New Guidance to Examiners: Follow Enfish and TLI.

by Dennis Crouch

The Enfish case is important in the way that it gives teeth to step-one of the Alice/Mayo test for subject matter eligibility.  Notably, the unanimous panel of Judges Moore, Taranto, and Hughes (author) held that neither the software-implemented data structure nor its method of creation were “directed to a patent-ineligible abstract idea” and thus did not pass Step-1 of Alice/Mayo.  Prior courts usage of the “gist” analysis for Step-1 left many of us with the feeling that almost all inventions could be boiled-down to an ineligible concept.  Enfish rejects that conclusion and instead held that that Step-1 is designed as a meaningful test.

With quick-response, the USPTO has issued a set of examiner guidance – asking examiners to immediately begin implementing the Federal Circuit’s re-interpretation of Alice/Mayo.  The guidance also highlights the contrasting May 17 decision in TLI. The challenged claims in TLI involved recording, administration and archiving of digital images, and the appellate panel (again with Hughes as author) held that the claims were directed to the abstract idea of classifying and storing digital images in an organized manner.

The guidance is copied in full below, but I thought I would begin with the conclusion:

In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.

I would suggest that the PTO would have more accurately followed the Enfish guidance by affirmatively stating in its summary that an “improvement in computer-related technology” can include a software implementation as well as a new data structure.

In any event, these cases are tough ones for the Federal Circuit because they require line-drawing that is inherently policy based and that lack full guidance from the USPTO.  However, it appears that the court is endeavoring to accomplish its task of providing improved guidance to the USPTO while simultaneously fully following binding Supreme Court precedent.

The holding in Enfish also offers additional support to the PTO’s initially questionable call of suggesting that examiners limit their abstract idea constructs to only concepts “similar to concepts previously found abstract by the courts.”

The Guidance in full:

On May 12, 2016, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Enfish, LLC v. Microsoft Corp. held that the claimed database software designed as a “self-referential” table is patent eligible under 35 U.S.C. § 101 because it is not directed to an abstract idea. While the decision does not change the subject matter eligibility framework, it provides additional information and clarification on the inquiry for identifying abstract ideas (Step 2A of the subject matter eligibility examination guidelines).

In reaching its conclusion, the Federal Circuit highlighted several important points regarding the subject matter eligibility analysis, in particular regarding whether a claim is directed to an abstract idea (Step 2A). First, the court noted that when determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision. Second, the court emphasized that the “directed to” inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept. Third, the Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention. Fourth, the court stated that an invention’s ability to run on a general purpose computer does not automatically doom the claim. The subject matter eligibility examination instructions, as set out in the 2014 Interim Eligibility Guidance, July 2015 Update, and May 4, 2016 memorandum to examiners, are consistent with these points.

The Federal Circuit in Enfish stated that certain claims directed to improvements in computerrelated technology, including claims directed to software, are not necessarily abstract (Step 2A). The court specifically noted that some improvements in computer-related technology, such as chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract. Explaining that software can make non-abstract improvements to computer technology just as hardware can, the court noted that claims directed to software, as opposed to hardware, also are not inherently abstract. Therefore, an examiner may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B. In particular, a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts.

The claims of the patents at issue in this case describe the steps of configuring a computer memory in accordance with a self-referential table, in both method claims and system claims that invoke 35 U.S.C. § 112(t). The court asked whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database), or instead on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. To make the determination of whether these claims are directed to an improvement in existing computer technology, the court looked to the teachings of the specification. Specifically, the court identified the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. It was noted that the improvement does not need to be defined by reference to “physical” components. Instead, the improvement here is defined by logical structures and processes, rather than particular physical features. The Federal Circuit stated that the Enfish claims were not ones in which general-purpose computer components are added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea (under Step 2A).

Closely following Enfish, the Federal Circuit decided TLI Communications LLC v. A. V. Automotive, LLC on May 17, 2016, which provides a contrast between non-abstract claims directed to an improvement to computer functionality and abstract claims that are directed, for example, to generalized steps to be performed on a computer using conventional computer activity. Specifically, the court stated that the TLI claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner (Step 2A). The court then found that the additional elements of performing these functions using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities (Step 2B).

In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.

We will continue to cover these issues in some depth over the next few weeks.

184 thoughts on “New Guidance to Examiners: Follow Enfish and TLI.

  1. 12

    When the “abstract idea” is clearly provably obvious, that should end the matter. Take it from one who patented a data base structure in the 80’s. The patent system is disfunctional.

    1. 12.1

      clearly provably obvious

      For the second time on this thread, that’s 103 – not 101.

      that should end the matter

      …the “matter” will not end unless the proper means to that end are engaged.

      Employing 101 for a proxy for any other section of law debases the law. Those who care about the law should care about such things and not embrace the “whatever misuse of law.

      1. 12.1.1

        Obviously, obvious is the rubber nose of patent law. But now, 101 which is a very broad gate is now used to reject anything that is a system including a general purpose computer.

        Perhaps, I should have used a new term, “patently known.” Patents were once used as the best database to gauge the worthiness of an invention. Now? “gist,” “inventive concept,” in the face of “motivation,” “suggestion,” “common sense,” “obvious to try?” in a reconstructed hindsight using all the published useful art in the world?

        Tough road.

        1. 12.1.1.1

          Into the weeds is indeed akin to a “tough road.”

          But “tough road” (even one driven to by a wayward Supreme Court) does not mean “right path,” or that a proper course correction is not in order.

          Recall that when Alice first came out that I mentioned that stomping on the gas pedal of that decision may be the fastest way to make a long overdue and necessary change. ALL the accelerating mess that you see about you can be seen to be a part of that “stomping on the gas pedal.”

          1. 12.1.1.1.1

            “anon” Recall that when Alice first came out that I mentioned that stomping on the gas pedal of that decision may be the fastest way to make a long overdue and necessary change.

            Then computer implemented jun will be eligible forevah! Because 1952.

            The patent maximalists never cease to amuse.

            1. 12.1.1.1.1.1

              Just because you do not like the law as it is written by Congress – your “Because 1952” reference – does not mean that you do not have to address that law in an inte11ectually honest manner to deal with your rants of “computer implemented” whatever.

              The mindless “maximalist” CR@P is, well, mindless.

              Try something different.

    2. 12.2

      Richard, I am uneasy about invoking “obvious” in the context of 101, but for another reason.

      I think it is OK (inherent and necessary) to debate (if and when you get to 103) whether something in a field of technology would have been “obvious” as of a specific date. At the EPO, that process runs economically, predictably and fairly. It is when one strays away from technology that the obviousness issue becomes hopelessly fuzzy.

      Take design patents. Who is to say whether on any given date a design was or was not obvious? Now I know you have to do that in the booming recent field of design patent litigation in the USA, but can you name me another jurisdiction in the world that has taken that path when it comes to assessing the validity of Design Registration IPR? That’s because the notion of “obvious” does not “fit” with the notion of registering designs with a new character and identity. What are the leading cases that help us to decide whether a new design is or is not “obvious”? Are they models of clarity?

      Take abstract ideas. Assume you have paintakingly drafted a super Goldilocks (not too wide not too narrow) claim with exactly the scope needed to define your cherished “Abstract Idea” who is to say whether on any given date that particular abstract idea, as claimed, was “obvious”? A patent attorney perhaps? An academic? A judge?

      1. 12.2.1

        As bizarre as MaxDrei is (take an abstract idea…?), he does raise an interesting point vis a vis design patents – and while (in reality) design patents should be written separately from utility patents, US law does try to shoe-horn design patents into utility law concepts.

        Are design patents then fundamentally problematic under a 101 analysis? Is not the very basis of a design “abstract” (admittedly reading that undefined term here to be a bit circular in “not having utility in a real world application” sense)…?

        Does either (or both) Congress and the Court views on what “101 means” unravel with the attempt to shoe-horn design patent law into the utility patent law regime?

    3. 12.3

      The patent system is disfunctional thanks to SCOTUS and the Fed Cir issuing incoherent, illogical and contradictory decisions. They are trying to mend a dam that burst with wood boards – oh we said that… oh let’s try to fix it by saying this… oh wait… that did not work… let’s try this…. and around and around it goes, where it stops, no one knows. The latest nonsense is to look at what we found patent ineligible and if it passes that, then go to step 2A and then X.1, subparagraph 1.0001.11 and if that is not enough, ohhh, try step 2B, with this new test, but wait, that “looks” like it has been done before, and presto, magic… what will they dream up next? I thought judges were more attuned to issuing decisions where certain words mattered, but as the last 2 years showed, they have lost their way issuing gibberish for federal decisions. Glad no one will be reading my rant because it is posted 3 days too late to matter any way.

      1. 12.3.1

        Now me, I think it is beyond the competence of any PTO or Court to interpret reasonably the 150 year old corpus of the law of patents in the USA. Europe made a fresh start in 1978 with the 1973-text of the European Patent Convention, and since then its basic scheme of substantive law has been adopted all round the world (except in the USA). Why? Because the corpus of EPC caselaw that continues to develop constantly the basic rigor and simplicity of what the EPC provides on novelty, obviousness, utility, written description and enablement.

        That should come as no surprise to anybody. The EPC is a fusion of the patent law of England and Germany, informed (where relevant) by the pre-1973 caselaw of the USA. While the patent law of the USA has its roots in England, that of Japan, China and Korea always was more or less a straight copy of pre-EPC German law. So with the EPC the world got a harmonised patent law for all. Such a shame the USA couldn’t bring itself to adopt the same model when it switched to First to File. If it had done, SCOTUS and the Federal Circuit would have been able once again to lead the development of the patent law of the whole world.

        1. 12.3.1.1

          MaxDrei quips: “beyond the competence of any PTO or Court to interpret reasonably the 150 year old corpus of the law of patents in the USA.

          Is that a vote for “Void for Vagueness”…?

          ;-)

        2. 12.3.1.2

          Max, the problem is that the CCPA and the Federal Circuit for a very long time acted as if the case before 1952 were to be ignored.

          1. 12.3.1.2.1

            And Ned – you have the opposite problem – pretending that the Act of 1952 did not happen.

            It did.

      2. 12.3.2

        Let me add one thing. If SCOTUS said to property owners that their deeds were invalid because deeds are an abstract idea (which they are – property is real, deeds are figment of our imagination), and because they failed to follow such and such test in the language of the deed, that all the deeds are now void! Well, that is what has happened here with software patents. SCOTUS et al. voided a significant chunk of software patents because they supposedly did not follow such and such test which occurred post-issuance of the patent. Instead of offering patent owners the right to amend the claims to conform with the new tests (which would have been something new and a challenge for patent attorneys), they just keep voiding software patents by the droves. The patent attorneys should have revolted but sadly, our profession is mostly made up of geeks and nerds and getting them to do anything in concert is like trying to teach tricks to a cat…

        1. 12.3.2.2

          The subject of a deed is real property on which you can trespass. You cannot change the property, the subject of the deed, by re-working the wording of the deed.

          It’s different with a patent. I can’t drive you out in my car so you can walk the bounds of the property which is the subject of the patent.

          If the subject of the patent is a machine or a manner of new manufacture, or a composition, we can look at embodiments of it together. But if it’s nothing more than an abstract idea, we can’t, can we?

  2. 11

    The problem with the judicially-created ban on patenting “abstract ideas” is obvious: it has no limiting principle. There is no standard as to what makes claim A abstract and claim B not abstract, except the Court knows it when they see it.

    The only thing close is “don’t go beyond what courts have decided looks like porn.”

    But I believe the issue was “swallowing”. Patent law, of course, quoting Justice Thomas.

    1. 11.1

      tour, “The problem with the judicially-created ban on patenting “abstract ideas” is obvious: it has no limiting principle.”

      Bingo.

      I think that is why Scalia had such a problem signing on with the Kennedy majority rather than with Stevens. Scalia abhorred vagueness in the law — such as one gets with “totality of circumstances,” which Scalia correctly argued was not law at all, but equity.

      1. 11.1.1

        Steven’s path was even worse, Ned: the direct and overt violation of the separation of powers.

        1. 11.1.1.1

          anon, you keep saying this when it completely obvious to anyone that business methods are nonstatutory.

          1. 11.1.1.1.1

            I keep saying this – and more – but you never seem able to reply to and address the ‘and more.’

            Your “version” of business methods are not statutory has been thoroughly debunked.

            If not statutory, then there would be NO need to have a limited exception or review – all Congress would have need to have done would have been to simply reiterate the line that you are force feeding.

            They did not.

            Why was that?

            1. 11.1.1.1.1.1

              …and once again Ned’s silence screams volumes.

              What is the matter Ned? This counter point just too inconvenient for you?

              You might as well man up and face it – it is not going anywhere and your attempts to ignore it will not make it disappear.

          2. 11.1.1.1.2

            Why is that Ned, because the methods are not “useful”? If they are not useful, then no one will want to use them and any patent causes no harm… So, whats the problem?

            1. 11.1.1.1.2.1

              New and useful methods that relate to machines, manufactures and compositions are statutory and within the useful arts.

              1. 11.1.1.1.2.1.1

                Process is NOT a sub-category of the hard goods categories Ned.

                Your error is reflected in your “MoT is more than a clue” bias.

                Repeating your mistake ad nauseum and ad infinitum won’t make your mistake into a non-mistake.

                (See – again – 35 USC 100(b))

              2. 11.1.1.1.2.1.2

                Yes, yes they are. And so are new and useful methos that do not relate to machines, manufactures and compositions of matter. The phrase “useful arts” has been deleted from 101. Why are you referring to what 101 said 220 years ago?

                Will you be arguing that 102 used to let you swear behind a reference too?

                1. Les, you do not seem to know what you are talking about. Do you want me to give you the language of the various statutes over the years?

                2. Ned – YOU do not know what you are talking about – the
                  word for word” misses the HUGE change that happened. Breaking a single paragraph into complete different sections of law was a HUGE change.

    2. 11.2

      tourbillion,

      That obvious problem is denied by the usual sAmeones on these boards.

      There is a dichotomy here that remains little discussed: The Court has refused to define key terms, but brow beats lower court decisions not in line with the desired philosophical ends, AND wants the lower court to do a “better job” of developing the law that the Court itself refuses to draw the “bright lines” for.

      How do lower courts “develop” anything with the heavy hand ready to smack them down? The natural answer is EXACTLY what we are seeing: NO development, and only retreating to the examples already decided upon (but decided upon with faulty and conflicting ratio decidendi) that offer NO clarity or development, no possible a priori understanding (from the wiki: “A statute is also void for vagueness if the legislature’s delegation of authority to judges and/or administrators is so extensive that it would lead to arbitrary prosecutions” – Vagueness doctrine definition, Cornell University Law School Legal Information Institute 30 December 2012.

      And this is even IF we “permit” the Court the power to mash the wax nose of 101.

      ALL of this on top of the fact that what is going on is NOT interpretation of what necessarily is an open gate (as 101 must be, given the nature of innovation), but is instead the Court attempting to write the (statutory) patent law that it wants in place (hence, they do so only obliquely, as they attempt to avoid what Justice Stevens would have had done overtly in Bilski: a direct overwrite of the words of Congress).

      Among the multiple problems here (there are others, such as violation of the separation of powers) is that such a tactic results in the fore-noted Constitutional problem of Void for Vagueness.

      The imprimatur of the desired Ends is clear (the firehose packs a wallop), and the problem we see unfolding – the contradictions, chaos and confusion [the denial of which still runs rampant from those who want a desired ends no matter what the means] – necessarily lead one back to the driving problem, identified by no less than the same Justice Stevens: the addiction of the Supreme Court to sticking their fingers into the wax nose of 101.

      The Court addicted to its own “power” refuses to recognize that such power was stripped in 1952. Congress had reacted then to the SAME lack of evolution and nose mashing, but the Court blinds itself out of its own addictions (with so-called “friends of the Court” asking the Court to “take another hit”) but the Court cannot – and will not – see its own transgressions (nemo judex in sua causa).

      1. 11.2.1

        In other words, in order to “get their way,” the Court has to make the words of 101 to be “ambiguous” in order to even insert their “interpretation.”

        But bulldozing that path of “ambiguity” as they have done in order to arrive at the desired Ends has left any sense of the “original words” simply TOO ambiguous for mere mortals to know the meaning a priori,

        You have the ENTIRE inferior court system along with the ENTIRE executive branch system NOT KNOWING how to move forward and retreating to ONLY those things that the Supreme Court itself has already delved upon (and even there, the contradictions are not – and cannot – decipherable in any sense of certainty).

        Avoiding certainty (which certainly would have invoked the separation of powers violation) has created its own separation violation.

        The answer of course is what the power-addicted body cannot seem to do: keep its fingers out of the wax nose of 101 and respect the fact that Congress has revoked its former grant of common law ability to define the term “invention.”

        1. 11.2.1.1

          …and let me add add yet another wrinkle tied to the Court’s nose mashing: the very “harm” – the “hook” as it were to its tie to authority is improper.

          This can be seen by carefully reading what they write: they write of things that only MAY come – that are conjectural projections into the future.

          One problem with this is that they have no authority under the present case or controversy limitation on their power to reach into some merely possible future harm.

          Further, their “future reach” is a reach into the unknown – and unknowable. They necessarily must view any present invention as being the final rung on a ladder of innovation – and there is no such ability to know whether any one rung IS a final rung.

          Further yet, they evidence an abject misunderstanding of what “to block” means. As already discussed in a parallel manner, ALL claims “preempt,” as that is what claims do.

          The Court misses though in thinking that this “preempt” – or blocking – is bad and does not promote the progress. They are clearly wrong when one considers the historical context of the exclusive right and how that very exclusivity – or blocking – PROMOTES progress by forcing others to invent around the blocked item.

          The adage “necessity is the mother of invention” appears lost on the Court in their philosophical ends desires. They have the hubris (or the lack of awareness – or both) to think that they know what the top rung is and that ANY claim is a claim to the top rung and that NO further invention is possible if a momentary block is placed in the way of inventors.

          Can you be more (wrongly) paternalistic and condescending at the same time?

          And that “wrongness” is not even touching on the proper authority aspect of current case or controversy.

          IF the Court wants to “depend on” the argument of “blocked progress” – quite apart from the fact of the matter that ALL patents block that which is claimed – then the Court needs to have a present (albeit future) blocked progress. Since this is inherently impossible, the very basis of their claim of harm (to which they may even evoke “authority”) can be seen to be the stuff of smoke and mirrors, bellowing horns and light projections, made by the proverbial Wizard of Oz, standing behind the curtain that Toto has just pulled to the side.

          There are plenty of “Friends of the Court” who bellow “pay no attention to the man behind the curtain,” but as those of us who recognize exactly what our oaths of office contain – and NOT placing the Court above the Constitution – it is our duty to pay attention to the “man behind the curtain.”

          1. 11.2.1.1.1

            I’d agree with that screed. The practical effect is that the main street practitioner for the little guy can no longer play in this sandbox where the bullies are kicking up so much sand we can no longer see a way for monetary gain through patent law. It is now all about trade secrets, copyrights and branding.

            The unintended consequence is that field leaders are reluctant to talk to each other.

      2. 11.2.2

        Tour, I hardly think that Stevens was going to override anything. A method of doing business clearly and unambiguously was and is non statutory. Nobody ever had a problem with this until Rich overruled Hotel Security. Why, because they do not have anything to do with manufactures, machines or compositions.

        1. 11.2.2.1

          Ned – re-read his “concurrence” (really a dissent) in Bilski – the case for which he was slated to write the majority – bit lost that majority position.

          Further, other items that have been brought to your attention (to which you only run away from) include the fact that throughout the history of the patent office there have been grants to business methods (Prof. Crouch even had a guest post detailing these).

          Further, even Prof Crouch (and David Stein) have ripped apart your errant attempts to elevate the Hotel Security case. You blithely do not care about any of that and you engage your internet-style “shout down” by merely repeating your debunked views ad nauesum and ad infinitum.

          Please stop your drive-by monologues.

      3. 11.2.3

        What does it mean for a claim to include an “inventive concept”? This seems to be like the “inventive step” requirement at the EPO. My understanding is that under U.S. Patent law a claim recites an “inventive concept” if the claimed invention is novel and non-obvious. If old or obvious then there is no “inventive concept.”

        I am having trouble seeing why 101 must include a search for an inventive concept. Since a “concept” is an idea aren’t all “inventive concepts” by definition abstract?

  3. 10

    Lemme see if I can summarize the situation:

    Since TLI is specific about the intended use (pictures) its claims are not directed to improving “the computer itself” but rather a method of storing pictures USING a computer.

    Since the claim in Enfish is vague and NOT directed to a particular use but instead preempts ALL uses of the abstract idea of a self referential table, it IS directed to an improvement to the computer itself and is therefore NOT directed to an abstract idea.

    Is that it?

      1. 10.1.1

        Also, even Flook said that preemption was not the problem. It was the fact that math was nonstatutory.

      2. 10.1.2

        Preempts

        Someone should remind Ned that “preempt” is what ALL claims do – that is what they are supposed to do.

        1. 10.1.3.1

          Oh… and by the way…

          Does anyone thing that a self referential table can be used anywhere other than in a computer?

          No?

          Then doesn’t the reasoning in Gottschalk v. Benson apply? Shouldn’t the claim be ineligible for preempting all uses of the self referential table?

          1. 10.1.3.1.1

            Does anyone even know what GvB says?

            “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

            How does implementing the mathematical formula on a computer preempt the mathematical formula (and what does that even mean?)? How would implementing the mathematical formula on a computer “be a patent on the algorithm itself”? Assuming the claims were directed to implementing the mathematical formula on a computer, why could one not perform the algorithm with a pen and paper (and it’s completely possible to perform the “algorithm” — depending on what this is considered to be — using a pen and paper)?

            I’ve read GvB many, many times and each time I come away confused. And this is only one paragraph from that case. The rest of it is also unintelligible.

            And if it can really only be performed by a computer (and not by a person, for instance), for current 101 analysis, isn’t that supposed to be GOOD?

            1. 10.1.3.1.1.1

              The meant that the only practical use of the formula was on a computer and that therefore the patent would preempt all (practical) uses of the formula.

              You’re right, it is a ridiculous ruling. As are Benson/Flook, Bilski, Alice and a few others I’m sure I’ve neglected to mention.

              But if GvB is still good law, then how do we arrive at Enfish? What use, other than in a computer has the claimed self referential table? Certainly the claimed self referential table has no more use outside a computer than the BCD conversion of Benson…. so by the same reasoning, Enfish must be abstract….

            2. 10.1.3.1.1.2

              That part of GvB is simply false – as I explained in a conversation with Ned a very long time ago.

              It was part of the “scrivining” of the Supremes as they attempted to rewrite the words of Congress.

            3. 10.1.3.1.1.3

              PatentBob, I know, I know. G v. B was atrocious in its reasoning. They should have been made aware of Hotel Security. They were not, it appears.

        2. 10.1.3.2

          Les, I think that a novel method of categorizing and storing digital pictures is directed to eligible subject matter. The problem with the claims in TLI were that that novel method was neither disclosed nor claimed at anything except, possibly, at the highest level of abstraction.

          “extracting classification information which characterizes the digital images from the received data, and

          storing the digital images in the server, said step of storing taking into consideration the classification information.

          What information was “classification,” and the how it was extracted, etc., was neither disclosed or claimed. The claim covered extracting any information and storing it in any manner using the extracted information.

          The situation was very much like the Rubber-Tip pencil case where the claim was to a piece of rubber for attachment to the tip of a pencil. Any piece of rubber potentially was an infringement. There was no requirement for actual attachment, or any modification of the piece of rubber in any way to adapt it for the combination. Thus, without delineating any way of adapting the piece of rubber for use in the combination, the patentee had claimed them all.

          1. 10.1.3.2.2

            “What information was “classification,”and the how it was extracted”

            Any information not part of the digital image and that is extracted and used for classification is classification information Ned.

            Is that too broad? Then find something in the prior art that the claim element reads on and reject under 102.

            How is it extracted? I’m sure anyone of even merely ordinary skill in the art would understand that the information is located by addressing the classification field and moving the information in the field to another location.

            1. 10.1.3.2.2.1

              “extracting classification information which characterizes the digital images from the received data…”

              Ned: “What information was “classification,” and the how it was extracted”

              Les: Any information not part of the digital image and that is extracted…

              From this, you mean any information from the received data that is not part of the digital image?

              I never understood it that way. I thought the information had to be extracted from the digital image. I read the claim like this:

              “extracting classification information

              which characterizes the digital images from the received data”

              You read the claim like this

              “extracting classification information from the received data (that is not part of the digital images)

              which characterizes the digital images ”

              Based solely on this dispute between us, I think the claim suffers from terminal ambiguity.

      3. 10.1.4

        Ya mean since it hasn’t been referenced since 2012 the preemption test/issue is no longer of concern? Its ok to preempt a fundamental building block now?

        “Dealertrack, Inc. v. Huber, No. 09-1566 (Fed. Cir. Jan. 20, 2012). It brings back the notion of preemption as a test for patentable subject matter (also known as patent eligibility)”

        link to ipeg.com

    1. 10.2

      Technically Enfish purports to improve the speed of the computer at doing some tasks. And also they have a fancy 112 6th recitation.

      But yes, somewhat you’re on the right track Les.

      They’ll have to walk this back of course as soon as Enfish is reversed. Whoopsie, the PTO doned another illegal action.

      1. 10.2.1

        Technically Enfish purports to improve the speed of the computer at doing some tasks. And also they have a fancy 112 6th recitation.

        Speaking of which, 6, I had one of your fellow Examiners tell me last week that if I changed my claims from reciting actual system components to “means for” performing their functions, it would no longer be abstract… because things like A/D converters could be anything but “means for converting an analog signal to digital” must be interpreted in light of the specification and are therefore narrower.

        1. 10.2.1.1

          Odd, but they may somewhat be correct in terms of that it might get you around a 101 in so far as you leave a broad swath of ways to implement your “inventive abstraction” so to speak unclaimed.

      2. 10.2.2

        For 101, do you think it matters whether what Applicant purports to be an improvement achieved by the claims is in fact an improvement over the art? In Elfish, what if the Applicant’s were wrong about their new database being more efficient and taking less memory would it matter? Thanks

        1. 10.2.2.1

          Mike,

          Improvement can be a simple as an alternative manner.

          Not all improvements are in the classical sense of ALL of better, faster, cheaper, stronger (or any other adjective).

          This is where my analogy of “parking lot” versus “grid of streets” is highly valuable.

          (One should also realize that very often disruptive innovations are “worse” in “standard” terms, but offer much steeper improvement curves.

        2. 10.2.2.2

          “For 101, do you think it matters whether what Applicant purports to be an improvement achieved by the claims is in fact an improvement over the art?”

          You’re using too broad of terms for this question to be meaningful. But, if I take your meaning, generally it is not.

          “In Elfish, what if the Applicant’s were wrong about their new database being more efficient and taking less memory would it matter? ”

          It apparently would have mattered to the panel, but under the actual law most likely not.

  4. 9

    A computer executing software is a control system like any other. Control systems are patent eligible. The rise in popularity of the general-purpose hardware platform with special-purpose software doesn’t change this fact.

    If a person truly and honestly want to reject this “junk”, then this person should be prepared to:

    (1) identify the prior existence of the underlying idea (somehow this is called “abstract”) based on actual facts that can objectively established in the record, and

    (2) demonstrate that putting this functionality into a generic control system such as a prior art computing platform doesn’t provide an unexpected result or a synergistic benefit that is worthy of a patent.

    It’s that simple.

    1. 9.1

      an unexpected result

      When you claim the functionality, there isn’t any “unexpected result.”

      Computers process the data they are instructed to process. It’s what they do.

        1. 9.1.1.1

          In other words, the written description necessarily describes and enables the invention. Therefore, MM is absolutely correct that after reading the written description, the invention will necessarily be unexpected. The invention will adhere to the laws of physics.

          1. 9.1.1.1.1

            MM is absolutely correct that after reading the written description, the invention will necessarily be unexpected.

            Except I never said anything of the sort. Nice try, though.

            1. 9.1.1.1.1.1

              The one-way editing in play yet again….

              Malcolm has free reign to slander other blog writers, but make a reference to a factual event between Dr. Noonan and Malcolm, and Oh Noes – that just has to be censored….

          2. 9.1.1.1.2

            …except for the part that [old machine] somehow gains these new capabilities “by magic”…

            ;-)

            1. 9.1.1.1.2.1

              “anon” …except for the part that [old machine] somehow gains these new capabilities “by magic”…

              Last time I checked, the claim itself is not “the unexpected result” that converts a prima facie obvious invention into a valid one. If you’re aware of a case that says otherwise, I’d like to see it.

              But since you’re the “expert”, maybe you can tell everyone: what’s the current teaching regarding the ability of a programmed computer to process the data that it’s programmed to process? When do we stop pretending to be surprised by that?

              Is a method of sitting at a typewriter and typing out the instructions that provide a recited functionality for a machine eligible for patenting? How about a method of using audible words to teach a voice-controlled robot how to perform a task? Is it enough that I just describe the “use audible words” and the result of the task to get that claim? Or can I get the claim if recite the words?

              What about a method of writing a list of rules on a piece of paper and handing it to a robot that follows the rules? Is that an eligible method? I assume the answer from the defenders of software patents is “yes because technology and who doesn’t love robots?”

              But, hey: you’re the expert. I’m sure you’ve thought about these obvious questions a lot, just like the CAFC has.

              LOL

              1. 9.1.1.1.2.1.1

                What a bunch of g0bbledyg00k.

                Try again with those short declarative sentences that you are always on about and try to actually talk to the post that I made – talk about the law (and try not to muddle yourself with the animation claims).

                Hint: show you understand the law first, and then try to apply it.

                You have never shown that you actually get that first part, and are always in a hurry to play your self-appointed guardian of the fields of rye part with “bad claims.”

      1. 9.1.2

        Meaningless statement Malcolm – hint: try using the appropriate patent doctrine of inherency.

        Your “version” here merely suffers from the House/Morse fallacy, and would necessitate that all future improvements to the machine known as the computer are somehow “already in there.”

        1. 9.1.2.1

          I’ve no idea what you’re talking about.

          The programmable computer’s capability of being programmed to follow instructions is certainly “already in there.”

          Programmable computers are old. They process the data according to instructions (aka rules and logic) that are provided to them.

          This fundamental aspect of instructable data processing machines raises serious issues that present genuine challenges to any patent system — such as our own — that wasn’t designed or intended to deal with them.

          And those issues aren’t ever going away, absent a complete overhaul. And you won’t like that overhaul at all. So pick your poison.

          [shrugs]

          1. 9.1.2.1.1

            You keep an ASSuming your own conclusion of “wasn’t designed” without recognizing that 101 must be designed to be open and inviting because there is no possible way to know a priori the direction that innovation will move.

            You have already shown an uncanny lack of caring about how innovation actually works (for example, Knodrietiff waves), and your Decade of Decadence short script shows that you just cannot grasp “the issues” – no wonder you keep v0m1ting the same CR@P rhetoric…

          2. 9.1.2.1.2

            MM – the challenges to the patent system are the same as they always were. People throughout the ages continue to get worked up whenever a new technology arrives by claiming that the patent system can’t handle the new technology. My position is that the people (or rather the person) that wrote 101, 112, 102, 103 is a bit smarter than both you and I.

  5. 8

    Dennis, given these two cases, how do you think the Planet Blue case(the “use rules to determine if Mickey moves his lips” case) turns out?

    Seems to me that it falls squarely into the TLI box.

    What do you think?

    There’s also the possibility, of course, that the CAFC immediately blows up its own test by applying it in a nonsensical manner.

    1. 8.1

      First, of course, the panels in TLI and Enfish have no power to overturn prior federal circuit precedent. As such, these new cases should be read to conform to the law and prior (post-Alice) interpretations of the test.

      Regarding Planet Blue, it seems to me that its case is greatly helped by Enfish. The automation of animation lip movement using morph rules seems to greatly improve the animation technology rather than simply using the computer as a tool.

      1. 8.1.1

        DC: The automation of animation lip movement using morph rules seems to greatly improve the animation technology rather than simply using the computer as a tool.

        I’d argue that “use rules in this particular computer animation context” is not an improvement in the functionality of computers. In light of the prior art, the “improvement” is indistinguishable from the “improvement” in TLI.

        As for “greatly improve”, take a closer look at the scope of the claims at issue in Planet Blue. They aren’t limited to “great improvements”. Not by a long shot.

        Lastly, are there are other computer animation contexts which would be improved by “using rules” (e.g., animating finger movements based on tactile properties of a virtual handheld object)? Is “use rules” in those contexts merely obvious in view of Planet Blue’s teaching? Not necessarily looking for an answer here … just something to think about.

          1. 8.1.1.2.1

            applying TLI/Enfish to Blue Planet: it basically comes down to the scope of prior art as compared to what is being claimed.

            As always.

            People have been using rules to synch animation to sound for a long, long, long time. And people have been using computers to automate data processing rule application (aka logic) to data for a long, long, long, long time (not just in the field of animation, of course, but certainly in that field). There is literally no data processing context in which a computer can’t provide some arguable improvement over the human brain — that’s also ancient history.

      2. 8.1.2

        “First, of course, the panels in TLI and Enfish have no power to overturn prior federal circuit precedent. ”

        Exactly which is what makes me wonder why they even took this illegal action in the first place.

        “As such, these new cases should be read to conform to the law and prior (post-Alice) interpretations of the test.”

        Looks impossible.

    2. 8.2

      MM – why wouldn’t we want to allow automated animation techniques to be patent eligible?

  6. 7

    DC an “improvement in computer-related technology” can include a software implementation as well as a new data structure

    Which adds nothing to what the CAFC has already told everybody.

    Whatever in the world ends up encompassed by the term “new data structure”, a claim to such a “structure” isn’t necessarily going to be eligible. Same with “a software implementation.”

    The answer, as ever, will depend on the relationship of the alleged innovation to the prior art, and the how that innovation is claimed. In that regard, note in particular how the functionallly claimed dependent claims in TLI were swept aside like the junk they were. The PTO is going to struggle desperately trying to pretend that didn’t happen.

    Bottom line here is that a huge chunk of junk just got waaaaay junkier. The CAFC put a stake in the ground. That stake isn’t going to last long but there’s not putting it back. This is a one way street with a definite ending.

    1. 7.1

      MM, If claims purport to be directed to improved computer functionality, as opposed to an improvement to something that is not computer functionality, like lip syncing, where the use of the computer is incidental, the case is easy if the claims actually claim that improvement.

      But consider the TLI. I think the claims in TLI were also directed to improvements in computer technology — the digital archival of photos. Where the claims went off the rails, however, is that they were abstract at the point of novelty, the how to do it. The claims described what was known in detail. But at the point we expected to seem something new, how to improve the old method, there was nothing more than just “do it.” Use “rules,” so to speak.

      These claims were truly abstract in the Morse sense. And, to the degree that the Planet Blue claim were similarly directed to something otherwise eligible, those claims too were abstract at the point of novelty. Just saying use rules without specifying what they were is just like saying “do it.”

      Thus the claims in both TLI and Planet Blue are claimed at the level of abstraction when considered as a whole.

      1. 7.1.1

        Ned: Just saying use rules without specifying what they were is just like saying “do it.”

        No doubt. That’s because programmed computers apply rules to data. It’s what they do.

        1. 7.1.1.1

          What I see is this:

          Fails step 1: overall technique is notoriously old, and any “improvement” is at the level of an idea.

          Fails step 2 if it does not add anything more. But we knew that already, did we not? The lack if detail in the alleged improvement is the problem overall.

          Passes step 1: claims directed to novel computer functionality that is claimed in detail.

          1. 7.1.1.1.1

            Ned: claims directed to novel computer functionality that is claimed in detail.

            And therein lies the rub. What’s “detail”? Objective structural changes vis a vis the prior art would certainly pass muster.

            But when does non-structural functionality turn into fake structure that passes the “detail” test? “As much as Enfish and DDR had”? Is that the test? If so, we have a big problem. And we do have a big problem.

            1. 7.1.1.1.1.1

              MM, the claimed subject matter should indeed be something that has a physical effect, such as a reduction in the space required to maintain information, e.g., compression techniques. If the only improvement is completely logical, I am not certain how such improve computer technology unless the improvement is required to be physically part of the computer such as a microprogram.

              1. 7.1.1.1.1.1.1

                something that has a physical effect

                Are you trying (once again) to elevate MoT into more than just a clue, Ned?

            2. 7.1.1.1.1.2

              And therein lies the rub. What’s “detail”? Objective structural changes vis a vis the prior art would certainly pass muster.

              And yet again making an issue that an optional claim format “needs” to be more than just an option….

              Hint: if something does not need to be done (kind of important to understanding what the word “optional” means), then you cannot base your “rule of law” on “must have” that optional thing.

          2. 7.1.1.1.2

            I must add that step 1 is failed if the alleged novel subject matter is non statutory. Then, step 2 becomes a meaningful exercise, such as was the case in Diehr.

        2. 7.1.1.2

          That’s because programmed computers apply rules to data. It’s what they do.

          Exact same logic as the Big Box of protons, neutrons and electrons.

          ALL “machines” and manufactures and compositions of matter are nothing more than putting together protons, neutrons and electrons – and that is what they do.

          Oh wait, you want to treat the different configurations – with different capabilities and different effects differently…?

          Well why didn’t you say so?

  7. 6

    The Federal Circuit – in the mode of simians in a cage being firehosed if they reach for bananas – have been placed in a “no-win” situation of “developing” some meaning to undefined terms such as “abstract,” and “significantly more” (which the Supreme Court refuses to define), but will be brow beaten if their “choices” do not align with the Supreme Court’s “policy” wax-of-nose-mashed re-writes of statutory law.

    This makes the above comment of: “The holding in Enfish also offers additional support to the PTO’s initially questionable call of suggesting that examiners limit their abstract idea constructs to only concepts “similar to concepts previously found abstract by the courts.” all the more “jarring.”

    The Supreme Court won’t say before hand.

    The USPTO (and Federal Circuit) are afraid of saying anything but what the Supremes have already said and NO ONE can know a priori what the law will be after the next case is kicked up to the Supremes, because they won’t develop any law that can be used in any manner of “bright line” because they fear that “scriveners” will simply be smarter than any rules that they lay down.

    One huge problem of course with this type of constant-need-to-post-decide-the-law is that the current law (as re-written by the Court with their “policy” fingers in the nose of wax) is simply Void for Vagueness.

    Oh, to have some small child point to the Emperors and ask “Mommy, why do those people not have any clothes on?”

    1. 6.1

      I agree anon. Void for vagueness. But, what hope do we have really at this point? The Fed. Cir. is stacked with Google appointments with no science background and psychotic freaks that have absolutely no idea what they are talking about. The entire court should be abandoned.

    2. 6.2

      You are 100% correct about this, but I would note that it is not only true in the § 101 context.

      Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014) (“[W]e hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”)

      “Reasonable certainty,” eh? Yes indeed, this offers a very clear standard by which we can recognize indefiniteness when we see it. This is also totally consistent with the § 282 presumption of validity.

      Akamai and Octane were the same story: we will tell you that your decision was wrong, but we will not tell you what the right decision is, or how you can know when you reach it. Just keep guessing, and we will keep smacking you upside the head if you get it wrong, but we will give no hints as to what is the answer we want, because really we do not know ourselves.

      This is no way to run a patent system.

      1. 6.2.1

        “Reasonable certainty,” eh? Yes indeed, this offers a very clear standard by which we can recognize indefiniteness when we see it.

        Um, wasn’t the CAFC opinion when the case was kicked back down that “Reasonableness is a familiar standard to us and this language was reasonable”? They had no problem recognizing reasonableness.

        Are you arguing that the Supreme Court can never proclaim a reasonableness or a totality of the circumstances test without going through every possible situation itself where the test would be applied?

        It seems like your problem isn’t just with 101, or with patent law, but with the entire concept of a hierarchical judicial system. I bet you there isn’t a single area of law where the court HASN’T said “The test for this circumstance is reasonableness” and left it up to lower courts to iron out what constitutes reasonable. That’s what they have to do – they don’t have time to take every single case.

        The Office is totally correct to not generate a test, because it is supposed to follow the law, not make it. The CAFC has no excuse for not making a test. “We’re going to analogize to previous decisions” is a childs-like way of shirking THEIR job. They should adopt a framework and let the Supremes give them tweaks or tell them they are wrong. That is what an inferior court is supposed to do.

        1. 6.2.1.1

          Except for the fact that you are dealing with substantive law writing of statutory law (for which, the Constitution has clearly delegated authority to only one branch of the government – and it is not the judicial branch).

          The inferior courts do not – and should not engage in Separation of Powers violations even when so urged to do so by the Supremes.

          Awhile back we had a judge on the Federal Circuit smart enough to know that he could challenge the Supremes on this point.

          Sadly, the current Federal Circuit make-up seems to lack this courage of convictions (see the hosed-simeans psychology references).

        2. 6.2.1.2

          Are you arguing that the Supreme Court can never proclaim a reasonableness or a totality of the circumstances test without going through every possible situation itself where the test would be applied?

          I agree with Justice Scalia that “reasonableness” and “totality of the circumstances” are sometimes unavoidable, but always should be avoided where they can be. Here we know that the “reasonable certainty” standard can be avoided, because there was a different standard in place for decades that worked just fine. What more, the previous standard comported with the statutory presumption of validity in a way that the new standard does not.

          It seems like your problem isn’t just with 101, or with patent law, but with the entire concept of a hierarchical judicial system.

          Definitely not. I think our hierarchical judicial system works very well in most circumstances. This is not to say that I agree with every rule that they contrive as our law, but the measure of a workable system is not “does Greg DeLassus approve?” Rather, a judicial system is working well when it does two things: (1) vindicate the interests that the Congress intended to vindicate when it wrote the legislation; and (2) pronounced standards clear enough that the regulated community can have settled and predictable expectations about how things will work ex ante. In matters of criminal law, or antitrust, or labor law (etc and so forth) our hierarchical judicial system does this and does so quite well.

          They even used to do so in the context of patent law. Recently, however, the top of the pyramid has acquired a penchant for upsetting settled expectations by throwing out perfectly workable old rules in favor of totally unworkable new rules. This is not good.

          My objection, as such, is not to hierarchical judicial systems, but to the very recent (and hopefully temporary) particular hierarchy we have in place right now, and even then, only with regard to patent law (or rather intellectual property law more generally).

          The Office is totally correct to not generate a test,

          On this we definitely agree. I hope that I did not leave the impression that I am criticizing the PTO. I do not expect them to set the standard for indefiniteness. That is more properly the courts’ bailiwick.

          [The PTO] is supposed to follow the law, not make it. The CAFC has no excuse for not making a test.

          Once again, here we agree.

          “We’re going to analogize to previous decisions” is a childs-like way of shirking THEIR job. They should adopt a framework and let the Supremes give them tweaks or tell them they are wrong. That is what an inferior court is supposed to do.

          Hm, now we disagree again. I do not much care whether the test for “abstract idea” is enunciated by the SCotUS or the CAFC, as either one has the power to do so. The important thing, however, is that the standard should be stable, not constantly in flux. Given that the SCotUS has made clear that it will not let the CAFC’s pronouncements stand, there is no clarity to be had from the CAFC making pronouncements. Only the SCotUS can bring the requisite stability in the current circumstances, so this really is a task for the SCotUS to perform.

          1. 6.2.1.2.1

            Greg, the Supreme Court in Bilski found itself in a situation where the Federal Circuit had been using tests that allowed the patenting of unpatentable subject matter such as business methods by reciting generic computers and processors. They were also faced with a situation that the Federal Circuit had overcorrected with the MOT, a standard that many argued would not allow the patenting of software that improved computer technology. Thus, by 9-0, the Supreme Court overturned the Federal Circuit requirement that the MOT presumptively apply, and by a 5-4 majority, held that the problem with the claims directed to balancing risk before it was that they were abstract without defining what that meant. In doing so, they were following the urging of the likes of IBM that the Bilski claims were “abstract,” again, without expressly defining what that meant.

            Thus if we have an era of uncertainty because so many “stakeholders” opposed the MOT without providing an alternative “rule.”

            Thus we are where we are.

            Now if you have a clear rule that we could adopt that would allow the patenting only of inventions that relate to new or improved machines, manufactures and compositions of matter, please suggest that rule.

            My own thinking is that such a rule is not possible and that the better approach would have said that the inclusion in a claim of subject otherwise eligible (phones, internet, computers, etc.) cannot save a claim to subject matter otherwise ineligible; that methods of balancing risk are not eligible, so the claims in Bilski (or Alice), considered as a whole, are not directed to eligible subject matter.

            1. 6.2.1.2.1.1

              I think that MoT was a good rule. That is to say, MoT: (1) arises out of and gives practical effect to the actual language of 101; and (2) is easy to understand and apply in practice. I do not have a new rule to suggest, but I think that we could do a lot worse than simply to go back to MoT.

            2. 6.2.1.2.1.2

              “Now if you have a clear rule that we could adopt that would allow the patenting only of inventions that relate to new or improved machines, manufactures and compositions of matter, please suggest that rule.

              My own thinking is that such a rule is not possible”

              Huh? Just delete “process,” from 35 USC 101. Why is that so tough….. you seem to have done it already in your head…. just do in on paper.

              1. 6.2.1.2.1.2.1

                Les, I delete process because you and others essentially try to blow a hole in the framework of 101 by saying processes unrelated to new or improved machines, etc., are patentable subject matter.

                1. More of that “one way editing” in which what I cut and past from Ned is blocked….

                  Ned,

                  Tell me about the law as written by Congress in 35 USC 100(b).

                  You never seem to want to talk about that.

                  (hint: it is not Les, nor is it I that want to “b1ow a h01e” in your version of the framework of 101 – that would be Congress in the Act of 1952.

              2. 6.2.1.2.1.2.2

                Yup – another Ned-IMHO law effort is to NOT give the independent statutory category its full and rightful place, so even when he does remember to mention it, it is only as a SUB-category to the hard goods categories.

                That is just not the law as written by Congress.

            3. 6.2.1.2.1.3

              Software IS a manufacture and machine component Ned.

              You keep on missing this fundamental fact.

              (You have never been able to answer the counter point put to you that in order to “use” ANY software, you first must change the machine and configure that machine WITH the software.

            4. 6.2.1.2.1.4

              Thus, by 9-0, the Supreme Court overturned the Federal Circuit requirement that the MOT presumptively apply,

              That is NOT what the 9-0 decision meant, Ned.

              It meant that you cannot maintain that MoT is somehow more than just a clue.

              And yet, we see you (over and over and over and…) try to do exactly that.

              You really have to stop when you know – or should know – that what you are advocating just is not the law –neither as written by Congress, nor even rewritten by the Supremes.

              You are just making things up whole cloth here.

          2. 6.2.1.2.2

            Here we know that the “reasonable certainty” standard can be avoided, because there was a different standard in place for decades that worked just fine…Rather, a judicial system is working well when it does two things: (1) vindicate the interests that the Congress intended to vindicate when it wrote the legislation;

            But it wasn’t working just fine, that’s the point. People were writing hornbooks saying “Be as vague as possible” when Congress’ clear intent of the section (and it goes back to before the ’52 act) is to provide definiteness and notice. The CAFC was applying a test so lax that it essentially wrote the purpose of 112b out of the law. I mean I agree that the law was “settled” prior to Nautilus but that’s only because there essentially was no law.

            Recently, however, the top of the pyramid has acquired a penchant for upsetting settled expectations by throwing out perfectly workable old rules in favor of totally unworkable new rules.

            I don’t know what’s so unworkable about it. Someone described it to you, so you could write about it. You probably (assuming you met 112a) described it well in the specification. It’s not like its unconveyable information. What is the problem with not intentionally being vague in the claims? Especially when you a) have multiple chances during prosecution to amend and b) have the option of providing dependent claims with varying levels of particularity?

            TBH, the problem usually doesn’t come from either the inventor or the writing, but with the interim step of the lawyer taking the invention that was explained to them and trying to expand it out to unreasonable proportions. “Well this thermometer measuring celsius is a device that collects information, so we’ll put thermometer in claim 5 and ‘information collecting device’ in Claim 1.” Then you get surprised when you get 112a/b rejections because not all “information collecting devices” are equivalent to thermometers in general or in their specific use within the system. You’d be better off having your inventor do his inventing on his own rather than you trying to artificially inflate his scope with only a partial view of the skill of the art.

            Nautilus is a great example. There’s no doubt in my mind that the inventor in that case *actually knew at least one (if not every less-than-a-hand-width) spacing that worked.* After all – they were manufacturing machines that performed the cancellation. But I will bet the farm that some lawyer came in with the bright idea that they not limit themselves to the spacing they knew about but *that spacing and any other spacing too.* So they had to get lucky that their infringers only raised 112b and not WD under 112a, then they had to go the Supreme Court, then they needed the CAFC to basically dump the case under the new guidelines when what the inventor actually invented would have been protected if the lawyer just wrote down the actual spacing conveyed to him that enabled the signal cancellation. And what’s going to end up happening? The next time they sue someone *that* person will be smart enough to raise 112a or 101 and the claim is going to be invalid anyway. 90% of the system would be improved if prosecution lawyers saw themselves less as Peyton Manning and more as Brad Johnson.

            The important thing, however, is that the standard should be stable, not constantly in flux.

            I don’t often get to talk to inventors in an interview, and even less so do I get actual unfettered access to their responses, but when I do, the vast majority of the time what they describe to me is something that either passes or fails solely based upon a prior art search. The majority of the problem comes from the fact that what they say (which can’t be all that much in a 1hr interview) has to be officially presented to me without new matter, which means it is limited to what the lawyer previously wrote down. That causes problems. There’s also corporate people who need their scope to be of a certain size to be commercially valuable for them. They cause problems too. You give me a tape recorder and transcription program and I could have a spec that wouldn’t be pretty, but would protect what the inventor actually thought of in a single day.

            I’d submit to you that the standard hasn’t changed in quite a while (and certainly not since KSR). If you invent the bow and you try and claim your stick-with-string, you’re going to have a relatively simple discussion on the prior art and motivations with respect to bow-related advancements. If you invent the bow and you try and claim “a machine that propels projectiles” such that you’re reading on the possible future invention of a gun(112a/b), or on any other device that utilizes the principle of string tension to shoot things *regardless of configuration* (101), I agree the law has been moving to render your claims invalid for a few years now. That’s not a bug, but a feature, because common sense says you weren’t supposed to have the gun-covering scope and the string-tension scope to begin with.

            Except for the particular two-partness of the Alice test, there’s very little 101 or 112 jurisprudence that has happened since Lizardtech (a 2005 case) that you couldn’t have avoided by just reading Morse (1853), Wabash (1938) and Perkin’s Glue (1928) and not doing what those patentees did. And if it wasn’t for the fact that Lizardtech’s difference between Claim 1 and Claim 21 threw that principle into such perfect relief you wouldn’t need to read that one either. Nowadays, virtually everyone invents Claim 1, and then proceeds to claim Claim 21, and then wonders why their independent claims are eventually found invalid by people with better legal training than your average examiner.

            1. 6.2.1.2.2.1

              Random, vagueness has been going on for a very long time — well prior to the examination of claims. See, Evans v. Eaton, 20 U.S. 356, 430-431 (1822).

              “From this enumeration of the provisions of the act, it is clear that the party cannot entitle himself to a patent for more than his own invention; and if his patent includes things before known, or before in use, as his invention, he is not entitled to recover, for his patent is broader than his invention. If, therefore, the patent be for the whole of a machine, the party can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation. If the same combinations existed before 431*431 in machines of the same nature, up to a certain point, and the party’s invention consists in adding some new machinery, or some improved mode of operation, to the old, the patent should be limited to such improvement, for if it includes the whole machinery, it includes more than his invention, and the before cannot be supported.”

              Also, Lord Coke observed that one cannot repatent a coat for an improved button, with the button/coat combination not changing in function.

              “[W]hen Coke explained why the patent in the Bricot’s case was contrary to law he said that the invention in question was
              not a new manufacture, but rather to introduce it was “but to put a new button on an old coat.”90 This was the metaphysical distinction. Yet Coke went on to explain that “it is much easier to add than to invent” and that even “if the new manufacture be substantially invented according to law, yet no old manufacture in use before can be prohibited.”

              Owning Idea, Chapter 1, at 41.

              But today, attorneys are schooled in hiding the invention amount a blizzard of old elements, just as they are schooled in hiding the killer reference, like a needle, in a haystack. They are also schooled in using vague and functional terms.

              Fraud on the PTO and on the public is the stuff of the patent attorney profession. The PTO really needs to get proactive, because punishing and disbarring offenders is the best way to clean up our profession. There are honest practitioners, but I have seen far too many who are not.

        3. 6.2.1.3

          It was “reasonable certainty” that is the standard and which is standard language and used in many legal contexts, so they felt like it was an old buddy that they usually use in routine cases.

    3. 6.3

      As I and others have been pointing out for years, it’s up to the lovers of computer-implemented junk to decide what should be eligible for patenting and tell everyone.

      “All of it” is — and always was — a non-starter.

      If you don’t like the CAFC’s test, then come up with a better one.

      Otherwise someone else will come up with one for you. And you won’t like it.

      1. 6.3.1

        up to the lovers of computer-implemented junk to decide what should be eligible for patenting and tell everyone.

        That’s total B$.

        It is up to Congress, and Congress has already spoken.

        It is clearly the nose-mashing that is mucking everything up.

  8. 5

    So, a judge Hughes appointed by Google to the Fed. Cir. with no patent law experience and no science background will be the one that makes new patent law. Joy to medieval America.

    1. 5.1

      Speaking of Google:

      Why isn’t this claim directed to the abstract idea of Fly Paper for Jay-walkers:

      1. A system for protecting a colliding object from a secondary impact, after an initial impact with a vehicle, comprising: a vehicle having a front end, an adhesive layer positioned on the front end of the vehicle; a coating positioned over the adhesive layer; wherein one or more layers of air are positioned between the coating and the adhesive layer; and wherein, upon the initial impact between the colliding object and the vehicle, the coating is broken exposing the adhesive layer to adhere the colliding object to the adhesive layer during the initial impact.

      Does the recitation of bubble wrap provide the “something more” that makes the abstract ideal eligible?

      link to patft.uspto.gov

  9. 4

    “On May 12, 2016, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Enfish, LLC v. Microsoft Corp. held that the claimed database software designed as a “self-referential” table is patent eligible under 35 U.S.C. § 101 because it is not directed to an abstract idea. ”

    Say what now? I’m sorry, why exactly is “self-referential table” not an abstract idea?

    Moreover, if an array that stores the row and column ids of the array itself as an aid to later locating other data stored in the array (table) is not abstract, why exactly is a database storing pictures in association with picture IDs (or categories) as an aid to later locating the pictures an abstract idea.

    I’m all for the result in Enfish, but this reasoning is bizarre.

    One fish, two fish, Enfish, go fish.

    1. 4.1

      One fish, two fish, Enfish, go fish

      Kudos – that was brilliant (and at a level they maybe they will understand)

    2. 4.2

      The Federal Circuit has made this clear as mud. Claim from the Enfish case:

      A data storage and retrieval system for a computer memory, comprising:
      means for configuring said memory according
      to a logical table, said logical table including:
      a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical
      row, each said logical row corresponding to a record of information;
      a plurality of logical columns intersecting said plurality of logical row
      s to define a plurality of logical cells, each said logical column
      including an OID to identify each said logical column; and
      means for indexing data stored in said table.

      Basically, the court said this was abstract but was an improvement to computer-related technology.

      Claim in TLI Communications:

      A method for recording and administering digital images, comprising the steps of:

      recording images using a digital pick up unit in a telephone unit,

      storing the images recorded by the digital pick up unit in a digital form as digital images,

      transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

      receiving the data by the server,

      extracting classification information which characterizes the digital images from the received data, and

      storing the digital images in the server, said step of storing taking into consideration the classification information.

      The second part of the prong (the “does it improve computer-related technology”) wasn’t met.

      Yikes! Anyone care to parse why one claim improved computer-related technology, but one did not?

      Alice is abysmal.

      1. 4.2.2

        PB Anyone care to parse why one claim improved computer-related technology, but one did not?

        The CAFC already did this in TLI.

        Are you saying that you can’t follow their argument?

      2. 4.2.3

        Regarding the parsing…. as near as I can tell…. since TLI is specific about the intended use (pictures) its claims are not directed to improving “the computer itself” but rather a method of storing pictures USING a computer.

        Since the claim in Enfish is vague and NOT directed to a particular use but instead preempts ALL uses of the abstract idea of a self referential table, it IS directed to an improvement to the computer itself and is therefore NOT directed to an abstract idea.

        One pill makes you larger
        And one pill makes you small
        And the ones that mother gives you
        Don’t do anything at all

        Go ask Alice
        When she’s ten feet tall
        And if you go chasing rabbits
        And you know you’re going to fall

        Tell them a hookah-smoking caterpillar
        Has given you the call
        Call Alice when she was just small

  10. 3

    And that lack full guidance from the USPTO

    FYI – the court recently stated that the Office guidance has NO force of law. Odd then, that somehow it is thought that the same court would be looking for more guidance from a place that it “disrespects” the previous guidance from.

    1. 3.1

      anon

      The “dialogue” here would likely be different if the “guidance” were coming from an executive department (USPTO) run by an individual with a different “outlook” (anti-Obama, anti-Lee) in the “balance” of “interests” in patent law. Then the stress might “shift” of the discussion here might be more of an emphasis on the authority of law and the courts providing the guidance and a claim that indeed Office guidance has no force of law.

      Principles after all are impediments to flexible practicality…

      There is no proper division of power, only the balanced result… and the ends (a “balanced” perspective) justify the means – the argument and dialogue.

  11. 2

    Random, you write:

    …..the more correct line would be “a claim directed to a particular means of improving the functioning of the computer itself.”…….

    Suppose I find a bug in the coding for an app. Is my fix a “particular means of improving the functioning of the computer” on which the app runs?

    I see a distinction between software that improves an app and software in an OS. The former improves the app but not the computer. The latter the inverse. The latter should be patentable, but should the former? You?

    1. 2.1

      To “deconstruct” your “but the app has a bug” strawman, If the coding to which you so arduously apply yourself to does not work and does not have the utility to which the claim pertains, one must first ask if such coding is even covered by the claim.

      Your logic remains atrocious MaxDrei.

      Now instead of you being “too cute,” you had instead granted that the coding “worked,” but that you had instead invented a different way entirely in different coding**, you might have had a more interesting discussion point.

      I recommend Dr. Seuss’s A Fly Went By.

      Then I recommend 35 USC 101 which notes as statutory categories BOTH machines and manufactures – and “shockingly” – any improvements thereof.

      **Your different way, of course, would have to have been different enough such that the MathS philosophical equivalencies was not met.

    2. 2.2

      As I often say, it’s not a question of what you do, it’s a question of what you claim. You can do one thing and a claim to that particular doing may be eligible, while a claim to the generalized result of what you did may not be. To go back to what I was alluding to at post 1 (and which I expanded upon at 1.4.2) – a specification may in fact include an eligible advancement, but may be claimed in such an overbroad manner that abstract idea ineligibility applies.

      So suppose you find a bug in a coding for an app. Is the claim a two step method that says “finding a bug in an app; improving the app by fixing the bug”? That’s ineligible, as its directed to the abstract idea of error correction. Is the claim a particular improvement in how you find bugs? That’s eligible if you claim the particular steps of how you go about the finding. It’s ineligible if you simply claim one step in a method that says “wherein the bug is found with a reduced search time.”

      If you’re drawing an application/OS distinction, I doubt that is relevant. An improved automation of error correction (assuming it is particularly claimed) is eligible, regardless of whether it is applied to the OS or a freestanding app. If there is no improvement (i.e. you admit you’re performing standard error correction) its ineligible regardless of whether you apply it to the OS or the application (and further you’re going to have a 102/103).

      1. 2.2.1

        while a claim to the generalized result of what you did may not be.

        Ah Random, but this only highlights your lack of understanding of the Ladders of Abstraction and your overblown tendency to think that ladders only have one rung (with that one rung just being “too much”).

        Take a claims drafting class – learn a little about “generalizing.”

  12. 1

    In particular, a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts.

    This is the only terrible line of the entire memo. Virtually every hardware/software claim is an improvement to “computer-related technology.” If the claim is directed to a CRM, configured processor, or computer-method and fails to improve “computer-related technology” then it has a utility issue.

    We know why Alice was allowed – because it improved a computer to perform a type of hedging when no computers previously performed it. That’s an improvement to computer-related technology – prior to the invention, networked machines couldn’t perform hedging, following it they could. But it is not an improvement to “the functioning of the computer itself” which was the distinguishing line in Alice. Enfish was an improvement to the functioning of the computer itself, which makes the “computer-related technology” line out of place.

    Moreover, the more correct line would be “a claim directed to a particular means of improving the functioning of the computer itself.” A distinguishing feature of Enfish is that the means-plus language rendered the scope very particular and the court found it improper to read an idea out of that. It is a significantly different situation to claim software that achieves a functional result, absent limitations to a means, and argue that the claim to the result is sufficient to remove the abstract idea analysis. We wouldn’t need a judicial exception test if concrete utility was sufficient to foreclose the invalidity.

    Remember the granddaddy is always Morse – Morse unquestionably invented a machine that was novel and had utility, but his claim was to a functional result. I have an application in front of me right now where the invention is unquestionably an improvement to the actual functioning of the computer (the actual Alice language) and I still made and following this guidance I’m still going to maintain a 101, because a claim to a computer improved with new functionality, absent limitations as to the particular means of achieving the functionality, is still directed to an abstract idea field. You can’t invent – nor can you preempt – *results*, regardless of how they are achieved. All you can invent is a handful of means of achieving the result.

    That being said, the rest of the memo achieves what I assume is the writer’s intent nicely – it emphasizes you don’t have to change anything, but that “The fact that a claim is directed to an improvement in computer-related technology *CAN* demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.” Non-lawyers don’t appreciate how meaningless a word like “can” is, so I suspect that sentence will curtail 101s in the computer areas somewhat without actually making them impossible when an examiner really wants to maintain it.

    1. 1.1

      The line is not “terrible” for the reasons you list – and in fact, your “defense” of utility is how 101 should be viewed.

      Remember that 112 (in fact that old entire first paragraph) was separated in 1952.

      Remember as well that Congress (not Rich, ahem, Ned) changed how terms sounding in functional language could be used.

      ALL of this revolves around a Court that simply does not want to be constrained by anyone in their mashing of the wax nose of 101.

        1. 1.1.1.1

          Yay – the “gif-provider” is back for some of the old fun and games.

          Try something different.

    2. 1.2

      The problem with Morse was that he claimed more than he enabled in the eyes of the Court. Scope of enablement is the proper tool to think about these issues (of course, I know we are dealing with a medieval judges Fed. Cir.–should be a Saturday Night Live skit with medieval judges of the Fed. Cir.).

      Also, in Morse the problem was that the language was not functional language that a person skilled in the art would use to describe solutions.

    3. 1.3

      Under 101 analysis, does it matter if what Applicant claims to be an improvement is not actually a novel improvement? Meaning, if Applicant’s claims cover (and spec argue) that their claimed system provides some special benefit that cannot be achieved by prior art systems, does it matter whether those types of statement are in fact true?

      The reason I ask is because courts seems to rely heavily on what the specification asserts to be the “benefits” of the claimed invention but they don’t often ask whether those benefits are in fact new. I would imagine it would be pretty easy to insert boilerplate into all software patents to recite benefits similar to what Elfish claims their novel data structure can provide (.e.g., faster processing, smaller memory size, etc.).
      Thanks,

      1. 1.3.1

        Excellent question Mike.

        The answer is no.

        This is 101:

        35 U.S.C. § 101 35 U.S.C. 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

        The analysis is: Is what is claimed new and useful a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

        The newness issue is evaluated under other statutes (102, and 103). Useful is so in the eye of the beholder… who is to say something isn’t useful…

        So the strictly 101 analysis is : is it a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.

        1. 1.3.1.1

          Not quite Les – while “usefulness” may be in the eye of the beholder, utility must be within the domain of the Useful Arts (which highlights the anti’s fallacies of attempting to use Fine Art examples on these boards).

            1. 1.3.1.1.1.1

              There is no “spin” in “my” way, Les.

              Eppur si muove: Utility is a requirement of 101, and the direct result is to look at the utility either being of the Useful Arts or of the Fine Arts.

              If of the Fine Arts, full stop – you do not even get to try to apply any other section of patent law (and it makes zero sense to try to do so – down that path lay only obfuscation)

          1. 1.3.1.1.2

            …if your going to bring court interpretations into it, the whole thing spins into madness.

            1. 1.3.1.1.2.1

              Regrettably so. It did not have to be this way, but the courts have been very reluctant to let the statutory text for § 101 be the governing standard, and the result has been a complete fiasco.

              Congress knew what it was doing with Title 35, and the courts would do well to follow their own advice and let Congress have the last word on this point. McClurg v. Kingsland, 42 U.S. 202, 206 (1843) (“[T]he powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution…”).

      2. 1.3.2

        Under 101 analysis, does it matter if what Applicant claims to be an improvement is not actually a novel improvement?

        I think the answer is no so long as the claim is a colorable claim. The example I’ve used before is a book. Someone invented the book, and that was eligible. Weeks later someone else might also claim to invent the book, but be mistaken, and that’s eligible but a 102 rejection. But if 300 years pass and everyone knows about books, the assertion of a book in a claim no longer confers eligibility, and we ask if the other elements of the claim confer eligibility. So a claim to a book + story becomes ineligble subject matter because we construe the claim as covering an invention that comprises writing a particular story in the known book, which is ineligible.

        The CAFC in Alice held that merely reciting a computer rendered the claim concrete and non-abstract. I hardly believe the Supremes would have come down the other way had the specification in Alice claimed to have invented the computer in addition to the software – if they felt that way they wouldn’t have held that “apply in on a computer” was insufficient under the second step.

        1. 1.3.2.1

          The “example you have used before” suffers from the “not even wrong” problem that you attempt to use a Fine Arts example in a Useful Arts world.

          You are in the weeds before you can draw any legal meaning from any critical thinking to be applied.

          Try to use examples that do not have this fundamental flaw.

    4. 1.4

      Are the claims you speak of only apparatus or manufacture claims? The reason I ask is because method claims do not need to describe some new hardware to be eligible under 101. The steps themselves must be new and useful, not the hardware that implements the steps.

      1. 1.4.2

        Are the claims you speak of only apparatus or manufacture claims?

        No, but the rest of your statement suggests you think this makes a difference. It doesn’t. The problem is not “describing some new hardware.” The problem is whether the claims are directed to different acts or a different conclusion.

        Let me get a little more example-y: Applicant claims a computer system that is configured as ABCD. In an ABCD computer system, the prior art performs EFG to generate result H. Applicant’s specification suggests instead doing MNOPQ, to generate result R. R is a technological improvement over H (i.e. it improves the functioning of the computer-qua-computer), of that there is no question.

        Claim 1, which claims a method that configures a system into ABCD, and then claims “software that causes the computer to generate result R” is an ineligible abstract idea.

        Claim 2, which claims a method that configures a system into ABCD, and then claims “software that causes the computer to perform MNOPQ” is eligible, regardless of whether or not it includes a limitation like “such that the computer generates result R.”

        Some people think that Claim 1 is better taken care of under 112a and 112b. Claim 1 also has 112a/b issues, as it is overbroad and possibly fails to particularly claim the invention. The fact that Claim 1 also has 112 issues is irrelevant to whether it has also has a 101 issue. Tomorrow I may find prior art teaching MNOPQ, and it will have a 102/103 issue as well. That doesn’t change the fact that it has a 101 issue.

        Other people think that the mere fact that R improves the computer over H renders Claim 1 eligible. This is a misreading of Alice. Alice didn’t improve the computer, it merely used its standard processing capabilities to implement an already-known method. Because Alice didn’t improve the computer (and wasn’t purporting to improve the hedging), it could not have been eligible. It does not follow that if the claim *does* improve the computer it *must* be eligible. We know this because Morse, The Telephone Cases and Flook all involved improvements to machines that were nonetheless ineligible. Utility is not eligibility and eligibility is not utility. If you could solve the abstract idea issue just by saying there is an improvement of the computer, you don’t need a judicial exception test – meeting or failing utility is sufficient to control the correct outcome of the claim.

        1. 1.4.2.1

          “Alice didn’t improve the computer”

          I could be mistaken, but I’m pretty sure Alice didn’t recite a computer.

          “it merely used its standard processing capabilities to implement an already-known method

          If that were the case, it should have been rejected under 102/103 as what was claimed was a method.

          it merely used its standard processing capabilities to implement an already-known method”

          Every claimed invention uses the standard capabilities of its component parts. (e.g., Wright Flyer used the bendability of wood and the pullability of rope guided by pulleys). That does not make the claimed invention ineligible or even unpatentable.

          1. 1.4.2.1.1

            Les, it is not that the inclusion of convention physical parts in a claim makes it ineligible, it is that the inclusion does not prevent the claim from being directed to the ineligible.

            Claim 1. Poem.

            Claim 2. Poem written on a book.

            1. 1.4.2.1.1.1

              The usual suspects attempting the usual plot of using Fine Arts to discuss Useful Arts….

              Poem, book, story / a sure sign that someone is trying to muddle the law with examples “not even wrong,” and that have no place in the discussion.

              Why would they do so?

              The answer is that they do not know (unlikely, since this has been pointed out many times to the sAme perps), or they are trying to dissemble.

              Yay ecosystem!

                1. I missed nothing – it is you that attempt to obfuscate the point.

                  Feel free to use a legitimate example.

            2. 1.4.2.1.1.2

              machines are eligible ned.

              Picking seeds out of cotton — old therefore not patentable.

              new configuration of using standard capabilities of component hardware that makes picking seeds out of cotton easier… eligible.

              1. 1.4.2.1.1.2.1

                Machines are a category, Les. New or improved, and useful, machines are eligible.

                1. Manufactures are also a category Ned.

                  So too, are methods.

                  What exactly is the point that you are trying to make?

                2. Ned – STOP the L 1 E S.

                  35 USC 100(b).

                  “use” is NOT the larger scale “art” that you want the law to be.

                  It.
                  Just.
                  Is.
                  Not.

                3. Ned,

                  Let’s also not forget that it is at this point in the typical conversation that someone reminds you of 35 USC 100(b) and then you run away without recognizing and incorporating that valid counterpoint into your position.

                  Just in case you forgot, here is what 35 USC 100(b) says:

                  (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

                  Let’s emphasize the important point for this discussion:
                  and includes a new use of a known

                  This takes the meaning beyond your antiquate (and plainly wrong) sub-categorization effort to have only those “processes” that result in a new hard good item. There is no such requirement – by definition of the words of Congress.

                4. “Machines are a category”

                  SO ARE PROCESSES!

                  and machines being a category is MY point not yours NED. A machine for doing the ALICE process is eligible.

                  A machine for doing the BILSKI process is eligible.

                  ….Now, please tell that to the Fed. Cir en bancers and the Supremes.

                5. Les, Ned – 101 has been amended since then and no longer recites “art”.

                  I am sure that you understand that the statute’s meaning has not bee changed by Congress since 1790. The Process replaced Art only to be consistent with the cases that preferred process to art. I assume this is because we adopted the lingo from the English cases.

                6. And here as well

                  Ned – STOP the L 1 E S.

                  35 USC 100(b).

                  “use” is NOT the larger scale “art” that you want the law to be.

                  It.
                  Just.
                  Is.
                  Not.

    5. 1.5

      Notfanuttin –

      But, Alice was not about hedging. That was Bilski. Alice was a rather particular method of providing escrow involving “shadow accounts.”

    6. 1.6

      Radom, I thought that if the claim was to a result, it was functional within 112(f) under current Federal Circuit jurisprudence. I would remind the applicant that he or she could save the claim by invoking that statute.

      1. 1.6.1

        In my entire career as an examiner Ned only about five people have ever intentionally invoked 112(f). Telling people they invoke 112(f) is a great way to give yourself fifteen extra minutes of work when they reconfigure their claim and argue it no longer invokes 112(f).

        I only construe things in 112(f) when I want them on the record as saying the claims do not invoke 112(f).

      2. 1.6.2

        Ned,

        Let remind you (yet again), that Congress (yes, Congress, and not your scape goat Rich), changed what was allowed as to using claims with elements sounding in function – outside of what is now 112(f).

        We have discussed this at great length, with me providing the words of even your preferred 1952 Act expert, and your nigh-constant ignoring of this reality still does not change that reality or rewrite history to your desired ends.

          1. 1.6.2.1.1

            Shame “Bob” that it does – but you do need to understand the terrain (and not clench tight your eyes when such things are explained).

              1. 1.6.2.1.1.1.1

                Read what I wrote “Bob.”

                You need to understand what is written.

                To “prove you wrong,” you need to be unwilling to clench your eyes.

                Prove that you are capable of that.

                1. Still no proof from you.

                  Why waste my time if you are going to be clenching tight your eyes to what the words mean?

                2. What does “proof” mean to you “Bob?’

                  Prove that you are more than just an unthinking parrot.

              2. 1.6.2.1.1.1.2

                anon, we can’t really criticize Mal for his refusals to answer questions or quote statutes if we do the same.

                1. The difference Abstract iDan is that I have provided NOT ONLY the statute, NOT ONLY the legislative hsitory behind the statute, NOT ONLY case law that backs up what I say, but also the writings of Federico and Rich that back up what I say.

                  This is NOT a new topic – the Br’er Rabbit game of “well go ahead and repeat everything yet again” is not the same as Malcolm’s lack of ever touching upon the substantive points of law (or even critical legal thinking).

                  That is why I press “Bob” (a known Malcolm Echo from the days of DISQUS) to first establish that he understands the terrain that he wants to step foot on.

                  It is clear that he does not – and that he is only going to attempt to have a PER SE word for word “quote” suffice for what the law means.

                  But he us not even willing to do that.

                  (further, he would then be open to the challenge to prove that the quote does not mean what I say that it means – and playing his game, I would demand an exact word prohibition against what I am saying.

                  So sorry – but my stand here is absolutely NOTHING like what Malcolm does.

                  At all.

                2. Note iDan,

                  No proof. No quotes. Not a scintilla of evidence. Just a bunch of hand waving.

        1. 1.6.2.2

          Seeing as I do not frequent these boards as frequently as yourself, I must have missed this exchange. Could I impose on you to point me to it?

          1. 1.6.2.2.1

            I do not have it “tagged,” but it was a very detailed discussion between Ned and I delving deeply into Federico’s writings. I have also augmented that discussion with case law cites (think the baby car seat case).

    7. 1.7

      “This is the only terrible line of the entire memo”

      That one and there was one other one that wasn’t all that great either. But, on the whole yeah more or less that is the worst line.

      “prior to the invention, networked machines couldn’t perform hedging, following it they could.”

      You’re mixing alice up with bilski. Alice was about transactions with shadow accounts or “intermediated brokerage”. Bilski was hedging.

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