Read This: USPTO’s New Examination Guidelines Subject Matter Eligibility Provide “Pathways to Eligibility”

By Dennis Crouch

The Supreme Court’s decisions in Alice Corp v. CLS Bank and Mayo v. Prometheus serve as dramatic turning points in the conventional wisdom of subject matter eligibility.  Inventions that were previously thought to be patent eligible are no longer; and we continue to re-calibrate toward this new normal. The USPTO has found some amount of understandable difficulty in implementing the two step Alice/Mayo eligibility test.  In a chicken-and-egg problem, the test has major gaps in its structure, but the USPTO lacks substantive rulemaking authority to fill those gaps. 

The USPTO’s Office of Patent Examination Policy (under Mr. Drew Hirshfeld) has released a new set of Eligibility Examination Guidelines intended to supplement those released in 2014 with the intent of both educating examiners on best practices and also informing applicants of the agency’s approach. I spoke with Hirshfeld who reiterated that these guidelines are incremental and that the USPTO continues to welcome input from the patent law community.

The July 2015 update builds upon Federal Circuit eligibility decisions made during interim and also responds to user comments.  The guidelines major thrust, however, appears to be its attempt to offer a counterweight against those announcing that “nothing is patentable.” In the words of the notice, the idea is to provide “pathways to eligibility.”  To be clear, the update does not cancel the prior guidance but only serves as a supplement.

Identifying Abstract Ideas and Laws of Nature: “Don’t Get Creative.” Although we know that “abstract ideas” are not patent eligible, the courts have chosen not to provide any crisp definition or description of that set of concepts. As I mentioned earlier, the USPTO also lacks authority to further define that question of law. Rather than guessing at the vast gray areas, the agency is instructing examiners to only find an abstract idea when the concept in question parallels one found to be abstract in a court decision.

“These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent . . . a claimed concept [should] not [be] identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.”

Here, it also appears that the “court decisions” to be followed are primarily those of the Federal Circuit or Supreme Court rather than district courts.

The examples provided in the most recent guidelines include a further focus on business methods and human-mind-activities. , graphical user interface (GUI), and software areas. (This update does not include the most recent decisions such as Versata, Intellectual Ventures, Webb, Internet Patents, Sequenom, and OIP Tech.) The on its guidelines page, the PTO continues to maintain a list of the court decisions.

One way to think about an abstract idea is a concept defined at a high level of abstraction and likely in functional form – here, the PTO does not take that approach but rather continues to define “abstract” as something akin to a category of subject matter that is excluded from eligibility.

The PTO’s Streamlined Analysis: The guidelines continue to promote its “streamlined analysis” for eligibility – essentially a shortcut for examiners when an abstract idea or law of nature is clearly only tangential to the thrust of the claim and therefore that eligibility is self-evident.

Requirement of “Evidence” for Eligibility Rejections:  The most controversial aspect of the guidelines will likely turn out to be the PTO’s decision that evidence is not needed as a prerequisite to an eligibility rejection. “For subject matter eligibility, the examiner’s burden is met by clearly articulating the reason(s) why the claimed invention is not eligible.” The PTO’s reasoning makes sense – eligibility has been repeatedly seen as a pure question of law adjudged without reliance upon any ‘evidence’ beyond that intrinsic to the patent documents themselves. “[C]ourts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings.”

To be clear, the PTO is requiring a “clear articulation” of an examiner’s reasons for rejection, but nothing more is required. Here, of course, the devil will be in the details of what is sufficient to constitute such clarity. To help settle that debate, the PTO has provided a further set of examples and reasoning seen sufficient. Interestingly, however, a “clear articulation” does not necessarily include determining the type of exception (abstract idea, law of nature, product of nature) that is being highlighted – “examiners are not required to distinguish between exceptions which can prove to be difficult.” This approach makes some sense in that the “law of nature” vs “abstract idea” distinction is likely merely philosophical. The one major difference is that both the Supreme Court and the USPTO appear to treat “products of nature” somewhat different. For products of nature only, the PTO includes a “markedly different characteristics” (MDC) shortcut to eligibility.

For further consideration of sufficient evidence, the PTO has also provides a set of worksheets (esp. Worksheets 5-8) that give explanations that satisfy the clear articulation burden. Although not “law,” these worksheets and examples are designed to carry weight with examiners and I would expect applicants to cite them directly in office action responses.

Preemption: I have mentioned this oddity before – although the eligibility test is designed to prevent a single entity from privatizing/preempting an abstract idea or law of nature, the eligibility test does not actually ask whether the invention as claimed accomplishes the prohibited preemption. Here, the PTO repeats that approach – noting that “the absence of complete preemption does not guarantee that a claim is eligible.”

Training: Examiners have apparently not yet been trained on the new guidance, and so someone immediately relying upon the guidance may need to self-educate the examiner. If I had a pending eligibility rejection that does not fit within the guidelines, I would talk through the situation with the examiner in an interview with the hope of having the rejection withdrawn.

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.

150 thoughts on “Read This: USPTO’s New Examination Guidelines Subject Matter Eligibility Provide “Pathways to Eligibility”

  1. Crikey this comments section is filled with below-the-belt irrelevant banter.

    Re the guidelines: I read somewhere on Law360 that Attorney’s are expecting a “wave of rejections” following the guidelines. Whatever that ambiguous statement means.

    Which is a silly point of view b/c we were all facing a wave of rejections anyways. More recently I’ve been getting “Alice 101’d” in super structural areas of tech. The Examiner’s are getting bolder with this Alice non-sense applying where it does not belong and is not relevant.

    Good article, Crouch. That’s a useful point that the PTO is trying to guide the Examiner’s to only rejecting claims/inventions that are similar to past SCOTUS cases. That’s where should really be focusing (imho). . .

    They haven’t been doing that, hopefully they will be more focusing on what “IS” the abstract idea. Examiner’s skip step 1 analysis far far far far too often. And when they don’t, the analysis results sound like: “Oh well, data can serve as an indicators for humans to organize so claim 1 is abstract”….(which leads the patent attorney silent for a few minutes after reading..followed by….”WHATT?????”). (Don’t worry confidentiality-sticklers, that example is off the top of my head and made up. . . but it reflects what I’ve seeing.)

    Another good point of the guidelines that I’d like to point out is one of the examples: link to uspto.gov “Transmission of Stock Quote Data”.

    In that example, the PTO explains to Examiner’s that claim 1 is invalid, yet claim 2..which covers the same invention is VALID. Thus, I think what they’re trying to convey is that the WORDS of the claims MATTER.

    Too often I’ve seen Examiners make up their mind early-on then basically ignore any/all amendments and word changes.

    At least for that point (clarification that the words of a claim actually matter): I think these guidelines are good.

    1. It is odd that the Office is only now dealing with “abstract” when that concept has been around since Bilski.

      1. What do you think caused all the sudden interest? My theory is boredom in patent law. “Everything’s else (more or less) settled, let’s turn to 101.”

    2. words of the claim matter” – is exactly opposite what the Supreme Court has said, and more importantly, what the Supreme Court has done.

      One of the problems then is that NO MATTER how applicants respond to what the Office puts out, NO MATTER how well applicants follow whatever guidelines as they may be, a later Court can just accuse applicants of “mere scrivining” and reject anew, perhaps with another new undefined term, the attempts by applicants to follow either the words of Congress or the words of the executive branch.

      Crikey, maybe we really do need to pay attention to what the Supremes are doing.

  2. Hypothetical #1: Claim characterized by the USPTO as patent-eligible, despite being “functional at the point of novelty” (indeed, functional from start to finish).

    Hypothetical #2: Claim characterized by the USPTO as patent-eligible, despite being “functional at the point of novelty” (indeed, functional from start to finish).

    Hypothetical #5: Claim involving automatically installing BIOS over a network on boot (note: this is basically a precursor to PXE).

    Claim characterized by the USPTO as not just patent-eligible, but providing such self-evident utility that a full Alice / 101 analysis is not required or even appropriate.

    Well, I suppose that about wraps it up for “functional at the point of novelty” as an automatic dealbreaker.

    1. Examples #1/2 are not eligible due to utility. The examples clearly state that they aren’t directed to an abstract idea. That’s confusing enough, there’s no reason to lie about what they said.

    2. I suppose that about wraps it up for “functional at the point of novelty” as an automatic dealbreaker.

      Keep telling your clients that! And be sure to deposit their checks before they educate themselves or find a better patent attorney.

      1. The direct implication here of course Mr. Stein, is that you are either incompetent, a thief, or both.

        Coming from the “master” of “high morals” himself as noted by his always “inte11ectually honest” posts, Malcolm, that should be taken in earnest.

        Or something.

        (Hey, at least he did not directly call you a thief like he did AAA JJ just the other day)

    3. Hey David, please address this easy hypothetical:

      Client comes to you with $50,000 to spend and says she has “innovated” some super desirable and useful information that she would like to protect with a patent claim. Her plan (she tells you) is to obtain the patent and then become a millionaire many times over by licensing the patent to people who want to transmit or store her newly “innovated” desirable and useful information, or licensing the patent to people who use the information for any purpose, or by sueing people who use the information for any purpose without a license.

      Question 1. What do you tell her?

      Next she tells you that she would be fine if the storage, licensing or use of the information was limited to any uses carried out “on the Internet” or via mobile communication through devices such as cell phones, drones, robot cars and a few new trending devices she just read about on the Sleek Shiny Gadgets Blog. You realize quickly that her knowledge of these underlying technologies is roughly that of a middling high school student who’s taken a beginner’s computer science class.

      Question 2: What do you tell her?

      Thanks in advance.

      1. The never ending nonsense of the paid blogger.

        Let’s see with this blog and the other blogs MM posts to that amount to about 300-400 posts a week. At 2 hours that means that he spends about 20 seconds per post.

        But, then the real number of posts is probably 2,000 for 4 seconds per post.

        1. But this “gee, you are protecting information” “argument” that no one but Malcolm advances is somehow not a “common form of argument and is an informal fallacy based on giving the impression of refuting an opponent’s argument, while actually refuting an argument which was not advanced by that opponent.“…

          /off sardonic bemusement

    4. Indeed, David, you are pointing out, almost in a mocking fashion, why Lemley is so off-the-wall incorrect in his analysis of software being claimed as a programmed computer.

      When one is claiming a method, one claim steps. The steps are actions. In terms of machine, they can appear to be functions of the machine but in point of fact they are steps. A program is not really a new machine, but a series of steps that the machine does in executing the program.

      Functional at the point of novelty has nothing to do with claiming steps of a method.

      1. Ned,

        There was no “almost” mocking fashion – this was full on mocking.

        Also (rather importantly), David was not mocking Lemley – he was mocking you.

        FURTHER – you double down on the dissembling by once again knowingly making the false statement that software is an action.

        It is not – no matter how “easy” or convenient anyone (including the courts) use that type of language, the plain hard-core FACT of the matter is different.

        Software is not the execution of software.
        Software is not the thought of software.

        Software IS a machine component and manufacture in its own right.
        Software IS equivalent to hardware and IS equivalent to firmware.

        Your purposeful ignorance should come to an end.

              1. With all due respect Ned – it is you that shows a lack of appreciation of the issues here.

                Understand the basics…?

                Please – you can’t get out of your own way as to what software is, confusing software with the execution of software.

                Try reading again here what David wrote: he SLAMMED you and your pet “Point of Novelty.” You want to get high and mighty about “understanding” when you cannot even recognize the topic of a post.

                You SERIOUSLY suffer from being in love with your own views – everything for you is the “if-it-aligns-with-Ned’s-agenda-it-must-be-Einstein” malady.

                Wake the F up, son.

                1. What is so funny about your post is that you do not even know what my “pet” PON theory is and how it differs from that of Lemley.

                  Lemely is pushing software as a violation of Halliburton, and in this, I think he is wrong for the reasons stated.

                2. What is so funny is that once again you are so wrong.

                  You are now focusing on what you think your differences with Lemley are, and YOU think that everyone else is also thinking like you are thinking.

                  WAKE UP son.

                  No one cares about how you want to compare your “Point of Novelty” canard to what your version of Lemley is.

                  You are BOTH in the weeds.

                  You inserted Lemley here when David did not reference Lemley at all.

                  David’s post was strictly and directly geared to YOUR bizarro fascination with “Point of Novelty.”

                  Period.

                  The fact that you then want to get on a high horse and tell others “You don’t know” is hysterical.

                  A true Quixote figure you make – don’t let reality interfere with that vision of yourself in your own head that you have going on.

      2. Ned: Functional at the point of novelty has nothing to do with claiming steps of a method.

        That’s incorrect, Ned. It depends on the details of the step in question.

        For example, if it’s a “new” machine that’s carrying out the step, then describing that “new” machine in terms of its “new” functionality is just as much a problem in a method claim as it is in an apparatus claim.

        1. MM, there is of course that universal caveat that one cannot claim the invention as a result, not even a pseudo process like a mathematical algorithm.

          As to programmed machine claims, the courts have been construing these to be processes for 101 purposes. The only question that really remains is whether claiming them as apparatus performing a series of machine steps should be formally considered to be an process claim, or something non statutory because it claims a process as an apparatus when no new machine structure is present — a formal overrule of Bernhart would be in order here.

          Such claims seem to violate both 101 and 112(b), 101 due to mixing categories, 112(b) because it is not clear who infringes.

          1. Translation of the Malcolm and Ned interchange:

            Life is grand and beautiful in the Echo Chamber, where reality and inconvenient facts and law never intrude.

            /off sardonic bemusement.

      3. Ned:

        A few comments to clarify what I think of your theories.

        First: You and I are in complete agreement that “actions” should be given due weight, while “results” should not, and about how Lemley’s position is extraordinarily specious. I anticipate that you will concur with much of my recent article about the difficulty in pursuing software patents.

        However – and this is a big “however” – I feel that your perception of the line between “actions” and “results” is extremely fluid, and often applied too aggressively, i.e., if the steps are not specified in extremely rigorous detail, they’re “functional” and therefore “results.” This is a different standard that you perceive for physical structural elements, where an applicant can just say “an engine driving an axle,” and everyone knows what that means.

        Second: “Point of novelty” is a central theme in your legal theories, and yet, I do not see it appearing in any court definition (including the bizarrely mis-titled post about Internet Patents Corp. v. Active Networks).

        I fully agree that both examination and litigation should focus more closely on the elements of the claim that provide novelty and non-obviousness. I stridently do not agree that courts apply any different standard or rules to this “point of novelty.” The claim is to be considered as a whole. Indeed, courts are now taking that “read as a whole” approach to an extreme in Alice analyses, when they dismiss a carefully detailed claim as “basically intermediated settlement” or “basically using rules to model lip-syncing.”

        1. David, the focus should always be on whether the “invention” is claimed as a result. Hard and fast rules need to be avoided as they may or may not be universally applicable.

          Software inventions are claimed as a series of steps. If the combination of steps is the invention, then I see no problem if individual steps are claimed as a result. (However, 112(f) may apply to such steps.)

          I assume you have read Faulkner v. Gibbs? The court has no problem with the elements of a combination claim being functionally claimed if the combination actually is the invention.

          Also, Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968) held that one can claim process that can be performed by a machine while recognizing that one still could not claim a result.

          We will agree to disagree on Internet Patents. There the invention was claimed as a result. That is why the claim failed 101.

          1. Regarding you strident disagreement, have you read Rubber-Tip Pencil, link to scholar.google.com, the case the Supreme Court relied on in Benson, Flook, Diehr, and Alice?

            “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)); ”

            Alice at 2355, link to scholar.google.com

            Thus Rubber-Tip Pencil is central to the analysis of what an abstract idea is.

            Why was the idea that a rubber eraser be attached to the tip of a pencil found to be a violation of 101?

          2. Ned:

            The focus should always be on whether the “invention” is claimed as a result.

            I agree with you in theory – but you and I have disagreed enough in the past about specific cases, that I perceive a significant difference in our application of the principle.

            For me, the line between “step” vs. “result” is: If you recite this language to a person of ordinary skill in the art, would they be able to apply it, as a specific process, without undue experimentation? “Yes” = “step”; “no” = “result.” This xkcd comic expresses my perception of this distinction quite well.

            For example – a claim providing: “upon capturing an image, determine a location of the image” should be regarded as a “step,” not a function. A garden-variety software developer should be able to recite several ways of doing that, like:

            * Upon capturing the image on a device with a GPS receiver, query the GPS receiver for coordinates.

            * Upon capturing the image on a device with cellular radios, triangulate with nearly towers at known locations.

            * Retrieve the exif data from inside the image.

            * Upon capturing the image, compare the IP address of the user with an IP geolocation database, and determine, roughly, where the user is located in the world.

            * Present a local map to the user, and ask the user to indicate the location on the map where the image was taken.

            Because it’s reasonably clear how a software developer might “determine the location of an image,” this claim element is a “step,” covering both these and any other way of determining the location of an image.

            Based on our past exchanges, I imagine that you will disagree, characterizing this as a result.

            We will agree to disagree on Internet Patents. There the invention was claimed as a result. That is why the claim failed 101.

            That’s funny – that is exactly what I asserted, in the comments of that thread, as the correct summary of this case.

            But there is nothing in that summary about “point of novelty,” and there is nothing in that summary about the language being “functional” vs. “structural.” That’s why I find the title and summary to be objectionably incorrect.

            1. David, when one is claiming something “old” so that everyone knows what it is and how to do it, I really don’t think the courts care one bit how it is claimed just so the claim is somewhat clear and definite.

              I don’t think I ever agreed with Dennis’s headline because claiming results is a 101 problem, but functional-at-the point of novelty is a 101 problem only if one is claiming structure by what it does. It does not apply to the steps of a method or process — or when one is claiming software.

              Circling back to Internet patents, there was an additional problem with the claims if one construed them, as did the court, to cover the novel mathematics so that one was no longer claiming a result, and that was that they were not limited to a specific machine.

                1. and to push your “logic” even further, what does the machine weigh when you take away all of the “generic” components?

                  (and shall I remind you yet again of the proper patent doctrine of inherency…?)

                  Further, your highness, are you aware that most all “firmware” nowadays is NO different than good ‘ol plain software?

                  Maybe all of your huffing and puffing, behind the curtain button pushing and dial turning needs “a little dog too” to pull aside the curtain.

                  That is, if such is “allowed” to be put into the comments here…

  3. I already discussed the PTO’s woefully incorrect analysis of claim 1 in Example 23 (see here: link to patentlyo.com).

    The claims presented in that Example bring to mind a broader question: why would the PTO choose incredibly obvious, invalid patent claims to explain eligibility issues to anyone, much less to the crowd of folks who insist (wrongly) that obviousness is the answer to everything? At the very least the PTO should point out when they are using an obvious (or non-enabled) claim to avoid that kind of incitement and confusion.

    After all, the PTO wouldn’t think of using a claim reciting “1. A display of text stating that boiled pigtails can scald your dog’s feet” to illustrate a point about obviousness or enablement. But somehow a claim to a method of “automatically removing overlap of overlapping virtual objects on a computerized display” slips right on through. Give us a break already.

    1. For a guy who only spends about 2 hours a week posting on this site, you sure do post a lot.

      You sure about that two hours?

    2. This post is especially odd coming from Malcolm, seeing as Macolm has in past done exactly what he is complaining about by trying to use non-Useful Arts examples in his own curse-ades.

      1. Macolm has in past done exactly what he is complaining about b

        The fact that you think so is yet more evidence of your inability to read English and your inability to understand the simplest propositions expressed in simple terms.

        1. LOL – more glorious Malcolm self FAIL.

          Contrast this with a post this very day by Malcolm doing EXACTLY as I describe (just six minutes BEFORE his post here):

          link to patentlyo.com

          Great “ecosystem” here – the fertilizer from Malcolm is so deep, there is no “earth” to be found.

  4. Client comes to you with $50,000 to spend and says she has “innovated” some super desirable and useful information that she would like to protect with a patent claim. Her plan (she tells you) is to obtain the patent and then become a millionaire many times over by licensing the patent to people who want to transmit or store her newly “innovated” desirable and useful information, or licensing the patent to people who use the information for any purpose, or by sueing people who use the information for any purpose without a license.

    Question 1. What do you tell her?

    Next she tells you that she would be fine if the storage, licensing or use of the information was limited to any uses carried out “on the Internet” or via mobile communication through devices such as cell phones, drones, robot cars and a few new trending devices she just read about on the Sleek Shiny Gadgets Blog. You realize quickly that her knowledge of these underlying technologies is roughly that of a middling high school student who’s taken a beginner’s computer science class.

    Question 2: What do you tell her?

    These should be really easy questions for patent attorneys to answer in 2015, in spite of the PTO’s tremendous efforts to create nuance where there is none.

    1. You tell her, MM, that but for the unconstitutional actions of a Royal-9 super court, her valuable inventions could have been patented and that she could have become a millionaire.

      You then present her with a petition to ban the Supreme Court Royal-9 from patent cases, and to amend 101 to make State Street Bank the law of the land so that inventors like her, and patent attorneys like himself, can get rich quick by inventing new ideas.

      1. What an arse you are Ned.

        Of course to you – the Court is above the law and screw any actual checks and balances, no matter what Madison or the Federalist Papers (or even your own offered O’Malley link – oops) had to say, right?

        And anyone that dares to not align with your views, well, it is just so convenient to ignore that anyway.

        (That’s not a dialogue – that’s the other thing)

        If Ned and Malcolm had their way, this would be America’s leading source of echoes.

        1. “and screw any actual checks and balances”

          The congress can feel free to overturn their decision statutorily anytime brosef. They appear to be more or less on board from their recent legislations.

          1. Except not, 6 – as I have already captured in a discussion on the matter over on the Ethics side.

            You still are a day late and a dollar short…

            And even BEYOND that, it simply is NOT OK to merely say “well, let Congress fix it”

            You really are a neophyte when it comes to politics and history.

  5. Plain and simple, the Supremes have turned 101 “analysis” into nothing more than a pornography test. . . and I see nothing in this new “dump” as correcting that fundamental problem.

    Furthermore, it is exceptionally frustrating to have one “camp” in the gaming-machines art units (i.e. slot machines) operating under two SPEs who have encouraged certain language to be added and allowed cases over 101 based on that language, and another “camp” operating under two other SPEs who are, apparently, dead-set against allowing cases under with the very same language/concepts present in the claims. Compare, for example, 14/313,140 and 13/732,769.

    In short, eligibility vel non has become nothing more than the luck of the draw as to which examiner you get; sadly ironic and/or apropos of the gaming arts, I guess.

    Siiiiighhhh, now back to my OA response to one of the “won’t-budge” examiners. . . . .

    1. It is not a rule or law but an invitation for any judge to invalidate patent claims for their own private policy reasons.

    2. KenF: it is exceptionally frustrating to have one “camp” in the gaming-machines art units (i.e. slot machines) operating under two SPEs who have encouraged certain language to be added and allowed cases over 101 based on that language, and another “camp” operating under two other SPEs who are, apparently, dead-set against allowing cases under with the very same language/concepts present in the claims. Compare, for example, 14/313,140 and 13/732,769.

      Can you provide the specifics of this magic language, KenF?

      the Supremes have turned 101 “analysis” into nothing more than a pornography test. . .

      So says the disgruntled pornographer.

        1. Methinks I’ve seen your critique many times before and addressed it repeatedly.

          There really isn’t much similarity between “abstractions aren’t eligible for patenting” and “I know hardcore p 0rn when I see it” … unless of course you end up with the short end of the stick (pun intended).

          More importantly, there is a huge difference between regulating what consenting adults can do and see with a test that is (arguably) too stringent, on one hand, and regulating the damage that one adult can inflict on a non-consenting third party with a test that is (arguably) too stringent.

          You’re going to get more clarification in due course. And the chances are excellent that you’re not going to like that clarification. Oh yes: and it’s going to come at you from a number of different directions. And in spite of this warning you will likely react as if you didn’t see it coming and it’s all so unfair. If you doubt me, do a bit of research and you’ll find that all this was predicted many years ago and the predictions came true and they are still coming true.

          The slot machine arts. “But Examiner the prior art had three cherries and we have three personalized icons!” LOL

          1. Your configuration is nothing more than electrons, protons and neutrons, and you did not invent them, nor did you invent the method by which they are attached, and since you are merely trying to have a patent on such ineligible materials, no patent for you.

            Did you see what the logic of others leads to?

          2. Shame on me for not heeding perfesser MM’s repeatedly addressing my critique. How dare I?!

            I haven’t seen such insecurity-driven self-importance since law school and the days at a firm with summer associates. . . . sheesh!

            1. Be aware KenF, that Malcolm considers merely repeating himself as a “real” form of “addressing” counterpoints put on the table of discussion.

              He really does think that clenching tight his eyes, sticking his fingers into his ears and chanting as loudly as he can “nanananana” is a form of dialogue.

              Take your pick of [go figure] or [shrug]…

            2. I haven’t seen such insecurity-driven self-importance since law school and the days at a firm with summer associates.

              Where do you empty wastebackets now?

    3. It actually may be worse than that, insofar as obscenity arises from community and national standards while abstractness lies almost entirely with the fact finder. Even at the margins, the former remains vaguely ascertainable.

      Those in the affected arts will remain in this mess until an appellate court sets forth an objective test for what constitutes an “abstract idea.” A perfect formulation is not required. The idea of preemption seemed like a start but has since fallen by the wayside.

  6. Regretably the question is bypassed why abstract ideas are excluded, apart from the fact that the courts have said so. They identified some types of ideas as “abstract” so they are no patentable subject-matter.

    What is the relation to the constitutional purpose “To promote the progress of science and useful arts”? Some critics (like Machlup, and more recently Meurer) have argued that virtually not any patent fulfills this purpose, but I guess the truth is in the middle (as always). Still economists AFAIK are not prepared to answer the question “which rules make the patent system most effective?”

    As a laywer, I made an attempt in my PhD thesis: Reinier B. Bakels, ‘The Technology Criterion in Patent Law A controversial but indispensable requirement Oisterwijk: Wolf Legal Publishers 2012, ISBN 9789058508621.

    Unlike most (all?) econmists, I do not start from the idea that patents allow “internalization of externalities”, if only because that would be an argument to allow some “abstract ideas” to be patentable as well. My approach is to juxtapose the fundamental freedom of competition with the exclusivity of patents. That leads to reasons why certain ideas indeed are too abstract to be patentable.

    The title of my thesis refers to the (European) technology requirement. But actually the very same arguments apply to the exclusion of abstract ideas under US law, including the tendency to circular reasoning: only technical subject-matter is patentable since courts have defined patentable subject-matter as “technical” in a legal sense (= abstract ideas in a legal sense are those ideas that were identified as non-patentable). My approach is to look for some logical limitation, and then to see whether it relates in some way to the colloquial meaning of words like “abstract” and “technical”. There is actucally a striking similarity between the two. In my thesis, I compare patent law from various European jurisdictions with US law.

    1. My dear economics academic, there is an important point to remember as you dabble in law,…

      Not just law, but U.S. law
      Not just U.S. law, but the intersection of constitutionally provided authority to write statutory law of a particular kind and the constraints imposed by that very same constitution on matters that the Court may address:

      Speaking about separation of powers – and other constraints that the Royal Nine face:

      In other words, it is high time to take a critical look at the Court’s own scrivining and subjective conjectural basis of “may” cause some future harm to innovation and realize that the Court too is not allowed to provide such advisory opinions in its Wax Nose re-writing of statutory law.

      Maybe Judge O’Malley can publish a follow-on piece….

      1. Centuries ago, the French (the inventors of the separation of powers) proclaimed that the courts should be “la bouche de la loi” (“the mouth of the law”). but soon they fund out that this was not a workable principle, and that laws always need some form of interpretation.

        In the 19th century German law philosophers like Von Savigny developed a theory of interpretation methods. Since this is philosophy, not law, it may apply to US law as well.

        Patent law, US patent law included, relies very much on “grammatical” (or “linguistic”) interpretation: it is sometimes like a word game.
        Another interpretation method is “teleological” interpretation, from the Greek “telos” = purpose. Courts may resort to the purpose the legislator had in mind. For US patent law, the purpose is given in the Constitution.
        Is this interpretation method allowed in the US? I don’t know, but I guess that the answer is in asking the opposite: may a court arrive at an opinion that clearly does not meet the (unquestioable) purpose (of the constitution)?

        In the famous Flook case, the court explicity considers economic considerations, and it apparently only refrains from applying such considerations because “Difficult questions of policy con-cerning the kinds of programs that may be appropriate for patent protection and the form and duration of such protection can be answered by Congress on the basis of current empirical data not equally available to this tribunal.” (437 U.S. 584, 595, 98 S.Ct. 2522, 2528).

        Perhap some conclusion can be drawn without empirical data (and must be drawn as far as the future is concerned!) Some of the points Machlup raised in his seminal work from 1958 (link to mises.org) still are very valid today.

        1. and must be drawn as far as the future is concerned

          You are missing a critical limitation of the U.S. court system with a comment like that.

          I suggest that you read again my posts, especially the one discussing separation of powers and other limitations that the Court – a balanced branch UNDER the constitution – necessarily has. You might also want to throw in there some of the Madison and Federalist Papers warning about an unbalance judiciary that holds itself ABOVE the law.

          1. Typically in law, it is unavoidable that courts interpret the law, within certain limits of course. If you argue that the Supreme Court in Flook considered (not applied!) an approach that is beyond its power, then that is an entire new argument, and I am ready to admit that I wasn’t aware of such a limit.

            Let me mention one more analogy with European law. In Germany they are very sensitive about courts “making” law, since courts lack a democratic legitimation. That is due to the turbulent German history we are all aware of. Still German court are faced with the problem that interpretation is unavoidable. So they say that courts are (only) allowed to further develop law (“Rechtsfortbildung”). In contrast, I always thought that Anglo_Saxon courts can “create” law by means of binding precedents, within certain limits of course. Still I know of interpretations contra legem if the statute works out patently unreasonable in certain situations.

            I guess if the legislator is really dissatisfied with an interpretation by courts, it can adopt a new statute explicitly dealing with the particular situation.

            1. Pure C R P Reinier – you need to recognize the difference between common law writing and mere interpretation.

              Take a walk sometimes over to the Ethics side of this blog and try to learn this difference from Prof. Hricik (who by the way has written a book on statutory interpretation – the subject you are C R Ping on).

              Then pick up the reference that Ned Heller himself supplied by our Judge O’Malley to see what is going on with the philosophical calls for our Court to stick its fingers into the 101 Nose of Wax.

              Then realize just how off you are with your ratehr immature notion that U.S. Court can trump sttutory law at any time they feel like it (you might enjoy the fictional movie of The Paper Chase and the comment at the hour and six minute mark).

              Then, as suggested previously, read up on Madison and the Federalist Papers about the danger of a judiciary outside of the balance of powers that is the separation of powers and the danger of a view of a Court ABOVE the law.

              Finally, you might want to contemplate the fact that ALL of these points have long been clearly made, and that it is ONLY by a purposeful and continued disregard that the very same fallacious arguments continue to be made by the very same people.

              1. Can you please answer my concrete question whether the courts (CCPA/CACF and SCOTUS) have exceeded their competence in your perception? Note that in Flook the court in the end did not apply economic arguments – if for different reasons.

                I don’t think this “point has long been clearly made”.

                And from a practical perspective, even if the Supreme Court was always completely wrong, their opinions are a given for practitioners. Complaining the becomes like complaining about the weather: it may relieve you, but it does not help at all.

                Again: enjoy your weekend!

                1. Can you restate your question on “competence” and what Flook did NOT do? It is not clear what you think you asked (concretely or otherwise).

                  As to “complaining about the Supreme Court” – more pure C R P from you.

                  Also covered over on the Ethics side of the blog, at one time I believe, was a story about just how often the Supreme Court has been reversed – in a number of different manners.

                  So please take your temptation of a Chamberlain peace for our times and kindly stuff it. I am more of the Churchill kind of guy.

                  And lastly, have a great weekend too!

    2. Reinier, do you ever deal with reality? You know reality? You are abstract and should be invalidated for being so far removed from anything that actually occurs in the real world.

      1. He is a foreign economic academic with a known and pervasive bias who does not comprehend with enough particularity the subject matter upon which he wishes to comment.

        Everything he posts must go through that filter.

        1. What I find so disturbing is that we continue to get further and further from reality.

          Of course, the latest judicial activism front is functional claiming. And, yet, the anti-patent crowd deny that functional language is used by those skilled in the art.

          Moreover, we recently had module to be held to be a nonce word. By the way, this is exactly the opposite of what it is. A nonce word is a word that is made up for a special one off purpose. Module has a technical definition that is used constantly by software developers.

          So, no realty. Judges now can just say the sun goes around the earth. A lot of it is because Obama appointed a group that as a whole is ignorant of science. At least 5/7 of his Google horde.

        2. Anon always blames me for my alleged bias, and I have give enough arguments in the past to show that my views are not to be contributed to “bias”. Please judge my writings from their consistency, not from my background or alleged bias.

          Yes, I am academic, and I address this topic from a different perspective than perhaps a patent agent. I guess a different perspective might be interesting at times, in particular if US law is compared with foreign law. Of course, that law has no direct effect on US law, but foran investigation of the structure of law comparisons are very useful.

          Of course I understand that practitioners have less freedom to consider alternatives. But then I see a paradox: some of current patent law is patently dissatisfactory, like the perception that non-patentable subject matter is equated to abstract ideas. Would it be impossible to improve the law due to binding precedents?

          1. >Yes, I am academic, and I address this topic from a different perspective than perhaps a patent agent.

            Cute putdown. I have worked and formed start-ups. I am a patent attorney. I have worked in a large international corporation as a product manager that included buying start-up tech. I’ve sat in a room and discussed how a V.P. of a large international corporation was going to double the number of patent application. Clue it involved massive spending in R&D. Patent prosecution work is a tiny fraction of the budget.

            Reinier, what I am saying is that you have no idea what you are talking about. Get some real world experience and you will see that patents are the cornerstone of the innovation engine.

            1. It is expressly NOT that he has “no idea,” but rather, that he does have an idea and an animus.

              He keeps on not wanting to own that animus, when it pervades his viewpoint and his writing.

              Reinier, I do listen carefully to what you say – to ALL of what you say. I then take what you say and use the context that you yourself have placed on your life’s work. My comments are to be taken in that total picture.

              I do this because you are a much better liar than most other anti-patent people. You do seem to recognize the power of using a kernel of truth. Your problem is one of then taking that kernel and your bias (which is just NOT separable), and then using “comparative” and non-law economic/philosophic venues to attempt to portray US law as something that it is not – you continue to lack the respect for our sovereign, our constitution, our Rule of Law.

            2. I accept that you are a hot shot in the patent world, with an experience I do not share.

              But should that prevent me from discussing the boundaries of patent law? It is perhaps unpleasant that patent law has limits at all if you are trying to amass as many patents as possible, but if you client is fighting against someone elses patent you’d wish that “nothing” is patentable.

              I feel that in the patent world there are lots of islands of peopel not talking to each other. Even within the academic world. Economists and lawyers are not prepared to talk to each other. Then there are the patent offices, the patent agents, the attorneys, the courts. And last but not least there are the firms.

              I am trying to contribute from my side. Lack of broad experience is not a reason to blame me for perticipating in this discussion. Making invalid arguments is. So tell me what is wrong about my statements.

                1. Your smarm is unwarranted Reinier – you are both under-understanding and overreacting to what I wrote.

                  Nowhere do I say that you cannot express your views – I do say that your views do need a filter to account for your bias (which you never want to seem to own, but only too eagerly allow to infest your views).

                  Wake up son.

            3. Reinier, regarding “anon” being a hotshot, I would suggest that you would find a much more pleasant experience here if you would is simply ignore his posts like most of us do. Don’t even read them.

        3. “anon” He is a foreign economic academic

          “Those darn ferners! Where are the economists from Merka? And I mean Actual Merka, from the god fearin’ part of the country not the hedonist coasts with their elitist ivory towers and oily French food! Blah! GET OFF MY LAWN!”

    3. You are right that abstract SHOULD BE tied to the Constitution despite the Royal 9’s attempt to act as if abstract were an article of the Constitution.

      So, tell us what evidence is there for Alice? Tell us? The reality is that the Royal 9 read rags and watch movies and form their ideas based on the popular press. And, then they have made findings of fact without any evidence beyond their reading the NYTimes.

      The reality is that Alice is not Constitutional. The “judicial exceptions” are not part of the Constitution but have been fabricated by the Royal 9 and now have a life of their own. There is no abstract exception in the Constitution.

      And your homework is to figure out then how and when such a judicial exception can be used.

      1. I’d guess that the link between abstractness and the constitution is that patents for overly abstract ideas would not fulfull the constitutional purpose “To promote the progress of science and useful arts”. They would have an excessive scope and protect things the applicant hasn’t even invented (see O’Relly v. Mose).

        Most patent statutes I know of have a (statutory) list of exclusions, e.g. Art. 52-2 EPC:
        2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
        a) discoveries, scientific theories and mathematical methods;
        b) aesthetic creations;
        c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
        d) presentations of information.
        Subsection 3 says: “Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein
        only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”
        (Italics added by me) Strikingly, there used to be similar judicially created exceptions in US law: b) corresponds to the “mental steps doctrine” (see “In re Prater II, 1969) and d) corresponds to the “printed matter doctrine”. a) corresponds to the exceptions the usually are mentioned in one breath with the “abstract ideas” exception: natural phenomena and laws of nature. Why aren’t the other doctrines used anymore?

        So the question to answer whether “as such” applies. Note also that the list is non-exhaustive, due to the words “in particular” in the heading.

        But the good news is that most of these exclusions correspond to exclusions in patent law of most jurisdictions.

        Talking about the statute, is it appropriate to exclude “insignificant post-solution activity”and not consider the patent application as a whole? Claiming truly irrelevant features is against the law, so al features have some function.

        Should Alice’s patent have been upheld? The firm seems to be a troll (see its website sayng that patent litigation is one of its business objectives!) extoring money from CLS. So the challenge is to relate that observation to the law. I guess the “mental steps doctrine” is a better reason to refuse business method patents.

        1. You are “guessing” the link and missing the exact point of the thread on which you are commenting….

          (And when you toss in other sovereign’s law and make it seem that since other sovereign’s have so decided then it must be so in the U.S., you are mucking things up instead of aiming for clarity – and at the same time not respecting our sovereignty and the fact that our sovereignty has chosen differently.

          1. Please apologize for placing my response under the wrong thread.

            It is really pereposterous to blame me for “not respecting sovereignty”.

            Starting from the comment (not mine) that putting all exclusions under “abstract ideas” is not full satisfactory, I noted that in US law(!) there are some nearly forgotten doctrines very similar to EPC rules.

            The British government published in 1970 the “Banks Report” on patent policy saying that most patent statutes exclude a similar list of subject-matter.

            It appears that perhaps some subject-matter logically does not fit in a patent system.

            Incidentally, a similar list is included in the Patent Cooperation Treaty to which the US is a party.

            1. It is absolutely NOT preposterous when you repeatedly place comparative views as EITHER superseding a sovereignty, or as a befuddling mechanism to obscure what a sovereign has chosen.

              The tendency (still) for the preposterous is yours.

              The mental steps doctrine is likewise a doctrine of ill repute – having been mangled by history and those who have plied that doctrine in an attempt to insert a political/philosophical dogma at odds with innovation. To this point, my favorite word of “anthropomorphication” is apt.

              1. Again I learned some new English words. These conversations are very instructive to me. The word “befuddle” is not even in my dictionary, but Google helped me.

                You aren’t arguing that I exceeded the freedom of speech? I always thought that this freedom is all but absolute in the U.S.

                Perhaps a comparative approach to law is not as common in the US as it is elsewhere, it is a recognized method, basically to see how the “neighbours” have solved a particular problem. And some people believe that there is a need for wordwide harmonization of patent law, although that is controversial since sovereign(!) countries are entitled to adopt their own patent laws. It is not a “human right”.

                The (equivalent of the) mental steps doctrine is relevant insofar that it is the reason in Europe to reject most business method patents. I guess you believe that all business methods should be patentable, since the legislator has not forbidden them. On the contrary, some people believe that the legislator recognized business method patents in § 273 (but the legislative history does not confirm that perception).

                Anyway, the common perception is that patentability is not unlimited. I leave it to you to defend another position, but I accept what the courts have said for nearly two centuries.

                And then the mental steps doctrine (as interpreted in <In re Prater and Wei II) may give an easier to understand reason to exclude certain subject-matter that the utterly abstract and virtually circular concept of “abstract ideas”. The aim is clarity. Is that a wrong reason?

                “Anthropomorphication” – yet another new word. How grateful I am.

                1. Of course I am not denying you a freedom of speech. It is beyond preposterous to continue to imply that.

                  I AM pointing out though that your speech comes part and parcel with a deep and long standing anti-patent bias. That you continue to attempt to distance yourself from that bias (but not from the viewpoint itself) is disingenuous. You simply are not objective, but you want to pretend that you are.

                  I “get” the value of comparative analysis. You keep on wanting to paint the picture that I see no value in it. That is clearly not what I pointing out, though. Thus, you continue to attempt to divert the point that I am making into something else.

                  Quite frankly, your attempt to insert mental steps relevance into U.S. law by saying that it IS relevant in other sovereign law once again attempts to ignore what U.S. law is.

                  Your guesses continue to miss the mark because you continue to attempt to see our law through your desired end.

                  There is no “wrong” in wanting a clarity or having the aim of clarity. You continue to prevaricate by inserting this fallacious argument as support of your means. It is absolutely wrong in the means you attempt to foist that “clarity” that you want to have by the means that you are attempting. You simply try too hard to use a “well everybody else is doing it” type of “logic.”

                  As my friends in Boston say (a local phrase): “You can’t get there from here.”

                  Maybe once you realize that your phrasing is lacking, that if you were to simply admit as to what our law is, and then phrase the changes you would like to see, and stop pretending that your bias is not real and present, we could make some progress in our dialogue. Instead you seem intent on painting my comments as incorrect when they clearly are correct.

                2. Your view of Section 273 is dead wrong, by the way – legislative history does in fact confirm the category of business patents is covered by the words of Congress – just like (EXACTLY like) any other category of type of patent art field.

                  You slip into the same subtle word game that Ned Heller attempts (but has been refuted) to play: conflating the meanings of “as a category” and “categorically” or “per se.”

                  You also slip into the mistake of ignoring what happened in 1952 with your “two centuries” comment (attmepting to bank on a fallacious “authority”). The Court’s ability to use common law to set the definition of “invention” ended with that Act of Congress. Congress was moved to so act because our Court (mirroring the present near term history) had become TOO anti-patent, and the Nose of Wax that was “invention,” “gist of the invention,” inventive gist,” or any of other of a dozen or so phrases was shown to be NOT consolidating the law into a clear view as Congress had hoped with the original sharing of its authority, but, like today, had degenerated into an unworkable morass. I suggest that you spend a little more time on your legislative history around just why section 103 was created, as this was the carve out from the single pre-1952 paragraph of what became our actual section 101.

                3. It is ONLY by “fudging” the lines and invoking a lack of clarity and blending current day 101 with 103 and 112 that you can arrive at the desired power of the pre-1952 Court cases.

                  Read again the post-1952 Supreme Court cases and see how slowly, subtly, but nonetheless visibly the grab of power back to pre-1952 levels has been. From the rather obvious dicta to the insertion of “implicit” to the insertion of “explicit” all the while “claiming to give deference to Congress, but not really doing so.

                  Look then at all the noise here from those that do not want to notice that the Emperor is not wearing clothes – the amount of Chamberlain like “patent piece(s) for our time and “hush, don’t challenge the (royal) Court” and compare to my more in line with what U.S. attorneys are actually sworn to uphold and a Churchill DO question those Supremes when they do violate the separation of powers and write patent law through the mechanism of common law.

                4. …and another point you seem intent on ignoring (just like Ned) is that your view is the same view that cost Justice Stevens his majority position in Bilski, and the same view that has seen a drop in support, from 4 to 3, in subsequent Court cases.

                  I need not “defend” a position that is just not even made by the Court itself. Your subtle call is thus a fallacious one.

                5. Re § 273, read Edward R. Ergenzinger Jr, ‘The American Inventor’s Protection Act: A Legislative History’, 7 Wake Forest Intell. Prop. L.J. 2006-2007, p. 145-172.

                  Unlike patent law in other juridsictions, there was no “prior use” regulation in US Patent Law. The US legislator decided to solve this problem first where it was believed to be most urgent: in the field of buinsiness methods. yes, you may construe a recognition of business method from this provision, but that was not the intent of the legislator.

                  Incidentally, “business methods” are a rather vague category, State Street mentions (agreeingly) that examiners had difficulty in identifying business methods.

                  if I say that the mental steps doctrine is perhaps a better reason to exclude some subject-matter I am afraid you will get a heart attack and fill Denis Crouch’s entire server with accusations to me.

                6. …but before you get yourself all in a tizzy about a response to the mental steps doctrine, I suggest that you refresh yourself as to exactly what that doctrine means over here in the U.S., and why that doctrine is especially inappropriate.

                  I need not “accuse” you of anything if you don’t do your homework first and merely want to take a soundbyte approach to the legal doctrine.

  7. The most controversial aspect of the guidelines will likely turn out to be the PTO’s decision that evidence is not needed as a prerequisite to an eligibility rejection.

    The Supremes performed every 101 analysis on their own without kicking back to find facts by a PHOSITA. Most 101 analysis rely upon common sense, which doesn’t need factfinding. A 101 rejection is not a 102 rejection. There is some need to determine conventionality but they simply are not the same.

      1. …I think that even Ned might get upset with you as an examiner pretending to have the same power as an Article III judge….

      2. You are not a court

        That’s true, I’m capable of both finding facts and making holdings. I have more power to engage in a 101 analysis than the Supremes do.

        Scoreboard.

  8. It is surprising to compare updated Appendix 1, Example 23, claims 1 and 4. The claims are nearly identical, except that claim 4 recites additional limitations. So claim 4 is narrower than claim 1.

    In the analysis, though, claim 1, the broader claim, is deemed non-abstract, while claim 4, the narrower claim with more limitations, is abstract. This is evidently because the added limitations are deemed “mathematical algorithms.”

    Maybe I’m misreading this. But if not, it’s counter intuitive that you could make a non-abstract claim into an abstract one by limiting the claim from encompassing all algorithms that achieve a goal to a a specific set of algorithms that achieve the goal.

      1. Yeah. And that’s a good point: 1 passed as non-abstract, and 4 passed as having significantly more. So the result is the same.

        The difference in step one of the Mayo test implies a strange use of the word “abstract. A genus is deemed non-abstract while a species is abstract, then the species is saved by adding significantly more.

    1. There’s an error there somewhere, JoshT, because the summary of this Example states: “Claim 1 demonstrates a claim that is not directed to an abstract idea. … Claim 4 recites an abstract idea, but there are additional limitations in the claim that amount to significantly more than the abstract idea.”

      More importantly, the analysis with respect to claim 1 is certainly wrong and illustrates how useless (worse than useless, actually) these “guidelines” here.

      Here’s the claim:

      1. A computer‐implemented method for dynamically relocating textual information within an underlying window displayed in a graphical user interface, the method comprising:

      displaying a first window containing textual information in a first format within a graphical user interface on a computer screen; [<-old]

      displaying a second window within the graphical user interface; [<-still old]

      constantly monitoring the boundaries of the first window and the second window todetect an overlap condition where the second window overlaps the first window such that the textual information in the first window is obscured from a user’s view;

      automatically relocating the textual information, by a processor, to an unobscured portion of the first window in a second format during an overlap condition so that the textual information is viewable on the computer screen by the user; and

      automatically returning the relocated textual information, by the processor, to the first format within the first window when the overlap condition no longer exists

      The computer moves stuff around “automatically”, you see. WOW! Who could have imagined?

      Here’s the PTO’s trainwrecked analysis:

      The claim does not recite a basic concept that is similar to any abstract idea previously identified by the courts.

      Because the PTO is incapable of using reason to understand the fundamental issues and apply them to sooper dooper techno concepts like “moving stuff around” …. (unless it’s trying to make it easier to obtain a patent, of course).

      For example, the claim does not recite any mathematical concept or a mental process such as comparing or categorizing information that can be performed in the human mind, or by a human using a pen and paper.

      I’m pretty sure that determining whether one thing is overlapping something else is a mental process that animals — including humans — have been carrying out for millions of years.

      Moreover, the idea of “automatically” moving some overlapping computer-generated and ineligible virtual objects appearing on a display screen is not “significantly more” by a long shot. On the contary, this claim screams “junk” about as loudly as a claim can, from multiple directions. Heckuva job, PTO.

      1. So then you (and Ned, and the rest of the Echoes) probably don’t like the example of pure software being eligible, eh?

        😉

        1. PTO Carnival Barker: “Come one, come all! You want patents, we will get you patents! Any kind of patent you want! Math, Software of all flavors, Stuff Written on Paper… You dream it up and we will make a patent happen. Patents, people! It’s innovation! Just pay the man in the booth and we will make your dreams a reality.”

          Its nice to see that the PTO is still giving handouts. Worthless handouts if they ever reach a court, but if all you care about is keeping clients’ money coming in the door, maybe pleasant ones in the meanwhile.

          This will not end well.

            1. Post-Alice issued patents will be, and should be treated differently by district courts than those issued pre-Alice.

              I wouldn’t rely too heavily on courts continuing to invalidate patents granted post Alice. Judges are by nature CYA masters who don’t want to be overturned. They will only stick their necks out so far, and pushing your anti-patent fantasies isn’t on the agenda.

  9. “To be clear, the PTO is requiring a “clear articulation” of an examiner’s reasons for rejection,”

    My application was rejected on incorrect and absurd reasoning. The examiners should have jailed for fraud.

  10. First order of business to any examiner:

    Define “abstract” – while following the directions you have been given to stay with the Judicial writings.

    Much to Malcolm’s chagrin, those writings expressly do not include: consult the dictionary. If the Royal Nine wanted that, they should have stated that.

    They stated something expressly different.

    1. If you’re suggesting, “anon”, that the Supreme Court intended the term “abstract” to be unamenable to definition and that the use of dictionaries to understand the term was off limits, I’d love to see your support for that statement.

      But more the point, Mr. “Principled”, there are no legally defensible interpretations of section 101 that would authorize the claiming of “abstractions” or quintessential examples thereof which would certainly include “information.”

      As ever, it’s hilarious to watch you and your cohorts pretend that information is eligible for patenting or — worse — pretend that there is something unseemly about coming right out and saying so. We all know what your problem is. And we all know you’re hardly alone in your echo chamber. We also all know that it’s your views that have been endlessly smashed down here by all sorts of reasonable people, including the Supreme Court. That’s why you and your cohorts have nothing to say except to stamp and your feet and demand that the Supreme Court be taken out of the game. But that’s never going to happen — something else that we all know.

      Please keep the laughs coming.

      1. The Supreme Court said: Look at our prior case law and figure out for yourselves what an “abstract idea” is. I’m not sure what other evidence you need. Did you want them to come out and say: Oh, and if that wasn’t clear enough, don’t just pull out a dictionary, look at our prior cases like we just said.

        Love that joker!

        1. Jared, the Supreme Court is as conservative as it gets in its rulings. It decides cases, and does not generally lay down broad edicts. That is to their credit.

          Its cases since Funk Brothers and Benson, and the cases it cites for support, including Le Roy v. Tatham, Morse and Rubber-Tip Pencil, point in a direction that one can follow with some ease.

          Laws and products of nature are not patentable, but applications of them are.

          Principles in the abstract (ideas) are not patentable. Application of he principles are.

          Novel subject matter that clearly are not statutory are not made statutory by surrounding them with the conventional. Information, for example, is non statutory because it relies on the meaning. But applications of non statutory subject matter to physically improve the statutory is patentable.

          The court does not appreciate the elevation of form over substance, and recognizes that one can festoon a claim with stuff, otherwise patentable, that give a patina of eligible subject matter. That is why it developed Mayo and Alice to determine whether the claim was really directed to ineligible subject matter or an otherwise patentable application.

          All common sense, and predictable.

          1. It is not to any court’s “credit” to perpetrate the jurisprudential fraud of a legal rule with no standard other than gesturing like apes to prior fact patterns and then declaring “close enough”. We don’t know how close is “close enough” because no one ever defined “abstract” in any meaningful way except possibly through the doctrine of preemption – which, having been thrown under the bus, is now antiquated.

            You have an exceptionally strange idea of what it means to be “conservative” and your concept of “credit” is, to put it gently, peculiar. On the other hand, you’re the sole abstract idea cheerleader on this site who is remotely worth a response.

            1. Tour, how can they define abstract? It is a placeholder for both non statutory subject matter and subject matter that is claimed at the level of an idea.

              I know the court has often debated whether it is better to provide clear rules or to develop the law case by case. With 101, it has chosen the latter as a matter of caution.

              I say what I say about what abstract means because we have a good selection of examples since Benson. We also have the founding cases that the court references that include Le Roy v. Tatham, Morse, Rubber-Tip Pencil and even Nielson, the English case described in Websters patent cases. All of us need to read these cases, understand them, read the debates between the majority and the dissent where applicable to see what was decided and how.

              Even Rich recognized that one could not claim a result — but he would have relied on 112 — undue breadth. But the Supreme Court has chosen to place the issue under 101 based, I think, on Rubber-Tip Pencil.

              Anyway, I would recommend to everyone to read these cases because they really help understand where we are today.

              1. to develop the law case by case. With 101, it has chosen the latter as a matter of caution.

                Tell me Ned – are you a lawyer? Why do you think that this admission by you is so damming?

                Are you aware that the U.S. constitution did not allocate law writing capability to the judicial branch for the particular statutory law that is patent law?

                Speak up Ned.

          2. You do realize that the Court expressly does not have common law writing capability for this section of law, right Ned?

            You are an attorney, right Ned?

            You do understand the difference between statutory law and common law, right Ned?

            Can’t hear you Ned.

              1. Not likely Ned – not likely at all.

                You do realize that your silence to the counter points I present hurts you, right?

                Amazing how you find it not possible to engage in an inte11ectually honest dialogue, isn’t it? Do you really think that that goes unnoticed? It’s like a beacon to your monologuing internet style shout downs, screaming out that you just don’t have answers.

                But hey, go ahead and pretend otherwise – you only hurt yourself.

                1. You do realize that your silence to the counter points I present hurts you, right?

                  That’s funny and sad at the same time.

                2. “anon” You do realize that your silence to the counter points I present hurts you, right?

                  Behold the devastation!

                  LOL

                3. Misdirections abound – and yet, the discussion points I put on the table remain unrecognized and not integrated into the merely repeated monologues…

                  And the Merry Go Round continues.

          3. Tell me Ned, – what is the statutory difference between your own words of “Application of [t]he principles are” and the Court’s insertion of “Just apply it is not enough“…?

            You seem to be saying that applying it IS enough – explicitly so. Did you leave something out? Are you WRONG? Is the Court wrong? You both cannot be right, now can you? Where did the Court get this “not enough,” as surely, this is NOT a statutory law item, is it?

            And yes Ned, by all means, if this line of questioning is too inconvenient for you, if you are too embarrassed by not having answers to this simple line of questions, by all means stomp off in a huff and feel free to ride that Merry Go Round to the next occasion that these simple questions will apply every bit as aptly as they do now.

        2. The Supreme Court said: Look at our prior case law and figure out for yourselves what an “abstract idea” is.

          They also used the term “abstract.” Was that term chosen randomly? Was it chosen because it’s sort of close to the front end of the dictionary?

          Of course not. It was chosen because it’s the opposite of the concrete and tangible innovations that the patent system was designed to promote. The patent system wasn’t designed so people could own useful data or useful facts. Nobody has a reasonable argument to support such a proposition. That’s why Prometheus v. Mayo was a 9-0 decision that will never, ever be overturned.

          The question presented by these guidelines is what on earth is preventing the PTO from educating its “customers” about this basic stuff. A lack of “authorization”? Spare me

          1. That term existed in Fed Ct case law. Thomas was unable to articulate anything more intelligent or descriptive. Conundrum solved.

          2. “The question presented by these guidelines is what on earth is preventing the PTO from educating its “customers” about this basic stuff. A lack of “authorization”? Spare me”

            The PTO’s “customers” have zero interest in being “educated.”

            That would be bad for business.

    2. Hey Anon, I want to get a software patent that makes the computer run faster. Can you prosecute it for me.

      Claim 1: A machine executable code that makes the machine run faster.

      1. Davis,

        If your point is that you can make a b0nehead nebulous statement that shows that you do not appreciate the difference between eligibility as dictated by 101 and patentability as dictated by the rest of the statute, congrats – you have achieved that point in spades.

        Your claim one is most assuredly patent eligible. If you were my client – and let’s be clear that you are not – the very first thing we would need to do is teach you why your attempted point is so very vap1d.

  11. I am sure Greg A could come up with some more even colorful language…

    Did Greg ever figure out the issues in Prometheus v. Mayo or is he still struggling with that one?

  12. DC: The guidelines major thrust, however, appears to be its attempt to offer a counterweight against those announcing that “nothing is patentable.”

    Because the people who say such ridiculous things are invariably super serious and thoughtful! They aren’t just thinking of themselves. Nope.

    As I mentioned earlier, the USPTO also lacks authority to further define that question of law.

    The PTO has plenty of authority to use common sense and reason (not to mention the dictionary) to explain the fundamentals to people, even when those people are determined not to understand the fundamentals.

    Surely you aren’t suggesting, Dennis, that the PTO lacks “authority” to remind applicants in no uncertain terms that “information” isn’t eligible subject matter, and patents that protect information — in any field –are therefore ineligible. If you are suggesting that the PTO’s hands are tied to that extent, I’d like to know why you believe that.

    Also, I’m sure it hasn’t escaped everyone’s attention that when it comes to interpreting DDR Holdings suddenly the PTO has all kinds of “authority” to extrapolate beyond the facts — without any hesitation — on spite of the fact that every serious patent attorney knows the decision is ripe for decimation (are the deadlines for filing a cert petition all passed?). In fact, the PTO was basically told that it must perform that extrapolation for the benefit of its clients who want to patent “do it on the Internet” junk and can’t figure out what magic words to use. Fascinating, isn’t it?

    This approach makes some sense in that the “law of nature” vs “abstract idea” distinction is likely merely philosophical. The one major difference is that both the Supreme Court and the USPTO appear to treat “products of nature” somewhat different.

    That’s because “products of nature” and “laws of nature” are different as a matter of indisputable fact, whereas “laws of nature” (like any other fact) is just an example of a particular kind of abstraction (albeit an very important and useful kind). If anyone is confused by this, just realize that a product of nature can be weighed on a scale and physically transformed into something else. Those aren’t features of “facts”. Basic stuff.

    although the eligibility test is designed to prevent a single entity from privatizing/preempting an abstract idea or law of nature

    That’s actually not the case. Eligibility is designed to prevent not only that kind of pre-emption but also the pre-emption of fundamental building blocks by the action (concerted or otherwise) of legions of lowest level “innovators” filing millions of patent claims on specific abstractions relating to a particular technological context. If you are confused by this, please understand first that a patent claiming “every use of correlation X to determine Y” is just as ineligible as a patent claiming “the use of correlation X to determine Y in this tiny pre-exisiting (public, non-proprietary) context”. The reason both claims are equally ineligible is because allowing claims of the second class to be eligible leads inevitably to the non-proprietary context being tied up by patent trolling types “innovating” millions of new (and ineligible) correlations in every field where correlations are useful (that’s a lot of fields — I’m happy to list some in case anyone doubts this).

    Information isn’t protectable with patents. Information isn’t protectable with patents. Information isn’t protectable with patents. It’s amazingly easy for most people to remember and understand this fundamental rule (it’s just a few patent attorneys and law professors who seem to really struggle with stating it outright for reasons we can only guess at).

    Similarly disappointing is the PTO’s failure to provide some clear examples of the likely ineligibility of certain classes of claims. There doesn’t need to be long-winded explanations. Plain spoken reminders of the obvious will suffice. For example, just come out and say that if the key limitation distinguishing your “innovation” from the prior art is not (1) a novel physical structure described in objective structural terms or (2) a step(s) leading to a previously undescribed or unexpected physical transformation of matter, then there is a really good chance that the claim is ineligible. Period. That’s a perfectly accurate statement. Why not just come out and say it for cripesake? Then point out examples of limitations that show up all the time in filed claims, e.g., claims that differ from the prior art only in the legal status (e.g., “copyrighted”) or some other abstract status (e.g., “confidential”, “public”, “available for purchase” “previously viewed”) that is technologically meaningless and has no place in a sane patent system. Why not just come out and say it? The PTO can do itself and everyone else a big favor. Instead it bends over backwards to accomodate the interests of unskilled people who simply want to “get in on the action” and ride off the technological innovations of others. Why?

    1. You don’t have a real job, where you counsel real clients, do you? The mere fact that you can take the time to write such a long post (and are constantly here, writing many of these posts) means to me you don’t counsel clients. If you did, you wouldn’t have the enormity of time you spend here.

      I used to believe it was just banter for people to say you’re a paid blogger. Now, I’m getting close to believing it’s true.

      1. I used to believe it was just banter for people to say you’re a paid blogger. Now, I’m getting close to believing it’s true.

        How much am I being paid in your awesome imagination?

        1. …and in the days that the blog system here was using the Disqus system, he opted for maximum privacy – for someone who constantly screams about not protecting “information,” his actions screamed something else.

          Insert [shrug] here.

          1. he opted for maximum privacy

            I was hardly the only one who did that.

            for someone who constantly screams about not protecting “information,” his actions screamed something else.

            Right. The “something else” was “I don’t want to wake up one night and find ‘anon’ in his Batman underoos taking a leak on the side of my house.”

            1. Whether or not you were the only one is quite besides the point (and I noticed that it was your like-“minded” echoes that joined you – yes, you were the first).

              The lowest privacy option afforded ample protection of your “information.” You should know this because I told you and asked you to explain why you wanted more than that.

              You did not give a credible answer then. You still haven’t.

              Go figure that.

              1. …by the way, this is closely aligned with the challenge thrown at you by Dr. Noonan at PatentDocs. How is your “battle of transparencies” coming along?

                It is rather humorous how tightly clenched your eyes are when it comes to your silly antics, my friend.

    2. The problem with what you call claiming “information” is that most claims do not claim information, rather, they claim a series of steps or an apparatus that uses information. The courts have made clear that the limitations in the claims no longer matter. I am tired of Courts treating method claims the same as apparatus claims. They are not one and the same and they shouldn’t be treated the same.

      1. Rand, there is a difference between protecting information and a process that produces a new physical result.

        Flook ended in a calculation. Diehr applied the calculation. Mayo ended in a number.

        Two of these cases protected information, one did not. Do you see the difference?

        1. Ned,

          Let remind you yet again, that the Court itself in Bilski clearly stated that Diehr cabined Flook.

          You keep on wanting to pretend that Flook can be taken fully at what it says regardless of the historical change impacted on that decision by Diehr. This is clear and plain legal error.

  13. “In a chicken-and-egg problem, the test has major gaps in its structure, but the USPTO lacks substantive rulemaking authority to fill those gaps. ”

    No it doesn’t. Only the prevailing “interpretatin’ ” thereupon has major gaps in its structure. The “test” itself is quite tight. Any gaps are tiny tiny tiny.

    1. To use your venacular, 6, if the Pressy had any balls he would have thrown the whole gapping mess back at the Royal Nine and told them that they too lacked authority to re-write patent law, and that their scrivining is nothing more than Void for Vagueness.

      I am sure Greg A could come up with some more even colorful language…

      1. Maybe Obama agrees with the USSC? Their words on the matter were wise, and quite clear, though people have been deliberately interpreting them vaguely. And though their words were perhaps not strong enough as yet, it’s a good start.

        I mean, as I’ve said, the true way to handle the situation is a legislative solution. But the congresscritters don’t know how to fix eligibility apparently. Even though it is them that needs to decide what they want eligible for their entitlement program.

        1. 6, 101 was written by Thomas Jefferson, and has not needed any amendments since, although “discover” was added back in 1836.

          Are congressmen going to listen to patent attorneys who have a interest in the outcome, businesses who are pursing a better bottom line, professors who think they can do it better, and amend so basic a statute as 101?

          I think not.

          1. There’s nothing that 101 jurisprudence today would throw out that Jefferson would keep in. Jefferson had a much higher standard for what were worth “the embarassment of a public patent” than what people think passes for invention today.

          2. The paragraph that was 101 (and other parts) may have been written by Jefferson – but clearly, more than just mere codification happened in 1952 when Congress (hint: not Rich) realigned and redid the law into:
            101 (the actual)
            102
            103 (carved out of 101, eliminating the common law power of the Court), and
            112 (vastly liberalizing the use of functional language, including any combination claims – eradicating the “point of novelty” as you attempt to use that term.

            Gee Ned, it is rather obvious why you engage in such dissembling.

        2. 6, I would genuinely appreciate reading your interpretation as an examiner of what constitutes an abstract idea. Have you already gone through that in a previous comment thread?

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