by Dennis Crouch
In the Summer of 2014, the U.S. Supreme Court decided the seminal case of Alice Corp v. CLS Bank that pushed further against the patenting of abstract ideas or their non-inventive applications. As part of its implementation procedures, the USPTO quickly began examining applications under the new standards and – as an immediate response – withdrew the allowance of a number of applications that had been determined to be patentable prior to the Alice decision. Through a FOIA request, Charles Duan and Tristan Gray-Le Coz of Public Knowledge were able to obtain a list of those several hundred withdrawn applications and reported their results on Patently-O in November 2014.
I wanted to follow up on those applications to how they have fared in the seven months since the USPTO’s July 2014 action. These cases are interesting because they were ready for issuance and the only extra issue is eligibility under Section 101. Thus, this setup offers a nice natural experiment to consider cases where Section 101 is of direct importance.
Using PAIR, I pulled up pendency information for each of these applications and the chart below shows the results:
Basically, 93% of the applications are still pending. Most of these have been initially rejected under Section 101 and now are on to a second-round final. 7% though are either patented or have received a notice of allowance. Only 1% of the applications have been abandoned. Because these applicants had – at one point – a genuine expectation of issuance that may be hard eliminate.
Of these issued patents, I think that the response filed in Application No. 13/076,216 is interesting. In that case, the applicant essentially argued that the USPTO had failed to provide evidence that the idea of data collection and analysis was an abstract idea and failed to provide evidence that the computer-implemented limitations failed to provide sufficient practical grounding in order to avoid the eligibility ax. The ‘216 application has matured into U.S. Patent No. 8,965,784.
Over the next year, we should begin to get a good picture of how the USPTO will be working with the framework laid out by the courts.
Patent law is patently absurd! Ideas should be patentable.
What else is the modern economy based on than mere ideas?
There is a campaign now on Indiegogo that is attempting to gain support in the crowdfunding community to allow “Idea Patents”.
If government will not do the right thing, We the People should!
link to indiegogo.com
“Supreme Court decided the seminal case of Alice Corp v. CLS Bank”
You know, Dennis, it occurs to me that if you did not also similarly refer to the Monsanto case as “seminal”, you really missed an opportunity.
Kind of a corny joke.. but it grows on you.
Still not better than the Star Wars meme and the attack of the clones…
Sorry dolly, I realize that was a baa-aad joke
I guess you make a soylient point.
I can’t think of any more, so I guess that’s the RoundUp.
I can’t think of any more, so I guess that’s the RoundUp.
(durn replicator stuck)
The PTAB made a comment about evidence in PNC Bank v. Secure Axcess:
“We also find that Petitioner does not provide sufficient persuasive evidentiary support that the placing of a trusted stamp or seal on a document is “a fundamental economic practice” or a “building block of the modern economy.” See Alice, 134 S. Ct. at 2356 (citing various references concerning the concept of intermediated settlement, including an 1896 reference).”
Whoops. That’s already in the response that Dennis provided the link to.
They never saw a notary stamp on a document?
[We need] evidentiary support that the placing of a trusted stamp or seal on a document is “a fundamental economic practice”
Translation: “Please change our diapers while we continue to enable the lowest form of innovation. It’s super fun to be born yesterday and play patty cake with grifters and scam artists! Everybody should try it!”
Just do without that “lowest form” and kindly STFU.
Thank you an have a nice day.
Off topic, but was wondering: the dialogue surrounding NPEs, patent “quality”, and patent reform generally has made abundant use of the term/concept “innovation” instead of “invention”.
Of course, one could conclude that when engaging in a war of words/PR/spin sometimes a side will purposefully inject and prop up an anti-concept or an ill-defined one while avoiding a valid concept… in order to mislead and/or muddy the waters.
For now let us assume this did NOT happen. What then is the valid concept “innovation” as distinct from “invention”?
Clearly from the dialogue, it is implied that innovation includes invention but includes other things in addition to invention. Also innovation could not reasonably mean “production” or manufacture or delivery of good and services, since technically speaking these are the result of innovation or the means by which innovation is provided to consumers – its what the “dialogue” is claiming results FROM innovation, and cannot be innovation itself.
What then are those other things included in the concept “innovation” which are both non-inventive creations, and are clearly not within the realm of production of goods and services? And why would they care about these things, these intellectual (and possibly conceptual) orphans?
Does it include intangible or intellectual products of the mind which are not or cannot be the subject of property rights? Does it include unpatentable ideas? Useful “abstractions”? Things which magically make one’s computer do stuff but which fail the Alice test?
If so what’s the fuss? These lost ones afterall, as unpatentable “innovations” are not protectable and from their arguments should not be… so does not that mean they do not value them at all … and if so why do they bother to use the term innovation at all if the only important species is “invention”? Clearly, anti-software advocates want to orphan large swaths of software inventions and the like under Alice (wrongly or rightly) so why do they use an inclusive term such as “innovation” to label that which they clearly do not believe is important enough to protect?
So what IS the point using the term “innovation”? What possibly could be the end game? Confused.
^^^ a long and more steadfastly detailed version of the question I put directly to Malcolm long long long ago (and one he has NEVER directly – and honestly – answered).
“You want the truth?” (said in the best Col. Nathan R. Jessup tones)
Of course, one could conclude that when engaging in a war of words/PR/spin sometimes a side will purposefully inject and prop up an anti-concept or an ill-defined one while avoiding a valid concept… in order to mislead and/or muddy the waters.
Of course, one could conclude that sometimes people are just too paranoid/or ignorant to follow a discussion without getting hung up on pedantic balloney.
Grow up already.
anti-software advocates want to orphan large swaths of software inventions
He found a nut! Wow. Super impressive.
^^^ mindless empty prattle
As usual – “Wow. Super impressive”
Maybe next time Malcolm you might actually try contributing to the dialogue in a meaningful way.
Some people claim that innovation means actually making and selling things that are relatively new. But the fact that the newness is in question because some unfunded startup had the same idea and disclosed it in a patent before the “innovator” does not prevent the so-called innovator from claiming that status. Nor does the fact that the making is not done by the “innovator” but by a factory in the third world.
Some people claim that innovation means actually making and selling things that are relatively new.
Please identify one person who made this claim.
One example is the big companies that claim that their innovation is being interfered with by little guys who sue them for patent infringement.
Your 101 arguments against this one? This is claim 1 of 8,818,677.
“1. A vehicle speed control system which is installed in a vehicle which has a vehicle speed detector, comprising: a controller that performs vehicle speed limit control that limits a vehicle speed so that the vehicle speed detected by the vehicle speed detector does not exceed a speed limit, and speed increase rate control that allows increase of the speed of the vehicle after the vehicle speed limit control is finished while limiting a rate of increase of the speed of the vehicle so that the rate of increase of the vehicle speed does not exceed a target rate of increase of the vehicle speed, wherein the controller sets the target rate of increase of the vehicle speed based on the vehicle speed detected by the vehicle speed detector, so that the target rate of increase of the vehicle speed after the vehicle speed limit control is finished is larger when the vehicle speed is high during the vehicle speed limit control compared to when the vehicle speed is low during the vehicle speed limit control. ”
I’m not even sure how this was rejected under Alice.
This points out a problem with getting rid of all “software” patents. This is basically a “software” patent, as the controller is programmed via “software” (which could be firmware). If you get rid of all “software” patents, you get rid of patents like this.
“I’m not even sure how this was rejected under Alice”
PatentBob,
Respectfully, you need to pay better attention.
With the (unlimited) “Gist/Abstract” sword, the mere fact that the claim itself – as a whole – IS a machine or a manufacture, or any other statutory category does not protect the claim from being invalidated when brought in front of the court.
This power remains undefined.
How can you honestly say that you are unsure of how this happens? With full due respect, have you been living under a rock?
most of the allowed applications appear to be totally false positives. What happened then was that after the case was withdrawn it was sent back to the examiner who determined that it met the requirements of 101. As a consequence of these applications were never actually rejected for lacking eligible subject matter.
I think I am missing a detail when I read the post, then.
Doesn’t “Basically, 93% of the applications are still pending. Most of these have been initially rejected under Section 101 and now are on to a second-round final” mean that the vast majority were rejected under 101, and remain rejected under 101?
I’m sorry.
Here is what I’m saying: Of the withdrawn-cases that are now allowed. Most of those were not actually rejected under 101.
In other words, removing the false positives, nearly every single application is being pursued (greater than 99%)…
The type of pursuit would be an interesting tale.
Wait until MM gets a load of the USPTO’s Streamlined Eligibility Analysis.
His head may very well explode.
That Analysis, when taken to its logical conclusion and if applied properly by Examiners, should get all claims that recite some non-general purpose computing device elements over the 101 hurdle.
Interesting to note that, to my knowledge at least, all claims invalidated under Alice have been general purpose computing device claims. Nothing like the claim above has been invalidated.
Interesting to note that, to my knowledge at least, all claims invalidated under Alice have been general purpose computing device claims. Nothing like the claim above has been invalidated.
For eligibility purposes, there is is zero meaningful distinction to be drawn between a “general purpose computer” that is “configured to” receive/store/process information, a “general purpose processor” that is “configured to” receive/store/process information, and a “general purpose controller” that is “configured to” receive/store/process information.
That’s because “computers” and “processors” and “controllers” are old. When all that’s new is the new “functionality”, what is being protected is the new functionality.
New functionalities are not eligibile subject matter.
The bottom line here is that plenty of claims “like the claim above” have been rendered ineligible. Managing the speed of a car “on a controller” or managing a bingo game “on a computer” or managing “access” to a database of awesome medical therapies “on a processor”. Same difference. It’s functionally claimed junk, from top to bottom.
Get it out of the system. It’s already off the rails. Does the train need to come to a rest upside down on the bottom of the ocean before we fix this mess?
Actually, new functionalities can be eligible subject matter.
Example please.
OK?
My Diehr Ned, why do you ask a question that you know the answer to?
Is this too cryptic for you? (as another example)
Maybe your heart beat picture is a little more clear if you realize that cheerleading Malcolm here is simply preposterous.
Looking at the file wrapper, this one was withdrawn by the applicant for consideration of an IDS with some foreign references. It was not withdrawn as a result of Alice (those apps get a PTOL-67 in the file wrapper).
Not sure why getting rid of patents like these is a “problem.”
The claim doesn’t appear to contribute any new technology. Its just a new algorithm applied to old machines.
go,
Now you are being disingenuous – “old box,” inherency, and new capability added by changing the machine with the configuration of a new component, a manufacture defined as software (shall I remind you of your own admission re Benson…?)
Please stop the mindless cheerleading.
Anon,
I’ve never really bought into the whole “old box” argument you’ve had with others. To me, the point is entirely irrelevant to whether the claim encompasses an abstract idea. A sort of patent Ship of Theseus.
Bottom line, if the only difference between your claim and the prior art is the recitation of an abstract idea-like the algorithm in the claim presented-your claim is ineligible.
Even if it is a ‘new box’ or whatever.
That’s simply not the law. Not per Alice, and certainly not per DDR Holdings.
You’re gonna hang your hat on that panel decision? Go for it, I guess.
“I never really bought into”
Now that is something entirely irrelevant. Your “buying into” does not change the reality of it. All it does is speak to your remaining purposefully ignorant. Is that what you are going to hang your hat on?
Further, you mix up prior art delta and eligibility – conflating the discussion of 101. Further too, it appears that you have sipped the koolaid of Malcolm’s b@nal pet theory, not realizing that claims merely aggregated (no integration) do NOT have to even have ANY mental step elements in order to fail patentability – you are “hanging your hat” on a b@nal reduction that does not even address the larger issue at focus.
It would help the conversation if you cared enough to come up to speed on a minimal level before you did your little cheerleading routine.
Anon,
Back to your oldbox analogy. Let’s assume for a moment that you’re factually correct that new software makes a new computer.
That ‘fact’ just doesn’t have the legal implications you wish it did. If it did, the claims in alice would have been eligible. After all, they recite a new function for a computer and therefore a new machine.
We know that didn’t happen.
I’m not sure what you mean by ‘conflating’ prior art and eligibility. The Supreme Court always analyzes the prior art when analyzing eligibility. Why wouldn’t they?
Also, I agree that mere aggregations are ineligible-for any number of possible reasons, one of which might be that they relate to abstract ideas.
“we know that didn’t happen”
Well except for the fact that it did, you are almost paying some attention.
As I pointed out long long long ago, the fact that new machine WAS created was stipulated by both parties and was NOT an issue that the Court was addressing (I explained prior to the Court’s decision exactly how In re Alappat could not be affected by the Holding of the Alice decision due to the fact that it was not an issue before the Court).
You really need to stop cheerleading on things that you are so absolutely clueless about.
Anon,
Sorry for the misunderstanding. My “that” in “we know that didn’t happen” is the claims being found eligible despite the ‘new’ machine.
If you want to say it is not patentable because it is not new or is obvious and therefore does not meet the requirements of section 102 or 103, go for it.
Quit mucking up section 101 with considerations of what is new and what is old.
It seems that by “mucking up” 101, you really mean “using 101 to invalidate a claim.”
Analysis of the prior art has been part of 101 for a long time. Read Mayo again.
We’ve had section 101 for some 63 years. Mayo is, what, 4 years old? That ain’t a long time, Artie.
Mayo provides a nice overview of some 101 case law.
Not trying to be rude, but it appears you need a refresher.
If Mayo doesn’t do it for you, how about Flook at pgs 594 and 595.
Silicone, what if a claim includes both ineligible (information) and eligible subject matter (a computer and a timer, both generically claimed). The you, the applicant, contend that invention is in the eligible – the machine, the computer and the timer, and not in the information. The PTO finally rejects the claims under 102/103, proving the only novel subject matter in the claim is the ineligible information, and that such information is not modifying any eligible subject matter in way. You appeal and lose through the Federal Circuit.
Now, you are on appeal to the Supreme Court. Pretend you are arguing to the nine justices. Tell us why you should get a patent under these circumstances.
Nice strawman and not-so-hidden deception Ned.
You have “set the stage” with a claim that fails the gen er al rule against aggregated claims.
There is no need even to explore the “eligible/non-eligible” split as that split is simply NOT meaningful to the fail of the set-up.
To wit: a claim TOTALLY comprised of eligible subject matter – such as a bicycle, a tuna sandwich, a goldfish in a light blue bowl and a new-and-improved frapmatitz fails your set-up based solely on the condition of “not modifying“.
Short hand view – you purposefully hid a non-integration aspect into the hypo, and will dissemble and attempt to claim that the problem is your pet “eligible/ineligible” split and the canard of PON.
Your games are old and stale Ned.
Claim 1. Business method.
Claim 2. Business method implemented using a GP digital computer and a timer.
We know your position, anon. Both are eligible.
However, Bilksi nixed 1. Alice nixed 2.
But if one contends the combination of a GP digital computer and a time is new or non obvious, how does this or should this change the result?
Ned,
You have zero credibility when you mistate the law as badly as you do here, redefining “business methods” so as to have them “mixed.”
Remember, 3, the new 4, is still not 5.
Try not to kick up such dust when I nail you for dissembling on the non-integration and canard of PON deception you attempt to foist.
Anon,
You’re obviously correct that the SCOTUS hasn’t explicitly said business methods are ineligible.
That said, would you care to provide an example of a business method claim you think would be found eligible by either the Fed. Cir. or the SCOTUS?
Anon, I do not misstate the law. I rely on Hotel Security, Mayo and Alice. Also, I rely on the current Federal Circuit law regarding printed matter that everyone agrees is not eligible if not applied, which leaves only its information content.
If the so-called ineligible stuff is old, then you get invalidated on the ground of obviousness.
If it is new and non-functional (i.e. the information is a musical recording), then you again lose on an analogy to artwork on paper not having non-obviousness.
If it is new and functional (i.e. not “a fundamental economic practice long prevalent in our system of commerce.”) you have a valid patent. Of course the amateurs at Scotus (and a few hacks for the knock-off artists) might disagree, but what the heck, we have do deal with their backwash on a daily basis.
What do you mean by “functional” in your third scenario.
I think that’s probably the key.
PatentBoB: If you get rid of all “software” patents, you get rid of patents like this.
Great, because that’s a pile of functionally claimed junk that doesn’t belong in the patent system.
“software” (which could be firmware)
Yes, firmware is software. I’ve no idea why you believe that matters.
How about interval windshield wipers? You can use a computer to do that, or an old school analog timer, I remember when I was a kid there was a lot of talk about the patent on the idea. Should that be a patent eligible improvement? That’s a hard case IMO. Id say yes, because the output of the method is a physical change in the movement of the wipers.
Regarding the claim, number 1 of the ‘677 patent, we have conventional apparatus that gathers data and then a calculation.
How how does this comply with Mayo – or for that matter, Flook?
“I’m not even sure how this was rejected under Alice. ”
Under Alice the claim is directed to the abstract idea of driving under the speed limit and under an acceleration limit –done by a computer.
I just finished responding to a 101 rejection in which the examiner presented the MOT test as being the definitive test for patentability and cited the PTO’s “Love” memorandum from 2008 on 101 examination guidance. It’s worrisome that the examiner is oblivious to Alice and the corresponding 2014 guidelines, but I guess that’s better than the examiners that apply Alice by saying that your claim is directed to an abstract idea, which they then denominate as being the entirety of the claim, including every hoary detail.
You may be ethically bound to inform the examiner of the mistaken application of law.
Yes, especially since this is an ex parte proceeding, with a non-attorney patent examiner, in which one has a duty of candor.
Paul,
How is duty of candor related to ethics and the examiner’s mistaken application of law and the examiner not being an attorney?
Hmmm.. maybe Congress should set up a committee to recommend ways to come up with clear and objective ways to deal with this… like they did in 1946.
Yes, David, explicitly overturn Benson and Alice as the flash of genius redux that they are.
Comments as to the existence of “Fight Club” will be deleted.
The irony of “SAWS” notwithstanding.
I utilize a keychain on the cloud. Who else does? Are we all infringing this patent?Apple made us infringe!
the exchange computer applying a quantitative analysis algorithm with the customer identification data, the quantitative analysis algorithm determining whether the exchange computer has received an amount of customer identification data sufficient for the customer to be uniquely identified; … the linking service computer applying a qualitative analysis algorithm with the customer identification data; the qualitative analysis algorithm determining if the customer identification data is sufficient for the customer to be uniquely identified by matching the customer identification data to a plurality of customer identification records;
“Customer data” is really special data. It’s totally different from other data! Computers have a really hard time determining if it’s “sufficient”. Hence the deep need for this awesome solution for determining whether “customer data” is sufficient. Using a computer.
Round and round we go. What an incredible joke.
DC Over the next year, we should begin to get a good picture of how the USPTO will be working to ignore the framework laid out by the courts.
Fixed.
I am currently dealing with a case that’s in appeal, where the examiner’s position on one of the issues is that the style of the claim is “against office policy.” Full stop. No authority cited whatsoever.
There is a clear problem with an examining corps where any examiner holding a rank higher than “trainee” thinks that this is a legitimate form of examination.
So I am eager to see applicants start pushing back against this free-form, unlimited-discretion form of examination, and begin demanding supporting evidence for wholly conclusory statements.