By Jason Rantanen
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC (Fed. Cir. June 27, 2016) Download Bascom
Panel: Newman (concurring in the result), O’Malley, Chen (author)
Since Alice v. CLS Bank, the Federal Circuit has issued four opinions rejecting a lack of patent eligible subject matter challenge: DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Enfish LLC v. Microsoft Corp., 2016 WL 2756255 (Fed. Cir. May 12, 2016); Rapid Litigation Management Ltd. v. Cellzdirect, Inc., 2016 WL 3606624 (Fed. Cir. 2016), and BASCOM v. AT&T, with the latter three coming the last few months. (Many more decisions affirm invalidity on § 101 grounds.) Each of these opinions is important for understanding the contours of the post-Mayo/Alice patentable subject matter doctrine. In this post, I’ll summarize BASCOM and examine its treatment of the relationship between steps one and two of the Mayo/Alice framework.
Background: The claimed invention involved in this case is a “system for filtering Internet content.” Slip Op. at 6. The patent’s first claim reads:
1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
a local client computer generating network access requests for said individual controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and
a remote ISP server coupled to said client computer and said Internet computer
network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.
At the district court, AT&T moved to dismiss BASCOM’s complaint on the ground that the asserted claims were invalid under 35 US.C. § 101. “AT&T argued that the claims were directed to the abstract idea of ‘filtering content,’ ‘filtering internet content,’ or ‘determining who gets to see what,” and that none of the limitations “transforms the abstract idea of filtering content into patent-eligible subject matter because they do no more than recite routine and conventional activities performed by generic computer components.” Id. at 8. The district court agreed with AT&T, finding that “the claims were directed to the abstract idea of ‘filtering content’ because ‘content provided on the Internet is not fundamentally different from content observed, read, and interacted with through other mediums like books, magazines, television, or movies,” Id. at 9, and that “no individual limitation was inventive because each limitation, in isolation, was a ‘well known, generic computer component[]’ or a standard filtering mechanism.” Id. Nor were the limitations in combination inventive because “[f]iltering software, apparently composed of filtering schemes and filtering elements, was well-known in the prior art” and “using ISP servers to filter content was well-known to practitioners.” Id., quoting district court.
“Ordered combination of limitations” can provide the “inventive concept”: On appeal, the Federal Circuit reversed based on the second step of the Mayo/Alice framework. Critical to its conclusion that the claims were directed to patent eligible subject matter was the court’s focus on the particular arrangement of generic and conventional components in the claims.
“An inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot be simply an instruction to implement or apply the abstract idea on a computer.” Slip Op. at 14. Under the court’s step two analysis, the specific limitations were sufficient to establish eligibility on the limited record before the court–not because the limitations themselves provided that “inventive concept,” but because the arrangement of those elements did. “The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Slip Op. at 15. On the limited record before the court, the specific method of filtering content claimed in the patent “cannot be said, as a matter of law, to have been conventional or generic.” Id. at 16.
The relationship between Mayo/Alice Step One and Step Two: The court’s step one analysis is, unfortunately, somewhat muddled. The court first states that the claims are directed to an abstract idea, that of filtering content on the Internet, id. at 12, then shifts to the conclusion that the claims present a “close call,” requiring progression to step two. Id. at 13 (“This case, unlike Enfish, presents a “close call[] about how to characterize what the claims are directed to….Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.”)
Ultimately, the choice between claims that are clearly directed to an abstract idea and those that are “close calls” may not matter. If a claim is either unambiguously directed to an abstract idea or is a “close call,” the result is that the claim fails Mayo/Alice step one and the analysis proceeds to step two, the search for an inventive concept. Viewed in this light, resolving disputes over the articulation of the abstract idea isn’t necessary as long as it fits in the “close call” category.
On the other hand, the articulation of the abstract idea in step does matter because it provides an important ingredient for step two. Here, the court drew upon the articulation of the “abstract idea” as “filtering content on the Internet” to conduct its step two analysis. “The claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components. Such claims would not contain an inventive concept.” Id. at 16. With that articulation of the abstract idea in hand, it is relatively easy to see the method of filtering claimed in claim 1 as providing the necessary “inventive concept.” The articulation of the abstract idea as “filtering content on the Internet” also provides the foundation for the court’s analysis of the invention here as compared with its previous decisions on patent eligible subject matter.
But if one were to articulate the abstract idea as being “controlling access to content by using centrally-held accounts with different permissions,” it might be significantly more difficult for the claims to pass the step two analysis because that idea is much closer to the inventive concept described by the court. “The inventive concept described and claimed in the ‘606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Id. at 15. To be sure, it would be harder for such an articulation to fail the Mayo/Alice step 1 analysis, but it’s not immediately clear to me that it would.
Judge Newman’s Concurrence: Concurring in the result, Judge Newman wrote separately “to urge a more flexible approach to the determination of patent eligibility, for the two-step protocol for ascertaining whether a patent is for an “abstract idea” is not always necessary to resolve patent disputes.” Newman concurrence at 2. Judge Newman’s concurrence, while raising the academic question of whether there is actually an “abstract ideas” limit on the § 101 categories or instead whether questions of abstractness are fully resolved by application of §§ 102, 103 and 112, does not really offer much in the way of a path forward under current patent law. To the extent Judge Newman is suggesting that district courts should be able to deny 12(b)(6) motions when there are evidentiary disputes, then I would agree. But if she is suggesting something else, it is not clear to me how proposal would fit into the procedural constraints of Rule 12(b)(6) or current § 101 jurisprudence.
It is so simple. Bascom had the clever lawyers. Point. Nothing else to add. Justice system is what it is.
Another opinion by the Federal Circuit purporting to apply Alice with logic that, if applied to Alice, would have overruled Alice itself.
Obviously applying filtering on a remote server has advantages. It’s not a utility attack, its an abstract idea attack. Obviously filtering on a remote server wasn’t done before, it’s not an anticipation attack, its an abstract idea attack. It doesn’t follow that because there is a useful, obvious claim that that claim is inherently non-abstract, but that seems to be the logic here. I especially don’t get Claim 22, which recites a master whitelist, an account-specific blacklist plus an ISP server (i.e. conventional generic computer features). There is simply no way to square Claim 22 with Alice.
Let’s start here: please explain how/why filtering content on a remote server is an abstract idea (I realize that the Court provided a half-a$$ed, hand waiving reason for categorizing it as one).
Can you explain for us all how filtering data on the Internet is abstract? Does it fail to produce tangible results in the real world? (NOPE) Does it occur only in a person’s mind? (NOPE) Does it preempt all types of filtering of data on the Internet (NOPE). Is it taking a real-world process and saying “do it on a computer”? (NOPE)
Also, please don’t resort to anticipation or obviousness arguments when setting forth your argument, because you know, it’s an abstract idea attack.
BB: Is [using rules to determine who has access to data, wherein said rules are implemented on a computer] taking a real-world process and saying “do it on a computer”? (NOPE)
Pretty sure the answer is “YES” but I’d like to hear you explain how you arrived at your answer.
Note that not only is using rules to determine who has access to data a “real world process” but it’s also abstract and ineligible. And old. Even older than using two separate data processors to perform different data processing tasks (also pretty darn old).
Are those older than protons, neutrons and electrons?
Are those older than protons, neutrons and electrons?
No. Not sure what your point is, though.
But I’m sure it’s super serious! Share it with everyone. Because we all have to pay attention to you.
Because “objectivity.”
LOLOLOLOLOLOLOLOLOL
The poker tell of “super serious”…
Thanks for indicating that you have no reply on the merits.
Love the “Vinnie Barbarino” meme going on as well. Try focusing on the word “old” in your message and in my reply. Then remember my past explanations that the “Big Box of protons, neutrons, and electrons” is just an extension of YOUR “logic.” Follow your own “logic” where it must lead.
my past explanations that the “Big Box of protons, neutrons, and electrons” is just an extension of YOUR “logic.”
LOL Just spit out your explanation, “anon.” Tell everyone exactly what you’re talking about. Maybe it’ll make sense this time! Sure, that’s incredibly unlikely but there is a tiny tiny chance. Go for it. This could be a magical day for you.
Asked and answered Malcolm.
Try just a little critical thinking instead of that reflexive short script of yours.
Nice edits – viewpoint specific anyone?
Not surprised and this only worsens the perceptions that abound about the “editorial slant” that lets Malcolm run rampant for a decade (and yes, that is well documented).
the “editorial slant” that lets Malcolm run rampant
I wish.
The thread has been wrecked by the editing – a real cluster of “pick and choose” what to delete and some real CRP left behind.
Why not either simply give up with the edits or not have any comments? I don’t follow this board as much, but when I used to, I could not determine what the rules were regarding what got edited and what did not.
Or….
Maybe post and enforce rules uniformly.
You know – like an objective forum would do.
Not sure why you are LOL’ing – my advice seems pretty sound.
Maybe it is you that does not like the idea of objective rules actually enforced….
I could not determine what the rules were
No kidding.
I have indeed been deleting comments to this post where, in my view, those comments have run afoul of the guidelines that both Dennis and I have previously posted. Those guidelines address extensive meta-bickering, avalanches of comments in heavy succession, and excessive snarkiness. I’ve been using a relatively light hand on the comments and have not applied any conscious viewpoint bias.
Here are some prior posts and discussions on commenting guidelines:
link to patentlyo.com
link to patentlyo.com
Comments containing uncivil or excessive complaining about moderation will be treated under the same approach.
“Comments containing uncivil or excessive complaining about moderation will be treated under the same approach.”
Lulz I was wondering how long that would take to come into effect.
1984 was a long time ago.
😉
This is a good opinion for information processing. I am surprised it has taken so long to write a blog article on this opinion. The rest of us have been talking about this opinion for weeks and have already started putting the language in the opinion in our responses to OAs.
One thing in reading the comments below: I continue to see commentators judge information processing machines based on whether their brain could do the job and not how difficult it is to build a machine to perform the information processing. Illustrates a level of ignorance that invalidates anything the person says.
“judge… machines based on whether their brain could do the job”
This point has been stressed for years here in the comment section of the blog.
It is related to my coined term of Anthropomorphication.
It is also something that I have invited the blog owner to address with his academic pals concerning the debunked “mental steps” doctrine; an article showing what that doctrine actually entails, why it developed, its limited coverage, and its nascent (and co-opted) MISuse to further an anti-software agenda would be a HUGE help in actually returning this blog to merit the byline of “America’s leading patent law source” and to show that certain sAmeones here continue to attempt to obfuscate what is and what is not a machine or a machine component (and manufacture in its own right).
What perception is created when such a helpful LEGAL discussion is not initiated and instead we have the perpetual drive-by Windmill chases?
Jason: To the extent Judge Newman is suggesting that district courts should be able to deny 12(b)(6) motions when there are evidentiary disputes, then I would agree. But if she is suggesting something else, it is not clear to me how proposal would fit into the procedural constraints of Rule 12(b)(6) or current § 101 jurisprudence.
I think she is suggesting the former and it’s not unreasonable to do so. While it’s true that a lot of “do it on a computer” type junk can be — and should be — easily dealt with on the pleadings, in other cases the eligibility issue will present itself plainly only after the relationship of the claim elements — specifically the tangible claim elements — to the prior art has been established. In many such cases, establishing the obviousness of the tangible combinations will lead to a summary judgment motion for ineligibility that will write itself.
The underlying policy considerations are identical to those already established by the Supremes: you can’t tie up existing technology by salting claims with ineligible elements and vice versa. That consideration applies equally to anticipated and obvious technologies.
“Do it on a computer” patentees are of course going to play games like, e.g., pretending that their processor that performs logical task X “remotely” is somehow a structurally non-obvious machine versus the processor that performs the same logical task non-remotely. Or they will conflate the recited logic-processing functionality of the machine with the structure of the machine (a pass attempt that most judges on the CAFC now quickly smack down — they know a general purpose computer when they see one).
But the prior art is the prior art. Computers are really old. Computers connected to computers are really old (how many specifications define “remote”, by the way?). Wireless connections are really old. Portable computers — by any definition — now predate any enforceable patent claim. Anything that one computer can do locally, another computer can do remotely. That’s been true since computers were connectable, which is really old. Computers process data, using logic, following instructions that they are given. Computers don’t care about what the data “means.” They just process the data. This is just the tip of the iceberg of the background against which all “do it on a computer” claims should be evaluated and which nearly all “do it on a computer”claims should always have been evaluated. And what’s left after that, of course, is just logic, which is ineligible.
“ specifically the tangible claim elements ”
Yay optional form of claiming.
Otherwise, it seems like you want to make an inherency argument. Is that where you are going now?
And maybe you need a refresher that a machine is a machine (and not a human mind) – here, let me share my coined word: anthropomorphication.
You are welcome.
MM, let us just say that if a claim only calls for processing data, as opposed to using a computer in a larger machine or process, then I would suggest that the claim would not be patentable subject matter unless it was the kind of improvement that was specifically tied to improving the data-processing capabilities of the computer like in Enfish. The dividing line has to be whether the invention is directed to improving the computer or whether the invention is directed to using a computer to calculate something.
“Using a computer in a larger machine or process”
How about from 101: “or any improvement thereof”…? I do not see the extra requirement that you state here that some “larger” machine or process is required.
And if you are going to insist on looking at “using” rather than “manufacture,”** please update your views with the Act of 1952 and 35 USC 100(b), you know, the part of “includes a new use of a known process, machine, manufacture, composition of matter, or material.”
As I have previously explained Ned, your use of the statutory category just does not encompass the change with the Act of 1952.
** phrased this way because you still need to realize that software is not the execution of software.
Anon, using a computer in a larger process of course can be patentable subject matter. But you insist that the computer, when used in such a larger process, is an improved machine.
Look at it another way, when we are considering an improvement to the machine, surely it requires more than using machine for new application. As an example, consider the typewriter. The typewriter is not new when it is used to send Morse code to prisoners in the adjacent cell by rhythmic typing of the keys. However, modifying the keys in a way that it could both type and send Morse code would be a patentable improvement to the typewriter.
What part of 35 USC 100(b) are you not understanding, Ned?
Ned: The dividing line has to be whether the invention is directed to improving the computer
That’s a reasonable place to start if one insists on creating an exception for the ineligibility of logic. The problem, of course, is that arguments that a particular computer is “improved” in some context are trivially easy to make. Presumably the “improvements” you are referring to are “improvements” in data processing speed, as applied to all data, on all computers. Applicants should be gathering their data and looking closely at their claims so that their assertions about “improvement” are commensurate with the breadth of what is being claimed (that definitely didn’t happen in Enfish, which is a j0ke of a decision).
The other huge (and related) problem with this “improvement” “line” is the practice of reciting one object functionally (a “computer” — an apparatus that computes stuff, using logic) and then “modifying” that functionally defined object with additional functionality.
There is, of course, another line that our patent system has traditionally drawn to keep ineligible junk out of the system. It’s called “objective physical structure.” Of course, that would make some s00per rich people cry because of their precious “expectations.” And some patent attorneys might not be able to keep their vacation homes. Boo hoo hoo.
This is an example of objective editing…?
Developing some thoughts and recollections with regard to what was generic, routine, conventional etc. with regard to use of computer networking prior to the 1997 filing date of the BASCOM patent.
First some questions that might perhaps be pondered.
Is this BASCOM vs. AT&T case an instance where the moving party has failed to identify an appropriate “abstract idea” and develop the record for a compelling 101 summary judgment case? I note that the initial summary of the CAFC opinion states that “BASCOM has alleged that the claims of the ‘606 patent contain an ‘inventive concept’ […]. We find nothing in the intrinsic record to refute that allegation as a matter of law.” Maybe a differently-presented 101 summary judgment motion would have succeeded?
Secondly, where configurations of computer networks are indistinguishable on purely physical terms, should “abstract limitations” regarding “ownership and management of computers and computer systems”, “nature of business of owners” etc. carry patentable weight in distinguishing such networks? Would this impact, for example, the construction of “ISP server”?
Beginning the trip down memory lane…
In the 1970s teletypes were common but, at least be the late ’70s were being replaced by VDUs, later known as dumb terminals. Presumably they would not be classifiable as “local clients” for the purposes of BASCOM Claim 1. But graphics came in, at least into UNIX establishments, in the form of X Windows, and this required more powerful “X Terminals”. The intel 386 chips could handle UNIX operating systems, and therefore could serve as “X terminals”, and as a result, “terminal rooms” would become filled with “diskless PCs”, or sometimes PCs with their own hard disks, and these would surely qualify as “computers” in their own right and as local clients, so that the organization’s own servers could be regarded as “remote servers”, yet it would be on those servers that any email or other content would be accessed. Such content, if filtered, would therefore be filtered remotely. And indeed I know of a case where a university professor on sabbatical would regularly log in to his institutional account in Europe, both for email, and also to run his own programs, from research institutions in America. And surely where a server is on a different continent to the “local client”, it would surely qualify as a “remote server”. At least from the 1980s, it was routine for researchers to log in remotely to more powerful computers outside their home institutions over networks that later came together to constitute the Internet.
Trying to get a few more time points: ISPs AOL and Compuserve were certainly around in 1994 (three years before the filing date of the BASCOM patent): indeed I recall that Unisys started enforcing its patent on “LZW compression” required for the GIF image format in 1994. Also the term “spam”, as I recall, came into common use following Canter and Siegel in 1994.
Next the form of “content”. I note that exemplary claim 1 only talks about “Internet”, “content” and “filtering scheme”. Well, content in the early and mid 1990s typically took the form of USENET newsgroups, including the “alt” groups (perhaps not formally part of USENET), augmented by ftp sites. Certainly there were newsgroups such as alt.s00.p0000000 that distributed explicit content – so presumably there would have been filtering, for example by universities that did not wish their students to access such material.
The description of the “background” to the invention in the CAFC opinion seems very selective, reflecting a “home computing” scenario more characteristic of the years preceding the millenium in which PCs running Windows 95 and Apple Mac had become dominant, software in private homes was installed and run on “local clients”. But a fuller summary of Internet usage and network and computer configurations in the earlier part of the decade would indeed have shown the claim elements to be “generic”, “routine” and “conventional”, with the result that “filtering on a remote server” would seem less plausible as the required “inventive concept”.
WBIP, LLC v. KOHLER CO.
link to cafc.uscourts.gov
Favorite Quote:
The whole obviousness case presented by the defendant was based on hindsight. They simply found all the elements of the claim combination in the prior art. In the end, objective evidence, including the fact that the defendant had often been sued because its products poisoned people with carbon dioxide while the invention did not, overcame the defendant’s hindsight reasoning that the invention was obvious, a simple assembly of prior art elements doing what was expected of them.
Also, the defendant was found to have willfully infringed in part because the patentee was marking its product and because they were one of only two making that product in the market. The court also found the defendant’s defenses were objectively unreasonable.
Furthermore, the district court’s denial of an injunction was found to be an abuse. The district court denied the injunction because he thought it best that the market have at least two manufacturers of the patented product because it was life-saving in nature. The Feds said that this amounted to a per se rule that there must be at least two suppliers of the patented item. Per se rules violated eBay.
The Supremes said in KSR: “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” and the defendant puts into evidence that the government itself was prompting the variation.
The counter argument was, essentially, that the “work available” would not be considered the best work to start with, and that the conversion would be “a lot of work” (not experimentary work, just work). Secondary considerations absent invention will not make patentability.
I don’t think they came to the wrong decision in this case. But it does not justify the sweeping language they used that you quoted. The reason that “Too often the obviousness analysis is framed as an inquiry into whether a person of skill, with two (and only two) references sitting on the table in front of him, would have been motivated to combine (or, in Kohler’s view, could have combined) the references in a way that renders the claimed invention obvious” is because that is the correct thing to do. If the art knows of one reference and the art has a motivation and ability to modify it with another disclosed technique or feature, the modification is obvious.
The alternative conclusion put forward is “The real question is whether that skilled artisan would have plucked one reference out of the sea of prior art (Phipps) and combined it with conventional coolant elements to address some need present in the field (the need for low–carbon monoxide emission marine gen-sets). Whether a skilled artisan would be motivated to make a combination includes whether he would select particular references in order to combine their elements.” Common sense tells you this reasoning is wrong – it suggests that obviousness becomes a more difficult case to make the more the art knows, which by definition has to be wrong.
Under this logic, if the art knows of only 3 pieces of art, then it is obvious to combine 2 of them, because the “plucking” is easy. But if the art knows of the same 3 pieces of art in a “sea” of 10,000, the act becomes non-obvious. There is absolutely no basis in Supreme Court precedent for thinking like that, and it flies in the face of the fact that the PHOSITA has all the knowledge of the art. Simulating all the knowledge in the art requires, at a minimum (and I think it also allows for more than this) taking each reference and focusing on it and asking what naturally flows from the knowledge. In other words, rather than “plucking the reference from the sea” the references are delivered past the PHOSITA on a conveyor belt, and each reference spends some time in front of the PHOSITA to be considered for modification based upon analogous art. Supreme Court precedent makes clear that the more mature a field the harder it is to be non-obvious because the art has knowledge of different avenues of thinking. A PHOSITA doesn’t go “fishing” such that more “sea” knowledge actually renders things more non-obvious.
Asking what reference a person of skill would start with has the effect of limiting obviousness to wherever the art is trending, rather than limiting obviousness to what the art knows. It makes inventiveness synonymous with commercial success. If a theoretical PHOSITA would have known about a feature and been motivated and enabled to add it to a device, the result is obvious, regardless of if any human had done so despite the knowledge being out there for a period of time or enjoying commercial success for doing so. The standard isn’t what humans did but what the theoretical person could have seen as doable.
Random,
You are starting down your (wrong) path of not understanding the differences between 103 and 102 again…
“Common sense tells you this reasoning is wrong – it suggests that obviousness becomes a more difficult case to make the more the art knows, which by definition has to be wrong.”
Nah that actually could be correct in some rare cases. And indeed it becomes more common in my art every day now that there are like 30k references in near all of the major little sub-arts. Every app that goes in there then has to be considered with an eye towards what would actually be obvious to do in view of all the art known to the imaginary man, and consider that in relation to what was being claimed to do the whole analysis.
“But if the art knows of the same 3 pieces of art in a “sea” of 10,000, the act becomes non-obvious.”
Not necessarily, but it (the combo claimed in the claim) might be fairly judged to be non-obvious. It depends on the facts before you.
“There is absolutely no basis in Supreme Court precedent for thinking like that”
Sure there is, they already told you to consider common sense, and that POSITA is not an automaton.
“and it flies in the face of the fact that the PHOSITA has all the knowledge of the art.”
Nah bro it doesn’t “fly in the face” of that “fact” or “legal presumption”. Rather, it is the full acknowledgement thereof.
“Supreme Court precedent makes clear that the more mature a field the harder it is to be non-obvious because the art has knowledge of different avenues of thinking.”
That is generally the case, and was I’m sure the case in the specific case before the Court when they so announced that.
“Asking what reference a person of skill would start with has the effect of limiting obviousness to wherever the art is trending, rather than limiting obviousness to what the art knows”
Look at you, all learning things n shizzle up ins the hizzouse today. Picking up on leet wisdomz and all manner or craziness, all this very day!
“It makes inventiveness synonymous with commercial success. ”
Nah, that’s not really true, the art trends many ways that aren’t particularly commercially successful. Quantum computers is just one example among thousands. Still no commercial success, still plenty of applications related thereto. Probably half the applications I work on are work that is being done in a field that has 0 commercially successful embodiments to date. Surprising for me to find out, but it’s true.
“The standard isn’t what humans did but what the theoretical person could have seen as doable.”
Nah bro, it’s what was “obvious to do”.
Probably half the applications I work on are work that is being done in a field that has 0 commercially successful embodiments to date.
How many applications describe working embodiments that have been actually reduced to practice?
You know: embodiments that an “ordinary consumer” would actually buy if they were affordable, bug-free, and weren’t destined to be out-of-date after a month.
“How many applications describe working embodiments that have been actually reduced to practice?”
I can’t say for sure, but the amount that disclose that they actually reduced an embodiment to practice is probably 5% or less. That being said, 98%+ are fairly easy to implement to a skilled artisan. And with a million dollars, a lab and competent team I could probably implement near all of them myself, many I could do by my lonesome in a stocked lab (not that my embodiment would be any good lol). The one I’m working on today would be easy peasy to make, I’ve made harder things myself. It’s just a sub-part of a part of a device, which the device as a whole would be fairly time consuming to make, to say the least.
“You know: embodiments that an “ordinary consumer” would actually buy if they were affordable, bug-free, and weren’t destined to be out-of-date after a month.”
Mmmm, practically none. I work mainly on sub-parts of parts of machines that people would buy.
When did “have a working embodiment” make it into the law…?
Do you have something against the fully legal constructive reduction to practice?
Hypothetical question on “the real question is whether that skilled artisan would have plucked one reference out of the sea” –
Can you ever have an anticipatory reference that is not obvious? In other words, Ref A discloses the entire machine configured just as claimed. Ref A leads to a 102 rejection. Is there ever a set of additional facts which would cause Ref A to not also lead to a 103 rejection?
According to this line of thinking, the answer must be “Yes” because there must be a time that Ref A is so counter to the thinking at time of filing that it wouldn’t have been “plucked out of the sea.” If Ref A would always lead to an obviousness rejection, why talk about “plucking it out of the sea” instead of just asking if there is a motivation to modify Ref A with some other Ref B?
I agree, based on the jury’s findings, that one could come to the conclusion that Ref A was not motivated to add Ref B. I can come to the conclusion that A and B are not analogous to each other and therefore the claim is inventive because we dont even reach the motivation question. What I can’t do is buy into the logic that you can’t even start with Ref A as a starting point because while it is known it is too counter to current thinking.
“According to this line of thinking, the answer must be “Yes””
Whether it is yes or no the answer is irrelevant. Because that claim is anticipated, like you just told us.
Although yes, I have seen instances where a reference is stating to make x product and then there are plenty of other references stating that it would sux to make x product. Doesn’t much matter, x is anticipated.
The game that patentees in the computer-implemented arts are necessarily being forced to play is to pretend that the physical structures and apparati recited in their junk claims (separate from the abstract ineligible “use logic” junk0la) are linked together in a non-obvious fashion. To be more accurate, the linkage must not only be non-obvious if you want to extract some blood from your target, it’s got to be sufficiently non-obvious such that it can survive a 12(b)(6). That’s going to be a tall order in nearly every “do it on a computer” case, for reasons that should be (LOL) obvious to everybody.
It’s helpful to step away from the magical shiny world of c0mp00ters for a moment, as the mere mention of these logic-executing machines causes many otherwise intelligent people to believe they were born yesterday.
Let’s consider instead a new book. Books, as everybody knows, are manufactures. As such, absent any prior art, a new “book manufacture” is perfectly eligible subject matter, regardless of what’s in it. But common sense and the law (what a surprise that they work in unison!) requires that a new book manufacture not be examined in a vacuum. So consider the following claim:
1. A manufacture, wherein said manufacture comprises a plurality of pieces of paper bound together by glue on one side, wherein said pieces of paper comprise writing, wherein said writing tells a story about a purple parakeet with five wings and a beak that turns into a light saber.
That claim is ineligible. It’s directed to an abstraction (a non-obvious story about a parakeet) and there isn’t sufficient non-obvious structure to save the claim. There’s just a manufacture that’s already in the art. In other words, there isn’t an “innovation” in the claim that is protectable by a US patent. Is the “innovation” aluable? Sure, it might be worth zillions. Is the “innovation” an improvement over the prior art books? Of course it is — especially if you are entertained by super awesome parakeets that can fly around and chop your face off with its light saber beak.
Now, it’s easy to imagine an otherwise identical claim that has been modified to recite a bit more structure. Say, “wherein said manufacture comprises an upper and bottom covering, wherein said covering is made of a material at least twenty times thicker than said paper, and wherein said material is at least 90% wombat hide.” Assuming the art doesn’t teach a book bound with wombat hide, we have a potential obviousness issue. It’s likely possible that the argument for non-obviousness can be dispensed with easily under 12(b)(6). If so, then this modified claim would fail as ineligible under 12(b)(6) right along with it.
Straightforward stuff, folks. This isn’t rocket science. Not even close.
MM, “abstraction” is not the right term for the story. The story is simply non statutory subject matter, not being itself a machine, manufacture or a composition, nor a process involving the making or using of these.
The novelty of the story, the detail in its description, are all irrelevant.
Abstractness goes to the whether the discovery is reduced to a practical application and claimed as such, or whether even if so reduced, it nevertheless is claimed at such a level of abstractness that it embraces the principle and all its implementations.
The Supreme Court is engaging in what amounts to a legal fiction in declaring nonstatutory subject matter abstract in order to shoehorn this concept into its 1850’s era case law, which never directly addressed questions of people trying to claim business methods, mathematics and the like.
Ned,
Software is a manufacture by the hands of man. It is a machine component.
There is NO “story” – the canard of the non-useful arts is a (bad, very bad) smokescreen and nothing but pure dissembling.
A “machine component” completely devoid of objective physical structure.
Sure, that makes sense.
The claim being one of “objective physical structure is merely one OPTION of claim format.
But you already know that, right?
FURTHER – as I have previously noted, ANY software claim COULD very well be written in excruciating detail in full “objective physical structure” and run tens and even hundreds of pages long, with no possible human being able to actually read the claim.
Such a claim would be entirely equivalent to the Person Having Ordinary Skill In The Art to software claims written in a different – and fully legal – OPTIONAL format.
ANY software claim COULD very well be written in excruciating detail in full “objective physical structure” and run tens and even hundreds of pages long, with no possible human being able to actually read the claim.
Go ahead. “Too long for human to actually read” is already true of thousands of perfectly valid claims out there.
Did you know that computers can be used to compare data? Like text? It’s true. Super techn0 stuff.
LOL – and completely besides the point that your desire to make a mere claim format that is optional into some type of legal requirement – especially when it simply matters not at all given the proper understanding of legal equivalence and that claims are read by Persons Having Ordinary Skill In The Art
Or did you not want to focus anymore on what you are actually wanting to do with your “objective physical structure” argument? You know the one, the one about a mere optional claim form…
Maybe some more ad hominem from you will disguise the fact that you have NO LEGAL position to speak of with that argument.
Then again, nah, no it won’t.
Your view of “directly responsive” is a most odd view.
Those words just do not mean what you think that they mean.
But it isn’t completely devoid of objective physical structure. Why do you keep saying that it is?
The story is simply non statutory subject matter, not being itself a machine, manufacture or a composition, nor a process involving the making or using of these.
Depends on how you define “manufacture”, doesn’t it?
People manufacture stories all the time and they’ve been doing so for centuries. They also “prepare” arguments and “concoct” explanations.
Do you need a reprint of the simple set theory explanation of the exceptions to the judicial doctrine of printed matter, Malcolm?
Or would you merely run away from that yet again?
You do seem to run and hide from the simple set theory explication.
Almost as funny though as your own admissions against interests in that you have volunteered in past discussions in saying that you DO understand the exceptions to the judicial doctrine of printed matter as controlling law.
LOL yourself silly on that one – you “decimated” yourself.
Touche.
Since both “directed to” (or “Gist”) AND “Abstract” were not defined by the Supreme Court**, the entire “Gist/Abstract” sword mechanism really is Void for Vagueness.
** and we don’t even get to the (also undefined) “significantly more” item.
The Supreme Court scrivining of this (statutory) law leaves a lot to be desired 😉 – maybe they should leave the legislating to, like, legislators…
both “directed to” (or “Gist”) AND “Abstract” were not defined by the Supreme Court**, the entire “Gist/Abstract” sword mechanism really is Void for Vagueness.
The term “gist” just refers to looking past the typically excessive scrivened verbiage that litters the typical “do it on a computer” or “do it on teh Internet” claim. In other words, setting aside the jargon, what logical operation is being performed on what sort of information for what purpose?
The term “abstract”, of course, is defined in the dictionary. There’s nothing vague about it.
lol
“looking past the typically excessive scrivened verbiage that litters”
Maybe you need to brush up on the law and the all elements and claim as a whole ideas again. While you are at it, review 35 USC 112 and see if you can figure out who exactly gets to define the invention (hint: it is NOT a court that lops off any old “verbiage” that it so deigns.
I think you need a refresher on what is and what is not ignored in the exceptions to the judicial doctrine of printed matter.
Here is a prime example of an (unnecessary) editorial change that changes the content of the recorded conversation.
Newhart was laughing AT Malcolm because I had posted a factual observation of a Supreme Court decision regarding that Court’s direct decision to NOT define the term “Abstract.”
There was absolutely ZERO offensive material in my post.
Zero.
So why was it removed and now appears that newhart is supporting Malcolm’s post – when in actuality, the situation is the opposite…?
Hopefully “cleaned” enough to meet the “rules”:
You do NOT get to insert “use a dictionary” precisely because the Supreme Court refused to do so.
Try reading the decision.
Again.
Without your [typical and oft-stated bias].
Does that doctrine even apply to court decisions? Or are you saying the statue is void for vagueness?
Great question, Poe.
Let me ask you one first though: Did the Supreme Court write new law?
I ask to make sure that we are talking about the same thing. But here is a spoiler anyway: yes, the doctrine applies to court decisions.
Bascom is a fantastic decision. I disagree with the Court’s analysis on step-one. They abstract too far when the say Internet filtering is just like other filtering; that’s obviously non-sense. However, I’m glad they continued to step-two and finally offered help there. The one area that Examiners/Judges completely ignore is any analysis of the claims as an ordered combination. They hand wave right over it every time.
Worse yet, the current approach for ordered combination “analysis” reeks of obvioussness-type analysis, but without motivation to combine (another thing Bascom called out). I think what the Court was hinting at, is that ordered combination analysis requires deferential improvement analysis. The term “improvement” was mentioned many times throughout the decision. Claims should be given deference with respect to 101 if they recite or are directed to an improvement: too deep analysis yields 103-type analysis which is improper. Hopefully Bascom corrects this mess.
What (exactly) does “improvement” mean?
Innovation is not linear and it is a well documented fact that many disruptive innovations are actually seemingly backward steps at first (but have higher sloped ‘improvement’ rates).
If not careful with this notion of “improvement,” the very thing most highly prized (disruptive innovation) will be lost.
As I have previously noted, the proper analogy is a parking lot versus a street system. Most people (shallowly) thinking of improvements think that innovation is ‘of course’ linear and can be mapped out ahead of time (the street system analogy).
It just is not so.
Innovation is messy and unpredictable, and it is in the W I D E S P R E A D promotion (the parking lot analogy) that BEST serves as the model to guide protection.
This is precisely why 101 was written to be – and is properly understood to be – a wide open welcoming gate.
a wide open welcoming gate.
Except it’s not an actual gate, it’s not “wide open” and it never was.
It IS wide open.
There are but two requirements per the words of Congress:
1) Fit into at least one category (these being very loose categories, by the way)
2) Be of the right utility (as in, be a part of the Useful Arts).
And that is ALL that Congress wrote on the “gate” of 101.
You have an issue with software and business methods not fitting into these two things?
That would be a “You” problem.
That’s a good point. Very good point. Describing what is an “improvement” comes with the premise that it’s an improvement with respect to what’s already known. What’s unknown but still will be a future improvement is impossible to predict. 101 analysis that analyzes “improvements” likely ignores the giant parking lot of -potentially very useful- unknown improvements.
But what else can we do at this point?
Alice has really screwed things up, and focusing on improvements helps or is at least a concrete analyzable-step. Versus the current approach of assuming inventing is easy-peasy and assuming ordered combinations do not matter, and under 101 nonetheless!
I hope 101 gets abolished, it’s not helpful…but I’m not holding my breath.
the current approach of assuming inventing is easy-peasy
“Innovating” “new” contexts in which to apply to logic is easy-peasy. There’s nothing easier.
That’s one of the reasons that logic is ineligible for patenting.