USPTO Patent Quality Call for Papers

The USPTO has an outstanding request for comments on its patent quality initiatives and many participants in the patent system will be submitting comments and proposals for improving patent quality.  I have been working with a group of academics to create a second channel for submissions that will also open the door for further vetting and commentary to help the USPTO get a better sense of what ideas might work well.  Of course, we would like input to go well beyond submissions from academics.

To that end:


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The Berkeley Technology Law Journal (BTLJ) welcomes submissions on Patent Quality in parallel with the USPTO’s Request for Comments on Enhancing Patent Quality. BTLJ will publish selected Comment submissions in a special volume of our rapid publication, online-only Commentaries. BTLJ is seeking Comments on Quality submissions of under 1000 words. All sources should be cited but need not be formally Bluebooked. Comment submissions ideally should reflect the author’s parallel submissions to the USPTO Request for Comments, but may be revised for length and form as needed. Comments need not be novel ideas (although those are welcome as well), but rather can reflect the best known proposals for improving patent quality that may have already appeared in a full-length law review article. BTLJ will strive to post all submitted Comments that meet our standards of quality.

BTLJ seeks to cover a wide range of the three patent quality pillars and their six included proposals that have been outlined in the USPTO Request. Specifically, the first pillar, excellence in Work Products, includes (1) applicant requests for prosecution review of selected applications, (2) automated pre-examination search, and (3) clarity of record. The second pillar, excellence in measuring patent quality, includes (4) review of and improvements to quality metrics. The third pillar, excellence in customer service, includes (5) review of current compact prosecution model and the effect on quality, and (6) in-person interview capability with all examiners.

BTLJ requests that authors of Comments on Quality contact us by April 27, 2015 to express their intent to submit. Drafts of Comments on Quality, ready for publication, must be submitted by May 15, 2015.

Reviews of Comments on Quality

Additionally, BTLJ invites commentators to provide Reviews on the Comments on Quality submissions. Reviews should be under 3000 words. Preference will be given to those Reviews that address a wide range of the submitted comments, can provide some clarity and order to the submissions, and can impart insight on one or more of the Patent Quality Pillars outlined in the USPTO’s Request for Comments.

BTLJ requests that authors of Reviews contact us by April 25, 2015 to express their intent to submit. Drafts of Reviews must be submitted by June 5.

Submission Standards

All submissions should be in Word doc/docx format. Preference will be given to those submissions exhibiting a high level of clarity and persuasive prose. Grammar and style should conform to the Chicago Manual of Style, and all citations should provide a hyperlink (if possible) and/or a clear, usable reference to the source material. All quotations must be accurate and attributed. If any portion of a manuscript has been previously published (aside from a submitted Comment to the USPTO for this initiative), the author must so indicate.

Link with the USPTO

Although this project is not officially sanctioned by the USPTO, all submissions received (not only those published) will be forwarded to the USPTO for its consideration. We expect that those forwarded comments will then be republished by the USPTO on its online docket of responses to the request for comments.

Contact Information

Expressions of interest, questions, and submissions can be sent to

236 thoughts on “USPTO Patent Quality Call for Papers

  1. 12

    I, personally, am looking forward to precisely 100% of the papers being submitted placing the blame on the PTO without any consideration that 50% of the patent process is in the hands of the “outside stakeholders” (it’s actually more, but I believe in constructive cooperation).

    Until the patent bar begins submitting quality applications and doesn’t push the “reasonable abstraction” line, this song and dance won’t be productive; but it WILL be cathartic and will serve as rationalization to those who already are true believers.

  2. 11

    I have comments to submit. I plan to submit them directly to the USPTO.

    I will not submit them to Berkeley. As it is a leader of a movement with a specific agenda, I have doubts that my comments would be objectively evaluated.

    1. 10.2

      what possible argument could be made against patent eligibility for that photosynthesis invention?

      that a totally unrelated field (per se software) should not be eligible? that patents themselves are illegitimate? some other strawman we have not been inundated with already?

      the linked invention is exactly what patents are for. who would say otherwise?

      1. 10.2.1

        According Alice, the argument goes like this:

        The invention is directed to the ancient product of nature and abstract idea of photosynthesis. It is not disputed that the “invention” is in that “nanowires” capture light energy and deliver it to bacteria, which convert carbon dioxide in the air into acetate.

        Bacteria are clearly a product of nature and are not patent eligible. That wires, no matter their size “capture” and deliver energy is at least as old as Benjamin Franklin and so receiving an input and processing it through a bacteria does not add “something more” to turn the product of nature and/or abstract idea of photosynthesis into a patent eligible process.

        Moreover, the inventors admit that they want the process to be commercially viable. Therefore the claimed method is a business method and is not patent eligible for at least that reason.


              “anon”: ine years and running….

              Has it really been that long that you and Les and your other buddies here and elsewhere have been pretending to be clueless five year olds who were born yesterday every time that subject matter eligibility comes up? At the same time you pretend to be sooper dooper smart “experts” on patent law? Nine years already?


              Time flies.


                Typical Malcolm trick – but no Malcolm, the nine years and running reference is to you and your actions, LONG before I ever posted here.

                But you already knew that. And of course, it does not stop you from dissembling on that point.

                1. “anon” the nine years and running reference is to you and your actions

                  My “actions” are pointing out that you and your cohorts are a bunch of entitled, greedy windbags who (1) love to hear yourselves talk and (2) will do and say pretty much anything to keep as many of the junkiest patents ever granted enforceable for as long as possible.

                  Everybody who has been paying attention for nine years can see that the fantasies of you and your cohorts have been increasingly marginalized and while my views — which were never controversial to begin with — have become adopted by the Supreme Court and Congress.

                  Now run along and resume your usual boot-polishing.

                2. Your actions are nothing of the sort and your delusional edge of the rye protect the children mantra may sound good in your own mind as a desired end, but your actual means here on this board betray an even deeper void of ethics than those you accuse of “grifting.”

                3. MM, I fully agree with you. You have been posting very insightful comments for as long as I have been here. In contrast, what I perceive anon to be doing is attempting to shout down you, and for that matter anybody with whom he disagrees.

                  Anon’s commentary here is less than worthless. It makes this blog a very unpleasant experience for anybody who actually tries to post here. It must make the blog readers extremely unhappy as well.

                  But, and this is the sad part, a lot of patent attorneys agree with the positions that anon is advancing because they are probably invested in programmed computer claims. To them, anon probably is their hero.

                  This is sad, very sad.

                4. “anon” your actual means here

                  Again: this is coming from the guy who relentlessly plastered this site with sockpuppets and insults for years, trying to derail any discussion of subject matter eligiblity, all the while pretending not to be doing exactly that.

                  Until he was outed by Dennis.

                  You have no ground to stand on, “anon.” And you never did.

                  You never understood the basics of subject matter eligibility, or you pretended not to (the latter being worse behavior). You’re not the only one who suffered from that problem, of course. There were many other “high profile” actors in “the industry” who didn’t get it or who pretended not to. Some of them worked at the PTO. Some of them still work at the PTO, which is incredibly unfortunate.

                  But it was and is and is a scandal and its ongoing. The entertaining part about it, from my perspective anyway, was that it was so obvious what was going on and yet — for some mysterious reason — so difficult for certain people to acknowledge. They still can’t come to terms with it. We needn’t look far for a classic case in point.

                  The wheels continue to turn and with each passing week the vaporous foundation of software patents becomes more and more plain to everyone with half a brain and eyes willing to see. Most reasonable people are going to look back on the past twenty years and wonder what in the world the proponents of software patenting were smoking. But we already know they’re motivated by the usual factors that motivate entitled, greedy people who already have plenty of money but want more: greed and entitlement.

                  Again: this was always plain as paint. It’s just that nobody was supposed to talk about it because, hey, the “innovation community” (LOL) is just packed with really, really serious and important people who know what they are talking about. After all, they told us so! It must be true.

                5. Ned,

                  That you align with Malcolm and think him “swell” when he has easily been the most offensive poster ever is downright p@thetic.

                  If there ever was a poster child for the wrong application of “whatever” means to justify a desired ends, you and he are that obscene poster.

                  The only thing you see as “unpleasant” is that I routinely unmask your propaganda for what it is.

                  You have no answers to the various on-point observations I make.

                  It is clear from the dialogues you either abandon or attempt to derail.

                  Even at this moment, you have a clear choice on the Hricik side left pending, as well as an important distinction concerning statutory law and common law to recognize and incorporate into your posts.

                  The company you keep Ned reflects poorly on you and I would dare say is more damming than even your straight out evasion of the points put on the table for discussion.

                6. anon, it would be better if you treated people with whom you disagreed with more respect.

                  MM and I do not always agree. We have good discussions, with back and forth. I can never seem to have those discussions with you because you never actually state a position.

                7. Ned is mad as a hatter, and MM does post some insightful posts on the current state of the movement that pays him to post. Those policy sheets make the posting more efficient for him.

                8. Not at all, Night.

                  Since you will not give up the idea of patenting math in the abstract, you appear to be a sane as that wandering Knight (pun intended) who vainly tilts at windmills pursuing a lost cause.

                  Since you are so eager to accuse others of being paid bloggers, methinks you protest too much.

                  Regardless, Knight, MM has his head screwed on straight. Proof is that his thinking aligns with the Supreme Court.

                  In contrast, we have you and anon, best buds with another jouster of phantoms in pursuit of lost causes, Giles S. Rich.

                9. I admit Ned it is getting bleaker and bleaker. But, then I am the one that said this would happen. If you remember, they have repeatedly made fun of me for predicting the worse even in Bilski. They called me all sorts of names.

                  But, it was actually you that said, what do you think Night of CJ Rader’s take of abstract for Bilski. When you said that it dawned on me that the judicial activist had been given a sword by our captain.

                10. Do keep in mind, though, that the bleadness is being paid for by big corp and that the case law is nonsense that is being generated. I remember reading how the SCOTUS changed the way they interpreted the anti-trust laws to accommodate big corp. I saw this coming long ago.

                11. So, Ned, make sure you get that this is a political defeat–not an intellectual one. That we are facing the dismal tide of the 1% and big corporations not wanting patents anymore. At least most of them.

                  Hardly a fact pattern you should be proud of.

                12. Proof is that his thinking aligns with the Supreme Court.

                  That is a bug, not a feature.

                  You also mistake “whatever” to get to desired ends as ANY sort of reasoned and principled means to those ends.

                  Your quite frankly disingenuous claim that I do not state a position is clearly wrong. Not only have I stated positions, I have backed my positions with the actual words of Congress (yes, drafted by that man), the congressional record (with links to Cornell Law) and even your preferred source of Federico’s commentary.

                  So yet again we find you fabricating out of whole cloth your claims against me.

                  Little surprise really, as you are continuously embarrassed as I reveal your positions to be nothing more than propaganda.

                  By the way, still have not seen your choice over on the Hricik side.

                  Funny, you also claim that I “shout people down” as I typically do the opposite and shout for people to speak up and address the points on the table.

                  Especially those points simply inconvenient for the Echo Chamber folks.

                13. “When you said that it dawned on me that the judicial activist had been given a sword by our captain.”

                  Lulz, truer words.


          The invention is directed to an artificial means of achieving photosynthesis, not photosynthesis itself. From that mistake, your analysis of Alice goes from implausible to just silly. No court would find as you have. Nanowires in this use are novel physical structures, and no reading of Alice forbids patenting novel structures or processes that make use of natural materials or flora when those are elements of an otherwise statutory invention. There would be no attempt to claim the functioning of wires; where there, virtually all of the patent statues would invalidate the claim. And how an item of hardware becomes a method I will leave up to the software patent gurus, but you wont find anything about it in Alice.

          Lucky this site involves only kibitzing about the law- lord knows you don’t need a law degree to do that. Intentional misreading of this hated Alice case can be easily undone on this here Internet. Get used to it….


            “The invention is directed to an artificial means of achieving photosynthesis, not photosynthesis itself. ”

            So what? The invention in Alice was an artificial means of acheiving intermediate settlement, not intermediate settlement itself.

            That didn’t stop the Court from declaring that intermediate settlement was old therefore the claim was abstract. That’s the same reasoning I applied here.

            Maybe I should have reasoned that capturing light energy and delivering it to cells is old and natural (photosynthesis) and asserted that the claim is “directed to” this old natural process.

            Then I could have asserted that recitation of nanowires for capturing light energy is functional claiming and would per-empt all nanowire light energy capturing and is therefore abstract.

            Why wouldn’t any court apply this reasoning? Are courts biased? Shouldn’t the reasoning be the same in all cases?


              Don’t forget to throw in there that plants have been performing photosynthesis for a long time (just like the throw in there that people have been thinking a long time.)

              What still floors me is reality. The software that they don’t want to patent is projected now to replace hundreds of millions of jobs over the next 50 years—and yet—it is not an invention. What in the world is an invention then?



              I think this is your better argument:

              Maybe I should have reasoned that capturing light energy and delivering it to cells is old and natural (photosynthesis) and asserted that the claim is “directed to” this old natural process.

              The more you can rope into what’s “abstract”, the less there is outside that concept to provide patentability. It’s all a game with no real rules. You just make them up as you go.


            Les and Patentbob, while being obtuse, are half right.

            Remember, we can’t judge eligibility without seeing the claims.

            If the claims merely stated “photosynthesis” and “apply it” using conventional, routine methods, then the claim would be ineligible under 101. And rightly so!

            However, if the claim includes an inventive application of the underlying physical laws at issue (“something more”) then they would be eligible under 101. Of course.

            Because there are no claims, the discussion is largely meaningless.

            Where Les and Bob fail is their belief (hope?) that because “do it on a computer” has been laughed out of the courtroom, then every other improvement will be also. It is an argument that convinces no one, least of all a federal court.


              “Where Les and Bob fail is their belief (hope?) that because “do it on a computer” has been laughed out of the courtroom, then every other improvement will be also. It is an argument that convinces no one, least of all a federal court.”

              No go arthur, the issue is the same reasoning must be applied in all cases, else there is no justice. Its not a belief, or a hope, its the law (equal protection under the law).

              If do it on an old computer is not sufficient, then so is do it on an old bacteria.


            Martin, you are like a woman that has lost their child and stands in the village and shouts for weeks. If you are mad at IBM, why don’t you go after them and stop whining all over us.


              Night your sexist slip is showing. Maybe I am more like an aggrieved freedom fighter willing to take the battle to the streets better to call righteous opprobrium upon a corrupt system.


                The sexist comment was unfortunate.

                But the view of you as some warrior is even more so.

                A warrior cares and studies the field of battle. You do the opposite.

                Read – and understand – Sun Tzu.


                Defend the rights of the mediocre to take the inventions of the extraordinary.


              For what it is worth, I don’t think Night’s comment was sexist at all, really.

              He chose to use an example that happened to include a gender: a woman calling for her child. That doesn’t denigrate women at all.

              To the extent that it MIGHT have implied woman are more inclined to care about missing their lost child…benign, at worst.

              Sorry if this seems like splitting hairs, I just think it is crazy how touchy society is getting about such things.

              Sexism exists, it is a real thing. But whatever Night might have done isn’t included.


                Go you evince little understanding of how sexism really works. It’s the sub-rosa assumptions that are corrosive.

                The implication was not that women care more about losing children(!) but rather that women who lose children are weak, confused, hysterical, and unable to evince agency, therefore, QED, someone drilled by a rapacious patent plaintiff is likewise able to be ignored as a valid commenter.

                There is no “going after” a patent plaintiff; to be accused is to lose with virtual certainly, regardless of the merits. Octane may have moved that needle, but hardly enough.

                Hammering IBM Kenexa for their litigation abuse on THIS forum is cost-effective and personally satisfying, and IMO more in line with guerilla action than say, weakly crying in the town square, like a woman (see how that works?).

                The small pleasures of besting learned, honored thinkers in law like Night and anon week in and week out is just a bonus. Of course its like beating up on the mentally-ill or maladjusted, so it’s kind of a guilty pleasure at that….

                1. Martin,

                  Respectfully, you’re trying waaay to hard to find something that just isn’t there.

                  Of course the woman in his example is crazy, that’s the whole point: he’s insulting you.

                  But nothing in what he said implied that women in general are crazy or weak. You’re just reading in your own assumptions.

      2. 10.2.2

        I’m sure two guys in their basement already did this and disclosed it publicly and will be crying big time when they get sued.

      3. 10.2.3

        Mr. Snyder,

        Since you don’t read, and evidently don’t care about law, you have self-selected yourself out of this conversation. Please keep your clutter to yourself.

        To wit:

        1) “OT”
        2) “a break from the usual”
        3) “able-minded attorneys”

        Clearly, my friend, the thrust of the exercise is to see that the invention here – even if fully meeting the statutory category aspect of 101 – as did the invention in Alice – is nonetheless not eligible.

        Note too, that I explicitly asked for both pro and con positions as an exercise in addressing the pertinent legal points.

        If you don’t mind kind sir, sit on the sidelines then and perhaps you can learn something from a discussion uncharged from the usual politicking influence of anti-software rhetoric.


          bwahhaaa anon, you don’t make the rules here. you may wish you did, but I can answer any inane posting you make; non-lawyer, ignoramus that I may be, until a moderator says otherwise. And they won’t, cause you ain’t the boss of the applesauce.


            Thank you for proving my point – please note that I did not say that “I ban you,” but rather, I asked that you please refrain.

            Obviously, you really do not care to learn anything, and the only reason you post is to hear yourself speak.

            Sad really, how little thinking you display.


              “anon” I asked that you please refrain.

              When “anon” used to post here 100 times a day using dozens of different sockpuppets in an endless effort to derail any discussion of subject matter eligibility, he was asked to “refrain” by other commenters many, many times.

              Does everybody remember how “anon” responded?

              I do.

              “anon” didn’t stop until Dennis outed him.


                Another non sequitur from the reigning champion of usual posters with sockpuppets.

                How goes that “battle” of transperancies that Dr. Noonan challenged you to?

                LOL – thought so.

                What a chump.

                1. Another non sequitur

                  Not a non-sequitur at all.

                  You’re a hypocrite and a path0l0gical liar, “anon.” You can’t help yourself.

                  We told you this was going to be a difficult year for you.

                  More reform comin’ … because you asked for it.


                2. From the biggest hypocrite and l i a r of them all, your accusation is rather meaningless.

                  Shall we play the usual game when you accuse me of lying and I ask you to show the lie and then you fail to do so and run away?

                  Thought so.


              “anon” the only reason you post is to hear yourself speak.

              Whereas “anon” is posting to save the Republic from the invading Amish and the communists plotting to steal everyone’s property!

              Bow down, everyone. He’s a really, really serious person in his own mind. You can trust him.


                Most bizarre Malcolm. Aside from the obvious Tr011ing, did you have anythingmeaningful to say?


                Thought not.

                Go figure.


          “anon” the invention here – even if fully meeting the statutory category aspect of 101 … – is nonetheless not eligible.

          Mental processes are processes that “fully meet the statutory category aspect of 101”.

          Are they eligibile for patenting?

          Ask Professor Hricick to help you with that. He’s sooper dooper edumacted on the topic.


            Clearly Malcolm does not care about the facts of the Alice case.

            But Malcolm, what is your point? Feel free to use those short declarative sentences you are always on about. Is your point related to the topic at all?

    2. 10.3

      Well, it would depend on the claims. I’d bet there’s a pony in there somewhere, though.

      1. 10.3.1

        depend on the claims

        Not if you use the full power of the “Gist/Abstract” sword as provided by the Supreme Court, go.

        Any actual claim language would just be the scriviners’ work, eh?



          “anon” Not if you use the full power of the “Gist/Abstract” sword as provided by the Supreme Court, go.

          Whatever that means.


            The meaning is clear and has been discussed several times.

            All this is is yet another short script obfuscation attempt by Malcolm.



              The meaning is clear and has been discussed several times.


              If it’s so clear, then why are you and Les and your cohorts still completely clueless about subject matter eligibility, why it exists, and how it works?

    3. 10.4

      The thing is, artificial photosynthesis is just a buzz words used to get grant money and really doesn’t capture the invention; just used for headlines. Similar work had been done by nate lewis et al. at caltech. Next time try learning the technology before making spurious arguments.

      1. 10.4.1

        Also it should be ineligible for the same reason morse’s claim 8 is ineligible. It would claim an exclusive right to further inventions that could be construed as artificial photosynthesis i.e. the reduction of co2 to reduced carbon using artificial means that the inventor did not invent.

  3. 9

    Where is a cite that software is a machine component or manufacture? What does that even mean? Is application software a machine component? The “machine” runs just fine without it. Is operating system software a machine component? The “machine” may still start and idle without it… Is the instruction manual for a CNC mill a machine component or manufacture? What about the instruction load for a part run? A human operator adds numbers to a register- is that set of numbers a machine component or is the register the component? Is a motion picture a manufacture? If not, is a training film, offering “utility” ? Is the hole pattern on an old IBM punch card a machine component, or is the card the component? is the hole pattern a structure, or is the cardboard the structure? can each possible hole pattern get a separate patent if novel and useful?

    Do tell about judicial exceptions to printed matter- but maybe this time explain what that means.

    1. 9.1

      Martin, the programmed memory computer was invented circa 1946. Since then, improvements in memory and computer design have continued apace.

      But, simply changing the program does not define a new machine. Everyone knows this, but the CCPA in Application of Bernhart issued dicta that a programmed machine was physically transformed. Now, the folks who said that didn’t really know what they were taking about. But that dicta lead to Benson, which was overturned. But still the CCPA and Federal Circuit kept the notion that a programmed computer was a new machine, based on erroneous dicta.

      Go Figure.

      Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969). link to

      1. 9.1.1

        Absolutely false Ned – from any perspective of law or fact that is ground in reality.

        All that you are showing here with your internet shout downs is that you refuse to recognize the form of today’s innovation.


          anon, address Bernhart. Stop shouting to everyone that you are right and everyone with whom you disagree is wrong.

      2. 9.1.2

        Oh, and might I add, I think the CCPA knew it was blowing smoke up everyone’s collective you know what’s. Everyone knew in 1969 that a program was loaded and executed. It was not intended to be permanently resident.

        Bernhart cannot be viewed as a mistake. The CCPA was then on the march — to allow the patenting of software. This is clear.


          Nice hand waving in an attempt to make “permanently resident” a requirement.

          Goodness knows that I have asked you for the proper citation to that canard many times – and seen you run away each and every time.

          More Internet style shout down from you Ned.

          Nothing more.

          You want me to stop shouting? Then answer the questions long in front of you. Answer them directly and honestly.

          You don’t.
          You don’t dare.

          If you did, your propaganda machine would have to stop spinning.

          And we have seen that you refuse to do that.


              What about Bernhart would you like me to address? Some off the wall “version” you have concocted (like your “versions” of other cases that don’t stand up to reason?).

              I would love to address your misperceptions as soon as you are clear as to what those are.

              In the meantime, have you made a choice at the Hrick side of the blog? I keep on asking you to speak up and all I hear is the screams of silence.

              How about the movie The Paper Chase? There too I keep asking you to speak up.

              Is there some opposite-day thing going on with you?


          Nice hand waving in an attempt to make “permanently resident” a requirement.

          Goodness knows that I have asked you for the proper citation to that canard many times – and seen you run away each and every time.

          More Internet style shout down from you Ned.

          Nothing more.

          You want me to stop shouting? Then answer the questions long in front of you. Answer them directly and honest1y.

          You don’t.
          You don’t dare.

          If you did, your pr0paganda machine would have to stop spinning.

          And we have seen that you refuse to do that.


          In parts (filter)

          Nice hand waving in an attempt to make “permanently resident” a requirement.

          Goodness knows that I have asked you for the proper citation to that canard many times – and seen you run away each and every time.

          More Internet style shout down from you Ned.

          Nothing more.


          Ned has no principled reason for not allowing the patenting of the machine component called software.

          Benson even plainly states: “We do not so hold.”

          Flook does not even reach the overbroad proposition that software per se is not patent eligible.

          Clearly, Ned’s own beloved “Point of Novelty” in Diehr was software.

          If one is truly honest, one can see that the Supreme Court has mashed the 101 nose of wax to get the ends that they have desired – it is just a logical fallacy then to rely SOLELY on the Court itself for the discussion of the legal propriety of the Court’s 101 law-writing (ahem, go).

          What we need is to just apply the actual words of Congress (yes, the words that later Judge Rich was the man that drafted).

      3. 9.1.4

        Of course adding software makes a new machine. Don’t believe me? Wipe your phone of all of your software. Now attempt to use your phone. What happens?

        Very little these days is physically “hardware”. Everything is based so that processors (of some sort) can be updated with software to enable new features. It’s a fact of reality.


            I think Ned has good arguments at times, but to say that addition of software to a “computer” does not create a new machine (assuming the computer executes the added software) is simply wrong in my opinion. It’s counter to reality.

      4. 9.1.5


        You’re mistaken. Not everyone knows that changing the program doesn’t define a different machine. I’m one of them. My degree is in computer engineering, and I can say unequivocally that each point in a program, as it’s executed, defines a different machine. The internal configuration of the machine physically changes each time. If that’s not a new machine, what is? I just read Application of Bernhart, thanks to your link, and I agree with everything the court said.

        I also happen to believe that signal claims should be statutory, because signals are real, physical manifestations. They happen to be modulated energy instead of matter, but they are nonetheless real.

        As you can imagine, I’m part of the minority that thinks that judges on the CAFC should have to meet the same qualifications as someone who wants to take the patent bar exam.

    2. 9.2

      “Is application software a machine component?” Yes

      “The “machine” runs just fine without it. ”

      But that fine running machine doesn’t provide a spread sheeting function without an additional component. And that machine modified by the addition of a spread sheeting software component to create a new spread sheeting machine doesn’t perform voice recognition without an additional voice recognizing software component….

      An internal combustion engine is a machine unto itself. Combine it with another component, say an assembly of magnets and wire, and you make a new machine, a generator.

      Combine the same internal combustion engine with a different component, say an assembly of a drive train, wheels and a carriage and you have a different new machine, a motor vehicle.

      1. 9.2.1

        Far too logical Les / watch now as you will be accused of being “cryptic” (yelled at you over the shoulder of the one running away)

      2. 9.2.2

        Absurd. A three axis milling machine is coded with a set of numbers and makes a doorknob. It is not a doorknob machine. Its coded with a second set of numbers and makes a golf tee. Its not a golf tee machine. it remains a milling machine the entire time. are the codings to make the parts patent eligible or aren’t they? Without a doubt, the parts being made are patent eligible.

        Now make a machine that outputs codes for the milling machine. Sounds patent eligible to me. Are those outputted codes, all “structurally” the same except for their intended later use, patent eligible, like different arrangements of holes in a punch card?

        Its kind of telling that putatively reasonable people cannot agree on the very nature of software. It’s like money in that way. Everyone knows what it is, but nobody can precisely define it.


          “Absurd. A three axis milling machine is coded with a set of numbers and makes a doorknob. It is not a doorknob machine. Its coded with a second set of numbers and makes a golf tee. Its not a golf tee machine. it remains a milling machine the entire time. are the codings to make the parts patent eligible or aren’t they? Without a doubt, the parts being made are patent eligible.”

          That is merely a point of view. The contrary point of view is also valid.

          Remove the door knob configuration component and you have a useless tool location and spinning machine. Combine it with a Tee making configuration component and you have a tee making machine.

          Remove the drive train/ carriage assembly vehicle configuration and attach the magnet drive and you have a generator configuration.

    3. 9.3


      One thing to keep in mind: whether a ‘new machine’ is created with new software is, fortunately, totally irrelevant from a legal perspective. As our friends here love to remind us, 101 and 102 impose different requirements. That is, a machine or process can be ineligible for patenting even if it is ‘new.’

      Read Alice. How did this issue impact the Supreme Court’s analysis? Not at all. And for good reason.

      Bottom line, while this point may be interesting to philosophers of computer science (is that a thing?), it doesn’t matter legally.

  4. 8

    Worth repeating, especially given the Malcolm Trainwreck:

    eeded singular focus is co-opted by those with different philosophical agendas, ranging from the desire to reshape eligibility to those whe merely want to play the “blame the applicant” game.

    1. 8.1

      anon, there are train wrecks here, indeed. One is he who is never wrong own by his admission. Know anyone like that?

      1. 8.1.1

        As they say, truth is the ultimate defense.

        I have my defense.

        Have you looked in the mirror lately?


          …speaking of admitting errors, I’m still waiting for your choice over on the Hricik side of the blog.


            Wait as long as you want anon. The problem we have with your questions is that they are vague or lost to history. You assume everyone knows what you are talking about as if your words were etched in stone for all to see, and for all time. But that assumes that your pronouncement stand up there with the words of Ramses in The Ten Commandments: “So let it be written. So let it be done.”
            link to

            That, anon, is quite an assumption.


              Absolute B$ Ned.

              There is one active thread on the Hricik side and even though that discussion originated on this side of the blog, I reference the easy to get to and clear discussion.

              If you stopped running away and abandoning discussions when the results head to an area that you don’t like (you know, reach the logical conclusions), then you wouldn’t have to try to have that lame excuse.

              Your doing. Easy enough for you to correct.


                No, anon. I still am struggling to understand what your point is. It is much to cryptic.

                1. Not cryptic at all Ned – let’s see you pick up the conversation there – let me know where you are confused.


            ^^^ and (once again), with the empty and baseless “med” accusation…

            America’s leading source of something other than patent law.

    2. 8.2

      I think too anon that MM’s hijacking of all the blog posts on this blog is similar to the anti-patent/judicial activist trying to hijack all the reform discussions.

      For example, top on the list of improving quality should be how to overturn Alice. Note that the list of signatures of the letter from academia that opposed the recent reform were from the real scholars. We need to hear from the real patent attorneys and real scholars about what to do if anything at this point. We are clearly on a road where a patent is becoming less and less valuable and more and more expensive. Shameful.

      Just consider that now any individual that wants a license from a large corporation will have to first get a patent at say $50K, and then fight to keep it in a post-grant procedure for $500,000. The big corps have machines of law firms now that will file post-grant procedures against anyone holding up a patent, but the littler person will not get the big discount.

      That is reality. Probably the biggest change in patent law in 200 years is the post-grant reviews in terms of costs to get a patent.

      1. 8.2.1

        The problem for the little guy, Night, with IPRs and other PGRs is lack of standing by the petitioner.

        Congress was told of speculators who file IPRs and short the stock of small fry. Expect a lot of that.


          But, what you wrote reminded me of the other problem of the post grant reviews is that defense is more expensive than attack because if you lose in the attack, you can just file another one.

      2. 8.2.2

        Lemley’s paper on functional claiming is almost unbelievable. It is an attempt to re-write patent law* for information processing. It illustrates how our entire judicial system has been hijacked.

        I guess there are no or few people left with ethics and morals.

        *the claims have to be viewed as one skilled in the art in view of the specification would view the claims and whether a claim is “functional” needs to be interpreted by one skilled in the art. Information processing uses functional terms to describe real solutions due to the large number of known solutions. That is fact. One reality check: go to a site that hires people to write software and report back on the language they use to describe what they want.

        The cost is the destruction of our patent system and the crippling of our economy. We will go back to the malaise of the 1970’s where big corp had no incentive to innovate and just ate up the small guy.


          Hey Night, Lemely is way off base in his paper, I agree. Software can be claimed properly as a process, provided a new result is produced, where the computer itself is old and generic.

          I’d like to cite for this proposition, Le Roy v. Tatham, 55 U.S. 156, 14 L. Ed. 367 (1852), where the court first suggested that the new use of an old machine to produce a new result was patentable subject matter. Id. at 177.

          The problem with programmed computer claims is that they are not claimed as processes, but rather are claimed as new machines. That is the fundamental defect with these kinds of claims.


            The fundamental defect is your style of posting right here Ned.

            Software is not a process. The execution of software is the process.

            You continue to drive at the canard of “function of the machine” and neglect the plain fact that “old box” must first be changed and configured with the component of software in order to “just use” that software.

            Instead of recognizing this fact and incorporating it into the discussion properly, all you do is engage your internet style shout down and repeat your mistake. Ad infinitum. Ad nauseum.


              Obviously, software needs an old machine, anon.

              Think about that.

              Then think about Le Roy v. Tatham.


                Talk about cryptic…

                Tell me Ned, how does “old box” – without change – come to have new capability?

                Inherency is your proper argument. Why is it that you never go there?

                Why is it so difficult for you to treat the basics in an inte11ectuallly honest manner?

                1. It is called a general purpose processor. The argument that software makes a “new machine” is a canard because you are simply using functionality in the processor that already exists, just arranging it a certain way (perhaps a novel, non-obvious way). You are not changing the “old box,” you are just pick which parts of the “old box” are active and in which order they are active in. The whole idea of “new box” sounds absurd to software engineers.

                2. Ordinary squirrel, I was a software engineer. It does not sound ridiculous to me. In fact, once you brush up on your theory it may not sound ridiculous to you either. Try to remember that what software compilers are really doing is generating a bunch of code for the physical processor, but that the code may actually be for a different machine. That in fact is why there is such a heavy price to pay for compilers. Special purpose chips that are the actual machines are much faster.

                  Really what is going on is that the hardware is emulating another machine.

                3. Ordinary Squirrel,

                  You should see my “general purpose big box of elections, protons, and neutrons” – with your logic, my big box already has everything an anything “already in there.”

                  Also check out my simple example of how you are simply misguided – the three resistors example (in the archives, but simple enough to share again):

                  I have two sets of identical three resistors. One set configured such that the resistors are in parallel and the other set configured such that the resistors are in series.

                  According to your logic, there is no difference.

                  Let me know when you realize that the real world does not agree with you (even ordinary squirrels should quickly pick up this nut).

                4. I was a software engineer too. I think that is just obfuscation. Eventually, no matter how it is compiled, code causes processors to do what processors are meant to do.

                  I think we can only have am open and honest debated about the future of software-based innovation once we discard the “new machine” fiction. (I think both sides need to drop their machine-fetish) For example, what is the best modern framework for a patent system to recognized software-based innovation?

                5. Ordinary Squirrel,

                  Let me know the first time you have an “old box” that inherently has the actual new capability without first being changed and configured with the machine component called software.

                  You want to squeal “obfuscation” when what you are peddling is some sort of magic hand waving.

                  You just can’t get there from here without recognizing that something new and different is necessarily in the picture.

                6. I don’t have a problem with you claiming “an already existing processor changed and configured by software to:” Why is it so wrong with saying that software can do new and non-obvious things without worrying whether or not, by some contortions of the language, the result is considered a “new machine?”

                7. Squirrel how would you then deal with the equivalency of software + General purpose computer and special purpose chip?

                  You see. Special purpose chip is really what software is.

                8. Clearly Squirrel, software is not the processor.

                  (Revisit the Grand Hall experiment, or if case law is your thing, Nazomi).

                  You are still trying to wave your hands and claim “magic.”

      3. 8.2.3


        100% agree with you on post grant procedures. The problem is you fail to see the connection between 101 and post grant review.

        As long as the office churns out ineligible claims, the public will demand, yes demand, that there exist procedures for invalidating such claims.

        My preference would be to sharply curtail the issuance of invalid claims (reject, reject), while strengthening those patents that are in fact granted. Then we can have a ‘real’ presumption of validity.


          go, 101 and Alice have only compounded the problem.

          Again, show me a claim that was invalidated using 101 that would stand up to 102, 103, and 112. If one exists, it is a rare bird that probably can be handled or is irrelevant.

          Alice is just a wave of the hand. Bad law. Bad way to get good quality. Good quality comes from real prior art and real reasons to combine. TSM. You don’t build quality with cases law like Alice. You build witch trials.


          Ends and means, go.

          It really does matter what means you use to get to the ends you want.

          As to the notion of “invalid claims,” well, your horse is dying of thirst next to the well, and it is up to you to correct your own errant views on 101.

  5. 7

    In the “getting it right” department, the PTAB’s decision to tank a few more of Interval Licensing LLC’s appalling junk patents was affirmed by the CAFC, without comment (April 17; 14-1775)

    The functionally claimed information processing nonsense at issue:

    20. A method for acquiring and reviewing a body of information, wherein the body of information includes a plurality of segments, each segment representing a defined set of information in the body of information, the method comprising the steps of:

    acquiring data representing the body of information;

    storing the acquired data;

    generating a display of a first segment of the body of information from data that is part of the stored data;

    comparing data representing a segment of the body of information to data representing a different segment of the body of information to determine whether, according to one or more predetermined criteria, the compared segments are related; and

    generating a display of a portion of, or a representation of, a second segment of the body of information from data that is part of the stored data, wherein the display of the portion or representation of the second segment is generated in response to the display of a first segment to which the second segment is related.

    The applicants arguments in that case were “interesting”, to say the least, and rested, as usual, on disengenuous, mealy-mouthed attempts to create distinctions between different “kinds” of displayed information and then add to that b.s. the usual baloney about what one skilled in the art would consider relevant. In this instance, the Examiner and the Board were on top of the situation:

    We note this combination of the references is substitution of the use of one form of determining similarities between documents with another (i.e., using known functions to produce their known results). Owner has not explained nor do we find there to be such “vast differences” between the two systems which would preclude the skilled artisan from combining the references. [emphasis added]

    Yes, folks, “determining similaries” between stuff is something human beings have done since the very beginning of human beings (and before). There are lots of ways of doing it and we’ve been using those ways interchangeability when we process information since forever. Why? Because they are useful for determining similarities.

    Note that pretending that this is not the case (i.e., pretending that fundamental logical exercises like “comparing” or “monitoring” are “new” when the subject being compared or monitored is “new”) — and pretending that we were all born yesterday — is a crucial aspect of the software patent lover’s game plan.

    1. 7.1

      >Yes, folks, “determining similaries” between stuff is something human >beings have done since the very beginning of human beings (and before).

      People being able to do it is not machines being able to do it. People could dig a hole, but it took people 80,000 years to build a machine that could dig a hole.

      1. 7.1.1

        People being able to do it is not machines being able to do it.

        That’s nice. I never suggested otherwise. Enjoy your strawman.

        In any event, people have been using machines to determine similarities between stuff for a long, long, long time.

        But go ahead and keep pretending you were born yesterday. We all know you can’t help yourself.


          MM you are completely ignorant regarding software. You have proven that over and over again. You entire line of reasoning that processing information is known is like saying making a new molecule is known or making a new machine is known.

          You are exhibit A as to why we need real facts and reasoned arguments.


            You are exhibit A as to why we need real facts and reasoned arguments

            LOL. So says Mr. “Rapers and Killers” himself.

            Again: nobody except the most ignorant reader — and I’ll grant you there are many ignorant patent attorneys out there, particulary in the software “arts” — believes that your characterization of my arguments is accurate.

            But please go ahead and pound on those strawman. You do represent a certain class of unabashed software patent lovers and you represent them *beautifully*. They love you, apparently. That’s why you’ve had so much success these past few years. Right?


              MM, Night’s characterization of your argument is indeed inaccurate. That can be because he doesn’t understand it, or, that, understanding, he is intending a fallacious argument of one sort or another.

              Since I trust Night not to be intentionally dishonest, we know the source of his confusion.

                1. Night, claiming the algorithm as a permanent fixture of the machine might solve the problem, indeed.

                2. Software as a manufacture is already “permanent” enough Ned.

                  Another baseline fact that needs to be remembered for any inte11ectually honest discussion on the merits:

                  Software is equivalent** to hardware and is equivalent to firmware.

                  **yes, once again to stop the derailers, equivalent and not “exactly the same as.”

      2. 7.1.2

        it took people 80,000 years to build a machine that could dig a hole.

        LOL. And that’s why the USPTO granted five million patents on using that same machine to dig holes in “new” places. Because otherwise nobody would use the machine.

        Oh wait. That’s not what happened.


          MM, someone recently said that we succeeded in building a civilization from nothing only because a very few, very smart people existed to lead the way. Left to their own resources, most of us would be wandering aimlessly in the night, forever, never having a clue.


            Idk about that bro, everyone contributes. Even those very very few had a family, a momma, a society etc.

    2. 7.2

      Of course the great 1ie in the paid troll’s arguments is that somehow this is representative of innovation or typical of what patent attorneys want. Good patent attorneys know that increasing the quality of patents will just tighten the screws on innovation and produce more innovation.

      But, that is assuming that we don’t end up with a broken witch burning system which is what we headed to right now with Google Director Lee heading the way.

      1. 7.2.1

        somehow this is representative of innovation

        It’s representative of the kind of junk that PTO has been granting for years and continues to grant when a third party isn’t providing it with the art and/or arguments.


          Good patent attorneys welcome improved patents. Good patent attorneys don’t want Alice and the witch line of reasoning that the SCOTUS has created. Good legal scholars know that Alice is a case where the SCOTUS has exceeded their authority with judicial activism.


            Good patent attorneys don’t want Alice

            Sounds like a litmus test — which was the worse thing ever just a short time ago. Until you decided that it wasn’t.

            Go figure.


              It would be a litmus test if it was used to determine whether someone should be appointed as a judge or to the PTO as you suggested using it.


                Right. And you’d never judge a potential candidate for the CAFC or the PTO based on his/her publically expressed approval of the Alice decision.

                Because you’re a very serious person. Consistent. Sincere. And thoughtful. Very, very thoughtful.

                1. >Because you’re a very serious person. Consistent. Sincere. And thoughtful. Very, very thoughtful.

                  I think I’ll put my literal hat on and call it a day.


            Gotta love those medieval references there Night. Harkens to what happened to your icon, Turing.

            Saw the movie the other day where Turing convinced Churchill that only machine could reliably decode Enigma. Those surrounding Turing at Bletchley Park were not intelligent enough to understand the necessity. But, over time, they too were convinced.

            Perhaps some day, you will begin to listen to both me and to Malcolm.


              Of course it does, anon. There is a reason why both you and Night will not listen to Malcolm and me on 101. I think it the same problem the people a Bletchley Park did not listen to Turing at first.


                Ned you and Malcolm are like flat-earthers – the non-fit is that you are trying to fit on the side of progress and innovation. Being anti-software clearly shows you are not on the side where most innovation happens today.

                1. Hardly, anon. We have been able to successfully predict the outcome of the Supreme Court cases, save for Myriad, for a reason. We get it.

                  Also, I for one, am not against patenting processes or systems where the novel feature is a new mathematical algorithm, nor any conventional process or system improved by novel software. It is just that we both disagree that the addition of a conventional computer or computer readable media is by itself sufficient to leap the 101 hurdle.

                  Nor is it sufficient that a claim end in a number with a suggestion to “apply it.” If the patenting of a new number were eligible, all of Benson, Flook, Bilski, Mayo, and Alice would have turned out differently.

                2. Your over-adoration of the Royal Nine does NOT mean that you understand the law – at all.

                  You kind of miss the fact that They have really screwed things up.

                  How is that hour-six minute mark of The Paper Chase coming along? The point there is pertinent to this discussion.

    3. 7.3

      What they claim is comparing two sets of data according to predefined criteria, and displaying the match.

  6. 6

    Following up on this from last October …

    link to

    … DietTroll LLC’s ridiculous claims against Bravo Media (and many others), previously tanked under 101 by a district court, were unceremoniously double-dunked by the CAFC earlier this month (April 8; 14-1361) via a Rule 36 affirmance.

    The claims, once again (warning: those with sensitive stomachs may wish to skip this part):

    2. A system of computerized meal planning, comprising:
    a User Interface;
    a Database of food objects; and
    a Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.

    In a sane world, we’d see some sanctions and bigtime fee shifting at this point.

    These claims should never have been granted in the first place, of course. But they were granted and the PTO is still granted junk like this every week.

    1. 6.1

      Another plastering of claims by the ultimate paid troll MM.

      Now why is it junk? Can you produce prior art that would anticipate the claims or render them obvious?

      1. 6.1.1


        The claim is ineligible under 101. It is directed to the abstract idea of creating a menu, merely implemented generically on a computer.



          Go, under your ridiculous standard for 101 anything is ineligible. What astounds me is that you can’t see that, or can you and just don’t care about fairness or the law, or ethics, or even morality.


            Night Writer: under your ridiculous standard for 101 anything is ineligible

            Because planning meals “on a computer” is the essence of eligible subject matter.

            Right. Got it.


              Because providing real reasons with facts is the essence of law. I know that you prefer witch trials.


                providing real reasons with facts is the essence of law

                Ooooh. Deep stuff.

                Are you going to tell us about the “essence of electronic structure” next? I hope so.

      2. 6.1.2

        Now why is it junk?

        LOL. Yes, the lovers of software patents will literally defend anything, no matter how rotten it is.

        The claim is junk because planning a meal to meet dietary needs is older than the freaking hills. “Doing it on a computer” adds nothing patent-worthy, just as “using a ballpoint pen and paper” adds nothing patent-worthy.

        Oh wait — I forgot about the perty pictures! You love perty pictures, don’t you? You could almost eat that juicy hamburger except it’s just a bunch of lit up pixels on an old display screen and you can’t protect those with a patent.

        I’m happy to fill in more of the “blanks” for you, should you find that necessary. Unfortuanely, I can’t fill in the blanks that you’ve willfully created in your mind so that when you see the words “computer” in a claim you suddenly forget that the earth wasn’t created yesterday.


            You MM oh troll of trolls in real patent law people produce real reasons that are based on facts. Not, let me put my hand down below my waist and I’ll think of something.


              Yeah, try to believe that real patent attorneys want real prior art and real reasons. Imagine that.

    2. 6.2

      And, MM, the fact that they are still granting such patents tells one that the PTO management has yet to get serious about 101.

      1. 6.2.1

        Neddles, not 101. 102, 103, 112.

        Sheesh. Your problem Ned is that you don’t get that the 1952 Patent Act is the law. The SCOTUS has gone off the cliff AGAIN and will need to be reined in AGAIN.


          Night, Congress did not intend to change the fundamental patent law of the land, 101, when it passed the ’52 Act. It is downright bizarre, Night, that you would think it so.

          Truly bizarre.

          Where do you get these ideas?


            A little known man named the great and powerful Judge Rich.

            I know that the SCOTUS’s take that the 1952 Patent Act “merely codified their case law” is absurd. What gets me is the 9 actually think they are respected.


              The great and powerful Judge Rich.

              When is that that a drafter of the act is allowed to sit in judgment of it?

              Oh, yes. Pauline Newman, the very person behind reexaminations sat in judgment on their constitutionality.

              And to think, that the Federal Circuit, and the CCPA before it, pretend that they are an unbiased and apolitical institution when it allows the likes of this to happen. Kinda like the PTAB sitting in judgment of its institution decision in IPRs.

              Rich and Newman were installed by the AIPLA on the court because of their good work in getting the AIPLA’s views enacted into law. But, even if it were true that the AIPLA wanted to change 101, Congress did not change the words of 101 at all in ’52. They remained unchanged since the 1836 Act, which made only minor changes in the 1793 Act.

              Since nothing of substance changed in the words. The very idea that Congress intended to change 101 is inconsistent with the ’52 Act itself.


                Except for the fact that 103 was carved out…

                But this has already been explained to you.


                Ned, Judge Rich explained many times that 101 was not meant to be used like it now in Alice.

                Many times. The SCOTUS is acting as if there is no 1952 Patent Act.

                1. “Judge Rich explained….”

                  As Judge Rich explained in Benson…

                  As Judge Rich explained in State Street Bank…

                  The Judge who “overruled” Hotel Security?

                  This guy?

                2. Pretty sure “that guy” was the guy that helped Congress write the law – you know Ned, the branch of the government authorized by the Constitution, the power ABOVE the Supreme Court, to write the statutory law.

                  (Hint: one hour six minute mark)

  7. 5

    Still, if the PTAB is invalidating about 90 percent of claims, then that is the best indication of quality (or the PTAB is being unreasonable.)

    I still think the best way to increase quality is to give examiners more tools. Better search, better targeting of applications, and a return to TSM. Maybe have outsourcers that get paid to find a TSM.

    1. 5.1

      Another pillar should be to reform the SCOTUS cases (overturn them.) Alice is a huge waste of time. It is not a practical way for anyone (even the most experienced patent attorneys) to examine an application.

      I still have a challenge out for one claim that has been rejected under 101 that would not have fallen under 102, 103, 112.

      1. 5.1.1

        “It is not a practical way for anyone (even the most experienced patent attorneys) to examine an application.”

        I somewhat agree with you there. It is not practical in the current environment where “anything goes” was the norm for so long. Back when it was a rare case that implicated 101 it was ok because you could spend extra time on that lonesome app.


          6, it is the process of Alice that incorporates 102, 103, and 112 all upfront ’cause we want a way to burn a witch. The SCOTUS has no respect for the laws of Congress.


            “Do not allow a sorceress to live.”

            Exodus 22:18

            It’s been the law for a long time mah brosef.


          Mzi, I assume you advocating removing the Supreme Court from supervising patent law.

          Mzi, even making such a proposal would so alienate the American people that it would take several generations for patent law and patent practitioners to recover. You may not recall but even though the American people generally supported FDR, they were aghast when their popular president proposed to pack the Supreme Court in order to get his policies approved.

          What holds the United States together more than anything else is the institution of the Supreme Court. When one begins to talk about reducing the role of that court in protecting Americans from overreaching government, one treads heavily on the third rail.


            Have you checked reality and how low the Supreme Court’s “esteem” real is Ned?

            Your over-adoration bias needs to be put in check.


          Not likely they will though, is it?

          I believe the CAFC is the best arbiter of patent law, but every time we get settled law, the Supremes turn the clock back to something much vaguer. Unfortunately, Congress is unlikely to take away their jurisdiction over anything at all.

          The only way forward that I can see is to declare the CAFC to be a division of the Supreme Court, as this would be an end run. As there are probably no more than two or three people in Congress who understand the issues involved and assign any importance to them, we will be lucky to achieve it.


            I have better idea, Alun.

            Do not have permanent members for the Federal Circuit, but form panels from the judges of the other circuits.

            A source of the problem of Federal Circuit is that it is too insular.


              There is no court more insular than the Supreme Court.

              Ned (once again) whips out “logic” but is blinded by his own bias in its application.

      2. 5.1.3

        About four or so months I saw a very good article which discussed that if a claim is patentable under 102/103 then it should not be rejected under 101. If anyone finds this paper, please post it. Thanks.


          I have recently filed an Appeal Brief in a case in which after some long prosecution it has been established that the claimed invention is new under 102 and nonobvious under 103-and meets all the reqs of 112; but there is a 101 rejection. I have stated and used the position that this is a patentable invention but for the 101 rejection-to make them think of what they are saying with the 101 rejection – the claims which do include more than a “generic computer” are said to be rejectable under 101 since they are to a word game and preempt all such word games. Haven’t a clue how this will turn out. No waiver of privilege: I am the inventor [or not]. Guy McClung, Re. No 29008


            No waiver of privilege: I am the inventor [or not]. Guy McClung, Re. No 29008

            Please reproduce the claims, Guy, and we can explain to you why your invention is junk.


              I’m going to guess it’s this (or related to this. I didn’t actually look on PAIR).

              Claim 50 (1-50 were canceled):

              50. A game of producing words, the game comprising,

              a game system for multiple players to play the game, and

              the game system comprising at least one designator for each player so that, in playing the game, a produced word produced by a first player results in a first score for the first player and can result in a second score for a second player who does not produce the word.


            the claims which do include more than a “generic computer” are said to be rejectable under 101 since they are to a word game and preempt all such word games.

            Sounds like a real winner!

            Give us a break already.


              Not only that but the claims contain words and as such preclude all such claims that include words.



                As there are patents to board games, I fail to understand why if someone invents a new board game (not done before on a board) but implements it on a computer they shouldn’t get a patent.

                1. At least there should be a reasoned argument if they don’t that includes prior art citations and combination arguments.

                  This ’cause I feel it so logic is ****filth*****.

                2. alun: I fail to understand why if someone invents a new board game (not done before on a board) but implements it on a computer they shouldn’t get a patent.

                  A claim to a “new” patent eligible board game requires a non-obvious objective physical distinction to be made between it and all the old board games in the prior art. Otherwise you’d be claiming “new rules”, which aren’t eligible for patenting.

                  And we all know what happens with computer-implemented junk.

                  We can also all reasonably question whether “games” are “useful” in a non-trivial sense or among the “useful arts”. The fact that some “education” or “entertainment” utility can be identified is not sufficient to confer eligibility for patent protection or we’d have patents protecting movies and music (and other information — oh wait, I forgot: alun likes those junky patents because computers are so shiny and awesome).

                  there are patents to board games

                  There’s patents to a lot of junk, alun, including (until very recently) planning a meal “on a computer”. That’s not a great starting point for an argument.

                3. “’cause I feel it so” logic is ***filth****


                  But “a produced word produced by a first player results in a first score” is the kind of awesome technological advance that only patents can promote. It’s what the Framers intended!

                  Got it. Makes a lot of sense.

      3. 5.1.4

        Alice is a huge waste of time.

        Patenting information processing logic is a huge waste of time. Pretty much everyone understands why this is the case but if we let all the air out of the balloon quickly then wealthy grifters will have a sad. Boo hoo!

        Speaking of which, I notice that Everyone’s Favorite Bottom Feeder(TM) aka Media Queue LLC has some presumed junk pending for oral argument at the CAFC next month (May 6; case no. 14-1794). Can anyone provide a link to the PTAB decision?


          >information processing

          Tell us whether or not your primary job function is “information processing,” MM. We all know that it is. Your absurd arguments that it is all easy and you just write down what you want and give it to a boy to program is absurd.

          Absurd paid troll is what you are. I guess if you just repeat and repeat and repeat the same absurd stuff that the mob believes you.


            Night Writer: Your absurd arguments that it is all easy

            What’s “absurd” is your bizarre, indefensible belief that my argument is “it is all easy.”


              Is your primary job function information processing or not?

              What is bizarre is that you want to exclude a technology area that is projected now to replace 10’s of millions of jobs of the next 20 years. Maybe even much higher and much more disruptive.

              Yet, this technology that is replacing the jobs of people is not eligible for a patent? ’cause, ’cause. ’cause. In other words, ’cause I am paid to say so.

      4. 5.1.5

        Dear Night Writer, Are you asking for a real world example of an examined claim that is rejected only under 101, while previously being rejected under 102, 103 [rejections overcome], and is not in the final rejection rejected under 102, 103 and 112? Guy McClung, Reg. No 29008

    2. 5.2

      “I still think the best way to increase quality is to give examiners more tools [e.g, prior art data bases]. .. ” and training, even old dogs can learn new tricks.

      And an expansion of patent quality review of examiner work products is needed. (a sensible expansion, not one that takes us back to the reject, reject, days)

      1. 5.2.1

        Fishsticks: (a sensible expansion, not one that takes us back to the reject, reject, days)

        Note how the patent everything crowd is so sure that “sensible solutions” couldn’t possibly result in more rejections.

        I wonder why they believe that?


      2. 5.2.2

        Arent we already back in the “reject reject days”? In the past [been doing this since 1978] some claims allowed in first action were not rare; today it is. Is this true: an Examiner’s work gets reviewed if a claim is allowed, but not if a claim is rejected? And quotas for Examiners are ridiculous unless they take into account length of a specification and number of prior art refs reviewed and hours spent searching. Guy McClung, Reg. No. 29008


          Arent we already back in the “reject reject days”?

          Show us some of your recent granted patents, Guy, and we can tell you right away.

    3. 5.3

      As a previous Examiner, now in private practice, here are a few things that, I think, prevent Examiners from doing a quality job:

      1- As of today, new hires are not matched to an area of technology in which they might be “skilled in the art.” Examiners do not even know which technology they will be Examining until their first day on the job. Yet, they are placed on “production” 4 months into the job, most of these 4 months being spent in training. This is too little time to become “skilled in the art” in something you have never seen or worked on. Just because you are an Electrical Engineer doesn’t mean you are one of “skill in the art” in semiconductors, for example. And remember, it is not only an issue with understanding the application at hand, but also in performing searches and understanding the references found. This training is left to the corresponding SPE, the corresponding Primaries (i.e., Primaries in the art unit), and the Examiner.

      Solution: do a better job hiring people for the technology areas of need; allow people within their first year to easily move to another technology area of need based on their background and interest. This would allow new hires to focus on quality.

      2- SPEs may not know the technology they are supervising. Generally, Primaries are promoted to SPEs because they are due for a promotion, even though there might not be positions in a technology in which they are proficient. When you add this to point 1 above, you end up with many SPEs that cannot properly supervise new hires. Supervision then falls on Primaries in the art unit, who themselves need to turn an Office Action a day, may not want or like to help new hires, and are not really “supervisors.” In a real-life example, a Primary that always worked in the mechanical arts was recently promoted to be an SPE in an art unit dealing with Geospatial communications and systems. How can this SPE even know if the work being supervised is of any quality?

      Solution: SPEs should be “skilled in the art” for the technology area they are supervising. Thus, training and evaluation will fall in the right individual.

      3- Nobody seem to know where the budget of time per case comes from. There is a set period of time an Examiner is given to turn around a case, and it is based on the application’s technology classification. But it is a mystery how this time was/is set. So, if you find yourself in very tough technology you know nothing about (see point 1), an SPE that can’t help (see point 2), a Primary who doesn’t have enough time to help (see point 2), in an area that gives too little time relative to the technology’s complexity, you are toast. Also, technology has changed, but these times have not been updated in decades.

      Solution: evaluate the time for completing a case based on some objective data and revise periodically (e.g., every 5 years). This would give Examiners an appropriate time to dedicate to an application.

      1. 5.3.2

        How about requiring that Examiners have a basic competency in the English language. Some time ago I had an interview with an Examiner that required a translator (from another art unit). No one in the Examiner’s art unit could translate because the art unit did not use English to conduct their business internally.

  8. 4

    While I fully support the USPTO’s quality initiative as an opportunity to open discussion and increase transparency, I question the wisdom of framing the discussion in terms of the USPTO’s three pillars.

    The first step needs to be defining patent quality. The IG report defined patent quality in terms of the clarity and validity of issued patents. This definition reflects the perspective of many businesses, but fails to capture quality of the USPTO’s work products prior to allowance. Policies informed by a definition of quality that focuses only on validity and clarity of issued patents will likely slow prosecution, increase backlog, and frustrate patent practitioners.

    Unlike the IG report, the USPTO strategically declined to provide a precise definition of patent quality in the Request for Comments, and instead conflated patent quality with the subject matter captured under the three “patent quality pillars.” I would argue that those pillars were framed to de-emphasize the importance of patent validity as a key aspect of patent quality. Note that validity of issued patents is folded into the first pillar and is given no more significance than, for example, the quality of a restriction requirement.

    Again, I appreciate that the USPTO has opened debate on this important issue. I am concerned, however, that the USPTO has framed the discussion in a manner that may tend to underrepresent the significance of patent validity.

    1. 4.1


      How many comments in this “ecosystem” alone have we seen of late that have concerned Office Quality, and how many of those have attempted to push the conversation away from what the Office actually controls?

      One has to wonder why there is such a strong aversion to just doing the F N job right the first time.

      As I have often noted as being the actual true focus needed.

      Time and again, the needed singular focus is co-opted by those with different philosophical agendas, ranging from the desire to reshape eligibility to those whe merely want to play the “blame the applicant” game.

      We don’t need more essays.

      1. 4.1.1

        What we need are better searches, but I think that ship has sailed. Given the propensity to fast and sloppy keyword searches, we get strange actions that try to fit the invention to the results. That is like doing the examining job in reverse, but nobody seems to care.

    2. 4.2

      Thanks Eric – I agree with you that the PTO’s pre-defined pillars and proposals are overly restrictive. However, the notice for comment is not restricted to addressing only those approaches and certainly the BTLJ is interested in publishing good ideas that will promote patent quality.

    3. 4.3

      Eric, “Policies informed by a definition of quality that focuses only on validity and clarity of issued patents will likely slow prosecution, increase backlog, and frustrate patent practitioners.”

      Spot on — and since Kappos was focused on speeding prosecution, reducing the backlog and reducing the frustration of patent practitioners, one can see that a focus on true patent quality was and is antithetical to the Kappos’ regimes legacy.

      It also explains why Kappos only gave lip service to the patent quality in the sense of issuing patents that were valid, and with clear and not overbroad claims.

      To actually emphasize patent quality will require fundamental reforms and a change in direction in the patent office. Typically, this cannot be done unless the regime is changed. The question is whether Michelle Lee is part of the Kappos regime, meaning she is part of the problem; or whether is she her own boss and is willing to do what is necessary.

      As you noted Eric, the three pillars of patent quality emphasize not patent quality, but “quality” examination. It is a red herring, intended to change the topic. Soon the AIPLA, an organization of patent attorneys, by patent attorneys and for patent attorneys, will be discussing better ways of speeding up prosecution, reducing the backlog and keep its own members happy. This does not bode well.

      We have to remember the story of Hiawatha, the Indian brave who was able to shoot more arrows than any other. The problem was that he seldom hit the target. Why, you ask? Because he was not taught to aim – that took too much time.

  9. 3

    Has the PTO agreed to review the comments published in the BTLJ?

    If the comments substantively duplicate parallel submissions to the PTO, will the BTLJ’s selection process result in greater consideration by the PTO than comments submitted directly to the PTO?

    If not, will the publication be a subjective sampling of comments from persons who have learned of the BTLJ’s special volume and elect to submit their comments to the BTLJ without any expectation that they will be published or considered by the PTO?

    Does the 3000 word limit on reviews of comments published by the BTLJ reflect speculation that the quality of 1000 word comments will be two-thirds lower than the reviews?

    1. 3.1

      Steve, There will be a mechanism for making sure that the USPTO decision makers have copies of the BTLJ comments and reviews, although I don’t think that we can legally force them to read the comments. Some folks will be doing dual submissions. In each case it only involves sending an email. And, while the PTO will review all comments, the BTLJ will only publish comments that the editors choose to publish.

      One problem with proposals to the PTO is that the agency is often looking inward and asking – how will examiners (or Congress) react to this proposal. Although those questions are politically important, they miss the actual important question of what impact the policy may have outside of the office. The purpose of the reviews-of-comments is to help provide the Office with some additional outside guidance when considering which policies to implement.

  10. 2

    Not one word about this:

    “Ensuring the issuance of high-quality patents has been his USPTO strategic initiative for many years. High-quality patents are generally considered to be those whose claims clearly defined and provide clear notice of their boundaries, while low-quality patents are those that contain unclear property rights, overly broad claims, or both. Increasing concerns regarding abusive patent litigation and ambiguous patents heighten the need for USPTO to ensure adequate processes are in place to promote issuing high-quality patents.”

    From the IG report.

    Nothing is being done about clarity of claims or breadth. Nothing. All we get is the examiner is not doing his job properly, or that kind of BS. No one focuses on the identified problem.

    1. 2.1

      A major reason for programmed computer and Beauregard claims is to avoid 271(c) and (b) — primarily because of misinterpretation of 271(c) by Aro II to require knowledge that the activity induced is actual patent infringement. Since the law was intended to codify, the interpretation by the Supreme Court was a mistake.

      But the perceived to allow claims to machines and articles of manufacture to be defined by what they do (really process claims) distorts patent law. It is better to end this practice, and address the problems induced by Aro II.

      I would therefor propose to amend 271(c) to remove the “knowing” requirement altogether. I would further proposed to amend 271(b) to only require active inducement “of an infringement.”

      Then I we should strongly enforce the prohibition of defining machines, etc., as new machines when only their use has changed. Such are new processes, not new or improved machines.

      1. 2.1.1

        Once again you are ignoring the counterpoints already made that addresses your views here.

        It is the execution of software that is a method

        Software is a manufacture and machine component.

        One cannot “use” software on a machine unless that machine is first changed and configured with the software component.

        It is completely disingenuous of you to pretend that you don’t know these things – and if you don’t know these things, you have no business discussing this art.


            Allow me to correct myself, please:

            Configuration in is inherent in “use”, not a prerequisite to such.


              But your choice of word – “inherently” is most interesting, as the aspect of “inherency” would be apt to a proper basis of rejection – and points to the fact that ALL future inventions to “old box” would have to be “already in there” for the rejection of software to have any consistency.

              But clearly, that is neither possible nor a reality – a point that the anti-software patent folk have never been able to deal with.


                a point that the anti-software patent folk have never been able to deal with.

                Pretty sure what “we can’t deal with” is incomprehensible gibberish of the sort that comes out of your piehole.

                1. More than “pretty sure” that you are wrong.


                  Go figure (as it is you that derails yet another thread with your mindless rants)


                I think you deliberately blind yourself to the opposing argument, Anon.

                It’s not that the “inventions” are “already in there”. An “old” data-processing machine loaded with “new” data is not an “invention” — a point that the patent-expansionist folk have never been able to deal with.

                Future “inventions” to “old box” need to effect something more than just assigning abstract meanings to whatever data it’s processing, as supported by recent SCOTUS holdings.

                1. I have debunked your “programming is just data” view in the past.

                  Reminder: new function ability from the manufacture that has a functional relationship.

                  I do NOT blind myself to the opposing argument – I have destroyed that opposing argument.

                2. The “debunking” and “destroying” are self-aggrandizing self-assessments, Anon.

                  You merely presented your own conclusions as if they were indisputable “fact.” That’s not debunking, Anon.

                  Reminder: a computer has a finite (large, but finite) number of configurations, and will process data however it’s configured to. A “new” function is just a reflection of the abstract meaning assigned to the data being processed. (And if you drag out your “Grand Hall Experiment” again, I’ll drag out my meat grinder again.)

                  Media containing software are manufactures — but Beauregard claims are going out of style. The courts are finally getting wise to that particular end-run around 101.

                3. Self-aggrandizing? Not at all

                  Conclusions as facts? Not at all.

                  You tried that angle also – and failed.

                  They are not facts because I say so – I stated them because they are facts.

                  (Your meat-grinder was wrecked as well – reminder: functionally related, not merely processed – you kick dust and try to gloss over “however it is configured to, so let me remind you of my big box of electrons, protons and neutrons – it very much IS invention in that very “configured to” aspect you gloss over.

                  As for going out of style, well, there too you are wrong. The market may be moving away from disks per se, but that is a different driver than the one you want to offer as a conclusion.

                4. Anon,

                  “Failed”, “facts“, “wrecked” . . . so much self-aggrandizement.

                  “Big box of [particles]” — which can be configured in an infinite number of non-abstract ways that really do affect functionality, thereby obliterating the inherency comparison you are attempting to make.

                  The courts are wising up to the “new machine” deception and the “media containing instructions” end-run, and the “transitory signal” software transmission was pretty much a non-starter. Claims of software as a manufacture are getting more nebulous all the time, Anon.



          Do you believe Beauregard claims are patentable under 101? That is, to the extent that these claims are attempting to cover software on a disk (or other medium) — in other words, the software itself — are these claims patentable under 101? My personal opinion is that they are not. Patents should not cover raw software (even on a “medium”) in my opinion.

          And I’m completely for “software” patents, i.e., machines configured by software to perform (new) functions. This is the way real life computers/cell phones/engines/you name it work.

          Now, I still draft and add Beauregard claims to all of my applications to which they are applicable, but I don’t place near the emphasis on these claims as I used to.



            Your post touches on two different and separate ideas.

            First, the easy one.

            Software is a manufacture an machine component.


            Once that baseline fact is accepted, then we can discuss what 35 USC 101 – the wide open front gate – is supposed to allow in and what it is supposed to keep out.

            Second, your comment on “I don’t place near the emphasis” sounds more in being pragmatic about the judicial activism afoot rather than whether or not we should be taking a stand against such naked judicial activism.

            I have made my views on what I consider cowardice rather evident: you appear to be in the Chamberlain “peace for our time” camp.

            One cannot be faithful to allowing machines and yet not allow machine components that are manufactures in their own rights. There is no principled Rule of Law that allows the one but not the other. Sorry, but the actual words of Congress just don’t allow that distinction.

            Software is not the thought of software.

            Software is not the execution of software.

            Machines do not “magically” have everything “already in there” and machines really do must be changed first before software can be “merely used.”

            If these points are treated with any degree of inte11ectual honesty, the outcome of our discussion is entirely clear.


          Anon, look at the benefits of the change. No more hiding the ball. When one sells software, one is inducing infringement/committing contributory infringement with no “knowledge of the patent” requirement.

          We don’t have to get into the weeds to on 101 simple because we are claiming a new machine when the machine is old and the programming is new. Alice has spiked the addition of the generic computer/media as giving the method claimed 101 weight.

          Claim software as processes or methods within systems, etc. Sue for infringement those who sell or use software, just as if software were normal, not some special case.


            Absolutely and unequivocably wrong Ned for the reasons given. You “say” don’t hide the ball as you engage in that very action by misrepresenting the fundamental basics of what software is.

            Read again my post at

            Once the games stop and the basics are accepted, there truly will be no hiding the ball and no need for ball hiding.

      2. 2.1.2

        “Then I we should strongly enforce the prohibition of defining machines, etc., as new machines when only their use has changed. Such are new processes, not new or improved machines.”

        I honestly cannot fathom how the judiciary got away from this in the first place.

  11. 1

    We are not “customers”-we are the owners of the business, the taxpayers who fund the business with our earned dollars. Using the descriptor “customers” is simply crystal clear evidence of a mind-set and approach to what is the essence of government and how certain politicians and bureaucrats view this country’s citizens. No Supreme Court had to discover the right to a patent in the shadows of one of the Amendments in the Bill of Rights. The USPTO exists to give inventors that to which the Constitution gives them a right – it is not a benevolent bureaucracy of an aristocracy that can deign or not to grant a government monopoly. Every inventor has the constitutional right to a patent on a patentable invention. I suggest that the USPTO never NEVER again refer to the owners of the USPTO as “customers”. Doing so implies that someone else or some other someones are the “owners” and also implies that these someone elses have power, rights, and authorities that mere “customers” do not have. Strong note to follow. And for simplification of the entire system: have legislation introduced that provides for a non-examined patent, a “registration patent,” an issued patent that cannot be the basis for a trial in a lawsuit until the patent owner submits a prescribed prior art search and the USPTO examines the patent, with all the accompanying new laws re calculation of damages, statutes of limitations, third party involvement in the exam, etc. Guy McClung, Reg. No. 29,008; San Antonio TX

    1. 1.1

      Guy – With a Reg. number in the 29k range, I’d be particularly interested in your views on patent quality through the examination phase. And, how to achieve quality with the many recent decisions that have “softened” the lines of sect. 101, 103, etc. You’ve definitely seen some changes to the patent system over the decades, or maybe it’s still the same old system in your view?

    2. 1.2

      “it is not a benevolent bureaucracy of an aristocracy that can deign or not to grant a government monopoly”

      Technically speaking that is exactly what it is atm.

      1. 1.2.1

        Examiners are where in this neo-aristrocratic system? Benevolent knights in shining armor?

        This metafor has a lot of potentials…

    3. 1.3

      Minor quibble. Noone is entitled to a patent ‘under the constitution.’ Congress is authorized to make laws regarding patents under the constitution. Inventors obtain their right through those laws, as interpreted by the scotus.

    4. 1.4

      Guy, “registration?” Simple – deferred examination. Make it 7 years. But there has to be a proviso – a member of the public needing to clarify their right to practice themselves should have a right to petition for examination, if they demonstrate standing.

      Companies like IBM were at the forefront of ending other countries deferred examination because they wanted to clarify their own rights to practice. But there are ways of doing that short of eliminating deferred examination. The benefit of deferred examination is that one can examine only those applications that time has shown are valuable inventions.

      1. 1.4.1

        Except that by the time you received your patent, in many industries, your patent would be worthless. Think flip phones. Five+ years ago, everyone had one. How many people have one now?


          PatentBob, you obviously have not practice in an era of deferred examination.

          Examination is optional.

          But at any time, the applicant can pay the fees and request examination.


          How many people still have flip phones?

          Me, for one. It makes and receives phone calls, period.

          I have a tablet and a PC and a camera for all other things.

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