The most impactful patent decision in 2014 looks to be Alice Corp. In that case, the Supreme Court outlined its jurisprudential steps for determining whether a claimed innovation is patent eligible. In the process, the court narrowed the scope of eligibility (implicitly invalidating many issued patents) and also seemingly unified the approach to eligibility across the potential subject matter. Alice Corp. applies equally to USPTO administrative procedures as well as to patent challenges in federal courts.
Gaps in the Process: Although the court created a framework for decisionmaking, it also left a number of important gaps that make it quite difficult for a bureaucrat patent examiner to follow the steps without substantial creative legal thinking.
To help fill this whole, in mid-December the USPTO released its 2014 Interim Guidance on Patent Subject Matter Eligibility. The guidelines where released in “interim-but-final” form and I expect that some amendments to those will come in 2015 in response to both advances in case law as well as commentary from interested parties. To that end, the USPTO has requested feedback by March 15, 2015 sent to 2014_interim_guidance@uspto.gov.
FORUM: The Office is also holding an public forum on the guidlines at the USPTO main campus in Alexandria on Jan 21, 2015. Anyone wanting to attend and/or present at the event needs to contact the USPTO (at the same email address above) by Friday January 9, 2015. More info here. According to the release, “only those with an accepted attendance request will be permitted to attend.”
The forum will provide an opportunity to provide specific examples of how the USPTO should be drawing the line between eligible and ineligible subject matter.
It’s been almost a month and we’re still waiting for the USPTO’s “abstract idea examples” to be provided. The January 21 “public forum” is just 9 days away. Wil lthe PTO gets its act together before the March 15 submission deadline at least?
The website has indicated that the examples are “coming soon” for an increasingly long period of time.
If the PTO would like to demonstrate a couple ounces of competence in this area, they can begin by reminding everyone that information and data itself are the quintessential examples of ineligible abstractions that can not be protected by patent claims. There is no “creative law making” involved in that statement.
Next the PTO could state that legal relationships between people (“married” “contractually obliged”) or between people and objects (“owned”) are also quintessentially abstract. There is no “creative law making” there.
Next the PTO could state that mathematical relationships (e.g., measurements and correlations) and the generalized steps of obtaining those relationships are also abstractions, as are the assigning of abstract “meanings” to both physical objects and other abstractions (e.g., “obtain data about X” or “put X in a spreadsheet table”). There is no “creative law making” there.
Finally the PTO could recognize as the Supreme Court did in Mayo and Alice that ineligible abstractions such as those listed above are not converted into eligible subject matter merely by salting in prior art technology for its intended purpose (e.g., old data gathering technology or old data processing technology).
As an alternative, the PTO could continue to bend over backwards for the “stakeholders” who want to prevent people from freely using old information processing technology for its intended purpose. But the PTO should recognize that it’s credibility — and the health of the patent system as a whole — is no longer measured by how many of its “stakeholders” cheer for the opened floodgates.
Those days are over.
Or alternatively the Google driven propaganda machine could be ignored and real inventions promoted.
Moved to the top because the format below is cumbersome:
From what I have noticed actually doing prosecution and interviewing examiners is the following: (1) the standards vary massively by art unit. Some art units I get no Alice rejections where it is software and I can’t see any difference than other art units. (2) That those art units that are giving rejections and citing Alice seem to have to ways out for us. One, integration like Diehr, or two like an EPO argument of an improvement in the operating of the computer.
And I have had Alice rejections withdrawn.
That is just one real patent attorney’s take on it. (Swirling nonsense based on swirling nonsense. Benson is the root of all evil in patent law.)
Why do you think Benson was incorrectly decided? The following portion of the opinion seems totally reasonable, even prescient:
“It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. 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.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. The President’s Commission on the Patent System rejected the proposal that these programs be patentable:
“Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted.
“The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.
“It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available.”
If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed.”
Repeating the monstrous dicta really does nothing.
Anon,
I posted that portion of the opinion to show that the court’s holding was well reasoned. What portion do you disagree with?
Go, the dicta is NOT well reasoned.
Try looking at the bigger picture of the political and philosophical forces in work – who on the bench was saying what, whose lead that person was following and note as well that the “good reasoning” would apply to any AND ALL ground breaking innovations.
Such anti-innovation thinking simply cannot align with the purpose of a patent system that necessarily encourages such breakthroughs.
You are getting to be much like MM in not responding to the content.
You are getting to be much like MM in not responding to the content.
Go f ck yourself.
Awww…..
Now why is it that only MM can use words like this? (I am sure if MM responds he will not respond to the substance.)
I also wonder Go if you understand the functioning of our society. The SCOTUS should not be saying that they think the PTO can’t examine applications, so they are going to go ahead and make up some nonsense. That would be the job of the Congress. Not the SCOTUS.
Benson is one of the worst chapters in American jurisprudence.
It is not well reasons. It is absurd.
Every claim preempts what is encompassed by the claim.
Furthermore, the claim didn’t cover every method of converting to BCD. It only covered those methods encompassed by the claims.
One could still use the prior art method. Not that covering every method should be prohibited. If you invent every method the world couldn’t do it at all before, now they can if they pay you…. whats wrong with that?
If I find the cure for cancer, I can patent that can’t I? I can patent it even if its the only cure can’t I?
“Furthermore, the claim didn’t cover every method of converting to BCD. ”
That’s not what the patentee admitted…
“One could still use the prior art method.”
There was no “prior art method”. He invented machine-implemented binary to BCD. Remember, we’re talking 1950’s sht.
” If you invent every method the world couldn’t do it at all before, now they can if they pay you…. whats wrong with that?”
You’re claiming the abstract idea of BCD binary conversion. As has been explained to you one million times.
Kindly paste in the claim in question. We will see if it was abstract or not.
I’m pretty sure you can find your way to benson brosef. It’s all over your interbuts. And the claim has already been ruled to have been directed to the abstract idea (as it was literally drafted to be).
Claim 8 reads:
Yes, I can. Here is claim 8, the first contested claim. As I hope even you can see, the claim is easyly worked around and does not preempt all BCD conversion.
In case you can’t see the easy work around, one could, for example store the binary coded decimal in something other than the reentrant shift register of step (1).
Alternatively, one could convert the BCD by mapping the values in each BCD position to a corresponding binary value (like in a look up table) and do binary arithmetic calculations based on those values to arrive at a single binary value.
The ruling in Benson is absurd.
“The method of converting signals from binary coded decimal form into binary which comprises the steps of
“(1) storing the binary coded decimal signals in a reentrant shift register,
“(2) shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of said register,
“(3) masking out said binary `1′ in said second position of said register,
“(4) adding a binary `1′ to the first position of said register,
“(5) shifting the signals to the left by two positions,
“(6) adding a `1′ to said first position, and
“(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary `1′ in the second position of said register.”
The method is simply a subroutine.
Note that in most of today’s CPU designs all registers are re-entrant shift registers (except maybe the SP (Stack Pointer), but some specialized CPUs might limit shift capabilities to specific registers. Back then (1960s-1970s) an assembly language might use special names for each type of CPU register. A compiled language would probably have concealed the details of the various registers. The p8cc (portable 8 bit cc) compiler that I used in the 1980s — it was developed for pay telephones –worked in this way as do many compilers developed for DSPs (Digital Signal Processors).
The method tells what goes into the subroutine and what comes out. It really does not connect the inputs and outputs with anything. The subroutine only operates on the CPU and improves the CPU in no way, shape, or form.
The subroutine described implements an algorithm completely expressible in Church’s lambda calculus and is therefore a programmatic expression of a mathematical formula.
It is hard to see how this claim could possibly be allowable.
Now if this subroutine were running on a microprocessor reading the outputs of a clock chip and writing the inputs of a BCD LED display in an early electronic clock, it might be possible to transform this attempt to claim a mathematical formula into a legitimate method claim associated with the system consisting of the hardware and software of the electronic clock, and the claim then would no longer be completely expressible in Church’s lambda calculus.
“the claim is easyly worked around and”
It doesn’t look “easily” “worked around” to me. Not if we’re still going to be doing binary to bcd conversion via the applicant’s abstract conversion idea. Maybe the patentee could have told the USSC how easy it was to “work around”. O wait, they didn’t!
“for example store the binary coded decimal in something other than the reentrant shift register of step (1).”
O rly? Such as? Don’t be shy brosef. Tell me (and the USSC and the whole world) all about this other thing that does magical shifting of bits reentrantly (because you’re going to need to do those things to do the abstract idea as set forth by the applicant) and which IS NOT a reentrant shift register.
“Alternatively, one could convert the BCD by mapping the values in each BCD position to a corresponding binary value (like in a look up table) and do binary arithmetic calculations based on those values to arrive at a single binary value.”
First, if you do it your way then you’re not really using THE (antecedent basis intended) abstract idea of the specific binary to bcd conversion as it was laid out by the inventors which was recounted for you in the decision. You’re just coming up with another abstract idea and using that abstract idea instead. You’re just telling us an alternate way of accomplishing bcd to binary on a compooter that comprises, rather than actually doing THE BCD to binary “conversion” (which they have patented all ways of doing) formula you instead just do binary to bcd “lookup” (and maybe add some other math on at the end). That’s different than actually being able to use the admittedly abstract method of conversion they came up with.
Essentially you’re just saying, “nevermind that we’ve patented this abstract idea, there are plenty of other abstract ideas that you could use instead (and don’t worry about doctrine of equivs we’d never try to use thaaaaat!)”.
Second, from what I can recall of binary and bcd from my school days what you’re proposing would be an immensely complex undertaking for each little conversion, so much so the computers of the day likely wouldn’t even be able to do it and even if they could do it then you’d likely nullify the whole point of putting things into BCD in the first place (and thus nullify needing to translate them back to binary later) thus making the actual doing of that worthless. Again, you will not have provided a viable alternative for any real world use.
Oh and third, doctrine of equivs? Ooooo burn, your method might still infringe!
Remember lester, you’re using this:
link to en.wikipedia.org
Note its nickname, can’t add, doesn’t even try because it had to use lookup tables just to add (in binary I presume) lol.
You’re not using the computer you’re talking to me on now.
____________________________
Finally Lester, you have to remember that none of your arguments made today were made by the patentee. Even if I was persuaded they done bonked up ON THE FACTS in that case then it wouldn’t matter because they got the law right. And also he was free to so argue and chose not to. An argument (even the “correct” argument) made 50 years too late isn’t timely made. The process goes like this. Guy gets patent and accuses someone. Defendant says but but but it looks like he’s trying to cover all uses of the abstract idea he disclosed! Judge says yeah it does look like that may be the case, do you have anything to say Mr. patentee? If he then remains silent or solely spouts bs, he risks losing his patent.
“The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.”
So, the SCOTUS is in a position to make a factual finding like this? No they are not. This is one of the most shameful statements in the history of jurisprudence. This one statement illustrates what the public policy of Benson was to generate the nonsense to exclude information processing. Shameful. Read Chisum’s paper on Benson. 16 uses of algorithm. Benson is a shameless hack job.
“So, the SCOTUS is in a position to make a factual finding like this? No they are not. ”
They were repeating official reports of the day, the factual content of which was determined by other branches of the gov.
“Read Chisum’s paper on Benson. 16 uses of algorithm. ”
Interesting, I don’t recall that in his paper. Post whatever paper you’re talking about.
And even if it be so, why could the patentee not be bothered to tell us any of these “16 uses” that Chisum is dreaming up 50 years later? Perhaps they were not conceivable at the time?
Moreover, Go, let’s talk about reality and not your swirling nonsense. Reality: the USA is the number one country by an order of magnitude in information processing industry. The information processing industry has gone from like 5% of GDP to 20% of the GDP since patents have been given in information processing.
Your continued nonsense that there is this dire condition that patents have created and that they have destroyed software is just plainly —now here is a word you don’t know–FACTUALLY wrong.
Go reminds me of a bright enough an eager young lad, who went straight from his comfortable liberal arts undergrad degree right into law school where he excelled at parroting back what the professors wanted to hear, into a large law firm where he cycled through the IP department on his way elsewhere.
Zero real world experience and the barest scratching of the surface on patent law, with no appreciation whatsoever for the history of innovation.
Polite enough for a youngster, but head already filled with koolaid and an inability to assess the nonsense that he has been fed since he has no real world experience to judge the nonsense against.
A person, pleasant enough, but with feet only in the academic world.
Anon,
Not that it is really relevant, but just so we know one another a little better, that’s not really my background.
Undergrad in one of the engineering disciplines. Summer internships at several large corporations. Two years in industry before law school. I didn’t even know what a patent was before I entered law school, although I did have to sign several NDAs because several companies I worked for used trade secrets. Admittedly, none of this experience is in computer science. Although I did quite like programming in undergrad.
Night,
As we’ve discussed, everyone here agrees that information processing is important to the economy. That factual conclusion does not lead to the conclusion that information processing is eligible under current law. Or at least, that has not been explained.
A claim that information processing is being harmed is the justification for the judicial activism of the SCOTUS and Fed. Cir.
State Street was good law for many years and the SCOTUS turned down a cert request.
No real science trained person could think that information processing machines should not be eligible. It is from a 30,000 foot view absurd.
Night,
I think you and I agree more than you might think. I want to stress, again, though, that I don’t think our disagreement has anything to do with technology. We both think information processing machines are very, very important and have a huge impact on our economy. We both think, that a properly claimed information processing machine is eligible.
Where we seem to differ is on how to properly claim such machines, a purely legal question. And again, I’d like to stress that eligibility problems are not confined to data processing. Mayo is again a great example.
Maybe. We would have to delve into the disagreement more. I would ask you, though, to incorporate into any argument of yours the way real PHOSITA describe machines on websites like elance.
Go Arthur: I’d like to stress that eligibility problems are not confined to data processing. Mayo is again a great example.
I would argue, Go Arthur, that Mayo is a great example of a data processing claim, albeit a non-computerized one (which might be what you were referring to).
That’s because the only “new” step in Prometheus’ claim was the step of interpreting data in a “new” manner.
“State Street was good law for many years and the SCOTUS turned down a cert request.”
What a blunder. I had been wondering whether the supremes turned down cert. You sure they did?
What reality is Go is that Google wants patents diminished big time. That is part of the public policy statements. They are the biggest giver to Congress. They are getting their way. That is the big picture of what is going on. That is why Obama is appointing ridiculous people to the Fed. Cir. If they had integrity, they would admit that they don’t understand technology and resign.
Correlation is not causation. A large, complex and rapidly changing industry provides plenty of opportunities to capture incremental profits by pursuing patent activities.
For example, back in the 80’s when IBM sued Sun over 7 patents. Eventually IBM told them “OK, maybe you don’t infringe these seven patents. But we have 10,000 U.S. patents. Do you really want us to go back to Armonk and find seven patents you do infringe? Or do you want to make this easy and just pay us $20 million?”
IBM is monetizing its patent portfolio, [and making a nice chunk of change] but this 20 million dollar transaction had nothing to do with the growth of the US IT Industry.
That is so simplistic. I was a developer starting back in the late 1970’s for some time.
I know what the patent system did.
It saved your little company from the likes of big ol mean IBM didn’t it?
Must you follow me around and pester me 6. You have been doing it now for like 8+ years. Don’t you tire of pestering me?
Benson is one of the worst written cases I’ve ever read. It has so many internal inconsistencies and is particularly egregious given the 50+ years of innovation since then.
For instance, to me, this statement means nothing implemented by a computer can be patented:
“It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. 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.”
Yet, they explicitly state that they are not saying that their decision prevents patents that use computers (even though they just said the opposite).
It’s a terribly written decision that makes Alice look well written.
Furthermore, if you limit the algorithm for converting binary to BCD to solely implementation on a computer, then why would that be a “patent on the algorithm itself”? You could then perform the algorithm in your head, on paper, in books, etc., but not on a computer. Granted, the claims did not limit themselves to implementation by a computer, but there is indication in Benson that it wouldn’t matter whether the claims were limited to a computer (although, again, the wording in Benson is so hard to read it’s unclear what they were trying to say).
The problem stems from this statement:
the “practical effect would be a patent on the algorithm itself” as if that was a problem and as if there was some prohibition against patenting an algorithm.
Algorithm is just another word for process and processes are patentable…why look…processes are even the first category listed!
Go,
Along the lines of “reasonable, even prescient,” what do you make of this portion of Benson:
“It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.“
Anon,
I agree that they so held and that computer programs are not categorically excluded from eligibility.
NWPA Wrote: That those art units that are giving rejections and citing Alice seem to have two ways out for us. One, integration like Diehr,.”
That’s because no Examiner, Judge or Attorney can overcome the Supreme Court’s Integration Analysis. Many on this blog have tried. And ALL have failed. But of course you have to get your Examiner, Board or Judge to actually engage in an Integration argument. Most seem to simply ignore it, and use or make up some other test. But that strategy will fail at the Supreme Court, as we will see in the near future.
And for those that claim they do not know how to apply Integration Analysis, there is no better text or instruction than the exact words of the Supreme Court itself. We begin with…
“While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94 (1939). 11
We think this statement in Mackay takes us a long way toward the correct answer in this case. Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates (Integrates) in it a more efficient (inventive) solution (application) of the equation, that process is at the very least not barred at the threshold by 101.( Diamond V Diehr) [ Words, integrated, inventive, application , are added from Prometheus case for comparison purposes ]
In the Prometheus case the Supreme Court reconciled Diehr with Flook and it’s other precedents with
Integration Analysis. As you read, note the use of the interchangeable keywords that reconcile the two cases.
Integrated =incorporated
Inventive = more efficient
Application = solution
“Diehr and Flook, the cases most directly on point, both addressed processes using mathematical formulas that, like laws of nature, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the process integrated ( incorporated) the equation into the process as a whole. 450 U. S., at 187. These additional steps transformed the process into an inventive ( more efficient) application (solution) of the formula. But in Flook, the additional steps of the process did not limit the claim to a particular application (solution), and the particular chemical processes at issue were all “well known,” to the point where, putting the formula to the side, there was no “inventive concept” in the claimed application (solution) of the formula. 437 U. S., at 594. Here, the claim presents a case for patentability that is weaker than Diehr’s patent-eligible claim and no stronger than Flook’s unpatentable one. The three steps add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity…”
By the way, the further you integrate an exception the more you limit it’s reach. This limitation of reach is objectively determined by the preemption inquiry. ( See Diehr, Prometheus)
Now that we are grounded by Supreme Court case law we can create some basic rules to efficiently and accurately apply the Court’s Integration analysis to actual claims.
Rule 1. Old concept + inventive application ( more efficient solution or result) = eligible. (For example, a more efficient solution for curring rubber.)
Rule 2. Inventive concept + old application = eligible. ( Diehr lacked an inventive concept according to Flook, but had an inventive application according to Prometheus, so it was still eligible. )
Rule 3. Old concept + old application=ineligible subject matter.
In Prometheus the law of nature, though newly discovered, had always existed and was old and the steps for applying it were well known… The claim was therefore ineligible according to Supreme Court precedent. Had the process been further integrated into an inventive application as in Rule 1 above, the claim would have been eligible subject matter.
Same rules apply to Alice. Intermediated settlement, like hedging in Bilski was a well-known fundamental economic concept. Integrating the concept into a computer system, Rule 3, was not considered inventive by the Court. But had the inventors integrated the old concept running on a computer system into another process that was producing a more “efficient solution”, as was the case in Diehr, you would have an inventive application, Rule 1, and therefore eligible subject matter. And this is why Ultramercials claims are patent eligible subject matter as well.
Conclusion
While applying an Integration Analysis is not as simplistic as the bright line test of MOT, if you take the time to actually “think” it through in an “intellectually honest” manner, you will find that it works in a very fair and efficient way for establishing patent eligible subject matter, that incorporates, and is based purely on Supreme Court precedent.
Moved to the top because the format below is cumbersome:
Les: the objective physical structural differences between the prior art and new machine are at the level of the state of charge (number of electrons) at various points in the circuitry
Great. So let’s get this straight. In response to my earlier point about the special eligibility issues created by the typical computer-implemented information-processing claims (which necessarily raise subject matter eligibility problems because of their relation to ineligible abstractions and the application of logic to those abstractions) you argued that “there was nothing special about computers.”
Now, apparently, you admit that there is something very special indeed about them. Specically, you argue now that the objective structural difference between a computer ‘configured to perform function X” and “a computer configured to perform function Y” are apparently so tiny that it would be unfair and burdensome to require “innovators” to describe those differences.
What we seem to be proposing instead is that we should allow judges (“activist judges”, I think, is an accurate description, if I may borrow the phrase) to create a special exception for this class of manufactures. Whereas other apparati need to be distinguished from the prior art on the basis of their objective structural differences, “improved” information processing/storage apparati falling within the exception can be distinguished from the prior art solely through the recitation of some “new” information processing functionality. And the reason for that, again, according to you, is that requiring structural detail would be “impractical.”
Do I have that correct, Les? I want to be sure because, as someone who has prosecuted applications describing and claiming the 3 dimensional structures of new and highly complex compositions of matter at the atomic level, your argument for this exception isn’t terribly compelling. Let me know.
Because… cumbersome…
Um sure and how nice that you feel that you can make your own “rules” becuase the site’s system is too ‘cumbersome’ for you.
Let’s see how many other bogus things you have going on here…
Well the easy one to see is your false pretense that somehow it is judges that are ‘allowing’ a different claim format that your optional one of “objective physical structure.”
That’s a big one.
You also err in your spin about small changes, falsely equating this to inconsequential changes.
Small does not mean inconsequential and further, you are aware that the claims are to be understood by Persons Having Ordinary Skill In The Art. You appear to want to forget about the last part of that clause (again).
You do know that it was Congress that blessed the use of terms sounding in function in 1952, and they did so in more than just 35 USC 112(f), right?
Les is absolutely correct here – the plain law is being used by those claims software inventions in a perfectly ordinary and allowed manner.
Also, as has been pointed out, a 210 page, painstakingly detailed “objective physical structure” claim is possible or any software claim. But such a claim while meeting your “standards” would be impossible to actually provide any meaning to any reader of the claim, swamping all readers in unnecessary minutia, and virtually making examination truly impossible.
It is a false statement to say that such “objective physical structure” claims would be readily accepted by you.
You have been let known.
“Also, as has been pointed out, a 210 page, painstakingly detailed “objective physical structure” claim is possible or any software claim. But such a claim while meeting your “standards” would be impossible to actually provide any meaning to any reader of the claim, swamping all readers in unnecessary minutia, and virtually making examination truly impossible.”
Bro any claim longer than 2 pages usually gets the ol’ allowance treatment pretty quick. If your claim be 200 pages long I wouldn’t doubt that “examination” could proceed fairly rapidly. Especially if we established a database especially for this purpose (just like in the chem arts).
“It is a false statement to say that such “objective physical structure” claims would be readily accepted by you.”
What makes you think MM would be opposed to such “objective physical structure” claims?
What makes you think MM would be opposed to such “objective physical structure” claims?
Great question. Particularly when I’ve stated the exact opposite on numerous occasions.
What makes me think that?
The games and moving of goalposts coupled with the statement from Malcolm that NO software is patent eligible – whatsoever.
You have a rather profound misunderstanding of what MM and I have argued here for years bro. Profound. I suppose this is to be expected of course since if you did understand us you wouldn’t argue the way you do, constantly setting up this or that tiresome strawman etc.
But here, let me explain to you anon that MM doesn’t really mind the “software” itself (in so far as “the software” here is just literally for instance a plastic cd disk with pits engraved in it laying on a table somewhere irl) being “eligible”. What he takes issue with is abstracting from that disk with actual irl pits engraved on it to ALL disks with pits engraved any ol whichaway that happens to accomplish a function when combined with a totally different machine (something to read and execute the instructions). You can extrapolate that position on disks with pits engraved to whatever medium you want to through various descriptions. And what he takes double issue with is then making a legal claim to the same. By having done so, you’ve turned the cd with some pits on it irl into an abstraction that you want to patent upon, in essence, the “idea” of a cd/whatever medium that will make a computer do x.
To be clear, neither do I really, and neither does anyone else, so long as you continued from that point on to follow the same rules as everyone else. AND that also includes at least some of us liking to see PMD eliminate claims such as that from being patentABLE under 103.
Remember, MM still makes $$$ describing the microstructure of objects for a living and he totally wants those to remain eligible. He doesn’t mind one whit if you’d like to do the same, in just the same fashion as he is made to (quite reasonably). Remember, his art was once “young” in terms of patent law and went through nearly the exact same transformation as software is now.
Also to be clear, wouldn’t hardly anyone give two shts about your softiewaftie claims if they were limited down in usefulness to the same levels as claims in other arts are. But, as you yourself have noted, most of the “valuable” patents relate to that art, not just because of ubiquity of such devices used/made in society, but because of the comparative ease of establishing huge scope due to the policy of coddling in effect. And nobody would care because, as you and NWPA both concede iirc, your claims would all be worthless. 100% worthless. But then you turn around and use that as an excuse to beg favorable coddlings. And they give them to you. That’s what we protest. And I know, I know, you don’t think they are favorable coddlings.
You are completely – and desperately – off, 6.
Not.
Even.
Close,
Bub.
My description of my own, and something pretty close if not exactly the same as MM’s, position(s) is “completely off”?
I see.
Your opinions are your own – anything else, anything substantive is – as I said – off.
You do understand how that works, right?
Your opinions are your own – anything else, anything substantive is – as I said – off.
You do understand how that works, right?
What we all understand, “anon”, is that you’re an a hole pr*ck who can’t reason his way out of a cardboard box.
Brush aside the vulgarities (love to see Malcolm do that in court), and the baseless opinion of one who has been repeatedly whipped in debates, and you have…
… absolutely nothing.
How typical.
> NWPA both concede iirc, your claims would all be worthless. >100% worthless. But then you turn around and use that as an >excuse to beg favorable coddlings.
Information processing is coming close to 20% of our GDP under the nurturing of the patent system. A few large companies with lots of money to spend inside the beltway have decided they don’t want patents.
That simple.
” By having done so, you’ve turned the cd with some pits on it irl into an abstraction that you want to patent upon, in essence, the “idea” of a cd/whatever medium that will make a computer do x. ”
But no other art is limited to picture claims.
The Wright Bros. didn’t claim a single flying machine. The claimed every flying machine having a certain set of characteristics…in which some portion of the wing could be moved out of the plane of the wing, to name one characteristic…
So, why do you feel it is appropriate to limit software to picture claims?
“And the reason for that, again, according to you, is that requiring structural detail would be “impractical.””
And that is what all this boils down to. Alleged impracticality being used to justify gross over-reach.
I mean, here’s the thing, if the congress spoke then I’d be all for it. It doesn’t make sense to me, but if the congress backs it then fine.
Then, people may go to court and have whatever section that the congress thus spake in challenged in open court for all the usual reasons.
Without the above though I just can’t support this blatantly illegal carryin on.
“improved” information processing/storage apparati … can be distinguished from the prior art solely through the recitation of some “new” information processing functionality.
Sure, why not? That is, so long as the resulting claim is definite, enabled by the specification, and doesn’t simply preempt all applications of an abstract idea. Where you go wrong in your analysis is your insistence that this is some kind of “exception.” Perhaps they don’t work well in your area, but functional limitations are used in lots of technical areas to objectively define a definite class of structures.
“Where you go wrong in your analysis is your insistence that this is some kind of “exception.””
It is an exception. We don’t allow that nonsense in my art. We don’t allow that nonsense in MM’s art. It isn’t allowed in the kitchen arts. I don’t even know any other arts where such is allowed.
We don’t allow that nonsense in my art. We don’t allow that nonsense in MM’s art.
You don’t allow functional limitations in your art? Which art is that?
If you’re not referring to functional limitations, which “nonsense” exactly is it that you don’t allow? And why not, if you can explain without simply falling back on “it’s nonsense”?
thanks!
“You don’t allow functional limitations in your art?”
I didn’t say that we “don’t allow functional limitations in my art”. I said we don’t allow the sht that goes on in the softiewaftie world re functional limitations in my art.
For art, what we (and the people in MM’s art) do with a functional limitation is the sensible thing to do. We look the spec to see what STRUCTURE (as in the objective physical structure) that the applicant is disclosing as performing that function. Then we go find that, or something else doing that function or which appears would do that function and apply art as appropriate. This is how “examination” hems in functional nonsense. But it can’t in the softiewaftie world because “policy of coddling” is in effect. Should the applicant not have a structure that can perform that function shown, then we will make sure to object to the drawings until it is well depicted, and no, “black boxes” are not acceptable. And if they disclose the structure that performs that function at as a hugely generic structure, then all we’ll find is the hugely generic structure and apply that.
We will also eval the claims under 112 1st and second and will not hesitate to use 112 1st if the need should arise. If it appears the applicant has not fully described the invention (given us enough species etc.) he may well hang for 112 1st. OOOOOhhhh but wait, if it is on a compooter you don’t need to give any species whatsoever to have fully described the supposed “invention”.
This is the last time I go around in this circle with you DanH.
You don’t allow functional limitations in your art? Which art is that?
The last time the Supreme Court spoke on the issue, it was pretty clear that functional claiming was invalid.
Perhaps they don’t work well in your area, but functional limitations are used in lots of technical areas to objectively define a definite class of structures.
And this would be the one time that it is valid. Software is definitely not this situation though, and I question whether “lots of technical areas” would fall into your camp here.
In my experience, the majority of time functional language is used is not because you have all the answers and no other way to convey them, it’s used specifically because you don’t have all the answers and are trying to capture the ones you don’t have. Software is certainly replete with this – the inventor writes one code which achieves the result, doesn’t disclose the method performed to reach it, and then claims it functionally to try and capture every other route anyway. That use of functional language is commonplace today and has always been wrong.
“The last time the Supreme Court spoke on the issue, it was pretty clear that functional claiming was invalid.”
Cite please.
(and let’s note the relation to the 1952 Act, which opened up that Vast Middle Ground that you cannot seem to comprehend)
Halliburton.
Now let’s cite to where in the 1952 act a vast middle ground was opened up? Because all I see is an optional means-plus style which few avail themselves of.
Halliburton was pre-1952 and abrogated by the words of Congress.
This has been explained to you previously (See Frederico)
That’s all anyone else sees, except our dearly departed judge Rich who thought it meant a wild wild west and everyone was like: OK!
The last time the Supreme Court spoke on the issue, it was pretty clear that functional claiming was invalid.
It seems to me that you’ve changed the subject, from “functional limitations” to “functional claiming.”
I’m not arguing that a claim that is directed to nothing more than a single function is valid.
Bingo.
See also the goal post movement activies of trying to switch conversations to claims that are PURELY functional or claims that are undertaken TOTALLY in the mind.
6 obviously does not understand In re Orthokinetics, much less 35 USC 112(a), (b) in addition to (f).
6 obviously does not understand In re Orthokinetics, much less 35 USC 112(a), (b) in addition to (f).
That’s possible. Another possibility is that we’re not talking about exactly the same things, so we’re talking past each other. But I suppose your approach gets us to the insults more quickly.