Guest Post: The Blurring Of §§ 101 and 103—A Double-Edged Sword that Cuts the Other Way

Guest post by Ben Roxborough.  Mr. Roxborough is one of a few dual citizens who have completed federal court clerkships in both the United States and Australia. He has clerked in the U.S. for three years and practiced in Australia for five years, writing articles on how Australian courts developed a workable doctrine for patentable subject matter. He earned an LL.M. degree at Stanford Law School, specializing in intellectual property. This is not legal advice, and he welcomes any comments or criticisms: ben.roxborough@gmail.com

To say that the sands have been shifting with respect to Section 101 jurisprudence would severely understate the seismic change that it has experienced in recent years; ever more so in recent months. The consequence is that the lines between sections 101, 102 and 103 have been blurred. This consequence appears to stem from statements in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1304 (2012), where Justice Breyer suggested that the inquiries “overlap.” Indeed, three years later, the Federal Circuit panel in Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (2015), went as far as saying that a “pragmatic analysis of § 101 is facilitated by considerations analogous to those of §§ 102 and 103.”

Because the lines have blurred, defendants have been able to rely on 102/103 arguments to invalidate patents on 101 grounds. These arguments, which defendants tend to advance at the second step of the Mayo/Alice framework, generally state that the additional steps—beyond the putative ineligible subject matter—are conventional because they can be found in the specification or are so ubiquitous that the court can treat them as routine and well understood by those in the scientific community. In Mayo, 132 S. Ct. at 1298, for example, Justice Breyer cited admissions in the specification that the processes for determining the level of metabolites in a patient’s blood were “well known in the art.” The patent lacked inventive concept because of this. Relying on Mayo, among other cases, defendants now make a simple argument. The argument may be summed up as: “Your Honor, if you combine what’s described in the specification and prior art with the ineligible subject matter, you’ll find that the patent claims are routine and conventional and do not meet the 101 threshold.”

In effect, the 101 ineligibility defense has become a de facto 103 defense, targeting primarily combination patents. But putting aside the fact that this de facto argument reflects a conclusion (rather than any real analysis), the argument is extraordinary because prior art in the specification is used against the patentee. No evidence other than the specification is being proffered to support the defendant’s position (which may mean that the prior art in the specification is an admission, but no patentee would say that the combination of the prior art elements were well known in the art at the time of the invention). And although some district courts have acknowledged this paradox, the argument tends to be successful as it was in McRO, Inc. v. Namco Bandai Games Am., Inc., No. CV 12-10327-GW, 2014 WL 4749601, at *11 (C.D. Cal. Sept. 22, 2014).

But it doesn’t end there: the patentee’s perilous position is only compounded further when the defendant seeks dismissal of the claim pursuant to Federal Rule of Civil Procedure 12(b)(6) because the patentee generally cannot proffer evidence outside the four corners of the complaint (and patent) that could undercut the defendant’s position. This seems unfair from not only a procedural perspective, but also a substantive one. When looking at a combination patent, what courts most want to know (or should want to know) is: “Who would have thought to combine the elements of the invention in the first place, and why?”

These basic concerns are central in the 103 context. But they should be equally relevant in the 101 context. Defendants have had a field day eviscerating patent after patent since Alice using ‘obviousness-like’ arguments to show that the patent lacks inventive concept. What is required in response to these developments is judicial recognition of ‘obviousness-like’ arguments that cut the other way. The article I am writing seeks to develop these themes, so to place plaintiffs and defendants on equal footing under Section 101. They are summarized here (and, admittedly, are far from fully developed):

  1. THE SKILLED ARTISAN: To provide the 101 analysis with an objective baseline, courts need to define who the skilled artisan is—and what she knew at the time of the invention. Sometimes a plaintiff is precluded from presenting such evidence because courts now decide a significant number of 101 cases at the Rule 12(b)(6) stage. To guard against early Rule 12(b)(6) motions, the skilled artisan’s background should be described in the complaint (or even the patent itself). Or, the Defendant should be required to show ineligibility within the confines of Rule 12(b)(6). This is less of a problem at the Rule 56(a) stage because the patentee has a chance to present skilled artisan’s common general knowledge. Critically, however, in those cases now on appeal—where the district court has not properly articulated the skilled artisan’s background—the Federal Circuit should be remanding such decisions for further factual development of the record. Placing greater emphasis on the skilled artisan can only make the 101 analysis a more balanced one.
  1. SOLVE THE PROBLEM: Defendants are using the specification against the patentee. But what is referenced in the specification can actually help the patentee demonstrate that the additional steps beyond the ineligible subject matter constitute inventive concept. Specifically, plaintiffs should turn the tables and point to the specification to demonstrate the problems faced by those in the field—and why the invention provides a “new and useful” solution. 35 U.S.C. § 101. Taking a problem-solution approach to define what is “new and useful” is precisely the type of analysis that Judge Chen applied in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), though it has its roots in Diamond v. Diehr, 450 U.S. 175, 188 (1981) and the Supreme Court’s more recent holding in Alice also reflects this approach.
  1. TEACHING AWAY: This analysis typically applies in the 103 context. But what stops it from being relevant in the 101 context? To this point, the recent BRCA1 decision has opened the door for its application. In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 764 (Fed. Cir. 2014). Just as Justice Breyer tethered the notion of what was “well known in the art” by referring to the specification for 101 purposes, the Federal Circuit in BRCA1 has tethered that same notion to “techniques that a scientist would have thought” to use when deciding to engage in experiments that were directed to the invention. But if inventors engage in activities that run counter to scientific thought, those activities can hardly be considered routine and conventional in a 101 sense, correct? While some may say that teaching away analysis should be reserved for § 103 (and to do so would otherwise conflate § 101 with §103), several reasons militate against this position. First, as stated above, the Supreme Court and Federal Circuit have said that § 101 is facilitated by considerations analogous to those of § 103. Second, teaching away analysis should not be monopolized by § 103. In fact, evidence that teaches away is already relevant to enablement (§ 112) to show that “a significant amount of experimentation would have been necessary to practice the claimed invention.” Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1379-79 (Fed. Cir. 2007). Because teaching away analysis is transferable between different sections in the statute, there would seem no reason why it could not be extended to § 101 to determine whether a combination of steps is routine and conventional.
  1. HINDSIGHT: Given that Alice requires that courts look at patented elements as a whole, the concern of hindsight bias should have as much relevance to a § 101 challenge as it does a § 103 challenge. For when each of the elements of a claimed invention do not exist in the prior art, or even the ordered combination, how can a defendant rationally argue that the combination is routine and conventional without some degree of hindsight bias kicking in? Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1337 (2005). Indeed, in Mayo, 132 S. Ct. at 1298-99, Justice Breyer explained that the invention in Diehr was patentable because the “ordered combination” of the steps of the claimed invention as a whole were “nowhere suggested” to be “in context obvious, already in use, or purely conventional.” And while the Supreme Court made no express mention of hindsight in its 101 holdings, it was, at the very least, an underlying rationale in Diehr. Footnote 12 of that opinion is exemplary. Alice, too, reinforces this point when it spoke of looking at combination patents as “whole.”
  1. PREEMPTION & PIONEER PATENTS: Plaintiffs do appear to be pressing preemption arguments more heavily in recent months. The Sequenom case illustrates this: Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (2015) But, sadly, the Federal Circuit panel got it wrong when it was not prepared to consider evidence that demonstrated that the invention did not foreclose the use of the discovery. The saying what’s good for the goose is good for the gander seems apt. Because of this, it will be left to the Federal Circuit en banc, or other panels to address how preemption should factor into the 101 calculus. In any case, those decisions should take a liberal approach to Mayo’s dicta and allow preemption to play a tie-breaking fact role in close cases—e., a role similar to that of secondary indicia in the 103 calculus as evidence providing a tipping point in favor of a non-obviousness determination. To this end, and in the preemption context, the patentee should be entitled to show that there are different ways of achieving the goal to which the patent is directed—not just one (preemptive) way.

In addition, the Mayo decision also spoke of “how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo, 132 S. Ct. at 1303. Does this mean that a pioneer patent should be given more latitude in a 101 context than a patent that provides a mere incremental improvement? I think it does. But a workable doctrine must emerge—much like one emerged with respect to the doctrine of equivalents in the infringement context. The article will address this.

  1. DRAFT JURY 101 INSTRUCTION: Given that some 101 cases are predicated on underlying factual findings, much like 103, the article will conclude with an appendix that includes a draft jury instruction. That will be addressed in more detail later.

183 thoughts on “Guest Post: The Blurring Of §§ 101 and 103—A Double-Edged Sword that Cuts the Other Way

  1. 22

    More case law

    In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: “The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction.” In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid.”

    Mere use claims are not statutory. This is why abstract ideas, laws of nature, etc. are not patent eligible. They are mere uses of an existing machine or naturally occurring composition.

    Just because there are “steps” doesn’t mean the claim isn’t directed to the mere use of a computer to perform a known task.

    1. 22.1

      They are mere uses of an existing machine or naturally occurring composition.

      See 35 USC 100(b)

      Thanks.

        1. 22.1.1.2

          NEW use of a computer.

          Old task: listen to speaker, type what was said.

          New use of a computer:

          Receive audio signal from microphone representing speakers voice, convert audio signal into text; put text into text document.

    2. 22.2

      What if the claims had been worded differently such as.

      1. A process comprising: using a high carbon …. subject to stress by sliding friction.

      2. A process comprising: using a sustained release … sulfonic acid.

      1. 22.2.1

        It should have been claimed as :

        A method of making a brake pad (or is it a brake drum/rotor?), the method comprising:

        what ever the steps are for making a brake pad/drum/ rotor from high carbon austenitic iron alloy having a proportion of free carbon e.g.

        Placing 10 parts Austine iron powder in a crucible;
        placing 2 parts carbon powder in the crucible;
        heat the crucible to above 1200F;
        stir the contents of the crucible;
        pour into pad/drum/disk shaped mold;
        cool the mold to 700F
        beat the contents of the mold
        heat the contents of the mold
        beat the contents of the mold;
        allow to cool to room temperature;
        shrink wrap in sets of two to a card; and
        overcharge.

  2. 21

    Noteworthy case law

    [T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).

    Generic uses of a computer are not patentable. Generic uses of DNA are not patentable.

    This is fundemental to patent law.

    1. 21.1

      There is a difference between an “unappreciated property” and a new configuration. In the first instance, the property was always there (i.e., old). In the second instance, the configuration is new.

      1. 21.1.1

        It’s a straightforward mathematical exercise to spit out every “configuration” of every DNA molecule with less than 20 bases. Pretty much every one of those configurations is useful for detecting its complement. So: there are really no “new” configurations (in that range anyway) and there are reasonable motivations to make each one.

        Also it’s been known for a long time that DNA sequence information would be valuable to everybody. And it’s been known for an equally long time that there’s a lot of that information out there and gathering that information will require some “isolation.” Why do we want to give a tiny handful of corporations monopoly power over that knowledge? Assume you’re not an ‘investor” or an employee in such a company when you answer the question.

        1. 21.1.1.1

          useful for detecting its complement.

          Nice.

          So what?

          You do realize that such a “use” fails the utility requirement as determined by the courts, right?

          Wait, you are not just obfuscating and throwing out misdirection, are you?

          Shockers.

          1. 21.1.1.1.1

            “useful for detecting its complement.” Nice. So what?

            Just responding to comments 21 and 21.1. Try to keep up, “anon”. I know it’s hard.

            The implication, of course, is that all those 20 mers are obvious per se.

            You do realize that such a “use” fails the utility requirement as determined by the courts, right?

            LOLOLOLOLOLOLOLOLOL Of course I realize that. I explained that to you probably 500 times in the run-up to the Myriad decision because that’s the utility of Myriad’s claimed oligo sequences.

            That’s not the point of the discussion in 21.1, however. The point is that it’s a perfectly fine and widely recognized utility and motivation for prior art purposes.

            1. 21.1.1.1.1.1

              Having you say “keep up” as you go in the wrong direction is rather amusing.

              Thanks, but I will pass on that.

      2. 21.1.2

        There is a difference between an “unappreciated property” and a new configuration.

        Bingo.

        [high five]

      1. 21.2.1

        Using an existing product in accordance with its inherent properties.

        Inherency could be an alternate grounds (102) but there can and should be a such thing as 101 inherency

        1. 21.2.1.1

          Inherency is the proper patent doctrine.

          Why do you think it is that this doctrine is not used (at all) by the anti-software folks?

          Could it be that to do so would shine the light on the fact that there position is equivalent to all future inventions and improvements by way of software must be “already in there,” which is a patently absurd (think Morse) result?

            1. 21.2.1.1.1.1

              I just think

              You just think wrong.

              I like 101 for what Congress actually wrote and the intentions that they had when they wrote it.

              I also “like” the separation of powers and the proper allocation of authority for writing the statutory law that is patent law that is embedded in the (gasp) Constitution.

              Let me know what the primal law is changed to mirror what you want it to be to match your philosophy. Until then, your opinion is worth the weight of an uninformed (malinformed, actually) opinion.

    2. 21.3

      What you are (finally) digging into, Topce, is what I have been begging Ned Heller and Malcolm to actually use in their arguments: the patent law doctrine of inherency.

      Maybe this then is what you mean by your agreeing with me more than I think…

        1. 21.3.1.1

          I completely disagree with the post though. I don’t see anything wrong with reading 102/103 into 100/101.

    3. 21.4

      What is a generic use of a computer? One that is known? Fine, prove that it was known and reject under 102.

  3. 19

    Roxborough: Relying on Mayo, among other cases, defendants now make a simple argument. The argument may be summed up as: “Your Honor, if you combine what’s described in the specification and prior art with the ineligible subject matter, you’ll find that the patent claims are routine and conventional and do not meet the 101 threshold.”

    Relying on baloney they scraped from the bottom of the Internet, defenders of the worst patents ever granted now make a simple argument: “We were born yesterday, we want our junk patents, and we’re going to stick our heads in the sand and behave like petulant ignorant children until we get to play our game the way we want to play it.”

    Seriously, Ben: show everyone you’re deep thoughts on the issues in Prometheus v. Mayo prior to the case being decided. Then we can see what a serious thinker you are. Your post here is basically an endless stream of drivel that recapitulates all the debunked arguments that the s0ckpuppet whiners tried to float here for years.

    You can’t evaluate the subject matter eligibility of a typical claim without comparing the claimed “invention” to the prior art. That’s neither “conflation” with nor “blurring of the boundaries” between 101 and 103. It’s just basic logic and common sense.

    Now, the Myriad claims are composition claims and raise somewhat different issues from the process and pseudo-process claims at issue in Prometheus, Bilski and Alice. We did debate — and we can continue to debate — how well the reasoning in those cases can be “fit” to the evaluation of new compositions described in objective structural terms. However, the serious problems with isolated DNA claims of the sort that Myriad and companies like Myriad seek remain and those problems are lethal. I don’t see any recognition or acknowledgement of any of these nuances in your vapid ranting.

    Let’s take your “strategery” suggestions one at at time and evaluate them as if were living on planet earth, where the PTO has granted thousands upon thousands of incredibly junky claims and — until the public and the Supreme Court woke up — was poised to grant exponentionally more to the lowest form of innovator who ever breathed air.

    To provide the 101 analysis with an objective baseline, courts need to define who the skilled artisan is—and what she knew at the time of the invention.

    Courts already do this. The game you want to play is to shift the game onto turf where instead of discussing subject matter eligibility, a paid “expert” in computer programming gets to kick dust in the judge’s or jury’s face when the claim recites computer “technology” only nominally but substantively recites non-eligible facts, relationships and processes grounded in ancient non-technical realms (e.g., shoving an ad in a person’s face or otherwise trying to sell them something in response to an action). Guess what? We’re onto you. You lose. Game over. Go home and cry me a river.

    plaintiffs should turn the tables and point to the specification to demonstrate the problems faced by those in the field—and why the invention provides a “new and useful” solution.

    That only works when there was a genuine problem that people didn’t know how to solve. In nearly every case with these junky computer-implemented claims, the well-known “solution” to the “problem” is “use a computer” or “use logic” or an obvious combination of both. All that’s “new” is some information processing scheme described with marginally greater specificity (typically an abstraction such as “credit card data” as opposed to “data”, or “real estate agent/home buyer” as opposed to “agent/customer” — baloney like that). If you’re solving a bona fide technological problem then you’ll need to provide a technological solution which will — almost invariably, if it’s patent-worhty — involve a novel and unexpected transformation of matter or a recitation of a non-obvious structure in objective structural terms. You don’t want to put that stuff in your claim? Then get ready for 101. You see: we’re onto you. Don’t like it? Go home and cry me a river.

    This analysis typically applies in the 103 context. But what stops it from being relevant in the 101 context?

    Gee, nothing, I suppose, except for the fact that’s it’s most certainly not relevant. The art “teaches away” from correlating pinkie fingernail length with leukemia. Guess what? You still can’t patent the correlation. Why? It’s irrelevant to the 101 analysis. Also, you must certainly be aware of the fact that 90% (at least) of the “teaching away” arguments that applicants make in defense of their claims are shot down in five seconds because (1) applicants don’t understand what “teaching away” means in the patent law context and/or (2) applicants are ignoring the whole of the prior art and focusin on a spurious sentence in a single reference (see point (1)).

    For when each of the elements of a claimed invention do not exist in the prior art, or even the ordered combination, how can a defendant rationally argue that the combination is routine and conventional without some degree of hindsight bias kicking in?

    First of all, if the element in question is itself ineligible, the issue of “hindsight” is irrelevant. For example, you can identify the most non-obvious correlation every identified. But you can’t claim a method of “drinking coffee and thinking about [insert non-obvious correlation]. Screeching “hindsight! hindsight!” at the Examiner doesn’t change anything. Now, if you have a new series of ordered steps that results in a new physical transformation of matter, you certainly are in the world of 103 and hindsight should certainly be avoided. Are such steps often recited in the junky “do it on a computer” claims that everyone is concerned about? No, they are not. Sometimes that’s difficult for some folks to appreciate. Most of the time it’s because those folks are willfully ign0rant or, well, just plain ign0rant. See, e.g., the guy here who commented that before computers animators used “their guts” to create cartoons. (<—that actually happened and nobody should be surprised, really, given what we know about the typical defender of junky "do it on a computer" patents, i.e., they will do and say literally anything if they believe it keeps the software patenting merry-go-round spinning).

    To this end, and in the preemption context, the patentee should be entitled to show that there are different ways of achieving the goal to which the patent is directed—not just one (preemptive) way.

    There are two related preemption issues: the first is the preemption by a patent claim of any ineligible subject matter, no matter how small the context. If ineligible subject matter is taken out of ONE member of the public’s hand, where that person is otherwise practicing the prior art, that’s enough to fail 101. End of analysis. It’s difficult to take you or your concerns seriously when you fail to acknowledge this fundamental fact. The second issue is just a bit more complex: if the claim is of a class that, if deemed eligible, would inevitably result in a mass swamping of the PTO with similar claims and a de facto preemption of ineligible subject matter, then the claim is also going to be deemed ineligible. This is where Sequenom’s junky “I detected this phenomenon first therefore I own the process of detecting the phenomena” style of claiming has serious defects. The claims in Prometheus suffered from both of these preemption issues.

    To sum up, Mr. Roxborough: your thoughts here are pretty much worthless. It’s not surprising that you found some “fans” in the comments here but, from experience, I can tell you that your biggest fans are some of the least knowledgable and least credible people in patent law.

    1. 19.1

      Why don’t you put in the same level effort, and provide some citations, like those that are included in the article? Hard to decide which muppet you are. Statler? Or Waldorf?

      1. 19.1.1

        provide some citations

        LOL Do you need a “citation” to know whether it’s raining outside, too?

        There is such a thing as ineligible subject matter. See: Prometheus v. Mayo

        You can’t turn ineligible subject matter into eligible subject matter by reciting old technology. See: Prometheus v. Mayo

        The importance of the ineligible subject matter protected by a claim or its utility to skilled artisans is irrelevant to the analysis. See: Prometheus v. Mayo

        There is no other way to read the case. More importantly, it’s logically impossible to have a working subject matter eligibility test without these restrictions. How long have you been practicing patent law? It’s 2015. We’re talking about a hugely important case that is never, ever going to be overturned and you seem to be pretending that you are unaware of the facts in that case or what it was about.

        1. 19.1.1.1

          Your premise is nonsense. Ineligible subject matter can’t be “turned into eligible subject matter.” That’s absurd. Ineligible subject matter is ineligible, period. A claim that includes subject matter that would be ineligible by itself might or might not be eligible, depending on what else it includes.

          And Mayo didn’t hold that “old technology” can’t turn a natural law into eligible subject matter (again, a flawed premise). Mayo held that eligibility of claims involving a natural law depends on whether the claims “add enough [to the natural law] to allow the processes [the claims] describe to qualify as patent-eligible pro­cesses that apply natural laws.”

          The issue is whether such claims recite the equivalent of “applying the natural law”. Mayo: “unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”

          The steps of Mayo’s claims weren’t insufficient because they weren’t “new technology”. It was the effect the claims as a whole would have had with respect to the natural law that they implicated.

          Personally, I think Mayo was properly decided, but that’s beside the point.

          1. 19.1.1.1.1

            Ineligible subject matter can’t be “turned into eligible subject matter.” That’s absurd. Ineligible subject matter is ineligible, period.

            Pedanticism is alive and well.

            A claim that includes subject matter that would be ineligible by itself might or might not be eligible, depending on what else it includes.

            Ah, so you did understand my meaning. Yes, we’re talking about patent claims. “Depending on what else” is not a black box. It never was. The additional mere recitation of old technology does not transform a claim that would otherwise be ineligible into an eligible claim.

            The steps of Mayo’s claims weren’t insufficient because they weren’t “new technology”.

            The Supreme Court is crystal clear that the additional steps (other than the ineligible step of thinking about a correlation) recited in Prometheus’ claims were insufficient because they were known in the art. That’s the exact same thing. How on earth can you not see this?

            Mayo held that eligibility of claims involving a natural law

            The reasoning in Mayo is surely not limited to “natural laws”. If it wasn’t perfectly clear before (and it was perfectly clear), the decision in Alice erased any confusion.

            Mayo: “unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.”

            Reciting old technology does not — and can not — provide that “practical assurance”. To appreciate that, you need to look at [old process + new ineligible subject matter] claims from the perspective of people who are lawfully practicing the prior art processes.

            Also, “being old” is not the only way that an additional step can be “insufficient” to rescue an otherwise ineligible claim. Can you think of another way? I can think of at least two other major ways. If you can’t think of any additional ways to fail, I humbly suggest you shouldn’t be getting anywhere near a patent application.

            1. 19.1.1.1.1.1

              Pedanticism is alive and well.

              Yes, but Malcolm is the Queen of the AccuseOthersOfThatWhich MalcolmDoes.

            2. 19.1.1.1.1.2

              because they were known in the art

              Talk about your “kindergarten” level thinking…

              This is exactly the “logic” I mock with the “known in the art” of electrons, protons, and neutrons that every machine and manufacture are configured from.

              You want to use a version of “logic,” but you refuse to “own” the result of that selfsame “logic.”

              1. 19.1.1.1.1.2.1

                We’re talking about processes. Different issues. I realize that’s way too nuanced for you, however. Ask your mommy for a graham cracker.

            3. 19.1.1.1.1.3

              “The Supreme Court is crystal clear that the additional steps (other than the ineligible step of thinking about a correlation) recited in Prometheus’ claims were insufficient because they were known in the art. That’s the exact same thing. How on earth can you not see this?”

              I can’t see it, because it’s not there, and it’s not the exact same thing. You don’t understand the holding. You use the right word — “because”. That is the kind of keyword that points to outcome determining factors. The court did note that the steps were routine, but when it came to the **reason** for the decision (the “because”), this is what the Court said: “**since** they are steps that must be taken in order to apply the laws in question, the effect is simply to tell doctors to apply the law some­ how when treating their patient”.

              The Court explicitly distinguished between the novelty of the non-natural-law steps and their quality of failing to sufficiently limit use of the natural law. The Court also explicitly stated that the lack of novelty of the non-natural-law steps in Mayo was not the issue:

              “We need not, and do not, now decide whether were the steps at issue here less conventional, these features of the claims would prove sufficient to invalidate them. For here, as we have said, the steps add nothing of signifi­cance to the natural laws themselves”.

          2. 19.1.1.1.2

            HOPoB,

            He is relying on the obfuscation of dissection, the re-animation of “Point of Novelty” in combination claims (expunged by Congress in the Act of 1952), and the attempted treatment of all claims as mere aggregations.

            As has been pointed out numerous times (without substantive reply), his “pet theory” resolves down to a basic “no aggregations” statement, not even needing any claim element to be of the type of “mental step” or “new thought” or even “old thought.” One can just as easily apply his “pet theory” to ANY set of “objective physically claimed” elements that are a mere hodge-podge of old items that have no functional interrelationships, and use his exact same “logic.”

            1. 19.1.1.1.2.1

              “anon” One can just as easily apply his “pet theory” to ANY set of “objective physically claimed” elements that are a mere hodge-podge of old items that have no functional interrelationships,

              Please, please, please pull out your magical box of protons, “anon”. It’s so compelling and sooper dooper serious.

              1. 19.1.1.1.2.1.1

                You do realize that my magical box is a slap against the very “logic” you attempt to use, eh?

                wake up son.

    2. 19.2

      “You can’t evaluate the subject matter eligibility of a typical claim without comparing the claimed “invention” to the prior art.” – Yeah, well, you know, that’s just, like, your opinion, man.

      1. 19.2.1

        IIT “You can’t evaluate the subject matter eligibility of a typical claim without comparing the claimed “invention” to the prior art.” – Yeah, well, you know, that’s just, like, your opinion, man.

        No, it’s not “just my opinion.” It’s the law, it’s always been the law, and it’s always going to be the law. Do you understand basic logic? If you understand basic logic and you acknowledge that there is such a thing as ineligible subject matter, it really doesn’t take much mental effort to arrive at the proposition I stated for you.

        It does take quite a bit of effort to pretend that the proposistion is “just my opinion”, however. Unless, of course, you’re really ign0rant in which case you don’t have to pretend. Your call.

        1. 19.2.1.1

          You “say” basic logic, but then do nothing but jump to your own conclusion – with NO path of logic provided.

          (Your “pet theory” hiding in the wings resolves down to nothing more than not claiming an aggregation – mental steps, or even steps sounding in mental steps need not even be included in that “pet theory,” so your “logic” is bumpkiss)

          1. 19.2.1.1.1

            NO path of logic provided.

            LOL

            “anon” gets busted for speeding.

            Cop: “It’s illegal to go over 75 miles an hour. Didn’t you see the sign?”

            “anon” : But I was going over 75 miles an hour and chewing gum!

            Cop: So?

            “anon”: I just decimated you.

      2. 19.2.2

        On the impossibly remote chance that I’m not being trolled by IIT, here’s the deal:

        Claim 1: I claim a method of thinking about [insert non-obvious correlation here].

        Pretty much everyone agrees this is an ineligible claim and very few pretend to be confused about it. If you don’t agree, you’re so far out in right field it’s not worth discussing the topic with you. There are some genuinenly thoughtful people out there, after all, who have a clue about how the patent system works.

        Claim 2: I claim a method of drinking a cup of coffee and thinking about [insert non-obvious correlation here].

        Now here’s your chance to be super (un)clever! Lookie, it’s a “process” and there’s a transformation of matter (coffee is a drug, after all)! Question for you, IIT: should this claim be deemed eligible by the US patent system or any sane patent system? Explain your answer and try really hard to take into consideration the interests of additional parties other than the tiny tiny tiny fraction of wealthy manipulators of the patent system. I realize this latter bit may pose a serious challenge for you (it does for many others).

        1. 19.2.2.2

          Is anybody is arguing for eligibility of “thoughts about correlations”? “Correlating” is different than “thinking about correlating”. I agree that “thinking about X” should be ineligible under 101. Same goes for claims that merely disguise “thinking about” by calling it “determining”.

          But I think you have a different story if it read instead:

          Claim 2: I claim a method of drinking a cup of coffee and correlating some random data I have.

          That’s probably obvious, and there is no need for contorting 101. Drinking coffee is really old. Finding relationships between data is really old. Correlation does not do anything to improve upon known methods of drinking coffee in any new or unpredictable way. And of course, I don’t think anybody is arguing that the data itself should be eligible.

          1. 19.2.2.2.1

            ejee: Claim 2: I claim a method of drinking a cup of coffee and correlating some random data I have. That’s probably obvious

            That claim is most definitely not obvious if the correlation is non-obvious.

            I really do hope that you’re not an attorney.

            1. 19.2.2.2.1.1

              It’s not obvious if it’s not obvious. Sure.

              I had in mind the sort of bio/computer claims where the data involved is very much related to what is going on in the rest of the claim, and odds are a person would find it obvious to look at two sets of data for some kind of relationship. That’s why I used the qualifier “probably”

              1. 19.2.2.2.1.1.1

                It’s not obvious if it’s not obvious. Sure

                It’s a hugely important point.

                odds are a person would find it obvious to look at two sets of data for some kind of relationship

                That fact doesn’t make the correlation that you find and recite obvious. Again, this is hugely important and if you can’t get the fundamentals down then it’s plain that you have no idea what the issues are.

                We all agree that obvious junk is obvious junk. 103 is made to address that junk. The problem addressed by the Supreme Court in Mayo is how to deal with non-obvious ineligible junk of the sort I described in 19.2.2.

          2. 19.2.2.2.2

            ejee: Claim 2: I claim a method of drinking a cup of coffee and correlating some random data I have.

            By the way this claim is pretty much indistinguishable from the claim that Prometheus took all the way to the Supreme Court. Prometheus’ claim also happened to be painfully obvious (in addition to ineligible). Somehow it got granted. And somehow Kevin Noonan — a legal “expert” with a Ph.D. in chem/bio — couldn’t bring himself to admit either fact.

            Sad but true. And no I’m not going to let people forget that sorry episode because the same behavior continues to this day. It’s wrong.

            1. 19.2.2.2.2.1

              MM-

              Do you think you could respond without the condescending tone? I am not anon…

              FYI – I did actually take a class during law school taught by Kevin Noonan, so maybe that has influenced my thinking on this matter.

              1. 19.2.2.2.2.1.1

                FYI – I did actually take a class during law school taught by Kevin Noonan, so maybe that has influenced my thinking on this matter.

                ROTFLMAO So Noonan doesn’t even teach the facts about Prometheus in his classroom???

                I’m appalled. You were ill-served.

              2. 19.2.2.2.2.1.2

                Do you think you could respond without the condescending tone?

                Do you think you can admit that you have no idea what you’re tallking about?

          3. 19.2.2.2.3

            ejee: I don’t think anybody is arguing that the data itself should be eligible.

            People don’t generally come out and say that “people should be subject to lawsuits for using new information in a logical process” because anywhere other than a well-catered conference on patent law such statements would be greeted with derision and scorn (if not outright laughter).

            Instead, some people say that patentees should be able to sue you for storing and retrieving information on/from your computer database. Now, you seem like a fellow who knows what a computer is. It’s 2015. Is there a meaningful difference between the two propositions? Try to think about the answer from the perspective of any ordinary person rather than the perspective of the people who make such statements (typically patent attorneys who stand to directly benefit from such a paradigm).

        2. 19.2.2.3

          I would seek to invalidate the claim under 112 with regards to the thinking part. Additionally, apply 102, 103.

          1. 19.2.2.3.1

            In my view, we could probably do away with 101 entirely and still capture each of the pre-Alice judicial exceptions under 112, 102, and 103. Laws of nature are barred under 102(b) (pre-AIA). Truly abstract ideas are indefinite and/or not enabled. For post-Alice nonsense, you could apply 103 by first citing to the pre-existing business practice and then cite to a general purpose computer in which other business practices have been implemented.

            1. 19.2.2.3.1.1

              Truly abstract ideas are indefinite and/or not enabled.

              There is nothing indefinite about a process that states “think about a correlation between X and Y”. And it’s completely enabled.

              Again, this lightweight kindergartend grade “arguments” against subject matter eligibility were all floated in the run-up to Mayo and they were all addressed thousands of times. Can you put them to bed already? Give us all a break.

          2. 19.2.2.3.2

            I would seek to invalidate the claim under 112 with regards to the thinking part.

            And what you do about your malpractice claim?

    3. 19.3

      MM: “your thoughts here are pretty much worthless. It’s not surprising that you found some “fans” in the comments here but, from experience, I can tell you that your biggest fans are some of the least knowledgable and least credible people in patent law.”

      Are you in a position to know, MM? I also see you’re back to personal attacks. While I disagree with virtually everything you say on this blog, getting angry with would be like getting angry at a child.

      1. 19.3.1

        Are you in a position to know, MM?

        Having sat here and debated folks like you here and elsewhere for many years while watching your “arguments” get ripped apart in case after case, I’m in pretty much the perfect position to know. Thanks for asking, though.

      1. 19.4.1

        Except, not.

        But it does align with Ned’s Windmill Chase, so you have that opinion of Ned thinking you are an Einstein going for you.

  4. 18

    Mr. Roxborough: Great article, thank you. The 103 parallels were apparent, but your extensions were insightful and useful.

    Prof. Rantanen: The editorial content and quality of Patently-O has improved since Prof. Crouch has included yourself, and others, in running this blog. Nice job on this one.

  5. 17

    Mike D: if the Board held the Examiner’s rejection under 103 was improper, then this means that the claimed invention is non-obvious over the applied art and hence inherently *not* well known, such that the 101 rejection should be similarly reversed.

    That’s pretty much the silliest argument I’ve ever heard.

    Do you have malpractice insurance? God, I hope so.

  6. 16

    When you write a new song and punch it out on a roll and put it in a player piano, the piano looks in some ways like a new machine because it is performing a new and useful function of playing a new song, a song which has never been played before.

    Can my invention of a player piano which plays my new song be rejected on 101 grounds?

    Certainly it is obvious to play my song on a player piano so it fails 103, but does it also somehow fail 101 also?

    After we dispose of player pianos we can then move on to software.

    Most software which shows up in claims is described at a very abstract level, using words like ‘stored’, ‘transmitted’, ‘displayed’, ‘determined’ etc. This is a reasonable level of abstraction since a PHOSITA can take these terms and turn them into a working application (eventually).

    However this is not the only skill a PHOSITA has. For a PHOSITA the claim ‘A system where users of the system enter knowledge X, it is transformed into knowledge Y and then retrieved as knowledge Z’ is also a reasonable level of abstraction for a PHOSITA, they can also take this claim and turn it into a lower level of abstraction (‘stored’, ‘transmitted’ etc) without undue experimentation and then turn it into software.

    In other words, once you describe the particular knowledge you want to store and the particular logic used to transform it, then it is obvious to a PHOSITA how to do so with software.

    Similar to a player piano, a computer running this software looks like a new machine. It is performing a new and useful transformation of knowledge which has never been done by machine before.

    If we agree it is obvious to anyone to use a computer to transform knowledge and it is obvious to a PHOSITA how to use a computer to transform knowledge, can we reject all software patents which only transform knowledge on 103 grounds?

    And if we are reject all software patents which transform knowledge on 103 grounds isn’t there a 101 problem lurking underneath which we should use instead?

    1. 16.1

      And if we are reject all software patents which transform knowledge on 103 grounds isn’t there a 101 problem lurking underneath which we should use instead?
      Two problems. First, you are assuming a rejection of “all software patents which transform knowledge” on 103 grounds, which isn’t the case. Second, your analogy doesn’t work. A hypothetical patent on “a [new] song on a [old] player piano” is directed to the new song, which is both an abstract idea and nonfunctional. This hypothetical patent would be rejected today under the printed matter doctrine, which I believe is no longer necessary considering Mayo. In contrast, a patent to software (however written) is directed to something that is functional. Therein lies the difference between a song and software (and similarly, between copyright and patent).

      1. 16.1.1

        Player pianos are an important (or at least common) topic on this site, so I think it is worth discussion 🙂

        I think you rejected my song on 3 different grounds:

        “Directed to the new song” – No, it is directed to the very functional (and useful) machine made up of the combination of the piano and punched paper roll which does something no other machine has done before.

        “Printed Matter” – No, I am not patenting the printed roll (which would be would be a paper substrate with holes in it). I am patenting the combination of a player piano roll with particular holes with a player piano to produce a new machine.

        “Mayo” – Could you expand a little?

        My player piano invention is certainly a useful functional machine, playing my new song.
        It is doing something no machine has done before.
        It is an invention but sadly it is obvious since any PHOSITA would know to combine the roll with the player piano to produce this machine.

        My general purpose computer invention is also a functional (and very useful) machine, storing and transforming particular knowledge using particular logic.
        It is doing something no machine has done before.
        It is also a sadly obvious invention because any PHOSITA knows how to program a general purpose computer to store and transform particular knowledge using particular logic. In fact it is the main skill of a PHOSITA, creating software which stores and transforms knowledge based on descriptions of the knowledge to be stored and transformed (Also know as ‘Software Requirements’)

        But I am still looking for a 101 reason, for example, use Alice and say:

        Knowing something or reasoning about something in your head is by definition abstract.

        Adding ‘Do it on a machine’ makes it concrete but does not add ‘something more’.

        Detailing the machine by describing a general purpose computer which contains the knowledge and performs the reasoning is not something more because the high level description is just what a PHOSITA would create for you if you asked them to implement your knowledge and logic on a computer.

        1. 16.1.1.1

          “Directed to the new song” – No, it is directed to the very functional (and useful) machine made up of the combination of the piano and punched paper roll which does something no other machine has done before.
          This is straight-forward application of Mayo. The invention is directed to the new song. The song on the piano player is little more than a directive to “implement the new song.” This is an easy one.

          “Printed Matter” – No, I am not patenting the printed roll (which would be would be a paper substrate with holes in it). I am patenting the combination of a player piano roll with particular holes with a player piano to produce a new machine.
          You don’t understand the printed matter doctrine.

          “Mayo” – Could you expand a little?
          Read the case and ask intelligent questions — I’ll be more than happy to help you then.

          It is an invention but sadly it is obvious since any PHOSITA would know to combine the roll with the player piano to produce this machine.
          Obvious? Were all the elements known to those skilled in the art? Perhaps you don’t understand obviousness either.

          It is also a sadly obvious invention because any PHOSITA knows how to program a general purpose computer to store and transform particular knowledge using particular logic.
          Any carpenter can use a saw, nail and hammer to transform wood into a myriad of different objects. However, that does not mean that these objects are not patentable.

          Adding ‘Do it on a machine’ makes it concrete but does not add ‘something more’
          Your brain (in most cases) does not work like a computer. For example, the methodology involved in cutting and pasting text with a real paper document is ENTIRELY different from cutting and pasting text in an electronic document. When I’m driving a car on the highway and choose to travel in the left, right, or center, how I make this choice is very different than how an autonomous vehicle might make the same choice.

          1. 16.1.1.1.1

            Johnny: Adding ‘Do it on a machine’ makes it concrete but does not add ‘something more’

            Jimmy: Your brain (in most cases) does not work like a computer.

            The problem, Jimmy, is that nearly all information processing “innovations” aren’t claimed in language that would describe a new machine (i.e., objective structural terms). They are claimed in language that describes an old machine that works like a brain (i.e., something that receives data, stores data, processes data, “learns” through experience, and initiates transmission of data).

            This is a huge problem. And it’s not going away. But information processing claims are going to go away. That’s a certainty. The only question is how fast is it going to happen and how many windows will shatter when y’all collective scream your baby pants off.

            1. 16.1.1.1.1.1

              And yet again Malcolm “makes it an issue” by attemptin to Mia-portray the law and have his optional claim format somehow be the only legal format.

              It just is not as Malcolm portrays.

              It just is dishonest for him to attempt to continue to portray the law like this.

            2. 16.1.1.1.1.2

              The problem, Jimmy, is that nearly all information processing “innovations” aren’t claimed in language that would describe a new machine (i.e., objective structural terms). They are claimed in language that describes an old machine that works like a brain (i.e., something that receives data, stores data, processes data, “learns” through experience, and initiates transmission of data).
              Process claims do not have to describe a new machine. What you’ve described (i.e., receiving data, storing data, processing data) is a process.

          2. 16.1.1.1.2

            Good comments, thank you! I will skip over Mayo and go straight to the carpenter!

            It depends on what you ask the carpenter to do. If your claim is ‘A rocking chair which can’t tip over.’ the carpenter is stuck. Building that rocking chair from that claim is not within the skills of a carpenter PHOSITA.

            However if your claim is to transforming particular knowledge using particular logic on a general purpose computer then it is within the skills of programming PHOSITA because transforming logic in our heads into designs for programs is a basic PHOSITA skill.

            Let’s take traveling along a highway in an autonomous vehicle. The logic for our invention is ‘Move the car to the right hand lane and slow down when it is raining heavily’. Here is the claim:

            A safety software module inside of an autonomous vehicle, said vehicle also containing a weather detection software module, a speed control software module and a lane control software module where in the safety module is configured to detect a signal from the weather detection module that it is raining heavily and in response send a signal to the speed control module to slow the car and send a signal to the lane control module to change lanes.

            Given the statement of logic, the system details written in the in the claim are within the skill of a software PHOSITA to create because that is what software PHOSITA’s do: Take user requirements written in English and turn them into software.

            If you implemented just what was in the claim, it would be a terrible product, by the way, since as written it only slows the car down. If it rained and stopped and rained and stopped then the car would soon come to a halt. But we are not discussing marketability today.

            As for cutting and pasting, writing the software for that is difficult. You have to consider the starting point, moving all the data in memory up after the cut data is removed, storing the cut data in appropriate buffers etc etc etc.

            However no one ever patents the details of the methodology and the PTO does not want to see it. Instead you write a claim by writing down the same logic as is in your head and then adding purely conventional software terms (‘Store’, ‘Transform’, ‘Determine’ etc ) to describe what the machine implementation does. Creating this machine implementation from the logic in your head is one of the skills of a software PHOSITA.

            1. 16.1.1.1.2.1

              However if your claim is to transforming particular knowledge using particular logic on a general purpose computer then it is within the skills of programming PHOSITA because transforming logic in our heads into designs for programs is a basic PHOSITA skill.
              There is a difference between enablement and obviousness. Knowing how to do something — once that something is identified — is not the same as that something being obvious.

              If you implemented just what was in the claim, it would be a terrible product
              There is a difference between distinguishing the invention over the prior art and enabling the invention (i.e., the difference between the 1st and 2nd paragraphs of 35 USC 112). Claims are not required to “enable” the invention or enable all aspects of the invention.

              However no one ever patents the details of the methodology
              Wrong. Details like that are patented all the time. However, they aren’t as sexy to talk about as, e.g., a method of exercising a cat with a laser. I used to read Slashdot quite frequently — I enjoy the articles on the technology. However, they were awful when it came to the law. It is like your brother-in-law who went to school for English literature and works as a barista for Starbucks trying to explain what memory cache in a processor is used for.

        1. 16.1.2.1

          Songs are “non-functional”? Since when?

          The USPTO issued Guidelines in February of 1996.

          link to uspto.gov

          From those guidelines:
          Thus, if the prior art suggests storing a song on a disk, merely
          choosing a particular song to store on the disk would be presumed to be well within the level of ordinary skill in the art at the time the
          invention was made. The difference between the prior art and the claimed invention is simply a rearrangement of non-functional descriptive material.

          As you can see, the USPTO referred to the song as “non-functional.” So, to answer your question, for almost 20 years at the USPTO.

        2. 16.1.2.2

          Songs are “non-functional”? Since when?

          In the patent sense (with the proper context of utility), since forever.

          Were you just born yesterday?

          This is exactly the SAME C R P that Malcolm spews nine years and running.

          He should know better and no one worth their salt who knows ANYTHING about patent law should be making such a sham argument as trying to introduce the non-Useful Arts into a legal discussion.

          No one.

          Anyone who does, broadcasts their ig norance and immediately loses all credibility.

    2. 16.2

      The player piano with a new song is not an improved player piano because the piano was designed to play different songs. So the patentability of the combination must turn on whether a song is eligible. It is not, of course.

      Ditto, programmed computers.

      However, a programmed computer in a larger process or machine might improve that larger process or machine thereby stating eligible subject matter.

      Generally, when a claim contains mixed subject matter, some statutory, some not, patentability must depend on an improvement in the statutory.

      1. 16.2.1

        Hi Ned,

        Way below in comment #2 you wrote:

        A broader statement of the policy is this: when a claim mixes both the statutory and the non statutory, invention must lie in the statutory. Thus, if the novelty is in the non statutory, it must be applied to the statutory to improve it.

        Rather than the word policy, could your cite a precedent? I agree it’s good policy but is it law?

        Thank you

        1. 16.2.1.1

          could your cite a precedent? I agree it’s good policy but is it law?

          Prometheus v. Mayo.

          And it’s not “policy.” It’s basic logic.

          You know, courts don’t always have to spell everything out for the least intelligent or willfully ignorant members of society. When the rest of us understand what’s going on, it’s usually good enough.

          The problem in patent law is the fact that the PTO is a largely captured agency.

        2. 16.2.1.2

          Slashdot, it seems that the Euro’s recognize this same policy, and perhaps the ROW as well. So we are “now” on the same page on how to deal with claims that mix the statutory and non statutory.

          Mayo and Alice are recent SC cases on this point. Invention must be in the statutory.

          Historically in the US, see Hotel Security, a case that lead directly to In re Russell and the printed matter doctrine that is currently applied in both the courts and in the PTO.

          1. 16.2.1.2.1

            Once again, Ned falsely portrays the law as he refuses to acknowledge the exceptions to the judicial doctrine of printed matter (and even after I explained this to him with simple Set Theory).

            Once again, there is NO EXCUSE for such wanton falsehoods.

            Yet, the sA meones trot out the same L I E S over and over and over and over and ove….

    3. 16.3

      Slashdot: Can my invention of a player piano which plays my new song be rejected on 101 grounds?

      Yes, very easily.

      Certainly it is obvious to play my song on a player piano so it fails 103

      B-b-b-but your song is non-obvious. Right? Otherwise you wouldn’t be in the patent office asking for a patent, presumably. Then again, the level of ignorance on display in this thread right now is deep enough that nothing would surprise me anymore.

    4. 16.4

      “If we agree it is obvious to anyone to use a computer to transform knowledge and it is obvious to a PHOSITA how to use a computer to transform knowledge, can we reject all software patents which only transform knowledge on 103 grounds?”

      No. Even as you describe the situation, what is “obvious” is the implementation of embodiments AFTER reading and understanding the disclosure of the invention. You haven’t shown, for example, that a particular claimed method of converting spoken words into text is obvious. All you have proposed is that once that method is outlined, a programmer of ordinary skill, after reading that outline, could write a program to implement to identified steps of the claimed process.

      1. 16.4.1

        I would say your text to speech invention does not transform knowledge (as such) and would be fine under 103 because:

        Knowledge is what we know.
        Knowledge can have various physical representations, like speech or bytes or text.
        Your software transforms the physical representation of the knowledge into a different physical representation.
        It does not transform the knowledge contained in the speech into different knowledge.
        Similarly compression and signal software would be fine since they transform a physical representation of knowledge into a different physical representation of knowledge.

        1. 16.4.1.1

          Well, what about a process that receives pixel information from a surveillance camera observing a huge crown and finds the pixels representing a guy with the backpack with a pressure cooker in it?

          Is that taking knowledge (the view of the crowd) and generating other knowledge from it (the location of a particular person)?

      2. 16.4.2

        And in general I suggest that there does not exist a claim which both

        1) Is directed to the storage and transformation of particular knowledge using particular logic.
        and
        2) The computer implementation in the claim was not obvious to any PHOSITA.

        1. 16.4.2.1

          Careful Slashdot Reader, you are entering a nuanced section of law.

          Everything is obvious in hindsight, and everything is “predictable” once you know the path to the goal.

          The effective result of this type of “logic” is that you have eliminated ALL engineered items (not just software, mind you) from patent protection. ALL that you are left with is patent protection for “oopsies” and “serendipitites” and “Flashes of Genius.” You have eliminated all inventions that have followed a plan, because the plan itself becomes evidence of “predictability.”

          Congress explicitly rejected that line of logic.

          1. 16.4.2.1.1

            Extra nuance sauce for my comment:
            Definitions for purposes of this comment:
            0) The physical world: The physical world from the most transient of quantum signals to the most permanent pyramids of Egypt
            1) Knowledge What we have in our heads that describes the physical world
            2) Logic: What we use in our heads to ‘think about’ our knowledge in our heads.
            3)Information: Any physical representation of the knowledge in our heads, for example notes in a notebook, characters on a screen or bytes on a disk.

            Example 1:
            Knowledge in my head: My bank balance is 500.00
            Information: On a disk drive in Ohio are some bytes which contain 500.00
            Logic: If I transfer 10% to savings then my back balance will be 450.00

            Example 2:
            Knowledge: Chips are made of 50% silicon
            Information: Its in a book somewhere
            Logic: If I decrease the silicon by 10% then the chip will be 20% faster.

            A claim directed to the logic of Example #2 is a claim directed to using the silicon content of a chip to change the chips speed. It is not directed towards the manipulation of knowledge and so falls outside my thesis.

            A claim directed to the logic of Example #1 is a claim directed to using particular logic to change particular knowledge.

            My thesis is: If you use particular logic to change particular knowledge then any PHOSITA can write software to manipulate a physical representation of the particular knowledge according to the particular logic.

            It is probably not provable because Gödel’s incompleteness theorems get in the way…

    5. 16.5

      According to google the word ‘piano’ has occurred 106 times on the patently-o website.

  7. 15

    FWIW, I’m appealing this very issue right now. Art unit 36xx. We had a 103 rejection, and won on appeal. Examiner then gave us a 101, stating under step 2B that all the additional elements were well known.

    We are appealing again, basically arguing that if the Board held the Examiner’s rejection under 103 was improper, then this means that the claimed invention is non-obvious over the applied art and hence inherently *not* well known, such that the 101 rejection should be similarly reversed.

    Have no clue if we will win, but in the reply brief I’m going to use some of the citations in this post . . . .

    1. 15.1

      I’m also working on one right now where 101 is the only issue left. All 112/102/103 rejections overcome. Same art unit. Same allegations that the methodology is somehow well ordinary and routine. PTAB will be choked with cases just like this within the next 18 months, mainly from a very small number of art units. Hope those folks are packing bags right about now if these types of 101 rejections are found to be acceptable.

      1. 15.1.1

        PTAB will be choked with cases just like this within the next 18 months, mainly from a very small number of art units.

        And then if PTO finally caves, your client will have a junk patent and you’ll have some cash to buy more video games. Yay!

      2. 15.1.2

        Mike D and Bluto: you probably already are thinking about doing this, but if not, you may want to consider emphasizing the requirements imposed on Examiners by the Administrative Procedure Act.

        These requirements limit the ability of Examiners to take official notice of facts (and thus illustrate why a USPTO rejection requires a different level of analysis than the types of fact-free explanations provided in some Federal Circuit opinions). Specifically, In re Gartside clarifies that there must be substantial evidence for every factual finding made by the USPTO (this is based on the Supreme Court decision in Dickinson v. Zurko, which expressly held – at the urging of the USPTO itself – that factual findings by the USPTO are properly governed by the Administrative Procedure Act). In turn, In re Zurko (2001) makes clear that, although substantial evidence review is deferential, there must still be “some concrete evidence” supporting an Examiner’s factual finding or that factual finding cannot be maintained on appeal.

        Just some food for thought.

  8. 14

    The blurring between 101 and 103 is the predictable result of 9 justices with no practical patent or inventing experience thinking that they can understand the inventing process in an afternoon. Alice and Bilski destroyed a well crafted, simple, and most importantly predictable patent system. They’re simply wrong.

  9. 13

    When I first started law school I had this view on 101 (that it should be a low bar that allows almost everything to be patent eligible).

    Many professors and practitioners have this view. I soon learned the error of my ways.

    The problem with this view is that certain “inventions” belong in the public domain.

    You cannot patent a leaf on a tree. You can’t patent the Pythagorean theorem. Judges can only view what is in front of them. If what is in front of them is nothing more than a leaf that is burnt in an oven, or a computer program calculating the Pythagorean theore, then why give it the time of day? Just throw it back into the public domain.

    math and computer programming are languages. That is the realm of copyright, not patent.

    Products of nature belong to nobody.

    1. 13.1

      “math and computer programming are languages. That is the realm of copyright, not patent.”

      When you merge that information with a device and that information allows the device to perform a new function, your analogy doesn’t work anymore. This is why software is not merely a recipe on a page or other static printed matter.

    2. 13.2

      We didn’t need any 101 exceptions to handle your hypotheticals. A leaf on a tree is barred from patenting by 102(b) (pre-AIA). Burning the leaf in the oven should be patentable if it’s useful, new, and non-obvious – which I doubt it is. With regards to computer code, I don’t think most people are trying to patent the language, rather they are innovating within a technical field that uses computers executing code to implement the invention. The specific code language that is used to achieve the solution is often immaterial.

    3. 13.3

      Topce, this is at least the second time you reference “when I was in law school“…

      and yet you continuously disregard the rule of law or any respect for such thereof.

      Would it be a correct presumption to say that you did not finish law school?

      If you did – you deserve a refund. Software claims are not claims to a language and the copyright law clearly delineates the aspect that that law protects. You mouth the words but show NO understanding of the concepts behind those words.

      1. 13.3.1

        I debated with people that had your view anon. That is the point. And they were made to look silly by my professors during panels.

        It is also funny how the same person who rejects all the 101 case law accuses me of not respecting the rule of law.

        More projecting.

        1. 13.3.1.1

          I debated with people that had your view anon. That is the point. And they were made to look silly by my professors during panels.

          As I said, you need to seek a refund. As I also notice, you never answered my question as to you finishing law school.

          Since you show such a lack of understanding, my bet is that you did not (but you have a bevy of excuses ready).

          As to respecting the rule of law, you should know that the Supreme Court is NOT the ultimate body and their is NO unilateral deference to what they say. They are wrong – and wrong far more often than most people realize.

          It is also a give away that you are not an attorney, as I have yet to see a state oath for attorneys that places the Supreme Court above the law and above the Constitution.

          Thus, once again, your accusation of “projecting” falls far far far short.

          Here’s a hint: bone up on your history and the law, and stop with the philosophy and accusations.

          1. 13.3.1.1.1

            I am an attorney. I made an oath to uphold the constitution. My interpretation is just different from yours.

            I met plenty of people like you in school, who exalted the constitution and the “rule of law” to some sort of elevated metaphysical status.

            I don’t agree with them. Laws are made by people for people–this includes the constitution.

            I don’t understand why you need to keep attacking my credentials. I just don’t agree with your jurisprudence.

            I didn’t learn 1800s law in school. I learned modern law.

            I didn’t respond because I knew you felt the need to attack my credentials rather than debate me on the merits. Why should I engage in that nonsense ?

            1. 13.3.1.1.1.1

              T, the comment about 1800’s law is interesting. While Federal Circuit law might be all one needs to know to get by on a day to day basis, to really understand patent law, one must read the Supreme Court cases from the beginning, especially the one’s that continue to be cited.

              I would also recommend getting a copy of Curtis (’67) and keeping by your bedside, like the Bible.

              1. 13.3.1.1.1.1.1

                …and it is not your credentials that I keep attacking – it is the poor result of the slipshod manner of your current posts reflecting a lack of appreciation that your credentials should have provided a better foundation for discussing law.

                Law is definitely made by man – just not in the way that you as man are “making” it here in your comments.

            2. 13.3.1.1.1.2

              Topce,

              Your interpretation denigrates the constitution and places one branch above the law.

              You really do need to get in touch with the history of law and the history of American jurisprudence. Your disdain for its roots places your “knowledge” without foundation and you pursue whimsical changes that have no connections with the reasoning behind law.

              As to what you think I “felt,” and what are the “merits,” you have shown an insistence on dismissing the merits out of hand when those merits do not match your “modern” philosophies.”

              The Constitution IS elevated. This is a foundational fact of American law. This is not to say that the Constitution cannot be changed. It can. But do note that changing it was expressly differentiated from other changes to other laws. It is expressly different, and you do not follow your oath with your admission as to thinking it otherwise.

              It is clear error of you to ascribe to me a “locked in” mindset just because I know and appreciate the historical foundations of American jurisprudence, and place the judicial branch within (as opposed to above) the law. Your disdain for history is the source of your failure. One is not locked into history when one has a proper appreciation of it. But when one does not learn from it, one is bound to repeat the mistakes of the past, time and time again.

    4. 13.4

      Computer software per se is the subject of copyright. However, no experienced patent attorney writes claims to computer software per se. Most claims are to interactions with a machine that allows the machine to perform new functions.

      1. 13.4.1

        no experienced patent attorney writes claims to computer software per se. Most claims are to interactions with a machine

        Really? What’s “interacting” with the machine in these claims you are imagining?

        1. 13.4.1.1

          Take a basic computer engineering course if you want to understand how software encoded in a memory interacts with machine hardware.

          1. 13.4.1.1.1

            KC, if the machine is improved, and invention is claimed that way, of course. But if the machine is simply being used, then the machine is not improved.

            Agreed?

            1. 13.4.1.1.1.1

              You cannot “use” the machine Ned, unless you first change the machine to be able to “use” it.

              You keep on omitting that crucial first step that every PHOSITA knows.

              You have been put on notice of this, but like the exceptions to the judicial doctrine of printed matter, your choice of portrayal is knowingly done with material omissions – an ethical violation of advocacy.

              But such is allowed to run rampant….

            2. 13.4.1.1.1.2

              When software is loaded into the memory of a machine, the machine has been changed. I have now changed the matrices of on and off memory cells. I have reconfigured the memory cells in a novel way. When the software is executed, the sequence of logic operations within the machine have been changed. Therefore, I have changed the entire way in which this machine operates. This is not using a hammer to pound nails and then using the same hammer as a door stop. New software plus an old machine is physically a new machine. If I have simply automated an old process (Alice & Bilski), fall under 102/103. If I have implemented a law of nature including a mathematical identity with a machine (Benson), fall under 101. If one has invented a novel and non-obvious configuration for this machine that produces a concrete & tangible result, then patentable. Why is this so difficult?

              1. 13.4.1.1.1.2.2

                KC,

                It is difficult because it is just not the narrative desired by those with a specific agenda.

                No matter what you say, there is no listening to reason from those you are talking to.

                They are not interested in dialogue. They are only interested in their own monologue.

          2. 13.4.1.1.2

            KC: Take a basic computer engineering course

            Try to answer my question yourself if it’s so “basic”, KC. Should be straightforward for you.

            Here it is again, just in case you forgot what we are talking about: In a typical computer-implemented information processing claim what subject matter recited in the claim is “interacting” with the machine.

            Presumably it’s some new recited structure that the old recited machine is “interacting” with in some unexpected way. But go ahead and surprise me.

            1. 13.4.1.1.2.1

              …and yet again Malcolm seeks to make an issue of one optional claim format as being a necessary (and only) claim format under the law.

              The optional claim format is just that: optional.

      2. 13.4.2

        Exactly. Which is not patent eligible. Performing an abstract idea on a computer is not a NEW And USEFUL. Process. It is a new use of an old product which is not patent eligible.

        [T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).

        1. 13.4.2.1

          Your citation does NOT support your conclusion of “It is a new use of an old product which is not patent eligible.</i." (emphasis added).

          Did I not point out to you 35 USC 100, and did you not yourself agree? and yet here, you attempt the opposite of that section of law.

          Oops.

      3. 13.4.3

        Computer software per se is the subject of copyright.

        No.

        This is a fundamental misunderstanding of the fact that software has more than one aspect and that different aspects garner different protections under the different IP laws.

  10. 12

    Aren’t the problems entirely confined to the word “process”?

    If “process” were firmly defined, by a revision of 100(B) or judicial interpretation, wouldn’t most of this all go away?

    1. 12.1

      What do you find confusing about the word process? Why would it need any firmer definition that say: manufacture.

      What you object to is what the definition of process is. You know what it means. You simply don’t like that processes are eligible for patenting.

      1. 12.1.1

        OK then, Stevens was drunk when he wrote this:

        “The Court attempts to avoid such absurd results by stating that these “[c]oncerns” “can be met by making sure that the claim meets the requirements of §101.” Ante, at 6. Because the only limitation on the plain meaning of “process” that the Court acknowledges explicitly is the bar on abstract ideas, laws of nature, and the like, it is presumably this limitation that is left to stand between all conceivable human activity and patent monopolies. But many processes that would make for absurd patents are not abstract ideas. Nor can the requirements of novelty, nonobviousness, and particular description pick up the slack. Cf. ante, at 12-13 (plurality opinion). A great deal of human activity was at some time novel and nonobvious”

        He is arguing for a construction of “process”. Imagine that, when its written right in front of him….all he needed to do was call Les to figure it out.

        .

        1. 12.1.1.1

          Drunk or sober, he was wrong. He was hunting for a way to invalidate a claim he didn’t like, because he didn’t like it. The result was only absurd because he declared it so.

          What is absurd are the recent decisions of the court which I paraphrase as: the claimed method is abstract because it is old.

          Sigh, if it is old than reject it under 102.

        2. 12.1.1.2

          Leaning to Stevens won’t help you.

          Quite in fact, one can learn a lot by studying his position (and the interaction with the other Justices) throughout his duration.

          He once warned about treating 101 like a nose of wax – and proceeded to attempt that very thing.

    2. 12.2

      wouldn’t most of this all go away?

      No.

      It won’t go away because it is not driven by the words of Congress.

      Those words are actually clear and 101 is meant to be a wide open welcoming gate.

      It is the drivers of those who want to infuse “philosophies” that there are “too many patents” out there that is mucking things up.

      One of the primary lessons for these wanna-be’s should be the structure and distinction between statutory law and common law (and the constitutional authority for patent law solely to one single branch of the government)

      1. 12.2.1

        Indeed. The article presupposes and rightfully so, that the public must accept the SCt’s interpretation and vague application of 101. The public really needs a legislative solution. I would propose amending 101 so that laws of nature and natural phenomena cannot be patented, eliminate any consideration under 101 of the abstract idea exemption, and perhaps codify a tangible result requirement. Then let 102 and 103 do their job.

        1. 12.2.1.1

          KC, I cannot help but wonder where you guys get off. There is nothing new in Mayo or Alice.

          The problem occurred in Bilski. What we need is a better definition of Abstract.

          1. 12.2.1.1.1

            Ned, if there was a better, positive definition of “abstract”, it would be in use. By including a tangible or concrete & tangible result requirement in 101, “abstract” is essentially defined in the negative in a way that can codify existing case law. The alternative is to continue to allow the courts to wipe out previously patentable innovations using vague concepts that have no root in technological reality. It should be and is the law under 102/103 that taking an existing process and simply automating it by implementing it in a computer is neither novel nor nonobvious. Alice and Bilski, for example, would have been taken out by 102/103.

            1. 12.2.1.1.1.1

              US jurisprudence is not limited to “technological” – beware the explicit addition to 101 so recently attempted by the judicial branch.

          2. 12.2.1.1.2

            Ned you are exactly correct that we need a repeatable, precise definition of “abstract” to go along with a realistic statutory interpretation of “process”.

            I have one in mind…..

        2. 12.2.1.2

          One bitty little problem. 102 and 103 are a million bucks a pop. Totally unsustainable.

          Make the minimum patent damage claim one million dollars and we are talking. Also provide a mini-damages hearing right at the bottom of the docket to make sure nobody is hitting the crack pipe.

          1. 12.2.1.2.1

            That is only a problem if you don’t want to follow the law as written by Congress.

            You have a problem with it?

            Talk to Congress.

  11. 11

    It is crazy to rebuild 103 jurisprudence for 101 based on the SCOTUS conflating 101 with 103.

      1. 11.1.1

        The conflation begins when the court considers what is “conventional” or “routine” in their 101 analysis.

        1. 11.1.1.2

          I agree that there is necessity some conflation by the language of the Court. But asking whether a computer is conventional is hardly a 102 analysis. The Court certainly didn’t suggest that all the factors in the article should be part of 101 analysis.

          1. 11.1.1.2.1

            J,

            NO ONE is saying that there is “some necessity.”

            Move the goalposts back, and stop agreeing with yourself.

            1. 11.1.1.2.1.1

              Look anon, I comment on my phone during breaks and my typing is not always great here as a result. You could be a generous reader and give me the benefit of the doubt, you know?

              By the language used by the Court, it is impossible to avoid some use of 102 and 103, though not every case will need to.

              But what is not needed, and I think you agree, is out-right conflation of 101 and 103.

              1. 11.1.1.2.1.1.1

                j, if, in the final analysis, one give no weight to non statutory subject matter when considering 102/103, there is, in fact, no difference between saying the issue is resolved under 101 with 102/103 mixed in, or under 102/103 with 101 mixed in.

                It is just that whether something is non statutory or not should not be judged on the basis of whether it was known or unknown.

                1. Ned,

                  You remain off with your desire to judge 101 on an element by element basis only.

                  I refer you to the application of your logic to the big box of electrons protons and neutrons, of which ALL machines and manufactures necessarily are starting off as “non-statutory subject matter.”

              2. 11.1.1.2.1.1.2

                J,

                I could be a more generous reader, except for the fact that your misstatement is something that “many” here will ardently agree with, and I had no way of telling that you simply misspoke.

                I do welcome your clarification though. However, to just dismiss the language of the Court as they conflate 101 and 102/103 is a mistake. The larger battle here is not letting the statutory law as written by Congress (the only branch duly authorized by the constitution to write patent law) become a nose of wax so easily mutilated by the judicial branch and such legislating from the bench. Going “Oh well, it’s done ” is not acceptable. That’s just a sign of Chamberlain-like “patent peace for our times” when we need a Churchill response. Appeasement to those who (mis)appropriate power NEVER works.

  12. 10

    I’m grateful for the direction the article is pointing. I would rather it focused on the error and pointlessness of conflating 101 and 103. If the issue is 103, then have a trial based on 103. Whether a claimed invention is directed to a process, machine, manufacture or composition of matter is a question that is clearly answerable without reference to the prior art.

    1. 10.1

      I completely agree, and thank you. Any examination of the state of the art belongs in 102/103.

  13. 9

    “tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Alice, 134 S. Ct. at 2354.

  14. 8

    Defendants have had a field day eviscerating patent after patent since Alice

    Oh noes! The evisceration!

    [clutches pearls]

    In a sane patent system, none of those patents should ever have been granted or even gotten close to the patent office. The gates were opened by some short-sighted judges, greedy people stormed the gates, and now the gates are closed and those greedy people are shocked — shocked! — that their toy is being taken away.

    Cry me a river.

  15. 7

    Roxborough: Indeed, three years later, the Federal Circuit panel in Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347 (2015), went as far as saying that a “pragmatic analysis of § 101 is facilitated by considerations analogous to those of §§ 102 and 103.”

    This isn’t a “blurring.” Your suggestion to the contrary shows that you don’t understand how and why 101 works.

    Have you read Prometheus v. Mayo? Do you know what the case was about? Do you understand why knowledge of the prior art is essential for any subject matter eligibility regime to work properly?

    Let me know. I’m here to help.

    1. 7.1

      I think the tone here is unnecessarily, MM. Even if you had a good point, no one is going to listen if you write like that.

        1. 7.1.1.1

          Anyhow, it’s fairly evident that Alice blurs the lines between 101 and 103. Any time a court begins to examine what is “conventional” or “routine” in the art, they belong in 102/103. Yet, these are considerations under the Alice framework for 101 analysis.

          1. 7.1.1.1.1

            it’s fairly evident that Alice blurs the lines between 101 and 103.

            No, it’s not “fairly evident.” Keep drinking that kool-aid, though.

  16. 6

    Mr. Roxborough’s suggestion to use the specification itself to “solve the problem” for purposes of 101 analysis is a good one, I think.

    It seems to me from the cases and PTO guidance that the 101 “inventive concept” really means the subjective inventive concept (i.e., what did the inventor think he invented) as opposed to an objective inventive concept for 103 purposes. That is why the admitted prior art in the specification is relevant — because it goes to the subjective inventive concept.

    If this is a fair reading, then 101 analysis looks to the subjective inventive concept to determine whether the inventor invented something within patentable subject matter, and then 103 is used to determine whether that invention is novel and non-obvious. IOW, there shouldn’t be a result where a court finds a lack of inventive concept for 101 purposes.

    1. 6.1

      It seems to me from the cases and PTO guidance that the 101 “inventive concept” really means the subjective inventive concept (i.e., what did the inventor think he invented) as opposed to an objective inventive concept for 103 purposes.

      Prometheus testified in open court that their patent was infringed by (1) carrying out an old method and (2) thinking a new thought about the result.

      What do you find “subjective” about the determination that Prometheus’ “inventive concept” was an ineligible correlation?

      1. 6.1.1

        It’s not the “determination” that is subjective — rather, considering the inventive concept subjectively (i.e., from the viewpoint of the inventor/patentee), they found nothing beyond the law of nature.

    2. 6.2

      pikku, somewhat agree here. If the inventor says he invented a new business method in the specification, then he does not get a patent unless he provided some inventive means for implementing it as well actually claimed it or the combination.

  17. 5

    …or maybe we can stop treating 101 like a wax nose and restore it to how it was written and what it actually states.

    Clarity rather than conflation…

    1. 5.1

      I agree with anon’s sentiment. If courts are blurring 101 into 103, then something is not right. A correct rule for 101 would still allow examination of the patent through 101–104 in sequence. For your paper, Mr. Roxborough, I need to hear why blurring 101 and 103 is a good thing.

      Also, I do not see why 101 should be anything than a pure legal question after claim construction. Just thinking big picture in the legal world, are there ever factual questions to the question of whether a statute covers a particular thing?

      1. 5.1.1

        J, my own view is that we do this, in order,

        1. Identify ineligible subject matter in a claim;
        2. Identify eligible subject matter in a claim;
        3. Exclude the ineligible from 102/102 unless it is functional with respect to the eligible so as to transform it to a new state or thing; and
        4. Then conduct 102/103.

        1. 5.1.1.1

          Yes, I think that is the right approach, generally. It kind of begs the question though: what is ineligible and eligible subject matter? If you say ineligible subject matter is is old or obvious, then you’ve just conducted a 102/103 analysis.

          1. 5.1.1.1.1

            J, novelty should have nothing to do with the identification of nonstatutory subject matter.

          2. 5.1.1.1.2

            100% agree. I’m just asking the question on how you determine what is and what is not statutory.

            1. 5.1.1.1.2.1

              J, machines, manufactures, compositions; and

              as for processes, see Dyk’s concurring opinion in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). link to scholar.google.com

              Particularly, see the discussion of the two English cases. These are also discussed at Curtis (’67) sections 4, 5 and 9.

              Dyk concludes, “[T]he only processes that were patentable were processes for using or creating manufactures, machines, and compositions of matter.”

              There is a little more nuance. The use must produce “effects useful to the public.” Benson suggested, physicality of the effects is the key to eligibility.

              1. 5.1.1.1.2.1.1

                Thank you for articulating your test. Applying your test to the patents in the SCOTUS 101 cases would give the exact sake result.

                There is one problem. The Supreme Court, and really this is the only problem I have with their decisions on the subject, requires that the patents be rejected by 101, not 102 or 103. So I would amend your test in one way. Instead of moving on to 102 and 103, the examiner/judge must consider if the machine could possibly survive 102 or 103. If it is clear that it cannot, it must be a 101 rejection.

                Take the piano example above. We eliminate the song, so we are now left with a piano. Clearly the machine cannot possibly survive 102, so it is rejected on 101 grounds.

                1. J, the printed matter doctrine is handled during 102/103 by giving the printed matter no weight unless it is functional and improves the statutory subject matter.

                  There is no reason why the PTO should not adopt this procedure to handle Alice/Mayo. None at all.

    2. 5.2

      Anon’s suggestion is the only way to stop the rot. I am in total sympathy with Mr. Roxborough’s attempt to make one’s way in the new regime, but I think that he is giving the new 101 regime credit it does not deserve. He imagines that the Flook revivalists are applying a good faith interpretation of 101. They are not. They are, as anon notes, twisting 101 like a nose of wax precisely so as to spare themselves the effort of having to do the hard work of a 103 analysis.

      103 implies coming to grips with the state of the art—hours of tedious testimony by PhDs, discoursing on nucleosomes and quantum states and algorithms. This is tiresome for a judge who was a history major in college and took no more credit hours of science (“physics for poets,” “rocks for jocks,” etc) than s/he was absolutely required to do. The new 101 allows them to skip all of that, by treating the specification as an “admission,” so that this can all be thrown out at the SJ stage without ever having to sit through all of those dreary experts and write all of that tedious Markman verbiage.

      In other words, the whole point of the new 101 regime is to eliminate the tedious 103 analysis. There is no way that any judge up or down the hierarchy is going to accept Mr. Roxborough’s suggestions, because that would defeat the very purpose for which the Flook style of thinking was first developed.

    3. 5.3

      Anon – I am probably in agreement with you on 101 issues and I think Alice created bad law. However, there is an argument supporting aspects of Alice under a plain reading of 101: “Whoever invents or discovers any ‘new’ and useful…”. The “new” terminology in 101 is unfortunate for those of us that believe the state of the art should be examined under 102/103 and not 101.

  18. 4

    Several years ago, the European Patent Office noticed a similar blurring of the lines between eligibility (Art. 52 of the European Patent Convention) and inventiveness (Art. 56). Ths solution was radical: any recitation of a material element (even pen&paper for performing calculations!) avoids a rejection under Art. 52, but if only non-eligible elements are new, then the application is rejected for lack of inventive step.
    The current situations in the US reminds me of the “old” European doctrine – which is as good as the new one, it is sort of a phylosophical issue…

  19. 3

    In effect, the 101 ineligibility defense has become a de facto 103 defense, targeting primarily combination patents.

    That’s because combination patents in certain areas are generally not inventions. Especially when general language is used which is combining things by functions rather than by structural interrelationships.

    what courts most want to know (or should want to know) is: “Who would have thought to combine the elements of the invention in the first place, and why?”

    Nope. The question of a combination patent is “What causes the whole of these pieces to be more than the sum of their parts?” i.e. Why is it combination rather than aggregation? Again, in many areas this answer isn’t helpful to the patentee.

    If you’re in software or mechanical arts and you aren’t talking about specific structures you almost certainly don’t have a valid combination claim, because those arts are predictable and you generally need detail to a specific structure to define something new. When that specific structure isn’t claimed it 1) generally causes the claim to be motivated solely by some sort of result, which means it is an abstract idea preempting a field of invention and 2) is only talking about general items which employ their generally-known structures to achieve common results, making the combination obvious. The fact that 1 and 2 tend to appear together in certain contexts is a function of hidden variables “predictability + overbroad claiming” and not because the 101 and 103 analysis are merging into a single analysis. You’ll notice the converse is true as well – providing proper detail in a claim fixes both the 101 and 103 issues, not because they’re the same issue, but because the detail removes the ability to preempt the field while simultaneously providing a particular means which is more likely to be non-obvious.

  20. 2

    Ben, Have you read Hotel Security?

    Let me give you a taste: A business method is not an Art. Invention must lie in the means.

    A broader statement of the policy is this: when a claim mixes both the statutory and the non statutory, invention must lie in the statutory. Thus, if the novelty is in the non statutory, it must be applied to the statutory to improve it.

    Hotel Security directly resulted in In re Russel, a.k.a. the printed matter doctrine. The way this is handled today is that the printed matter is given no weight in the 102/103 analysis unless it provides new functionality to the underlying subject matter.

    Mayo and Alice simply formalized what the Supreme Court has long followed. Take Benson. The novelty was in the math. The computer was old. The math was not applied to improve the computer. QED, nothing patentable.

    No sky is falling. What is happening is a restoration — back to the time before the CCPA and Judge Rich.

    1. 2.1

      The way this is handled today is that the printed matter is given no weight in the 102/103 analysis unless it provides new functionality to the underlying subject matter.
      Incorrect. From Lowry: “In sum, the ADO’s perform a function. Gulack requires no more. See Gulack, 703 F.2d at 1386.” What this means is that the printed matter has to be functionally related to the substrate — it does not require “new” functionality. Also, realize that the printed matter doctrine is limited to “novel arrangements of printed lines or characters, useful and intelligible only to the human mind.” King Pharmaceuticals extended the underlying concept of the printed matter doctrine to an “informing” step. However, that is not we are talking about here.

      Regardless, the printed matter doctrine has been made obsolete by Mayo. What the printed matter doctrine was crafted to protect against can be handled under 35 USC 101. If the invention is directed to something “useful and intelligible only to the human mind,” then it is directed to an abstract idea. Since you’ve cited In re Russell, you also know that the court did not “ignore” the limitations (as would be done today) but determined: The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,”

      The math was not applied to improve the computer. QED, nothing patentable
      Benson does not support that analysis. Benson said nothing about improving a computer (or lack thereof). Under Benson, the Court found that the claims were too broad and covered both known and unknown uses — hence, the claims were “abstract.”

    2. 2.2

      The denigration of Rich continues – but it is not Rich who should be the aim but Congress.

      Still in denial that the judicial branch has launched a coup and displaced the legislature.

      As if 1952 never happened…

    3. 2.3

      Thans for clearly exposing the misunderstanding. For decades, on both sides of the Atlantic, there is a discussion whether in mixed inventions the statutory subject-matter part must be novel. That seems obvious, as you say. But it is not! A basic rule of patent law requires a “whole contents approach”.

      Still this approach is not always counter-intuitive, since it may be difficult if not impossible to separate the statutory from non-statutory subject matter. In a proper patent application, all claims relate to a single problem solution, and they are all needed. The EPO “Ticketmaster” decision (T688/05) clearly shows that omitting the (alleged) non-patentable subject-matter part leaves an imaginary, non-functioning system. The argument is not new: a similar argument is found in T26/86 “Koch & Sterzel”.

      The paradox can only be resolved by acknowledging that a split between patentable and non-patentable subject-matter is infeasible and inappropriate from the start. Seek also Diehr.

      This does not mean that there is no limit to patentable subject-matter. On the contrary! The question must be asked whether the “teaching” in the (alleged) invention is sufficient to be carried out by any person skilled in the art (also implied by § 112 – that requires a description to that effect). Then pure scientific theories are automatically excluded, and also most business methods.

      35USC101 (and likewise 52 EPC) are the only provisions related to an absolute criterion. An idea that once was abstract remains so forever, and, similarly, something that was non-technical remains non-echnical forever.

      On the other hand, 35USC102 and 35USC (line 54EPC and 56EPC) are relativecriteria, since they depend on the “state of the art”.

      Proposals to forget the terrible § 101 problem and to ignore this provision (and 52EPC) altogether in favor of 102/103 are fundamentally wrong since they abandon the last absolute criterion!

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        Reiner, Clearly if the otherwise ineligible subject matter is a functional part of the eligible so that it imparts some new functionality to it, then we have Diehr.

        But, where the statutory subject matter is simply being used as in Benson, then the claim as a whole does not present a patentable invention.

        Alice and Mayo are back to the future, so to speak. They represent the return of American patent law to its historical common sense approach. It is good to see that Europe also has recognized the problem and is or has been struggling with it as well.

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          I guess part of the problem are economists. AFAIK they invariably assume that patents serve the purpose of allowing “internalization of externalities”, in normal language: to allow the inventor to get some money from others that benefit from his invention – so that he is able to recoup some of his R&D investment.

          If that would be true, patentability ought to be extremely wide – and include scientific theories too, at least.

          My favorite theory starts from two givens:
          1. “patentability shall not be negat(iv)ed by the manner in which the invention was made. So coincidental “serendipity” inventions are patentable too, if they meet the other requirements.
          2. pure science is not patentable, however costly the underlying research was.

          If investment is neither necessary nor required, it is relevant for the grant of patents. Crazy? I think the logic is compelling.

          Incidentally, you may know that around 1980 the WIPO attempted to create some legal structure to protect the results of pure science (not patents, but patent-like). There is a wonderful book (sorry, in German) by Beier & Straus that tells about the various attempts to create such a protection – that invariably failed!

          So I think that patents are justified if and when exclusivity is needed as an exception to the rules of the free market. Indeed patents are not always used as a “cash cow” for licence fees, but often also to maintain exclusivity.

          I guess a problem easily overlooked is that the connection between pure science and its commercial applications is often vague and uncertain, and the time in between varies from decades to centuries.

          For instance, the semicondictor technology now used in mobile phones is the result of solid state physics research starting in the late 1940s, which is based on quantum theory of the 1940s, which was the answer to the apparent incompleteness of electromagnetic theory of Maxwell from the mid-19th century. Or take Einsteins theories of relativity which are indispensable for the correct operation of GPS navigation tools: without those corrections, the location would be several miles wrong.

          Perhaps there is a closer connection between science and commercial application in biotech – that is not my field of expertise.

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    This sounds like an interesting article. You’ve thought about this in more detail than I have recently, so take this for whatever it’s worth, but 101 also seems to me to be blurring a bit with 112. The “preemption” 101 arguments suggest that the patentee has claims that may or may not be obvious, but they’re much broader and more general than what the specification enables or shows that the patentee actually invented.

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      Glad Roxborough is taking the time to analyze and provide some helpful advice. I would love to see more of this. His advice is helpful during litigation, but what to say during prosecution or when the application is being drafted.

      It is unfortunate that the best patent blog on the Internet has been taken over by one specific know-it-all who love to be rude and degrading to any opinion that does not measure up to his beliefs. I wish someone could send a computer virus to that person which would prevent them from ever submitting his comments to this once-great blog.

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