of principles which were beyond or different from the principles decided.

    Mischaracterization of the law would have been much worse.

  11. 3

    Dennis: the particular examples show that the USPTO intends to be less aggressive at finding eligibility problems with products of nature or natural phenomenon as compared those directed toward abstract ideas.

    Assuming we’re talking about claims to new man-made compositions, that’s a wise move on the USPTO’s part.

    That said, the discussion of Prometheus v. Mayo is childish to put it nicely. It’s not clear to me whether that’s an attempt to make things easier for Examiners (it won’t) or an attempt to cater to the PTO’s “clients” (in which case the PTO will simply be granting reams of ineligible and unenforceable patents).

    For starters, the term “prior art” isn’t mentioned once. Why not?

    From the guidelines: any additional steps consist of well understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.

    That’s just a conclusory statement without any attempt to explain “why” (as in “why do routine conventional activites add “nothing significant”)? How is that supposed to help Examiners?

    The answer to that question may appear straightforward and obvious to some, but experience has shown that for others the answer is a difficult one to arrive at without a whole lot of hand-holding. Why can’t the PTO hold the Examiner’s hands when it’s provided its alleged guidance?

    The answer, of course, is that a claim that recites nothing more some ineligible information, e.g., a correlation, in addition to a conventional data processing steps effectively protects that ineligible subject matter. This critical fact is readily apparent to people “in the field” who are freely and legally practicing the “conventional steps” — more commonly known by patent professionals (presumably there are some at the USPTO) as “the prior art”.

    Frrom the guidelines: Even though the laws of nature at issue are narrow
    laws that may have limited applications, the claim does not amount to significantly more than the natural law itself (Step 2B: NO). The claim is not eligible and should be rejected under 35 U.S.C. 101.

    The problem here is the focus on the term “natural law” when the principle in Prometheus v. Mayo applies to more than “natural laws” (whatever they are) but to any and all forms of information, regardless of how that information is described. All information is ineligible subject matter. It doesn’t matter whether the information concerns “nature” or anything else. It’s equally ineligible for patenting and it’s always — necessarily — been the case.

    There’s no legal distinction that can be made between “collecting data about a patient’s DNA, wherein said data indicates X” and “collecting data about a customer’s credit card account, wherein said data indicates X.” It’s the same eligibility problem.

    Geebus what is going to take to put these zombies to sleep?

  12. 2

    Shockingly frank analysis from a sitting DC judge in FL.

    WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870, 2014 WL 2921707 (2014), grants a petition for certiorari, vacates the Federal Circuit’s opinion, and remands the action “for further consideration in light of Alice.” Bancorp Services., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 134 S. Ct. 2870, 2014 WL 2921725 (2014), and Accenture Global Services., GmbH v. Guidewire Software, Inc., 134 S. Ct. 2871, 2014 WL 348249 (2014), decline petitions for certiorari. Conspicuously, the Supreme Court vacated the only Federal Circuit opinion, Ultramercial, upholding a software patent and declined certiorari over the two actions, Bancorp and Accenture, that invalidate software patents.

    Every Penny Counts, Inc. v. Wells Fargo Bank, N.A., 2014 U.S. Dist. LEXIS 127369 (M.D. Fla. Sept. 11, 2014)

  13. 1

    Nothing to see here, at least on the abstract idea front.

    Simply a repackaging of Alice and a listing of post-Alice Fed. Cir. decisions of which the Examiners are already aware.

    Not sure what I expected, but this doesn’t provide any further “guidance” unless the Examiner is looking at a claim nearly identical to one of the ones listed.

    1. 1.1

      “Nothing to see here”… is likely the best news one could have expected. The USPTO does not seem to be instructing the Examiners (implicitly or explicitly) to go beyond what the court cases actually had to say.

      Guidelines could have been much worse… and to be able to say that.. well it’s a good thing.

      It would appear that more funds should have been used to generate and submit commentary to the USPTO rather than daily commentary on blogs… oh well.

      1. 1.1.1

        The USPTO does not seem to be instructing the Examiners (implicitly or explicitly) to go beyond what the court cases actually had to say.

        From the guidelines: The types of concepts courts have found to be abstract ideas are shown by these cases, which are intended to be illustrative and not limiting:

        The phrase “illustrative and not limiting” sounds like explicitly “going beyond what the court cases actually had to say” to me.

        1. 1.1.1.1

          *Meant to reply here. Please delete duplicate in main thread.

          “Illustrative and not limiting” is meant to guide the Examiners to try to apply the principles of the cases and not look for exactly the same factual context. I think this is correct.

          My point is that the Examiners have not been told to follow different set of principles which were beyond or different from the principles actually decided.

          Mischaracterization of the law would have been much worse.

          1. 1.1.1.1.1

            Mischaracterization of the law would have been much worse.

            There certainly is some of that but as far as I can tell from my brief run-through it’s mostly favorable to the PTO’s “preferred clients” (i.e., those who pay the PTO to look the other way).

              1. 1.1.1.1.1.1.1

                The PTO needs to get out in front of the problem for a change instead of continuing to foster an environment which perpetuates that problem.

                When, for example, some guy stands up at a public meeting and says that “Correlations are eligible for patenting”, that guy needs to be smacked down. Not physically, but verbally. Why? Because otherwise people think that it’s a serious view about how a sane patent system can function when, in fact, it’s a ridiculous view that nobody can defend and it should be treated like one, i.e., it should be scorned and mock so that the adults can get to work without wasting limited time and resources addressing it over and over again.

                1. Translation: rules don’t apply to me because my belieb system is the one TRUE belieb system.

                  Because I said so.

                2. rules don’t apply to me because my belieb system is the one TRUE belieb system.

                  Exactly the problem with the “correlations are patentable” nonsense-spouter.

                  Get them out of the patent system. Let them find something productive to do, or let them find some other system to exploit. Maybe he can make up some imaginary theory that he owns all the water in his town. That way he’s only wasting his neighbors time.

                3. “The PTO needs to get out in front of the problem for a change instead of continuing to foster an environment which perpetuates that problem.”

                  It is precisely that lack of good leadership that is dragging the system down at this point. Fortunately, Michelle Lee may just do a good job once she actually has the job.

    2. 1.2

      Actually the notation on page 21 (and footnote 36) that satisfying the MOT test, by tying an abstract idea to a “particular machine,” may be enough to find eligibility, seems quite significant. For the past six months that argument has carried little weight with examiners; they have been focused on Alice’s comments about generic hardware being insufficient. But MOT is clearly alive and well, and footnote 36 and related text gives examiners a straightforward way to verify eligibility. Skillful drafting will make it possible to succeed under footnote 36 without running afoul of footnote 39 (noting that mere generic hardware isn’t enough).

        1. 1.2.1.1

          “Good luck with that.”

          Well, I don’t think they will need that much luck to scoot past the very rough filter of the PTO. Example: “See, my case has a memory bank that is integrated with a processor that performs these various operations, this is a lot different from [insert case here] that doesn’t mention a memory bank” It will work. In fact, arguments like this, especially if followed by 3-5 pages of 101 caselaw and argument will probably work very well.

          That said, it does bring to light a more interesting point… If you are merely drafting to get past the PTO, what makes a drafter believe that their foxing of the PTO will also fox the courts?

          This foxing is beginning to sound a lot like trying to squeeze the PTO for a patent with nuisance value only.

          This could be construed as a problem.

          1. 1.2.1.1.1

            This foxing is beginning to sound a lot like trying to squeeze the PTO for a patent with nuisance value only.

            It sounds like that because that’s exactly what it is.

      1. 1.2.2

        Don’t kid yourself.

        You cannot elevate a clue into a requirement.

        Remember:
        Bilski: MoT not required.
        Prometheus: MoT not sufficient.
        Alice: meeting the statutory category portion of 101 not sufficient.

    3. 1.3

      > Nothing to see here, at least on the abstract idea front. Simply a repackaging of Alice and a listing of post-Alice Fed. Cir. decisions of which the Examiners are already aware.

      Agreed, but the USPTO’s options are extremely limited.

      This issue is the ultimate example of hot-potato:

      * The CAFC is reluctant to assert any opinion that’s remotely reliable or consistent, thanks to SCOTUS’s heavy-handed review, aggressive reversal rate, and occasionally derogatory language about the CAFC.

      * SCOTUS, in decisions like KSR and Bilski, is tearing down old frameworks that don’t provide the result that it wants. SCOTUS is also tacitly (sometimes not-so-tacitly) instructing the lower courts to come up with better rules that somehow the desired results – without acknowledging that its pejorative remarks about lower courts’ holdings create a chilling effect, i.e., exactly the opposite tone that they seek to create.

      * The district courts and PTAB are waiting for the CAFC to set some kind of direction.

      * Congress isn’t interested in rocking the boat, since consensus can be achieved only on completely bland and non-controversial changes.

      The USPTO’s OPLA is caught underneath all of this. Anyone who tries to set a new direction had better have the term “Justice” in their name, or else their efforts can be targeted by half of the participants in this issue.

      It’s not quite Game of Thrones out there – but it’s as close as we’ll ever see in something as mundane as patent law. And the USPTO OPLA is both at the bottom rung of the ladder, with five layers of review overhead, and also the focal point, where the rubber meets the road. Hence, the inevitability that the guidelines were going to be extremely conservative and by-the-numbers.

      1. 1.3.1

        Hence, the inevitability that the guidelines were going to be extremely conservative and by-the-numbers.

        Yep, that’s OPLA for you. I’ve never ever seen them provide an example in training materials that didn’t come copied-and-pasted directly from case law.

      2. 1.3.2

        And the USPTO OPLA is both at the bottom rung of the ladder, with five layers of review overhead, and also the focal point, where the rubber meets the road.

        I think the examiners are both at the bottom rung of the ladder and also where the rubber meets the road. The examiners can’t just copy/paste case law in memorandum format and say they’ve done their job. They need to analyze the actual pending claims in front of them (not ones that judges have already considered) and respond to arguments and amendments (and not necessarily ones that judges have already considered).

        1. 1.3.2.1

          RH,

          The examiner is indeed the one that is out into a bind, I know that the quote “these do not have the force or authority of law” should be a response to any examiner that attempts to cite the guidance itself as authority for a rejection.

      3. 1.3.3

        “And the USPTO OPLA is both at the bottom rung of the ladder, with five layers of review overhead,”

        Not to mention they don’t even have the ability to write OA’s.

        “Hence, the inevitability that the guidelines were going to be extremely conservative and by-the-numbers.”

        Well, also the fact that they’re not willing to take a leadership position in all of this, even when this is exactly what is being called for in their position.

        We need a vision. Like the one I’d provided which was borrowed from the USSC and has been since re-adopted by the USSC. It’s a good vision. But the people in power need to get on board and lead the people.

        1. 1.3.3.1

          We need a vision… has been re-adopted

          Was that Flash of Genius or ‘the only valid patent is one that has not yet appeared before us’…?

          (and last I checked the constitution still delegates authority to write patent law – the lead the people part here – to just one particular branch of the government)

          1. 1.3.3.1.1

            And the last time I checked, the constitution still delegates interpretation of laws to the court system – to just one particular branch of the government.

            1. 1.3.3.1.1.1

              jesse,

              You are doing that monologuing thing again and not paying attention.

              Have you figured out yet that there is a difference between reading a map and writing a map? That there is a difference between statutory law and common law?

              Please try to post something on target (no one – and I do mean no one is saying that the judicial branch does not interpret the law).

                1. ^^^ not at all.

                  jesse, repeating your wrong statements will not change them into correct statements. All you accomplish is showing that you are not listening and that you are doing that monologuing thing again because you just don’t understand the legal terrain and the difference between reading a map and writing a map, the difference between statutory law and common law.

                  Over the holidays, watch the movie The Paper Chase and note the subtle comment at the one hour six minute mark. Let me know what that remark is (a first step for you).

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