Judge Newman: Functional Claim at Point of Novelty => Abstract Idea

by Dennis Crouch

Internet Patents Corp. v. Active Networks (Fed. Cir. 2015)

In an opinion by Judge Newman, the Federal Circuit has affirmed the lower court dismissal of IPC’s infringement lawsuit — holding that the claims of U.S. Patent No 7,707,505 are invalid for lacking patent eligible subject matter under 35 U.S.C. 101 as interpreted by Alice Corp.

The claims are directed to a method of providing a multi-pane (tab) user interface with icons as follows:

1. A method of providing an intelligent user interface to an online application comprising the steps of:

furnishing a plurality of icons on a web page displayed to a user of a web browser, wherein each of said icons is a hyperlink to a dynamically generated online application form set, and wherein said web browser comprises Back and Forward navigation functionalities;

displaying said dynamically generated online application form set in response to the activation of said hyperlink, wherein said dynamically generated online application form set comprises a state determined by at least one user input; and

maintaining said state upon the activation of another of said icons, wherein said maintaining allows use of said Back and Forward navigation functionalities without loss of said state.

Walking through the two-step analysis of Alice Corp., Judge Newman first identified the gist of the invention or “the basic character of the subject matter.”   In reading the patent document, the court found that it described the “most important aspect” of the invention is that it “maintains data state across all [browser] panes.”  In other words, the basic function of the invention is “the idea of retaining information in the navigation of online forms.”  Without further analysis, Judge Newman identified this basic function as an unpatentable abstract idea and immediately moved to Alice/Mayo step-2.

In Step 2, the Supreme Court instructs us to seek-out an “inventive concept” within the claims that goes beyond the unpatentable abstract idea and that is more than “well-understood, routine, conventional activities previously known.”  In reviewing the claim, Judge Newman could find nothing beyond conventional browser elements and the claimed end-result of “maintaining [the] state.”  However, that final and admittedly critical element of the invention was not limited to any particular method or mechanism and thus remained abstract.

The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. The court concluded that the claim is directed to the idea itself—the abstract idea of avoiding loss of data. IPC’s proposed interpretation of “maintaining state” describes the effect or result dissociated from any method by which maintaining the state is accomplished upon the activation of an icon. Thus we affirm that claim 1 is not directed to patent-eligible subject matter.

The court also invalidated parallel system and computer claims — noting that “the statement that the method is performed by computer does not satisfy the test of ‘inventive concept.'”  The court also held that dependent claim limitations requiring differing responses to ‘quasistatic’ and ‘dynamically generated’ content was insufficient to overcome the Section 101 hurdle because they merely represent “the siting the ineligible concept in a particular technological environment.”

= = = = =

Judges Moore and Reyna joined Judge Newman on the panel.

= = = = =

Major case here that again appears to coincide with the ongoing battles over functional claim limitations.  Here, Judge Newman focuses on the reality that the admittedly fundamental aspect of the invention was claimed in functional form without providing any limitations as to its particular mechanism of function.  Result: unpatentable as an abstract idea.

= = = = =

Mike Borella covers the case at Patent Docs. (“The general rule that many of us follow post-Alice is to draft rich, detailed, technical specifications, and undoubtedly we will double-down on that approach in light of this decision.”)

 

 

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

380 thoughts on “Judge Newman: Functional Claim at Point of Novelty => Abstract Idea

  1. A reply to David Stein’s wonderful post well below at 4.1.1.1.1.2.1 is worth repeating here at top:

    I have long pointed out that the “mere aggregation” aspect required of looking at claims as a whole soundly defeats both illicit attempts at portraying patent law as something that is not by Ned (and his all claims must be Jepson format) and Malcolm (all claims must only be “objective physical structure”) fallacies.

    What is even more chilling as to the lack of inte11ectual honesty is Ned’s rather “Oops, I did it again” providing of a link that does not support his own advocacy tactics on these boards.

    This is the O’Malley reference against the “back-door” approach of using the judiciary for changing law that rightfully belongs to the legislative branch.

    And this is not the first time that Ned has done this type of “Oops.”

    In the days following the Bilski case he introduced a reference that warned of the danger of misapplying dicta as somehow being controlling change in law. And yet, that is exactly his motif with his “versions” of past case law (including your well-fashioned critique of his misapplications concerning the exceptions to the judicial doctrine of printed matter).

    I would point out that a better example of an aggregate claim should be used rather than your glue, Cheerios and glitter, given that at least it might be argued that the glue can provide a technical basis for integrating the elements. Feel free to use my previously supplied aggregate claim of a blue umbrella, a bicycle, and a goldfish in a round fish tank (and note that the Malcolm twist of [new-thought] need not even be present for the mere aggregate doctrine to apply).

    1. >> Malcolm (all claims must only be “objective physical structure”) fallacies.

      You notice just like all propagandist that Malcolm has never answered what “objective physical structure” is recited by the term screw or a molecule that does not claim every atom of the molecule.

      The answer is the same as a claim in information processing: the term screw refers to a set of physical structures–a set of solutions just like information processing.

      I could never convey how disgusting I find it that intellectually dishonest arguments are permitted to be pushed day in and day out on this blog.

      Now, MM, tell us, “screw” what “objective physical structure” does that refer to? Pick a molecule where not all the atoms are recited in the claim. What objective physical structure does that refer to?

      (You see the game is to pick some difference between chemistry and EE/CS/mechanical and then try to use it to remove eligibility from EE/CS/mechanical claims. And, then this propaganda goes before Google purchased judges who never even took a science class.) Thanks Obama.

      1. And so,

        a claim term —>>> set of solutions,

        special purpose chip is-all agree–structure,

        special purpose chip is equivalent to GPC + software.

        This is no different than any other art field. The information processing arts have more “set of solutions”.

        1. …still waiting for that strict Malcolm “objective physical structure” claim (optional) methodology can be applied to anything but a single exacting picture claim (let alone a range with as-fuzzy-as-desired edges).

          What are the chances that a(n inte11ectually honest) dialogue will be engaged by Malcolm defending his views?

        2. …and I am also still waiting for Count Dobu to share his MathS philosophy with the realization that Lambda Calculus does make things Doctrine of Equivlance equivalent.

          1. Anon-ileo,

            Lambda calculus provides means to express the functions being performed by software. If the special-purpose chip is a processor that executes programmed software instructions, then Doctrine of Equivalents might be invokable if the functions have too much overlap with the general-purpose computer solution.

            In the general case, the special-purpose chip is selected over GPC+software when there are advantages in doing so. Advantages like avoiding the overhead in executing software, and limiting the hardware to only the minimum that yields the desired results. In the general case, the special-purpose chip might not be amenable to lambda-calculus analysis, and will NOT be performing its functions in “substantially the same way” as a GPC+software system, and therefore would not be considered DoE “equivalent”.

            1. You’ve assumed your conclusion in a circular way and voided your own Belieb system in Lamda Calculus.

              Count Dobu Consistency FAIL

              (Either that or you really don’t know Lamda Calculus and just used the term, pretending to be “sophisticated” or something.

              Either way, you failed.

              1. Good grief, Anon, you’re like a canine with a bare skeletal member.

                Short form of the Church-Turing thesis: any calculable function is computable, and vice-versa. If a function can be calculated (by a human doing arithmetic with a pencil and paper, or by reduction via lambda analysis, etc.), then the function can be computed by a Turing machine (which is an inexact model of actual computers, but a usable estimation for analysis). This is the hardware/software equivalence discussed in computer science books. Saying that a function can be performed by software or hardware is absolutely not saying the function will be done in the same way in both approaches.

                Most software designers are going to be relatively clumsy when trying to design hardware, because it requires entirely different skill sets. The converse probably wouldn’t hold true (in my opinion), because software is more forgiving, adaptable, and easy.

                You guys need to quit throwing around this “hardware/software equivalence” buzzword like it means something under Doctrine of Equivalents. Let it sink in this time: “. . . in substantially the same way.

                1. Count Doobie,

                  >>You guys need to quit throwing around this “hardware/software equivalence”

                  The way to think about it is enablement. Phillips and LizardTech are the proper cases to read.

                  I am a real patent attorney. I write real patent applications for real products. Software and hardware are equivalent. The way to look at it is to look at the claim and ask what solutions are enabled by spec to a person of ordinary skill in the art.

                  I hear all the time from Ph.D.’s who design real products that hardware and software are equivalent. That we have to make sure to write the claims so someone can’t design around the claims by pushing something into or out of the hardware/software.

                  That is reality. That is the way it actually works and that is the scientific reality.

                  By the way, Count Doobie, I can describe a chair with a set of equations. Does that mean it shouldn’t be eligible for patentability?

                2. Just as I thought, Count Dobu – you mouth the term, but come up short when it comes time to embrace how wide the MathS philosophy really is.

                  It is you that needs to let sink in the difference between “exactly the same as” and “substantially the same.”

                  You are off by a full magnitude.

                3. Nit Witter,

                  When you’re finished describing your chair, you still have nothing to sit on.

                  When you’re finished authoring your software, you have a program. Even if it’s never entered into a computer or compiled, it’s still software.

                  How can you not see the difference?

                4. Anon,

                  If you honestly believe that a software solution to a problem will necessarily be performing its functions in substantially the same way as a hardware solution, then it’s you who does not know what they’re talking about.

                5. Poor Dobu,

                  Not only does he not get that software as a manufacture – as he himself describes it here – just does not have to be added to the machine o still be a manufacture (and thus he FAILS his comparison to the chair), he also still is not fully embracing (perhaps because he just does not grasp) his FAIL at the MathS philosophy of Lamda Calculus.

                  In a battle on terrain that he does not know, he is without weapons.

                  Try reading (and understanding) Sun Tzu, then realize that you are just way out of your league.

                6. Poor Anon.

                  Not only does he not get that software is not a manufacture – as noted in Allvoice Development v. Microsoft, and as should be obvious in that software is authored – he also is still not fully embracing the requirements for invoking the Doctrine of Equivalents.

                  His world is crumbling around him, and all he can do is lash out at the messenger. Sad.

                7. As discussed previously, Allvoice is easily distinguishable and does not carry the day for you.

                  The notion of “author changes nothing as to manufactures. Manufactures include those things by the “hand of man,” and as I provided my simple set theory to Ned, easily encompasses software that has a utilitarian nature.

                  Maybe you need to brush up on the legal meaning of manufacture, my friend.

                  (And how does that copyright for your “software in your mind” thing going? You kind of left the last conversation in a hurry.

                  As to “lashing out,” what are you, a wuss? If you think my setting you straight is “lashing out,” you really have never been in a legal debate. Try less of this trite and meaningless projection, and more of actually understanding the terrain about you (either law or philosophy or both).

                8. Then, since it’s so easy, please do distinguish Allvoice:
                  “Allvoice attempts to overcome this hurdle now by arguing that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to a manufacture, one of the four categories of patentable inventions. But, as this Court has recognized, instructions, data, or information alone, absent a tangible medium, is not a manufacture.” [emphasis added]

                  I don’t recall the copyright discussion you’re trying to make something out of, but if it helps, I’m aware that registering a copyright requires a recording in a fixed medium. So what? It’s not like the medium has to be machine-readable.

                  As to “lashing out,” I was just trying to help you realize that your infantile taunts are not helping to advance your position. I find them to be an annoying distraction , but it’s not like your reputation on this blog can get any lower (or that I expect you to care).

                9. Asked and answered my dear Count. Look at the archives for that decision (and the thread or two prior), and you will see that I have already distinguished the case.

                  Like I said, “As discussed previously

                  As for material corporeality, that is self evident as to distinguishing the thought of software from software.

                  As to your notion of my reputation, well, seeing as your notions are so off and half-baked, I consider your negative view of “my reputation” as a good thing – so thanks!

                10. I guess it wasn’t so easy to distinguish the case, since you’re running away instead of answering the question.

                  Your comments on the Allvoice article were just more “thought of software” comments desperately trying to deny software can exist outside of computers, and further proof of your misunderstanding of Church-Turing equivalence. (And, of course, a generous helping of childish taunts and self-aggrandizement. Don’t ever change, Anon.)

                11. You continue to confuse yourself along several fronts my good Count.

                  It is not running away to point out that I have already answered a question.

                  It is you that continues to fail to grasp the extent of the philosophy of MathS and your precious Lamda Calculus.

                  The taunts remain deserved – as well as does whatever you view as “self-aggrandizement.”

                  Have you attempted to read Sun Tzu yet? Arm yourself son.

  2. I want to share something funny and sad. It appears below in the #19 thread and is contributed by “scientist”. It illuminates how uncertain is the grasp that people, intelligent and tech-savvy, but not patent lawyers have, of patent law. This ignorance and prejudice is a real problem for the patent system. Scientist wrote:

    June 25, 2015 at 9:19 am

    “I am precise. May be I should have said 5 to 15 years. You see this controversy came up 15 years back and the government assured the scientists and investors that they are in fact patentable. But after it is done, it no longer. This is like changing the speed limit retroactively and sending you a ticket.

    “Beaten-down biotechnology shares surged Wednesday after President Clinton reassured the industry that its commercial gene discoveries could be patented.”

    link to articles.latimes.com”

    See, it isn’t SCOTUS who has the last word on what is patentable. No, it’s Bill Clinton, the man ín whom “scientist”, and all canny investors, put trust with the last word on what the statute has to say on patentability.

    Give Bill credit though. He didn’t say “discoveries, as such” did he. He was careful to limit himself to “commercial” subject matter.

    1. Is it as funny and as sad that professed and actual attorneys do not recognize the distinction between statutory law and common law?

      “Scientist” at least can be given a little slack for wanting to be able to depend on the word of the President (any president, even Bush or Obama – and for that matter, we** are still waiting or word from Obama on his lack of objectivity in the “Tr011” report).

      But contrast that with those who should know better, who even post links to articles by Judges that warn against the crusade to change law through the judiciary. How much more sad is that?

      1. This illustrates the worst of judicial activism. Here, in this example, we have the President saying that the government believes that it is important for promoting the useful arts. The judicial has turned around and said they factually find it is not important for promoting the useful arts.

        Because, let’s not forget that at the heart of the judicial exceptions is the factual findings by the SCOTUS of what does and does not promote the useful arts.

        I continue to be just shocked and appalled that even attorneys on here can’t grasp this–the foundation of the judicial exceptions is a factual finding by the SCOTUS, which is federal common law.

        1. Let me (again) point out – with the hope that critical thinking may be applied in our continuing dialogue – the words used by the Court for its injection of its implicit (or explicit) words: “may.”

          As in, “Gee, we are deciding to take action, because we feel that otherwise something we don’t like may happen.”

          Hello lack of current case or controversy.

          Hello mere conjectural forward looking advisory opinion.

          Hello, oops, statutory law writing for patent law was expressly designated solely to the legislative branch.

          Hello Miss O’Malley, what was that you said about pushing advocacy into the wrong branches of the government…?

          Should “real” lawyers be concerned with these items? How about “real” teachers of “real” law? Should not those entrusted with the education of those entering the law field not be doubly concerned with these matters?

          Or should we – the Royal we – just not care about the means used to get to whatever ends we designate as “just” and “right”…?

          And no, these are not rhetorical questions.

          1. It is a good point anon. But, you know there is the old saying not fighting the ticker.

            I suspect it is too late for the U.S. The SCOTUS has turned into the legislative branch and enacts amendments to our Constitution.

            I suspect the only way to win this war is with rhetoric in the popular media just like the anti-patent crowd. The SCOTUS justices are a fairly ignorant base lot. They appear to be common and economically and scientifically illiterate.

            The big corps push their propaganda and the SCOTUS buys it and then legislates.

            That is what is going on. Lemley knows that and is constantly pushing his messages in the popular media because he knows our base SCOTUS justices are about the equivalent of the beer drinking Fox news watcher.

              1. What I know about her is that she is completely ignorant of science, but has such a high opinion of herself that she can’t she it in her.

                Her whole distinction between a “real world” and “the computer world” illustrates an understanding of science about at the level of a 3rd grader.

              1. One is struck that the tradition of determining that someone had become a god continued after the fall of the empire. We now call these beatified souls, Saints.

    2. MaxDrie

      The article states “Beaten-down biotechnology shares surged Wednesday after President Clinton reassured the industry that its commercial gene discoveries could be patented.”

      Yes it does say gene DISCOVERIES.

      This whole process of we will tell you what is patentable for a new technology 15 years after the investments were made is retroactive. If SCOTUS wanted, they should have taken a case and informed us of what is patentable upfront at least 10 years back. You are telling me to wait another 15 years for investments today in new technologies to figure out what is patentable.

      1. Scientist what I want to get across to you is that chem/bio is different from engineering. In engineering you have always had inventions but in chem/bio science you have always had scientific discoveries. Technology is the application of science. Technology is the useful arts. The patent system is to promote progress in the useful arts. Discoveries in science lead to patentable inventions that are “commercial discoveries” but the scientific discovery, in and of itself, as such, is not fit to be patented, and nobody in the patent business ever thought it could. Even with a claim to a molecule per se, you still have to demonstrate utility, in the application as filed.

        Those drafting patents cannot rely on blandishments from Bill Clinton, about what the law will be, 20 years on from when they draft. Instead, they have to rely on their experience of what is patentable, which has always been much the same. After all, governments generally do want to promote the progress. They will get for your precious investors a scope of protection commensurate with the contribution to the art, which promotes progress and doesn’t pre-empt an entire industry before even it has started. Sophisticated investors are level-headed enough, and long-thinking enough, to cope with all this.

        No investor can see into the future and any pendulum swings it contains. It is inevitable that we don’t know what the future will bring. But neither do the competitors.

        That said, I deplore swings of the patent law pendulum, probably even more than you do. Do you think these swings occur also in Europe and Asia? I don’t.

        1. Technology is the application of science. Technology is the useful arts.

          Not quite – the Useful Arts are broader.

          Also, talk business methods and Demming and the application of scientific methods…

          Malcolm made that same Oops in the past and I nailed him on it, watching him run away like a sissy because he could not address the plain reality of what I offered for discussion.

          1. Can we agree on something: that in the USA patentability is confined to the “useful arts” (and that GATT-TRIPS confines it to “all fields of technology”).

            Given that the EPO is pumping out large numbers of “software” and “business method” patents, your obsession with which is “wider” is sterile and pointless. I think.

            1. Your parenthetical reveals your error MaxDrei.

              The GATT-TRIPS is a subset – not a limiting confinement.

              Your thinking of sterile and pointless is simply wrong, because the difference is very much the point of this all.

              Whether or not the EPO is “pumping out large numbers of “software” and “business method” patents ” is an ends-only-and-not-look-at-the-means style argument. It is an unthinking approach which is the opposite of what I am trying to get you to do.

              This should not be as difficult as you want to make it, as simple set theory suffices (and as you appear to grasp at link to patentlyo.com

              Not sure why you seem so reticent to agree with me here given what you stated there…

  3. Pfizer discovered an “unexpected” correlation between (1) administering a known compound to mammals and (2) treatment of erectile dysfunction. Based on this discovery of a natural phenomenon, they wrote a method claim that does the most obvious thing one could think of – administer the known compound if a mammal has erectile dysfunction.

    Doesn’t seem patent eligible to me. Also they wrote some super duper dependent claims like “wherein said treatment is veterinary treatment.”

    1. Just to be clear – even if the compound was new (which, based on scientist’s comment, I believe it was not in this case), the correlation between administering the compound and the ensuing results still looks like a natural phenomenon to me.

      1. Genghis, old drug, new use.

        1. Passes 101 because use is claimed.
        2. Passes 102/103 because use unexpected.

        I think you raised a strawman argument here.

        1. 1. Passes 101 because use is claimed.

          Ned, that doesn’t explain why my application of the Mayo/Alice two-part test is incorrect.

          1. Genghis, I think it does.

            No application of the information was claimed. There was no possibility then that the claim was eligible.

            1. “No application of the information was claimed. There was no possibility then that the claim was eligible.”

              I asked you before to distinguish a drug such as in Viagra and an Isolated DNA. Both are chemicals. If they are information, both are information because they can be represented on a piece of paper.

              You said, as I understood, the isolated DNA does not have medical purpose. But both are given by doctors/hospitals. Both are covered by health insurance.

  4. Two leading lights in our national discourse react to the Supreme Court’s Prometheus v. Mayo decision:

    “I will not acquiesce to an imperial court any more than our Founders acquiesced to an imperial British monarch. We must resist and reject judicial tyranny, not retreat.”

    “The Court is one of three co-equal branches of government and, just as they have in cases from Dred Scott to Plessy, the Court has an imperfect track record. The stakes are too high and the issue too important to simply cede the will of the people to … unaccountable justices.”

    Sure sounds familiar, don’t it? Preacher Huckabee and Little Ricky Santorum. The voice of the people!

    LOL

    1. Wow, third world status we have arrived. The cheering mob when the emperors rule in their favor. Each time the SCOTUS makes one of their judicial jumps we get more and more unstable as a country. The game becomes who can get their judges in the SCOTUS.

      I am heavily in favor for same sex marriage, but I would prefer that we amended the Constitution so that people don’t see the fight as being in judiciary, but a political fight in legislative and executive branches.

      (Just think about gun control. We need to amend the Constitution and not get judges to make laws.)

  5. Over at IPKat there is a thread on a recent case involving a debate on the meaning of the edges of a range in a claim term.

    Principles there are applicable to our discussion here (especially in light of MaxDrie’s comment about picture claims).

    Someone tell me – in the strictest “Malcolm sense” of “objective physical structure” how one claim, one invention (in a “mature” art no less) can NOT ONLY have a range of actual “objective physical structures” but also can have the edges of that range be as “fuzzy” as the patentee desires by the choice of language of those claims?

    Is not any “real” invention supposed to be covered by one explicit-and-exacting claim?

    How can this happen? What single actual “objective physical structure” is the real PON of the invention?

    1. To my mind, this is just another game of the anti-patent big corp. This objective physical structure seems to work for chemistry, but does it really? No. In chemistry this is really a functional definition. Moreover, you note that they often will only claim part of a molecule with “doesn’t matter” or a functional description of the other part of the molecule.

      So, what is going on here? The propagandists–who are quite remarkable–have found a property of the smelly arts that is different than the mechanical and EE/CS arts and are now asserting that all the art fields must make claims like they do. Just ridiculous nonsense. It never ends.

      The problem is that Obama has appointed ignorant judicial activist to the Fed. Cir. so that they can’t sort these things out. We are now a third world country. Thanks Obama.

      (In other news, some Europeans are wondering aloud why in the world would the U.S. the greatest innovation engine every build in the history of the world self destruct? The answer of course is that we are re-forming as a Google nation. One nation under Google.)

      1. And note anon, where MM’s arguments fall apart is in the specification of molecules where not every bond is specified. They are really saying, well the molecule has these bongs and these atoms and we don’t know about the rest because it would be too complicated to specify all the rest of the possible atoms and bonds that might be there.

        So, again, MM is even misrepresenting his own art field (supposedly). What a surprise.

        1. I think a claim: 1) I am known molecule that treat X disease
          is perfectly valid and infact pretty common and traditional. Here too the novelty is the function “treating X disease”. See patent 6469012 (Viagra)

          Claim 1: A method of treating erectile dysfunction in a male animal, comprising administering to a male animal in need of such treatment an effective amount of a compound of formula (I): ##STR3##

          The ##STR### does not have to be new.

          They want us to believe this is not a change of law, but it is a drastic change of law by the judiciary (what happened to stare decisis?)

            1. It would depend on the size of the human being treated and the degree of their dysfunction but I believe it’s betweeen 25 and 100 mg.

              Welcome to objective physical reality.

              What’s the objective physical structure of “advertising content” ?

              Please keep up the great work, “anon.” Soon your arguments about your big box of protons are going to be adopted by courts everywhere. It’s going to happen! Sure it will. And everything will be reversed and State Street Bank will rule again and Kevin Noonan will have a party.

              Hoorary!

              Meanwhile, back on planet earth ….

              1. >>What’s the objective physical structure of “advertising content” ?

                This is the kind of comment that comes straight out of every bad intent of humanity. The fact is that it is difficult for those not skilled in the art of EE/CS to understand the structure. You playing into this ignorance rather than trying to educate people is abhorrent.

                Does your brain have structure? We are building electronic brains. Your comments are anti-science and anti-rational discourse.

                1. MM: “It would depend on the size of the human being treated and the degree of their dysfunction but I believe it’s betweeen 25 and 100 mg.”

                  In the above IPC decision, the patent was invalid because the specifics were not in the claim. But the Viagra claim does not have amounts specified in the claims and hence it is ineligible.

                  Further, we all know that initial parts of the research, the “effective amounts” in human beings may well be unknown because it may have been done in a monkey or a rat. An antibiotic may be tested in a petri dish. Now you dont even have it in specification let alone in claims. If you use the same logic as the decision in Internet patents, most patents in pharmaceucals will be invalid as ineligible because the specifics are not in the claims. In fact by the time you get those specifics, it will be too late to file in the first to file laws. To answer Max’s queston, YES the sky has fallen on the heads if this is the logic we are going to go by.

                2. If you use the same logic as the decision in Internet patents, most patents in pharmaceucals will be invalid as ineligible because the specifics are not in the claims.

                  Keep telliing yourself that! It’s really convincing to people who love junky Internet patents — and those people are super serious and important! After all, they told us so!

                3. Flashback to a short while back when scientist’s li’l buddy “anon” was telling everyone that “nobody” claims chemical compositions at the atomic structural level. Amusing stuff, correctable after a ten second search.

                  YES the sky has fallen

                  Maybe you should climb up on a mountain with a video camera and immolate yourself. Mindshare, baby!

                4. You are rather glossing over the point here Malcolm – come again on the “structure” of “depending” (and the 3-d claiming was the exception to the rule, but nice spin attempt anyway)

                5. Further, we all know… in human beings

                  It is worse than that.

                  Far, far worse.

                  One of the current requirements of patent law is possession – at the time of filing.

                  Look at the drop out rate of FDA studies just getting to the point of seeing IF the human factor is even there.

                  It can be readily seen that this “mature” art fails to meet the Patent legal requirement because they have not even come close to meeting the FDA requirement prior to filing.

                  Oops.

                6. Scientist, you should realize that MM is likely a person that is paid to blog for the anti-patent movement funded by the large international corporations.

                  Don’t take anything he says as anything more than propaganda. He is paid to write it and writes right from a script he gets emailed every week.

                7. >scientist, Night has no evidence that MM is a paid blogger. Night’s specialty is slander.

                  I don’t think so Ned. Slander? That is kind of an interesting statement. That would mean that it is slander to say someone that is unidentified is a paid blogger. That pretty much means that paid bloggers should not be permitted on any blog.

                  Evidence: for 11 years I watched MM spend 40+ hours a week blogging on this blog and other blogs. For 11 years I have watched as his arguments mirror those of the anti-patent movement.

                  I realize Ned that you two are both anti-patent, but the evidence is overwhelming that he is a paid blogger.

                8. And, the reality Ned is that you should grow up. Your anti-patent statements regarding information processing have formed the basis of the judicial activism. Benson is the most destructive ruling that has ever happened to patents not just because of it being scientifically wrong, but because it encouraged judicial activism.

                  Why don’t you man up to reality.

        2. NWPA, we’ve always asserted that all we want from you guys is the novel portion of the new structure. Just like in the claims that you’re talking about now. You can feel free to leave out large sections of not novel stuff from your claims.

          1. The novel portion….

            6, you have not been paying attention to the beatdowns Ned has been receiving on the plain fact that Congress did not mandate Jepson claims as the only permissible form of drafting claims.

              1. Yes MM you are quite correct that the judiciary doesn’t care what the Constitution says or what the laws are.

                Funny how that floats people’s boat as long as the new singular branch does what they want, but then if they amend the Constitution on their, people aren’t so happy.

                You see intellectual honest decent people would try to get us back into a position of a functioning democracy.

                But, I know you are in a gleeful mood right now. It is part of the propaganda script. You must pretend to win even if you are losing.

                Your behavior is so clearly governed by a set of rules from your masters…

    2. Over at IPKat there is a thread …

      anon, where is the discussion? I went to ipkitten dot blogspot dot com (this is the first time I’ve been at the site) and glanced through the first few posts, and I didn’t see the discussion. BTW, I like the “look and feel” of patentlyo much more than IPKat.

  6. The problem? “[Insert someone else’s invention here] tends to fall apart over time.”

    The solution? “Maintain it.”

    Can I haz “tens of billions of dollars” worth of patents now?

    Seems like a few people think that’s the way it should work. Let’s try to guess what those people do for a living.

      1. Problem: “prevent unauthorized access to [insert name of “new” computer-implemented data source]”

        Solution: “require authorization prior to access”

        Can I haz “ten of billions of dollars” of patents now? No? How about if I include a bunch of nonse terms, some shiny acronyms and use lengthy, wordy, opaque sentences when concise and clear ones will do just fine? Thanks in advance.

        1. Funny that – you have a real problem with those “concise and clear” ones when the discussion turns to legal (and factual) principles at the heart of protecting certain types of innovation.

    1. Seems like more people think like:

      Gee isn’t that cool. Can I copy that ’cause I don’t believe in no stinkin’ patent system. I hearz that all them patents are no good anyway.

      (Or like our persistent infringer: I’m not going to bother looking into patents before I make my system nor am I going to make sure that my system is publicly disclosed to protect myself. Ignorance is the way forward.)

  7. “Functional at the point of novelty” is an aphorism that applies when one is claiming new structure, manufactures or compositions in terms of what they do rather than what they are.

    But, if there is novelty in the new operation of a machine, that operation might well be claimed as method where the details of the structure become unimportant. Hierarchy made that point to a degree in his post below.

    In a method, the novel step must describe an act and not simply a result that is obtained. Claiming a result in the sole novel step was the identified problem in this case — and the reason for this was because the claim itself contained no description of anything the inventor actually did to achieve that result.

    This case IS very much like Rubber-Tip Pencil where the claimed rubber tip included nothing in terms of structure, nothing at all. Whether one could figure out some structure to allow the rubber tip to attach to the tip of a pencil was not the issue. Without specifying any structure, the claim covered every possible structure, every one. That is claiming a result.

    As I pointed out below, even Judge Rich, in Application of Tarczy-Hornoch, 397 F.2d 856, 867 (C.C.P.A. 1968), agreed that one could not claim a result. He would have placed the legal problem in 112(a) or (b). But the Supreme Court consistently, it seems, has placed the legal problem in 101.

      1. anon, I don’t know what you mean by VMG.

        I think the problem is identifying when one is claiming a result. Certainly, the claim must not have any of the novel structures or steps that the inventor came up with, that is, if he came up with any at all.

    1. I notice too that (once again) you try to ploy the fallacy that software and the execution of software are “the same thing.”

      They are not.

      Just as the thought of software is not the same thing as software.

      Software is a manufacture and a machine component.

      Let’s have at least that level of inte11ectual honesty for our conversation.

      1. It’s time to adjust your script, Anon.

        AllVoice Developments v. Microsoft (Fed. Cir. 2015)

        “… Allvoice conceded that these claims were limited to software instructions without any hardware limitations. In the absence of such limitations, the claims as written fail to
        recite a manufacture …”

    2. Where are we now?

      Claiming a new machine with functional statements (e.g., software) will have 112(f) applied.

      Claiming the machine using a method risks finding the claim invalid as claiming a result unless details of how (the new structure or algorithm) are included in the claim.

      Recall that Corning v. Burden (1854)https://scholar.google.com/scholar_case?case=8861629264871248011&q=corning+v.+burden&hl=en&as_sdt=2006 limited a process claim to the machine disclosed otherwise it was invalid.

      “It is true that the patentee, after describing his machine, has set forth his claim in rather ambiguous and equivocal terms, which might be construed to mean either a process or machine. … [T]o construe his claim as for the function, effect, or result of his machine, would certainly endanger, if not destroy, its validity. … He cannot describe a machine which will perform a certain function, and then claim the function itself, and all other machines that may be invented to perform the same function.”

      Westinghouse link to scholar.google.com provided the rule that is now 112(f) to construe functionally defined machines to cover the corresponding structure.

      Judge Rich overruled Corning in Tarzcy-Hornock. link to scholar.google.com The effect of this was to allow machines to be claimed as processes.

      And now we have Internet Patents that again says that if the claim is not limited to the corresponding structure, the claim is invalid.

      Wow, the irony.

      1. I have previously taught you how “function of the machine” came about and yet you insist on taking that doctrine out of context and perverting it.

        Shockers.

        (btw, still waiting for you explanation as to Congress NOT mandating the Jepson format in order to actually write into law your PON canard)

  8. Thank you, Supreme Court, for giving judges the ability to decimate ownership rights based on something other than a legal rule that provides predictability.

    The legal analysis – if it can be called that – is in two sentences of the decision: “claim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation.”

    This “analysis” involves a misdirection. The “how” in this invention isn’t “how to maintain state” (any artisan knows how to write code to capture and store information, that’s why it isn’t spelled out in the claims). The “how” in this case: how to keep from having to refill certain types of programmatic forms when navigating those forms with a browser. One can pick any part of any claim and say: “but the claim doesn’t say how to do that”.

    As to the whole 101 trend, why isn’t anyone calling out the 101 evolution for what it really is — realpolitik. The wave of software patents issued in the 2000’s included a lot of junk patents that anyone in this field for the last 10 years has seen and dealt with. A lot of those patents need to be invalidated, but substantive invalidation based on 102/103 is really expensive and sometimes doesn’t get what intuitively seems to be the right outcome. Thus, Alice and its arbitrary outcomes to save the day.

    In a such-is-life way, it all makes sense. When it comes down to it, people don’t care how extensive the loss of patent rights. At any cost, the nefarious patent trolls must be kept from their contributionless and profitable extortions. When the legal system shifts wealth from producers to undeserving non-producers, Americans get upset.

    True, something needed to be done. But the current solution (really, 101 law now is a form of fast-track 103 invalidation) is so open-ended it creates significant problems with predictability for tens of billions of dollars worth of patents. The appellate judiciary, from top to bottom, has let the public down on this issue. The legal system can do all kinds of crazy things. Business and industry can deal with crazy. But not crazy and unpredictable … new problems arise.

    1. H, I would add a broader quote:

      “As the district court observed, claim 1 contains
      no restriction on how the result is accomplished.
      The mechanism for maintaining the state is not described,
      although this is stated to be the essential innovation. The
      court concluded that the claim is directed to the idea
      itself—the abstract idea of avoiding loss of data. IPC’s
      proposed interpretation of “maintaining state” describes
      the effect or result dissociated from any method by which
      maintaining the state is accomplished upon the activation
      of an icon. Thus we affirm that claim 1 is not directed to
      patent-eligible subject matter.”

      Now, even the legend himself, Judge Rich, knew that one could not claim a result. “The notion of undue breadth in the claims may be consistent with the proscription of claims directed merely to effects or results. See O’Reilly v. Morse, supra.” Application of Tarczy-Hornoch, 397 F.2d 856, 867 (C.C.P.A. 1968). link to scholar.google.com

      The real question is this: how does one determine that one is claiming a result?

      I invite you to review the discussion between Max and myself regarding the Rubber-Tip Pencil case that was cited by Benson and by Alice.

      1. Yes it is a wonder case for the judicial activist.

        I say it again: consider a handpump. Just an unpatentable idea?

        Endless nonsense to try and get a result. Sickening.

    2. Hierarachy: The “how” in this case: how to keep from having to refill certain types of programmatic forms when navigating those forms with a browser.

      And the awesome technical “solution” proposed by the applicant? “Don’t empty the forms.”

      Every time you think you’ve seen the lowest form of innovation, some computer-implementer type manages to lower the bar.

      Has everyone heard about the troll with the patent on a photo contest “on the Internet”? Good stuff.

      the current solution (really, 101 law now is a form of fast-track 103 invalidation) is so open-ended it creates significant problems with predictability for tens of billions of dollars worth of patents

      Wipe all those patents out and the patent system will start to actually promote progress in the useful arts. Nobody will notice those patents are gone except for some patent attorneys and some “investers” who will just find another grift.

        1. Anon, after struggling for (and winning) the right to use information and concepts that had been illegitimately locked away under private monopolies, you better believe we are going to use such alleged “innovations” in any legal manner we see fit.

      1. As usual, in your zeal to slatherously tell the world your opinion on ownership rights for software, you to miss the point. The point is not one of merit; I’m not concerned with whether this invention was worthy of a patent. I’m concerned with the legal procedure. It’s not the outcome that matters, it’s how you get there. A fundamental goal of the legal system is predictability. An attorney cannot reliably predict outcomes using the current body of 101 law. That unpredictability is bad for everyone.

        For what it matters, my view as an attorney and computer scientist is that this invention was obvious at the time of invention. But giving judges carte blanche to strike down patents based on their own view of what is or is not obvious is bad jurisprudence. We already know that everything new is built from old elements. A process that let’s judges “distill the invention” is inherently subjective. Since everything new is built only from elements that are old, objectively separating a claim into its “new” and “old” parts is impossible.

  9. Guess who said this:

    “The court’s decision reflects the philosophy that judges should endure whatever interpretive distortions it takes in order to correct a supposed flaw in the statutory machinery” “It is up to Congress to design its laws with care,” he added, “and it is up to the people to hold them to account if they fail to carry out that responsibility.”

    I sure wish he felt that way about 35 USC 101.

    1. It’s called “nose of wax” for a reason.

      Those bending it into the shape they want do not see themselves as doing “anything wrong.”

      Even Stevens warned against the nose of wax as he meant to mash that very same nose.

      The inability to see the problem with “whatever” means to get to the desired ends is the root of this evi1. People delude themselves into thinking that they are achieving “good,” and thus it is not important what is trampled on the way there.

  10. It seems (from 7.2 et seq below) that when it comes to “structure” and rubber tips for pencils, it is me and anon against Ned and the rest of you, Pauline Newman and the justices of SCOTUS. Illustrious company.

    I wonder then, if I can provoke further comment, to tease out more thoughts on what constitutes “structure”.

    Suppose rubber erasers are known and pencils are known but not eraser tips on pencils. Suppose that pencils with such an eraser tip are new and inventive, OK?

    DanH points out that such eraser tips used to be sold, in their own right, as such, as articles of commerce. They had a short blind bore to receive the blunt end of the pencil. So I would very much like to cover such articles, in my ideal clear and concise claim.

    I Claim: A rubber eraser head for a lead pencil.

    If I understand the respective positions of DanH and Ned, they are contradictory, in that Dan sees the claim as indeed being directed to an eraser “head” whereas Ned sees it as being directed more broadly, to nothing more than a notoriously old eraser and the mere “abstract idea” of a use for that old eraser.

    Both Dan and Ned see my claim as invalid, but (if I understand it right) for different reasons. Ned thinks it lacks eligibility and Dan thinks it lacks definiteness. Ned writes: “….nothing more than the idea of attaching a piece of rubber to the tip of pencil without the inclusion of any means or methods for doing so. Essentially this was a mere idea that was claimed, a result”.

    But for my part, I’m thinking there’s nothing wrong with my claim. It has a scope commensurate with my contribution to the art, it is clear, enabled, new and not obvious. If I invent an article of clothing for tough but short-trousered Bavarian males, namely a knitted sleeve for the shin and calf alone, can I have a claim for it alone, so I can go after the manufacturers of Bavarian tracht, or must I include the wearer’s clothed lower leg in the claim and confine my injunctions to visitors to the Munich Oktoberfest?

    In the context of claim drafting, which is the process of abstracting from an inventor’s disclosure the essence of the “inventive concept”, the notion of “abstract as ineligible” is misguided, egregiously problematic. So too, in my opinion, is the misguided notion of “structure”.

    1. This is just the same old nonsense of mixing up 101 with 102, 103, and 112.

      There is nothing inherently wrong with claiming an eraser and pencil despite the SCOTUS. There is more than the “idea” as there is structure in attaching the two. The question should be is it obvious?

      What is a pump by the way? I could claim a hand pump (assume it has never been done before) that looks much like the pencil and eraser. There is no new structure but the combination.

      We have sunk so low in this country.

      1. And really think about a hand pump. There are no new structures in attaching valves to a tube or a another tube inside one a tube.

        There is only the combination of elements. This endless game of mixing up 101 with 102, 103, and 112 is nothing but tool of the judicial activist. At heart of the evi1 is Richard Stern who wrote Benson. Thanks Richard for all these years of misery.

        1. Night,

          You are aware of the Stern-Heller connection, are you not…?

          There was a case that Ned, with Richard’s help, botched badly and some of his recent ruminations concerning parts of 112 being somehow not for the Office are being recycled, even after those odd thoughts were rejected by the court.

          Ned had exhibited a degree of “I must be right no matter what” that is simply unreasonable. No wonder then the venom he displays towards Judge Rich, who was right when it came to the law that Congress enacted.

          1. You are aware of the Stern-Heller connection, are you not…?

            anon, Heller refers to Ned. But who is Stern in Stern-Heller? And who is Richard? Judge Rich I presume refers to Giles Rich who was at the Fed. Cir.

            There was a case that Ned, with Richard’s help, botched badly

            What case is this?

            1. Genghis, let me help.

              Richard Stern is a friend of mine.

              He wrote the government briefs in Benson and Flook.

              He was involved in the government’s antitrust suit in the ’70s, including the one against IBM.

              He, mainly, and I were the attorneys who lost In re Morris, 127 F.3d 1048 (Fed. Cir. 1997), a somewhat cited case.

              link to scholar.google.com

              Richard told me way back to read the Supreme Court cases. I did.

                1. In the circle of real patent attorneys, Benson is known as the source of all evi1 in patent law.

    2. Max, you actually did not claim the combination of a rubber head and pencil.

      “Head,” in the claim, is not well known structure, or is it? If it is well known structure, then the claim reads on well known rubber heads.

      Head therefore must be a location of the rubber eraser.

      So far, you have not modified the structure of the rubber eraser at all. The claim still reads on all rubber erasers.

      The bottom line, you still have not claimed your invention, because I presume your spec showed some structure that distinguished your rubber head from other heads and other erasers. You then have claim the rubber eraser in a manner that structurally distinguishes it from other erasers.

      And the question is not whether someone can figure out how to modify the structure. That diverts attention from the issue, does it not?

      You cannot get a patent old erasers just because you discovered a new use for them. The idea may be new, but erasers themselves are old until you claim some new structure.

      101 takes a look at the big picture, but I suspect that the other statutory provision that might apply would be 112(b) that the claim did not particularly point out your invention. See, Perkins Glue for another good example of this phenomenon.

      Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 48 S. Ct. 474, 72 L. Ed. 868 (1928). link to scholar.google.com

      1. Ned – beware the conflation of what you attempt. Even the Supreme Court (at least in word) rejected such conflation.

      2. You got me there Ned. True, the head I had in mind was not the head of the eraser but the head of the pencil. But, as far as I know, “head” is standard pencil terminology. But now you put me to strict proof, perhaps back at the time when pencils were new, it wasn’t so standard.

        link to pencils.sundrymemes.com

        I must say though, I was hoping that the claim would be read as a whole.

        I’ll now turn to the Glue case, so thanks for that Link.

      3. I see. Perkins found out how to make, with starch, a glue that could compete with animal glue and then (claim 28) shamelessly claimed all the scope he coveted, namely, a starch glue “having substantially the properties of animal glue”.

        Well Ned, that is a no-brainer, for any authority examining for patentability, even in 1928.

        The difference between that and the pencil case is that, if I put in front of the nose of the judge an embodiment I accuse of being “a rubber eraser head for a lead pencil” the judge will have no difficulty deciding whether it is or it isn’t. But if I put in front of him a pot of starch glue, can he decide whether it has “substantially the properties of animal glue”? No way. What “properties”? What “animal”? Bad bad bad. Clear as crystal, in anybody’s book of law. Even in 1928.

        One wonders how such claims ever get to issue. Even in 1928..

        1. Max, but you will agree that some alteration and structure is required for a piece of rubber to be considered to be a “head.” I think you are further agree that the claim covers whatever structure that is, regardless of whether that structure is completely novel, and inventive over any structure described in the specification. The claim is simply not limited to form. It may even cover a piece of rubber of any dimension and size that may be attached by any means to the tip of pencil. The claim is completely unlimited. It covers a result, without any description in the claim of anything in terms of structure or method.

          This is why the courts of the United States consider this to be a kind of claim to a principal in the abstract A claim to the idea itself as opposed to anything at all in terms of structure or method to implement the idea.

          1. Don’t agree with you Ned. Old erasers are so big that when you attach one of them to a pencil end you can no longer use the pencil while those small enough are unusable in the absence of the pencil as handle..

            1. MD: Old erasers are so big that when you attach one of them to a pencil end you can no longer use the pencil

              Depends on the size of the pencil and the “old eraser” in question. Both objects have always varied in size and they still do.

              those small enough are unusable in the absence of the pencil as handle.

              Tell it to the tens of thousands of people whose erasers fell off their pencils in the middle of an exam. It takes more work but a detached pencil eraser is certainly not “unusable.”

              1. “Usable” is not at all the point.

                No one would mistake a stand alone eraser – of ANY size – with an eraser for the end of a pencil.

                A little common sense folks…

              2. Children like to play bat and ball games, of which there are many. If you don’t happen to have the right bat, then one from the other games will serve. At a pinch, you can play baseball with a criket bat or vice versa. So “A bat for playing cricket” is wider than “A cricket bat”.

                Here, pencils and erasers are staple items of commerce, and “head” is staple pencil terminology. It was a genuine invention to conceive of putting the eraser on the head of the pencil. It took a new shape of eraser to do it. It is right that the inventor should have a scope of protection commensurate with the contribution to the art.

                I maintain that Rubber Tip Pencil is a poor fact base to serve as a vehicle for an important principle of patent law.

                Now, to MM. Old erasers had to be big enough to hold between the fingers and deploy easily so that erasure was quick and effective. Pencils have to be balanced or else you cannot write fast and clearly with them. So any eraser mounted to the tip has necessarily to be small, so small that it will not work effectively, stand-alone, or else the pencil is so head-heavy you cannot use it comfortably, for its intended purpose.

                Now of course one can postulate “tens of thousands” of people frantically trying to rub out their work with tiny rubber tips that have somehow detached themselves from the pencil head. But sorry, for me the argument somehow falls just a bit short of credible.

                1. Afterthought: above, I said the shape was special. You need something like a cylindrical surface (male or female) of a diameter fitting to that of a pencil shaft. All old erasers lacked such a surface.

                2. If shape and size were important, why not claim that?

                  It was the lack of anything more than just the idea that was the problem.

                  Did you ever read the Nielson case from the House of Lords widely discussed in Le Roy v. Tatham, O’Reilly v. Morse and actually cited and relied on in Mayo?

                  “cf. Neilson v. Harford, Webster’s Patent Cases 295, 371 (1841) (English case discussing same). ”

                  This is the very same issue as in Rubber-Tip Pencil. The point you make was the same point made by both dissents in Tatham and in Morse. The English House of Lords came down the same way as did the Supreme Court in the US — in fact, the US Supreme Court followed the English case.

                3. Another afterthought. 100% definiteness is an assymptotic value. No claim can ever be 100% clear. It is a totem, a shiboleth, to insist on 100% clarity. The fair way to do definitenessis to ask is the claim definite enough to be fit for purpose.

                  Here, the patent owner is not going to be asking the court to enjoin purveyors of conventional stand-alone erasers, or conventional pencils, but only eraser heads for pencils, a quite different thing. The claim is fit for purpose, and clear enough for all but those bent on lawyering for its own sake.

                  Anyway, all you fidgetty pencil-chewing children out there, those are my thoughts on the matter.

                4. Thanks Ned. The Neilson case. The one about blowing pre-heated air into a furnace? Yeah, I once read that, a long time ago. I remember thinking it was for me very much on the borderline.

                  You know, I find these very old cases somewhat unsatisfying. But then, I’m working from the EPC jurisprudence that started only in 1978. Mind you, it of course stands on the shoulders of these universal principles of patent law. There is never any dispute about the principles as such, just how to apply them fairly, to any one particular set of facts.

                5. Yet another afterthought.

                  Ned’s constant urging is that a claim to “the idea itself” is bad. But in my book, every claim is directed to an inventive “concept” (as opposed to a concrete embodiment) and it’s hard to say when a patentable concept turns into an unpatentable idea. It has to do with how “abstract” is the subject matter claimed, I suppose. I have the feeling that, at every level of specificity short of a picture claim for the illustrated embodiment, some level of abstraction is involved so some level of “the idea, the underlying inventiveconcept, itself”.

                  I say again, these notions of “idea” “abstract” “structure” are as long (or short) as a piece of string and rubbish for deciding which claims are OK and which are bad.

                6. short of a picture claim

                  The false idea that claims must be of Jepson style meets the false idea of Malcolm’s “objective physical terms.”

                  It should be painfully obvious to anyone “willing to learn” that since each of these claim formats are only options, that the law (as Ned and as Malcolm would have it) just is not the same law as that written by Congress.

                  But try to stop the runaway monologuing Internet style shout downs of either… (or better yet, have either engage in an inte11ectually honest dialogue that takes the logic to its inevitable conclusions…)

              3. Depends on the size of the pencil and the “old eraser” in question. Both objects have always varied in size and they still do.

                Variances in size of “mating” items has long been addressed (by me) with the non-software case of In re Orthokinetics.

                This then is nothing but dissembling from Malcolm.

                Par for the course.

          2. What does it mean to be considered “a head,” Ned?

            When I say “kitchen table,” what “objective physical structure” do you see? Will it match the “objective physical structure” that I see? That MaxDrie sees? That DanH sees?

            Once you absorb that, then absorb the fact that Congress did not in fact demand a Jepson style claim format as would be necessary to accommodate your “version” of law.

            Try, try, try, to connect the dots of this logic.

    3. Max

      All you have to do is disregard INTELLECT in intellectual property. If there is something left, then it is patentable.

      Look at Mayo, Myriad…etc Are they not clear, however great, wonderful, useful, brilliant….. Your pencil eraser is none of it, so it is patentable.

      1. What can I read into your pseudonym, I wonder. Are you real? I have always asserted that the difference between patent law in the USA and that at the EPO is that at the EPO scientists can easily go along with the logic of it but, within the jurisdiction of the law of the USA, they struggle to do so, and that that is a problem for the credibility and acceptance of, and public support for, patent law inside the USA.

        But perhaps you will now tell me that the EPC is double so bonkers as in the USA?

        1. Max,

          All I can say is if you have asked five years back what are the great inventions in next 20 years, people would have selected, personal medicine, genetic research and diagnostics, computer software.

          Now, all three are patent ineligible. So, I surmise that as long as you don’t do great brilliant, next generation research, you are o.k.

          1. See, round here you have to be a bit more precise in what you write.

            You write that 5 years ago the greatest “invention” was “genetic research”. You lament that you cannot have a patent for inventing “genetic research”? Rest assured, the USPTO is handing out loads of patents for inventions in the field of genetic research and always will. Isn’t that enough for you?

            If you are a scientist, why are you not on the side of those who resist handing out patents for abstract ideas, natural phenomena and laws of nature. Do you not want to be free, to use them in your scientific endeavours, when you try to make patentable inventions.

                1. I am precise. May be I should have said 5 to 15 years. You see this controversy came up 15 years back and the government assured the scientists and investors that they are in fact patentable. But after it is done, it no longer. This is like changing the speed limit retroactively and sending you a ticket.

                  “Beaten-down biotechnology shares surged Wednesday after President Clinton reassured the industry that its commercial gene discoveries could be patented.”

                  link to articles.latimes.com

                2. Scientist the sky has not fallen. Be careful to factor in the tendency of all patent attorneys to grab as much for their clients as the examining authority will allow, and their screams of childish anger when they don’t get all they demand. This notion that 100% of what the PTO has granted is inviolate is peculiar to the USA and not fit for the 21st century. Why? Because it is responsible for the corrective swings of the pendulum which you so much decry. You don’t see these swings in other jurisdictions.

                  Rest assured, that no US judge or Examiner is going to wipe out any industry of national importance to the USA. This is all about preserving a climate where rival innovators can vie with each other to advance scientific and technology frontiers. Giving one party too much is what hinders the progress rather than promotes it.

                3. “Scientist the sky has not fallen”

                  Not if you are the investor who put hard earned money (like some people did after the “reassurance”)

                4. the investor who put hard earned money

                  Into what exactly?

                  A database of genetic information that somebody “at the government” told him/her was protectable … with a patent?

                  And this investor never consulted any other lawyer or did some of his/her own legal research? Never took a breath and thought for two seconds about what it might mean to compete with other genetic database companies who would certainly have their own patents claiming overlapping information? Never thought about what would happen if other types of “valuable” information were protectable with patents? Never thought about why it took 150 years for people to realize that you could use patents to claim information? Never asked any of these obvious questions?

                5. This is all about preserving a climate where rival innovators can vie with each other to advance scientific and technology frontiers.

                  That has to be one of the most Pollyanna head-in-the-sand ignoring-the-attacks-on-the-patent-system that I have ever seen.

                  Tell me MaxDrei, who coined the term “Patent Tr011” and why.

                  Hint: it was Big Corp and it was not them looking out “for the little guy” or for the consumers. For all of Malcolm’s obsession with the “money is evi1 aspects” he sure gets a giant blind spot towards the chicanery for pure profit that Big Corp engages in.

                  It kind of goes with his duplicity in wanting to outlaw the reward of innovation to the modern t001 most accessible by the little guy.

          2. MM: “Never thought about why it took 150 years for people to realize that you could use patents to claim information?”

            First of all “Isolated gene” is not information. It is a chemical. Isolated insulin has been patentable over 100 years. Isolated Vitamin has been patentable for a long time (ask supreme court about stare decisis). It is a spectacular change of law that you don’t even know it is.

            1. scientist — I thought the claims long held patentable were to purified whatever — a product not found in nature, and which was, in that form, effective for particular purpose.

              1. Ned: Isolated Vitamin B12 would do exactly same as what it would do in the body originally.

                Isolated insulin would do exactly what it would do originally in the body – it would lower glucose levels.

                The cases held the purified version (Vitamin B12) was not available before, so is purified DNA.

                The cases held the purified versions were of tremendous medicinal value, so is purified DNA (Diagnosing and treating breast cancer). Why else do you think people want to infringe these patents and purify DNA – because they are useless?

                Check Merck vs. Olin Mathieson, 1958.

                1. They know scientist. The big international corps have decided they don’t want a patent system anymore and they are getting their way.

                2. Well, mr. scientis,t there was no argument of which I am aware that purified DNA was good for any medicinal purpose. Also, I debate whether the raw forms of Vitamin B12 were effective, although they might have has an effect. There IS a difference. The raw forms were modified by man into something that was effective.

                3. I give up Ned. You win.

                  “there was no argument of which I am aware that purified DNA was good for any medicinal purpose”

                  I agree with you there is no medicinal utility in preventing breast cancer that almost always leads to death. You win, I loose. Thanks for the discussion.

                4. Obviously, scientist, you get it. No one is seriously questioning the cases that allowed patenting of purified drugs because they have a direct use in that form.

                  Useful in information sense is a whole different kettle of fish. Thus if usefulness extended to information, we could patent the improved price.

                  There is a slippery slope with your argument, scientist.

                5. I agree with you there is no medicinal utility in preventing breast cancer that almost always leads to death.

                  You know of a way to use purified DNA to prevent breast cancer that almost always leads to death? You should consider patenting that.

                6. “You know of a way to use purified DNA to prevent breast cancer that almost always leads to death? You should consider patenting that.”

                  I cann’t patent it. It is already known.

                  link to cancer.org

                  “If you have a strong family history of breast cancer, you can talk to your doctor about genetic testing for mutations in genes that increase the risk of breast cancer, such as the BRCA genes. If you have such as mutation or come from a family with a mutation but haven’t been tested, you could consider surgery to lower your risk of cancer. “

    4. context of claim drafting, which is the process of abstracting

      Talk to DanH about his (very absent) rebuttal sources on the ladders of abstraction.

    5. Max –

      Your claim doesn’t recite any component parts. It names an item and indicates its intended use but provides no indication at all as to how its made.

      It assumes I know what an eraser head is. If I do, then how can it be new?

      If I only learned what an eraser head is from reading your specification, then for the claim to be valid, you would have had to recite “means for” to clearly invoke 112, sixth paragraph.

      That said, I see many claims like this from European parent applications, mostly from France. These are a nightmare to deal with here.

      1. What fun to be had, in this “Eraser-tipped pencil”case. Les, perhaps you can help where Ned can’t. Or won’t. See my 19.3.2. “Head” is standard terminology in the pencil arts, isn’t it?

        Perhaps the French assume a mind willing to understand whereas, in the USA, it is assumed (not just at the USPTO) that the PHOSITA, the deemed reader of the patent, has the mind of a lawyer intent on misunderstanding. Do you want to find meaning, or are you more interested in finding the claim to be indefinite? Do you perhaps work for the USPTO, where BRI is so ingrained? You know, with any claim, if you perversely set out to do it, you can always come up with an embodiment that is within the scope but doesn’t work. But, in sensible jurisdictions, that isn’t enough to tank the claim.

        You see many cases from France. I’m impressed. Deeply impressed. You see, I don’t see that many coming out of France.

          1. My claim does not assume that you know what an eraser head is. It assumes that you know what an eraser is, a pencil, and where the head is located, on the body of a pencil. Now which of those propositions is, for you, such a big problem that it prevents you deriving meaning from my claim? Which part of it don’t you, or can’t you, understand?

            Much is made of the role of the jury, in patent litigation in the USA. I put it to you that lawyers can (and do, because they are only “doing their job”) argue as indefinite a claim that is quite clear enough for even the dimmest jury member.

            I suppose we have a different outlook over here in Europe, where two professions stand side by side, the attorney at law (who is not a patent attorney) and the patent attorney (who is not an attorney at law). For us in Europe, lawyerly quibbling is not so highly worshipped. Cases are won and lost on the substance of the thing.

            1. Max –

              You claimed:

              I Claim: A rubber eraser head for a lead pencil.

              Then you said:

              “My claim does not assume that you know what an eraser head is. It assumes that you know what an eraser is, a pencil, and where the head is located, on the body of a pencil. Now which of those propositions is, for you, such a big problem that it prevents you deriving meaning from my claim? Which part of it don’t you, or can’t you, understand?”

              The part for me (or more correctly the USPTO), that is such a big problem that it prevents you deriving meaning from my claim is:

              What makes the eraser and “eraser head” and what makes it “for” a lead pencil (by the way, over here the business component of a pencil is graphite, not lead).

              The erasers I’m aware of are geez.. whats the word for a rectangular cube? rhombuse? Whats the difference between that and what you are claiming? How would I know your invention from the prior art if I saw one on the street? Does yours have velcro? ty-wraps? Post-it glue, a hose clamp?

              1. The head of steam, a valley, of a public authority, a lettuce or a pencil. Can you tell one head from another. I would think you can.

                If I remember, Ned it was who first used the expression “lead pencil”. Yes, I do know they have a graphite core, not a metal one.

                Claim clarity is needed, when the claim is asserted. If and when my claim is asserted, it will be against a party that is infringing rather than one selling conventional erasers. And when the claim is asserted, the decider will be able to decide, on the evidence, whether the accuser eraser is an eraser head for a graphite pencil. And that’s the only thing that matters.

                Now, it seems, you don’t yourself have an insuperable problem, but the USPTO would do. Are you copping out and finding yourself having to draw authority from the USPTO?Well, since when was the USPTO the last word? The USPTO is not always right. Sometimes it makes ill-founded objections. We are debating an invention with merit. My claim is good, and not a vexatious attempt to re-monopolise the state of the art. Your objections are those of a lawyer looking to argue for argument’s sake.

                1. How can a searcher search and and examiner examine if you provide no identifying characteristics for the invention beyond the prior art?

                  I can take a known eraser and declare it “for a lead pencil” ( what else is it for?).

                  If eraser head is new, you have to recite the characteristics that identify an eraser head. What is the finger print of an eraser head?

                  You think your position is reasonable because your example is based on something that is known.

                  What if instead the claim was for an eraser belly for a pencil?

                  The searcher can’t simply search for eraser bellies in the literature, as someone else might have called the same thing by a different name.

                2. Les,

                  You argue a fallacy.

                  Step one: read and understand the application as a whole.

                  Your argument boils down to a submission void of being comprehensible.

                  That is clearly different than what MaxDrie is discussing.

                3. Les this is getting silly. Since when was the ultimate arbiter of patentability the degree of compatibility with a Patent Office keyword search. This is not an issue at the EPO, which has more sophisticated ways to search.

                4. If one must read the specification to understand what is claimed anon, you are converting Max’s claim into a 112, six claim.

                  If the claims is to an eraser belly for a pencil or an eraser knee cap for a pencil, then what is claimed?

                5. Absolutely not Les – ALL claims are read in light of the specification and my listed step one applies universally.

                  That’s basic stuff, Les.

                6. Limitations from the specification are not read into the claims

                  Great.
                  Awesome even.

                  And aside from the strawman you want to inject, you should note that I have never said otherwise.

                  You do know the difference between reading a limitation into a claim and having an extant claim term read in light of the specification, right?

                  It’s kind of important for this discussion. Let me know when you catch up.

                7. Before you attempt to change questions in mid-stream, let’s resolve our differences directly Les.

                  Let me know when you catch up to the point I am actually making here.

                8. Shrug –

                  Everyone cans see you tap dancing. It matters not to me if you don’t answer my questions. The were rhetorical.

                  In the U.S. you shouldn’t expect to get a patent for an eraser head for a pencil any more than you should expect to get a patent of a computer for a toaster, without some recitation defining the claimed item beyond naming the device and an intended installing location.

                  If you file or have filed such claims, please post the serial numbers, I would love to follow the prosecution for its entertainment value.

                9. You forgot the brackets around the “shrug” in your Malcolm-like move of accusing me of that which you are doing.

                  CLEARLY I am not the one avoiding the discussion point on the table.

                  Let’s try again:

                  You do know the difference between reading a limitation into a claim and having an extant claim term read in light of the specification, right?

                  It’s a basic concept Les.

  11. I’ve read this opinion and I don’t see “functional claim at point of novelty => Abstract idea.” In fact, I am sure this opinion does NOT support the title of the blog post.

    So, let’s say I write “functional claim at point of novelty => Abstract idea” in a brief in federal court. What should I cite from this opinion?

    1. That’s because it’s not there. These words are being put into Judge Newman’s mouth.

      Over the past several months, this blog had steadily transitioned from neutral reporting of cases and data to overt policy advocacy. It is definitely not a good precedent, and I am very close to taking the bookmark out of my list. After all, this place is no longer the only regular source of IP news and info.

      1. David, I just read your blog post on functional claiming. Lemley is of course a very well known and respected law professor. I’m planning to read his paper on software patents and functional claiming. Do you know of a rebuttal by someone of equivalent stature that is in the works or that is already published? I just want to get the view from the other side.

        Some of the articles I’ve seen on this blog are of questionable quality. Didn’t a recent article argue that trillions of dollars had been destroyed by the new 101 regime? Trillions were also wiped away from stock portfolios in 2001 and then again in 2008. That’s just an accounting trick. The software is still there. It’s not like all storage media everywhere was wiped clean. I think there are better ways (i.e., compared to arguing that trillions of dollars would be wiped away from balance sheets) to make a case for protecting investment in software creation.

        1. I checked the article. It wasn’t “the new 101 regime” – it was the AIA. But that’s besides the point – it was a poor argument.

        2. Lemley is of course a very well known and respected law professor. I’m planning to read his paper on software patents and functional claiming. Do you know of a rebuttal by someone of equivalent stature that is in the works or that is already published?

          I have been sitting on a particular project for about eight months – it requires a significant block of time, more than I’ve been able to spare – but, for now, all I can say is: yes.

        3. Genghis,

          The fact is that law professors often advocate for judicial activism without admitting it as such. Remember that law journal articles are not peer reviewed and their content is no more reliable than a blog post. They typically are no more than an advocacy piece for legislation through the judiciary.

          Take any law journal article with a grain of salt. For example, we hear that software has no structure from Lemley. Just go to Google scholar and type in software structure. There are many articles in peer reviewed journals about the structure of software–not one about software not having structure. The list is endless with Lemley. It just happens that Lemley’s agenda fits with big corp’s desire to cripple our patent system. He’s no genius, but a tool of the SCOTUS and big corp.

          1. Night,

            While we’re playing games with the word “structure”, here’s some hit counts from arbitrary “structure” searches in Google Scholar:

            social structure: 3.8M hits
            capital structure: 3.2M
            language structure: 2.6M
            organizational structure: 2.6M
            music structure: 2.5M
            algebraic structure: 1.8M

            See any “structures” there that correspond to the term’s use in patent law?

            1. Count Doobie,

              Do any of those have to do with engineering? You know like building information processing machines? Are any of those in peer reviewed scientific journals?

              Count Doobie, you can take the claims and build a special purpose chip, right? You said you could. Does that chip not have structure?

              algebraic structure: 1.8M —- This one may have some overlap with software structure.

              1. Night,

                I suspect you could probably find a better blog for discussing “doobies” (but I claim no expertise on that topic). Whatever gets you through the day, man. I don’t judge.

                Yes, ASIC’s have structure. And it’s even tangible structure. I’m glad we’ve finally moved beyond the merely abstract.

                1. >Yes, ASIC’s have structure.

                  So, you think that a special purpose chip is different than a GPC + software? I think they are equivalent.

                2. Only functionally equivalent, not “Doctrine of Equivalents” equivalent, as they do not perform their functions in substantially the same manner.

      2. David,

        I will have to strongly disagree with you and your statement of “Over the past several months, this blog had steadily transitioned from neutral reporting… to overt policy advocacy

        Your timing is short a few years.

    1. I wonder how his old patents are holding up.

      CropX’s founder and CEO Isaac Bentwich is a serial entrepreneur and medical doctor by training. His former company Rosetta Genomics, now public on the Nasdaq, analyzed the human genome to develop diagnostic tests for cancer.

    2. Ironically the money is coming indirectly from Google. So, I guess the lesson is as long as you are part of the Google world you will be fine.

      1. Night, didn’t the government side with Oracle (and therefore against Google) in the Java case? How do you square that with the Google bias that you are alleging?

        1. In terms of the article, the money (some 9 million if I remember correctly) really was coming from Google (and going to CropX).

          As for his other bias against Google, I believe he thinks Google somehow gets judges put on the CAFC. I’m not sure how that is alleged to occur.

          1. >>I believe he thinks Google somehow gets judges put on the CAFC. I’m not sure how that is alleged to occur.

            I have provided a number of links that discuss Google’s influence.

    3. Good question. I’m sure some people will very confidently tell you that if the algorithm is claimed as part of a larger irrigation system then it will surely survive because of Diehr.

      But, I’m not so sure anymore. For example, merely detecting a pattern or a correlation that occurs in nature and then performing obvious steps (e.g., watering areas that need irrigation and not watering those that don’t) based on the detected pattern doesn’t seem very patent eligible.

      I thought of this exact same high level idea recently (I’m not kidding). Of course it is one thing to come up with ideas (relatively easy) and quite another to actually implemented them in software (takes a lot of effort).

      1. The problem with claiming the irrigation system is that CropX doesn’t make or use the irrigation system (its customers do). So, if you can’t cover some sensors and some algorithms alone, CropX would have to rely on multi-actor infringement of claims. Those claims are therefore worthless.

    4. How this startup is using algorithms to help farmers battle the drought

      Because nobody ever thought of using algorithms in the field of agriculture before.

      Quick reminder: the importance or value of the information or the discovery doesn’t make the information or the discovery eligible for patent protection.

      Fundamental, basic stuff. Don’t forget it.

      Using the patent system to promote “new algorithms” would be the silliest idea that our patent system has ever confronted except for the fact that entities have already tried to use the patent system to protect information iteself.

    5. Sticks, if you want comments on whether “this” would survive 101 scrutiny, you’ll first have to tell me what “this” is. The name of the game is the claim. Could it be, for example:

      A process of watering outdoor plants according to a watering plan, characterized by the step of computing the plan, with a computer program, based on an algorithm that maximises profit for the waterer, and taking into account at least the weather forecast, the cost of water, drainability of soil, rates of water evaporation as it varies with plant coverage, rate of increase in crop bulk and economical timeliness of yield.

      Does that claim scope work for you? Is that the sort of patent you envisage, one in which only the computer code is new and everything else is what farmers have been juggling, with an “algorithm” in their heads, since time immemorial.

  12. While we are bashing patent drafters let us not forget that clients are also to blame for pushing drafters to write maximally broad claims. If the law had been clear upfront then I’m sure patent applications would have been more detailed and patent claims would have been more focused.

    Many of these recent decisions have told us what is not patentable. Is there anything that is before the Fed. Cir. or that is making its way to the Fed. Cir. that might tell us what is patentable?

    What about the Planet Blue case? There was a lot of noise when those claims were rejected. Are the claims in that case pretty much dead in view of the recent decisions?

    1. I looked up the claims for Planet Blue.

      I guess the question now is whether or not the steps of “generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes” and “applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence” provide sufficient details of the method by which whatever was supposed to be accomplished by the claim is accomplished?

      Finding the boundary that separates valid software patents from invalid ones based on the level of algorithmic detail does seem like a lot of hard work. Is this what Prof. Collins was referring to?

      1. Finding the boundary that separates valid software patents from invalid ones based on the level of algorithmic detail does seem like a lot of hard work. Is this what Prof. Collins was referring to?

        And another squirrel finds a nut.

        1. Classic Malcolm. Another little gem of a comment, not only for raising a laugh but also (in the period of reflection immediately after the chuckle) puncturing an inflated balloon, exposing the weakness of the balloon.

          To win a battle for opinion, humour is often more effective than anything else. I like it. Keep up the good work, I say.

    1. See, I would say that Newman actually pushed the frontier toward reversing Alice with this opinion. She expressly said that Alice mandated a 102, 103 analysis. All she did was follow Alice. She is a real judge who applies the law. Too bad Obama didn’t appoint more like her rather than non-science Google judges.

      1. Gl with that belief bro.

        “She expressly said that Alice mandated a 102, 103 analysis.”

        That’s nice, but it doesn’t really mean that Alice does in fact mandate such. Not a formal analysis anyway. All we’re really looking for is how does the abstract idea that is currently under analysis for the purpose of the overall analysis of the claim relate to what everyone agrees is old or obvious in the particular case at hand. Only if there is no agreement between the parties as to what would be old/obvious amongst the old parts only then does a court need sully itself with making that call. And sometimes the court can make the call pretty ez, if they need to they may want to take judicial notice of, for instance, the interbuts, computers and browsers etc. That being said, such an analysis is surely permitted though not necessarily mandated.

        The real travesty here was the statutory splitting off 102 from 101 that happened awhile back. That is what is causing all the hubbub.

        1. >>The real travesty here was the statutory splitting off 102 from 101

          So, the 1952 Patent Act is a travesty.

          Interestingly, your post and Newman’s opinion indicate that Graham is no longer good law. Funny how the Fed. Cir. and SCOTUS have not dealt yet with the fact that both Phillips (by Williamson) and Graham (by Alice) are no longer good law.

          1. Now Graham should read: the judge goes back and thinks about it a while and writes whatever they like according to whether the claim floats their boat or not.

            In other words—no law. The application of a law like Alice is no law. A I know it when I see it law means the judge is the law maker. Really bad stuff. We have reached third world status. Glad you are happy about it. I hope you have plans for an alternative career.

            1. We have reached third world status.

              Thank goodness we figured out how to use computers to identify products that similar customers bought before we reached this terrible moment in history.

          2. “Interestingly, your post and Newman’s opinion indicate that Graham is no longer good law. ”

            I understand your argument there bro but I just don’t see it holding a lot of water. Graham, addressing 103, is still very much good law.

          1. “Who gets to decide what was “really meant?””

            Any member of ye olde public reading the decision and wanting to argue about it in court.

        2. Someone should remind 6 that ALL of what is now 101/102/103/112 was but a single paragraph prior to 1952.

          “Split off” is not quite the right description.

          (and no, “just codify” falls abysmally short)

          1. “Someone should remind 6 that ALL of what is now 101/102/103/112 was but a single paragraph prior to 1952.”

            I already know but yeah it’s fine to remind me.

  13. There was another precedential case involving software that came out of the Federal Circuit last week: TomTom v. Adolph (CAFC 2015). Here are Adolph’s claims:

    1. A method for generating and updating data for use in a destination tracking system of at least one mobile unit comprising:

    generating and storing traveled distance data in at least one storage device provided in said mobile unit at least at predetermined time intervals, wherein the traveled distance data represent traveled sections by at least a series of nodes Pi and to each node Pi geographical coordinates xi and yi are assigned;

    generating and storing section data in the storage device provided in the mobile unit, said section data being generated by selecting, from the traveled distance data, nodes Pj and Pk, which define contiguous sections PjPk, to which at least their geographical starting point and end point are assigned; and

    generating a section data file from the section data and storing the section data file in the storage device provided in the mobile unit, said section data file being continuously supplemented and/or updated with section data newly generated by the mobile unit.

    In case your eyes glazed over while reading that, this is a method for generating data using math and saving the data in a file. Continuously. Oh, and it’s performed by “a device.” Whoopee! Super techno stuff.

    The district court construed the claims and as a result of that construction there was no infringement. In its opinion issued last week, the Federal Circuit changed some of those constructions and remanded the case.

    Perhaps the most interesting aspect of the CAFC’s opinion is the following:

    Claim 1 is directed to a method for generating and updating travel-related data and does not require the data to be used later as the district court found. It requires only that the data be generated, selected, stored, and continuously updated.

    The CAFC does not address eligibility (or obviousness, for that matter) in view of its revised claim construction. But the broad construction given by the Federal Circuit does raise an issue that has been discussed here on quite a number of occasions, i.e., the eligibility of information processing claims that do nothing more than take one set of numbers and convert them into a different set of numbers.

    1. This post by MM is typical. I made a point below he couldn’t refute and he reacts by hijacking the thread with lots of posts that are unrelated to the blog post.

    2. There are many areas where a device takes one set of “numbers” and converts them to another set of “numbers”. Encryption takes a plaintext and converts that into a cyphertext. Modulation takes two (I,Q) values and converts them to two different (I,Q) values mapped into a different output space. Amplifier predistortion takes values (again, I,Q values) and predistorts them, which is essentially creating different values, in order to reduce amplifier distortion. Coding, such as error correction coding, takes a data input and adds numbers to provide benefits such as zero DC level, error correction, etc. Picture or video processing algorithms take picture or video data in and manipulate them, typically to reduce output data rate.

      Are you saying that all of these should be invalid and not patentable, simply because they’re taking one set of “numbers” and making them into another set of “numbers”?

      1. I’m saying that the eligibility of claims that are infringed by taking numbers, turning them into different numbers and doing nothing more than storing the different numbers is highly dubious.

        But go ahead and keep prosecuting those claims. Be sure to give the numbers different labels. There’s nothing abstract about giving numbers different labels, of course. Nope. Because computers really care about those labels when they crunch the data.

        Sure they do.

      2. PatentBob, one cannot patent the math. One can patent the use of a specific encryption technique to communicate physical information from one place to another.

        An example is the Morse system of marks and spaces. Claim 5.

        I would hope when you claim these encryption inventions that you put something more into the claim than just the math.

      3. Hi Patent Bob
        Your examples are not very abstract. They all work at the level of bytes and how too specifically transform them to other bytes. Bytes have a physical existence. Sound has a physical existence. Information about how far you traveled is infomation and it can be argued that manipuating information is always abstract while manipulating bytes is always concrete.

  14. I’ve read this opinion and I don’t see “functional claim at point of novelty => Abstract idea.” In fact, I am sure this opinion does NOT support the title of the blog post.

    In fact, what this opinion does is go a long way to overturning Alice. Newman went along with all the nonsense of Alice and says explicitly that Alice means looking at 102 and 103 issues as part of the 101 inquiry.

      1. You are just like a guerrilla force MM. I can’t post without being harassed by you with non-substantive posts. Must be nice to have the time to behave the way you do.

    1. The opinion went along with the search for an inventive concept and found that the inventive concept was obvious over the prior art. The fact that it was claimed functionally had nothing to do with the holding of the claim being ineligible as being abstract.

      1. The opinion says this: [C]laim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. …Thus we affirm that claim 1 is not directed to patent-eligible subject matter.

        This is important and you’re surely familiar with the argument if you read the comments here: the recitation of any information processing functionality without disclosing a specific mechanism for achieving that functionality is abstract by definition. “Use a computer” does not qualify as a specific mechanism for the purposes of our patent system anymore than “use a ballpoint pen and paper” qualifies.

        This has been true, by the way, since general purpose computers were invented because they have no non-trivial utility except to carry out information processing tasks. The Federal Circuit and the PTO were slow on the uptake, unfortunately, but finally here we are.

        More to come.

        1. More nonsense from you. The blog title is not supported by the opinion and you did not address that issue.

          >>no non-trivial utility except to carry out information processing tasks.

          What does your brain do?

  15. I know I’m beating a dead horse here… This should have been a 103 not 101 rejection. Dissecting the claim to determine whether or not the “inventive concept” is subject matter eligible is still completely contrary to consideration of the “claim as a whole”. The claimed method includes tangible steps that provide tangible results. It is subject matter eligible, regardless of whether it is patentable under 102/103.

    1. Sorry Rick, but there are in truth no limits to the “Gist/Abstract” sword written into patent law by the Supreme Court.

      We really should stomp on the gas and drive this to its logical conclusion. Maybe – just maybe – then the “ends and means” saga will be understood.

    2. Dissecting the claim to determine whether or not the “inventive concept” is subject matter eligible is still completely contrary to consideration of the “claim as a whole”.

      Two points: (1) the CAFC considered the claims as a whole; (2) forbidding jurists, examiners or fact-finders from taking into account the nature of individual claim elements (old/new; abstract/not abstract) is an unworkable prohibition that would turn both the requirements for obviousness and eligibility into toothlesss jokes. This isn’t an opinion. This is basic logic. It’s also settled law that’s never going to be overturned.

      The claimed method includes tangible steps that provide tangible results.

      The “tangible result” test for subject matter eligibility was rejected for a very good reason: it’s worthless for screening out the plainly ineligible claims that recite only (1) some “new” ineligible subject matter and (2) an old step that produces a tangible result.

      Since you recognize that you are beating a truly dead horse — a horse that’s dead for excellent reasons — the question arises: why bother? What are you trying to demonstrate to everyone? That you just can’t let go of the myths that you learned from some website that did nothing but promulgate those myths for years?

      1. This isn’t an opinion

        Wrong. It very much is ONLY an opinion.

        This is basic logic

        Wrong again – it is basest “logic,” as you steadfastly refuse to actually apply logic to any of your legal “opinions.”

        1. If you are advising your clients differently from what I am saying here, you are committing legal malpractice and you don’t belong anywhere near a patent or a patent application.

      2. Technically the court did say that it was analyzing the claim “as a whole” however the court looked to the specification rather than the claim language itself. This feels like the “spark of genius” from old 103 all over again.

        1. Technically the court did say that it was analyzing the claim “as a whole” however the court looked to the specification rather than the claim language itself.

          The court looked at the specification to determine if there was more to the claims than what met the eye. There wasn’t. The court certainly did analzye the claims as a whole. What is the point of denying this? It makes you feel good? Serious question.

          This feels like the “spark of genius” from old 103 all over again.

          It’s nothing at all like that so if it “feels that way” to you then you don’t understand 103 or the “spark of genius.”

    3. Dissecting the claim to determine whether or not the “inventive concept” is subject matter eligible is still completely contrary to consideration of the “claim as a whole”.

      Focusing on a particularly important limitation does not run against “claim as a whole.” The court specifically considered the other limitations and found they didn’t:

      In reviewing the claim, Judge Newman could find nothing beyond conventional browser elements and the claimed end-result of “maintaining [the] state.”

      You’re only violating the claim as a whole rule when you don’t consider the other limitations. The abstract idea jurisprudence specifically commands that you consider both the individual limitations and them as a whole, and there’s nothing backward about “singling out” a particular limitation for special discussion.

      1. You can and should repeat this fundamental and non-controversial information over and over, RG.

        The zombies will never get it but eventually everyone else will. It’s a great way to separate the intelligent and honest people from the hacks.

  16. This is a perfect example of how you can get any result you want based on Alice.

    That abstract idea here is PROVIDING RETURN NAVIGATION.

    The how of THAT is maintaining state information.

    The particular mechanism for how the state information is maintained is not important. This return navigation is apparently a feature not previously available.

    The Judge wanted to invalidate, so the Judge declared instead that the abstract idea was the how.

      1. What has that to do with my comment?

        The alleged “abstract idea” in Alice was providing intermediate settlement wasn’t it?

        Or are you saying it was “intermediate settlement” without the “providing”?

        If that’s what you mean, then the “abstract idea” here was RETURN NAVIGATION, without the “providing”.

    1. That abstract idea here is PROVIDING RETURN NAVIGATION.

      The how of THAT is maintaining state information.

      Because keeping information that you don’t want to lose by “maintaining” it is super duper innovative.

      Truly, the patent maximalists will do and say anything — literally anything — to avoid reality.

      Need proof? Meet “Les”.

      1. It is an incremental improvement perhaps. But apparently, it was a feature not available in browsers before. It is not a requirement of inventions that they be “super duper.”

          1. Sure, just as long as you recite every specification of every screw and every weld and don’t try to get away with vague functional nonce words like “screw” and “weld”.

    2. The particular mechanism for how the state information is maintained is not important.

      That is just admitting it’s an abstract idea. The particular means for achievement is the only thing that can possibly be an invention. That’s exactly the same as Morse saying he invented “printing at a distance” and the particular mechanism for how the printing occurs is not important.

      Suppose the abstract idea was providing return navigation – you still haven’t adequately described how that occurs because you haven’t explained how you maintain state information. You still aren’t meeting the substantially more test.

      You simply can’t say that your invention is “achieving a result” it has to be “achieving a result in this particular manner.”

      1. Put another way: you can’t claim “a result” as “a result”, directly or indirectly (as was done here).

        You can claim a method. You can claim a composition of matter or an apparatus. You can draft a product by process claim that will be limited to the method steps (at least).

        But “results” of methods aren’t eligible subject matter, nor are “new functionalities” eligible subject matter.

        If you are drafting method claims for your client and the only novel element (absent a novel combination of elements) in the claim is the “result” achieved, you are wasting the client’s money.

  17. If the claim does not recite sufficient detail for the step for maintaining the state, since the presence or absence of the words “means for” and “steps for”are no longer relevant, shouldn’t we then be in a 112, six situation and be limited to the methods for maintaining disclosed in the spec and equivalents thereof?

    1. Les, I doubt that the Federal Circuit will ever apply 112(f) to a method claim absent the use of “step for.”

        1. I could have sworn that I heard the Red Queen declare that “consistent” was a nonce word, as she was wielding the “Gist/(and undefined) Abstract” sword…

          1. Yeah Ned –

            As long as you’re in the mood to read case law, why not peruse these and then reconcile them with the Judges analysis:

            Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v.Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole’”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987), cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled claims down to a one word solution to a problem)

            link to uspto.gov

            1. Les: As long as you’re in the mood to read case law, why not peruse these and then reconcile them with the Judges analysis:

              How much money have you taken from your clients over the last few years, Les?

              If you can’t understand subject matter eligibility, you need to get a new job. This is above your paygrade.

            2. Les, a lot of Federal Circuit cases there. The topic of conversation appears to be 103, not 101, not 112. The assumption at this point in the conversation is that every limitation, every element must be considered and given weight because each and every one is claiming statutory subject matter.

              1. because each and every one is claiming statutory subject matter.

                By “ones” Ned, you appear to be (incorrectly) implying that it is claim elements that are somehow “claiming statutory subject matter.”

                This is nothing but a sleight of hand attempt by you to repost your ill-conceived and nowhere to be found in actual law PON fallacy.

                Elements of claims do not “claim” statutory subject matter.

                Elements of perfectly legitimate and eligible subject matter (for example, compositions) are comprised of ineligible elections, protons and neutrons.

                Your “logic” is a fail and a canard.

                1. All Ned was saying is that the cases Les cited are not concerned with ineligible subject matter at all but rather with instances of jurists ignoring the existence of non-abstract elements in the context of an obvious analysis.

                  Elements of perfectly legitimate and eligible subject matter (for example, compositions) are comprised of ineligible elections, protons and neutrons.

                  LOL. Talk about a “canard.”

                  Keep fighting your battles on Planet Bizarro, “anon.” Someday Planet Bizarro will be all yours. Exciting!

                2. Anon, I don’t understand how you think the Supreme Court law on functional claiming was generally overruled by 112(f). I tried to explain to you that after Westinghouse, a case that authorized claiming structure functionally but on the condition that the functional expression be construed to cover the corresponding structure recited in the specification and equivalents thereof, the bar began claiming inventions using means plus function almost exclusively. At the time of the Halliburton case, the vast majority of patents to new machines were claiming this way. Were they all invalid after Halliburton? Obviously the bar had some concern here – hence 112(f). This would preserve the validity of those combination claims deliberately using means plus function format despite Halliburton. But the general principle of Halliburton, which rested on many, many Supreme Court cases going all the way back to O’Reilly v. Morse was not overturned.

                  The principle of these cases is that one cannot claim an invention at the level of abstraction, at the level of an idea. In connection with a new or improved machine, one cannot claim novel machine structure in terms of what it does.

                  However, if one chooses to use the means plus function format in a combination claim, this objection vanishes provided there is corresponding structure disclosed.

                3. I asked you Ned straight up and directly why Congress did NOT make PON a requirement in claims (seeing as they knew how to if that was what they wanted to).

                  All you offered in reply was a non-answer smokescreen.

                  What will it take for you to realize that Congress did not write the law that you wanted? That your use of PON is a canard?

                4. anon, I find it interesting that you pretend not to understand something as simple as 112(f) and how it solved the problem of Halliburton and existing patents that used MPF claims.

                  I did point out to you before that Rich and crew proposed something entirely different initially. He proposed an overrule of every case involving functional claims, from Morse, to Rubber-Tip pencil, to Perkins Glue, Wabash Appliance and United Carbon. Once the ramifications of his proposal were make known to congress, they reacted accordingly. Whether his initial proposal was simply sloppy or devious, we shall never know.

                  MM has already drawn the conclusion that Rich was a dim bulb. But he was a graduate of Harvard, like George Bush. Talk to graduate of Yale about Harvard types, and you will get an earful. Right Richard?

                5. Ned,

                  It is a dissembling trick of the lowest order to continue to project onto me some “non-understanding” that is simply not the case.

                  Stop dissembling please.

              2. Ned –

                I don’t see any indication that while it is improper to apply gist type reasoning with regard to 103, it is to be applauded and otherwise encouraged with regard to 101, or even that its ok with regard to 101.

                In any event, as of late at least, the courts don’t distinguish between 101 and 102/103, finding as they do that things are abstract because they are old, or ancient even,…So, again, there is no reason to believe the previously supplied admonitions against “gist” type reasoning are not applicable to 101.

                1. Les, 103 is about novelty — whether the difference between the claimed subject matter and the prior art is sufficient. In contrast, section 101 is about statutory subject matter and whether one is claiming subject matter that is within the four classes, whether that subject matter is “new or improved” in an absolute sense and not the prior art sense, whether it is useful, and whether it is claimed with sufficient particularity to be other than a mere idea – a result.

                2. Ned,

                  You are in no position to be trying to give lessons to Les.

                  “Novelty” is not the right word.

                  The word chosen is explicitly linked to what became 101 and is fundamentally tied to Congress removing the common law power of setting the meaning of the word “invention” from the Court – in direct response to the anti-patent mess that the Courts had made with “invention,” “gist of the invention,” and any other of a dozen other malformations that the Courts had come up with.

                  This IS an historical fact.

                  Learn it.
                  Acknowledge it.
                  Integrate it into the discussion.

  18. I must say what an amusing case this is. We learn from the patent in suit what the problem is, namely, that the prior art fails to maintain information during back and forward navigation. We turn to the claim to find out what the solution is. And what do we find? The solution is to maintain “state” during back and forward navigation “wiuthout loss of said state”.

    Serious inventors seek patents for their inventive solution to a technical problem. The notion that a patent is due reward for nothing more than stating the problem to be solved is dubious at best.

    Once in a blue moon however, the problem to be solved is not apparent to anybody. In such a rare case, an inventive step can occur when an individual conceives, discovers, expresses and communicates to others what is the problem to be solved. For an example of a so-called problem invention, how about a claim (from the dawn of trans-luminal coronary angioplasty) to:

    An angioplasty balloon, characterized in that it is pushable.

    Background: The earliest balloons were of PE and under inflation they were “compliant” in that they behaved like a children’s party balloon, or they were of PET and were not compliant. They behaved like a paper bag. Then came the invention, implemented as polyamide balloons, that behaved like a paper bag, except that you the radiologist could “push” them to inflate just a tad more, in extremis, if the bodily lumen turned out to be wider than you were expecting. They were neither compliant nor non-compliant.

    Of course, once you specify to the balloon science expert that you want a pushable balloon, the implementation is trite. The invention is not in the recitation of specific “structure”.

    But usually, it is.

    1. You point out what many hate about software patents – the garbage ones simply claim a result as opposed to the new/nonobvious manner of achieving that result.

      I imagine we’ll eventually get to a point where all software patents are interpreted under 112(f) (and it seems like the PTAB is trending in that direction), which will invalidate the bad ones and uphold the good ones that disclose their particular methods for achieving the claimed function. Some will continue to blather about how software patents are bad yadda yadda yadda, but this seems to be a happy medium.

      1. finally, I agree.

        But most patent attorneys today have never learned how to claim anything properly. You should see the claims they draft — all like this, even when claiming real structure.

        Somebody could make a mint in providing reeducation camps for the younger patent attorneys.

        1. This problem arose from software patents. I work for a partner that hems and haws when I change his “configured to rotate” claim element with “rotatably mounted to.”

          I think a bunch of these software practitioners fail to realize that software patents are very different from all other types.

            1. How exactly?

              And I mean in a sense under the law…

              Anybody want to waste time trying to explain to “anon” for the thousandth time how information-processing claims are different from claims to, say, synthesizing a new chemical?

              I don’t.

              1. Not just different – different enough under the law.

                Maybe you need to brush up on your basic reading skills….

                (Or maybe you should just stop trying to spin what others post)

                1. Not just different – different enough under the law.

                  Because we all care what “enough” means to “anon” in the context of his mythical view of the “law.”

                  Have fun waiting for an answer.

                2. I am not the one trying to change an spin the law – you are; an thus the onus remains on you.

                  Fun stuff indeed.

                  What a chump.

                3. am not the one trying to change an spin the law

                  You could have fooled me. But keep fooling yourself if that suits you.

    2. We learn from the patent in suit what the problem is, namely, that the prior art fails to maintain information during back and forward navigation. We turn to the claim to find out what the solution is. And what do we find? The solution is to maintain “state” during back and forward navigation “wiuthout loss of said state”.

      Exactly, it’s like that old joke where the guy goes to the Doctor and says “it hurts when I do this with my arm” and the Doctor replies “then don’t do that” and pushes him out the door with a bill for $300.

      1. As a comical aside, this literally happened to me recently. Ever since I tore my pec years ago, I intermittently get soreness when I lift weights. Doctor: well maybe you shouldn’t lift weights. Thanks!

  19. Since I’ve started paying attention to which judges are writing what it’s become pretty clear that Newman is the one that most gets Supreme Court precedent.

    I will say though that I can’t answer the question of how functional at the point of novelty manifests as categorically as Newman does. Obviously if you are functional at the point of novelty you have an invalid claim, but does that invalidity necessarily manifest under 101 je’s or under the more “traditional” 112a and b? Obviously if it is inherently a 101 problem it would naturally include the 112 rejections, as a not significantly limited claim to a field is overbroad of a single invention, but must it be a 101?

    I would lean toward “No” as a matter of logic for the simple reason that all JEs get similar treatment, and it’s very easy to see math or a product of nature being the novelty and not triggering the rule.

    The smarter course of action, imo, is to simply say that functional at the point of novelty causes over breadth under 112a and b, and additionally CAN but not necessarily MUST rise to the level of an excluded field and a 101 rejection.

    1. She is one of the consistently best opinion writers and the most valuable CAFC judges. Surprisingly, she has a lot of bashers on here.

      1. Lionel, I like her dissents in most cases. However, I think she was wrong on PatLex, and generally on 101, until this case.

        1. Ned, I am definitely of the opinion that 102 and 103 should be used rather than 101 in most cases. Having said that Newman hews closest to reasonable interpretation of precedent and she is appropriately adhering to the dictates of SCOTUS.

    2. Random, just how often has the SC cited Rubber-Tip Pencil for 101 purposes? A lot. This from Alice at the very beginning of the case:

      The “abstract ideas” category embodies “the longstanding rule that `[a]n idea of itself is not patentable.'” Benson, supra, at 67, 93 S.Ct. 253 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874))…”

      What does this case actually stand for — claiming a result without any details. The claim to a piece of rubber for use on the tip of a pencil included two statutory items, the rubber piece and the pencil. But beyond that, there is nothing more than the idea of attaching a piece of rubber to the tip of pencil without the inclusion of any means or methods for doing so. Essentially this was a mere idea that was claimed, a result.

      You can look at this from many different angles, but the claim has essentially the same vice as Perkins Glue, Wabash Appliance, United Carbon and Halliburton.

      It is interesting that we get the result under 101 very quickly without having to prove whether one of ordinary skill in the art could come up with ways of accomplishing the intended result. That is not the vice. The vice of course is that by not specifying a particular way, the claim covers all ways of accomplishing the result.

      1. Ned you really like that “rubber tip on a pencil” case don’t you.

        Trouble is, for me, a pencil with a rubber affixed (somehow or other) to its blunt end is much more than a “mere idea”. If the only prior art was pencils without a rubber on the end, and rubbers without a handle, then putting a pencil handle on a mini rubber, too small to hold in the fingers, strikes me as a super inventive contribution to the art. Forget how to fix it on. That’s trivial, once you have had the Flash of Genius to site the rubber on the end of the pencil. Anybody can do that bit. No explanation needed.

        So I really think it is a bad case for decrying the tendency to grant patents for subject matter that does no more than announce a Problem for which the solution is not trivial. Sorry!

          1. Thanks for the Link, Ned. I see now. The claimed subject matter was not the pencil with rubber tip attached but:

            A rubber head for a lead pencil.

            simpliciter. I don’t know about you, but, these days, such things are sold as consumables, to plug in to a socket at the end of a fancy propelling pencil system. But they didn’t exist until the invention we are debating here, did they? Absent the propelling pencil system, such a little solid rubber cylinder is too small to wield, between first finger and thumb, for erasing pencil marks, so is useless and unsaleable, and therefore was unknown, until the invention.

            What am I missing now?

            1. these days, such things are sold as consumables, to plug in to a socket at the end of a fancy propelling pencil system.

              In my day (which was considerably after Rubber-Tip), such things were also sold as consumables, but had sockets on the eraser, so that the flat end of a decidedly unfancy pencil system could be plugged into them. (This appears to be closer to the design of the “invention” in Rubber-Tip, as the Court seemed to be concerned that any piece of rubber with a hole in it would infringe.) I think the fact that the Rubber-Tip claim as summarized by you could cover both designs reinforces Ned’s point.

      2. But beyond that, there is nothing more than the idea of attaching a piece of rubber to the tip of pencil without the inclusion of any means or methods for doing so.

        This sentence is more correct than the others around it. The threat of foreclosure of not-substantially-similar means is the hallmark of an abstract idea rejection.

        It is interesting that we get the result under 101 very quickly without having to prove whether one of ordinary skill in the art could come up with ways of accomplishing the intended result.

        Here you run in the wrong direction. It’s not relevant from a 101 standpoint whether ONE means is enabled under 112a. The question is whether the specification conveys EVERY means of accomplishing the result. If it doesn’t, then we have a claim to a field without invention of the entire field – it forecloses the inventor of the distinct means from acquiring his patent as the patent-to-the-field already excludes him.

        1. Good point, Random — does the patent actually teach the full scope of the claim?

          I suspect that this is the bottom line in Nautulus as well. The patent had no teaching at all on how to make any adjustments in anything to achieve equal of the unwanted signals in the difference amplifier. It simply assumed that they were equal. But the inventor testified that the actually had to do a lot of things to make the signals balance, non of which were disclosed either in the patent or in his testimony.

    3. RG: Obviously if you are functional at the point of novelty you have an invalid claim, but does that invalidity necessarily manifest under 101

      Sure.

      New functionalities are not eligible subject matter.

      1. This is excellent stuff.

        If you are advising clients that software patents are categorically dead, you shouldn’t be anywhere near a patent or a patent application. Look for a new job, you’re beyond your pay grade here.

  20. Looking in from Europe, I had to laugh when I read what Borella on the PatentDocs blog writes, in the context of this case:

    “When writing a patent’s specification, the draftsperson should focus on the clever parts — aspects of the invention that are new. In most cases, however, the draftsperson is not fully aware of which features are truly new versus those that are in or suggested by the prior art. As a result, it is challenging to identify which of these features might be a candidate “inventive concept” and to pontificate thereon accordingly. The general rule that many of us follow post-Alice is to draft rich, detailed, technical specifications, and undoubtedly we will double-down on that approach in light of this decision.”

    He surely cannot be saying that, suddenly, patent drafting is “challenging” because it is so hard to identify any “inventive concept”? What have we been billing clients for then, all these years?

    Wake up to the brand new world of First to File. This is it. It matters what inventive concept you announce in your patent application on the day you file it at the PTO. From now on, you will be rationed to that, and no more than that.

    1. I think the point is that “inventive concept” is the “new thing” from the Court (and not Congress).

      Way back in 1952 Congress acted against an activist judicial backdrop and that same “inventiveness” attack mode and changed US patent law.

      You haven’t been paying close enough attention….

    2. And OT, but on another thread did you reveal that you work for the EPO…?

      No wonder you have been so strangely quiet on the BB mess there. You have a post-modern post-1984 Big Brother tracking you. How stifling is that, knowing that even the guest computers are bugged and monitored?

      1. What does “work for” mean, anon? If I proselytize for the EPO line of substantive patent law, do I “work for” the EPO? Or do you mean, am I an employee of the EPO?

        Do I “work for” the EPO in the same way that MM works for the USPTO?

        Am I DC? Do I have sock puppets? Who knows?

        “Strangely quiet” you say. Actually, I thought I had been quite noisy. Perhaps I have been spending too much of my blogging time over on the IPKat, raging at the scandal of the EPO President (the Napoleonic Benoit Battistoritelli, who thinks he is a dynamic CEO) and his bunch of lickspittles, who are so busy destroying the EPO. Reform is needed, at the EPO as everywhere else, but the BB way is not the way to do it. The problem is that the EPO, being a supra-national entity, is not accountable to any government, so its President can please himself, how autocratically he goes about his business. Staff morale might be less important to him than his “legacy” as the man that tamed the Staff Association, and that he gets his terminal cash bonus (rumoured to be 20 million) when his term as President comes to an end.

        Do you still think I work at the EPO?

        1. A simple “yes” or “no” answer would have been nice, MaxDrei.

          Instead the games of no-answer-but-only-questions serves to obscure.

          Can we have a simple an direct answer?

    3. In most cases, however, the draftsperson is not fully aware of which features are truly new versus those that are in or suggested by the prior art.

      Yes, I’ve read many of those applications, and I’ve had to prosecute a few as well. Sometimes it’s because there is no invention. Too often, however, it’s because the draftsperson has no idea what they’re writing about.

      1. I’m curious – would you be for a change in law to require all improvement patents to be written in Jepson format?

        1. No, because “improvement” isn’t (always) a one-dimensional trait. The European “characterized by” approach works OK, but only because the reference point is a single piece of prior art, not the entirety of the prior art.

          The fact that we don’t have to explicitly identify the inventive features of the claim doesn’t mean, however, that the patent drafter should be drafting claims when he or she doesn’t understand what the inventive aspects are, which is often the case when the draftsperson doesn’t have a decent grasp of the background technology. Unless the inventor and the draftsperson can come to an agreement on a pretty concise definition of what the “magic” or “trick” is, then there shouldn’t be an application.

          1. What does “one-dimensional” have to do with anything?

            If as you posit the “magic” or “trick” can be located as a “pretty concise defintion” then that would be the “PON” in your Jepson claim.

            For all extents and purposes you appear aligned with Ned as if this was an actual legal requirement now. I am “perplexed” that you don’t jump at the chance to make this an actual legal requirement with a change to the law.

            Or maybe your smarminess is getting lost when connecting the dots does not quite work in your favor…

            1. What does “one-dimensional” have to do with anything?

              I’m sorry I wasn’t clear. Read the sentence immediately following that one. When the invention lies in a particular combination of features, you can’t always divide the novel ones from the non-inventive features, when you consider the prior art as a whole. You usually can if you’re starting with a single reference, i.e., the mythical “closest prior art” of Europe.

              For all extents and purposes you appear aligned with Ned as if this was an actual legal requirement now. I am “perplexed” that you don’t jump at the chance to make this an actual legal requirement with a change to the law.

              Dude, you need to relax. I’m just trying to figure out what the law is. Your paranoia about “alignments” and secret agendas isn’t healthy.

              1. LOL – “dude” I am relaxed and their is no “conspiracy theory” to my post.

                Your stated view aligns with Ned’s phantom law. After all, it was you that said that if you cannot concisely define the “inventive difference” you should not file. Now you want to back track because the “connecting of the dots” reveals problems with your statements.

                Instead of trying to denigrate my views further, you would be better off acknowledging their superiority under the law as written by Congress.

    4. MD: He surely cannot be saying that, suddenly, patent drafting is “challenging” because it is so hard to identify any “inventive concept”?

      He is saying that, MD.

      And many commenters here have said the same thing over the years. They all want to keep their heads buried in the sand and let the Examiner tell them what the invention is after presenting the Examiner with a word salad that would embarass James Joyce. According to these brilliant attorneys (who never saw a granted patent claim they couldn’t embrace), that’s the PTO’s job.

  21. However, under Williamson if the “maintaining” step was effectively functionally claimed, then it should invoke means + function. I didn’t read the spec enough to determine whether this step would be definite or not. I’m sure this interpretation wasn’t raised by the patent owner but this argument could have saved the patent. If not functionally claimed at the point of novelty, I think Newman would have upheld this patent. Reyna, no. Not sure about Moore.

    This case is similar to DDR but DDR wasn’t functionally claimed at the point of novelty. the claims therein actually set forth how the invention operated.

    1. It should not be a valid consideration for 101 whether the detailed specification actually taught the “maintaining” step in detail. The claim itself sets forth the definition of the invention so having a detailed description that sets forth a variety of methods for this step would not fix the problem in the claim as is. I think it’s inappropriate for the court to search for the “inventive concept” in the detailed description when its the “claims” which provide the recited definition. For example, a method may be new and non obvious even if it comprises of known steps just not performed in the same order. The court’s analysis here only focuses on a single step and not the claimed combination of steps. The court is heading to far away from considering the claim as a whole.

      1. Mike: I think it’s inappropriate for the court to search for the “inventive concept” in the detailed description

        Nobody had to search for it.

    2. Except Newman dissented from Williamson for pretty much the same reasons as here. These cases are closely tied. The idea is that when the Applicant doesn’t want to limit himself the correct course of action is not to do the limiting for him but to declare his broader scope invalid.

      That being said, the effect is the same – if the disclosure had disclosed a particular means then either 1) a dependent claim is drawn to it or 2) a dependent claim COULD be drawn to it, assuming there’s a continuation still alive or this had gone through a post grant review or 3) the applicant chose to forego the smaller scope.

      1. Interesting comment. You know, you remind me of the pre-1973 debate in Europe about the relationship between the claim and the detailed description. It used to be that patents had no claims at all. But then that was seen as unsatisfactory. Then we had claims but they were only guidelines. That is also now history, because today it is recognised that claim drafting is do-able.

        The modern way is to hold patent owners to what they choose to claim, as their invention, in words of their own choosing, on a blank piece of paper. Nobody else is choosing the words for them. If they claim too narrow, the infringer should indeed get away. If they claim too broad, the claim should indeed crash.

        Why should the courts ride to the rescue of the covetous or incompetent drafter by writing their claims for them? Why not instead encourage claim drafting standards to rise rather than continuing to reward sloppy thinking? What public policy objective does that serve?

        Claim drafting is do-able, OK? For a start, why not start testing competence in claim drafting, as a condition of getting on to the Register of Patent Attorneys?

        Or is that too difficult?

        1. Changing the rules (ahem, and not by Congress), years afterwards and then playin the game of “blame the drafter” only highlights your out-of-touchness Mr. Bureaucrat.

          You always did seem not to get the concept of Patent Profanity…

          1. The thing about patent drafting is that you need to know what the courts will be saying 20 years on into the future. I know, prediction is hard, specially when it concerns the future. But that is what the clients have always paid us to do.

            Just one thing saves us. The Anna Karenina Principle. Patents can crash in a multitude of different ways, but good quality drafting is timeless.

            link to en.wikipedia.org

            1. I know, prediction is hard, specially when it concerns the future. But that is what the clients have always paid us to do.

              Maybe “anon’s” clients pay him to do something different.

              Ask him about his mailroom sometime.

              1. And yet more spin….

                Great “ecosystem” Prof.

                Malcolm has no point to make in any inte11ectually honest manner, so he just C R Ps all over the place.

                Nine years and running.

        2. Why should the courts ride to the rescue of the covetous or incompetent drafter by writing their claims for them? Why not instead encourage claim drafting standards to rise rather than continuing to reward sloppy thinking? What public policy objective does that serve?

          But that was the basis of 112f to begin with. The reason 112f exists is because courts were construing the claims to keep them eligible in a quasi-equitable move. To ask why you would do it under 112f is to simply restate the reasoning for 112f existing.

          The question is: Was the statute intended to displace the equitable move or to supplement it? If it intended to displace, then the failure to activate 112f is definitive and the claim is invalid. If it was only intended to supplement then you might be giving people the benefit anyway (i.e. Williamson-like logic).

      2. Random, do you really believe the Federal Circuit will limit method claims under 112(f) like they do claims to apparatus?

        1. Random, do you really believe the Federal Circuit will limit method claims under 112(f) like they do claims to apparatus?

          It doesn’t matter if they do or they don’t Ned. It’s irrelevant. The only thing you can receive a patent for is your invention, and your invention is your means of achievement. That’s the substantive question. Whether 112f is invoked is ultimately a procedural question – it goes to how one chooses to draft a scope. How you go about conveying a scope is an entirely different question than whether the scope is valid.

          Either they will limit the functional step to particular acts described in the spec (i.e. apply 112f), or they will find functional steps to be invalid until Applicants figure out to claim their acts. Any way you look at it you can’t use language that covers acts which the art would construe as being not-substantially-similar.

      1. I think he means step-plus-function, Ned. And I think he’s on to something. I think this case would be cleaner if the “maintaining” step was held to be a step-plus-function limitation on the grounds that there are insufficient details in the recited function to put any meaningful limits on it.

        This approach would also circle back around to your beloved Halliburton case – for all practical purposes, this is a single-step-plus-function claim.

        1. “Beloved” Halliburton remains abrogated.

          Single means has NO relation to that case – and is in fact part of the real background to the Act of 1952.

          Please do not feed Ned’s delusions.

          1. Single means has NO relation to that case

            I stand corrected – I was actually thinking of In re Hyatt, which is of course much more recent. I think that case, though, illustrated that there is still some life in Halliburton. From In re Hyatt:

            … Mr. Federico, one of the drafters of the 1952 Patent Act, stated at p. 26:

            “The language [of the final paragraph of Sec. 112] does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned.”

            1. Still has nothing to do with the abrogated Halliburton case, as the “undoubtedly” comment is Federico’s post-1952 opinion (when you read his commentaries, you should note at the beginning that he “disclaims” certain portions of the work as being merely his opinion – as here with the future-looking conjecture. Note as well, that I have in the past also taken into account mere aggregation claims – which negate any “adding of purely nominal elements” in my discussions with Ned and my past pointing out as to why Malcolm’s “pet theory” merely reduces to a “no-aggregation” theory (with or without any of his purposefully distracting “all in the mind” goal-post moving “elements of mental steps.

              This has all been put on the table of discussion before – by me. It is only in the refusal to take those points to their logical conclusion by others that we jump on the Merry Go Round of anti-patent (and anti-business method and anti-software) propaganda.

              1. You know, anon, your constant misstating of my position is downright annoying.

                I have repeatedly said that if one deliberately employs 112(f) in a combination claim, the problem of Halliburton disappears, that is, unless, 112(f) is unconstitutional. No one has ever raised that as an issue.

                1. Ned, your accusation runs false.

                  That is neither my statement of your position, nor A statement of your position regarding the citation of an abrogated pre-1952 case concerning the law as written by Congress in 1952.

                  Any “annoyance” that you feel is merely the displaced realization that I have correctly called out your pure fantasy treatment of actual law. Your “pinnacle” of PON – as you attempt to use that term – simply has no tether with actual law.

          2. Single means has NO relation to that case – and is in fact part of the real background to the Act of 1952.

            From your “beloved” Frederico:

            The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned.

            The solution as explained by the applicant is not “how A and B interact to solve the problem” the solution is “use A by itself to solve the problem.” There are nominal, conventional acts, to which a single means has attached – means for maintaining state. Frederico explicitly states this is condemned.

            It is no different than if you tried to avoid the single means of “A device comprising: means for illuminating a bike path” by claiming “A system comprising: means for illuminating a bike path, and a bike” when the bike was already known in the art.

            Single means very much has something to do with this case, and is generally more applicable than 112f claimers would care to admit. That being said, I don’t think this is a 112f case, so I don’t think the single means prohibition applies. Those that suggest that it could be seen that way, however, do have to deal with the fact that the statute on its face does not allow means-plus claiming in every context.

  22. LOL – guys, don’t you recall the friendly exchange just a little while back with Prof. Crouch hoping to catch up with Ned at a conference?

    Appearances….? Oh my (in the best George Takai tones, courtesy of “Random”)

    Of course, the little inconvenient fact remains: Congress did not choose to write the law according to Ned’s fantasy of PON, and both Ned’s Jepson claim format fetish and Macolm’s no-terms-of-function remain merely optional claim formats.

    1. I’ve met Dennis Crouch in person at AIPLA, so I can vouch for his individuality.

      And Edward Heller is a specific individual with a USPTO reg number. I don’t think that the USPTO is amenable to registering practitioners under an alias.

      1. That was a wrong jump Dave – never said that Prof. Crouch and Ned are not real and distinct people – I know they are.

          1. I think what he’s suggesting, David, is that Ned is to Dennis what Darth Vader is to Luke Skywalker. He might be on to something…

            1. Reminds me of THE best Star Wars quote ever:

              Emperor Palpatine (in his “scoreboard” voice): “The dark side of the Force is a pathway to many abilities some consider to be unnatural.

              Just because certain things (judicial activism) have been done, does not mean those things are in any way proper to have been done – this is (yet again) the saga of the ends and the means.

              Some clench tight their eyes and rejoice in ends obtained – a notoriously poor choice as any student of history can attest.

              1. if one argues that combining chemical mixture a and mixture b and (functional description of a class of chemicals) to create a new mixture, and that new mixture is non-obvious because of the combination, that is okay. The applicant isn’t claiming he invented A or B or the other chemicals, the invention lies in the non-obvious combination.

                Contrast that with a processor running code to do function F, where F is argued to be novel. If function F isn’t claimed in means-plus, it’s invalid because the scope exceeds the possession of the applicant. The applicant here is not claiming a non-obvious combination of well-known code (indeed it’s pretty clear the combination would be obvious), he’s saying his function is new.

                Nonsense. Both claims recite a combination of old, structurally-described elements (X) and (Y), and new, functionally-described element (Z).

                Is there a logical basis for distinguishing these claims? Sure: one presents elements that are actually tied together and interacting (software doesn’t do anything unless a processor is executing it), while the other presents an aggregation of unrelated parts, like: “A composition comprising: glue, Cheerios, and glitter.”

                Of course, that’s the opposite conclusion that RandomGuy wants to reach, but there is no logical basis supporting his position. On the contrary, the argument tips Random‘s hand – the usual theory that software just doesn’t deserve patent protection. This theory has no technical or legal basis – only preference and opinion – and it has been routinely shot down by the courts for 40+ years, which is why a whole host of people like Random are trying to attain that result through back-door measures like this.

                1. I have long pointed out that the “mere aggregation” aspect required of looking at claims as a whole soundly defeats both illicit attempts at portraying patent law as something that is not by Ned (and his all claims must be Jepson format) and Malcolm (all claims must only be “objective physical structure”) fallacies.

                  What is even more chilling as to the lack of inte11ectual honesty is Ned’s rather “Oops, I did it again” providing of a link that does not support his own advocacy tactics on these boards.

                  This is the O’Malley reference against the “back-door” approach of using the judiciary for changing law that rightfully belongs to the legislative branch.

                  And this is not the first time that Ned has done this type of “Oops.”

                  In the days following the Bilski case he introduced a reference that warned of the danger of misapplying dicta as somehow being controlling change in law. And yet, that is exactly his motif with his “versions” of past case law (including your well-fashioned critique of his misapplications concerning the exceptions to the judicial doctrine of printed matter).

                  I would point out that a better example of an aggregate claim should be used rather than your glue, Cheerios and glitter, given that at least it might be argued that the glue can provide a technical basis for integrating the elements. Feel free to use my previously supplied aggregate claim of a blue umbrella, a bicycle, and a goldfish in a round fish tank (and note that the Malcolm twist of [new-thought] need not even be present for the mere aggregate doctrine to apply).

                2. Nonsense. Both claims recite a combination of old, structurally-described elements (X) and (Y), and new, functionally-described element (Z).

                  Nope. If (functionally described class of chemicals) were novel it would be invalid. Just like a processor + memory + functionally described code that is novel is invalid. The only way you could functionally describe the chemicals is if all chemicals that produced a result were known.

                  The reason the chemical example may result in a valid claim is because if A and B and Class F were all old, you might be able to generate a non-obvious scope because the combination behaves in an unexpected manner. i.e. The “teaching” to the art might be that A and B react differently in the presence of F than without it.

                  That option does not avail itself in the computer example, because software is a perfectly predictable art. If you COULD have a situation where the introduction of code F caused the computer to behave in some non-obvious manner you might have a claim. Since that CANNOT happen, the analogous “teaching” is a mere abstract idea – that adding code F to processor A and memory B will result in something entirely predictable – the achievement of F. The only “teaching” there is that F is a desirable thing. That’s just an abstract idea.

                  Consequently, when you’re claiming Code F in a computer context you’re always going to have to argue that F is novel. Now you’re overbroad, cause you didn’t invent F, you invented a single means for achieving F.

                  You simply cannot avoid the fact that one person cannot invent every way of achieving something. He can only invent one way, or at most a handful of ways of achieving it. He is limited to his handful of ways, because the law still needs to encourage the distinct manners of achievement to be disclosed. Just as you cannot write a single book about X (whether X is patent law or fictional wizards) and claim to have written all that will ever be on the subject, you cannot write a single algorithm for achieving F and claim to have written every algorithm for achievement.

                3. Random, but it the program were made permanently part of the computer system and it ran automatically to process user data, like an OS, or a device driver, so that users of the computer system had a different user interface, just for example, wouldn’t you begin to concede that a new or improved machine (as a whole) exists.

                  The problem I see is that no one discloses nor claims software in such a manner, such that it is required to be present and automatically executed.

                4. Our dueling alternate world make Belieb artists on display here.

                  The land of “patents for Oops” meets “phantom law of “automatic.”

                  Guys come visit the U.S. and discuss our actual patent law sometime, ok?

    2. “Of course, the little inconvenient fact remains: Congress did not choose to write the law according to…”

      I wonder how many times these types of claims have to be knocked down before you recognize how wrong you are on this. You need to check the scoreboard, because this “congress sanctioned option” seems to never result in valid scopes. You’ll recall that it was way back during the Alice BRIEFING post I was telling you that functional claiming isn’t per se wrong, and yet the manner it’s widely being done in today always is. Saying 10% of these claims being found not invalid since then would be very charitable to your side.

      You’re like that knight on Monty Python that keeps losing limbs but thinks he’s still in the fight because he only has flesh wounds. Every post you’re making that comment on is a post reporting that the court again found functional claims invalid.

      1. BTW, I remember when it was only the “royal nine” who were ignoring the whims of Congress by not agreeing with your interpretation anon. It appears the treason has spread to the lower ranks!

        Maybe you can find a court that won’t have its patent decision appealed to the federal circuit? Or maybe you can just lobby congress to skip the judiciary altogether and adjudicate your cases themselves. Those seem like your most likely options for someone buying your congressional intent fantasy.

        1. That’s what happens when the Royals brow-beat you.

          Like I have only made reference to such for a few years now…

          (As for the Court writing its own version, you need to pay attention to what is being said as to why that is not a good thing)

    3. anon, I cannot help but notice that since Random and I have been hammering on Halliburton, Perkins Glue, Wabash Appliance and United Carbon that many of the readers of this blog are starting to get it. I would presume these readers just might include professors, clerks, litigation attorneys and the like.

      It also help when guys like the president of the united states has problems with functional claims. The courts tend to take notice.

  23. Agree w/ David. This is a really misleading title and the holding has nothing to do with functional v. structural. Bad. Especially since if there was a “specific mechanism” – a detailed way of performing the abstract claim element – this case may very well have shaken out differently.

    1. sockie: the holding has nothing to do with functional v. structural

      Yes, it does.

      Especially since if there was a “specific mechanism” – a detailed way of performing the abstract claim element

      There was no such “specific mechanism”. It was a purely functional element at the point of novelty.

      But let’s discuss this: in your opinion, how “specific” would the “specific mechanism” for “maintaining information” have to be?

      Would the conventional and specific step of “save the information” suffice?

      How about “save it in the specific place where this other information was saved in the prior art”? Would that conventional and specific step suffice?

  24. Judge Newman: Functional Claim at Point of Novelty => Abstract Idea

    Huh?

    The case does not make that point. It states nothing at all about “functional” vs. “structural” claim language. It doesn’t even use those terms: the only instances of the term “functional” are a literally-verbatim recitation of the word “functionality” in the claim language.

    This case is a straightforward application of Alice, where a claim element was found to be directed to an abstract idea. There is no new general-purpose concept stated in this case; indeed, it is not even notable in the context of 101 law.

    Dennis, it’s clear that you and Jason are advocates of Ned’s positions, but this headline is a complete misreading of the holding in this case.

    1. David, welcome to the “seamless web” of patent law. At times, depending mainly on the claim, the various parts of the patent statute may appear to merge because each of the various parts is important for controlling the kind and quality of the patents permitted by the system.

      There is no new general-purpose concept stated in this case; indeed, it is not even notable in the context of 101 law.

      It’s a precedential decision so it’s certainly “notable.”

      It states nothing at all about “functional” vs. “structural” claim language.

      That may be. It does however say this: [C]laim 1 contains no restriction on how the result is accomplished. The mechanism for maintaining the state is not described, although this is stated to be the essential innovation. …Thus we affirm that claim 1 is not directed to patent-eligible subject matter.

      This is important and you’re surely familiar with the argument if you read the comments here: the recitation of any information processing functionality without disclosing a specific mechanism for achieving that functionality is abstract by definition. “Use a computer” does not qualify as a specific mechanism for the purposes of our patent system anymore than “use a ballpoint pen and paper” qualifies.

      This has been true, by the way, since general purpose computers were invented because they have no non-trivial utility except to carry out information processing tasks. The Federal Circuit and the PTO were slow on the uptake, unfortunately, but finally here we are.

      More to come.

    2. In place of the wildly inaccurate headline and summary, I wish to suggest the following:

      Internet Patents Corp. v. Active Network, Inc.: More Patent Claims Held “Abstract” Under Alice

      …In reading the patent document, the court found that it described the “most important aspect” of the invention is that it “maintains data state across all [browser] panes.” In other words, the basic function of the invention is “the idea of retaining information in the navigation of online forms.” The holding sets forth an extensive analysis of the Alice two-step approach (on pages 9-12), finding the “inventive concept” to be an “abstract idea” because it recites “well-understood, routine, and conventional activity.” The court also found the claims to be overbroad, in that “the mechanism for maintaining the state is not described,” and is in fact “the effect or result dissociated from any method by which maintaining the state is accomplished.” The court also found that the dependent claims “represent merely generic data collection steps, or siting [sic] the ineligible concept in a particular technological environment,” which are insufficient to supply an “inventive concept” and “not enough for pate eligibility.” The court therefore held that the claims provide only patent-ineligible subject matter under 35 USC 101 through the application of the test provided in Alice.

        1. …if one argues that combining chemical mixture a and mixture b and (functional description of a class of chemicals) to create a new mixture, and that new mixture is non-obvious because of the combination, that is okay. The applicant isn’t claiming he invented A or B or the other chemicals, the invention lies in the non-obvious combination.

          Contrast that with a processor running code to do function F, where F is argued to be novel. If function F isn’t claimed in means-plus, it’s invalid because the scope exceeds the possession of the applicant. The applicant here is not claiming a non-obvious combination of well-known code (indeed it’s pretty clear the combination would be obvious), he’s saying his function is new.</blockquote
          Nonsense. Both claims recite a combination of old, structurally-described elements (X) and (Y), and new, functionally-described element (Z).

          Is there a logical basis for distinguishing these claims? Sure: one presents elements that are actually tied together and interacting (software doesn’t do anything unless a processor is executing it), while the other presents an aggregation of unrelated parts, like: “A composition comprising: glue, Cheerios, and a substance that smells like strawberries.”

          Of course, that’s the opposite conclusion that RandomGuy wants to reach, but there is no logical basis supporting his position. On the contrary, the argument tips Random‘s hand – the usual theory that software just doesn’t deserve patent protection. This theory has no technical or legal basis – only preference and opinion – and it has been routinely shot down by the courts for 40+ years, which is why a whole host of people like Random are trying to attain the same result through back-door measures like this.

  25. Is this not better characterized as a “Gist/Abstract” Sword death than by a “PON” death…?

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