Are Specific Information-Processing Claims Abstract Ideas?

Guest Post by Jeffrey A. Lefstin, Professor of Law at the University of California, Hastings College of Law.

The Supreme Court’s decision in Alice v. CLS Bank resolved the easy cases: claims that merely recite a mode of organizing activity coupled with a generic instruction to “do it on a computer” or “do it on the Internet.” The key question left open by Alice is whether claims to specific information-processing techniques represent ineligible abstract ideas or eligible applications. Answering that question will be critical to resolving cases like California Institute of Technology v. Hughes Communications, Inc., and McRO v. Activision, discussed in Robert Stoll’s Patently-O post last month.

The patents in Caltech were directed to a method of generating error correction codes in digital transmissions. They described a method of generating parity bits by accumulating previously generated parity bits, and a sum of randomly chosen irregular repeats of message bits. Notwithstanding that the patents claimed only information-processing steps, Judge Pfaelzer of the Central District of California ruled that the claims were patent-eligible: while the claims were directed to the abstract idea of error correction, the algorithm for generating parity bits represented an inventive application of the underlying idea.

As Judge Pfaelzer recognized, that holding might be in tension with Digitech Image Technologies v. Electronics for Imaging, where the Federal Circuit, relying on Benson and Flook, suggested that any claim merely transforming information with “mathematical algorithms” is not patent-eligible. So Caltech squarely raises the question of whether specific information-processing algorithms are patent-eligible after Alice.

More generally, the significance of Benson and Flook after Alice is a critical question for future § 101 jurisprudence: much of the difficulty faced by the lower courts and the USPTO arises from attempts to reconcile the Supreme Court’s earlier caselaw with its decisions since Bilski.

It is time to acknowledge that they cannot be reconciled, and they need not be. While the Court maintains a pretense that all its opinions are coherent with each other, the regime the Court has crafted since Bilski represents a sharp break from its earlier decisions. Courts that continue to rely on Benson and Flook have not recognized the significance of Alice’s reaffirmation of the Mayo framework for patent-eligibility. For Mayo established both a different structure and a different rationale for subject matter eligibility than the Court had employed in its prior cases.

First, Mayo provided a new structure for the § 101 inquiry: step one is to identify an abstract idea or law of nature underlying the claim, and step two asks whether the claim further recites an ‘inventive concept’ that transforms the abstract idea or law of nature into a patent-eligible application. If that was not the analytical framework employed in the Court’s earlier cases, then the analysis and holdings of those cases are not necessarily relevant after Mayo and Alice. The Court itself told us in Bilski that its earlier opinions represented nothing more than explanations of the basic exceptions for laws of nature and abstract ideas.

Second, Mayo and Alice reoriented the rationale for subject-matter exclusions. Benson and Flook were premised in large part on the exclusion of subject matter not expressly authorized by Congress, the restriction of patents to tangible processes, or the exclusion of preexisting truths that exist apart from human action. Those premises were rejected in Chakrabarty, Bilski, and Alice, respectively. Instead, Mayo and Alice grounded subject matter exclusions on the ‘building-block’ concern: that patents on fundamental principles risk foreclosing more innovation than they promote.

Given the Court’s reorientation of the doctrine, Benson and Flook’s focus on ‘algorithms’ is no longer relevant. Abstract ideas, after Bilski, Mayo, and Alice, are not characterized by intangibility or field of invention. They are characterized by ‘fundamentalness’ – the concern that patents on basic concepts will foreclose too much further development. In this framework, a specific information-processing algorithm, such as an algorithm for generating parity bits, does not qualify as an abstract idea.

Caltech defined the abstract idea as the purpose of the claim, recited at a reasonably high level of generality: error correction, in the claims at issue. Identifying the abstract idea with the purpose or effect of the claim follows from the structure of the Mayo/Alice test. Step one defines the abstraction (if any) underlying the claim, while step two asks whether the application of that abstraction contains an inventive concept. The object of step one must therefore be to separate the idea of the invention from the means of application, which will be the subject of step two.

We already differentiate between idea and means of application in the law of inventorship: courts have long distinguished between formulating a goal, effect or result – which is not a contribution to conception – and formulating the means of attaining that result – which is a contribution to conception. So the Caltech analysis merely maps that long-standing distinction onto the subject-matter inquiry under § 101.

I discuss these ideas further, and develop a framework of ‘inventive concept’ applicable to both abstract ideas and laws of nature, in a forthcoming paper available here.

126 thoughts on “Are Specific Information-Processing Claims Abstract Ideas?

  1. 11

    It is still difficult to tell what the patentable subject matter threshold is under Alice. I just got an allowance on a case filed 18-Feb-2015 (14/625,265), in which the Examiner stated:

    “… claim 1 as amended not only recites using one or more computing
    devices to perform calculations and engage in communication, but doing so to manage
    transportation services for practical purposes which go beyond (although they include)
    commerce as such, including managing the availability of transportation service
    providers for backhauls or additional legs; the claims are therefore judged to be nontrivially
    more than applying an abstract idea.”

    This would be a little less the 4 months, and following an Alice rejection.

  2. 10

    To my mind, the only way this should be discussed is in the context of the ladders of abstraction and enablement. Newman explains this in her Bilski dissent. What we have here is a descent into madness. The ladders of abstraction are what engineering students are taught. The fact that so many federal circuit judges don’t understand them (or probably have never even heard them) is an illustration that they should not have been appointed to the Fed. Cir. without science backgrounds.

    Reality: we (the real people that should be practicing patent law not the liberal art major judges Obama has appointed) understand the ladders of abstraction. This whole thing is simple to understand. The SCOTUS has merely created a case that says, “You may invalidate any claim you wish without evidence ’cause we say so.”

    1. 10.1

      The Supremes gave no limits to the “Gist/Abstract” sword.

      If they are willing to wipe out a stipulated agreement between the parties that the statutory category aspect had been satisfied, and “Gist” away whatever they want to, with the remainder labeled “Abstract idea,” then there is quite literally nothing that is safe from the Court and we have indeed repeated history and arrived back in the pre-1952 “the only valid patent is one that has not yet appeared before us” zone.

      We don’t need “academic reconceptualizations” to mask the bitter almond aftertaste. We don’t need “patent peace for our time.” We need to stomp on the gas pedal and FULLY embrace what the Court has wrought so that the abomination can be excised.

      1. 10.1.1

        One of the big problems is that Obama has appointed an anti-patent director of the USPTO. We needed someone that understood prosecution and could fight the SCOTUS.

        This is in many ways a flash of genius redux. The SCOTUS has gone wild–again.

        There is just no other way to look at this but with the ladders of abstraction. Any other way gives in to the bourbon swilling liberal arts majors.

        1. 10.1.1.1

          You really have to ask yourself what is going on here. The Fed. Cir. was created to harmonize patent law and it was understood that patent law was difficult for the liberal arts majors. Now Obama is appointing more liberal arts majors than science majors. Outrageous.

          This Alice thing is an example where a strong Fed. Cir. with science majors could fight back and say look SCOTUS this Alice case law is absurd. Instead we have lap dogs that are happy to ride patent law into the ground for their life-long chuck wagon.

          1. 10.1.1.1.1

            It is even worse than that.

            Look at the so-called “legal minds” here. As long as the ends align with a desired viewpoint, the means to those ends are just not critically reviewed.

            Plenty of “advocates” wanting the Supreme Court to rewrite statutory law with common law.

            People wanting to ig nore the guidance of the man most closely aligned with the words of Congress – because he helped pen those very words.

            Wide scale disrespect for the Rule of Law based merely on the most expedient way of getting to a desired end.

            It makes Ned’s cries for respect of separation of powers for his active case into a very laughable (and inconsistent) joke.

            1. 10.1.1.1.1.1

              Also, Night Writer, it is worse because the Article III court given direction by Congress to bring order to patent law has been repeatedly brow-beaten by the Royal Nine on matters outside of a strictly constitutional nature, thus defeating the intent of Congress in setting up the CAFC in the first place.

              What we now need is a two step rectification:

              1) officially remove the Supreme Court from patent appeals (entirely within Congress’s constitutional authority and does not violate Marbury since an Article III court still has review power).

              2) Restock the CAFC with judges that know and understand patents and who have not been brow-beaten by the dogma of the Royal Nine.

              Both are now needed because the infection of the Royal Nine has been allowed to metastasize and spread.

          2. 10.1.1.1.2

            Night Writer,

            …and it is about to get even worse with Eon engaging in revisionist and incorrect rewriting of the effect of decisions on Alappat from a panel group, seeing as the requirement of a panel at the CAFC to give authority to an earlier panel exists and the first panel after the Supreme Court version of Bilski completely validated Alappat, this re-writing has no authority to do what it attempts to do in dicta.

            The CAFC needs to be purged of its brow-beaten judicial-activist infused members.

            1. 10.1.1.1.2.1

              The CAFC needs to be purged of its brow-beaten judicial-activist infused members.

              Oooooh!

              But this isn’t a call for impeachment, right?

              LOL

              1. 10.1.1.1.2.1.1

                Purged is not synonymous with impeached, and the context (as you are well aware of) is also vastly different.

                But what would this blog be without your attempts at dissembling?

      2. 10.1.2

        “anon” : We need to stomp on the gas pedal and FULLY embrace what the Court has wrought so that the abomination can be excised.

        And then what, Mr. Patent Lover?

        Please tell everyone.

        You’ve had at least five years to come up with answer to this question. Do you need to a phone a friend?

        1. 10.1.2.1

          We have statutory law as it was meant to be under the constitution.

          You act like that was a difficult question. Perhaps you should have asked it more directly five years ago, as somehow you think the question was on the table for that long (hint: it wasn’t).

            1. 10.1.2.1.1.1

              Not sure what point you are trying to make Malcolm.

              Perhaps you can use those short declarative sentences you are always on about.

              1. 10.1.2.1.1.1.1

                My point is that you are cheering for some judge-made “abomination” to be excised, as if that excision would not lead immediately to a replacement iterating the same fundamental principles that the Supremes (along with many others, including yours truly) have laid out for everyone.

                But if you have some other replacement in mind that you think is viable, please share it with everyone. As I already noted, you’ve had a long time to think about your answer. Share it with everyone.

                1. You’ve said absolutely nothing here.

                  Try again.

                  Use those short declarative sentences you are always on about.

    2. 10.2

      Night Writer,

      What’s a “ladder of abstraction” and why would engineering students be taught this? (You’ll have to forgive me, but if I was taught this in engineering school, either I forgot about it or no one referred to it as such).

      1. 10.2.1

        Read Newman’s Bilski dissent or just google it. The schools I went to taught it first year.

    3. 10.3

      Night, I partially agree.

      The problem began in State Street Bank when Rich overruled Hotel Security. It was extended in In re Bilksi when the Feds went MOT rather than simply overrule State Street Bank. I finally hit bottom in the 5-4 decision in Bilski, where the majority thought the problem with the claims there were that they were abstract instead of listening to Stevens who simply wanted to restore Hotel Security.

      Now we are lost in a bizarre land of abstractness thanks to the Bilski 5, who got their clue from none other than that wizard, Rader.

      All we really have to do is read and follow Hotel Security to get us out of this mess. If one interprets Alice in view of Hotel Security, all becomes clear and easy to understand.

      1. 10.3.1

        Ned,

        Even Prof. Crouch has warned you that you are misapplying Hotel Security and recently David schooled you on your inappropriate readings of case law.

        Please stop embarrassing yourself.

          1. 10.3.1.1.1

            Yes Ned, really. This is not just me telling you this, which you tend to run away from, but David and Prof. Crouch as well.

            You seem oblivious to anything outside of your desired end state. Quite sad, really.

        1. 10.3.1.2

          David schooled you

          Oh noes! How embarassing to be schooled by the great David Hricick.

          1. 10.3.1.2.1

            Wrong David.

            But thanks for jumping to the conclusion and showing your bias against Prof. Hricik. Maybe you want to throw in some of that ob session thing you have with Quinn…?

            1. 10.3.1.2.1.1

              Wrong David.

              Oh, excuse me. Which of your awesomely authoritative buddies were you referring to, “anon”? It’s hard to keep up with the patent expansionists super-serious-experts du jour.

              your bias against Prof. Hricik

              LOL

              1. 10.3.1.2.1.1.1

                The same David that you (once) attempted to engage in a serious conversation and burnt your fingers with volunteered admissions that you knew and recognized the controlling law as to the exceptions to the judicial doctrine of printed matter and that you recognized that “configured to” was structural language to Persons Having Ordinary Skill In The Art.

                Of course, expecting you to have any inte11ectual honesty about your own volunteered admissions – while such would be reasonable in order to have any hope for a meaningful dialogue – is simply too much to expect from you based on your nine years and running history. Thus, the best that can be hoped for is the recurring notice (to any possible new readers) of your enduring dissembling and dishonesty.

                Have a nice day.

    4. 10.4

      Night Writer: we (the real people

      LOL

      The best and the brightest that the software patent lovers have to offer.

      You really can’t parody this stuff.

  3. 9

    Leftsin: formulating a goal, effect or result … is not a contribution to conception

    Interesting.

    Consider the following:

    An improved and configurable machine, wherein said configurable machine is identical to an old machine except it has a new functionality, wherein said new functionality is [insert non-obvious useful functionality here].

    Have I “conceived” of an “invention”?

    formulating the means of attaining that result – which is a contribution to conception

    “Configure it”.

    There. Now I’ve contributed to conception and I have a claim that protects the recited functionality on all machines, regardless of the actual physical structure of those machines and regardless of my inability to conceive of that physical structure.

    Some “distinction”.

    1. 9.1

      “regardless of my inability to conceive of that physical structure.” — then it fails the enablement requirement, doesn’t it?

      1. 9.1.1

        “regardless of my inability to conceive of that physical structure.” — then it fails the enablement requirement, doesn’t it?

        Share with everyone the argument you have in mind.

        Assume first that the alleged inventor can not or has not conceived of a single novel physical structure distinguishing his “new” machine from the machines in the prior art.

        Then assume that nobody else can do so until a single functioning machine is actually created and examined under a microscope (or by some other method) to determine what, in fact, the novel structural distinctions are which are responsible for the functionality.

        When is the alleged “invention” enabled, according to you, in each scenario and what is the scope of enablement?

        1. 9.1.1.1

          Once again dissembling about one optional form of claim structure, pretending that it is the ONLY form of claim structure allowed under the law.

          Simply not so.

    2. 9.2

      Plain reality Malcolm is that there is a physical difference and that claim language does NOT have to be in the singular form of delineating the physical distinction.

      That is the law, no matter how much you whine about it.

      The proper legal distinction you might want to contemplate is inherency and the plain fact that “old box” without change simply does not have the new capability in the claim language of the new innovations.

      This has been explained to you many times. It would be nice if you actually posted with some sense of inte11ectual honesty on this fundamental fact and stopped your dissembling.

      1. 9.2.1

        “anon” there is a physical difference

        No doubt there is a “real difference” between a machine with functionality X and a machine with functionality Y.

        But you can’t claim “new functionalities.”

        For starters, as your BFF “Kip” has pointed out downthread, “new functionalities” aren’t a statutory category.

        Secondly, if you fail the describe those physical differences that matter in your claim to your “new” machine, then what you are really doing is claiming the abstract idea of a “machine that does this new thing.”

        This is just the application of logic and reason to fundamental principles that nobody finds controversial, “anon.” That’s what makes you so nutty.

        Pull out your “box of protons” again so we can all have a laugh.

        1. 9.2.1.1

          Nice dissembling Malcolm – clearly you missed the memo that claim terms in purely structural terms is ONLY one option of writing claims.

          As I mentioned:

          That is the law, no matter how much you whine about it.”

          (Your odd strawman of “claim functionalities” is thus set gently to the side)

    3. 9.3

      MM, actually, it is really interesting that the Supreme Court had exactly this case in Le Roy v. Tatham. The machine was old — used to make pasta. Now it was applied to hot lead The resulting lead, pressed through the holes in the annulus by the piston, reformed and made high quality lead pipe.

      Was this a process? A machine. What? The claim was to old machine for a new use. But it was claimed to be a new machine.

      Story would have denied the patent as the machine was not new. The dissent would have held the claim to be for a process.

      But what did the majority decide?

      link to scholar.google.com

  4. 8

    There are posters on here who post the same thing over and over. Don’t respond to them and maybe they will get bored. Don’t engage with nonsense.

    1. 8.2

      JCD,

      Sadly, nine years and running (and ALL objective measures as to this particular thread), tell a different story.

      All that you are doing is being “a good man, doing nothing.” If you let the propaganda fester, it will NOT go away.

      But careful there – no matter how disingenuous certain posters are and how often they disregard the counter points put on the table for discussion, if you are the one calling them out, then you too can be censored.

      C’est La Vie

  5. 7

    We already differentiate between idea and means of application in the law of inventorship: courts have long distinguished between formulating a goal, effect or result – which is not a contribution to conception – and formulating the means of attaining that result – which is a contribution to conception.

    This is pretty much the only part of the post I agree with wholeheartedly.

    Lets take some claims:

    1. Means for achieving result X (pre-52).
    2. Means for achieving result X (post-52).
    3. Conventional Steps 1, 2, 3, functionally claiming result X.
    4. Conventional Steps 1, 2, 3, means for achieving result X.
    5. Result X.

    Claim 1 and Claim 5 are coextensive, overbroad under 112(a) and (b) and ineligible under 101. A “result” is not an invention, a result is what occurs after one uses a particular invention. The result preexisted the machine that made it occur.

    Claim 2 is the (nowadays) rare Hyatt/non-112(f) single means claim rejection, and is coextensive with Claims 1 and 5.

    Claim 3, while of a different scope from Claims 1, 2 and 5, suffers from the same infirmity of being overbroad and ineligible because one cannot prove enablement and possession of an entire field. Claim 3 could only be valid in extremely rare circumstances proscribed under GE v Wabash and the contrapositive of Morse. The author’s suggestion that “fundamentalness” is the viewpoint is bunk. The scope of the field is actually irrelevant as is whether the field is something “fundamental” or not. The only question is whether the scope of the claim reaches beyond what the inventor himself invented; and in that manner, 101 is similar to 112(a)’s written description requirement.

    Claim 4 is the only claim that is generally valid, and only because of the operation of 112(f) to substitute what would have to be non-conventional steps 4 through N from the spec into the claims.

    You’ll note that 4 is doing exactly as the quoted passage suggests – rather than formulating a goal, effect or result it formulates the means of achieving that result. That’s the only thing allowably claimed.

    1. 7.1

      It’s really too bad that you don’t understand what 112 means according to the law passed by Congress in 1952.

      See Federico.

      (It also would help if you understood what the ladders of abstraction mean – you do have rings, Ya know)

    2. 7.2

      Random, can there be a claim that exceeds the scope of enablement that nevertheless is not “abstract.”

      If so, can you give us an example?

  6. 6

    Professor Lefstin, your article on Inventive Application is the best law review article that I’ve read on patent eligible subject matter. I can’t wait to read your new article.

    That said, I have to take issue with your statements here. First you say that “a mode of organizing activity coupled with a generic instruction to ‘do it on a computer'” is not patent eligible after Alice. Your statement implies that this is a per se rule.

    I think this represents a profound misreading of Alice and Bilski. The “organizing [human] activity” language derives from a long line of losing minority opinions – by Judge Dyk in Bilski, by Justice Stevens in Bilski, and by Justice Sotomayor in Alice – arguing for a categorical rule against such patents. All three of those minority opinions lost.

    The closest you will get to a rule against “methods of organizing human activity” is one sentence in the Alice majority that characterizes Alice’s claim as such. But the Court, in the same paragraph, makes clear that this is not the reason why the Court invalidated the claim. “Instead, the Court grounded its conclusion that all of the claims at issue were abstract ideas in the understanding that risk hedging was a ‘fundamental economic practice.’”

    The controlling language comes from Bilski: “hedging is a fundamental economic
    practice long prevalent in our system of commerce and taught in any introductory finance class.” That describes both hedging in Bilski and intermediated settlement in Alice.

    In view of the above, the better interpretation is that “abstract idea” is simply a legal term of art, created by judges, to make exceptions to the text of 101, based on a (weak) argument that Congress adopted them in 1952. So far, we know that the legal term of art refers to mathematical algorithms (Benson, Flook, Diehr) and “fundamental economic practices” (Bilski and Alice), as described above. We don’t know what else might be included in “abstract ideas,” because the Court refuses to define the term. But we know these are abstract ideas, and we also know that the Court has repeatedly told us to proceed cautiously and not to read conditions into the patent laws that Congress did not express. So the cautious approach is to essentially limit abstract ideas to these categories in the absence of a compelling reason to expand the number of categories. Notice: this is essentially the same approach, and reasoning, that Judge Chen used in the DDR Holdings decision.

    I describe all of this in my public comments on Alice at the PTO:

    link to uspto.gov

    1. 6.1

      Kip: we know that the legal term of art refers to mathematical algorithms (Benson, Flook, Diehr) and “fundamental economic practices” (Bilski and Alice), as described above. We don’t know what else might be included in “abstract ideas,”

      Sure we do, Kip.

      All information is “abstract”. None of it is eligible for patenting.

      1. 6.1.1

        …and once again with the strawman of information per se and (somehow) the goalposts being moved to TOTALLY in the mind…

        Another day, same duplicity from Malcolm.

      2. 6.1.2

        Of course, if your patent covers a technique for generating parity bits, then your patent doesn’t cover “information” does it? Instead, it covers, eg, an algorithm for performing something incredibly useful and therefore patentable under 35 USC 101.

        1. 6.1.2.1

          Great “argument”, PatentBob! “Parity bits” plus useful = eligible.

          Sure, that makes a lot of sense.

      3. 6.1.3

        MM – that can’t be right for two reasons.

        1. You don’t need a judicial exception to prevent patents on ideas, because “ideas” are not included within 101. You can only get a patent on a “process, machine, manufacture, or composition of matter.”

        2. So you must be talking, not just about patenting bare ideas, but about patenting machines and processes based on ideas. In that case, you *can* get a patent, depending on the facts.

        All patents are based on ideas, and all ideas are abstract in the literal sense. Just look at Google’s patent or Morse’s patent to see how patents based on ideas are still patent eligible. Morse’s patent is based the idea or “information” that you can use repeaters to preserve an electromagnetic communication. Claims 1-7 (but not claim 8) were valid, even though the claims are directed to that idea or information. Google’s patent is based on the idea of PageRank, but nobody has suggested (to my knowledge) that the Google patent is invalid. The same is true for most any valid patent in the IT, computer, and software spaces.

        1. 6.1.3.1

          “1. You don’t need a judicial exception to prevent patents on ideas, because “ideas” are not included within 101. You can only get a patent on a “process, machine, manufacture, or composition of matter.””

          That actually is what he’s talking about, because the art o the draftsman turns ideas into process, machine etc. And we can’t be havin’ on none of that which would tie up the idea itself.

          1. 6.1.3.1.1

            Translation: we the Supremes need to Gist because the durn scriviners are actually following the letter of the law as written by Congress and we feel that patents are “bad

        2. 6.1.3.2

          Kip: 1. You don’t need a judicial exception to prevent patents on ideas, because “ideas” are not included within 101. You can only get a patent on a “process, machine, manufacture, or composition of matter.”

          It’s 2015, Kip, so I’m going to assume you are either joking or tr0lling the blog. Which is it?

          First of all, Kip, I used the term “information” in my comment. Why did you change terms and then put the term that you introduced in quotes, Kip?

          Second of all, a mental process is a “process.” Therefore it’s eligible because 101 says “process.”. That’s the argument, anyway. Do you like it, Kip?

          Information is created or “manufactured” just like other manufactures. Therefore information is eligible because it’s a “manufacture”, recited in 101. That’s the argument, anyway. Do you like it, Kip?

          Plus my “new” hard drive that is filled non-obvious and useful information is certainly a manufacture. Therefore it’s eligible. That’s the argument anyway. Do you like it, Kip?

          So you must be talking, not just about patenting bare ideas, but about patenting machines and processes based on ideas.

          No, that’s not at all what I’m talking about, Kip.

          All patents are based on ideas, and all ideas are abstract in the literal sense.

          That’s nice, Kip. Nothing to do with what I’m talking about. You might want to spend some more time thinking carefully about what I’m saying instead of regurgitating the worst of the worst pro-software patent “arguments” out there.

          Just look at Google’s patent

          This is a joke, right?

          1. 6.1.3.2.1

            MM, your comment strikes me as hostile and impolite. Why, for example, are you repeating my name in practically every sentence? To patronize me? And why are you assuming that I’m trolling or joking? I’m making arguments in good faith.

            As best as I can tell, you seem to think that I’m arguing that the text of section 101 provides the only limits on patent eligible subject matter. You then attack that straw man by citing things that, in your view, satisfy 101 but are obviously not patent eligible.

            I actually think eliminating (most every) judicial exception to 101 would not be such a bad idea. You can find lots of smart people endorsing that policy. But I don’t need to go to that extreme here. In my earlier comment, my point was not that there should be no judicial exceptions to 101. My point was that you don’t need a judicial exception to prevent patents on bare ideas. You might need judicial exceptions to prevent patents on other things, but not on bare ideas. That’s a subtle distinction that you seemed to have missed.

            One last thing: repeating someone’s name over and over, and asking if they’re joking over and over, is not a real argument, and is not really polite. This failure to engage in reasoned, polite, good faith debate is why Patently-O comment sections have the reputation they do. With that said, I’ll bow out for now.

            1. 6.1.3.2.1.1

              I don’t really understand people who talk about repealing parts of 101. What makes anyone think there is any chance of this happening? Has anyone outside the patent bar (and a few of their clients) indicated they would support such an idea? It honestly comes across as delu sional.

              ” You can find lots of smart people endorsing that policy.”

              I wonder what they do for a living.

              1. 6.1.3.2.1.1.2

                I wonder what “Go” does for a living….

                Leave it to Go to cheerlead Malcolm and completely miss thegist of your post Kip.

                No help from the “unbiased” editors either…

                This not-so-subtle “vouching” – even under the ever-polite guise of “Go,” while Malcolm runs rampant f001s no one.

            2. 6.1.3.2.1.2

              I actually think eliminating (most every) judicial exception to 101 would not be such a bad idea. You can find lots of smart people endorsing that policy.

              Name one.

              1. 6.1.3.2.1.2.1

                Newman and Rader have explicitly argued for courts to follow the statute. The original drafters of the statute, Rich and Federico, generally wanted it to be followed closely without creating judicial exceptions.

                Others criticize the abstract idea exception, if not the other judicial exceptions. Paul Clement filed a brief for IBM arguing to abolish the abstract idea exception. Chisum calls Benson a “failure.”

                And these are just experts who have made statements on the public record. It doesn’t include judges and others who keep their criticisms of the Supreme Court secret because of political and institutional reasons.

                1. follow the statute.

                  LOL. You make it sound so easy, Kip! You must be really smart, too.

                  Seriously, with all due respect to the “smart” people you mentioned, they don’t strike me as particularly “smart”.

                  Here’s a list of more appopriate terms:

                  Confused. Hypocritical. Self-interested. Deeply conflicted. Short-sighted.

                  I’d normally be happy to provide specific examples for you, Kip, that illustrate why those adjectives are more appropriate than “smart”, particularly when it comes to subject matter eligibility. I’ve certainly made similar efforts for other commenters many, many times in the past.

                  I’m pretty sure I’d be wasting my time providing that information to you, however.

                  Maybe just sit down this evening and think about two words: mental process.

                  Have fun.

                  Choose your leaders carefully.

                2. Kip, Newman and Rader are bitter clingers to the Rich view – that the division of 101 from 102 was “intended” to alter the law of “101,” even where 101 has remained unchanged in substantially its current form since 1790/1793.

                  If IBM and/or Chisum, or some other person that compiles a treatise of footnotes, wants to call Benson a failure, so what? They have a business axes to grind. After all, what’s good for IBM is good for IBM, case closed.

                  Federico divided 102 from 101 to add to 102 the defenses to patent infringement to bring within 102 both “prior art” and the defenses regarding inventorship and prior invention.

                  Rich in turn made it his mission to channel everything into 102/103 and to ignore 101 as a “requirement” for patentablity, if not a condition for patentability. Under his view, the 101 requirements must be consider separately and before 102/103.

                  Clearly, the Supreme Court was and is not going to allow Rich’s heresy to succeed no matter how much IBM or Chisum or whoever toots his horn. The rewrite in ’52 was not intended to change the fundamental patent law of the land.

                  Rich should have recused himself from every case involving construction of the the ’52 Act, because he was clearly not unbiased.

                3. …the man most knowledgeable should remove himself (per Ned)….

                  (seriously folks – can you BE any more lame?)

            3. 6.1.3.2.1.3

              Kip: My point was that you don’t need a judicial exception to prevent patents on bare ideas.

              Kip, try to understand that the entire thread is visible for everyone to read.

              You stated: mathematical algorithms (Benson, Flook, Diehr) and “fundamental economic practices” (Bilski and Alice), as described above. We don’t know what else might be included in “abstract ideas”

              That’s nonsense and I called you out on it. As I wrote upthread, all (and any) information is abstract and can not be protected with a patent. Logic is abstract and can’t be protected by a patent. Abstract relationships between people are — wait for it — abstract and can’t be protected by a patent. I will provide a specific example (in case you are confused): correlations are examples of a type of information. They are abstract. They can’t be protected by a patent. This is why the fundamental analytical framework described in Mayo isn’t limited to “laws of nature”, as some commenters like to imagine.

              My point was that you don’t need a judicial exception to prevent patents on bare ideas.

              And that’s your strawman because I had not argued the contrary (why would I? am I drafting a new set of patent laws from scratch? Nope).

              My point (again) is that ineligible abstractions do include information itself, whether that information takes the form of a mental process or a discovered bit of information “manufactured” by carrying out that process.

              As I already noted, the application of reason and logic to that non-controversial point gets you to Prometheus and Alice and, as we have been seeing, quite a bit further than that. It’s the proponents of information- and logic-patenting who depend on “judicial exceptions” and who have been relying on “judicial exceptions” for a long time. The problem — the very predictable problem — is that those hastily cobbled and miserably short-sighted”activist” decisions intended to promote the patenting of information-processing logic quickly began eating away at the patent system as a whole. And it’s still happening. As long as it continues, we’ll see more and more reform and that reform will inevitably affect all the stakeholders, even those who aren’t engaging in the lowest form of innovation. You can see where it ends, don’t you?

              1. 6.1.3.2.1.3.1

                Well Malcolm, the “the thread is visible” applies to you and your shenanigans as well.

                But since you have no sense of shame (leastwise for yourself), that really does not matter, now does it?

              2. 6.1.3.2.1.3.2

                MM wrote:
                 “As I wrote upthread, all (and any) information is abstract”

                Actually, from a scientific basis, that is totally false.

                You see information is in effect, energy. And energy is ultimately composed of atoms. Even at the sub atomic level, particles as small as neutrinos have mass and can be objectively identified, measured, and physically manipulated. Bottom line, from a science and technology perspective nothing with mass can be abstract, and that includes information. Any questions?

            4. 6.1.3.2.1.4

              “You can find lots of smart people endorsing that policy.”

              What’s their plan to handle the angry villagers that eventually descend upon congress to dismantle the patent system?

              1. 6.1.3.2.1.4.1

                The villagers HAVE recourse against those in Congress (vote them out).

                You should be more concerned with what angry villagers might do to the Royal Nine.

                1. “The villagers HAVE recourse against those in Congress (vote them out).”

                  Yes, so what happens to the “smart people”‘s plans when that happens?

                  “You should be more concerned with what angry villagers might do to the Royal Nine.”

                  The nice thing about the royal nine is they need not fear the villagers at all. That’s why they’re appointed for life.

                2. You clearly lack appreciation of the literary reference that you yourself initiated.

                  Rather p@thetic 6.

            5. 6.1.3.2.1.5

              Kip – MM likes to repeat other people’s names in his posts in a very impolite way. It’s what he does. He does this even when your comment is not directed at him personally in any way. Keep in mind people, we are talking about patent law here. Anyhow…

              1. 6.1.3.2.1.5.1

                It’s what he is allowed to do.

                Nine years and running.

                (and Malcolm’s propaganda is most certainly NOT the law)

    2. 6.2

      Kip: you say that “a mode of organizing activity coupled with a generic instruction to ‘do it on a computer’” is not patent eligible after Alice. Your statement implies that this is a per se rule

      I think the “per se” rule the Professor was referring to relates to those claims where the “organizing activity” is an activity that results in an abstract relationship between humans (a contract) or an abstract relationship between humans and some other abstraction (e.g., ownership). Those claims are, in fact, going to be found ineligible whenever they are challenged by reasonable, intelligent people (nothing new or controversial there) and the recitation of a computer isn’t going to save them.

      1. 6.2.1

        MM – by referencing “contracts” and “ownerships” you are essentially talking about business method patents. And the Supreme Court could not have been clearer in Bilski that there is no per se rule against business method patents either.

        1. 6.2.1.1

          by referencing “contracts” and “ownerships” you are essentially talking about business method patents.

          “Essentially”? What is that supposed to mean?

          I’m talking about certain kinds of patents that might be used in businesses.

          the Supreme Court could not have been clearer in Bilski that there is no per se rule against business method patents either.

          LOL. Did they define what they meant by a “business method”, Kip?

          Let everyone know.

    3. 6.3

      Kip, Benson->Alice all refer to the Rubber-Tip pencil case as an example of claiming an abstract idea.

      You might want to actually give that case a read. What surprises is that the case stands for the same proposition as does Morse — the claimed subject matter is so abstractly claimed as to be devoid of any details of the method or means for accomplishing the claimed result. Both of these cases were not ones where the subject matter was inherently non statutory, as with the math of Benson or Flook. Both cases had to do with breadth, with fundamental abstractness.

      So, it might be that although both math and such methods as occurred in Bilski or Alice might be directed to non statutory subject matter, the Supreme Court may believe that their fundamental problem was not that, but abstractness, as in the Morse/Rubber-Tip examples. If so, the lack of an “inventive” application is what separates them from patentability.

      But what does “that” mean. There, we look to Diehr as an example, where the math was applied to produce an improvement in a conventional process.

      1. 6.3.1

        Blame the Supremes Ned – they are the ones that took the Morse case for 101 instead of 112.

        Keep in mind as well that pre-1952, it was all a one big paragraph, and it was the Supremes struggling NOT to be denied their addictions that messed things up post 1952.

  7. 5

    LeftstinMayo provided a new structure for the § 101 inquiry

    There’s nothing “new” about the analytical framework in Mayo except perhaps for the specific words that the Court chose to use. In large part, that is because the application of basic logic and reason to patent claims doesn’t leave us with any other viable analytical framework for determining whether a claim is protecting ineligible subject matter. Why on earth is this so dificult for some people to understand???

    step one is to identify an abstract idea or law of nature underlying the claim, and step two asks whether the claim further recites an ‘inventive concept’ that transforms the abstract idea or law of nature into a patent-eligible application.

    Or you could the claim to the prior art and see what’s new in the claim. If what’s new is ineligible subject matter, then you’ve got a serious eligibility problem. That’s the same analysis. There is no other “analytical framework”, really, unless one’s goal is to avoid the issue entirely — and that is certainly a goal of many patentees who tried desperately to pretend that other “frameworks” worked better but invariably they refused to tell us how those other framworkers were supposed to work in practice. I saw throught that, the Supreme Court saw throught that, and pretty much now in 2015 most reasonable people know when that game is being played.

    Professor Leftsin appears to be struggling with a common stumbling block. Here’s the deal, folks: you don’t start with the dubious conclusion (“this information-processing method must surely be eligible because … important and valuable!”) and work backwards. You start with the non-controversial fundamentals — i.e., information and information processing logic are not eligible for patenting — and you see where that leads you.

    At the end of the day, you end up with a system that looks a lot like the system we started with: eligible process claims need to recite new physical transformations of matter and eligible manufacture claims need to define new compositions/apparati by their novel objective physical structures (and not their abstract “functionalities”).

    For those who prefer a different system for protecting software and information processing logic, I strongly suggest they begin to seriously design one that works, both in the examination and enforcement stage. We are light years from that now and there is no way that a Supreme Court or any combination of courts is going to succeed in cobbling a working system from adversarial pleadings. Pretending that information and information processing logic is “just like molecules” is a joke that works for clowns and pretty much nobody else.

    1. 5.1

      Leftstin: Mayo provided a new structure for the § 101 inquiry

      Adding: what was really “new” leading up to Bilski, Prometheus, and Alice was the widespread use of the patent system to protect information (e.g., correlations) and information-processing logic.

      Particularly with respect to the Prometheus v. Mayo decision, what does Professor Leftstin think would have happened if the Supreme Court had decided to allow applicants to protect “new” information with patents simply by (1) reciting some old eligible step or an old eligible machine and (2) reciting the “new” information? What sort of claims would applicants be filing? Who would be filing them? What sort of lawsuits would we be looking at? It’s serious question — one that should interest a person like the Professor who is ostensibly in the business of creating new information and identifying new correlations.

      And why is it that so many “serious” academics and practitioners appear so unwilling to discuss that nightmare? It’s not as if Prometheus was joking about its infringement theory, after all.

  8. 4

    Leftsin: Abstract ideas, after Bilski, Mayo, and Alice, are not characterized by intangibility or field of invention. They are characterized by ‘fundamentalness’ – the concern that patents on basic concepts will foreclose too much further development.

    This is utterly false. Unfortunately, Leftsin isn’t alone in his difficulty to understand the issues.

    A claim that protects ineligible subject matter — e.g., an abstraction — is ineligible regardless of the “fundamentalness” or “basic-ness” of the particular abstraction being protected. This was true before Bilski and Mayo and Alice, and it remains true afterwards.

    For example, Prometheus’s claim protected a “new correlation” (this is obvious and irrefutable once one acknowledges that all the other steps in the claim were in the public domain). Correlations aren’t eligible for patent protection. In even plainer Englisher: you can’t use the patent system to control who gets to use a correlation.

    It doesn’t matter whether Prometheus’s correlation was described using a mathematical algorithm or not because mathematical algorithms are not protectable by patents. Adding decimal points to the numbers recited in Prometheus’ claim so the recited algorithm is “more specific” and “less fundamental” changes nothing. The claim is just as ineligible as it was before. Why is that the case? Because the recited algorithm protected by the claim is still an algorithm and it’s still ineligible. Even if only one person in the world would be affected by the claim, the claim remains eligible — as it should be!

    In a nutshell, the issue of keeping “fundamental building blocks” (e.g., information, information-processing logic, and math) out of the patent system (i.e., keeping them from being monopolized through patents) is almost never going to be relevant to the determination of the eligibility of a particular claim. Rather, it’s a reminder of the concerns that underlie the restrictions on eligibility that, until recently, kept our patent system from going completely off the rails.

    1. 4.1

      …and talk about propaganda – here is Malcolm with his threadbare “pet” theory barely there as a front for the gen er al notion that you cannot patent mere aggregations (whether or not the claim elements are new or old thoughts, new or old non-thoughts).

      Off the rails indeed – just not how Malcolm “thinks.”

    2. 4.2

      Correction to the last sentence in the second-to-last paragraph of my comment (fixed here):

      Even if only one person in the world would be affected by the claim, the claim remains ineligible

  9. 3

    I don’t see how any reasoned discussion about abstractions and science/engineering can take place without discussing the ladders of abstraction.

        1. 3.1.2.1

          “Pa-tent-able”

          You use that word a lot. I donothinitmeans whatyouthinitmeans.

    1. 2.1

      To tie into DanH’s response, no Ned, the confusion is coming explicitly from the Supreme Court.

      1. 2.1.1

        I find it appalling anon that some are still thinking that information is patentable subject matter. Numbers are not eligible. Neither are methods of calculating numbers, no matter how specific. Numbers in, numbers out. Not patentable.

        Where in the world to people get these ideas that Benson and Flook are overruled? Alice simply clarified that adding a general purpose digital computer to a mathematical algorithm was not “enough.” Neither is a field of use.

        Add a specific machine, a specific manufacture, a specific composition or a specific process for making or using one of these to produce a new physical result, and then we begin to talk turkey. But, as we learned in Mayo, these additions cannot simply be of the data gathering type even though specific if they themselves are not inventive.

        In sum, when dealing with mixed claims, some eligible, some not, the invention must be in the eligible or the ineligible must be applied, as in Diehr, to produce an improvement in the eligible. Think, printed matter doctrine for the mode of analysis. That is Alice.

        1. 2.1.1.1

          re Bilski – the hedging risk claims – would these be a “specific process” to overcome Alice?

        2. 2.1.1.2

          Ned – The USPTO disagrees with you:

          19. A preamble generating method that generates a preamble constituting a preamble sequence positioned at a beginning of a transmit signal, comprising:
          a model determining step that determines on a preamble model, the preamble model being an arrangement of 0 and 1 data according to a predetermined criterion;
          a first calculating step that reorders elements…;
          a second calculating step that generates second computational data by applying an inverse fast Fourier transform …;
          a third calculating step that generates third computational data by applying a fast Fourier transform to the second computational data, and multiplying each element in the fast Fourier-transformed second computational data by an element of the preamble model at a same position as the each element; and
          a deciding step that applies an inverse fast Fourier transform to the third computational data, computes a peak-to-average power ratio of the inverse fast Fourier-transformed third computational data, and in a case of the peak-to-average power ratio matching a predetermined criterion, generates the third computational data as the preamble.

          Publication number US8938024 B1
          Publication type Grant
          Application number US 14/287,376
          Publication date Jan 20, 2015
          Filing date May 27, 2014
          Priority date Jul 9, 2013

          link to google.com

          1. 2.1.1.2.1

            I’m sorry Les, but that claim is not dealing with only numbers. It is dealing with signal transmission and specifically claimed power ratios.

            Think printed matter doctrine.

            1. 2.1.1.2.1.1

              I find it appalling that Ned repeats the same old drumbeats of his drive-by monologue that fails to acknowledge and integrate the valid counterpoints so often put on the table of discussion.

              He clearly does not understand the exceptions to the judicial doctrine of printed matter.

              He clearly does not understand that ALL items of composition must come from the in eligible electrons, protons, and neutrons.

              He does not understand that Alice eliminated the actual statutory category (as that issue was NOT before the Court, being stipulated by both parties as having been met).

              He clearly does not understand that BOTH Benson and Flook do not stand for his version (we do not so hold) and BOTH have been cabined by Diehr (9-0, see Bilski).

              He really does not understand that cryptography is patent eligible subject matter – and an excessively important one in today’s day and age.

              All he does is spin his same old propaganda, eyes tightly clenched shut, fingers deep in his ears.

            2. 2.1.1.2.1.2

              Ned –

              Signals are not numbers? OK, but signals are transient and are not patentable subject matter.

              A power ratio is not a number? What is it?

              1. 2.1.1.2.1.2.1

                The first calculating steps, the second calculating steps, and the third calculating steps constituted the algorithm or patent ineligible portion of the claim. The question is whether the claim recited an ordered combination of steps to apply the algorithm in a technological process / machine to achieve a certain end.

                “a deciding step that applies an inverse fast Fourier transform to the third computational data, computes a peak-to-average power ratio of the inverse fast Fourier-transformed third computational data, and in a case of the peak-to-average power ratio matching a predetermined criterion, generates the third computational data as the preamble.”

                This appears to be the application part of the claim. This application process involves mathematical analysis to determine which portion of the third computational data as the preamble by:

                (1) applies an inverse fast Fourier transform to the third computational data, this means converting the third computational data from frequency domain to time domain. This is a signal analysis step.

                (2) computes a peak-to-average power ratio of the inverse fast Fourier-transformed third computational data, this is a step of finding particular feature or attribute of the third computational data.

                (3) in a case of the peak-to-average power ratio matching a predetermined criterion, generates the third computational data as the preamble. Whatever this criterion is, so long as the third computational data has a peak to average power ratio meeting that criterion, choose or decide that third computational data as the preamble.

                While (1) and (2), in isolation by themselves, may be purely conventional or purely obvious, (1) and (2) constituted an ordered combination of steps with (3).

                In essence, the claim is to a process of applying an ordered combination of steps to analyze computed data, determine a specific attribute of the data to see if the attribute meets a criterion, and decide that the data is the preamble if its attribute meets the criterion.

                Even if (1)+(2)+(3) are well known in the art, it is now commonplace that an application of a….mathematical formula to a known….process may well be deserving of patent protection. Diamond v. Diehr, 450 U.S. 175, 187 (1981). In my opinion, this claim is patent eligible or at least this is how I would argue in favor of eligibility in front of the courts.

  10. 1

    You say:

    :In this framework, a specific information-processing algorithm, such as an algorithm for generating parity bits, does not qualify as an abstract idea.”

    I agree.

    However, the tone of your article gives one the impression that you believe: a specific information-processing algorithm, such as an algorithm for providing intermediate settlement does qualify as an abstract idea.

    I don’t understand why.

    1. 1.1

      the tone of your article gives one the impression that you believe: a specific information-processing algorithm, such as an algorithm for providing intermediate settlement does qualify as an abstract idea.
      I don’t understand why.

      Perhaps because the Supreme Court explicitly said so?

      1. 1.1.1

        What baring does or should that have on what the professor believes is correct or the patentable distinction the professor sees between a specific algorithm for generating parity bits and a specific algorithm for generating intermediate settlement?

        1. 1.1.1.2

          Because the specific algorithm for intermediate settlement wasn’t inventive, and therefore couldn’t have been an inventive concept? In Alice the “improvement” was in applying an old algorithm to a new environment. In this case the algorithm itself is an improvement. Had Alice come up with a new algorithm, we would have had a different case on our hands.

          1. 1.1.1.2.1

            Wasn’t inventive? What evidence on the record supports that conclusion and since when is inventiveness a factor in whether or not something is within one of the four categories of patentable subject matter?

            A mouse trap of wood and a spring and a slappy arm and an unstable latch, upon which one puts a bit of cheese is not inventive, but it IS patentable subject matter under 35 USC 101 in that it is an article of manufacture.

            1. 1.1.1.2.1.1

              Wasn’t inventive? What evidence on the record supports that conclusion

              The patentee admitted that intermediated settlement had been done since ancient times. If the patentee had actually invented intermediated settlement that would be an invention, and the field of use would be irrelevant. Because the patentee hadn’t invented intermediated settlement, the court had to resolve the CAFC’s question of whether the addition of a field of use (i.e. adding a computer) was enough.

              and since when is inventiveness a factor in whether or not something is within one of the four categories of patentable subject matter?

              Well, to be precise, judicial exceptions are not a question of whether something is within the four categories. There’s no doubt that a computer performing a method is within the four categories. Judicial exceptions prohibit the categories from being sufficient to confer patent eligibility in particular circumstances. But inventive concept, what Alice calls “sufficiently more” is step two of the analysis.

              This isn’t a hard concept. Alice is premised on intermediated settlement being conventional (what Alice called a fundamental economic practice). If intermediated settlement was not conventional, then there would be no question the claim was eligible. You’re taking a very prominent given in Alice and removing it in the instant case and trying to say both cases are the same.

              1. 1.1.1.2.1.1.1

                “This isn’t a hard concept. Alice is premised on intermediated settlement being conventional (what Alice called a fundamental economic practice). If intermediated settlement was not conventional, then there would be no question the claim was eligible. You’re taking a very prominent given in Alice and removing it in the instant case and trying to say both cases are the same.”

                Conventional stuff should be rejected under 102, not 101.

              2. 1.1.1.2.1.1.2

                RG: Alice is premised on intermediated settlement being conventional (what Alice called a fundamental economic practice). If intermediated settlement was not conventional, then there would be no question the claim was eligible.

                I beg to differ but I agree that it’s a moot point with respect to Alice.

                I could conceive of a new relationship between you and me, RG. In fact, I just did. It’s called a burzimble. Among other things, it obliges you to withdraw two cents from your savings account and buy a purple lollipop with it when (1) my checking account balance is a prime number above 1000 and (2) it’s a Tuesday with a full moon.

                Creating a burzimble isn’t eligible for patenting. “Using a computer” to automate the alerts or any other aspect of the process is also not eligible for patenting.

            2. 1.1.1.2.1.2

              A mouse trap of wood and a spring and a slappy arm and an unstable latch, upon which one puts a bit of cheese is not inventive, but it IS patentable subject matter under 35 USC 101 in that it is an article of manufacture.

              It may be inventive, but that’s only because you’ve limited it to a particular structure (“wood and spring and a slappy arm and an unstable latch upon which one puts a bit of cheese”).

              “A mouse trap comprising a machine that traps mice” is not inventive, despite the fact that under 101 it specifically names itself “a machine”.

              You’re looking at it as a question of whether it defines a statutory category or not, but the judicial exception test is a question of whether it defines a particular means or just an end goal.

              1. 1.1.1.2.1.2.1

                “A mouse trap comprising a machine that traps mice” is not inventive, despite the fact that under 101 it specifically names itself “a machine”

                But that’s because in the mechanical world “a machine that traps mice” is not descriptive enough that one of ordinary skill in the art would know how to make one.

                On the other hand, in the art of computer implemented devices, the level of skill in the art is such that one of ordinary skill in the art would understand that: a module for trapping a mouse would be made from a microprocessor, memory for holding instructions, a presence sensor an an actuator and instructions stored in the memory for reading information from the presence sensor and driving the actuator when the information from the sensor indicates a mouse is in a trapping zone.

                1. But that’s because in the mechanical world “a machine that traps mice” is not descriptive enough that one of ordinary skill in the art would know how to make one.

                  The claim doesn’t have to enable itself, the specification enables the claim. Assume that the specification includes all the language you just said – using wood and an unstable latch, etc.

                  But you are partially correct that “a machine that traps mice” would be unenabled, but that’s not because you’re not allowed to rely upon the specification, but because the scope of the disclosure (one particular mouse trap) does not enable the entirety of the scope (every mouse trap). This is why there is a 112(a) rejection, and part of the reason why there is a 101 rejection.

                  On the other hand, in the art of computer implemented devices, the level of skill in the art is such that…

                  But this is irrelevant. If my claim was “a machine that traps mice comprising a processor and a module that senses mice and traps them” that would be ineligible too.

                  The only question for 101 is whether you’re trying to claim a particular means or trying to claim a field (i.e. anything that causes the result).

                  Unless you claim the structure of the computer instructions (by claiming their algorithm) your claim is directed to the field rather than a particular means.

                2. “Unless you claim the structure of the computer instructions (by claiming their algorithm) your claim is directed to the field rather than a particular means.”

                  At what level of specificity must I specify the algorithms?

                  Must I recite the C++ code, or do have to recite every MOV A, B and NOP?

                  Or is the requirement less stringent? can I say fastener or must it be screw? Can I say filter or must I specify Gaussian filter. Is Gaussian filter sufficient or must I specify every pole and zero?

                  Can I recite establish a shadow account or must I recite every element of the account record?

                  Can I recite recalculate the cure time based on the current temperature or must I specify every addition and multiplication that goes into that calculation? Is that sufficient or must I recite the activities of the shift registers and adders of the micro-controller?

            3. 1.1.1.2.1.3

              Les, do you agree or disagree that when a claim includes both eligible subject matter and ineligible subject matter that invention must be in the eligible?

              E.g., player piano, music roll, specific music. Assume the first two elements are eligible, and the last ineligible. Do you agree or disagree that invention must be in the two eligible elements and not in the specific music?

              And for you, Jason, it makes no difference just how particular the music is. One cannot patent improved music. And, it makes no difference how much one festoons a claim to new music with old and generic methods and means of producing music. To suggest that such festooning could transform the claim to music into something eligible would be to elevate form over substance.

              What a fricken joke all this is. Since Benson, it has been clear that adding the conventional, but eligible, to the new, but ineligible, without more, is not transformative.

              1. 1.1.1.2.1.3.1

                Ned –

                Signals are not numbers? OK, but signals are transient and are not patentable subject matter.

                A power ratio is not a number? What is it?

              2. 1.1.1.2.1.3.2

                Les has already taken you down a discussion path on your pet “must be in the eligible” Ned (with natural materials).

                You.
                Ran.
                Away.

    2. 1.2

      “In this framework, a specific information-processing algorithm, such as an algorithm for generating parity bits, does not qualify as an abstract idea. I agree.”

      But the Supreme Court defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and the Supreme Court concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent. Diamond v. Diehr, 450 U.S. 175, 185-86 (1981).

      It does not matter whether an algorithm is a general information processing algorithm or a specific information algorithm, an algorithm is simply patent ineligible given the Supreme Court’s precedents.

      Although if the author rephrase the sentence to say that applying the algorithm in an ordered combination of steps to process information to achieve a particular technological end or in a technological machine, then such application of algorithm is patent eligible.

      1. 1.2.1

        Provided the ordered combination of steps are not purely conventional or purely obvious.

          1. 1.2.1.1.1

            (guess who also needs to understand that software is not math)

            Tell me Richard, can you copyright math?

            (And let’s not play the move-the-goalposts game and try to talk about math books, thanks)

            1. 1.2.1.1.1.1

              If software is math, then I am out of job. For self-interest sake, I would not argue software is math.

              But if a software process is solely about solving a math problem without applying the solution to that math problem to a new and useful end, then it is patent ineligible.

              Anyway, math does not appear to fit any of the copyright eligible subject matter under 17 USC 102.

          2. 1.2.1.1.2

            We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.

            Gottschalk v. Benson, 409 U.S. 63, 71 (1972).

            Though Benson held that algorithm is simply not patent eligible. Id. at 71-72.

            1. 1.2.1.1.2.1

              And, now Richard, we have further clarification in Alice. Simply using an old computer is not enough. The algorithm applied to the computer to improve it may, and probably is, eligible.

              Thus, a computer with a microcode for computing FFTs. Change the formula in the microcode to provide an improved FFT, and the computer is improved.

              1. 1.2.1.1.2.1.1

                “a computer with a microcode for computing FFTs. Change the formula in the microcode to provide an improved FFT, and the computer is improved”.

                Tell that to Flook and his new math formula to improve a computer for catalytic conversion.

                1. or, more to the point, Benson and his “microcode” for converting Binary Coded Decimals to straight Binary.

      2. 1.2.2

        But the Supreme Court defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and the Supreme Court concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent. Diamond v. Diehr, 450 U.S. 175, 185-86 (1981).

        That’s a misreading of Diehr. That paragraph is clearly stating that “such an algorithm” means “an algorithm like Benson’s”, i.e. an algorithm to convert base 10 into base 2, is a mathematical formula like a law of nature.

        I’m not familiar with the particulars of the cases above, but the conclusion that “an algorithm is simply patent ineligible” is clearly wrong for at least the reason that Diehr itself used an algorithm and was still eligible.

        1. 1.2.2.1

          I believe there is a significant possibility that this Court would overrule Diehr if a similar fact pattern came up again.

        2. 1.2.2.2

          “That’s a misreading of Diehr. That paragraph is clearly stating that “such an algorithm” means “an algorithm like Benson’s””.

          First, that portion of Diehr refers to both the algorithms in Benson and in Flook. Second, I seriously doubt that the Supreme Court would buy this line of argument since the Supreme Court characterized Diehr Claim as “an application of…mathematical formula to a known structure or process may well be deserving of patent protection.” Diehr, Id. at 187.

          1. 1.2.2.2.1

            First, that portion of Diehr refers to both the algorithms in Benson and in Flook.

            Right, both Benson and Flook are merely equations expressing an inherent relationship. The relationship between base 10 and base 2 preexists the patentee. The relationship between an alarm number and an updated alarm number preexists.

            Second, I seriously doubt that the Supreme Court would buy this line of argument since the Supreme Court characterized Diehr Claim as “an application of…mathematical formula to a known structure or process may well be deserving of patent protection.”

            That statement is just a statement that there was “something more” under Alice step two.

            Diehr makes no statement at all about when a relationship is unknown or not inherently existing in nature. Perhaps an example: Suppose you have three baseball players

            1- .300ba, 10hrs, no fielding errors
            2- .350ba, 20hrs, 5 errors
            3- .275ba, 30hrs, 2 errors

            One could write an equation that ranks the value of the players in any particular order. An algorithm weighted toward batting average would put 2 at the top, while one weighted toward less errors puts 1 at the top.

            While those are algorithms in the sense that they are equations, they are not the “algorithms” that the court was talking about in Benson/Flook, because they aren’t describing a pre-existing relationship. They are not “solving a particular type of mathematical problem” for at least the reason that there is no one solution to who constitutes the best baseball player. The particular weighing of the factors constitutes a useful disclosure, in much the same manner that the inclusion of certain stats on a baseball card constitutes an expression for copyright purposes.

            1. 1.2.2.2.1.1

              Inherency…?

              Oy vey.

              Leading source of something other than patent law…

            2. 1.2.2.2.1.2

              It is time to acknowledge that they cannot be reconciled, and they need not be.

              A bold statement – in more ways than one (and smacks of the Judiciary not only writing the [statutory] law, but changing the way they write the [statutory] law).

              It also smacks of those who refuse to see the inherent discord and inability for the decisions to be naturally cohesive.

              Serious problems at the threshold.

Comments are closed.