Affinity Content Distribution Scheme – Abstract Idea

Affinity Labs v. DirecTV (Fed. Cir. 2016)

The Federal Circuit here affirms that Affinity’s challenged claims invalid as directed to an abstract idea.  when “stripped of excess claim verbiage”, Claim 1 of U.S. Patent No. 7,970,379 “is directed to a broadcast system in which a cellular telephone located outside the range of a regional broadcaster (1) requests and receives network-based content from the broadcaster via a streaming signal, (2) is configured to wirelessly download an application for performing those functions, and (3) contains a display that allows the user to select particular content.” Slip opinion.

Alice Step 1: Considering these limitations and the claim’s “character as a whole” the court identified the concept of “providing out-of-region access to regional broadcast content” as an unpatentable abstract idea.  The court explained its conclusion by noting that the practice (1) has been long employed in media distribution; (2) is not tied to any particular technology; and (3) could be implemented by very low-tech technology such as via mail.  The court went on to explain that (4) nothing in the claim “is directed to how to implement out-of-region broadcasting on a cellular telephone. Rather, the claim is drawn to the idea itself.” And, (5) unlike in Enfish, the claims are not directed to “an improvement in cellular telephones but simply to the use of cellular telephones as tools.” Taking all these together, the court found the claim was in fact directed to an abstract idea.

Alice Step 2: Step two of Alice indicates that a patent directed to an abstract idea is patent eligible if it claims “additional features” that constitute an “inventive concept” that go beyond “well-understood, routine, conventional activity.” Mayo. Here, the court found no such additional features. “The claim simply recites the use of generic features of cellular telephones, such as a storage medium and a graphical user interface, as well as routine functions, such as transmitting and receiving signals, to implement the underlying idea. That is not enough.” Slip Opinion at 15-16.

= = = = =

Claim 1 below – seen was used as representative for the analysis:

1. A broadcast system, comprising:

a network based resource maintaining information associated with a network available representation of a regional broadcasting channel that can be selected by a user of a wireless cellular telephone device; and

a non-transitory storage medium including an application configured for execution by the wireless cellular telephone device that when executed, enables the wireless cellular telephone device:

to present a graphical user interface comprising at least a partial listing of available media sources on a display associated with the wireless cellular telephone device, wherein the listing includes a selectable item that enables user selection of the regional broadcasting channel;

to transmit a request for the regional broadcasting channel from the wireless cellular telephone device; and

to receive a streaming media signal in the wireless cellular telephone device corresponding to the regional broadcasting channel, wherein the wireless cellular telephone device is outside of a broadcast region of the regional broadcasting channel, wherein the wireless cellular telephone device is configured to receive the application via an over the air download.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

174 thoughts on “Affinity Content Distribution Scheme – Abstract Idea

  1. Does anyone know which case the Federal Circuit was quoting from at the bottom of page 6 of the opinion. The Court states that “The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ . . .” Any idea where this is coming from? No citation was provided. I don’t remember the court every saying that we look at prior art under step 1. The next citation in the opinion was to Elec. Power but that language was not found in that case.
    Thanks,

    1. Mike, the Supreme Court has historically looked to the substance of the claimed invention so as to focus in the patentable advance. This is why the courts have excluded insignificant activity appended to otherwise ineligible subject matter. The first case that said this that I am aware of is Flook. But it is a common theme.

      Mayo gave us the analysis that one needed to apply subject matter that was otherwise ineligible, in that case, a law of nature, to some inventive application. Alice took this analysis to apply it to the “abstract” prong of the tripartite exclusions: natural phenomena, laws of nature, and abstract ideas.

      1. substance of the claimed invention” aka “Gist of the invention” aka dozens of other names – EXPLICITLY rejected by Congress in the Act of 1952, wherein they opted instead to create and implement obviousness in 35 USC 103.

          1. Absolutely Ned. – and Congress acted in 1952 in response to an out of control Supreme Court to constrain the Court’s failure to set the meaning of “invention” (and alll of those terms pertaining to thus, like “Gist of the Invention”) as I have detailed for you time and again.

            Maybe YOU should listen….

      2. Ya I got that part. What I don’t understand is why it’s being applied in step 1. My understanding is that any novetly, if relevant at all, comes in under step two. I’ve never seen a court say that step 1 requires us to compare the invention to “prior art.” Do examiner now need to cite prior art to support a rejection under step 1 (and 2) of alice?

        1. Mike,

          This is being “scriven” on the fly – how is anyone supposed to know?

          (Sort of like leaving key terms like “Abstract” and “significantly more” purposefullly undefined…)

        2. Mike, good question indeed.

          I think still think the courts are confused on this issue.

          For 101 purposes, first step should be whether the claimed subject matter includes patent ineligible subject matter. If not the claims should certainly pass 101. It simply cannot be that all claims are directed to ineligible abstract ideas.

          If the claim does include such subject matter, such as a law of nature, math, business method, etc., step 2 becomes important. But, except for Enfish, the courts seem to simply say that X subject matter is patent ineligible subject matter without really explaining why, except by analogy to prior cases. They have now given us, in these Affinity cases, the following:

          Step 1 ineligibility: The claims are not directed to

          1) solving a technological problem; or
          2) to an improvement in computer or network functionality.

          Actually, the second seems a species of the first, not so?

          During step 2 we ask, is there an inventive application. If so, the claim is patentable. But if there is an inventive application, couldn’t or shouldn’t the claims pass step 1 as well?

          1. …and once again, you misstate the law as it is today with your curse-ade against business method patents….

            Time for a little inte11ectual honesty there Ned.

  2. My s00per d00per claim recites more more sensors that collect more data that is processed faster by more s00per shiny comp00ters!

    Can I haz patent now?

    I hope so because otherwise nobody will invent anything anymore.

  3. I Invented That, question for you, since you’ve been very big on “Well 112 applies, use 112.” Let’s take the prominent WD case of Lizardtech.

    Lizardtech dealt with software. One of skill finds coding to be a merely clerical act – i.e. once you know what you want to code, at least for information processing like this is, the coding is trivial. Thus enablement is generally met.

    Lizardtech had Claim 1, which was limited by “maintaining updated sums” and “periodically compressing the sums.” Claim 1 was not infringed because the defendant did not do those things. Claim 21 lacked those limitations, and thus the defendant was infringing. Claim 21 was found to lack written description support, because the specification provided only one manner of achieving seamless DWT – by maintaining updated sums.

    The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification. The specification provides only a single way of creating a seamless DWT, which is by maintaining updated sums of DWT coefficients. There is no evidence that the specification contemplates a more generic way of creating a seamless array of DWT coefficients.

    In other words, the court recognizes that Claim 21 is overbroad of the disclosure because the disclosure is directed to a specific means and Claim 21 is directed to a genus.

    The court then goes on to say this: “A claim will not be invalidated on section 112 grounds simply because the embodiments of the specification do not contain examples explicitly covering the full scope of the claim language. See Union Oil Co. v. Atl. Richfield Co., 208 F.3d 989, 997 (Fed.Cir.2000). That is because the patent specification is written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed.Cir.1995). Placed in that context, it is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention and to enable such a person to make and use the invention without undue experimentation.

    So the court says that merely using inductive reasoning is insufficient. A person can take an example, and then abstract out as much as they want until the defendant can present evidence and argument to convince a fact finder that 112a isn’t met. A species supports a genus until there is evidence that it does not according to the federal circuit.

    Now here’s a portion of O’Reilly v. Morse, providing logic that sounds in 112a:

    For aught that we now know some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff’s specification. His invention may be less complicated — less liable to get out of order — less expensive in construction, and in its operation. But yet if it is covered by this patent the inventor could not use it, nor the public have the benefit of it without the permission of this patentee.

    Nor is this all, while he shuts the door against inventions of other persons, the patentee would be able to avail himself of new discoveries in the properties and powers of electro-magnetism which scientific men might bring to light. For he says he does not confine his claim to the machinery or parts of machinery, which he specifies; but claims for himself a monopoly in its use, however developed, for the purpose of printing at a distance. New discoveries in physical science may enable him to combine it with new agents and new elements, and by that means attain the object in a manner superior to the present process and altogether different from it. And if he can secure the exclusive use by his present patent he may vary it with every new discovery and development of the science, and need place no description of the new manner, process, or machinery, upon the records of the patent office. And when his patent expires, the public must apply to him to learn what it is. In fine he claims an exclusive right to use a manner and process which he has not described and indeed had not invented, and therefore could not describe when he obtained his patent. The court is of opinion that the claim is too broad, and not warranted by law.

    In the Supreme’s view, the problem occurs *when the inductive reasoning is made.* This is because if the inductive act is allowed to occur, inventors who develop a better mode which falls within the patent may be dissuaded, and if he personally discovers a better mode falling within the scope he would lack incentive to disclose.

    The law under 112a is essentially that a defendant must counter-invent: He must find an embodiment that falls within the genus scope that he can argue was outside of the possession of the patentee at the time of filing. The defendant has a burden to show that the species/genus difference is relevant to prevent the patentee from being, essentially, unjustly enriched.

    The logic of the Supremes under 101, though similar to 112 as it is ultimately based upon what the patentee proved to have invented, is different: The dangerous act is the unsupported inductive reasoning. The question is not whether it ultimately ends up being proven as overbroad (i.e. someone can prove under 112a that they have an entirely different means which achieves the function), the question is whether the claim by the patentee *raises that threat.* One of the chief reasons is that the patentee himself may be the best inventor, and if he is given an overbroad scope initially he has a diminished incentive to provide further disclosures to the public.

    Isn’t that a qualitative difference in the standards? For a 112a rejection you have to counter invent (now it may be that you have, in fact, already counter invented because you’re selling an infringing embodiment that uses a different means of achieving the function; so in many cases a 112a will be tailor-made) to meet your burden, but under 101 the mere fact that the abstraction was used was sufficient to tank the claim. The *threat* of an overbroad claim is sufficient under Supreme Court logic for 101. The *actual unjust enrichment* is the danger under the Federal Circuit’s 112a. Notably absent from the FC’s logic is that people may be dissuaded from research into an overbroad scope, or that the inventor himself would be dissuaded from disclosing a different manner of achieving the function.

    So let me ask this – Is your contention that 112a is the only standard by which a claim should be judged? Or is your contention that 112a should be the only standard, but it should be modified to accept the Supreme Court’s logic that the threat is sufficient? The Supremes have trouble with the inductive act itself, is that a valid concern or not? If not, why does the FC’s view prevail over the SCs?

        1. Speaking of windmills, anon, you put your faith in Congress when Congress gave us the AIA. We all know that Congress does the bidding of the highest bidder. It is a corrupt institution from top to bottom. The only institution in America that is not corrupt is the court system. And I would not put the Federal Circuit squarely into the court system because it is not a court of general jurisdiction.

          1. Unfortunately you are correct that the current Congress gave us the AIA and is suspect as to doing the bidding of the highest bidder.

            Citizens United is certainly part of that blame, where in mere juristic persons can have their “voices” amplified by the amount of contributions.

            BUT THAT DOES NOT CHANGE THE PROPER RELATIONS of the different branches of government, and the Constitutional allocation of power to write the statutory law that is patent law.

            That certainly does NOT open the door for any type of “Ends justify the Means” and allowing the separation of powers to be violated with the Court writing statutory law (EITHER implicitly or explicitly).

            Your view that the court system has escaped corruption is simply far too simple and polly anna.

            Your faith is as equally – if not more so – misplaced BECAUSE you are willing to brook violation of the checks and balances and you are only too willing to turn a blind eye to a TOO powerful court based SOLELY on the alignment of the Ends to your Windmill chases,

            Read again the warning from Sir Thomas More as you mow down the proper checks and balances of the law and then stand before the Devil of the Supreme Court.

    1. Pilgrim, one even wonders why the inventor of any business method would clutter the claim with any particular technology. Only makes proving infringement that much harder.

  4. nothing in the claim “is directed to how to implement out-of-region broadcasting on a cellular telephone

    Next time just throw in a limitation about applying some rules (“if broadcast object attribute value meets predetermined criteria”) at a particular time (“upon selection, when the cellular device is out of region”). Then you’re golden. See McRo.

    Yes, it’s a farce.

  5. 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.” – i.e., move along to Sects. 102, 103, 112.

    1. You should try typing it in all bold with caps. It makes a huge difference! And then pretend that you don’t understand basic logic and how it works.

      Just ask “anon.” He did that for years here. He totally changed the minds of, like, one out of every seventy Federal law clerks.

      1. MM – I may even agree with you on many many patents that are “junk” (to use the parlance of our times) – but you are wrong here. Thankfully there is a fair amount of turnover destined for the high court.

        1. Thankfully there is a fair amount of turnover destined for the high court.

          Is there some reason to believe that not enough “do it on a computer” patents are being granted? Or that there is some technology (e.g., robot cars) that would promoted “better” by granting more junk “use logic to process this information, with the assistance of an ancient tool for applying logic to information” patents?

          You think newer, younger judges are going to be more “hip” to granting more “do it on a computer” junk? Or more inclined to chuck out unanimous Supreme Court decisions because of some d.o.a. arguments about “statute says so!” that ignore centuries of common sense and basic reasoning?

          Well, I suppose you can believe just about anything then. Maybe the patent-worshipping aliens will land and take over the brains of all the Justices tomorrow. That would get your job done marvelously fast.

          1. The answer to your first question, MM, is no – I don’t want more junk. The answer to the second question is – I think the court should follow the statute rather than make new law when the statute can be used in an intellectually honest way as-is to deny patentability for junk patents.

            1. I think the court should follow the statute rather than make new law

              This is recycled nonsense that gets you nowhere.

              The statute doesn’t say that information or logic or “functionality” is eligible for patenting. So how did we get to the point where people are protecting information and logic and “functionality” with patents? The answer is that the CAFC made that possible by “creating new law.”

              So where are all your objections to that?

              It should go without saying that, in a perfect world, every statute would be written to expressly address every possible fact scenario that could ever possibly exist. But we don’t live in that perfect world and we never will. We live in a system where we have a Supreme Court comprising a bit less than a dozen men and women who interpret the law and who are tasked with keeping the lower Federal courts in line. You should feel free to object to the level of imperfection all you like (I do!) as well as the specifics but simply stamping your feet and screaming “statute says process!” is a non-starter.

              Tell us how you’d re-write it to get what you want, and show everyone that you’ve considered the practical realities, not to mention recent history.

        2. Also, iit, in the interest of finding some “common ground”, I don’t have a problem per se with using some form of “patent”-like system to protect the work of people who program computers. But I strongly object to the status quo where we have a patent system bent out of recognition to serve the interests of a class of “innovators” trying to protect the application of rules to information. It’s a farce.

          So go ahead and propose something practical and workable. I’m all years. You might want to start with a comprehensible explanation of how an algorithm that is eligible for your protection in your new-fangled system needs to be presented, and then explain how it’s examined in view of prior art algorithms. The floor is yours! I’m sure you’ve thought about this a lot.

          1. I don’t need to think about this a lot because the person that re-drafted the patent statute back in the 50’s was a bit more experienced and intelligent that the likes of us here. Thankfully this person created Sects. 112, 102, 103 that inform whether a patent is valid, and can be used to invalidate the “junk” you despise in an objective and intellectually honest way.

            1. I don’t need to think about this a lot because the person that re-drafted the patent statute back in the 50’s was a bit more experienced and intelligent that the likes of us here.

              LOLOLOLOLOLOLOL

              Bow down, everyone! Our intellectual masters have spoken.

          2. the application of rules to information

            Sort of like the “rules” of physics to the “information” derived from the placement of lines on measuring cup, or the applied mathematical “rules” to the “information” of the placement of numbers on a hat band…

            Oopsie for Malcolm (and those are not even software…)

            1. Sort of like the “rules” of physics to the “information” derived from the placement of lines on measuring cup, or the applied mathematical “rules” to the “information” of the placement of numbers on a hat band…

              Please please please let’s hear more about these awes0me and s00per thoughtful opinions. When did the Supreme Court write them? Remind everyb0dy.

              1. I do not think that you need to hear more, given as you have already volunteered admissions as to knowing and understanding the controlling law.

                It is funny though that you seem to want to implicate the Supreme Court.

                Now, why could that be?

    2. “Whoever invents or discovers ANY[!!!] new and useful process,
      machine, manufacture, or composition of matter,

      Except not being categorically outside one of the classes does not mean one falls within the class. “Process” is a term of art. Simply because something is a series of steps does not make it a “process” under 101. See Bilski v. Kappos, 130 S. Ct. 3218, 3229.

      Same thing with the other categories – a “composition of matter” is not “everything physical” even though that would be the lay definition of a composition of matter. In fact, if you used the lay definition of “composition of matter” you wouldn’t need the words “machine” or “manufacture” – as you can’t have a machine that isn’t composed of matter.

      1. By the way, if you take all the words at their face, lay value, why is there a separate statute for plant patents (35 USC 161) when a plant is clearly a “composition of matter”?

        1. Plant patents are different from utility patents (which are also available to protect engineered plants, btw). There’s different disclosure requirements and unique limitations on what you can protect with a plant patent.

          There’s a special statute just for these particular patent rights because (shocking!!) somebody recognized that special requirements and limitations should apply.

          Thus far nobody’s figured out how to tr0ll them and I dont’ recall any patent attorneys’s wives sitting around at firm holiday parties scheming about how to get rich by cashing in on the chia patent craze.

  6. The knee jerk reaction to this claim being invalid on this blog probably finds its origins in Section 103 – obviousness, not subject matter eligibility under Section 101. Does the claimed invention provide any useful benefit? – Probably. Is the claimed subject matter made by man? – Yes. Then the claim is patent eligible under Section 101. Move on to 112, 102, 103 analysis.

    1. Does the claimed invention provide any useful benefit? – Probably.

      That’s not the test for eligibility. That’s the test for utility.

      s the claimed subject matter made by man? – Yes. Then the claim is patent eligible under Section 101.

      ROTFLMAO! The unfrozen cavemen lawyer walks among us.

      1. Are you saying that utility is not part of the 101 analysis?

        ‘Cause that seems contrary to your position of yesteryear…

        ….and another pendulum begins to swing back…

        1. Are you saying that utility is not part of the 101 analysis? ‘Cause that seems contrary to your position of yesteryear…

          Let’s see here. Something that I didn’t actually say “seems” (to Les) to be contrary to some “position of yesteryear” that I allegedly held.

          I guess I’m not terrible concerned.

          1. You didn’t say “That’s not the test for eligibility. That’s the test for utility”?

            And by saying that you weren’t that: Does the claimed invention provide any useful benefit? – Probably. Is the claimed subject matter made by man? – Yes. Then the claim is patent eligible under Section 101. Move on to 112, 102, 103 analysis” should not have included a consideration of usefulness leg?

            Then what ever did you mean?

      2. …unfrozen caveman …?

        Coming from the guy that wants to treat software as some form of “magic” in regards to the inherency doctrine of [Old Box]…?

        Oh wait, this is Malcolm, and his usual CRP number one meme** of AccuseOthersOfThatWhichMalcolmDoes

        **with its siblings of ThatWhichMalcolmIs, of course.

    2. Does the claimed invention provide any useful benefit?

      For the heck of it, I’ll hold your hand and walk your through the problem with this kindergarten grade “analysis.”

      The problem is that pretty much any claim that recites an old useful communication manufacture (e.g., a book, or a cell phone) provides a useful benefit, regardless of what other elements you add to the claim. Your “test”, then, is worthless from a practical point of view because we know (for example) that you can’t patent useful “new” book based on the “new” information that it communicates to readers. Perhaps you want to introduce some “illegal” “judge made” “doctrine” to rescue your test from this infirmity? Be sure to tell everyone exactly how that “doctrine” works. I’m sure you’ve thought about this a lot already.

        1. Your Alice test is the wrong path

          It’s certainly on the right path. There’s really no serious question about that (I’ve heard lots of whining, for sure, but nobody has raised a serious challenge to the fundamental problem addressed by Alice which is lawyer’s scrivening ineligible subject matter into “do it on a computer” silliness).

          Feel free to quibble about the details and uncertainty on the margins. But the basic logic of Alice isn’t going anywhere, ever.

            1. “But the basic logic of Alice isn’t going anywhere, ever.” – I’ll file this one away.

              Go right ahead.

              Try to also file away the fact that we already conducted the experiment with “patent everything”. It was an unprecedented and unmitigated disaster that the system will be struggling to deal with for years.

              On the other hand, some lawyers and some already wealthy people made tons of money! Everybody knows that the American public loves that outcome more than anything else.

      1. MM – the statute says: “any useful improvement thereof” – so your comment below walks right into the fire:

        “The problem is that pretty much any claim that recites an old useful communication manufacture (e.g., a book, or a cell phone) provides a useful benefit, regardless of what other elements you add to the claim.”

        1. the fire:

          There is no “fire.” There’s a statute, and that statute has been interpreted by the Supreme Court using basic principles of statutory interpretation, including the recognition of exceptions that existed prior to the enactment of the statute that were never disavowed by Congress.

          Did Congress say you can scriven your way around a basic prohibition (e.g., information is ineligible for patenting) by drafting your claim in the form of an “improved process”? No, they didn’t say that. They wrote a statute that has been intepreted and it doesn’t mean what you wish it meant.

          So there is no “fire.” There is just a legal problem that you have to deal with using arguments that aren’t d.o.a. Did you really learn nothing from Prometheus v. Mayo? C’mon, man.

              1. I am not the one that needs to try harder.

                The point I made is in simple and direct English (you know, what you are always going on about).

                Try some inte11ectual honesty with the that “statutory construction without a statute” thingy.

                1. The point I made is in simple and direct English

                  You asked a question and I don’t know what point you’re trying to make. It certainly wasn’t a direct point. And I doubt it’s simple, unless it’s simply wrong.

                  As I wrote already: try again. It’s hilarious that you continue to believe you’re the most articulate person in the room when everyone here knows you s*ck at writing.

                2. The point IS simple – you cannot have “statutory construction” without a statute to begin with.

                  You seriously needed to be told that…?

                  (there is no “most” about my posting – but criminy Malcolm, you are the opposite of that “most”)

      1. Apparently from the Court, as those two ARE the two requirements in 101, and (apparently) the Court is still looking for “something more.”

        1. Anon: From the court…

          Truly anon, you constantly harp about the statute this and the statute that, the statute this and the statute that, the statute this and the statute that…. The statute requires a lot more than just utility and being made by man. For example, the statute requires that the things made by man be and are limited to “machines, manufactures, compositions.” Surely you do not think that music is one of these even though music is made by man?

          1. Ned – The statute in 101 ONLY requires two things (within 101).

            That is utility and being within one of the statutory categories.

            THAT IS ALL.

            I have shown you the words of Congress that take your “philosophy of new in 101” and dispels that attempt of yours.

            The Court DOES have a role of interpretation – but they have gone far beyond that role. They have done so because of their addition to power and the power PREVIOUSLY granted to them by Congress to set the meaning of the word “invention.”

            But that power was stripped away in the Act of 1952 and the creation NOT only of 101 – but of the separation and creation of 103 which removes that aspect of “setting the definition of invention” and INSTEAD created the notion of obviousness.

            ALL that we see now with the Court and its pretending that the Act of 1952 “merely codified” (when Congress itself was explicit about the waywardness of the “recent court”) is the addiction to power and the corruption of that addiction.

            You ploy here with an incomplete statutory rendition – leaving out one of the categories (because of your desire to have THAT category be merely s sub-category – and this goes along with your refusal to fully recognize what Congress did in 35 USC 100).

            You further ploy the canard of non-Useful Arts – as if my long and well understood position allows such a canard (it does not).

            Stop the canards Ned. Stop the dissembling. Embrace the fact that my position FULLY and accurately reflects what Congress itself did in 1952 (and importantly WHY Congress reacted against a Supreme Court that had become TOO anti-patent).

            All you have to do is actually give credit to my arguments, embrace what I have actually stated and not run away from the counterpoints that I have presented (your choices of exactly when to stop our discussions).

            You do these things – and you do them with inte11ectual honesty – and you will see that I am – and have been – absolutely correct in every single thing that we have discussed.

            That choice remains yours.

  7. nothing in the claim “is directed to how to implement out-of-region broadcasting

    You could reduce over half of the Alice cases to just this statement. “Oh your invention is directed to performing a function? Do you limit the claim to how you posit performing the function?” Not limiting the claim to a particular means makes the scope synonymous with the field. Not limiting the claim also creates a written description problem because disclosure of a species for performing the function does not support the genus of performing the function.

    Claim language: including an application configured for execution by the wireless cellular telephone device that when executed, enables the wireless cellular telephone device

    There’s so many bad software claims out there that just talk about functional results. I have an application where it literally claims “Writing a function to achieve [the desired novel result]” Guess what the response argument is? “One of skill is enabled to write such a function” :)

    1. Your presence on the thread actually discussing this aspect (outside of 101) – or rather, your absence – has been noted.

      :-0

    2. RandomGuy – your “how” point is well taken, and should be analyzed under Sect. 112 to answer the question of whether the inventor had intellectual possession of the invention.

      1. iit should be analyzed under Sect. 112 to answer the question of whether the inventor had intellectual possession of the invention.

        Intellectual possession? Is that a term of art?

          1. So what does it mean and how do we know when a s00per awesome “innovator” has “intellectual possession” of his “display this particular information on a device designed to display information” claim, or his “carry out these particular information processing rules on a device designed to carry out information processing rules”?

            Tell everyone.

              1. You look to Sect. 112, and apply that law MM.

                LOL

                Deep, deep stuff. I remember when the software patent luvvers used to argue that 103 was the answer to everything. Then you’d ask them how it was supposed to work in practice to address the junk at issue and they’d do this same silly dance.

                But, sure, now the script says 112. And nobody’s every addressed the silliness of applying 112 to functionally claimed “apply logic” nonsense before! It’s like a whole new concept nobody’s ever considered. Keep telling yourself that.

    3. Why is this not “how” : including an application configured for execution by the wireless cellular telephone device that when executed, enables the wireless cellular telephone device ?

      Instead of a phone app, one might imagine it down by using a program on a computer, isn’t that a different “how”. Then the claim is not synonymous with the field is it?

      Or are you saying that the field is what ever the claim encompasses?

      Well, if that is what you are saying then all claims are “synonymous with the field” and therefore ineligible…. and you have to get a real job…

      1. Why is this not “how” : including an application

        Instead of a phone app, one might imagine it down by using a program on a computer, isn’t that a different “how”.

        Because one of skill would recognize that there are appreciably distinct means of achieving the functionality despite the limitation (i.e. the location of the application) that was placed on it. Contrast it with, for example, Enfish, which was construed to cover only a particular manner of achieving the functionality.

        Some things are not directed to a field. Many things are directed to a field, but contain significantly more limitations that save the claim. Others do not and are ineligible.

        1. nstead of a phone app, one might imagine it down by using a program on a computer, isn’t that a different “how”.

          Last time I checked, “apps” were computer programs.

          This really isn’t r0cket science, folks.

    4. Random, when the invention purports to be in the business method, why in the world would anyone prior to Bilski/Alice clutter the claim with very specific technology. That defeats the purpose.

        1. Because Random seems to think that people claiming business methods could get those claims allowed if the claim claimed technological specifics about how the particular business method was done, when we all know that if the inventor thought he was claiming some new technology, he would have done that directly without mentioning anything about the larger business method.

          When, as here, the inventor really one to claim listening to remote content on his cell phone, trying to describe details about how to do that, for example by providing virtual tunnels through the multiple domains of the Internet, would have defeated the purpose of claiming a business method.

          1. when we all know that if the inventor thought he was claiming some new technology, he would have done that directly without mentioning anything about the larger business method.

            Absolutely wrong.

            Your attempt here is to recharacterize the discussion. You do this improperly.

  8. As is nearly always the case, there is a much simpler way of understanding why the claim at issue is a pile of junk.

    This element:

    a graphical user interface comprising at least a partial listing of available media sources on a display associated with the wireless cellular telephone device, wherein the listing includes a selectable item

    and this element:

    resource maintaining information associated with a network available representation of a regional broadcasting channel that can be selected

    are quintessential examples of ineligible crxp. Does the rest of the claim include anything that isn’t old? Nope. Phones with displays interoperatively connected to “network resources” were old. Of course information can be “maintained” on the resources. Of course information can be displayed on the cell phone’s display. It doesn’t matter where the information comes from or what the information means. You can’t use patents to protect the information that’s sent back and forth between a cell phone and a “network resource.” Allowing rent-seeking on such junk defeats the whole point of cell phones that are connected to “network resources” and it doesn’t matter at all that some other types of information (“lists of availale music sorted by artist hair color!”) aren’t “preempted” by this particular junk claim.

    That’s the beginning, end and middle of the eligibility analysis. It’s not difficult to understand or follow.

    Now if only the PTO and the CAFC could wrap its tiny brains around the fundamental issues they wouldn’t look like bumbling incompetents wandering about the stage in a tragic farce. But I suppose they’ll continue talking two baby steps forward and then shooting themselves in the face until the Supreme Court sets them straight. Again.

      1. your parsing has left out the “claim as a whole”

        Setting aside for the moment the fact that this “claims as a whole” language is manufactured by the judiciary and therefore — according to your own “logic” — completely illegal, you’re still completely wrong.

        In fact, the whole entire claim was considered in my analysis. Only an illiterate or an intellectually dish)nest h@ck would read what I wrote and conclude that I found the claim ineligible simply because “it recites an ineligible element.” That’s not my analysis at all.

        Likewise, only a pedantic born yesterday would require me (or anyone else) to provide “evidence” that “cell phones connected to networks” predated this filing, or (worse) require me to explain why there’s nothing else in the claim except for that old junk and the ineligible g@rbage.

        But go ahead and tell everyone how the display of “new” information on a cell turns the cell phone into a new machine, and how that’s totally different from displaying new information on the pages of a book. Go ahead! You’re a very serious person! And cell phones are sooooooo shiny. If we don’t hand out patents protecting the information that can be sent back and forth between cell phones and other communication devices, how will people ever figure out what to do with them?

        Note also how the d.o.a. “pre-emption” analysis concocted by a different panel of the CAFC to rescue the junk claims in McRo is completely (and correctly) ignored by this panel.

        1. You say one thing and turn around (again) and do the exact opposite.

          You are still parsing and trying to have the entire eligibility decided at the “element” level.

          1. You are still parsing and trying to have the entire eligibility decided at the “element” level.

            Is “anon” illiterate or just a dissembling hack? Or both?

            I vote for “both.”

              1. I continue to be amazed that people can be denigrated in such a manner

                Why do you h@te the American flag, PB?

                I know you didn’t say that but I can read between the lines. And I’ll just keep reading between the lines and characterizing everything you say in just the way that I feel like characterizing it, and I’ll mock the charicature that I created with innuendo that makes no sense and I’ll do this endlessly for years. And then when you accuse me of being a hack for my endless attacks upon my made-up version of your comments, I’ll sniffle and cry about how you’re so uncivilized.

                It’ll be fun, PB!

        2. Setting aside for the moment the fact that this “claims as a whole” language is manufactured by the judiciary and therefore — according to your own “logic” — completely illegal, you’re still completely wrong.

          That’s a classic of the genre right there.

          It’s too bad this discussion jumps from thread to thread, but from the other day:

          MS “Abstraction at eligibility means the invention is literally too abstract to meet one of the four statutory categories. Mayo/Alice does not address this question”.

          What question is that again, Martin?

          Try recalling the facts: Prometheus wanted to own the “method” of (1) collecting data using a prior art method and (2) thinking about what the data met.

          You think there was some “question” about whether an abstraction was being claimed in that case? Get real.

          No, I think the question is “is this particular abstraction a patent eligible process” I am real, and you really help make my point for me.

          Comparing an invention to prior art methods at eligibility is not the same as at patentability.

          Eligibility should relate to the four categories- so you can look at prior art to help understand the purported invention’s locus to one of the four categories.

          Deciding if “something more” exists or if an idea of function is being claimed relates to 103/112. Your opposition is well aware of this.

          Bilski said processes can be abstract- because congress did not say otherwise. But “thinking about what the data meant” is a whole other ballgame, isn’t it?

          My approach gets the same result, but more aligned with the scheme of the patent act, and easier for anyone to understand and easier to reliably resolve in the early parts of a litigation- 12(b)6 specifically.

          “Thinking about the data” is human consumption of information, which cannot be patented in a just system. The randomness of Alice as an eligibility test is evident in McRo, Enfish, and DDR. In my scheme, McRo is eligible but fails 112, Enfish is eligible but fails 103 (all databases were one table once upon a time) and DDR is ineligible because display of information on websites for human consumption should not be an eligible process.

          1. MS Eligibility should relate to the four categories- so you can look at prior art to help understand the purported invention’s locus to one of the four categories.

            Agreed.

            Deciding if “something more” exists or if an idea of function is being claimed relates to 103/112.

            The prior art also “relates” to eligibility, for elementary logical reasons that are so easy to understand I’m not even going to bother to explain them to you again for the hundredth time.

            Your opposition is well aware of this.

            They’re also well aware that the Supreme Court addressed the issue and they lost, 9-0. Boo hoo hoo.

            1. You mean the entire patent community lost, as we can no longer tell what’s patentable? You mean the Supreme Court issued yet another opinion on patents that no one can understand and is logically inconsistent? You’d be correct.

            2. …except for those claims as a whole, whose actual physical elements are made to “magically” vanish into being “Abstract,” you mean, right Malcolm?

              1. actual physical elements are made to “magically” vanish

                I suppose it might look that way if you’re on some serious drugs. But there’s not any “magic” to the legal analysis. It’s pretty straightforward. And, yes, the entire claim is considered, just as all the elements in a claim to a “book with a new recipe printed in it” are considered before chucking the claim out as ineligible.

                But all this is too nuanced for you, Professor Houdini. I don’t want to stress your brain out.

        3. Diamond v. Diehr, 450 U.S. 175, 188-190 (1981) (emphasis added).

          “In determining the eligibility of [a] claimed process for patent protection under 101, [the] claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in the process, or even the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possible patentable subject matter. . . . The question therefore of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter. “

          1. Falling into a category of statutory subject matter has been “Gisted” into “Abstractness” by the Supreme Court and their tossing of 35 USC 112 when THEY decide what a claim “really is” and the use of “directed to.”

            All that the Court is doing is ig noring what happened in 1952 and attempting to reinstall their former power of setting the meaning of the word “invention” that Congress took away and in its place put 35 USC 103.

          2. The Diehrbots wander among us! It’s as if the last ten years never happened.

            Cling to your script, Dierhbots! Cling to it! You’ve had so much success with it!

            Seriously, Mike, please take a couple hours and listen to some 101 arguments before the CAFC. The b0tt0m-feeders in possession of the Worst Patents Ever try to resurrect this “no dissection” silliness every time and they fall flat on their faces. Prometheus v. Mayo put Diehr to bed, except for the one banal proposition that was really never in doubt: you can’t look at a single element in isolation, determine its eligibility (or its ineligibility) and skip from there to the conclusion that “the claim is eligibile (or not)”. You have to look at how that element relates to the other elements, and you have to look at how that element and the other elements relate to the prior art. And, no, that’s not some kind of illegal “conflation.” It’s basic logic.

            And the fact that you and “anon” and others can’t understand this (or pretend not to) is the reason that you’re best ign0red or m0cked. You’re clowns. Sad, p a th etic snivelling cl 0wns.

              1. Quite the opposite Mike, it said that Diehr was NOT being changed, was the case most on point and was certainly STILL good law.

                Never mind the fact that one simply cannot square this with what the Court has actually done with the 101 jurisprudence in its own rather abysmal scrivining.

      2. I think his *point* is that is that when you consider the claim as a whole all it does it particularly describe old things and then states vague functional results which might be new.

        Like if I was to say “I claim a car that flies” without delineating the mechanism which causes the car to fly, I can’t imagine how you could call that anything but a claim to a field of flying cars and the abstract idea of making a car fly. There might be (for all we know) 10,000 wholly different ways of making a car fly. The specification describes what? One? Maybe two? You particularly claim those, you have a concrete invention. You claim the result, you get your two concrete inventions and the entire rest of the field as well.

        It’s a real problem, because the mistake has gone on so long you have even attorneys not being able to understand that an invention can’t be a result. Les was making an argument the previous go-round that you could invent the bow but describe it in a manner that encompasses a gun, as if a bow and a gun share anything in common but an abstract result of propelling a projectile.

        1. Your proper argument then would be inherency – and NOT making actual physical parts of the claim (and thus, of the claim as a whole), somehow “magically” disappear into “being Abstract.”

        2. Like if I was to say “I claim a car that flies” without delineating the mechanism which causes the car to fly, I can’t imagine how you could call that anything but a claim to a field of flying cars and the abstract idea of making a car fly.

          B-b-b-ut my flying car has a computer that comprises a look-up table with rules about what to do when there is a cloud up ahead.

          Can I haz patent now? Because I didn’t pre-empt all flying cars.

          Welcome to the farce.

        3. the mistake has gone on so long you have even attorneys not being able to understand that an invention can’t be a result.

          LOL

          You have to try to understand first. In this context, trying to understand causes all sorts of problems. It’s better to pretend you were born yesterday, you’re illiterate and you have no appreciation for basic logic. Then you get the desired outcome (‘instructions are machines!” and other brilliant “insights”).

        4. ” Les was making an argument the previous go-round that you could invent the bow but describe it in a manner that encompasses a gun, as if a bow and a gun share anything in common but an abstract result of propelling a projectile.”

          I think if you were ever hit with either, you wouldn’t say the result is abstract.

          By the way if a valid claim issues for a gun (grip, chamber, barrel trigger) does the guy who comes along later and patents a machine gun owe the first guy a royalty even though he didn’t invent the machine gun?

          1. I think if you were ever hit with either, you wouldn’t say the result is abstract.

            That’s only because there existed a concrete particular mechanism that imparts force to a projectile. The day before I was hit, the abstract idea that “force could be imparted to a projectile in some fashion” still existed. That abstract idea existed thousands of years ago and no damage was done to me my whole life until the concrete mechanism was added.

            By the way if a valid claim issues…does the guy who comes along later…owe the first guy a royalty even though he didn’t invent the machine gun?

            Yeah there’s very clear case law that *if* something is valid you have to pay to avoid infringement, but again you’re assuming the relevant issue. You take the word “valid” out of that sentence and there’s no clear answer, because depending upon what the claim says it may or may not be valid, and the liability is derivative of the validity.

            Again, Morse had a telegraph. He asserted two different claims on two different scopes related to that subject matter. One scope was valid, the other was not. The one that was valid required a license to prevent infringement. The one that was invalid required nothing. If I showed Morse a cell phone text and he told me I needed to take out a license because I infringed his “machine that prints at a distance” scope, I would laugh at him and a court would protect me for doing so. We all know what a gun is, but nobody has invented “all guns” – a gun is a field which people are still innovating in today. If you claim “a gun” that will be invalid. If you claim a gun in a more descriptive manner it may be valid, based upon how particular you get and the manner in which you configure your claim.

            Are there valid invention scopes that other people may improve upon and have to take a license for? Sure. Are there invalid scopes that you may assert I have to take a license on, but I in fact do not because your claim is directed to an abstract field? Sure. Can we decide which is which without seeing a claim? Probably not. What’s one example of a scope that’s so outrageous that I don’t have to see a claim beforehand? A scope that would purport to cover both a bow and a gun. String tension and chemical explosion are simply two completely different means of achieving an abstract result. A claim limited to your means wouldn’t find the other item infringing and a claim limited only by the abstract result is not valid.

            1. “You take the word “valid” out of that sentence and there’s no clear answer, because depending upon what the claim says it may or may not be valid, and the liability is derivative of the validity.”

              I told you what the claim said (in abbreviated form) an apparatus comprising: grip, chamber, barrel and trigger.

              And of course, the implication is that the machine gun also includes a grip, chamber, barrel and trigger

              1. “I claim an apparatus comprising: a grip, a chamber, a barrel, and a trigger” is invalid under both 101 and 112, not to mention would have been anticipated at the time of filing.

                As I said, I agree with you as to this much: If the claim was valid, then the machine gun would be infringing based on your facts.

            2. ” A scope that would purport to cover both a bow and a gun. String tension and chemical explosion are simply two completely different means of achieving an abstract result.”

              Completely different? No they aren’t. They are ways of storing energy. And now that we know that atoms are just small vibrating strings, its all string energy ain’t it….

              1. They are ways of storing energy.

                “I claim ways of storing energy” is also invalid. As is “A machine that 1 – stores energy and 2 – directs the stored energy into a projectile to be propelled.”

                Go ahead and formulate a claim that finds both a gun and a bow infringing and we’ll see if it’s valid.

              2. Side question – Someone invented a spring. A spring stores energy. Are you suggesting that the inventor of the spring could have formulated a valid claim that reads on a car battery?

              1. No you’re confusing constructive reduction with just conception. I can conceive of a flying car. I can conceive that some mechanisms somehow will cause the car to fly. You can do that too, and right now, but you’re not the inventor of the flying car. I don’t constructively reduce the practice until I know how particular machinery fits together in a particular way to make the car fly. I don’t actually have to build the machine and make the car fly (i.e. actual reduction to practice) but I do have to posit the particular configuration of particular machinery to constructively reduce.

        5. Like if I was to say “I claim a car that flies” without delineating the mechanism which causes the car to fly, I can’t imagine how you could call that anything but a claim to a field of flying cars and the abstract idea of making a car fly. There might be (for all we know) 10,000 wholly different ways of making a car fly. The specification describes what? One? Maybe two? You particularly claim those, you have a concrete invention. You claim the result, you get your two concrete inventions and the entire rest of the field as well.

          I would find it tough to say that a flying car is an abstract idea and therefore ineligible under 101. On the other hand, I could easily say that a claim reciting merely “a car that flies” is obvious under 103: cars are known, flying things are known, and at least one implementation of a car that flies is well within the ordinary level of skill in the art without undue experimentation (see, e.g. the annual car-catapult competitions). Once you add some more specific limitations to your claim directed to your vectored thrusters or turbofan or helium balloon attachment points or whatnot to get around the obviousness problem, then you’re also no longer claiming the entire field.

          So, no 101 needed, nor would it be appropriate to reject such a claim under current 101 jurisprudence.

          1. This is a recurring problem with using examples of things that actually exist.

            Yes, folks, flying cars have been around for longer than most of us have been around. It’s true. Just like mobile computers existed before you could buy one at Walgreens. I know it’s impossible to believe. Maybe someone should tell Judge Moore?

    1. Diamond v. Diehr, 450 U.S. 175, 188-190 (1981) (emphasis added).

      “In determining the eligibility of [a] claimed process for patent protection under 101, [the] claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in the process, or even the process itself, is of no relevance in determining whether the subject matter of a claim falls within the 101 categories of possible patentable subject matter. . . . The question therefore of whether a particular invention is novel is wholly apart from whether the invention falls into a category of statutory subject matter. “

    2. MM, a method for conducting business using utterly conventional technology. How Affinity could have thought they could prevail with such claims is a wonder.

  9. Another example of a claim that has elements of actual hard goods made to disappear and become “abstract” because of the “magic” of the “Gist.”

    1. Will someone point out to me where Congress changed the law concerning exactly who gets to define the “invention” vis a vis 35 USC 112…?

      In its hurry to thrust fingers into the nose of wax, this aspect of who does what appears to “not fit exactly” with what Congress wrote…

        1. As evidenced by the fact that the pro-Alice people continue to point to the old well known elements of the claim and the vague functional language – see 112/103

          1. Is your argument that no matter what the failure some applicant makes, the failure can only be recognized in one section of the statutory scheme?

            When you claim super broadly, you’re going to fail to “particularly point out” the invention. You’re going to claim more than you enabled. You’re going to claim more than you possessed. You’re going to claim an abstract result or field. And someone may have done some little corner of the field already. There’s no doubt that going super broad will evoke 112a, 112b, 103 rejections, why is it not also proper to draw a 101 rejection?

            What if the 101 rejection fits better than the other rejections? Do we just ignore the best manner of protecting the public because other manners exist?

              1. IiT’s argument is that because 112/103 “fit” as rejections that 101 doesn’t apply. That doesn’t make any sense. If something triggers multiple problems it triggers multiple problems and is liable to be invalidated under any of the theories.

                If I shoot someone dead I suppose I have committed a battery, but nobody would buy an argument that “The only thing you can get me on is battery because it is messier to try and solve my intent under a Murder 1 theory.” If 101 might apply, 101 should be analyzed and possibly applied. We don’t not-consider-something just because some other invalidation might be an easier proof. If you got super broad a 102 might be the easiest proof. That doesn’t mean you can’t assert a 112.

            1. That’s not my point RandomGuy – a claim can fail under multiple sections / reasons. My point is that current Sect. 101 case law is a travesty, and is a Sect. 112/103 rejection masquerading as a subject matter eligibility rejection under Sect. 101.

              1. *Some* forms of 101 abstract idea rejections (such as setting up a problem and then using broad functional language to claim all solutions to it) are almost always also 112a WD or enablement rejections, that is true. But not all 101’s are like that.

                I just want to know why you think that because a claim can fail under multiple sections that it has to be disposed of under one of them to the exclusion of others.

                The abstract idea rejection has a procedure for analyzing it. You may not like the procedure, in the same way people didn’t like the obviousness procedure immediately following KSR, but that doesn’t mean there isn’t a procedure. That procedure may produce different results from 112 or 103, and therefore we have to always consider it. If you have to consider it, on what basis can you limit the defense’s choice of attack when the statute requires the claim to meet all burdens?

                Is there a list? Like if a claim could fail under both 112b and 103, which one am I allowed to assert? What about if it fails under utility and 102, which one do I assert there?

              2. current Sect. 101 case law is a travesty,

                That’s largely the fault of the CAFC and the PTO.

                The big question, of course, is why you think it’s a travesty. Hopefully you’ve got a better explanation than “my favorite claims are getting shot down”.

                1. MM – The blame falls squarely on the Supreme’s unanimous decision in Alice. The test is unworkable and intellectually dishonest, and the EVERYONE is left to suffer the consequences – yes, even members of the general public, since so much uncertainty surrounds the validity of patents following Alice. The poor examiners at the PTO are forced to apply a subject standard based on nonsense.

                  And, MM – I’ve asked this question of you a million times, but maybe you will finally comply – please provide one example of a patent (by patent number) and a claim (by claim number) that you believe is patent eligible in view of Alice. Just one example, please.

                2. The test is unworkable and intellectually dishonest, and the EVERYONE is left to suffer the consequences – yes, even members of the general public, since so much uncertainty surrounds the validity of patents following Alice.

                  It’s a huge positive for the public because there’s literally thousands upon thousands of claims that are plainly ineligible under Alice and it takes like two seconds to show it, with zero “uncertainty.”

                  At the same time, thousands more junky “do it on a computer” claims that aren’t squarely within Alice but which might fall if the right arguments are made are also suspect, and therefore devalued. Again, that’s a net positive for the public.

                  The poor examiners at the PTO

                  They’ll be just fine.

                  please provide one example of a patent (by patent number) and a claim (by claim number) that you believe is patent eligible in view of Alice

                  There are literally tens of thousands and probably hundreds of thousands of granted claims that are patent eligible in view of Alice. Most of them don’t involve computers. Most of them recite a new structure in objective structural terms, or describe a process that results in a change of physical matter that wasn’t previously believed to be possible or at least wasn’t previously disclosed.

                3. Like before, he is asking for one specific claim, Malcolm – not your dissembling “there are thousands.”

                  And I will go one better: find one that does NOT use your optional “objective physical structure.

                  Since I am sure that you know the meaning of the word “optional,” you will be able to find a particular claim that you “believe in,” eh?

                  (I won’t be holding my breath)

                4. Like before, he is asking for one specific claim

                  Like before, you and he can create your zombie babies together and eat them. I really could care less.

                  Anybody who says “Nothing is eligible after Alice” or “Nothing is eligible after Mayo” is an id i0t.

                  I’m really sorry to hurt your fee-fees but I don’t feel any need to pull punches. Once again, the word is id i0t. And yes it applies to you and anyone else who makes the statements referred to in the previous paragraph.

              3. Had a discussion with an Examiner the other day. I said that I no longer know what’s patentable under 101 because of Alice, then he said he did not know either. (Of course, he said the claims at issue were not patentable…but how could he determine that if he doesn’t know what IS patentable?)

                If you want a fun exercise, read the claims involved in recent CAFC cases for Alice, make up your mind as to whether the claims are patentable under Alice. THEN read the opinion. In pretty much every recent case, I’m shocked at the opinion of the CAFC. Claims I think clearly are invalid under Alice are not according to the CAFC, and vice versa. This case is a good example — these claims seem fine to me under Alice.

                The other problem with merging 102/103 with 101, is that there is no prior art — you just say “it’s old”, and magically it is! No prior art necessary.

                Congress: Please step in. We need your help, because the judiciary is hopelessly lost.

                1. I said that I no longer know what’s patentable under 101 because of Alice, then he said he did not know either.

                  S00per compellings stuff.

                2. It’s more compelling than your old tired and trite dissembling Malcolm.

                  LOL

                  My “dissembling” is in two 9-0 Supreme Court cases that are never going to be overturned.

                  Let me know when “I read that two guys didn’t understand something” gets cited by the Supremes in support of your “every process is eligible” silliness. Then we’ll know your 15 minutes of fame has arrived! It’ll be such an awesome day! Because you’re a very serious person, “anon.” We all have to pay attention to you.

                3. What you post here has one thing in common with the Supremes: the End.

                  Try a little actual legal logic (you know, use that direct and simple English language to actually make a point).

                  Hint: ad hominems and stale scripts do not count.

      1. Will someone point out to me where Congress changed the law concerning exactly who gets to define the “invention” vis a vis 35 USC 112…?

        Hahaha so you think the inventor is the sole person who can define an invention? Like I could claim a plot of land and call it an invention? Or a fantasy novel and call it an invention? Anything I put after “I claim” the court has to give full weight to?

        You say the inventor has an unlimited ability to define the invention then you have to throw out the non-functional descriptive matter doctrine (because, after all, that’s just a means of not considering “the claim as a whole” as defined by the inventorand “gist”ing away a claim limitation) and everything is patentable.

        1. Ha ha – I am merely pointing out exactly whom Congress stated should be the entity that – you know – defines the invention.

          The rest of the law is then applied to say whether or not what the applicant claims passes – or does not pass – merit.

          You have a problem with that?

          1. You need to reread your statute. 112b doesn’t say the inventor gets to define the invention, it says he must claim according to the subject matter “which the inventor regards as the invention.” You can actually be rejected under 112b for claiming something your specification does not say is the invention, see MPEP 2172. There is no part of 112 which requires the *court* to *define* the invention coextensively with what the inventor claims.

            If there was, the inventor’s statement as to what the scope is would be conclusive in a claim construction hearing. “When I claimed it I meant this, if you think it doesn’t give notice then find it invalid but the statute commits the definition to me, you WILL construe it as I meant it at the time, you lack the power to do otherwise.”

            If there was, the printed matter doctrine couldn’t stand, there would be no basis for ignoring any claim limitation whatsoever, no matter how unrelated to any utility or patent goal it is.

            If there was, there would never be an “arguing unclaimed features” argument. If the inventor states that the prior art doesn’t teach a feature, then that feature must be within the claim somewhere (no matter what words are in the claim) since he gets to *define* his invention and I cannot. “See when my claim said ‘Car’ I think of cars as having four wheels, and your reference has five wheels. I understand you want to construe ‘Car’ as including five wheel vehicles, but defining the invention is left up to me. Withdraw your 103 rejection.”

            The idea that the inventor gets to absolutely *define* his invention is a general rule colloquialism created by the federal circuit that was directly opposite what the Supreme Court last said and which even the FC doesn’t follow all of the time, as the printed matter doctrine shows. The statute allows the inventor to put forward the subject matter he regards as the invention, it does not command the courts to construe the invention as claimed. That’s why every level (PTO, FC, Supremes) follow rules of construction that give them the power to define the invention, not the inventor.

            1. There is no part of 112 which requires the *court* to *define* the invention coextensively with what the inventor claims.

              Absolutely correct. But we know that there are judges out there who will bend over backwards to read all all those awesome benefits (“saves twenty seconds of time when there are ten zillion numbers to crunch!”) no matter how broadly the claim is written.

                1. Interpret is not the same as write (or in this case, to define, since you are “interpretining in the first instance, with NO words of Congress to BE interpreted).

                  Give me the words of Congress, please.

              1. Just curious – do you think there’s a statute somewhere that says “Federal courts shall have the power to construe contracts in a contract dispute case”? I’m interested to see how bad your Con Law class was.

                1. You do realize the difference between common law and statutory law, right?

                  That will be rather important for your scenario involving Con law, my friend.

        2. …and your quip about the written matter doctrine misses – and misses badly – since you apparently fail to realize that we are often discussing the critical notion of the exceptions to the judicial doctrine of printed matter.

          You want to throw out the judicial doctrine itself? Then YOU are far more greatly expanding the discussion than what ANYBODY is talking about.

          1. You want to throw out the judicial doctrine itself?

            Oh, so this particular “judicial doctrine” is okay with Mr. Rule of Law Separation of Powders?

            Of course it is. Keep the laughs coming, “anon.”

            You’re a very serious person! We all have to pay attention to you.

            1. You really do have a problem with the patent system itself if you have such a problem with actual functionality.

              Again, since your cognitive dissonance is in full bloom, my advice to you is that you get into a field in which you can believe in the work product produced.

          2. You want to throw out the judicial doctrine itself?

            Nope, I don’t, but then I’m the one arguing that the inventor gets to define his invention. I’m simply pointing out that if you advance the argument that the inventor gets to define his invention, you have no basis to allow the printed matter doctrine. That doctrine is as much of a “gist” as the Alice procedure is.

        3. I could claim a plot of land and call it an invention

          If you make a non-obvious impression of some sort on the land (carve a list of available music by artists with silver toenails) to be downloaded from a remote server) and the land has a “new function” (it communicates information about available music by artists with silver toenails!), then your modified plot is “manufactured by man” and it’s useful. Therefore totally eligible subject matter, at least according to The Most Important People Ever who never saw a junk claim they couldn’t embrace.

            1. that plot of land would be invalid under Sect. 102

              Unpossible because “it has a new function”. Or so the argument goes.

              More importantly, you need to read my fact pattern carefully. The particular plot being claimed has been “altered” and those alterations (i.e., the “carvings” that cause a list of remotely available music by silver-toenailed artists to be displayed) are recited in my claim. There’s no anticipation … unless you want to invoke some illegal judge-made doctrine, which is the Worst Thing Ever because judge-made.

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