Two-Step Printed Matter Doctrine: (1) Is it Printed Matter?; (2) Do we give it patentable weight?

By Dennis Crouch

The printed matter doctrine probably arises less than it should as its contours are likely integral to an understanding of the patentability of software related inventions.  Like the abstract idea test the doctrine barring the patentability of certain “printed matter” is nonstatutory and judicially created.

In the recent DeStefano case, the Federal Circuit vacated a PTAB anticipation decision that was based upon the printed matter doctrine — holding that the Board erred in its understanding of the test.

Distefano claims a user-directed method of designing an electronic document.[1] The PTAB found that all of the elements of the claim were anticipated by a prior art reference except for the claimed requirement of “selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user.”  Rather than finding that element in the prior art, the Board ruled that it should be given no patentable weight under the printed matter doctrine.

The printed matter doctrine has a long history and generally stands for the principle that no patentable weight should be given to the content of information recorded in a substrate.[2]  leading case in the area continues to be 1931 Russell decision.[3] In Russell, the CCPA ruled that a “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.”

The Federal Circuit has ruled on several printed matter cases — holding that the content labels providing dosage instructions, instructions for performing tests, and numbers printed on a wristband were all printed matter.[4] on the other side, the Federal Circuit ruled in Lowry that data structures themselves should not be considered printed matter if they include “information regarding physical interrelationships within a memory.”[5]

To be clear, the question of whether or not a claim element is printed matter represents just the first step in the process. Once an element is determined to be printed matter the court must take the next step of determining whether or not it should be given patentable weight.  Regarding the second step, the court writes here that the “common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.”  Thus, information content can be given patentable weight if it “has a functional or structural relation to the substrate.”

Coming back to DiStefano’s case, the appellate panel here ruled that the claimed “selecting a first element” step failed the threshold question and was not itself a claim directed toward printed matter. The court writes:

Although the selected web assets can and likely do communicate some information, the content of the information is not claimed. And where the information came from, its “origin,” is not part of the informational content at all. Nothing in the claim calls for origin identification to be inserted into the content of the web asset.

Thus the case was vacated and remanded back to the patent office for another go-round.  I’ll note here that this is the second time the Federal Circuit has reached a decision in this case. In its 2014 unpublished decision the Federal Circuit also rejected the board’s attempt at an anticipation rejection-that time finding that the rejection was an “new ground of rejection” that required a remand.[6]

The claim itself appears fairly simple and straightforward, and one that is, in my guesstimate, likely directed to an idea already known.[7] Of course, so far the patent office has been unable to find the right references and unfortunately had to really stretch the law in this one.

On remand, it will be interesting to see whether the patent office follows its usual procedure of allowing a case after a successful appeal by the applicant, or will a new search and new rejection be submitted?

My understanding is that Mr. DiStefano continues to own the patent via his Patent Trust LLC.  Patents in his portfolio include US Patent Numbers 6,331,400, 6,771,291, 7,353,199, 7,996,259, 8,335,713, 8,412,570, 8,417,567, 8,423,399, 8,442,860, 8,589,222, 8,650,076, 8,768,760, 8,781,890 and 8,996,398.[8]

= = = = =

[1] US patent Application No. 10/868,312, claim number 24.

[2] See 1 Chisum on Patents section 1.02.

[3] In re Russell, 48 F.2d 668, 669 (CCPA 1931)(indexing the names in directories and dictionaries).

[4] AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1048 (Fed. Cir. 2010); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010); In re Ngai, 367 F.3d 1336, 1337–38 (Fed. Cir. 2004); and In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).

[5] In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994).

[6] In re DiStefano, 562 F. App’x 984, 984 (Fed. Cir. 2014).

[7] The text of the claim is as follows:

A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element, an electronic document, comprising:

selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;

displaying the first element in the second display region;

interactively displaying the electronic document in the first display region;

modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display region; and

displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.

[8] Thomas L DeStefano III, LinkedIn biography available at https://www.linkedin.com/in/thomas-l-distefano-iii-a538811.

322 thoughts on “Two-Step Printed Matter Doctrine: (1) Is it Printed Matter?; (2) Do we give it patentable weight?

  1. 22

    mechanical logic

    LOLOLOLOLOLOLOLOLOLOL

    Almost as laugh-w0rthy as calling Charles Shulz a “cartoon engineer” and using that term to shunt the comics page in the patent system.

    But we know that the software patent lovers will make any argument, no matter how silly. After all, when you got nothin’, might as well just keep tossing those Hail Marys. And they’re very serious people. They know how to debug stuff! It’s sooper dooper hard.

  2. 21

    Since Malcolm thinks that he can “expand on this all day” – his “Just to expand on one point (and remember: I could do this all day long — anybody with half a brain can do it all day long once they appreciate that ”let’s just nip the nine years and running blight in the bud and “expand” from my comment (reprinted herein) to see why the typical anti-software patent rants are a F A I L from the start.

    If one approaches the situation with a mind willing to understand and realizes that IP laws are set up to protect various aspects of man’s efforts, and one is willing to understand that an effort of man may have multiple aspects, one can easily see that the efforts of man may garner different types of protection under the various different types of IP laws.

    Just as Malcolm exhorts the use of “copyright,” such places software to be more than his other stances of “this is just ‘logic’,’ or “this is just math.” Anybody with half a brain knows that you cannot copyright math or logic.

    Let’s also remember that software is not created as a story. Yes, it does have elements or portions that are reminiscent of stories, but also remember that software is manufactured for utilitarian purposes, while stories do not meet this aspect of the Useful Arts.

    If one is inte11ectually honest – and isn’t that a true measure of what is blight and what is not? – then it becomes VERY clear who is posting nonsense and who wants the just protections afforded by the laws we already have in place – ALL of the laws for ALL of the different aspects of man’s manufactures. There is no need – and no place – for the types of obfuscations between the different IP realms, and between the Useful Arts and the non-Useful Arts. You either Belieb in the systems that afford protection or you do not.

    My own post from below (repeated here for convenience):

    Malcolm’s lack of understanding continues…
    Actually seems like they should just copyright the software.

    Reminder (short and declarative like):

    Copyright : expression
    Patent : utility

    The wonderful thing about software (which is not math, not logic, not stories) is that software had aspects of both expression and utility.

    1. 21.1

      anon, In defense of Malcolm, I think he would distinguish between copyright which protects expression, patents which protect utility, and intellectual property protection of any kind that protects information.

      There might be a severe constitutionality issue with respect to protection of information. Name that constitutional provision.

      1. 21.1.1

        Don’t need to Ned – as that way is into the weeds of obfuscation.

        Information is just NOT being “protected” as Malcolm pretends.

      2. 21.1.2

        And note (yet again), that my request for dialogue on point is met with the roar of silence from the anti’s…..

        To wit: NO answers for any of the many critical points on the table.

    2. 21.2

      Software is an article of manufacture like a hammer or fishing pole. It is made by people, stored on disks, bought, leased and sold. It can be stolen. It has some odd features since the cost of design is 99.999 percent of the cost while the cost of manufacture is the cost of making a copy of a digital file, but think everyone would agree that software certainly looks like an article of manufacture. In the old days it was executable files running on your computer and now it is a executable(-ish) web page downloaded and run by your web browser.

      When claims are written about other articles of manufacture they reference, in general, the manufactured article. (i.e. Wright brothers: “[a wing with]… lateral marginal portions capable of movement to different positions…” or Morse: “…the straight port-rule, the circular -port-rule, the two signal-levers..”)

      Software patents never discuss in detail the manufactured article, the literal arrangement of the bytes on the disk. How is it possible to have a claim to a manufactured article which never describes in any detail the manufactured article i.e. the bytes?

      This raises the suspicion that software patents are getting an unfair advantage over non-software patents somehow.

      1. 21.2.1

        You misunderstand the legal requirement pertaining to that which a Person Having Ordinary Skill In The Art mandates.

        1. 21.2.1.1

          To put it another way a software PHOSITA is able to create software simply from a knowing what the function of the software is because everything else is within their knowledge. There is no need to mention the bytes because they are well within the capability of the PHOSITA.

          As a software PHOSITA myself, I have to say this is completely true.

          But now every software invention sounds like an abstract idea (do this function) plus a PHOSITA.

          Which confirms my suspision, software claims do get an unfair advantage: they get to claim abstract ideas as articles of manufacture because software PHOSITAs are so darn smart.

          1. 21.2.1.1.1

            In pieces (filter)

            Not only would the “bytes” be not needed – they would diminish the clarity of the claim.

            Greatly.

            I pointed this out to Malcolm during one of his “objective physical structure” rants, that ALL software claims could be written in multi-hundred page claims detailing the “objective physical structure” of an equivalent claim.

            1. 21.2.1.1.1.1

              “I pointed this out to Malcolm during one of his “objective physical structure” rants, that ALL software claims could be written in multi-hundred page claims detailing the “objective physical structure” of an equivalent claim.”

              And then we could fairly and justly administer the application of 102 and 103. Without that, 102 and 103 cannot properly function. They function only as a farce.

              1. 21.2.1.1.1.1.1

                And then we could fairly and justly

                And then nothing of the sort, 6 – as you completely MISSED the point of my pointing out Malcolm’s fallacy:

                Such claims would run hundreds of pages and be completely UN intelligible to ANY human.

                There is a reason why In The Art is a part of PHOSITA.

                The farce here is yours (and Malcolm’s).

                1. “Such claims would run hundreds of pages and be completely UN intelligible to ANY human.”

                  Quite alright brosef, that’s not a problem, that’s a feature. First we can probably start having computers write such claims, then we can use compooters to run the search, and have a perfect search, every time (at least for anticipation, and a good search for obviousness), once we have a good database of prior art structures built up. And, we can just use a compooter to tell if the infringer’s code is infringing.

                2. 6,

                  You are not following the reasoning being used by Malcolm in his canard of “all objective physical structure.”

                  Further, that you think that your job can be one replaced by a “compooter” is eminently funny – but I doubt that you understand why.

                  Finally, you rather miss the entire point about how claims ARE read from the viewpoint of PHOSITA.

                  You do realize of course that “code” is not what is patented, right?

          2. 21.2.1.1.2

            IF one understands patent law, one can see right through the C R P “sniff, it’s a-a-a-abstract” nonsense.

          3. 21.2.1.1.3

            Your susp1c10n is unwarranted as EVERY art unit obtains the same TYPE of advantage with its own PHOSITA.

      2. 21.2.2

        A fair question. Right or wrong, here’s my personal answer.

        The intended audience of a claim is the artisan skilled in the relevant art. A patent claim is a communication between technical artisans. And about software, isn’t programming largely about managing complexity. Can someone program billions of individual logic gates? Not practically. So we have all of these tools to help programmers formally express their intentions at a high level. High level code in a rich language gets translated into a less rich and less complex language or representation, and so on, down to machine instructions in the “language” of the processor, which even then are turned into even simpler operations performed by logic gates using stored individual bits. Enough people use the same tools to perform this kind of process. Artisans work in code, share their developments in code, exchange code, publish code, and so on, and most are able to speak those same “languages” and understand each others’ meanings and what any particular code will actually do when it drives some hardware.

        Now just take a small step further back. Not all programmers use and know the same languages, so they use jargon, pseudocode, and plain English (or other human language) to communicate about how to make these complex programmable machines do things. This is all a claim is.

        If done properly, it’s no different than chemistry jargon, or electrical engineering “language”, or mechanical description, etc. A patent claim is a communication from artisan inventor(s) to other artisans. Look at your examples. Does one claim “N molar of atoms having a proton and neutron nucleus and a single electron orbiting the nucleus”, or “hydrogen”? “Hydrogen” only describes something by convention; it’s just a symbol that happens to be widely agreed as represents something more than a word. Does one claim a “wing”, or does one claim a structure in terms of camber depth and offset, angle of attack, material, physical dimensions, and other details? The level of description should be appropriate for the level at which invention occurs. If an invention is about a particular wing profile, then details about camber be appropriate. If an invention is about a new folding-wing design, then maybe not.

        A “software” claim is no different. An average programmer in the relevant art should be able to read and understand a claim, and in my experience, well-crafted claims are clear and understandable to most programmers. Most will know what a “compiler” is, or a hash table, or an n-gram, or a push-down automaton, or a queue, or an index, and so on. Most programmers will generally agree to the meaning of something like: “determining if data in memory A has a Hamming distance from memory B of less than 1/4 the size of the data in memory A”. Software patents have been written, examined, and successfully enforced often enough to prove that they can be practical and useful legal constructs (although I agree in principle with the way Alice has clamped down on sloppy, informal, over-broad, and obtuse claiming).

        Every field of science and technology has fundamental building blocks and terminology for same. Computer science is no different. The problem with computer science, however, is that programming is by nature designed to let thoughts be easily translated into machine-understandable code. This can lead to pitfalls like writing claims in terms of the problem that the software is modelling and solving, rather than in terms of the things that machines do.

      3. 21.2.3

        /., The Federal Circuit recently held that software was not an article of manufacture and just recently the Supreme Court denied certiorari.

        Are you going to modify your opinions just a tad on your argument based upon this development in the law?

        1. 21.2.3.1

          Ned you are way behind the times as I distinguished that case when it first came out and it simply does not hold what you and others are trying to make it hold.

          Think: the difference between software and the thought of software.

  3. 20

    Could one of those “M’s” stand for “mooch”, as in, happy to receive the benefit of software innovations but too Scroogish to give the inventor his justly earned reward? Notice how he never directly answers the fair and reasonable arguments Slashdot mentions below?

    And here is what he says: “What excludes software from protection is that it’s logic for processing information, which isn’t eligible for patent protection whether it’s “on a computer” or “on a piece of paper” or “in your head.” There’s nothing at all “special” about instructions for computers. There never was.”

    Because it’s “logic”! So, a mousetrap with mechanical logic to distinguish between a mouse and a cat is unpatentable because, “logic”. An assay that includes a decision-making step isn’t patentable because, hey, “logic!” Maybe people who can’t employ logic might not oughtn’t to be talking about what is or isn’t “Logic”.

    And “information” is no different. What is “information”? However you want characterize it, it is _always_ something physical. Information isn’t any different than heat, or speed, or mass, etc. It’s a characteristic of matter that can be quantified, measured, manipulated, transferred from some matter to other matter, etc. In fact, there are whole areas of science evolving around information theory and information flow. For instance, information theory is being used to derive and test hypotheses of abiogenesis, various astrophysical phenomena, chemical thermodynamics, quantum mechanics, and many others. Information is just another human way of understanding and modeling state and behavior of matter and the universe in general. There is no “information” that is disembodied from physical matter (even photons have relativistic mass). All matter contains “information”. The complex reconfigurable machines that perform logic and manipulate matter and energy in a way controlled by the human mind should no more be unpatentable than should chemical inventions be unpatentable merely because human brains are themselves chemicals and chemical reactions.

    So characterizing something as having “logic” and “information” – as MM does – is completely irrelevant to whether that thing should be patentable. DNA can be engineered to implement logic. Many kinds of physical systems exist that can fairly be said to involve logic and information.

    So what makes software any different? Nothing. An information-processing machine is still a physical machine, and it does physical things in the physical world. Fortunately, most of the world sees the logic in this and sees the wisdom in encouraging people to create new software, which is why, despite the monotonous drone of certain ideologues, properly qualified software has been, and always will be, “ownable” by the humans who thankfully employ their creativity and imagination to bring it into existence.

      1. 20.1.2

        You did see the “properly qualified”, right? So what makes a patent that satisfies the statutory requirements an “entitlement”?

        1. 20.1.2.1

          HOPB,

          That’s 6’s “delightful spin” on 35 USC 102, and the use therein of the word “entitled”

          He thinks himself “clever” by using just that word and drawing a parallel to the OTHER use of that word in hand-out type programs.

          Can you say Arse-Tr011?

    1. 20.2

      MM is mostly correct on logic and information in claims. Logic and information by themselves are abstract. Information is a description of the physical world. When it is stored on a computer it can be manipulated with logic (software). When software manipulates information which is a description of the physical world it is not manipulating the world, it is manipulating an abstraction of the world which makes it an ‘abstract idea’.

      However “A claim that recites an abstract
      idea must include “additional features” to ensure “that the
      [claim] is more than a drafting effort designed to monopolize
      the [abstract idea].”

      Reciting logic and information in your claim means that you will need ‘additional features’ to avoid monopolizing the abstract ideas in your logic and information.

      1. 20.2.1

        Malcolm is extensively NOT correct for the most simple of reasons:

        Software is not logic.
        Software is not information.
        Software is not math.
        Software is not “stories.”

        ALL claims of ANY worth are more than just exacting picture claims and “suffer (as you would have it) from what you are calling “being abstract.”

        That is what claims are. That is what they are meant to do: cover the invention.

        1. 20.2.1.1

          I think you are saying that software is an article of manufacture like a hammer or fishing pole. It is made by people, stored on disks, bought, leased and sold. It can be stolen. It has some odd features since the cost of design is 99.999 percent of the cost while the cost of manufacture is the cost of making a copy of a digital file, but think everyone would agree that software certainly looks like an article of manufacture.

          Almost every new piece of software does something new which has not been done before with software. Whether it is Facebook adding a sad emoji or Verizon providing speech to text for voice mails there is always something new being done by a new piece of software.

          Many (on this board) have said that that is enough to get past 101: A new article of manufacture which does something never done before by a machine. And further this was Congress’ intent in 101: Stop judges from seeking for ‘the flash of invention’ in a claim. If it is new and useful then let it in and then see if it is non-obvious, not anticipated etc.

          This led (until Alice) to a number of problems which no one (but Malcolm of course) anticipated. One solution is to say that novel logic and information wrapped in an article of manufacture are unpatentable.

          1. 20.2.1.1.2

            You are also forgetting the basic axiom that software is equivalent to hardware and equivalent to firmware.

      1. 20.3.1

        Ned,

        Do I have a new “machine” if I reconfigure three resistors from being in series into three resistors in parallel?

        Did I have a new machine in the In re Nazomi case?

        Do I have a new machine in the Grand Hall Experiment?

        What do you think the patent doctrine of inherency tells you when you add a machine component called software?

      2. 20.3.2

        Or Ned, from below:

        Or even worse, Night Writer, that the patent doctrine of inherency somehow does not apply and that capabilities claimed SOMEHOW are “already in there” for machines with the exact same structure, thereby equating the machine component known as software to be something “magical” and not even present.

        When directly faced with the logical fallacy of this – either directly, or through the Grand Hall experiment, or with a case law example, all of sudden the dialogue disappears and out come the drive-by monologues.

        1. 20.3.2.1

          anon, if the machine has a component, the component is part of the machine. Software by definition is not part of the machine.

          1. 20.3.2.1.1

            Absolutely wrong Ned.

            Just because a part can be taken out of the machine, does NOT make it any less a component. In a (limited) analogy, are you telling me that car tires on a shelf. not yet sold or installed are not patent protectable because there is no immediate utility to the tires?

            That in essence becomes your argument.

            Once again, you are trying (way too hard) to slip in your own ultra vires “conditions” of some type of “permanent attachment.” for components. Such is not – and NEVER HAS BEEN – a part of patent law.

            There is NO place for that in the law for you to hang your “hat” on.

            Further, you avoid ALL of the items that I have put in front of you:
            – the inherency doctrine (and the necessary conclusion from your view that software must be some type of magic)
            – case law (In re Nazomi)
            – Grand Hall experiment
            – configured as a change and creation of new (the three resistors experiment).

            You simply leave WAY too big of a logical gap with your desired end state.

                1. Ned,

                  You could not be more wrong on this.

                  There is no such thing as software that is NOT MEANT TO BE a machine component.

                  No such thing.

                  Show me a person who thinks otherwise and I will show you a person who does not understand what software is.

                2. Software is manually loaded by a human being and selectively executed. It is not part of the machine.

                  Tell me anyone who disagrees that the whole point of software is that it not be part of the machine. That is why, for Christ’s sake programmed computers were invented in the first place.

                3. Whether OR NOT there is “manual loading” and whether OR NOT there is “selective execution” has NOTHING to do – w h a t s o e v e r – with whether something is a component or not.

                  Where do you get such C R P to think that such somehow makes it not a component?

                  Ease of difference does NOT make it NOT a component, it just makes it a component of a different type: based on ease.

                  No wonder you NEVER answer ANY of the items on the table of discussion: you have no idea what you are talking about.

                4. Your non sequitur is a flawed analogy and meaningless to the FACT that software is equivalent to hardware – and equivalent to firmware and the FACT that all of these “wares” are components.

                5. to wit: the configuration is new – as in the three resistors in series versus the three resistors in parallel

                6. to wit: the inherency doctrine of patent law and the necessary conclusion from your view that all improvements to the machine must somehow, magically be “already in there.”

                7. to wit: your continued lack of inte11ectual honesty in not noting that FIRST the machine must be changed and configured with the software in order to THEN use the software.

              1. 20.3.2.1.1.1.2

                You simply must accept the baseline axiom that software is equivalent to hardware and is equivalent to firmware.

                That is a fact that is required for any inte11ectually honest discussion to proceed.

              2. 20.3.2.1.1.1.3

                The problem, anon, is that you never agree that the software is part of the machine.

                Your problem Ned – often explained in very easy to understand, simple, declarative sentences, is that you SKIP the part in which a machine FIRST must be changed with adding the software component, and you merely want to “use” the software “on**” the machine, without that first step.

                **as if “by magic” the machine can reach outside of itself to “use” the software.

                This was your F A I L way back when in the Grand Hall experiment.

                This was your F A I L in the discussion of the In re Nazomi case.

                This is your F A I L in that you have never even considered the inherency doctrine of patent law, and attempted to explain how a machine can have a capability without being changed.

                You really just cannot have the “logic” of “use-as-a-second-step-and-ignore-the-change-to-get-there.”

                This even goes back to being your F A I L in the Alappat case.

  4. 19

    While Malcolm merely states that there is a “strong” statutory tie (and then turns and leans on – and requests judicial action to once again CHANGE the law, as opposed to any sense of coming from the direct words of Congress in the actual statute) AND Prof. Crouch leads into the article here with (and I quote): “Like the abstract idea test the doctrine barring the patentability of certain ‘printed matter’ is nonstatutory and judicially created.” [See also my very easy to follow, stated in short declarative sentences Set Theory explanation]…

    The elephant in the room is why the doctrine exists in the first place.

    Why take that first step? (and we do not even get to the second step as to that first step being withdrawn with the exception)

    So, let me be so bold as to repost here on top a call to investigate THE pinnacle underlying fundamental philosophy for that first step and invite research/discussion on that piece of foundation:

    It is simply understood in patent law that a Person Having Ordinary Skill In The Art does not – and cannot – infringe with ANYTHING that is just “in the mind.” [and let’s stress the SOLE nature here of “in the mind” and of course, this link to the Act of 1952, and the so-coined term of Vast Middle Ground that so often accompanies the typical attempts at obfuscation]

    If this distinction were to be HONESTLY appreciated, the long, more than fifty year “war against patenting software,” would be over.

    I invite (again) Prof. Crouch to post a story by himself or another professor on the true meaning of the mental steps doctrine [or even the esteemed Mr. Boundy or Patent Leather].

    It is this selfsame doctrine – twisted through anthropomorphication and attempted to be applied to those things OUTSIDE of the mind – that is the MAIN philosophical thrust of the anti-software patent movement.

    Shine a bright light on this and you will see just how much dissembling is going on by those who do not want to permit protection to the single largest type (and the type MOST accessible to those without big bucks) of innovation in the world today.

    1. 19.1

      anon, the printed matter doctrine originated in Hotel Security. That case held that the following claim was non invalid because the printed matter was non statutory and the slips with markings old.. There is no “judicial exception.”

      1. …. a sheet provided with separate spaces, having suitable headings, substantially as described, said headings being designatory of the several waiters to whom the several spaces on the sheet are indlvldually appropriated, in conjunction with separate slips, each so marked as to indicate the waiter using it, whereby the selling price of all the articles sold may be entered in duplicate, once upon the slip of the waiter making the sale, and once upon his allotted space upon the main sheet, substantially as
      and for the purpose specified.

      1. 19.1.1

        Except there is a big difference between a person doing something and a machine doing something. The reduction that you lot continue to attempt is ridiculous. Get that this stuff is hard. Get that judging inventions after the fact is not effective. Get that the quantum of advancement is typically very small, but leads to great things.

        Get that machines are processing information that takes time, energy, and space. Just such nonsense from you lot.

        1. 19.1.1.1

          And the mixing up of what people do with what machines do is just intellectually dishonest and completely ignores the character of inventions for machines. These are machines that are processing information. It is hard. Real hard. I know MM claims that even making machines that can drive is easy. If that were true, then why doesn’t he make one and make $10+ billion dollars. We all know why. Just unbelievably ridiculous nonsense from judicial activists.

          1. 19.1.1.1.1

            Driverless car software requires 10’s of millions of dollars to develop. While developing it there will be 100’s of new inventions (in algorithm form) to solve the unique problems of driverless cars. In your words ‘It is hard’.

            It would make some sense that each new algorithm would go in a new separate patent. You did hard work and so you can get a patent.

            However there is a ‘top level’ algorithm which drives all the others:

            Collect input from sensors
            Combine input from sensors with a rules database
            Determine car acceleration and direction based on sensors and rules send matching signals to steering, gas and brakes.

            This algorithm was not hard work, I wrote it just now.

            Was this algorithm every patentable in your view? Even in the past when there was no idea of a driverless car since basically this algorithm is the idea of a driverless car?

            If no this, then what level of detail is needed in an algorithm in a claim to match up to the ‘hard’ work you mentioned above?

            1. 19.1.1.1.1.1

              Slashdot: (1) What you are describing is something that we patent attorneys spent time discussing and often being tested on in law school. (2) The answer in all patent law goes to the elements of the claims and 102/103/112. If you go beyond these then you have moved into the realm of politics and not law. (I.e., Alice is politics.) (3) The answer to your question is then apply 102/103/112 at different times and the answer might be a yes at some point in the past, but obviously now it should fail under 103. The example we used in law school was a claim similar to your to a car with a motor. Maybe a claim to a basic car (e.g, two axels with a motor coupled to one of the axels) was enough structure right when 112 could be satisfied.

              1. 19.1.1.1.1.2.1

                This problem, for example, could well have a new and nonobvious software solution algorithm, discoverable only after some hard work. Why not allow a claim for it?

                Problem #1 Skid assessment:
                Develop a software module which will detect which state the car is in among the following 4 skid states:
                Not skidding
                About to skid
                Started skidding
                Skidding
                You module will have access to the following sensor information:
                Car direction
                Car speed
                Car pitch, pitch velocity and pitch acceleration
                Car yaw, yaw velocity and yaw acceleration
                Car roll, roll velocity and roll acceleration
                Road direction
                Road surface coefficient of friction
                Tire type and coefficient of friction
                Car weight
                Wind speed
                Wind direction
                Wind force (calculated for you by module wf-001)
                4 wheel angles relative to car
                4 wheel angular velocity
                4 wheel tire pressures
                4 tread hub rotation response (ie how long does it take the force accelerating the axle to transfer to the tread. If the tires were rigid, it would be instantaneous but tires are rubber)

                Calculation to be implemented to complete in under .3 milliseconds on a standard ARM processor, including memory allocation and cleanup.

                1. Calculation to be implemented to complete in under .3 milliseconds on a standard ARM processor, including memory allocation and cleanup.

                  LOL! Functional much?

                  Spare me the nonsense, SD.

                2. “That’s not the claim MM, thats the outline of what needs to be invented.”

                  Good to tell MM that, but then inevitably some as s hat comes in to claim it.

                3. Les: thats the outline of what needs to be invented.

                  Whew! It’s a good nobody ever files on those “outlines” of what the computer is supposed to do. The PTO might mistakenly grant them!

                4. btw 6,

                  In your link is the following comment:

                  What could possibly go wrong? Total surveilllance, for one thing.

                  Will the driverless car contain nonfree software?

                  It is likely to report location information to its developer.

                  Will the driverless car use a server for some job (any job at all)?

                  If so, it will have to remain in contact with the server.

                  If it does that using a cell phone, the phone company will record its location at all times.

                  Massive surveillance is incompatible with democracy so for democracy’s sake we must ensure that driverless cars are not a system of massive surveillance.

                  Richard Stallman
                  President, Free Software Foundation
                  Internet Hall-of-Famer

                  [internal links removed]

                5. SD: Why not allow a claim for it?

                  Why not hand out 20 years of “exclusive rights” for each of the ten zillion other “here’s a source/type of data related to driving, process it” claims that you and I and anyone else with half a brain can spew out all day long?

                  What could possibly go wrong? It’s not like you’d have a bunch of grifting b0ttom-feeders rushing to the patent office to get rich off the robot car fad or anything, at the same time the PTO has no clue about how to examine the patents and the CAFC has its head collectively buried up its behind. Nope. That could never happen.

                  Has someone written the claim yet about the robot that comes out of the car to move the obstacle that someone put in the path of the driverless car? That would seem like an important one.

                  Oh my gosh! I could just gave up another opportunity to make a million bucks off a broken patent system. Maybe I should take a few classes at B0tt0m Feeder University before I lose another opportunity.

                6. “get rich off the robot car fad ”

                  It likely won’t be a fad for long. It’ll be mandatory. Cars are like the no. 1 most dangerous thing people have access to today. There are people that worry constantly about gun control, but practically never about “car possession control”.

                7. 6: It likely won’t be a fad for long. It’ll be mandatory.

                  What will be mandatory? Driverless cars? Dream on, friend.

                  There are people that worry constantly about gun control, but practically never about “car possession control”.

                  Wow. Where in the world do people come up with absurd nonsense like this? Driving is one of the most heavily regulated activities that most people ever participate in. People lose their licenses to drive every day, probably by the thousands. Why? Because other people have worried about “car possession control” since the first cars showed up on their street.

                8. Hi MM,

                  To clarify: The above is the description of some specific software development work which could be part of the work to develop a driverless car. Work, work work nothing to do with patents yet.

                  Now, while doing this work (over the course of many weeks) the team invents a brand new clever formula which reduces the time and memory needed to perform the calculations. The formula is specific to the field of skidding and is a great improvement (as far as time and memory and accuracy) over the current art.

                  In general, can the team claim its new software invention somehow? This was actual hard work and when the team publishes the formula in a claim the world will benefit from the shared knowledge.

                  This seems like a quintessential use for patents: publication in exchange for temporary monopoly.

                9. You forgot to mention all the children that will be saved, Slashdot!

                  But I remembered and I began to weep thinking about how terrible it would be for society if we didn’t hand out a 20 year monopoly on this sooper dooper mathematical formula which is totally different from all the other mathematical formulas that were ever written and which the PTO knows sooooo much about.

                  Yes, I wept for about 0.4 milliseconds and then I remembered that it was just a completely made up story that you pulled out of your behind. Got another one?

                10. This seems like a quintessential use for patents

                  Actually seems like they should just copyright the software.

                  And oh yes: definitely they should expect the Nobel prize because, hey, this was an awesome advance that deserves so much more than the piddly profits one gets from selling cars that work sooooooo much better than your competitors cars.

                11. Brosef you be soooo wrong on this one. A fad, lol. They already have a $1,000 suite of equipment that’s said to be a huge safety upgrade. And that’s not even all the way automated. The nanny state will never let people engage in such dangerous activity once the equipment becomes standard. Sorry bro, that’s nanny state for ya. And even if the nanny state did want to let you, the auto makers won’t be pumping out the old unsafe models but at like a trickle, just like today.

                  link to spectrum.ieee.org

                12. Malcolm’s lack of understanding continues…

                  Actually seems like they should just copyright the software.

                  Reminder (short and declarative like):

                  Copyright : expression
                  Patent : utility

                  The wonderful thing about software (which is not math, not logic, not stories) is that software had aspects of both expression and utility.

                13. Just to expand on one point (and remember: I could do this all day long — anybody with half a brain can do it all day long once they appreciate that — surprise! — information can be used to determine stuff whoopee!!!):

                  4 tread hub rotation response (ie how long does it take the force accelerating the axle to transfer to the tread. If the tires were rigid, it would be instantaneous but tires are rubber)

                  But what kind of rubber? Take that into account. Who made it? Where was it made? Where were the raw materials sourced? How do the properties of that particular tire change over time? How old is the tire? How far has it been driven? Has it ever skidded? What temperatures has the tire been exposed to and when? What is the “safety record” of the company who installed the tire? What is the “safety record” of the employee at the company who installed the tire? What is the “safety record” of the company who made the wrench used to tighten the lugs on the tire? Who made the lugs? What’s their “safety record”?

                  Now let’s call this data by some fancy structural-sounding term. Hmm, let’s see. How about “tire response parameter assets” (TRPAs)? Nobody’s ever described “tire response parameter assets” before so clearly it’s a new innovation. What are the differences between this and the prior art? We’ll figure that out in trial.

                  Great system.

                14. And by the way, SD, “detecting whether you are skidding” or “what kind of skid you are in” is certainly not a problem “unique to a driverless car.”

                15. MM,

                  Little Bill Daggett: I don’t deserve this… to die like this. I was building a house.
                  Will Munny: Deserve’s got nothin’ to do with it.

                  I don’t say anyone deserves a patent, but I have seen many posts on Patently-O which basically make the argument:

                  Software is a huge industry which spends enormous sums on research.

                  Patents are a good thing in industries which spend enormous sums on research (because of the usual disclosure -monopoly trade off).

                  What is special about software research which excludes from patent protection? In looking over your responses, I am struck by:

                  ‘..totally different from all the other mathematical formulas that were ever written..’

                  I think you are saying that 99.999% of the time a mathematical formula in a software patent is either old or it is a collection of old formulas arranged in a conventional fashion. Because of the 99.999% it is not useful to discuss the case of a ‘purple unicorn skid module ‘ because it probably does not exist.

                  If that is your point, it is a good one but not expressed very clearly…

                  I don’t say they deserve a patent, but I do say they meet one of the policy goals of the patent system: disclosure of the results of hard work in exchange for monopoly.

                  2) ‘..totally different from all the other mathematical formulas that were ever written..’

                  I think you are saying that 99.999% of the time a mathematical formula in a software patent is either old or it is a collection of old formulas arranged in a conventional fashion. Because of the 99.999% it is not useful to discuss the case of a ‘purple unicorn skid module ‘ because it probably does not exist.

                  If that is your point, it is a good one but not expressed very clearly…

                  3) ‘this was an awesome advance that deserves so much more than the piddly profit’.

                  This seems like a policy objection rather than a patent objection.

                  4) ‘information can be used to determine stuff ‘

                  My imaginary software claim has strings of conventional formulas strung together in a very specific way to produce an physical result from physical data. It is of the form ‘information can be used to determine stuff by transforming the information using the following very specific steps’.

                16. Sorry, reply has extra text after ‘…expressed very clearly…’. Try to ignore it if you can…:-)

                17. SD: Software is a huge industry which spends enormous sums on research.

                  So is news publishing. “Spending money on research” is beside the point. That’s why nobody — even the greediest people that ever lived up until very recently — ever suggested that “new” newspapers communicating new and non-obvious information were eligible for patenting. But dang they are useful. And expensive. And hard work!

                  What is special about software research which excludes from patent protection?

                  Nothing at all. What excludes software from protection is that it’s logic for processing information, which isn’t eligible for patent protection whether it’s “on a computer” or “on a piece of paper” or “in your head.” There’s nothing at all “special” about instructions for computers. There never was.

                  You see: you are working backwards from your conclusion. What you need to understand is that software was shunted into the system by a couple judges without any regard whatseover for the massive set of problems that patenting logic would present to the existing system. What happened is that some judge decided “an algorithm is fake structure” and because the patent system deals with “structure” then it can deal with “fake structure.” Voila! Apparently that’s good enough for you but it doesn’t sit well with a lot of other people.

                  My imaginary software claim has strings of conventional formulas strung together in a very specific way to produce an physical result from physical data.

                  Two points: (1) software doesn’t produce “physical results” any more than doing math on paper produces “physical results” (2) what in the world is “physical data”?

                18. Logic and information shows up in lots of places.

                  I used to have a 1976 Volkswagen Bus. It had a fuel injection computer in it to control the fuel injected into the cylinders. It also had vacuum lines** and thermostats to control anti-pollution equipment. The system of vacuum lines and thermostats in some ways acted like an analog computer***.

                  Back in the 60’s should the patent office have rejected claims to ‘using a vacuum line and a thermostat to control an EGR valve****’ on 101 grounds because the only thing new in the claim is logic, information and moving the information from one spot to another? (using rubber hoses).

                  **Aside: For those who have never owned a 1976 VW, a vacuum line is a little rubber hose which runs between the place where the air goes into the cylinders (the manifold) and a piece of equipment with a diaphragm. Pushing the throttle down increases the pressure in the rubber tube which moves the diaphragm which then can then move something else., like a pollution control valve.
                  ***For example you could get vacuum from 2 different places in the engine, feed them into opposite sides of a diaphragm and the difference in pressure would move the diaphragm proportional to the difference in air pressure. Or a thermostat could close a vacuum line until the engine reached a certain temperature.

                  ****EGR valve. Exhaust gas recirculation. You can reduce air pollution by feeding exhaust gas back into the engine.

                19. Also consider the engineering idea of ‘feedback’. Could one ever claim using ‘feedback’ of any kind in any context without running into logic and information? If it is a new kind of feedback you could claim the creation, but how about the use?

                  For example below, from 1940, is a radio claim which describes using feedback from part of the circuit to control other parts of the circuit.

                  It is all logic and information, describing where to take a voltage signal from and where to move it to. Should it be excluded on 101 grounds before we even look at the
                  structure in the rest of the patent?

                  1. In a radio receiver provided with at least one signal carrier transmission tube, a detector and an audio frequency network, means providing degenerative feedback of audio voltage from a later point in the audio network to an earlier point thereof, means responsive to signal carrier amplitude variation for controlling the gain of the transmission tube, and means responsive to variation in space current flow of the controlled tube for controlling the magnitude of said degenerative feedback.

                  link to google.com

                20. Malcolm: you are working backwards from your conclusion

                  S I G H

                  Malcolm and his trite tactic of AccuseOthersOfThatWhichMalcolmDoes.

                  Your own admonition to seek copyright protection belies your duplicity.

                  You cannot copyright math or logic.

                  You SHOULD know this.

              2. 19.1.1.1.1.2.2

                The credibility of MM stating that developing a machine to drive a car is easy or as simple as getting the map out of the glove compartment is ridiculous. MM has zero credibility. ZERO. These types of statements by MM should bring into question anything he ever says and his motives for saying them. There are no scientist who make these statements of MM.

                1. NW: The credibility of MM stating that developing a machine to drive a car is easy or as simple as getting the map out of the glove compartment is ridiculous.

                  I didn’t say either of those things.

                  Meet Night Wiper: the best and brightest that the pro-s0ftware side has to offer. Next he’ll compare people who disagree with him about patent reform to “terrorists killing people in Iraq.” And his bff “anon” will show up to give him the ol’ “high five.”

                2. I didn’t say either of those things.

                  What did you actually say? What was the point (if any) in your actual statement?

                  You do sometimes get so tracked in wanting to express your ad hominem that you F A I L to actually say anything. And by sometimes, I mean nearly ALL the time.

                3. LOL – oh, I know how to read – and that is precisely why I am asking you what your “point” was.

                  Maybe, you should learn how to make your point better. Maybe use those short declarative sentences you are always on about. Maybe try NOT to solely depend on ad h0m1nem?

                  LOL – what are the chances of that. (I won’t be holding my breath)

                4. Night, I want my car to be self-aware so that I can tell it to go to the local gas station to get filled up that would do so, and bring me my newspaper and coffee as well.

                  Obviously, such programming is trivial and deserves no patent protection whatsoever.

                5. (you forgot to hold up your “sarcasm” sign, and this post is hardly distinguishable from your more “earnest” ones)

          2. 19.1.1.1.2

            MM is a corporate shill whose job is it is to disparage legal protection for property his corporate masters want to steal. MM would be a natural shill for Donald Trump, Mr. Eminent Domain. Maybe he is. The Big Tech and Big Finance string-pullers to whose machinations MM jerks and twitches are all of the same flavor.

            1. 19.1.1.1.2.1

              There is no doubt that he is a paid blogger. The evidence is that he has been on this blog as the number one poster (and many others) for 10 years. He pushes an agenda. He is very predictable both in which posts he will respond to and with the content.

            2. 19.1.1.1.2.2

              MM is a corporate shill

              Riiiiiiiight.

              MM would be a natural shill for Donald Trump

              LOL!

              I’m voting for Sanders or Clinton (preferably the former).

              Big Tech and Big Finance

              Anybody ever wonder why Little Stevie Brachmann spends so much time pumping up the patent portfolios of Big Tech and Big Finance? I don’t. I don’t think “tourbillion” wonders why either.

              But he’s a very serious person. He’s very concerned about “string-pulling” and greed in the business world. Sure he is.

            3. 19.1.1.1.2.3

              tourbillion,

              I must disagree.

              But only insofar as your “same flavor” point.

              It is abundantly clear that there exists MORE than just one flavor of those who do not like patents.

              You have both the Left and the Right; those who do not like ANY notion of personal property (or anyone making money off of said property), as well as those who do not like the notion of others having personal property (that is not their own property and that threatens their own property).

              While some aspects of the desired Ends are in alignment, the actual flavors are very much different.

        2. 19.1.1.2

          Moreover, get that information processing machines have structure. All of your nonsense rests on your assertion that there is no structure to information processing machines. That is just ridiculous.

          1. 19.1.1.2.1

            Or even worse, Night Writer, that the patent doctrine of inherency somehow does not apply and that capabilities claimed SOMEHOW are “already in there” for machines with the exact same structure, thereby equating the machine component known as software to be something “magical” and not even present.

            When directly faced with the logical fallacy of this – either directly, or through the Grand Hall experiment, or with a case law example, all of sudden the dialogue disappears and out come the drive-by monologues.

        3. 19.1.1.3

          “Except there is a big difference between a person doing something and a machine doing something.”

          Huge difference! Difference in “kind” even!

          #creationism

          1. 19.1.1.3.1

            6,

            It appears that you are trying to dish out an insult, but it did not make it.

            Are your really trying to say that there is no difference between a machine and human?

              1. 19.1.1.3.1.1.1

                m saying there is not a ginormous difference

                You so gleefully embrace your ig norance 6.

                See the elephant at 19.

                Not only are you wrong, the difference is a critical difference that is at the very heart of one of my favorite words:

                Anthropomorphication

                It is one thing to espouse certain feelings and philosophies, it is quite another to understand critical patent doctrines, and as much as the good Professor likes to have a wide variety of views in this “ecosystem,” ig norant ones should not be tolerated – that is, those that are gleefully and stubbornly ig norant – hence the call to set forth the mental steps doctrine and to see why (in part) the Congress reacted against an anti-patent Court in the Act of 1952.

        4. 19.1.1.4

          NW: there is a big difference between a person doing something and a machine doing something.

          When the machine is old and its sole purpose is to store and process information using logic, those “differences” are irrelevant, at least from the perspective of a sane patent system.

          Put another way, there’s “big differences” between doing math in your head and doing math with a pencil and paper, or doing math with a slide rule. But those differences never mattered to the patent system after the pencil and paper were invented, or after the slide rule was invented. Did you ever stop to wonder why?

          Other people did.

          1. 19.1.1.4.1

            those “differences” are irrelevant, at least from the perspective of a sane patent system.

            Simply not so.

            It appears that you want some other patent system – not the one we actually have. Your feelings are getting in the way of your “reasoning.”

    2. 19.2

      Much like my other recent attempt to generate a genuine dialogue on a pertinent patent issue, (see link to patentlyo.com – for “FYI,” PatentBob, and others who somehow fail to note that I am easily distinguished from others when it comes to the difference between dialogue and monologues), I see that the typical anti’s of this blog’s “ec(h)osystem” just don’t want to “play.”

      Shockers.

      Not.

      The only one stepping up to the plate is Ned**.

      However, the only thing Ned does is attempt to kick dust on the specific item that I point out for discussion.

      (thanks Night for adding thoughts that help show Ned’s dust kicking, here and in the comment 18 thread).

      Not to indulge Ned’s attempt to sidetrack from what I actually post, but Ned, your attempt to elevate one second circuit errant case into some type of pivotal moment in patent law is simply WRONG.

      Prof. Crouch himself told you that you are misapplying the import of that case.

      David Stein took you to the woodshed on available case law.

      That case itself is not a progenitor of ANY new doctrine (it cites earlier cases). ALL that that case represents is the attempt by some clerk of a certain Supreme Court Justice reaching back to find some (any) thing to mash the 101 Nose of Wax.

      Lastly, it has NOTHING to do with my post here.

      STOP your dust-kicking. Why not instead actually try to discuss the point that I bring up here? Let’s not try to NOT see the elephant in the room and instead talk about that elephant as I suggest.

      ** we have plenty of the typical “G-g-grifters” non-sequitur “feelings” or “no difference between human and machine C R P from Malcolm, and the latest version of 6, “playing nice” while not actually saying anything meaningful – but NO ONE is as of yet addressing the elephant in the room: the limitations of the mental steps doctrine and what that portends to the fallacy that somehow a machine is the same as the human mind and thus “off-limits” to patent protection.

  5. 18

    I agree with MM’s example in 3.1. but that example is a subset of all possible situations.

    Consider the following oversimplified (and thus technically flawed, but you get the idea) example. Assume UDP networks only use UDP packets and TCP networks only use TCP, and that the two packet types are different structurally (but are still data). Also assume that when the “TECHNICAL PROCESS” inputs a TCP packet it outputs the same TCP packet and when it inputs a UDP packet then it performs a technical conversion to result in a TCP packet.

    consider the following:

    1) a method to convert UDP packets to TCP Packets, comprising:
    recieving an original packet which is a UDP packet;
    converting the original packet to a converted packet which is a TCP packet by performing [NONOBVIOUS TECHNICAL PROCESS];
    outputting the converted packet.

    does this claim raise the printed matter doctrine?

    now consider:
    2) a method to convert UDP packets to TCP Packets, comprising:
    recieving an original packet from a UDP network;
    converting the original packet to a converted packet which is a TCP packet by performing [NONOBVIOUS TECHNICAL PROCESS];
    outputting the converted packet.

    Does this raise the printed matter doctrine? is this really any different than claim 1?

    now how ’bout this claim:

    3) a method to convert UDP packets to TCP packets, comprising:
    receiving an original packet;
    converting the original packet to a converted packet which is a TCP packet by performing [NONOBVIOUS TECHNICAL PROCESS]
    outputting the converted packet;
    WHEREIN THE ORIGIN OF THE ORIGINAL PACKET IS A UDP NETWORK.

    is this really any different than claim 2? The “origin” clause in claim 3 should save the claim from a 102/103 rejection. Is the printed matter doctrine really appropriate here? Why should it get a 102/103 rejection when it is nonobvious?

    I know that some software haters would say all three claims raise the printed matter doctrine because the qualifier in claim 1 of “a UDP packet” is a just data. But to apply the doctrine to claim 1 (and thus claims 2, 3) is a stretch in view of Lowry. This is not “printed matter” in the sense of the displayed actual visual information as in the prior printed matter cases. If they affirmed, the CAFC would be expanding the doctrine and they clearly didn’t want to go there.

    To liberally apply the printed matter doctrine would essentially swallow up all claims which involve the processing/transmission of data (unless in the very rare case the claim also recites a nonobvious physical structure). While I admit some such patents are of questionable validity (like this one in question which I agree is junk), many patents out there are on technical processes (such as wireless data transmissions, etc.) which are valid and should remain valid.

    1. 18.1

      addendum to above: To stay true to form to the Distefano claims, in the hypothetical claims add the step of “displaying the original packet”

      1. 18.1.1

        patent leather, to stay true to the Distefano example, the novel subject matter must have no functional relationship with the method.

        I am not sure that any of your examples are like that.

        Try this, Method for converting X to Y from a source of X (old) wherein X is contributed to the source from users who have haircut style A who value X at price 1 and users who have haircut style B value X at price 2 .

        1. 18.1.1.1

          The CAFC in Destefano stopped after prong 1 because they felt it was not “printed matter.” In my example, I am just showing why we should pass prong 1. You make a valid point regarding prong 2. However, as I wrote in my #9 post below, I do think Destefano passes this test. Your example is good, although it reeks of “business method” which I was trying to stay away from.

          1. 18.1.1.1.1

            Stopped, patent leather?

            No, it was a finding of fact of the PTAB that cannot be overturned by the Feds unless it is without substantial evidence support.

            “[T]he Board concluded that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” J.A. 32. That conclusion treats the “origins” as printed matter. ”

            This is where the opinion goes off the rails and does so big time.

            Nothing that has no functional relationship to the claimed method should be able to provide patentable weight to the method.

            Period!

            1. 18.1.1.1.1.1

              Ends and Means, Ned.

              You keep on wanting to ig nore the posture of th case, and what this decision actually says about the attempted Meana because ALL that you see is your own desired Ends.

              1. 18.1.1.1.1.1.1

                No, anon, it sets up a strawman and proceeds to knock it down. The findings are that the origin of web assets has nothing to do with the claimed method. The PTO held that origin could not provide a distinction over the prior art. The Federal Circuit ruled that it could.

                But this is nonsense. It cannot be right.

                1. There is no basis for the printed matter exception to even be applied to machines. The holding of the fed. cir. should have been: there is no basis to extend the printed matter exception to machines processing information without extensive findings of fact and holdings that that some inventions are unconstitutional.
                  ——-
                  Just more ridiculous nonsense from the Fed. Cir. and the judicial activist.

                2. Night, hold on there.

                  Do you agree or disagree that if one is trying to distinguish his machine or machine process claim from the prior art that he cannot add a limitation that has no functional relationship to the machine or machine process?

                  Consider the improved mousetrap. The claim defines the structure of the mousetrap. The examiner cites art showing the claimed mousetrap is old. In response, you add that the mouse is white, and claim that the prior does not show mousetraps with white mice.

                  Is this legitimate? If not, why not?

                3. Ned, (1) your example is not the printed matter exception, which is an entirely different issue. (2) Of course, if something is not functionally related to the invention then it would be obvious to add it.

                  That does not get you to the printed matter exception which again was an exception for a class of inventions under a finding of fact that they would not promote innovation and therefore it was unconstitutional to grant a patent for it. This printed matter exception cannot be extended so easily –and should not be extended and it is probably unconstitutional for the SCOTUS to have fabricated this exception in the first place, and it is also premised on an assertion by the SCOTUS that the 1952 Patent Act incorporated all the SCOTUS common law which it did not.

                4. Night, at least we agree on one point here in that adding a claim limitation that has no functional relationship to the claimed machine or machine process cannot distinguish the prior art that shows the machine or machine process.

                  That means result of this case was wrong because the PTAB had found that the claim limitations at issue had no functional relationship to the claimed method.

    2. 18.2

      patent leather: displayed actual visual information as in the prior printed matter cases

      Can I patent an unopened book with non-obvious information inside? The information isn’t displayed. But the claimed book is useful for storage of that nonobvious information.

      The answer is: of course not.

      The problem wish such claims is not that the data is “displayed” or “actually visual”. The problem is that the claims protect data in the prior “art field” of book manufactures. You can’t do that with the patent system.

      This issue arises in huge swaths of computer-implemented junk.

      To liberally apply the printed matter doctrine would essentially swallow up all claims which involve the processing/transmission of data

      Right, except for claims that recite new structures for improving the transmission of data — which is exactly the point. You can’t ignore those claims. Those claims are important! They’re exactly the type of claims that nearly everyone (including myself) believes are important to grant. Why would ignore them?

      The claims you did recite are just data jargon layered on top of data jargon. Every new information processing scheme (and a lot old ones) can be and often is given a new name that implies some sort of “structure” that is nothing more than one abstraction layered on top of another. Hence “data” becomes “a web asset” or — even ‘better’ — a “web assett structure”! A “packet” is defined as — whoopee! — “a formatted unit of data.” When was that concept deemed to be “new”? I don’t mean when was the name “packet” first applied to a “formatted unit of data.” I mean : when was the idea of formatting a unit of data to make it easier to communicate first “invented”? Answer: an incredibly long time ago. When was the idea of converting that unit of data into another format first conceived? Answer: an incredibly long time ago.

      It’s upon that foundation of “born yesterday” baloney that nearly information processing and logic processing patents are built. The USPTO is about two centuries behind the curve trying to figure out how to deal with logic patenting and the CAFC primary purpose to date has been to place roadblocks in that process in every location where the PTO has failed to put in roadblocks of its own. That was true even before the giant bubble of garbage that was handed out during the Kappos years.

      I know that some software haters would say all three claims raise the printed matter doctrine because the qualifier in claim 1 of “a UDP packet” is a just data

      We say things like “a UDP packet is just data” because it’s true.. It has nothing to do with not liking “software.”

      But the real problem with your claim is that you insert the phrase “NONOBVIOUS TECHNICAL PROCESS”. Why not just include the term “eligible” as well? If you’ve got a “non-obvious technical process” for converting data, then just claim it. You’re golden. Oh but wait — this “technical” process isn’t really a “technical” process at all, is it? It’s a logical process, acting on information, and carried out with existing technology known as “a computer.”

      1. 18.2.1

        “Can I patent an unopened book with non-obvious information inside? The information isn’t displayed. But the claimed book is useful for storage of that nonobvious information.”

        This analogy is obviously not the same thing. Nowhere do I state that in my hypothetical claims any packet (or other data) itself is non-obvious. Of course you cannot patent a cookbook with non-obvious recipes. But you can patent a non-obvious method of cooking something (even if all of the ingredients are in the prior art).

        “But the real problem with your claim is that you insert the phrase “NONOBVIOUS TECHNICAL PROCESS”. Why not just include the term “eligible” as well?”

        In my example I am giving one scenario why the CAFC may not have wanted to expand the doctrine. The claim may well not be eligible but that wasn’t the point of the example. If the rejection is based on the printed matter doctrine, it would be rejected under 102/103 not 101. There are plenty of tools under 101 to reject such a claim. And yes, I know the doctrines are related. But 102/103 is the wrong ground to reject this claim.

        Since these are all judicial exceptions, there is no basis for you or anyone to insist how it “must” be. It is all up to the judicial branch to try to achieve the most equitable result to all parties. There are plenty of wireless signal processing patents with claims similar to my examples and it hasn’t caused our patent system to explode. Nor are the inventors bottom feeders. I like David Boundy’s statement in 10.4.1.1 . I have worked with many companies (I’m old enough to retire now if I really wanted to), some that developed groundbreaking technologies (and yes, they did make a lot of money from their patents.) That’s what America is all about.

        1. 18.2.1.2

          patentleather Since these are all judicial exceptions, there is no basis for you or anyone to insist how it “must” be.

          The “basis” is logic and reason and what you’ve referred to as “judicial exceptions” are actually essential parts of the statute, as that statute has been interpreted by the Supreme Court.

          Nor are the inventors bottom feeders..

          In fact, some of those “signal processing” patentees are undoubtedly are b0ttom feeders and probably more than half of them out there own junk patents that should never have been granted even if we were to accept logic as a subject matter eligible for patent protection.

          they did make a lot of money from their patents.) That’s what America is all about.

          This is the kind of jingoistic nonsense that shows up endlessly at blogs which celebrate the Big Grift.

          If the rejection is based on the printed matter doctrine, it would be rejected under 102/103 not 101. There are plenty of tools under 101 to reject such a claim. And yes, I know the doctrines are related.

          They’re more than “related”. The “printed matter doctrine” is a form of subject matter eligibility rejection. The claims in Prometheus could have been anticipated under the “printed matter doctrine” simply by recognizing that the “determining step” included writing the text “administer more drug”or “adminster less drug” on a piece of paper. That’s certainly “printed matter”. But there’s no “functional relationship” of the “printing” to the “substrate” (indeed, a “substrate” isn’t even identified in the claim because it’s completely beside the point!). So we ignore that “determining” limitation. What’s left? The prior art data-gathering step. Voila! The claim is anticipated.

          Same result, same logic. This is how subject matter eligibility is taken seriously, rather than ignored or papered over with judge created loopholes and “magic words.”

          1. 18.2.1.2.1

            MM, there is no doubt to any fair observer that the Federal Circuit and the C.C.P.A. before it has been in the tank for the patent bar in its efforts to expand subject matter eligibility this way and that to cover what the patent bar wants covered. In order to do so, the Federal Circuit and the C.C.P.A. before it must ignore long-established precedent and the Supreme Court. In this they do in subtle and devious ways.

            As we all know Benson, State Street Bank and Prometheus may have represented the pinnacle of defiance of well-established precedent; but this case represents one more example of the continuing defiance of precedent in favor of the patent bar’s agenda.

            The only think, it appears, that is ever going to fix this is to implement the reforms suggested by the 7th Circuit Chief Judge. However Congress is not going to do anything along those lines so long as big money continues to back the Federal Circuit. The public weal is not the business of Congress.

            In the meantime, the PTO needs to take this case to the Supreme Court if necessary. It is dangerously wrong.

        2. 18.2.1.3

          patent leather: you can patent a non-obvious method of cooking something (even if all of the ingredients are in the prior art).

          Nobody doubts that except for the “everything is abstract” crowd and, let’s just face reality: most of them don’t even believe it themselves. They just have a hard time distinguishing between their personal favorite patent claims and “all claims” because they’re narcissists who expect to be worshipped at all times.

          Of course you cannot patent a cookbook with non-obvious recipes./i>

          But why not? It’s a manufacture. It’s useful. And it’s non-obvious.

          How about a method of preparing that cookbook that recites the exact steps in the prior art except for “including a recipe asset, wherein said recipe asset is obtained from a third party and comprises [insert non-obvious ingredients here]”?

          What in the world difference does it make if that claim is rejected under 102/printedmatter versus 101? The answer: there is no difference except the words being used. Same issues, same logic, same result.

          As noted already, Destefano’s claims are d.o.a. Anybody with two eyes and a modicum of understanding of patent law can see that. What’s “unfair” about doing the right thing and simply recognizing that every claim with the problems affecting Destefano’s claim belongs in the trash? Just make it easy for everyone already. What’s the point of beating around the bush and genuflecting before this mysterious “good software patent” that is allegedly floating out there?

          1. 18.2.1.3.1

            Once again, with formatting corrected:

            patent leather: Of course you cannot patent a cookbook with non-obvious recipes.

            But why not? It’s a manufacture. It’s useful. And it’s non-obvious.

            How about a method of preparing that cookbook that recites the exact steps in the prior art except for “including a recipe asset, wherein said recipe asset is obtained from a third party and comprises [insert non-obvious ingredients here]”?

            What in the world difference does it make if that claim is rejected under 102/printedmatter versus 101? The answer: there is no difference except the words being used. Same issues, same logic, same result.

            As noted already, Destefano’s claims are d.o.a. Anybody with two eyes and a modicum of understanding of patent law can see that. What’s “unfair” about doing the right thing and simply recognizing that every claim with the problems affecting Destefano’s claim belongs in the trash? Just make it easy for everyone already. What’s the point of beating around the bush and genuflecting before this mysterious “good software patent” that is allegedly floating out there?

    3. 18.3

      “If they affirmed, the CAFC would be expanding the doctrine and they clearly didn’t want to go there.”

      I might very well agree with you there, but eventually its going to get done. Either they can do it, or the USSC can do it for them (as usual with all the things the CAFC doesn’t want to do but which need doing).

      1. 18.3.1

        6, can you explain to me way the Federal Circuit labors so hard for the patenting of business methods and the like?

        1. 18.3.1.1

          Just to amplify my point 6, Rich overruled Hotel Security, very case providing authority for the printed matter doctrine. The Feds will recognize the printed matter doctrine but not Hotel Security, the case clearly held that printing on tickets for business purposes (meaning) was not eligible and that invention had to be in the eligible.

        2. 18.3.1.2

          I have to be honest, no I cannot explain it. I mean, maybe its the legacy of Rich still petering out.

          I was reading an article the other day that was stating that even in science, land of where people want there to be breakthroughs and do the right thing, it often times takes the death of the “old guard” before a big spurt of publications (and progress) by others takes place. It could be the analogous thing here where the old guard people that took their cues from Rich still haven’t managed to ween themselves from his influence, or simply haven’t come to the understanding that his patent-world-view simply wasn’t suited for the economy that was to come.

          1. 18.3.1.2.1

            Silly 6, you are drinking the koolaid offered by Ned that somehow this all was a doing of Judge Rich.

            That is simply not so.

            As I have (routinely) pointed out, this all was done by Congress. The whole “Blame Rich” meme is nothing but a smokescreen.

      2. 18.3.2

        won’t happen, 6. The Supreme Court had several chances to simply say no to all software but they didn’t do so. As I’ve been saying, Alice, Bilski, and Mayo were awful test cases (and I agree with the Supreme Court in the latter two). When a “good” test case for software finally gets there, they will rule it to be eligible and we will finally have some clarity (hopefully) as to what is eligible.

        1. 18.3.2.1

          Weirdly, patent leather, this might be the appropriate vehicle take the Supreme Court because it is a simple issue: whether a claim limitation that has no functional relationship to the method or machine or manufacture or composition being claimed may nevertheless define patentable invention. Even the man on the street would understand this issue; and is hard to understand why the Federal Circuit does not understand it.

        2. 18.3.2.2

          When a “good” test case for software finally gets there, they will rule it to be eligible

          Describe the features of this “good test case” that is going to save the world. Who are the parties and what will the claim look like? Will it be some kind of “pioneering” software claim that recites a logic step that nobody on earth had ever used before to improve up on the prior art?

        3. 18.3.2.3

          “The Supreme Court had several chances to simply say no to all software but they didn’t do so.”

          Yes, but they didn’t have to, and they rarely rule larger than they need to.

          Plus, even when it happens not all software will be disallowed necessarily. They’ll just move to methods (where they belonged all along).

          1. 18.3.2.3.1

            More than just a slight problem 6 is that such would entail writing patent law directly, and the Supreme Court is simply not authorized to do so.

            1. 18.3.2.3.1.1

              Nah. Just “expand” (ahem properly execute in the times) the PMD for all authored works. It’ll all work out.

              1. 18.3.2.3.1.1.1

                See the Simple Set Theory explanation as to why your “expansion” is improper.

                That explanation shows that for software the proper utility is (gen erally) met. In addition to utility, you seem unable to grasp that “manufacture” includes “authoring” under the statutory category aspect of 101. There are no other requirements in 101 that you can rest your position on. To “hold” otherwise is the portion of the judicial action you want that would exceed the authority of the judicial branch and re-write the words of Congress.

    4. 18.4

      patent leather: don’t buy into the nonsense. The printed matter exception has nothing to do with this case. It is inapplicable. The printed matter exception was made for a very narrow class of inventions and made very dubious reasons. Maybe we would have better printed forms now but for the printed matter exception. The printed matter exception should be interpreted extremely narrowly and is based on very sketchy reasoning.

      And is inapplicable to a machine processing information for many reasons. Not least of which is the machine we can expect to develop very complex forms of processing. Moreover, what is the underlying reasoning of the printed matter exception? Go through it. It is not applicable to a machine.

      This is just another attack on information processing from another angle. We have Williamson, Alice, Lemley has his ridiculous functional claiming paper that has no correspondence to reality.

      All of these are judicial activist that are attempting to weaken the patent system. Just ridiculous that anyone would think the printed matter exception applies in this case. Not only that but there is some functional relationship.

      1. 18.4.1

        Night Writer,

        Do you find it ironic that it was Ned Heller that supplied a link to an article written by Judge O’Malley (link was behind a paywall) that discussed her view that many “friends of the court” were wrongly asking the courts to change patent law – patent law being statutory law and NOT common law?

        Is it not “funny” how those very selfsame “friends” are ALSO the ones that are seeking to deny patent protection to the very types of innovation that are most prevalent today? and even funnier yet, that those very selfsame types are the types MOST accessible by those not with the “big bucks”….?

  6. 17

    Since it’s been a while and there’s probably newbies lurking around, I do highly recommend Kevin Collins’ 2009 article to anyone who’s interested in the subject matter eligibility underpinnings of “the printed matter docrtrine”. Obviously a lot of relevant legal water has passed under the bridge since this was published but there’s plenty of excellent discussion of the core issues.

    link to papers.ssrn.com

    The printed matter doctrine is a branch of the section 101 doctrine of patent eligibility that, among other things, prevents the patenting of technical texts and diagrams. The contemporary formulation of the doctrine is highly problematic. It borders on incoherency in many of its applications, and it lacks any recognized grounding in the Patent Act. Yet, despite its shortcomings, courts have not abandoned the printed matter doctrine, likely because the core applications of the doctrine place limits on the reach of the patent regime that are widely viewed as both intuitively “correct” and normatively desirable. Instead of abandoning the doctrine, courts have marginalized it. They have retained the substantive effects of the printed matter doctrine but avoided analyzing it whenever possible.

    This Article adopts a different approach: it takes the printed matter doctrine seriously [and] examines one unexpected consequence of taking the printed matter doctrine seriously and adopting a semiotic framework. It reconsiders the patentability of a class of software inventions which are defined here as “computer models.” As a matter of semiotic logic, the routine patentability of newly invented computer models under the contemporary patent eligibility doctrine cannot be reconciled with the categorical unpatentability of mechanical measuring devices with new labels under the printed matter doctrine.

    1. 17.1

      You want a different law?

      Talk to Congress.

      I have already explained in short declarative sentences and in an easy to understand Set Theory mode how the actual Statutory law is impacted not only with the judicially created doctrine of printed matter, but also with the subsequent realization that “printed matter” comes in more than one flavor (set), and that certain types of printed matter simply do not have the same “philosophical” or “normative” or “policy” detriments as other Sets of printed matter.

      The fact Malcolm that you feel otherwise is just that: your feelings.

      Sorry, but those “feelings” simply are not in accord with what the patent system was designed to protect: manufactures (even “authorings”) by the hand of man that are created with utilitarian intent.

      Deal with it.

      1. 17.1.1

        You want a different law?

        No, I just want the law we already have to be applied aggressively to eliminate toxic b0tt0m-feeding s0ci0paths like you and your cohorts from the patent system.

      2. 17.1.2

        You clearly like to prevaricate upon the law we already have (given your very own volunteered admission as to knowing and understanding the exceptions to the judicial doctrine of printed matter).

        As to anything else in your baseless ad hominem rant, well, it merely reflects your very own AccuseOthersOfThatWhichMalcolmDoes short script rhetorical t001.

        (it does not f001 anyone)

      3. 17.1.3

        “anon” “authorings” by the hand of man that are created with utilitarian intent

        Like cookbooks. And websites with text written by someone other than the website designer.

        Sure, that’s what the patent system was created to protect. And you’re a very serious person.

          1. 17.1.3.1.1

            you “seriously” “forgot the functionally related part.

            LOLOLOLOLOLOLOL

            No, I didn’t. But please talk to your hero David Boundy about your super serious test that the Supreme Court will surely toss in the trash at their first opportunity.

            1. 17.1.3.1.1.1

              Instant Malcolm F A I L.

              You do realize that you want the Supreme Court to change the law by “toss in the trash the CURRENT law – as you so dammingly have volunteered as an admission against your interests, eh?

              In the best Homer Simpson tones:

              D’Oh!

    2. 17.2

      From the Collins abstract, published in 2009: Instead of abandoning the doctrine, courts have marginalized it. They have retained the substantive effects of the printed matter doctrine but avoided analyzing it whenever possible.

      The opinion in In re Destefano is a perfect illustration of the adage “the more things change, the more they stay the same.”

      Here we have an opinion published 6 years after the Collins article which quotes nearly verbatim the text of 35 USC 101 when discussing the origin of the so-called “printed matter doctrine” but remarkably fails to mention either subject matter eligibility or 101! On top of that, the CAFC somehow manages to ignore the past 6 years of Supreme Court subject matter jurisprudence, as if there’s no relationship between claims that protect “information” presented by or communicated with prior art technology and the case law prohibiting the use of the patent system to protect abstractions in prior art contexts, regardless of how specific or narrow those contexts are.

      The most straightforward explanation is that the CAFC is simply stalling for time in an effort to protect its perpetually favored and super shiny stakeholders. After that, we’re left with incompetence.

      1. 17.2.1

        Well, Malcolm, I agree that their decisions in this case are either remarkably block headed or very crafty, depending on the answers to the questions you pose.

  7. 16

    [T]he Board concluded that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.”

    That finding of fact that the origin of the web assets has no functional relationship to the claimed method remains undisturbed.

    What the Federal Circuit then has done is prevent the patent office from rejecting a claim to a method for lack of novelty based upon extraneous claim limitations that have no functional relationship to the claimed method.

    The PTO needs to consider asking for a rehearing or rehearing en banc.

    1. 16.1

      Ned,
      Your stridency belies your desire to press your agenda.

      Note the posture of the case: “This court vacates and remands.
      Note as well what the court is telling the PTAB: the ends DO NOT justify the means. The PTAB tried to get to an ends improperly. All that the court here did was say: “No, do it with correct means.”

      Untwist those panties.

      1. 16.1.1

        The Feds should have affirmed if the result was right on the facts, but the reasoning of the PTAB wrong. Just fix the reasoning and the law applied.

        That is why a motion for rehearing might actually be the best course of action.

        1. 16.1.1.2

          Neds: The Feds should have affirmed if the result was right on the facts, but the reasoning of the PTAB wrong. Just fix the reasoning and the law applied.

          The result was right on the facts but that particular panel doesn’t want to admit that because it would make it “too easy” to tank the computer-implemented junk that a few judges just can’t seem to stop loving.

          1. 16.1.1.2.1

            MM, the more I think about this case the worse it seems. It is, in fact, Hotel Security redux. The only distinction over the prior art is itself non statutory subject matter. There is no functional interaction with the statutory. The answer seems foreordained. But not here. Unless reversed, the PTO will be issuing hordes of patents with non statutory differences.

            And you might be perfectly correct as to why they want to allow patents on non statutory differences.

            This might end up being a great vehicle for the Supreme Court — Mayo II.

            1. 16.1.1.2.1.2

              “There is no functional interaction with the statutory.”

              Doesn’t matter, because the recited distinction from the prior art is not, itself, printed matter at all. It was simply the “origin” which the CAFC is interpretating as part of the method step, not as some matter written down somewhere.

              1. 16.1.1.2.1.2.1

                6, “part of the method” when they did not disturb the finding of fact that the origin had nothing to do with the method?

                Origin may not be printed matter, 6, but it has nothing to do with the method.

                As a general matter, extraneous stuff dropped into the claim that has nothing to do with the claimed method or machine cannot serve to distinguish the method or machine from the prior art. I don’t precisely know the proper statute to reject such claim, but 103 should be enough.

                1. “6, “part of the method” when they did not disturb the finding of fact that the origin had nothing to do with the method?”

                  Yes. I know it’s hard to wrap your mind around, but it has to do with the very specific argument put forth by the PTO (which was nonsensical).

                2. 6,

                  Ned is lost and just does not recognize the actual posture of this decision.

                  He has been blinded by his desired Ends, and sees nothing else.

                3. 6, which is why the PTO has to rethink things, press reset and try again with a new ground for rejection or some such. I think they might save everybody a lot of time and effort if they simply do this in request for rehearing.

                4. “I think they might save everybody a lot of time and effort if they simply do this in request for rehearing.”

                  True, but that’s bad procedure brosef.

            2. 16.1.1.2.1.3

              “Unless reversed, the PTO will be issuing hordes of patents with non statutory differences.”

              Not necessarily. They won’t even necessarily be issuing this case itself mah brosef.

              1. 16.1.1.2.1.3.1

                6, perhaps. But they owe us all to have this case reheard en banc. The result is absurd.

  8. 15

    There is a lot of excellent and diverse commentary on this page. The kind of stuff that makes PatentlyO worthwhile. Unfortunately (unlike many here apparently),being a busy day at the office I don’t have time to reread the case and respond to comments.

    But one thing I do want to comment on– “Lastly, I’ll note that the attorney for the PTO here could have done a much better job. Way too much hemming and hawing. Get a spine, bro’. These judges have their heads up their behinds and it’s your job to pull them out.”

    Malcolm, you criticize everyone and everything. Tell me who you respect in the patent world.

    1. 15.1

      patent leather, stop it about MM. He actually listens and responds.

      Also, I think MM has a good, analytical mind so I seek out his commentary first among the posters here. He is not always right, at least in my view, so we end up having a very good and detailed discussion about something. It is always interesting, at least to me. I would hope it to be interesting to other readers as well.

      1. 15.1.1

        Ned, lighten up. Nowhere in my post did I criticize MM or say he wasn’t intelligent. I respect his opinion. But man, it’s insult after insult with him. So I am just curious who he thinks knows what he is talking about.

        1. 15.1.1.1

          PL, I see the distinction you make: argue the merits only.

          I see the same argument being made about Trump, i.e., that he does not so much argue policy, but simply engages in insults. Actually, I think this is why almost the entire Republican establishment is aghast at his candidacy.

          1. 15.1.1.1.1

            Ned, you like MM because he also wants to use judicial activism to remove information processing from eligibility. MM is obviously a paid blogger that puts his propaganda on here day after day. He obviously spends 8 hours a day on here and the other blogs. He blasts the comment section with so many comments that repeat the same thing over and over that others that don’t have hours to spend on the blog cannot get their opinions heard.

            I agree that once in a while MM adds to the conversation with good content when it is outside his employer’s propaganda agenda.

            That is reality Ned.

            1. 15.1.1.1.1.1

              The reality is that 90% of the comments here are driven by two people: Ned, plus the MM, anon, 6 (and likely others) puppeteer.

              Ned might have the puppeteer on his payroll.

              1. 15.1.1.1.1.1.1

                FYI,

                You are not following along as clearly I distinguish myself from the others on your “two people” list.

                See 15.1.2.1.

                1. Lol – not credible, merely because you say so?

                  THAT is not credible.

                  Pay better attention – everything I say below is a fact.

                2. Not at all “FYI.”

                  In fact, the “too much” is easily;y seen as coming from you, given that you too refuse to recognize the content of what I post.

                  Gee, I wonder why….?

                  ;-)

        2. 15.1.1.2

          patent leather: it’s insult after insult with him

          Note to patent leather: I’m not going to play the game of pretending that I respect arguments that aren’t worthy of respect.

          If you or anyone else is making an argument that is absurd or ridiculous or nonsense, I am going to say so and I’m going to explain why. I’m not going to toast you for raising an excellent point when you have failed to do so (in most cases the “points” raised by the habitual defenders of junk patents here are both logically and legally incorrect and they’ve been informed of that hundreds of times).

          Mayb consider buying me a comfy leather chair and some really nice cognac. Then we’ll go to some room with a moosehead and a fireplace and pretend that we’re some Oxford dandies and everyone will be so impressed by the “civility.” It’ll be awesome.

          Until then, work on your arguments. And don’t worry about who I “respect”. It doesn’t matter who I “respect” because I’m not going to rely on their authority.

          1. 15.1.1.2.1

            , I am going to say so and I’m going to explain why

            Your version of “explanation” being nothing more than “because I said so” is a notorious F A I L.

        3. 15.1.1.3

          “I respect his opinion. But man, it’s insult after insult with him. ”

          He does go overboard.

          I mean, yes, we all get it MM, the patent system right now caters to some low lifes. It’ll get worked out eventually. You don’t have to be an arse about it. The political system works, and works slowly. Just observe all the progress made in 103/101/112 issues over the last decade. Now they’re all near perfect!

      2. 15.1.2

        He listens and responds because he seems to have unlimited time to do so. Many of us (including me) would like to do more, but we actually have clients and real work to do. If MM does, I don’t know how he gets any work done. He’s always here and always posts many times and with many, many words.

        Also, MM and others tend to attack people personally. I don’t find that useful.

        1. 15.1.2.1

          Good points both PatentBob and Night Writer.

          Clearly, Ned is way off base with his “adulation” of Malcolm. This is easily a case of “6-is-a-genius-because-he-agrees-with-me” and the fact that the larger aims of Ned align with the desires of Malcolm; to wit: anti-software and anti-business method.

          PaentBob, I would posit that the problem is less one of volume of posts and more one of what those posts are. This is a clear difference between Malcolm and I. Yes, I do post quite a bit (semi-retirement has its perks), and yes, I too will engage in ad hominem, but the huge difference is that I also post with respect to law, history and facts – Malcolm does not. Another huge difference is that my ad hominem is grounded and is not an attempt at dissembling or obscuring a conversation. Malcolm’s is often ONLY attempts at either dissembling or obscuring or both, and is almost never grounded. And of course, the biggest difference in volume posting is that I am always seeking to engage and exchange in a true dialogue, while Malcolm and his Echoes are exactly the opposite: always running away from a dialogue and ONLY interested in drive-by monologues that simply do not take any counterpoints put on the table for discussion.

          These distinctions make ALL the difference and point to the true blight here (so take note as well poster going by the moniker “FYI”).

          We will not – and in truth, cannot – get away from people having different views. But we can – and should – eliminate the drive-by monologues and refusals to engage; especially from the sAmeones (which is known to those that control the blog).

    2. 15.2

      Tell me who you respect in the patent world.

      There’s too many too list, including many with whom I disagree with about this or that.

      And since there was some confusion: I respect the attorney for the PTO in this case. He could have fallen to pieces and wept, or he could have started laughing hysterically about the absurdity of what was happening in the room that morning. Those would be understandable reactions. But he soldiered on.

      My criticism is that when you go into that room with a solid defensible argument — and the PTO surely had one — you need to stick to that argument like a pitbull. If the judge wants to make a point and wants you to acknowledge that he/she is making point, by all means oblige the judge. But you have to keep the judges on the defensive so they begin to question whatever assumptions they have made which aren’t in your favor. That means reminding the judges what the key facts are: (1) web assets include text; (2) the claim is directed to a method for designing a website that displays text — that immediately raises the “printed matter doctrine” and its underlying subject matter issues because text is for communication; (3) the only distinction between the prior art and the claim is the recitation of the relationship between the web site designer (the “user”) and the author of the text; (4) for obvious reasons, no court has ever held that identifying “authorship” of printed matter eliminates the problem of claiming printed matter or relying on a printed matter “limitation” for patentability.

      See how that works? The CAFC was looking for a precedent exactly on point because they lack either the integrity or intelligence to put 2+2 together, even when the PTO spelled out the issues for them in its brief (I wonder how many of those kit claim patentees who had seen their claims invalidated smacked their foreheads when they read this opinion — “Gee, why didn’t we think of amending the claim to recite a giant class of authors which we’ll then narrow down perpetually until we reach a class that’s deemed “non-obvious?”).

      The PTO was never arguing that “origin” was “printed matter.” The argument was that you can’t avoid the reach of the “printed matter doctrine” by resorting to yet further ineligible subject matter, e.g., non-structural abstractions about the relationship between the user and the author of the “printed matter” in question. The PTO’s attorney managed to squeak that argument out at the very end but it was too late. The judges were having fun accusing the PTO of being “lazy” for not recognizing that the claims were obvious (and at the same time acknowledging that, thanks directly to the CAFC, the PTO would be faced with still more work rebutting the paper storm that this applicant was inevitably going to kick in their faces when the 103 rejection is made).

      Taranto’s little soliloquy about the printed matter doctrine, which I quoted below, was fascinating in its wrongness. The “printed matter doctrine” is completely supported by statute — section 101, as interpreted by the Supreme Court quite recently — except for the massive CAFC-created “exception” to the rule. And it’s that aspect of the doctrine that would (arguably) have been narrowed — certainly not broadened — by the eminently reasonable position that the PTO took in this case.

      1. 15.2.1

        >>non-structural abstractions about the relationship

        Sure MM. You tell us a chip has no structure. Everything you have said in the is string is just nonsense because you argue that there is no structure. Different functions with the same structure–magic.

        1. 15.2.1.1

          Night Writer,

          Your comment of “ Different functions with the same structure–magic.” is a succinct take away from each of the Grand Hall experiment, the Nazomi case, the fallacy of the House/Morse argument, and the legal doctrine of inherency discussion points.

          I am sure that you would not be surprised to note that ALL of the sAme ones that routinely post anti-software sentiments NEVER address, acknowledge, and integrate ANY of these items into the on-going discussions.

          And take note too Patent Bob and “FYI” – this is a great example of the clear and unmistakable distinction between those that want to engage in a dialogue (even heated ones) and those that really want nothing else but to monologue.

      2. 15.2.2

        “He could have fallen to pieces and wept, or he could have started laughing hysterically about the absurdity of what was happening in the room that morning. Those would be understandable reactions. But he soldiered on.”

        ^ Truth lol.

      3. 15.2.3

        “The PTO was never arguing that “origin” was “printed matter.””

        The director did not argue that at the CAFC, but the board held it and/or the examiner did (and then the board affirmed on those grounds) if their summary was correct. Though I didn’t check the record to make sure the CAFC didn’t mess up their summary.

      4. 15.2.4

        “I wonder how many of those kit claim patentees who had seen their claims invalidated smacked their foreheads when they read this opinion — “Gee, why didn’t we think of amending the claim to recite a giant class of authors which we’ll then narrow down perpetually until we reach a class that’s deemed “non-obvious?””

        Lol.

  9. 14

    Certain people simply refuse to be inte11ectually honest about the plain fact that:

    Set A = Set B + Set C.

    ALL of this is immensely straight forward if only some minimum level of a mind willing to understand – and accept reality (instead of the typical pursuit of “philosophy/opinion/feelings”).

  10. 13

    I went back and reviewed the oral argument in this case.

    The problems start right off the bat. Taranto states “Your patent doesn’t claim particular printed matter but refers to the origin of different types of printed matter. That’s not printed matter itself.”

    The problem is that Taranto is wrong. “Printed matter” (i.e., information) defined by its authorship is certainly “particular printed matter.” The fact that the “particular” information is not defined by its content but by some other abstraction (e.g., ownership) changes nothing. The patentability of the claim still hinges on the recitation of that “particular” ineligible information and that is the problem.

    An easy example illustrates the absurdity of Taranto’s position: a claim to a “new” kit that differs from a previous kit only by the inclusion of “instructions written by a third party” would certainly be anticipated by the previous kit under the “printed matter doctrine.” Nobody would question that result. But introduce some “computer technology” into the situation and suddenly Taranto needs to start with the backflips. And he’s pretty clear in oral argument why he’s waving his hands around: he’s trying to protect computer software.

    Remember: Taranto is the same judge who last week admitted in court that he has “no idea” how his brain is able to recognize a human face. All in the service of protecting a sooper dooper important patent on using “rules” in the course of animating a cartoon character. With a computer. Because computers are shiny and Taranto really likes them.

    The judges are insistent that “this isn’t printed matter at all.” As pointed out already, the judges are wrong.

    Other portions of the judge’s arguments are devoted to puffing up the other dead horse that software patent lover’s ride proudly upon: the alleged novel “functionality” of the claim. Since when can you protect “new functionalities”? The judges never say. It just happened. At the same time, the judges seem to recognize the obviousness of substituting “display text” with “display text authored by third parties”.

    It really is astounding and disappointing the depths to which both Judge Taranto and Judge Moore regularly go in their efforts to breath life into ancient logic or find something — anything! — to

    Also interesting was this from Taranto: The printed matter doctrine is not actually statutory so you’re making an argument that a doctrine that is non-statutory and that has been said over many decades to be one without a very decent statutory foundation should be broadened according to some broad policy one could find in this non-statutory doctrine.

    Funny stuff. There’s not a decent “statutory foundation” for excluding information content from the patent system? Really? I think the Supreme Court would beg to differ. After all, they’ve interpreted 101 for you several times recently. But Judge Taranto is still confused. But he’s very concerned about the software patents — the patents that are protected by the judge-created “exception” to the printed matter doctrine which undoubtedly broadened the scope of what was deemed (at least by the judges who created the exception out of thin air) to be eligible.

    Lastly, I’ll note that the attorney for the PTO here could have done a much better job. Way too much hemming and hawing. Get a spine, bro’. These judges have their heads up their behinds and it’s your job to pull them out.

    1. 13.1

      The crock of your dissembling “functionalities” spin is easily dispelled when you realize that what you are calling “functionalities” is merely the utility aspect of 101.

      Combine that with the other part of 101: the (intended) BROAD statutory categories, and the purpose of 101 can be seen to be easily met with most all software.

      1. 13.1.1

        Google is about to make its fleet of self-driving cars a separate business entity. Those cars drive via software that — oh my gosh! — controls hardware. Those cars are patentable. The software in those cars have functions that implement the patentable functionality. There is nothing in 35 USC 101 that should prevent the software’s functions from being patented.

        Here’s an article about this:

        link to msn.com

        A quote: “the arguments among programmers at places like Google Inc. and Carnegie Mellon University are heating up”. That’s right, the PROGRAMMERS make the driverless cars work. How? By writing code that has functions that cause the car to work in the way they want the car to work.

        If the car is patentable (in the 101 sense), why isn’t the software?

        1. 13.1.1.1

          PROGRAMMERS make the driverless cars work. How? By writing code

          No kidding.

          If the car is patentable (in the 101 sense)

          Pretty much every one of Google’s “driverless cars” patents is ineligible or obvious junk. Of course, if you were born yesterday like Judge Taranto and you have “no idea” how you manage to get from your garage to your office, then it’s easy to be impressed. Be impressed, PatentBob! You’re a very serious person.

        2. 13.1.1.2

          Is a car with a map in the glove compartment eligible for patenting because “the map was drawn by [insert non-obvious third party here]”?

          Of course it’s not.

          Is it hard to reach this conclusion?

          Nope.

          Is it hard to pretend that you were born yesterday so you can say over and over again that “maps are soooooooper dooooooper important and so they must be patentable! must be patentable! must be patentable!”

          Nope. Hence we have two sides to “the argument.”

          Pick your side.

        3. 13.1.1.3

          Patent Bob, if the programmed car operates in an improved manner, I see no problem under 101.

          But do not extend this principle to the use of computer to compute the improved price.

          1. 13.1.1.3.1

            When you curr rubber, you only cure it once. The end result of Diehr is the same item – as perfect cures were in fact performed prior to the Diehrpatent.

            Alternatively, we can (again, well at least start as you never finish) discuss encryption, which has as its result the starting point.

            Your mantra is off, Ned, just as you have previously been put on notice.

            1. 13.1.1.3.1.1

              anon, I have never understood your point here about Diehr. The Supreme Court believed that the rubber molding process was improved over the prior art. You are making subtle points here that I do not understand, and that, I think, nobody else understands.

              1. 13.1.1.3.1.1.1

                Ned,

                You flit about and through different arguments at times.

                One of those arguments centers on this very odd notion that the result of something itself MUST BE new and different in and of itself.

                That just is not so – and never has been so.

                I use the example here of rubber being cured. When one cures rubber, an individual attempt to do so – a “use of the process” is done once and only once. Prior to the patent for Diehr, rubber was quite in fact known to have been cured perfectly in any single attempt at a curing process. To wit, the end of the process – the result, was known and achieved. Two units of rubber could be cured under different processes and end up in the same exact state of being cured perfectly.

                But you seem to lack this common sense notion, almost as if you have never had any real world experience.

                The other example I provide here is encryption, which when run full cycle (encrypt – and un-encrypt) – leaves NO trace of the (very much patent protectable) process.

                Two different examples that shows that your desired “logic” argument about somehow needing a result itself to be different just does not hold up.

                1. Anon, if we agree that a mathematical process is nonstatutory, but that an application of a nonstatutory mathematical process in an otherwise conventional process, per Diehr, might be patentable, then what does that mean? What it means is that the nonstatutory subject matter must affect the result in some fashion. I think this is self-evident and exactly what the Supreme Court means.

                  As to affect: I think “affect” could be to change in any possible way including making the process run more efficiently, more reliably, at higher quality or so as to produce a result not hitherto known.

                2. or so as to produce a result not hitherto known.

                  Once again, you rely TOO MUCH on wanting a certain quality of “result.”

                  THINK man – perfect cures (the result) were KNOWN prior to the Diehr patent.

        4. 13.1.1.4

          “If the car is patentable (in the 101 sense), why isn’t the software?”

          Because it is written. If nothing else.

    2. 13.2

      Also noteworthy: Judge Hughes suggested that the PTO was “lazy” because it didn’t make the “easy” obviousness argument.

      Moments later, Judge Taranto reminds the applicant that he/she will be able to provide extrinsic expert testimony describing how the recited functionality “requires” different steps and structures … none of which are appear in the claim.

      So who’s being “lazy”? The PTO which made a perfectly reasonable argument for ignoring a “limitation” describing a class of communicated information — the only “limitation” not described by the cited reference? Or the patent tr0ll exploiting a broken system to extort money from people who independently created working products without any knowledge of the applicant’s junk?

      Pretty sure even Judge Hughes knows the answer to that question. But he’s got to play the game. Software simply must be patentable! There’s no way around it. Judge Hughes and Judge Taranto know that much, even if they have “no idea” how they can recognize a human face.

      1. 13.2.1

        MM, I think the PTAB did error in stating the problem here involved the printed matter doctrine.

        As I said elsewhere, if the source of something has nothing to do and does not affect, i.e., has no functional relationship with the process or machine being claimed, then it cannot serve to distinguish the the process or machine from the prior art.

        I think there might be a fundamental problem here with 112 – aggregation. I claim A + B. A and B are two different things that have no relationship to each other. Even if both A and B are both patentable subject matter, the combination cannot be patentable for the reason that there is no functional relationship to each other. Perhaps there should be a rejection of the claim under 112 simply because of the fact of aggregation.

        In the EPO, an aggregation occurs when there is no functional relationship between features. In such a circumstance, the patentability of each of the features must be determined independently. link to epo.org.

        The EPO approach may be applied the present claim as follows:

        1. We have on the one hand an old process, and on the other a the variance of source, distinct features that have no functional relationship.

        2. The old process cannot support patentablilty.

        3. The difference sources might be new, perhaps even non obvious, but clearly, as I said before, the variance of source is not itself is patentable subject matter.

        Someone need to bring the jurisprudence of the EPO to the attention of the PTAB.

        Also, aggregation needs to be restored to the MPEP in some fashion.

  11. 12

    Is this really properly a printed matter case at all because the origin of the web assets has nothing to do with everything else the claim, i.e., it has no functional relationship to the method.

    Consider a milling process claim. It operates upon grain. Does it make any difference whatsoever whether that grain came from farmer A or farmer B? Obviously none. So how could the addition of the origin of the grain have anything to do with the patentability of the claim to a milling machine?

    What is the best way to handle things like this? 103 or 112?

    Regardless, I do not think that printed matter should have had anything to do with this case. The PTAB should have rejected the claim based on more fundamental principles.

    1. 12.1

      Ned: Is this really properly a printed matter case at all

      It can certainly be a “printed matter” case or it can be a subject matter eligibility case under 101 (that’s true of every printed matter case), depending on how you frame the issue. The PTO chose the “printed matter” doctrine but it was, arguably, clumsy with the framing and the CAFC — equally clumsily — punted the case back to the PTO with a ridiculous precedential (?!) opinion.

      Is Destafano’s claim also obvious? Of course it is. But there’s nothing unusual about a claim failing both 101 and 103, or a claim being both anticipated under the “printed matter doctrine” and simultaneously obvious.

      I don’t see the 112 problem off the top of my head but there might be one.

      Consider a milling process claim. It operates upon grain. Does it make any difference whatsoever whether that grain came from farmer A or farmer B? Obviously none. So how could the addition of the origin of the grain have anything to do with the patentability of the claim to a milling machine?

      Or consider a claim to a “new” method of displaying text on a computer screen. If everything else in the claim is old, does it make any difference whether the displayed text was authored by Joe Johnson or Ted Tedworthy? Of course it doesn’t. That’s why the “printed matter doctrine” was completely appropriate here and that’s why the CAFC’s decision is a farce.

      1. 12.1.1

        MM: consider the computer. Old. Now consider the blue computer.

        Can we not reject this claim on the basis that blue has no functional relationship with the computer? Why do we even have to get into whether blue has meaning?

        1. 12.1.1.1

          Can we not reject this claim on the basis that blue has no functional relationship with the computer?

          It’s easier to see a blue computer against a red background. That could be useful if you are looking for your computer on Mars, especially through a space helmet. Patents are necessary to encourage insights like this.

          To suggest otherwise is to denigrate the entire history of interplanetary study and exploration. You might as well play racquetball with a dessicated mouse, like the Amish do.

        2. 12.1.1.2

          Ned,

          Consider the Grand Hall experiment.
          Consider Nazomi

          Oh wait, I have already asked this of you – and have received the obligatory “run away.”

      2. 12.1.2

        It makes no difference if the text was authored by Joe or by Suzy and that should end the matter. The machine is not modified in any way.

        A typewriter that employs different kinds of paper may produce different results depending on the kind of paper. But with the paper itself is unchanged and the source of the paper is the only distinction, with no functional difference between the combination of the paper and the typewriter, then the source cannot provide a patentable basis for any distinction.

        Thus of everything in the claim is known in the prior art but the source, and the a changes source does not affect the operation of the machine or process in any way, then the claim effectively is to a source itself.

        We can approach this issue from of various aspects, but fundamentally this claim cannot be patentable and there is a serious mistake being made here if the claim in this application ever issues.

        On remand the patent office needs to re-do the rejection and eliminate reliance upon the printed matter doctrine and instead argue that the source of the material in a process that does not change the process in any way cannot be patented because the process is not new and a source is not eligible subject matter.

        1. 12.1.2.1

          Should read:

          “Thus of everything in the claim is known in the prior art but the source, and the change in source does not affect the operation of the machine or process in any way, then the claim effectively is to a source itself. “

    2. 12.2

      What if the invention is that the grain comes from a grain elevator to which farmers A and B might both contribute grain? Might there be some advantages to the process?

      Since grain elevators exist, I’m gonna guess that there is some advantage….Just as there might be some advantage to getting the web assets from a database to which the user and a third party might contribute.

      1. 12.2.1

        some advantages

        “Some advantages” has nothing to do with the eligibility issue.

        Knowledge of a fact has “some advantages.” But facts aren’t eligible for patenting. Knowledge that “X is owned by newly identified person Y” has “some advantages”. But you can’t patent “old X owned by Y” (because it would protect the ineligible abstraction of ownership status).

        1. 12.2.1.1

          “some advantage” goes to “useful”.

          You have misread the claim. As pointed out by the court, the “printed matter” is not being claimed. A process that includes getting information from a particular kind of source is being claimed.

          1. 12.2.1.1.1

            Les: A process that includes getting information from a particular kind of source is being claimed.

            “selecting a first element from a database including
            web assets authored by third party authors
            and web assets provided to the user interface or
            outside the user interface by the user;”

            Les, see no “getting” step.

          2. 12.2.1.1.2

            Les; A process that includes getting information from a particular kind of source is being claimed.

            The information is coming from a prior art “database”. Are you suggesting that a “database” becomes “new” for patent purposes when you put “new data” in it?

            I hope not. Those claims are d.o.a. under existing CAFC precedent.

      2. 12.2.2

        Clearly Les, if the source does affect the result in that grain from a particular source provides a different, and improved flour, then the claim is a claim to an improved process.

        1. 12.2.2.1

          Ned –

          I’m from the city, so I’m just guessing about the advantages of grain elevators. But I suppose they let the farmer sell grain when he has grain and it allows the mill grind grain when there is a demand for flour.

          Advantages of the recited database probably include facilitating sharing/reuse of web assets. The claimed invention as a whole then being an improvement in a method of designing/building of web pages.

          As the court noted, the printed matter is not being claimed. Quite clearly, particular printed matter is not being claimed. What is claimed is a process for assembling a web page. That process is tied to a machine (a particular kind of data base). It passes, therefore, MOT and 101ers should be satisfied.

          1. 12.2.2.1.1

            Les, if the process claimed, identical with the prior art, is useful for both web assets from the user and non users alike, then so is the identical prior art process.

            I think the patent attorney went into to the examination with the understanding that the process itself was new. But in the end, he began to claim that there was some novelty in the source of the web assets as claimed. But without clearly showing how this could affect the output of the claimed process, I don’t see how it could be patentable.

            Think. Unless the web assets themselves are marked in some fashion that their origin can be distinguished, then the process claimed is agnostic as to the source in terms of its operation and output. There is nothing new in the process claimed.

            What we have here is a case of pure aggregation where that which is new is completely independent of the process that is being claimed. Apples and oranges.

            1. 12.2.2.1.1.1

              Ned –
              I have never had a problem with a legit 102 or 103 rejection killing a patent.

              To your second point, there is no rule that an improved process has to “affect the output”. The improved process might, for example, produce the same exact output more efficiently.

                1. Ned –
                  The premise of your question or assertion implied that things like efficiency were not being counted by you.

                  Remember you said:”Think. Unless the web assets themselves are marked in some fashion that their origin can be distinguished, then the process claimed is agnostic as to the source in terms of its operation and output. There is nothing new in the process claimed.”

                2. Les, no doubt one can modify a process to improve it in many different ways including producing the same overall result but more efficiently by consuming fewer resources or doing the same thing more reliably or in less time.

                  But this has nothing to do with this case where limitations at issue were functionally unrelated to the claimed method.

                3. including producing the same overall result

                  Focus on that for awhile before you make any other comments.

    3. 12.3

      Ned, data “from a CT scanner” is different than data “from a seismic sensor” which is different from data “from a human typist.” If it were not for this silly printed matter rule, claims would mean what they look like they mean. You’d just read the words on the page and ask “Is it obvious?” Maybe the difference in origin is too thin to be nonobvious, maybe it makes a big difference. Without the “printed matter” rule, the question and process are logical. The “printed matter” rule is pretty much a rule of random disruption — concocted to solve a particular problem of printed matter, and totally out of place when applied to computer data.

      The patent law ought not have silly rules and magic incantations that torture perfectly good words on a page to mean something other than what they mean in everyday usage. This “printed matter” rule is one of the silly rules that taxes the credibility of the system if it expands beyond the “instruction sheet” cases.

      1. 12.3.2

        David, I really do not believe this is properly a printed matter case at all because the source of the web asset data is irrelevant to the claimed process which is not varied at all depending on whether the asset is from one source or another, nor is the result varied.

        Now if the process had actually claimed an input directed to a sensor or dated derived from a sensor so that the process transforms the signal from the sensor into a different signal that was improved in some fashion vis-a-vis prior processes, the process itself being new, then I think we are talking about patentable subject matter. But if everything the claim is old, e.g., the process itself is old, and the source of the data does not change the process or result of the process in any way, then the source of the data is irrelevant to the process. We are speaking here then of an aggregation.

  12. 11

    DB: Data that communicates information that will be further processed or transmitted in a computer for eventual presentation to humans, but is still in the memory of the computer and not yet perceptible to humans, should not be printed matter.

    “Data” is ineligible subject matter.

    Printing the ineligible data on an old substrate for communication to a man or machine doesn’t change that fact, at least not by any sensible reasoning. Reciting that the data is “encoded” also doesn’t change that fact. It’s still “data.”

    You can’t take an old storage medium which exists to store data and turn it into a patentable invention by reciting some “new” data — e.g., a non-obvious recipe for making a cake — that is stored on that medium. It doesn’t matter if that data is “not yet perceptible humans”. Why should it?

    In addition, what is and what isn’t “perceptible to humans” depends mightily on what information and t00ls the human has available to him/her.

    Lastly, it seems more than a bit odd to permit applicants to claim subject matter that humans are incapable of “perceiving”. But wait! I suppose we can just allow applicants to claim the desired functions instead.

    Too bad that 101 doesn’t permit the claiming of functionalities.

    Round and round you go ….

    1. 11.1

      This is just psychotic nonsense. Realty: machines that take time, space, and energy to process information.

      Reality: start from the invention and how it works and not from these declarative sentences that have no correspondence to reality.

      By the way, why didn’t you just type in random letters MM? Because your letters have a functional relationship to the human information processors. Full stop.

    2. 11.2

      MM, you’re confusing the test for 101 subject matter with the test for 102/103 printed matter. They’re entirely different in underlying rationale, test, and legal effect. If you keep everything in its correct pigeonhole, the law makes a lot of sense.

      1. 11.2.1

        DB: MM, you’re confusing the test for 101 subject matter with the test for 102/103 printed matter. They’re entirely different in underlying rationale, test, and legal effect.

        The underlying rationale is identical, David: excluding ineligible subject matter. That’s set forth right in the case. Giving “no patentable weight” in a 102/103 analysis arose directly from the concept of ineligible subject matter (In re Russell 48 F.2d 668, 669 (CCPA 1931); “arrangements of printed matter … in book form or otherwise, do not constitute any new and useful art,machine, manufacture, or composition of matter, or any new and useful improvements thereof.”).

        The “legal effect” of applying 101 versus 102/103/”printed matter doctrine” is also identical (or nearly so): claims that would otherwise protect “new” ineligible printed matter printed, stored or displayed on/by otherwise old media/devices are kept out of the patent system — as they should be.

        The analysis itself is also indistinguishable from the Supreme Court’s 101 test: you look for the ineligible subject matter in the claim. Then you ask: what happens if you remove that ineligible subject matter? Is what remains a patentable invention? If not, then the claim is ineligible.

        The huge distinction between the so-called “printed matter doctrine” and 101 — as you and most everyone else seems to understand — is the “exception” to the “doctrine”. Specifically, this is the “exception” for ineligible subject matter that is “functionally related” to “the substrate.” That’s the gaping loophole, created out of thin air, through which software patenting cruised many years ago.

        For many years now I’ve been arguing here that the “exception” is a quintessential example of the worst kind of judicial activism, a meaningless self-serving “test” created on the spot to promote whatever result the jurist wishes to promote, and darn the consequences to the rest of the system. In that regard, I was pleased (and a bit surprised) to see you state below that “a functional or structural relation to the substrate” is all but meaningless, and way too fuzzy to be useful as a legal test”. We can agree on that much.

        Below you asked me: What’s your objective basis to say “our patent system wasn’t designed to protect logic instructions for computers?

        You mean other than the predictable rise of patent tr0lling by attorneys who sit around and dream up “new” ways of applying “logic” to deal with “problems” associated with information processing and transmission? And other than the fact that the PTO — as you admit — was utterly incapable of performing the analysis required to examine patents on “new logic” and remains utterly incapable of doing so today (apparently to the great satisfaction of the “stakeholders” who moan and fight every time the PTO or the courts makes any reasonable effort to expunge the vast reams of “logic — on a computer” junk from the system)?

        I mean other than that my objective basis is the simple fact that information processing isn’t eligible for patenting. It never was. It’s an abstraction. That fact shouldn’t change just because someone invents a machine that can carry out logical processing steps. The legal backflips that were performed to open the doors up to the ongoing disaster in the system are well-known to everyone, including the Federal Circuit and the Supreme Court. When judges start from a dubious premise (“logic on a computer must be patentable!”) and work backwards, writing the law with “guidance” provided by parties who, in most cases, are not adversarial and who care only about their short-term profits, the results are typically less than ideal.

        So we see the inevitable patent reform to address the predictable problems. And who complains the most about the reform? Why, the same folks who love software patents, of course. And that’s in spite of the fact that the reforms largely left that precious elephant in the room completely intact.

        1. 11.2.1.1

          The underlying rationale is identical

          Actually your favorite case Prometheus held (9-0) that it was NOT so.

          Ooops (for you).

          1. 11.2.1.1.1

            Nobody knows what you’re talking about “anon.” But keep your head in the sand. Maybe you’ll find a pretty seashell.

        2. 11.2.1.2

          “For many years now I’ve been arguing here that the “exception” is a quintessential example of the worst kind of judicial activism, a meaningless self-serving “test” created on the spot to promote whatever result the jurist wishes to promote, and darn the consequences to the rest of the system. In that regard, I was pleased (and a bit surprised) to see you state below that “a functional or structural relation to the substrate” is all but meaningless, and way too fuzzy to be useful as a legal test”. We can agree on that much.”

          No. It is the other exceptions (natural laws, products of nature, “math”, things that can be done in the mind, “abstract ideas”) that are the quintessential example of the worst kind of judicial activism, a meaningless self-serving “test” created on the spot to promote whatever result the jurist wishes to promote, and darn the consequences to the rest of the system.

          1. 11.2.1.2.1

            Les, “abstract” is not a literal requirement of 101. Therefore making abstract the essential inquiry into eligibility has got to be wrong.

  13. 10

    I can’t disagree more with “Patent Leather” @9 This is a really, really, really problematic decision, with effect much broader than Alice or Williamson.. I hope the court will issue an errata correction changing “communicated” to “communicated to humans.”

    Here’s the problem. Computer data is only valuable for the content of what it communicates—whether to a later step in the same program, to another computer of a network, or to a human. The vast majority of all computer software claims recite data that “represents” something, or has a “value” of something, or software “programmed” to do something, or the like. The vast majority of all software patent cases (whether validity or infringement) turn on such language. Read at face value, DiStefano says all this claim language gets blue-pencilled out, and validity stands on the rump claim that’s left. If DiStefano means what it says, the vast majority of all software claims are invalid.

    Essentially the entire body of the court’s software precedent goes out the window.

    DiStefano almost goes out of its way to not quote the key language from the most-recent computer “printed matter” case, In re Lowry, 32 F.3d 1579, 1582-83, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994). Lowry explains that “printed matter” (step one of the DiStefano test) is confined to “arrangements of printed lines or characters, useful and intelligible only to the human mind,” such as cases involving adding instruction manuals in kits. For decades, data in the memory of a computer has not been “printed matter” because it’s not perceptible to humans.

    Instead, DiStefano goes 180 degrees the other way, printed matter does not turn on “involved a computer” (slip op at 9):

    By contrast, we found in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), that a computer-based structural database was not printed matter, not because it involved a computer, but because the data structures “contain[ed] both information used by application programs and information regarding their physical interrelationships within a memory.” Lowry, 32 F.3d at 1583–84.

    DiStefano is very, very, very bad precedent. I hope the court will realize how sloppy and sweeping the decision is, and at the very least will correct itself to replace “communicated” with “communicated to humans.”

    1. 10.1

      I don’t agree. This decision sets up a two-pronged test, as Dennis notes. The discussion focused only on the first prong, tossing out the application of the doctrine at that threshold level (I strangely think I might agree with mm in thinking that this should be classified as printed matter, but I digress), but your concern about software should be adequately addressed by the second step of the test. There, the determination is made regarding whether there is an interrelationship between the printed matter and the substrate. When the content of the printed matter is utilized by the substrate (e.g., when the computer takes a subsequent action that hinges on what the content is), then the printed matter must be given patentable weight. When, on the other hand, the content of the printed matter is unrelated to the substrate (e.g., not used thereafter by the claim, or, as you suggest, is only useful to a human, or is not useful at all), then no patentable weight is given to it. David, why do you think that your issue is not addressed at this second step?

      In my view, this decision actually reduces the scope of the printed matter doctrine by adding the content-specific requirement to the first step of the analysis.

      1. 10.1.1

        Don’t misquote your source. Here’s what it says (slip op at 10):

        Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate.

        Wow. If the court was trying to invalidate all software patents, that’s a pretty effective way to do it.

        1. 10.1.1.1

          David, the quote from the case:

          Printed matter is given such weight if the claimed informational content has a functional or structural relation to the substrate.

          is the part of the “doctrine” that Easwaran was referring to which, theoretically, allows recited functional limitations relating to “printed software” to be given patentable weight.

          That “exception”, of course, was created out of thin air so it’s understandably why anyone would be uncomfortable putting too much pressure on it.

      2. 10.1.2

        If the court had given Easwaran’s explanation, then things would be almost fine (I’d still be worried about data that’s being assembled for display on a web browser). But that’s not the explanation the court gave.

    2. 10.2

      Oops, revision — “communicated” should be replaced with “communicated in a form perceptible only to humans.” Data that communicates information that will be further processed or transmitted in a computer for eventual presentation to humans, but is still in the memory of the computer and not yet perceptible to humans, should not be printed matter.

    3. 10.3

      Another very important thing — “content” or “meaning” exists only in the human mind (at least in any situation relevant to these claims). Electrons in a DRAM memory don’t know what they “communicate.” The DRAM itself is designed to be indifferent to the content “communicated” by their contents (one of the key innovations in computation was the realization that the same memory could store both instructions and data–and when I was an engineer, I used to take full advantage of that duality (I was a compiler writer), using data arithmetic computation to build up numbers that happened to have values that were useful as instructions. “Claimed informational content has a functional or structural relation to the substrate” is all but meaningless, and way too fuzzy to be useful as a legal test.

      The data “communicate” meaning that the programmer had in mind when he/she wrote the program, and the meaning they assume when presented to a human, but they “communicate” nothing subjective while they’re in the computer. That’s just a bunch of electrons and silicon and aluminum interacting with each other the way Maxwell’s laws of electromagnetism and the laws of quantum mechanics tell them to behave.

      Trying to pin “content” or “communication” into the legal analysis is really really problematic as a legal test for deciding cases.

      Lowry’s “arrangements of printed lines or characters, useful and intelligible only to the human mind” gets the right answer, and is analytically tractible.

      Please court, take the chance to give us a do-over. This is “gobbledygook” and “gibberish.”

      1. 10.3.1

        DB: Lowry’s “arrangements of printed lines or characters, useful and intelligible only to the human mind” gets the right answer

        Because software must be patentable!

        Yes, let’s start with that and work backwards. What could go wrong?

      2. 10.3.2

        Thanks David for taking the time to respond to this. I need to read through this, but it appears to be just more witch logic from the PTAB. I wonder if Lee is dipping her fingers into the PTAB.

    4. 10.4

      Note to David Boundy: relying on the so-called “printed matter doctrine” to save your client’s software patent is ill-advised to say the least. That’s because the “exception” is nonsense (as we saw here) and this case did nothing to address that.

      That said, it’s great to see confirmation of something most of us already knew: the defenders of software patents really don’t care about how they defend the claims. They’ll reach for whatever stick they can grab. After all, “functional relationship” is sooooo much more clear and meaningful compared to “abstract.” Right. Sure it is.

      1. 10.4.1

        Note to David: after I wrote this I saw your comment at 10.3 stating:

        “Claimed informational content has a functional or structural relation to the substrate” is all but meaningless, and way too fuzzy to be useful as a legal test.

        and

        Trying to pin “content” or “communication” into the legal analysis is really really problematic as a legal test for deciding cases.

        Kudos to you for acknowledging the serious flaws with the so-called “doctrine” and its exceptions. Now you just have to take that baby step and acknowledge that our patent system wasn’t designed to protect logic instructions for computers. Relying on judges to carve out “exceptions” in the system to protect those instructions has been a disaster and it’s going to continue to be a disaster for reasons that are probably obvious to you.

        1. 10.4.1.1

          MM: our patent system wasn’t designed to protect logic instructions for computers.

          That statement is puzzling. Until the Supreme Court started messing things up around 2010, the Federal Circuit had done a good job of sorting out the Diehr wheat from the Benson/Flook chaff, and it worked pretty darn well, subject to the limits on examiners’ time and resources to really understand the applications they were examining and to truly search the prior art. The system was fine, the PTO was a weak leg on the stool.

          What’s your objective basis to say “our patent system wasn’t designed to protect logic instructions for computers?”

          1. 10.4.1.1.1

            He/she/it doesn’t have one and never has had. All an invention has to be is new and useful. Logic instructions for computers are new and useful. Five years ago, I couldn’t turn on my AC system while driving on the interstate toward my house. Now I can, and that’s due to “logic instructions for computers”. That’s new and useful, and should be patentable.

            1. 10.4.1.1.1.1

              Five years ago, I couldn’t turn on my AC system while driving on the interstate toward my house.

              Meanwhile, on our planet even 60+ years ago you could send a spaceship into orbit and control it’s activity from the ground.

              But congrats on the air conditioning. It’s hot in Texas.

      2. 10.4.2

        MM: Note to David Boundy: relying on the so-called “printed matter doctrine” to save your client’s software patent is ill-advised to say the least.

        MM, this seems to reflect profound misunderstanding. I cannot imagine a situation in which the “printed matter doctrine” can save a patent. It’s only a line of attack.

        1. 10.4.2.1

          DB: I cannot imagine a situation in which the “printed matter doctrine” can save a patent.

          It’s the “exception” part of the doctrine that saves the patent. You’ll note that the Supreme Court has not adopted the CAFC’s “functional relationship” exception into its 101 jurisprudence. But the exception is still, theoretically, alive and well.

          How long will that last? Not much longer, if the PTO continues making “printed matter doctrine” rejections which I very strongly encourage them to do.

          1. 10.4.2.1.1

            Do you mean the “exception part to the judicial doctrine that you have volunteered an admission as to knowing and understanding as being the law”….?

            That part?

            Funny, how your own “understanding” seems to disappear when it is convenient for you to pull out your old tired and trite mantra…

            Oh wait, that’s not funny – that’s deceptive.

            And highly unethical. Gee, who’s watching over that field of rye….?

  14. 9

    Not sure what all the whining is about below. This is not an important case in that the printed matter doctrine does not arise very often. But in any case, the panel clearly did not want to expand the printed matter doctrine into new territory. The claims would likely be currently held invalid under 101 anyway (not my choice, but that’s the reality now), so there is no need for this panel (all three of whom are not friends to software patents) to overreach here.

    In the Solicitor’s brief there is clearly something I don’t agree with. they write, “In contrast to Lowry’s data structures, DiStefano’s web assets have no functional relationship to the claimed method. ” Not true– one purpose of this invention is to download ready made templates and web assets, and then easily customize and visualize them to your own liking.

    The claims are not currently valid under 102/103 and (probably) 101. “Judicial economy” does not mean always twisting around every doctrine possible to achieve a particular agenda. And maybe this is more of a slap to the PTAB to stop overreaching themselves, as the PTAB has no authority to deviate from the CAFC’s precedent and expand doctrines.

    1. 9.1

      Patent Bob, I think the principle is accurate, though, that the reason the printed matter is ineligible is because of its meaning.

      Now take computer programmed to output a number on a screen next to a dollar sign symbol, or label such as “Risk.” The only thing new is the particular number and what it represents: the improved price or the risk level.

      Meaning?

      Does the printed matter doctrine apply?

      1. 9.1.1

        Ned,

        I do have to wonder if you even understand EITHER the printed matter doctrine or the (more to the point) exceptions to the printed matter doctrine.

        I have provided you (directly) a very easy and clear way to understand the situation and invited you to join in a dialogue to make sure that you understand this critical area of patent law (that you seemingly cannot stop yourself from expounding upon).

        You never seem able to join that dialogue.

        Why is that?

        (and yes, I already do know the answer to that question)

      2. 9.1.2

        Of course the absurdity in Ned’s post is that he is paid for the content of his writing because it is functionally related to information processing machines — us.

        So, Ned, why not just type random letters rather than what you do? Why are some people paid so much for putting down the right letters?

      3. 9.1.4

        You can’t patent the number on the screen Ned.

        You can patent the process used to determine the number. You shouldn’t even have to mention the displaying of the number in a claim, as that is insignificant post solution activity.

        It is only to satisfy those who insist that the process isn’t useful if the number isn’t displayed and apply a twisted interpretation of 35 USC 101 that has us even mentioning displaying or printing such numbers in a claim.

        1. 9.1.4.1

          Les, no doubt that if the process that produces the number involves some process or machine that is otherwise patentable, that of course you may be correct. But if that process only involves calculations that may be new in terms of their algorithm, that I daresay that there is nothing new in the claim.

          1. 9.1.4.1.1

            Huh?

            Ned, how are these two sentences from your two sentence post not conflicting?

            1) “no doubt that if the process that produces the number involves some process … that is otherwise patentable, that of course you may be correct.

            2) “But if that process only involves calculations that may be new in terms of their algorithm, that I daresay that there is nothing new in the claim.”

            1. 9.1.4.1.1.1

              Les, “Otherwise patentable” is the key.

              Even the Supreme Court recognized that in Mayo where it said that if the of the blood sample process had been less conventional that the claim as a whole might have been patentable.

              Imagining a seismic mapping method that produces a map which is really only a set of numbers. If the source of the data is claimed, e.g., setting off a blast, measuring seismic wave, and the process by which the data is transformed is new or improved, then I think the process is a whole might be patentable even though the output is only a number and this is because the input is specific so that the data is not simply abstract but represents real physical signals.

              Flook’s claims were not held invalid only because they produced a number, but because the claimed inputs were nonspecific so that the claim as a whole was not tied to a specific application.

    2. 9.2

      patentleather This is not an important case in that the printed matter doctrine does not arise very often.

      It’s “important” because the so-called “printed matter doctrine” is rooted in subject matter eligibility doctrine. It always was.

      The claims would likely be currently held invalid under 101 anyway

      Not only “currently”. Always.

      one purpose of this invention

      There’s no “invention” here. You seem to recognize that when it suits you but you forget it when it doesn’t.

      DiStefano’s web assets have no functional relationship to the claimed method. ” Not true– one purpose of this invention is to download ready made templates and web assets, and then easily customize and visualize them to your own liking.

      With that reasoning you just drove a truck through the entire “doctrine”. Granted, you’re not the first one to do that and the doctrine is already full of gaping holes so you shouldn’t feel bad about it. But in a method for displaying information (which this certainly is) the description of the content of the information or some abstract aspect of the information (who owns or who created it) can never provide the qualifying “functional relationship” that would except the information from the “doctrine.” But that’s exactly what was allowed to take place here. If you don’t understand why this is the case, just say so. I’m happy to provide zillions of examples for you.

      Never ever forget: understanding the difference between the claim and the prior art is critical to getting the subject matter eligibility analysis correct. It’s always been the case and it always will be.

      1. 9.2.1

        What does “drive a truck through” even mean?

        I “get” that you want it to mean that your mantra is “right,” and that you do not have to bother with any of the counter points ever presented to you, but you really should recognize your own volunteered admissions against interests and be inte11ectually honest about what those admissions do to your mantra.

        (hint: your own admissions “drive a truck through” your desired end game)

        1. 9.2.1.1

          What does “drive a truck through” even mean?

          It means that the exception to the doctrine eats up the doctrine. That’s what happens if you allow the “communicative purpose” of the claim to satisfy the “functional relationship” test, as patent leather argued.

      2. 9.2.2

        There’s no “invention” here. You seem to recognize that when it suits you but you forget it when it doesn’t.

        Malcolm, my dear friend, in a post-1952 world, please tell me – under ANY combination or singly, which branch of the government has the proper authority to set the meaning of the word “invention”…?

        I will give you a hint: there is only one branch with that authority.

        And yes, that authority has indeed indicated that software is eligible (just review the statutory law for instances of that word – outside of 101 – and then use some common sense and basic statutory construction (a tall order for you, I do realize).

        But like my conversations with Ned on business methods, it is clear that one would not even need (limited) defenses for things that are not eligible in the first instance (ergo, eligibility on a higher level must logically be present).

  15. 8

    Let’s NOT pretend that this doctrine has been extensively discussed here on this blog, being covered several times previously, here for example at link to patentlyo.com is one version

    The simple set theory I have explicated can be restated here:

    Let’s take this in baby steps then:

    The statutory basis is the starting point – and that point is very wide. In other words a pure statutory reading is inclusive of even the possibility of printed matter.

    Then – through the judicially created doctrine – certain printed matter was deemed to not have patentable weight. The judicial doctrine serves to limit the broad statute. The judicial doctrine comes AFTER the statutory meaning, and by judicial edict is meant to limit the plain broad words of the statute (whether this action goes too far or not is NOT an immediate cause of concern – let’s not be tripped up here).

    Then – the exception to the judicially created doctrine comes into play when the realization that some printed matter does not raise the issues that other printed matter raised (that “other printed matter” that DID raise some concern and that created the judicial doctrine that limits the broad statutory meaning just was not applicable to ALL printed matter). A return to the original broad statutory inclusion is then made for the types of written matter that did not fall into the concern of the judicial doctrine.

    Or to put it another way: Think simple set theory.

    ALL printed matter is Set A.

    SOME printed matter that raised a judicial concern is Set B.

    OTHER printed matter that does not raise that same judicial concern is Set C.

    Software is within Set C and NOT in Set B.

    The judicial doctrine of printed matter is concerned SOLELY with Set B.

    When one speaks in broad gen eral terms of Set A, one must be aware of the fact that Set A contains both of the mutually exclusive sets of Set B and Set C, and that for patent purposes, Set C is entirely permitted. Set C includes software (as well as measuring cup and magic hat bands).

    [does anyone NOT remember the cases with the measuring cup and the magic hat band…? – I’ve held people’s hands on those cases several times now]

        1. 8.1.1.1

          It’s never ceased to amuse that the house of cards that the CAFC built to protect functionally-claimed computer-implemented logic is erected on a foundation consisting of possibly the least entertaining “game” ever created (“it’s numbers … printed on a strip!”) and a measuring cup.

          It’d be difficult to dream up a stranger scenario, but there we are.

          1. 8.1.1.1.1

            The cases here are NOT items that “the CAFC built to protect functionally-claimed computer-implemented logic

            Explicitly, those two cases have nothing to do with software or “computer-implemented.”

            Not only has your “mantra” worn thin, it has worn through.

            Time for you to get a new one.

      1. 8.2.1

        Assuming the conclusion?

        Not at all.

        What I am doing though is understanding the basic aspect of what software is – and not confusing software with the thought of software.

  16. 7

    It does have to be a 101 issue, there’s simply no way around it. You can’t create a situation where can get an allowance over an anticipating reference for something that has neither a functional nor structural difference to a system. Qualities which make no difference are no difference, and 103 is not set up to handle irrelevant things anyway.

  17. 6

    I know everyone loves the printed matter / 101 cases connection- but the other case Ned posted on the previous post has Newman fired up:

    MERCK & CIE v. GNOSIS S.P.A., Link
    Her point: PTAB in IPR or CBM is adjudicatory; we must apply the correct standard (preponderance of evidence) – not substantial evidence standard (that PTAB usually gets when in ex parte setting) – because this agency action is trial-like and final. The important thing is that the proceeding is final (i.e., has preclusive effect) – therefore, a more demanding review is required.

    And, this case shows why – the result would change if the correct standard applied (if you believe Newman’s reading of the evidence.

    USPTO / federal circuit APA issues are wacky.

  18. 5

    Page 4 of the CAFC opinion:

    In performing the printed matter analysis, the Board concluded that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method,

    That conclusion is correct. It’s one thing for the CAFC to engage in legal nitpickery for the sake of clarification. But here they engaged in nitpickery for the sake of increasing the amount of pollution in the case law. It’s the opposite of “judicial economy.”

    Self-serving silliness like this is a sure sign that reason has left the building:

    Although the selected web assets can and likely do communicate some information

    The “web assets” exist to be “displayed” as information. That’s the whole purpose.

    the content of the information is not claimed

    Say what? Of course “the content” is claimed. The element in question covers all content except content that is authored by “the user.”

    This is just a classic instance of a tr0ll applicant playing word games to hide the ball. Federal appelate judges can’t see through the nonsense? Because “computer”? It’s almost 2016. Maybe it’s time to grow up and talk about the elephant in the room for a change.

    1. 5.1

      “the content of the information is not claimed

      Say what? Of course “the content” is claimed. The element in question covers all content except content that is authored by “the user.””

      No, what is claimed is selecting a first element from a database. The database is a type that includes web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user.

      1. 5.1.1

        web assets authored

        aka “authored web assets.”

        aka “authored content”

        aka “content”

        Thanks for playing.

        1. 5.1.1.1

          Manufacture (from the full definition by Meriam Webster):

          1 : something made from raw materials by hand or by machinery

          Let’s emphasize that: By Hand.

          You move too quickly to dismiss “authored” because you merely ASSume that such cannot be within the useful arts. You entirely neglect Set C matter, and make the wrong jump to thinking that all printed matter somehow must be Set B printed matter.

          Worse yet, you have been appraised of this error, and yet (gleefully) jump to making the same mistake again.

          Thanks for playing indeed.

          1. 5.1.1.1.1

            “anon” thinking that all printed matter somehow must be Set B printed matter

            That’s not what I was thinking at all. Nice try, though!

            In fact, I wrote down exactly what I was thinking. Really hard to believe, I know.

            Oh, by the way: web assets … includ[e] text … which can be displayed on a website

            Guess where I found that.

          2. 5.1.1.1.2

            Anon,

            I do so hope writ is granted for Allvoice v. Microsoft.

            As a reminder: software absent a physical medium is not a “manufacture”.

            1. 5.1.1.1.2.1

              There is no such thing as “software absent a physical medium

              You do realize that software earns copyright, correct?

              Can you have copyright absent a physical medium?

              (hint: no)

              You continue to think that the mere thought of software is software.
              It is not.

              You continue to F A I L to realize that the Allvoice does not hold what you think it holds, and that case is limited.

              1. 5.1.1.1.2.1.1

                You could not be more wrong, Anon. Software is authored. Can you have a story “absent a physical medium”? Of course you can.

                The Allvoice decision tossed their case on the finding that their claims were for software absent a physical medium. They explicitly rejected Allvoice‘s position (mirrored by your own) that software necessarily implies a storage medium.

                1. Actually Dobu, it is you (as typical) that could not be more wrong.

                  Let’s start with the obvious: software is NOT a story.

                  SO your point about “authoring” is meaningless. As I have already noted, the definition of manufacture includes “by hand.” Also, there is he not-so-little thing about Useful Arts and utility, and the fact that software is defined as a machine component. AS I have posted: show me a person who does not think software is a machine component and I will show you a person who does not know what software is.

                  Second, read what I actually wrote. See the part about copyright? Once again, you confuse yourself as to the mere thought of software (your software in the mind without physical medium) and the cold hard reality that until you have it DOWN, you just do not have software.

                  As I have also asked of you – let me know when you achieve that copyright for that “software in your mind.” Funny, you never seem to want to do that.

                  Your reliance on Allvoice continues to be a detriment to your understanding of the basics.

                2. Anon,

                  Software and text are protected by the same copyright laws. Both forms of expression must be fixed in a tangible medium to enjoy copyright protection. So, do copyright laws prove software (and stories) don’t exist before being recorded, or not? You can’t have it both ways.

                  Again with the “thought of software”. And a math book is not the same as the thought of math. So math doesn’t exist, either, until/unless it’s written down?

                  “. . . instructions, data, or information alone, absent a tangible medium, is not a manufacture.” [emphasis added] Allvoice

                3. Dobu,

                  You continue to showcase your intellectual property law ig norance.

                  It is aspects of software and writing that are protected by copyright. The plain fact that “in tangible media” is required is the key difference for you to understand what you refuse to open your eyes to: in the use of terms of art, there is a difference – a very real and meaningful difference – between the thought of software and software.

                  Clearly, your attempt with “stories” F A I L S to appreciate what is protectable from what is not protectable. You attempt to exchange “math” for “story” does not escape your selfsame error in this regard.

                  A different ASPECT – protected suitably under a different IP law – is simply available for software. Once you grasp the difference between software and the mere thought of software, then you can also appreciate the plain fact that software has multiple aspects that set it apart from BOTH math and stories.

                  Critically, this setting apart comes from the fact that software is manufactured (and yes, authoring IS a form of manufacture – another critical fact that is and which you simply must accept) to have a utilitarian purpose. This places THAT aspect squarely into the province of exactly why we have a patent system.

                  This is basic patent law understanding, and any inte11ectually honest patent law discussion must begin with acceptance that patent laws were designed to protect man’s utilitarian efforts. The mere fact this this type of manufacture has more than one aspect, that has a close affinity with logic and math simply does NOT change the fact (yes, fact – eppur si mouve) that software is not logic, that software is not math, that software is not “story.”

                  Let me know when you want to recognize the landscape within which you are trying to battle.

                4. Let me add that there is ZERO chance of what you want to call “software” but is still really only the thought of software – the “software in the mind” concept – of THAT item infringing ANY patent claim.

                  ZERO.

                  It is simply understood in patent law that a Person Having Ordinary Skill In The Art does not – and cannot – infringe with ANYTHING that is just “in the mind.”

                  If this distinction were to be HONESTLY appreciated, the long more than fifty year “war against patenting software” would be over.

                  I invite (again) Prof. Crouch to post a story by himself or another professor on the true meaning of the mental steps doctrine.

                  It is this selfsame doctrine – twisted through anthropomorphication and attempted to be applied to those things OUTSIDE of the mind – that is the MAIN philosophical thrust of the anti-software patent movement.

                  Shine a bright light on this and you will see just how much dissembling is going on by those who do not want to permit protection to the single largest type (and the type MOST accessible to those without big bucks) of innovation in the world today.

                5. Anon,

                  Way to move the goalposts. Nothing copyrightable exists until it’s fixed? Or no?

                  Playing along with your diversion: Utility is not the only measure of patent eligibility. E.g., the development of trigonometry was “a utilitarian effort”.

                  An example of anthropomorphication: belief that a computer magically “knows” the difference between a “5” stored as a shadow account balance and a “5” stored as a bingo card number.

                6. Absolutely NO moving of the goalposts on my end, Dobu.

                  You, on the other hand, continue to run full speed into walls as you refuse to unclench your eyes.

                  The proper view of 101 has but TWO requirements:

                  – of the right type of utility
                  – of the (broadly defined) statutory categories.

                  That’s it – all else is muckery and NON-legislative tinkering.

                  Shall I remind you yet again that ONLY one branch of the government was authorized to write patent law?

              1. 5.1.1.1.2.2.2

                Thanks, MM. I’m disappointed SCOTUS chose not to weigh in on this one. It could have helped clear up a lot of disagreement. (For those who aren’t in steadfast denial, anyway.)

        2. 5.1.1.2

          web assets authored

          aka “authored web assets.”

          aka “authored content”

          aka “content”

          Thanks for playing.”

          Sigh….What is claimed is selecting a first element from a database. Not just any database, a database of the type that stores web assets…those assets can be provided by the user or a third party…. the source of the asset is not important, its storage in the database is the claimed aspect.

      2. 5.1.2

        “The database is a type that includes web assets authored by third party authors and web assets provided to the user interface from outside the user interface by the user.”

        Which makes it a TOTALLY different database amirite?

        1. 5.1.2.1

          Judge Prost gets a “new database” everytime she gets a new email.

          This is the magical shiny world the CAFC has built for everyone.

          1. 5.1.2.1.1

            “Judge Prost gets a “new database” everytime she gets a new email.”

            Nah bro, the email has to come from a new third party from which she’s never had an email come from before (lol I’m jk but that would be a better and funnier system).

  19. 4

    Russell did nothing new, but simply followed a number of other cases which it cited:

    “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,” as provided in section 4886 of the Revised Statutes, 35 USCA § 31. Guthrie v. Curlett et al. (C. C. A.) 10 F.(2d) 725; Flint et al. v. Leonard & Co. (C. C. A.) 27 F.(2d) 215; In re Dixon, 44 F.(2d) 881, 18 C. C. P. A. ___, and cases therein cited.”

    Flint, 7th Circuit, cited Guthrie (2nd Cir.), Guthrie cited Hotel Security (2nd Cir.). Dixon, a CCPA case, cited Hotel Security:
    “The appellant has prepared a form of a promissory judgment note with attorney’s fee clause, and a declaration of lien written therein, and seeks to patent it under application, serial No. 123,682, filed July 20, 1926. Both the Examiner and the Board of Appeals rejected the application on the ground that the alleged invention did not constitute a new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, as required by section 4886, Rev. St. (35 USCA § 31). We are in entire accord with the decisions of the Patent Office tribunals. The law is well settled by Hotel Security, etc., v. Lorraine Co (C. C. A.) 160 F. 467, 24 L. R. A. (N. S.) 665;”

    And, of course, Rich overturned Hotel Security in State Street Bank.

    Why in the world the CCPA under Rich and the present Federal Circuit cannot think clearly is a wonder.

    1. 4.1

      As MM suggests, the Federal Circuit refuses to follow the law anywhere near 101 because they continue to pursue agendas.

    2. 4.2

      Your “version” remains off Ned because you refuse to recognize simple set theory and the difference that exists between Set B printed matter and Set C printed matter.

      One day, you may awake to treat this reality with some level of inte11ectual honesty.

  20. 3

    Sadly, this ridiculous CAFC opinion refers only obliquely to the subject matter eligibility origins of “the printed matter doctrine” (without even mentioning 101 or the phrase “subject matter eligibility”!! — that takes extra effort).

    The CAFC also continues its proud tradition of pretending that the “functional relationship” “prong” of its “doctrine” has any discernable meaning other than “we like this claim.” Every time information is communicated, that information is peforming some kind of function.

    All in all, I’d say this case is a prime candidate for the worst ever “printed matter doctrine” case, particularly given its timing. The fact that the CAFC can’t expessly recognize the doctrine as a flavor of subject matter eligibility in 2015 is p a thetic.

    The opinion states that “The common thread amongst all of these cases is that printed matter must be matter claimed for what it communicates.” That misses the point. All one needs to do is go to In re Ngai’s “recreational math device” to see that. What were the digits on Ngai’s “entertaining” moebius band “communicating”? What if instead of digits it was a belt “manufacture” with alternating pictures of baby snakes and koalas printed on it? That’s not anticipated anymore?

    At the very least, the CAFC should have done its readers a minimum kindness and state expressly that “printed matter” need not be “printed”. Why gloss over that fact? After all, a web site display isn’t “printing”.

    Here’s the junk d.o.a. claim at issue here (this one isn’t going anywhere, by the way — another fact that the CAFC should simply recognize rather than beating around the bush). The subject matter problem is real and it doesn’t go away just because the CAFC decides to limit a “doctrine” that is plainly a form of eligibility rejection.

    A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, comprising:

    selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;

    displaying the first element in the second display region;

    interactively displaying the electronic document in the first display region;

    modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display
    region; and

    displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.

    Note that the bolded element is the only element missing from the prior art. The element is an abstraction, i.e., it’s a description of communicated information by the origin of that information, as opposed to its content. The important and key point is that it’s a non-structural distinction. For the purpose of performing a 101 analysis (and again: that’s what the printed matter doctrine is) there’s no principled distinction that can be drawn between an element that describes information according to its content and an element that does even less than that (e.g., the element in this case). That’s because abstract descriptions of the ownership or authorship of information “do not constitute any new and useful art,machine, manufacture, or composition of matter, or any new and useful improvements thereof.” (In re Russell, 48 F.2d 668, 669 (CCPA 1931) — from the same case that the CAFC teaches is the “modern” statement of the doctrine).

    All this, of course, is setting aside the fact that the “web asset” in question — regardless of its origin — is undoubtedly “printed matter” being claimed “for what it communicates” (“what it communicates” = anything).

    Prost, Taranto and Hughes should be ashamed of themselves. They’re just wasting the PTO’s time and in the process they’re wasting everyone else’s time. I don’t suppose it’s likely that the PTO will ask for a rehearing en banc but it certainly should. Everyone would be better off (except maybe for this junk applicant).

    1. 3.1

      There’s another way to appreciate the absurdity of the CAFC’s “reasoning” here (actually many other ways but this one especially).

      According to the CAFC’s “logic”, the claim at issue in In re McKee:

      A principal cut of meat bearing a series of identifying marks in relatively close spaced relation and having their longitudinal axes arranged substantially parallel to the planes….

      is anticipated by the prior art after application of “the printed matter doctrine”, but a claim such as the following would not, apparently, be anticipated:

      A principal cut of meat bearing a series of identifying marks in relatively close spaced relation and having their longitudinal axes arranged substantially parallel to the planes wherein said identifying marks were not made by the meat buyer.

      But wait! It gets better. According to the CAFC’s “logic”, this more limited claim would be anticipated after application of “the doctrine”:

      A principal cut of meat bearing a series of identifying marks in relatively close spaced relation and having their longitudinal axes arranged substantially parallel to the planes wherein said identifying marks were made by a man or machine bearing a label stating “I am not the meat buyer”.

      What’s the principled distinction between these claims that justifies these different results? The CAFC doesn’t say and, apparently, can’t even be bothered to try. Maybe the next time this case comes up to them on appeal they’ll realize they need to do a bit more than regurgitate 100 years of nonsense.

        1. 3.1.1.2

          I have no idea how you can say this David. The problem with MM’s example it has to do with people and the printed matter exception. The printed matter exception was made to deal with a small class of inventions that were made by people and used by people. Here, in this case, we have a machine that is processing information. The entire printed matter exception case law is inapplicable to machines.

          1. 3.1.1.2.1

            I’m agreeing with MM only on his point in this single email, that the overall reasoning in these printed matter cases is absurd, and that the reasoning of DiStefano raises the absurdity a notch further by focusing on factors that lead to different results for insubtantially different facts.

            I agree with you, Night Writer, that the absurdity will continue to metastasize unless the court picks up on Lowry to closely cabin the rule to only printed matter.

            The McKee case is 64 F2d 379 (CCPA 1933).

  21. 2

    I was just thinking about it and perhaps they could take official notice of third party authors being old and well known in the art as of 1990. Then come up with some motivation to put it in the primary.

    I mean, the “missing limitation” aka “third party authors”, such as it is, seems sort of commonplace.

    1. 2.1

      the “missing limitation” aka “third party authors”, such as it is, seems sort of commonplace.

      So this tr0ll can get a patent if he limits the origin to more specific and “less commonplace” authors? Does he get to present evidence of “commercial success” based on those choices?

      I wonder what the Supreme Court would say. Just kidding. I’m not wondering at all. What I’m really wondering is whether the CAFC or the PTO (or both) are ineptly trying to execute some larger “strategy” in anticipation of the hammer that is about to come down.

    2. 2.2

      6 – I bet that you could cobble together an obviousness rejection that the Federal Circuit would affirm and that wouldn’t need to be based upon this printed matter doctrine.

      1. 2.2.1

        DC: I bet that you could cobble together an obviousness rejection that the Federal Circuit would affirm and that wouldn’t need to be based upon this printed matter doctrine.

        Right. And then the PTO can get an earful of “secondary considerations.”

        This is a 101 problem. Allowing applicants to amend the claims to recite some selected subset of “non-obvious” authors (or other “origins”) and then forcing the PTO or would-be infringers to search those limitations is not the answer to the systemic problem. It wasn’t the answer 100 years ago, it wasn’t the answer fifty years ago, and it’s not the answer now.

      2. 2.2.2

        Dennis, if one could distinguish the prior art based on subject matter that was not eligible for patenting, what door would that open?

          1. 2.2.2.1.1

            Absolutely!

            That is why the Hotel Security/Mayo/Alice “methodology” is so important. When a claim mixes the eligible with the ineligible, invention has to be in the eligible.

            One can dispose of the case either by saying the claim is directed to the ineligible, the eligible being convention, or that the eligible subject matter is old/obvious, no weight is to be given to the ineligible.

            Same result.

            1. 2.2.2.1.1.2

              Ned: One can dispose of the case either by saying the claim is directed to the ineligible, the eligible being convention, or that the eligible subject matter is old/obvious, no weight is to be given to the ineligible.

              Same result.

              Not only the same result, but the same reasoning. The only difference is the terms used.

          2. 2.2.2.1.2

            Dennis —

            It’s both. There are two separate rules at work here. Let me elaborate the comment I made earlier at 11.2.

            If an invention is entirely printed matter, beginning to end, then the “printed matter” rule that’s applicable to § 101 inquiries, then the claim is simply invalid, with no further analysis. Typically, such an “invention” would be more within the realm of copyright.

            If an individual claim limitation is “printed matter” within the rule applicable to § 102/§ 103 inquiries, then those limitations get blue-penciled out for purposes of comparison to the prior art—the resultant rump claim still has to go through a further step of comparison against the prior art. The § 102/§ 103 “printed matter” rule typically applies to instruction sheets in a kit, where the invention is a new method of use of something—the new instruction sheet doesn’t count to give you an apparatus claim. (This is a dumb rule too—inventors need apparatus claims for various infringement theories, ITC enforcement, and the like. Induced/contributory infringement of the new-method-of-use claim just doesn’t cut it. As Judge Rader pointed out in Lowry, the analytical underpinning for the rule is rather dubious.)

            The two definitions of “printed matter” are quite different.

            anon at 2.2.2.1.1.1, MM at 11, Dennis at 2.2.2.1 – does this clear up your misunderstanding?

            David

  22. 1

    Several comments on this case were already made in the immediately preceding blog. Including comments that the printed matter doctrine needs to be more fully reconciled with other, Sup. Ct., 101 exceptions. That should include clear judicial answers provided as to Beauregard claims in particular.

    1. 1.1

      I agree with your last two sentences and your last sentence in particular.

      I see that after you posted, someone took over the rest of this page and has already posted multiple times with many words each time. Ah, the life of a professional blogger.

    2. 1.2

      Yes please. I should like to see the courts remind the PTO that 101 limits eligibility to the useful arts, and explain to the PTO what “useful arts” connote. Why? Because the EPC has “the presentation of information” as one of its criteria for refusing a patent, and I suppose that was inspired by the printed matter doctrine. It doesn’t stop the EPO routinely issuing Beauregard-type claims though. I should like to see the US jurisdiction figure out which Beauregard claims are fit to issue. It’s about time.

      1. 1.2.1

        Why, MAX, didn’t you know that when a book encodes (like that fancy word?) a recipe that may be used by a skilled chef to produced a wonderful meal that book itself might be patented as a carrier of the method to the chef? It is the functionality of the recipe when actually performed that provided the exception to the printed matter doctrine.

        Blueprints may now be patented as well for the same reason.

        Instruction videos? Of course, patentable subject matter.

        And, if you do not believe me, wait 5 minutes for the usual suspect to declare the above to be the absolute truth.

        1. 1.2.1.1

          Clearly Ned, you have yet to actually engage the aspect of which I speak and instead wish to try to obfuscate.

          Once again you insist on not understanding that there are real differences between Set B printed matter and Set C printed matter.

          Instead of the smarmy side comments, why don’t you address this head on and directly?

          Yeah, we both know why you would rather run away.

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