Step-One: Don’t Assume an Abstract Idea

by Dennis Crouch

McRO v. Bandai Namco, et al.  (Fed. Cir. 2016)

In an important Eligibility case, the Federal Circuit has ruled that MRCO’s software patent claims are eligible — rejecting District Court Judge Wu’s judgement on the pleadings that the non-business-method claims are invalid as effectively claiming an abstract idea. In my 2014 post in the case I wrote that the case may serve as an opportunity fo the Federal Circuit “to draw a new line in the sand.

The invention at issue is directed toward a specific problem that had troubled the field of animation – automatically animating lip synchronization and facial expression of animated characters. See U.S. Patent Nos. 6,307,576 (“‘576 Patent”) and 6,611,278 (“‘278 Patent”).  The patented method employed by the invention is to key the audio signal to a set of phenome sequences and then create a set of morph-weight-set streams used as input sequences for the animated characters.  The morph stream input provides both timing and movement of facial expressions, including emotion.   The inventions claim priority back to 1997.

In its decision, the Federal Circuit holds “that the ordered combination of claimed steps, using unconventional rules that relate sub-sequences of phonemes, timings, and morph weight sets, is not directed to an abstract idea and is therefore patent-eligible subject matter under § 101. Accordingly, we reverse.”  Thus, the court followed its precedent in Enfish and holds here that the claims do not even meet Alice Step-One.  In addition to the 20+ defendants, briefs were also filed by EFF, Public Knowledge, BSA and The Software Alliance.  The Decision here was authored by Judge Reyna and joined by Judges Taranto and Stoll.

A patent may not effectively cover an abstract idea, law of nature, or natural phenomena. Alice Corp.   The Supreme Court in Alice/Mayo established its two-step framework that first asks whether a patent claim is “directed to” one of these eligibility exceptions.  If so, the claim can be saved if it also includes an “inventive concept” that sufficiently transforms the nature of the claim.  However, “[i]f the claims are not directed to an abstract idea, the inquiry ends.”  McRO at 20.

One problem with the two step framework is based upon the fact that all inventions can be boiled down to an ineligible abstract idea. In Mayo, the Supreme Court recognized this risk in its statement that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”  This starting point, risks removing any teeth from Alice/Mayo Step-1.  The Federal Circuit, however, has refused to follow that pathway but instead has set down precedent that courts “must be careful to avoid oversimplifying the claims” in seeking a gist or abstraction. TLI Commc’ns.

A second problem with the framework is that the meaning of “abstract” has not been fully defined.  Here, the Federal Circuit attempts to provide a rough framework based upon the idea of preemption. The court looked particularly for (1) specific limitations that help avoid preemption (e.g. Morse); and (2) more than merely automation of existing human activity. The court also emphasized that the eligibility analysis must consider the claim as a whole.

The court writes:

Here, the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.” Myriad. By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. See Morse. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice. Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea.

I have pasted claim 1 below:

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

321 thoughts on “Step-One: Don’t Assume an Abstract Idea

  1. 24

    Worth repeating on top, is the following reply to Greg’s lament about a certain example claim not fitting “Abstract” (as undefined as that term remains):

    Correct Greg.

    If you have been following along, I have explained exactly why this seems all so familiar (the infusion into 101 of obviousness).

    Prior to 1952, Congress had granted a great power to the Court to set the meaning of the word invention through the t001 of common law evolution.

    But the Court was simply TOO anti-patent, especially in the turn of events of the 1930’s and 1940’s (ever hear the story of “The only valid patent is one that has not yet appeared before us“…?). From what MAY have been a “noble” desired Ends, the Means to those ends jeopardized ALL patents (reminiscent of a very recent remark by Malcolm, btw).

    Congress reacted against this anti-patent zeitgeist and stripped the Court of its common law power and instead of “invention” (also known as “spirit of invention,” “gist of invention” and about twenty other terms), Congress instead put in place 103, Congress also warned against the judicial muc kery in the notes to 103 (which I have provided numerous times).

    All of this is also captured and explained by one of the architects for Congress of the Act of 1952 – and published in a seminal paper in or about 1962 (by Judge Rich).

    The Supreme Court’s work simply reflects the lost history lesson, and those not willing to learn that lesson have forced all of us to repeat that history lesson.

    at link to patentlyo.com for context

  2. 23

    This ridiculous CAFC panel, completely wallowing in their own b ull shirt:

    The concern underlying the exceptions to § 101 is not tangibility, but preemption. Mayo, 132 S. Ct. at 1301.

    First of all, there is no assertion in Mayo that resembles this statement. The term “tangible” does not even appear in the case. This is a complete distortion of the Mayo decision. More accurately, it’s a fabrication that completely missed the point.

    What is acknowledged repeatedly by the Supreme Court in Mayo is that abstractions (and mental steps and natural laws) can’t be protected by patents, either directly or indirectly by limiting the abstractions to a particular technical context (e.g., the ‘‘prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.’ ’ 132 SCt at 1297, quoting Bilski quoting Diehr).

    The CAFC panel here has chucked this fundamental proposition out the door. Although there is no dispute whatsoever that rules are ineligible abstractions, we are now told that if a set of ineligible rules — even rules that are described only at a general, functionally level — is limited to a particular context then — voila! — there is no eligibility problem. This decision isn’t just a thumb in the nose of Alice. It’s shows complete disdain for Mayo and everything that Mayo stood for.

    Consider the claims at issue in Mayo. According to this decision, they would be eligible. Why? Because Prometheus’ claims used “limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.” According to this panel’s “reasoning”, then, Prometheus’ claims weren’t directed to an abstract idea. After all, this out-to-lunch panel would reason, somebody else could always use a different correlation to “determine whether to administer more drug.” Therefore, no pre-emption!

    This is a complete warping of the concept of preemption as understood by the Supreme Court in Mayo. Yes, broad claims are more likely to preempt ineligible subject matter (and therefore be ineligible) but mere breadth is not the issue. As the Supremes noted in Mayo:

    The laws of nature at issue here are narrow laws that may have limited applications, but the patent claims that embody them nonetheless implicate this concern.

    The “concern”, remember, is this:

    the enormous potential for rent seeking that would be created if property rights could be obtained in them and the enormous transaction costs that would be imposed on would-be users

    It’s a concern that is not at all specific to the particular context to which the claim may be limited. It’s a concern about the type of subject matter being protected by the claim, i.e., an abstraction like “rules” or “logic” or “correlations.”

    This case is a perfect example of the problem that arises when claims are granted to methods of “using rules” to determine stuff “on a compute” that was created for the sole purpose of determining stuff using rules. If this decision stands (and with any luck the en banc CAFC will chuck it to the curb within a year), then no programmers in any “conventional industry” are going to be safe from rent-seeking by patentees claiming the use of “rules” in some “limited” situation where logic is already (invariably) being applied. And that’s assuming that this decision remains limited to the “do it on a computer” context, which doesn’t appear to be the case on its face.

    Again, the ray of hope here is provided by the fact that the entire CAFC will definitely not be on board with this junk decision. Even the ones that think they are going to change their minds as soon as they start seeing Jethr0’s b0ttom-feeding arguments bubbling up.

    1. 23.1

      I did not find your “rent-seeking” comment in the Supreme Court decision.

      When you complain about “adding words” and then turn around and do the very same thing, it rather detracts from your “argument.”

      1. 23.1.1

        I did not find your “rent-seeking” comment in the Supreme Court decision.

        Ask someone to teach you how to do a word search.

        1. 23.1.1.1

          Or maybe you do want you are so quick to ask others for and provide a pin cite.

          Imagine that – doing what you ask of others…

      2. 23.1.2

        The trick is to search without a hyphen between “rent” and “seeking.” There is no hyphen in the original. The quote occurs at 132 S. Ct. at 1302.

        1. 23.1.2.2

          That’s from Prometheus – quoting Posner and is meant to reflect BASIC truths.

          Quite different Greg when the (unlimited) Gisting and (undefined) Abstracting are in play.

  3. 22

    Hmmm,

    From this decision, it appears that “intangible” (quite distinct from “Abstract,” however that may be defined), has been “walked back” a bit as to being any type of “block” as to patent eligibility.

    1. 22.1

      While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patenta- ble. Bilski, 561 U.S. at 603 (discussing 35 U.S.C. § 100(b)). The concern underlying the exceptions to § 101 is not tangibility, but preemption. Mayo, 132 S. Ct. at 1301.

    2. 22.2

      it appears that “intangible” (quite distinct from “Abstract,” however that may be defined), has been “walked back”

      But they explicitly didn’t define “intangible” so the entire decision is nonsensical.

      Right? Isn’t that the analysis du jour?

      1. 22.2.1

        They never defined “abstract” either but you seem not revel in that fact. At least this Court bothered to compare the term to an existing test (MoT). By inference anything that does not pass MoT is likely intangible.

        1. 22.2.1.2

          With the added difference (explicitly added) that the term “Abstract” was NOT being defined.

          That’s not just a little difference btw.

          1. 22.2.1.2.1

            The “de jour” part is Malcolm misrepresenting what was said – and then running away when he is corrected.

  4. 21

    Just returning to the holding for a moment:

    CAFC: When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual [insert whatever you want here] techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Claim 1 … therefore, is not directed to an abstract idea.

    I’m curious as to whether there’s any disagreement about a predicted aspect of this absurd holding. Specifically, is it true or not that this decision pretty much subsumes DDR, Bascom, and Enfish? In other words, are there any fact scenarios in which a computer-implemented claim would survive scrutiny under the “McRo test” but fail under DDR, Bascom, or Enfish? Or vice versa?

    It seems its going to be the exceedingly rare claim that doesn’t arguably use “limited rules” that are “designed to achieve an improved result” in some industry (and surely there isn’t a requirement that the industry be “conventional” to find eligibility). The most important word in the McRo test, I suppose, must be “technological”, which should now be interpreted to include computer-generated artwork (but not computer generated contracts — totally different!).

    I assume all the patentees who’d argued their 101 cases and who haven’t been smacked down already must have rushed to the CAFC to request supplemental briefing in light of this extraordinarily silly decision. I can’t wait until next month’s oral arguments. Man, that’s going to be a real circus.

  5. 20

    There are basically three positions on software patents; none should be allowed, because software is intangible and thus abstract in every case, all should be allowed that meet 102/103/112 requirements because software is made by the hand of man, and some should be allowed, based on various tests such as a technological arts test, or improvement of computers, or Mayo/Alice.

    I cannot abide the “all should be allowed” position. Software has too much in common with literature and other works of authorship; it models and simulates aspects of the world with individual works of creative expression creating by writing in a language. Allowing monopolies on whole swaths of what amount to literary genres is too restrictive of human freedom, and can never be reliably adjudicated. The line between copying and inspiration is always sui generis. Patenting the expression of general ideas rather than specific works would be too limiting. After “Jaws”, nobody could make a fish movie for 20 years (nominally- the scandal of continuation practice is for another day), or after “Star Wars” nobody could do a space movie – the doctrine of equivalents exists to ensure that result. Copyright law has evolved to handle these kinds of tensions. Those works ARE protected from direct ripoff, as they should be, to protect the efforts and investments made by authors and producers. As we are about to see in Oracle v. Google, copyright for software remains viable protection against direct theft.

    This is one of the basic reasons we have different law for copyright and patent. (Please save the trope that copyright does not cover utility and that what patents are for). There are always gray areas like training films or the “gaming” arts- or computer animation.

    I could accept the “no software patents, period” position, but I don’t think that is in the best interest of the economy or in-line with the Constitutional right to patent in some instances. Note to the pro-patent extremists: I agree with you on the basic values of the patent system.

    I am in the “sometimes eligible” camp, and I think the 8 members of the USSC are too, as are the 11 of the CAFC. All have, to one degree or another, expressed some notion of when “sometimes” should be, and there has been a plurality that the framework for the distinction must be found somewhere in the abstract ideas exception to 101. Software is not the only kind of invention facing abstraction issues. The problem really swings around information, but by proxy we talk about software.

    No plurality has formed about what abstraction means, because it’s a very tricky problem, and this case about computer animation adds nothing to move toward a plurality. The reason, stated clearly in Bilski, and generally in many of the subject matter cases, is human freedom. Freedom means the ability to add to and draw from the “storehouse of knowledge” that belongs to all mankind. The ability to associate and design our commerce without government interference.
    The ability to pass along aspects of culture and ways of organizing ourselves are rights that must not be infringed-any more than the patent right may be.

    The “abstract ideas exception” is the place where that freedom is protected.

    The other problem with a definition is that abstraction arises in two totally different contexts in patent law. It differs from what kinds of things can be patented (eligibility) and which specific purported inventions can be patented (patentability). Bilski rejected a physical or tangible structure as a requirement for eligibility as a “process”. They punted, because they did not have a handle on how to fit always abstract information to a sometimes eligible framework.

    The “technical solutions to technical problems” test is as useless a tabula rosa as the notion of “abstract ideas”. The EU is basically on the same “know it when we see it” standard as we are.

    Abstraction at patentability is something else entirely. That is the true use of Mayo/Alice; to help insure claims are not being drawn to ideas about solutions, rather than actual solutions to problems. It’s a streamlined, combined view of 102/103/112. Alice/Mayo should only apply to already eligible purported inventions, and should not be considered a test of eligibility, but of patentability.

    I offer a workable, practical definition with impeccable lingual and philosophical justification.

    Simply put: The word abstract has, as its Latin root, the act of “drawing away”

    When people draw meaning, they are creating abstractions. No abstraction can exist without a human mind to apprehend it. When a non-human actor responds to information, that response can never be “abstract”. When a person responds to information, it can only be “abstract’.

    The easy to grasp framework for abstraction at eligibility should be: if the result of a method is information, and the method recites no new mechanical or chemical changes, the invention is abstract. Infringement cannot be based on human consumption of information. If a non-human actor is consuming the information processed as a result of the method, and the method meets the requirements of 102/103/112, a patent should issue.

     The framework is simple, does not impede the innovation of self-driving cars or self-toasting toasters or a vast array of artificial intelligence and other innovations that information technology may enable- but it does prevent wholesale patenting of computer implemented business methods, or any other kind of model or simulation whose economic value arises from the use of information people draw into their minds and then respond to.

    This proposal does not rule out on any level new or improved physical devices that store, process, or present information- because those items aren’t methods. This still leaves copyright for those items of software and information technology that are not patent-eligible, but still benefit economically from appropriate IP protection.

    In terms of eligibility only- MPEG patents; yes. Blackjack patents; no. Tesla Autopilot: yes. Showing nearest pizza on a map; no. Opening a rubber press based on rules: yes. Finding fetal cells in maternal plasma: no. Designing a database with one table: yes. Finding the lowest credit card rate: no.

    I dealt with McRo in the paper linked above. The method results in information. The information result is consumed by the rendering software, a non-human actor. Patent eligible.

    Under Alice/Mayo applied at the appropriate point in litigation, it should fail under 112 because the patent claims the idea of using a time/proportional rule set, or under 103 because using a computer to automate animation rules was likely obvious to a PHOSITA who is an animator, a computer engineer, or both.

    Also today there were more design patent cases filed than utility cases. Thanks Obama.

    1. 20.1

      today there were more design patent cases filed than utility cases. Thanks Obama.

      My coffee this morning was too hot, also. Thanks Obama.

    2. 20.2

      Martin: The information result is consumed by the rendering software, a non-human actor. Patent eligible.

      Just fyi, Martin: this is never going to be the test for subject matter eligibility.

      1. 20.2.1

        “First they ignore you, then they laugh at you, then they fight you, then you win.” ~ Mahatma Gandhi

        MM something WILL give. You never know what will get latched on to.

        I’ll keep rolling my stone for awhile….

        1. 20.2.1.1

          MM something WILL give.

          Something already “gave” — bigtime — when Alice was decided. Then the CAFC rushed into create some “exceptions” (namely, DDR and Enfish) which weren’t well thought out but served as stopgaps to prevent the inevitable collapse from being too catastrophic.

          But this McRo panel just blew the whole thing up. It’s hilarious that Microsoft would crow about “increased certainty” in response. Seriously? This decision is a j0ke.

          1. 20.2.1.1.1

            Lol – Alice is the joke.

            By magic of the Royal 9, actual hardware (systems that both sides had stipulated to meeting the statutory category, and thus were NOT at issue before the Court), were “Gisted” into being in the (explicitly) undefined state of being “Abstract.”

            The reverberations on uncertainty need to be properly traced back to their actual source: the Supreme Court and their addiction with the wax nose of 101.

            1. 20.2.1.1.1.1

              “anon” actual hardware (systems that both sides had stipulated to meeting the statutory category, and thus were NOT at issue before the Court), were “Gisted” into being in the (explicitly) undefined state of being “Abstract.”

              Go ahead and show everybody the passage from the Supreme’s opinion where “actual hardware” was deemed to be abstract.

              This should be easy for you. You’re a very serious person!

              Alice is the joke.

              Not at all. Also, it’s still the law and it’s never going to be overturned. The CAFC can ignore the law and write absurd decisions like McRo but we all know how that story ends.

              1. 20.2.1.1.1.1.1

                Again the poker tell of “so serious” shows Malcolm has nothing intelligent to actually say here.

                Do you really need that passage? Do you not think it there? Have you read the decision?

                The CAFC is not the only ones that ignore the statutory law – they must be learning from on high.

                1. Do you really need that passage?

                  Yes. Show everyone where the Supremes said that “actual hardware” is abstract.

                  I would think you have it memorized. What’s the problem?

                2. Do you still need the passage – now that your are “truly shocked” (your typical dissembling) or do you concede that what I said is in fact true?

    3. 20.3

      “Allowing monopolies on whole swaths of what amount to literary genres is too restrictive of human freedom, and can never be reliably adjudicated. The line between copying and inspiration is always sui generis. Patenting the expression of general ideas rather than specific works would be too limiting. After “Jaws”, nobody could make a fish movie for 20 years (nominally- the scandal of continuation practice is for another day), or after “Star Wars” nobody could do a space movie – the doctrine of equivalents exists to ensure that result. Copyright law has evolved to handle these kinds of tensions. Those works ARE protected from direct ripoff, as they should be, to protect the efforts and investments made by authors and producers. As we are about to see in Oracle v. Google, copyright for software remains viable protection against direct theft. ”

      Well copyrights are for a lot longer than patent rights, so if software is like literature as alleged, maybe software patents should have a longer term than your average patent….

    4. 20.4

      By the way, there is no such thing as a software patent.

      Are you saying there should be no such thing as patents for methods?

      1. 20.4.1

        Les, you should take more care – less you feed the muckrakers and dust kickers.

        Software is not a method. The execution of software may be captured in a process patent, but software is a manufacture by the hand of man and clearly is a machine component (show me someone who thinks he has software that is not a machine component and I will show you someone who does not know what software is).

        Only the ig norant and the purposefully dissembling want to make software a true method patent and just do not realize (or do not want to admit) that language merely sounding in function is anything except a simplified way of understanding the object that is software (revisit for example my post to Malcolm about the optional FORM of a typical software claim which can be rendered into a human gibberish of tens or hundreds of pages of “objective physical structure” of the likes of “Sector 0000, rise above normal of xx, Sector 0001, dip below normal of xx,…).

        Only the muckrakers and dust kickers want to confuse the actual issue, pretending that the optional ease of description is somehow more than what it simply is: an art specific ease of description that fully meets the law.

        1. 20.4.1.1

          Software itself is just a bunch of ones and zeros (or punched cards if you go back that far, which were ones and zeros). Take a look at machine code sometime.

          Running software requires a machine, though.

    5. 20.6

      Mr. Snyder, you are already too far into the weeds if you believe “Please save the trope that copyright does not cover utility and that what patents are for.

      You clench tight your eyes to the very terrain that you want to do battle on.

      Simply ill-advised.

    6. 20.7

      Martin I disagree, when you write: “The “technical solutions to technical problems” test is as useless a tabula rosa as the notion of “abstract ideas”. ”

      GATT-TRIPS confines patentability to a field of “technology” and the Constitution to “useful arts” the 17th century word for “technical”. Just as you have to address “obvious” sooner or later, so you also have to face up to “technical”. The trick is to find a prescription that will set the Rules of Argument, on what is or is not “obvious” and what is or is not “technical”.

      The EPO has found a prescription for doing obviousness. As to what is “technical” the Boards of Appeal of the EPO are carpet bombing the area with thousands of cases that triangulate what “technical” means, with ever-greater precision.

      But under English law, with Binding Precedent, it’s much harder. I grant you that.

    7. 20.8

      MaxDrei
      Martin I disagree, when you write: “The “technical solutions to technical problems” test is as useless a tabula rosa as the notion of “abstract ideas”. ”

      GATT-TRIPS confines patentability to a field of “technology” and the Constitution to “useful arts” the 17th century word for “technical”. Just as you have to address “obvious” sooner or later, so you also have to face up to “technical”. The trick is to find a prescription that will set the Rules of Argument, on what is or is not “obvious” and what is or is not “technical”.

      The EPO has found a prescription for doing obviousness. As to what is “technical” the Boards of Appeal of the EPO are carpeting the target area with thousands of cases that triangulate what “technical” means, with ever-greater precision.

      But under English law, with Binding Precedent, it’s much harder. I grant you that.

      1. 20.8.1

        axDrei, your attempt at rewriting the meaning of Useful Arts was rejected previously and is rejected again.

        U should have more respect for the US sovereign and its choices.

      2. 20.8.2

        Max,

        In Versata Development Group v. SAP America (Fed. Cir. 2015), the court wrote that the PTAB was required to:

        “craft its own understanding of what is meant by a “technological invention.” First, the PTAB recited the fact that the USPTO had adopted a definition and had published a related notice, see Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012). The notice listed certain characteristics which, if present, did not help support a finding that the invention was within the “technological invention” exception from CBM treatment. These are: 1) mere “recitation of known technologies”; 2) “reciting the use of known prior art technology”; and 3) “combining prior art structures to achieve the normal, expected, or predictable result of that combination.” “We are left with a definition of a “technological invention” as essentially one having a “technological” feature that solves a “technical” problem using a “technical” solution.

        Defining a term in terms of itself does not seem to offer much help. In short, neither the statute’s punt to the USPTO nor the agency’s lateral of the ball offer anything very useful in understanding the meaning of the term “technological invention.”

  6. 19

    Just how important was this decision to our country?:

    “Overall, today’s major ruling will provide additional certainty to industries that generate more than $5 trillion in U.S. economic activity and 40 million American jobs.”

    link to blogs.microsoft.com

  7. 18

    anon: “The terms are terms of art.” (Regarding MM’s comment that ‘morph weight set streams’ are terms made up by lawyers)

    Is there any evidence that “morph weight set stream” or “morph weight set” is actually a term of art? A brief google search turned up nothing unrelated to the patent.

    1. 18.1

      Lol – Ben, get a life and stop your 0bsession.

      Then look into the art specific literature and not rely on the “sniff” of your Google search.

      1. 18.1.1

        So you have no evidence? Thanks.

        EAST also came up empty.

        As it stands, with two admittedly generalist databases silent on the subject, it looks more likely than not that these are not terms of art.

    2. 18.2

      Regarding MM’s comment that ‘morph weight set streams’ are terms made up by lawyers

      I never asserted that those particular terms were made up by the patentee’s lawyers (but they might have been). Regardless, the terms are jargon/shorthand coined to describe data for logic applications, and I suggested that the creation of such jargon is part of a contemporary patent attorney’s skill set.

    3. 18.3

      Parametric Building Design Using Autodesk Maya – Page 70
      link to books.google.com
      Ming Tang – 2014 – ‎Preview – ‎More editions
      In a simplified condition, a parametric relationship between two attributes, elevation and the morphing weight, can be generated. After loading the typical floor plan into Maya’s Set Driven Key window, designers can define the driver attribute as …

      Virtual Immersive and 3D Learning Spaces: Emerging Technologies and …
      link to books.google.com
      Hai-Jew, Shalin – 2010 – ‎Preview – ‎More editions
      Facial expression (circle) produced with multiple-target morphing by combining 4 morph Figure 6. From left, base head; Smile morph target with weight =0.5; Smile morph target with weight Figure 7. From the left: Frame of rapidly moving hand.

      Mastering Unreal Technology, Volume II: Advanced Level Design …
      link to books.google.com
      Jason Busby, ‎Zak Parrish, ‎Jeff Wilson – 2009 – ‎Preview – ‎More editions
      MorphName—This is the name of the morph target this node exposes. The morph target named here must be contained within one of the MorphTargetSets named in the PreviewMorphSets array of the AnimTree node. Weight—This is the …

      link to google.com

    4. 18.4

      link to google.com

      Parametric Building Design Using Autodesk Maya – Page 70
      link to books.google.com
      Ming Tang – 2014 – ‎Preview – ‎More editions
      In a simplified condition, a parametric relationship between two attributes, elevation and the morphing weight, can be generated. After loading the typical floor plan into Maya’s Set Driven Key window, designers can define the driver attribute as …

        1. 18.4.2.2

          Are you suggesting that this is a break through patent that coined a term that has now become a term of art?

          1. 18.4.3.1.1

            LOL – that got edited out…?

            How about that mean hot air comment then?

            Or it this yet another excursion into the asymmetric application of (arbitrary) “rules?”

            Remember Prof: the rules are not what you merely state, but what you consistently (and evenly) enforce. Anything short of that are not rules, and certainly will not yield what you claim that you want.

  8. 17

    The filtering that the EPO leaves till it gets to the obviousness question is tackled in the USA up front, at the eligibility stage. But just because a claim survives the eligibility test does not mean that it’s going to get through the filters (enablement, obviousness) still to come.

    What about the claim here, with its invention, to “do it with a computer that is programmed with Rules”? Seems to me that “rules” and “program” are synonyms, so “rules” adds nothing to “programmed” and that the Rules are either so banal that they are obvious, or so un-banal that they need to be presented in detail in the specification. If so, the claim must fail, for the one reason or the other, depending on the degree of banality at which the Rules stand (as opposed to whether or not they are abstract).

    Remember the HILTI case litigated all over Europe. Hilti won in its native Switzerland but lost everywhere else. The point is though, that the reason for losing (not an infringement, not inventive, and so on) varied from EPC State to State. Is not the Blue Planet claim one that will likely go down, in the end, on one or both of obviousness and enablement? Not every dubious claim is going to fail on eligibility.

    Besides, everybody learns, from each case like this. Those attacking eligibility come up with evidence that is more on point. And those writing the claims write more eligible ones.

  9. 16

    “Step-One: Don’t Assume an Abstract Idea” is fine.
    But the more interesting issue here is this first detailed reliance on presumed non-preemption* to defeat alleged claim”abstraction.”
    Non-preemption* is presumed here because no actual practical alternative* was shown. But there is no holding here as to the key issue of who had or has the burden to show preemption or its absence? Is that still possible in the remanded trial, like a new claim construction?

    *Is there an interesting analogy to the often nebulous definition of “relevant market” in anti-trust cases [as to whether or not there was validly comparable competition in that market] vis a vis the seemingly equally nebulous scope of what scope of products need to be preempted for preemption?
    Does not that directly relate to the valid scope of the claim for infringement purposes? This suit is against a large number of defendants, presumably most of those in this business. Have any of them demonstrated or argued that their systems are non-infringing? Should that be relevant to preemption?
    Lots of interesting new issues here.

    1. 16.1

      This suit is against a large number of defendants, presumably most of those in this business. Have any of them demonstrated or argued that their systems are non-infringing? Should that be relevant to preemption?

      Questions

      1) How many “use this logic to animate this” patents are out there?

      2) How many “use this logic to animate this” applications are pending and how many potentially claimable”new species” are disclosed in those applications?

      3) How many more “use this logic to animate this” applications will be filed by attorneys/agents who sit around making up terms like “morph weight set streams”?

      Cart00ns are so awesome! Kids love ’em. Not as much as bingo, maybe, but still, super c00l. This decision is going to revolutionize the 3D animation industry. Smell the pr0gress! The essence is amazing.

      1. 16.1.1

        Your questions are bogus.

        Clearly.

        1) it matters not at all to the point that Paul is making.

        2) ditto

        3) software is not logic, and it was not any attorney who “made up the terms.”

        Same advice Malcolm: get into a profession in which you can believe in the work product. This cognitive dissonance of yours is palpable.

        Nice “ecosystem” here Prof. Crouch.

        1. 16.1.1.1

          it was not any attorney who “made up the terms.”

          How do you know? Is there some technical skill involved in inventing shorthand for describing rules applied to rules for applying math to rules?

          Let’s pause for a chuckle? I love this: In computer science, an object can be a variable, a data structure, or a function or a method, and as such, is a location in memory having a value and possibly referenced by an identifier.

          But totally not abstract! And totally not like math at all … well, except for that bit about the variables and functions. And the part about having a value.

          But besides that (pesky details!) computer objects are just like internal combustion engines or engineered peptides! How could anyone possible suggest that computer objects are abstract?

          Go ahead and claim them, then! They’re “manufactures”, right? “Machine components”, right? Just describe them functionally. Especially the ones that are … functions.

          What could possibly go wrong? Our patent system was set up just to promote progress in this kind of … exercise. Sure it was.

          1. 16.1.1.1.1

            The terms are terms of art.

            describing rules applied to rules for applying math

            Try less obfuscating.

            Also, recognize the difference between math and applied math (otherwise known as engineering).

            Try also to place the computer science language in context – you do like to try to take things out of context. Variables, functions, values, – you want to draw the false equivalency that such simply “must be” math, when it is not math. Tell me, in relation to another aspect of software, can you obtain a copyright on math? What does that tell you about software?

            Yes – pesky details – once you decide not to conflate, they are not so pesky, are they?

            As to “just like” – again, you ploy a false equivalency and want to use sleight of hand to implicate an “exactly the same” notion where no such notion is required. In the patent sense, software is equivalent to (note, does not have to be exactly the same as) hardware and is equivalent to firmware. To this truth, all that you ever reply is dissembling out of context other words that have “ware” in them. Try instead to use the proper context of the words.

            As to describing anything with words sounding in function, shall we (yet again) visit the meaning of the word “optional” and your ever dissembling attempts to make something that is optional into something that is not optional?

            What could possibly go wrong? – ah yes, the logical fallacy of parade of horribles as some last ditch attempt to bolster your clearly incorrect “logic” – let’s turn that fallacy right around and ask what could go wrong with allowing such false logic to run unchecked?

            Lastly, I am not sure exactly why you think the massive innovation brought about by software would NOT be something that the patent system was set up to promote. Clearly, dealing with innovation that cannot be known a priori, the patent system MUST BE set up to promote all types of innovation. Wake up son and look around you.

            1. 16.1.1.1.1.1

              “anon” Variables, functions, values, – you want to draw the false equivalency that such simply “must be” math, when it is not math

              Try to believe it, folks. But he’s a very serious person! We all have to pay attention to him.

              “describing rules applied to rules for applying math”

              Try less obfuscating.

              Where’s the “obfuscation”? This is an accurate description of the software at issue in this case. Are you suggesting that there aren’t any rules being applied, and no calculations are being performed?

              1. 16.1.1.1.1.1.1

                Try to believe what exactly, Macolm? – that you are obfuscating because terms “sound like math” and – in your mind – somehow “must be” math?

                To your second comment, I clearly identified the obfuscation with my comment for you to understand the difference between math and applied math.

                This is not the first time that I have point this out to you, and yet, you continue to attempt to confuse and conflate the two.

                1. terms “sound like math”

                  Everybody following along? “Add X to Y” just sounds like math, folks. But it’s really a machine component!

                  Totally not a farce. Just ask Microsoft, the world’s most awesomest experts on subject matter eligibility. They’re totally objective and super serious.

                2. …and the vapid poker tell of “so serious” marks concession by Malcolm that he lacks any serious on-point item to share…

    2. 16.2

      PM: “Step-One: Don’t Assume an Abstract Idea” is fine.

      It’s certainly not “fine” in the “do it on a computer” context.

      It’s a positively ridiculous assumption in that context.

      1. 16.2.1

        …because Malcolm has previously shared his “feelings” that ALL software is per se ineligible…

        ;-)

        1. 16.2.1.1

          “feelings” that ALL software is per se ineligible…

          The last time I checked, software per se is ineligible as a matter of law. So is logic. What a coincidence!

          As a matter of basic logic, neither should be eligible when claimed indirectly as a “configured computer”. But, hey, the s00per d00per important people who make the world go round want to protect their precious investments so let’s all just look the other way and pretend that logic is “structure.” After all, nobody will write better software otherwise. They told us so! And they’re very serious people.

          1. 16.2.1.1.1

            “The last time I checked, software per se is ineligible as a matter of law. So is logic. What a coincidence!”

            Case citation please?

            1. 16.2.1.1.1.1

              Case citation please?

              Instructions aren’t processes and they aren’t manufactures.

              See 35 USC 101.

              If you are still confused, file some patent claims to “Instructions for a computer, comprising …” or “Modified logic, wherein said logic comprises old logic plus the following new logic …

              Go for it! It’s totally not a felony.

              1. 16.2.1.1.1.1.1

                Lol – maybe you want to try to understand that software is a manufacture and machine component.

                You have previously volunteered an admission against your interests pertaining to this subject in the sense of your admitting that you knew (and understood) the controlling law as to the exceptions to the judicial doctrine of printed matter.

                Shall I (once again) avail you of my simple set theory explication that you always seem to just run away from?

                1. software is a manufacture and machine component.

                  Right. It’s totally not instructions and rules for a computer to follow!

                  Nope. It’s a “machine component”, just like a wheel on a bicycle. Well, the kind of wheel that you can upgrade over the phone anyway. Details, details.

                2. What does “upgrade over the phone” have to do with anything?

                  Other than displaying your lack of understanding of law and the facts of this particular art field, that is…?

                3. What does “upgrade over the phone” have to do with anything?

                  Bezides software, are there any other “machine components” that you can upgrade over the phone?

                  Just asking. You’re the expert on this stuff. I surely wouldn’t want to suggest that software is maybe some kind of s00per d00per “machine component” all by a class in its super special self because you say so or anything like that.

              2. 16.2.1.1.1.1.2

                Definition:

                Matter of law – (1) the part of a judicial inquiry concerned with the interpretation of the law OR (2) an issue requiring the court’s interpretation of the law or relevant principles of the law.

                Again, please provide any case law that stands for the proposition that “software is per se ineligible.” All I am asking for is a single case where a court has interpreted 101 as you state.

                Or could it be that you don’t know the difference between opinion and a “matter of law.”

                1. Or could it be that you don’t know the difference between opinion and a “matter of law.”

                  LOL!

                  Watch out, folks! Justice Marshall, Junior is in the house! He’s s00per d00per serious!

                  Plus he’s got the Boy Wonder himself with his “set theory” getting all huffy and puffy.

                  Push that pendulum, kids! Push it real hard! State Street is coming back and it’s going to be so awesome this time!

                  Sure it is.

                  LOLOLOLOLOL

                2. I’ll take that as an affirmation that you have no idea what a matter of law is and you have no case law to support your statement. I would stay out of the court room if I were you. It sounds as if you are as familiar with the law as the tr0lls you deride.

                3. Great – brush aside your typically empty ad hominem, and reply has its typical ZERO content.

                  Prof. Crouch or your mommy or both must be so proud of you.

                4. I’ll take that as an affirmation that you have no idea what a matter of law is

                  And I’ll take that as an affirmation that you believe you can claim logic and instructions for a computer per se.

                  So go ahead do it! Your clients will adore you and your pioneering success will be cheered round the globe.

                5. BB : please provide any case law that stands for the proposition that “software is per se ineligible.”

                  For the record, I never said that “software is per se ineligible.” If you put something in quotes, use the actual quote.

                  Here’s a little something to get you started on your search for the best “cite”:

                  link to patentlyo.com

                  But really it’s just a question of looking at the statute, understanding Prometheus and the Supreme Court cases leading up to Mayo, and, if that’s not good enough, understanding the exceptions. Logic and instructions (or “rules”) aren’t statutory categories. They’re abstractions. You can try to scriven your way around that but, as you are well aware, other problems tend to arise quickly.

              3. 16.2.1.1.1.1.3

                In re Warmerdam, Microsoft Corp. v. AT&T Corp. and Digitech Image Techs., LLC v. Electronics for Imaging; Disembodied software in itself, with no structural tie to an article of manufacture, machine, process, or composition of matter, is not patentable subject matter.

                1. What is “disembodied software?”

                  Does “disembodied software” garner a copyright to protect a different aspect of software?

                  Software is not the thought of software.

                2. (…and yes, I do realize that the mess of controlling law of In re Nuitjen is counter factual to the reality of this universe and plain physics, creating an aberration regarding “plain signals”)

                  But even “plain signals” do not “magically appear” and in truth can be traced back to a NON-disembodied software instance (as it must, given that the thought of software is not software).

                3. What is “disembodied software?”

                  Software that’s not written on a physical object. As you know, software is instructions for a computer. It doesn’t have to be written on a physical object. It can be transmitted on a signal (light, sound, electromagnetic) just like any other instructions.

                  I do realize that the mess of controlling law of In re Nuitjen is counter factual to the reality of this universe

                  “Transmitted signals are ineligible for patenting” isn’t counter factual to any reality. It’s the law. Try getting used to it because it’s not going to change.

                4. Exactly. It is the same thing as the difference between the recipe an actual cooking of food. The recipe is simply instructions, whether written down or mentally retained and communicated, one person to another. The implementation of a recipe however probably constitutes an eligible process.

                5. Except not Ned – as explicated for you previously with my simple set theory (and as you recall, my repeated admonitions for you to voice any objections to my explication; which you refused to do.

                  All we have instead is yet more of the same internet style “shout down” of drive-by rhetoric that refuses to recognize and incorporate the counterpoints raised previously.

                  Yay “ecosystem”

            2. 16.2.1.1.1.2

              Bluto, I have not reviewed the entire thread here, but would you agree that there is a difference between a recipe and implementation of a recipe in methods or process for cooking food? One of these is per se ineligible. Which one?

                1. Software takes many forms, but it is essentially written material until loaded into program memory in a computer.

                2. Whether or not it “takes many forms” it is NOT a recipe Ned.

                  You never answered me on the simple set theory explication….

                  (and you still avoid ANY discussion of the exceptions to the judicial doctrine of printed matter)

                  Why am I not surprised that you go silent on these points, Ned?

                3. Whether or not it “takes many forms” it is NOT a recipe

                  Nobody ever said “software is a recipe.”

                  But software is certainly instructions. In that respect, it’s very much like a recipe.

                4. Nobody ever said “software is a recipe.”

                  Except for the fact that Ned JUST TRIED TO DO SO….

                  Oopsie for you, Malcolm (maybe pay better attention)

                5. “Nobody ever said “software is a recipe.””

                  Except for the fact that Ned JUST TRIED TO DO SO….

                  And then what happened? His fingers slipped off the keyboard?

                  Pretty sure Ned knows how to type.

                  Or maybe you are struggling with reading comprehension again.

                6. I am not the one with reading comprehension issues (or with issues connecting simple dots).

                  That would be you Malcolm.

                  Gee, Malcolm ploying his standby AccuseOthersOfThatWhichMalcolmDoes meme….

                  “Go figure Folks”

  10. 15

    CAFC: When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual [insert whatever you want here] techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Claim 1 … therefore, is not directed to an abstract idea.

    This circular n0nsense can be applied to pretty much every “new” “do it on a computer” g@rbage claim ever drafted. And that’s just one of the reasons this opinion is going to quickly end up in the dustbin of history.

    What an incredible waste of time. It took how many months for this panel to come up with this?

    1. 15.1

      CAFC: the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.”

      Structure? LOLOLOLOLOLOLOLOLOL

      1. 15.1.1

        Malcolm, I will have to agree with you on this. Imposing mathematic relationships between inputs and outputs, and timing restraints on application of an update, is hardly “structure” in a conventional understanding of that term in patent law.

    2. 15.2

      Is improved animation actually a technical result ? It strikes me as an artistic result.

      anon, care to opine on the “useful arts”

      Why isn’t a new and non-obvious legal argument as eligible as a new and non obvious advertising method? Both have “structure”, both serve to persuade in pursuit of money….what non-arbitrary doctrine says one is OK but not the other?

      I may post my usual thesis on this thread later, just for the Googlez record for some future reader, but I will say again right now: abstraction at eligibility and abstraction at patentabilty are two totally different inquiries.

      At eligibility, we should be concerned with the invention itself; is the invention a machine, composition, or manufacture? If it’s a method, is the invention found in the apparatus used with the method, or within some information arising as a result of executing the method? You can look at prior art at this inquiry, not for obviousness or complete description, but to help identify what kind of invention is purportedly at hand.

      At patentability, we are concerned with the patent itself; do the claims and specification describe an invention, or do they impermissibly depend on too much abstraction to usefully create a complete description, or a novel advance over the prior art, or a reasonable scope of protection?

      The fact that the difference between an abstract invention and an abstract patent has not been bifurcated in 101 jurisprudence remains surprising, and I think it remains that way because there is still no consensus on how information inventions should be considered, since they are all abstract at eligibility, but clearly some should reasonably be in the purview of the patent system.

      Y’all know by now how I would propose to make that distinction.

      1. 15.2.1

        Why isn’t a new and non-obvious legal argument as eligible as a new and non obvious advertising method? Both have “structure”, both serve to persuade in pursuit of money….what non-arbitrary doctrine says one is OK but not the other?

        The doctrine of Indulge in an Absurd Legal Fiction Because Money Except When You Don’t.

        It’s the same doctrine that brought us “3/5 of a person” and similarly awesome concepts.

        1. 15.2.2.1

          A better musical instrument (think Stradavirous) compared to playing a musical instrument…

          If you work really hard, you might actually be able to complete the thought and type out an actual argument. That would be special.

          But let’s just take this driveling on its face. We’re talking about patent claims. There’s no structure here, as would be required by anyone attempting to claim a new instrument.

          Oh, except this is the s00per magical comp00ter arts. So we get to just pretend that “rules” are structures. Now we can imagine a claim to an “improved” violin, comprising a s00per techn0 programmable computer, further comprising “rules” for determining what string to play, and when. But that’s nothing like “playing a violin”! Nope. That’s a “new instrument”! You can just smell the “essence” of the electronic structure. Get really close! Mmm, so yummy.

          1. 15.2.2.1.1

            Oh, I am more than sure that any normal person can connect the dots Malcolm.

            It really is not that difficult.

            1. 15.2.2.1.1.1

              any normal person can connect the dots

              Until a computer is involved. Then that dot-connecting “logic” is “structure” and scrivening becomes s00per d00per techn0! Look, mom! My argument is so slick! I got rid of the excess verbiage with rules about when to apply syntaxic attribute weights. On a computer. Which is totally different than using rules without a computer. Because computer.

              Yes, it’s a farce.

              1. 15.2.2.1.1.1.1

                You of course know that software is not logic as well as know that software is not the thought of software.

                Try better to connect those dots. Get a first grader to help you (if that court order has been lifted, of course)

                1. You of course know that software is not logic

                  You of course know that you are a bit of a path 0 l0gical liar.

                  as well as know that software is not the thought of software.

                  And yet merely writing down one’s thoughts about what some software will achieve is enough to monopolize actual working software on any operating system for a couple decades. Or at least that’s how things are supposed to work in your fantasy world. Go figure.

                2. You are arguing against a different concept Malcolm – constructive reduction to practice. This concept applied equally in ALL art units.

                  Then again, you already (or should already) know that, right?

                  Just more dissembling from you.

                  “Go figure Folks”

          2. 15.2.2.1.2

            …and if you want to make your vapid “no new machine” “argument,” please do so with the proper patent doctrine of inherency and let me know how far you get with that.

            1. 15.2.2.1.2.1

              Dennis creates a new machine almost every day! He modifies an old computer remotely so that it transmits new signals. Any normal person can see that the results are different! Inherency!

              Maybe he should hire a person who knows about patents so his hard work doesn’t go unrewarded.

                1. Are you suggesting that Dennis’ modifications aren’t “functionally related” to the results achieved by the modified computer?

                  If so, go ahead and explain that to everyone.

                2. Dennis creates a new machine almost every day! He modifies an old computer remotely so that it transmits new signals. Any normal person can see that the results are different! Inherency!

                  What’s “nonsensical” about this, “anon”?

                  You were the one who brought up “inherency” and “new machines.”

                  Tell everyone what’s “nonsensical” about what I wrote.

                3. Wha tie nonsensical is that you are trying to be obtuse about something that you have volunteered an admission against interests: the exceptions to the judicial doctrine of printed matter.

                4. you are trying to be obtuse about something

                  LOLOLOLOLOLOLOLOLOL

                  So says the guy who puffed himself up and spewed some drivel about “new machines” and “inherency”, then immediately decried the same drivel as “nonsense” when it was thrown back at him.

                  But you’re a super serious person! Love the “admissions against interest” silliness, too. Super persuasive stuff!

                5. Oddly – my typo was filtered in this instance (but not in the other. Here it is (typo fixed):

                  It as most definitely NOT the same that I decried Malcolm.

                  Stop your

                  L
                  I
                  E
                  S

      2. 15.2.3

        Listen, Martin, I agree with you that claiming an otherwise eligible invention at the level of an idea should not be a §101 problem, but a problem either of not particularly pointing out and distinctly claiming the invention on the one hand, or not providing sufficient written description support for breath of the claim on the other.

        But the majority in Bilski did not want to accede to the Stevens minority and came up with the alleged problem with the detailed business method claims before them by labeling the claims “abstract.”

        Hardly.

        Moreover, ridiculous.

        Stevens was right and always has been right.

        1. 15.2.3.1

          Except for the plain fact Ned that Stevens was NOT right and would have had to directly and explicitly rewrite the words of Congress in a flagrant breach of separation of powers (and you are fully aware of this point).

          As I have previously informed you, this is exactly why Stevens lost his position to write the majority opinion, and the “support” for overturning the direct words of Congress further eroded from 4 to 3.

          Time for you to be inte11ectually honest about this and stop attempting your internet style “shout down” with your drive by nonsense.

  11. 14

    SCOTUS won’t touch this case because they don’t want to have any responsibility for defining the baseless standard of “abstract” that they refused to define in Alice.

    Alice will die the de ath of a thousand cuts at the Fed. Ct. level and SCOTUS will watch from the sidelines. Each case that finds eligibility illustrates further the flawed and incomplete analysis set forth in Alice.

    1. 14.1

      Alice will die the de ath of a thousand cuts at the Fed. Ct. level

      Nope. Tens of thousands of junky “do it on a computer” patents are gone forever and they aren’t ever coming back.

      . the baseless standard of “abstract”

      Get yourself a dictionary and look the word up. You might learn something. And then you need to use logic, of course, to follow the legal analysis. That might be above your pay grade.

      1. 14.1.1

        This case (and all the cases that will use this case as precedent) has nothing to do with “do it on a computer” patents and everything to do with the hundreds (if not thousands) of meritorious claims being illogically rejected by the USPTO and invalidated by District courts at the moment. I have never argued for the patentability of methods that have an identical real world analog. Go burn your straw somewhere else.

        1. 14.1.1.1

          BB: This case (and all the cases that will use this case as precedent) has nothing to do with “do it on a computer” patents

          Now that is the funniest thing I’ve read in a long time.

      2. 14.1.2

        Once again Malcolm, read the Supreme Court case – if they wanted you to be able to “just grab a dictionary” they would have done so – but they explicitly chose NOT to do that.

        You don’t get to rewrite what they wrote because you would find it “convenient” to “just grab a dictionary.”

        1. 14.1.2.1

          if they wanted you to be able to “just grab a dictionary” they would have done so – but they explicitly chose NOT to do that.

          Does this reasoning apply to every term used in every Supreme Court decision that doesn’t explicitly refer to a dictionary definition, or just to this term in this particular decision?

          I’m pretty sure the Supremes didn’t choose the term “abstract” at random. Happy to be wrong about that, of course! Feel free to prove otherwise. Everyone will be very impressed.

            1. 14.1.2.1.1.1

              (clearly, setting your dust kicking aside, this is different than simply “choosing a word.” The Court was explicit that it was NOT defining a word.

              Even you should be able to grasp the difference (and yes, we both know that you know the difference and are only dissembling here – as usual)

    2. 14.2

      BB: Each case that finds eligibility illustrates further the flawed and incomplete analysis set forth in Alice.

      Not at all. Some eligibility cases completely affirm the Alice analysis.

      Unfortunately, other cases don’t “illustrate” anything except the CAFC’s desire to keep the software patenting balloon inflated by any means necessary. After all, if the balloon deflates anymore than it already has, planes will start dropping out of the sky, nobody will know which shampoo to buy, and online bingo tournaments will dissolve into utter chaos. Nobody wants that!

      1. 14.2.1

        The key term you used is “some.” After this decision that “some” is going to get smaller and smaller.

  12. 13

    Dear Federal Circuit: Innovators, inventors, startups, and job creators across our nation thank you for reaching the correct decision here.

    1. 13.1

      Don’t forget all the patent lawyers with awesome techn0 degrees in “applying rules”! They’re s00per d00per important too!

      job creators

      ROTFLMAO

  13. 12

    This case is “important” only insofar as it represents the inevitable step backwards that the CAFC takes whenever it takes two baby steps forward.

    “Preemption” in the subject matter context is not a question of breadth but a question of what is being “pre-empted.” In this case, what is being “pre-empted” is a set of rules for (I’m still trying to believe this is the subject of a patent anywhere on earth) animating the virtual mouth” (in 3D, 2D, 5D, whatever) on some art that includes a face. The breadth of the rules isn’t important for subject matter eligibility. What’s important is that the claim is protecting rules.

    Imagine an ineligible claim to a set of rules for admitting people into a clubhouse for cat and dog owners, “wherein admission is determined based on the name of the potential admittee’s dog or cat”. That’s an ineligible claim. It doesn’t become eligible if we rewrite the claim using fancy jargon to describe “ownership” and “names” and “admission.” And it doesn’t become eligible if the spec includes a detailed list of acceptable pet names, and it doesn’t become eligible if that detailed list is recited in the claims.

    The CAFC will almost certainly take this case en banc if it’s asked to because there is no way to reconcile it with the Supreme Court’s decisions or its own decisions. All the patentees who lost their junky “do it on a computer” patents in the bizarrely long wait for this opinion must be beside themselves. They argued “pre-emption”, too, after all! Everybody does because when you ain’t got nothing, you reach for the stars.

    1. 12.1

      How is “preemption in the subject matter context” any different from “preemption in ANY context”…?

      All claims preempt – that is what they do. You cannot separate out “context” in such an artificial manner.

      1. 12.1.1

        The answer is right there in your question. The difference is the context. 101 doesn’t care if the ineligible subject matter (e.g. “rules”) is broad or specific. That’s an issue for the other parts of the statute.

    2. 12.2

      MM: In this case, what is being “pre-empted” is a set of rules for (I’m still trying to believe this is the subject of a patent anywhere on earth) animating the virtual mouth” (in 3D, 2D, 5D, whatever) on some art that includes a face.

      Malcolm, after you have looked at post 5.1 and consider that the claim is not limited to undefined rules for achieving a specific function, but is rather directed at applying rules in a specific way at specific times, I think we have a disagreement between the lower court and the Federal Circuit about what is being claimed.

      Now if the claim had only said apply rules to automate lip-synching, then I would agree with you that the claim would have been drafted at the level of an abstraction. But the way it was drafted, with a specific functional requirements and timing requirements seems to be more than just “applied rules to achieve a result.”

      Now if it were true that the prior art disclosed everything in the claim identically, in that order, so that the only thing new were rules that might have been disclosed in the specification but were claimed generally in the claim, then we would agree. But I do not think that is the case here.

      1. 12.2.1

        Ned: consider that the claim is not limited to undefined rules for achieving a specific function, but is rather directed at applying rules in a specific way at specific times

        Referring back to my clubhouse rules, adding a limitation “wherein said dog and cat names are obtained automatically from a remote server between 12:01 and 12:02 am” makes zero difference. The claim is still ineligible.

        As is often the case, you’re operating from the assumption that some “do it on a computer” methods simply must be eligible. Because animated 3D characters are s00per awesome! People love those characters and without patents on every bit of logic used to make them seem “real”, nobody will every try harder. The Most Important People Ever told us so! And on and on.

        It’s a farce.

        1. 12.2.1.1

          MM, it does really depend upon what really is new — whether the rules or the method of applying them.

          1. 12.2.1.1.1

            it does really depend upon what really is new — whether the rules or the method of applying them

            Using a computer to apply rules isn’t new.

            1. 12.2.1.1.1.1

              MM, but using a computer is not the only thing claimed about the method of applying rules. The rules must have a specific functional relationship and be applied at specific times.

              Now, if all this was known and old so that the invention as disclosed in the application was purported to be new rules, then the situation here would be different.

              1. 12.2.1.1.1.1.1

                Ned: The rules must have a specific functional relationship and be applied at specific times.

                They’re still just rules, Ned. And I’ve no idea what “specific functional relationship” is supposed to mean. All rules are functionally related to the context in which the rules are relevant, at some level of specificity. So what?

                using a computer is not the only thing claimed

                There’s no new machine described in the claim. Only the rules are new.

                Of course all that would change if the rules were applied on a remote server or on a mobile device. LOL! Yes, the US patent system is a j0ke.

                1. 1) the representative claim is to a method. Of course their is no new machine described. Why would there be? Methods are eligible subject matter.

                  2) methods are nothing but rules. Do this, then do this other thing, then do this third thing, at some point also do this other thing…

                  3) methods are eligible subject matter.

            2. 12.2.1.1.1.2

              a computer to apply rules isn’t new.

              By that “logic,” using protons, neutrons and electrons for any composition is not new either.

              What is your point with this “logic”…?

          2. 12.2.1.1.2

            it does really depend upon what really is new — whether the rules

            Rules aren’t eligible for patenting. It doesn’t matter if they are “new”.

            1. 12.2.1.1.2.1

              MM, even if the rules themselves were completely ineligible and completely old and known, the claim would still pass muster if the method of applying them to produce improved lip syncing were new or improved.

              Think Diehr. There the Ahrenius equation was known, and actually used in prior art molding processes. But it was the use of the equation during the molding process that was the improvement.

              As you have often acknowledged yourself, simply including ineligible material subject matter in a claim otherwise directed to patentable subject matter does not render the claim as a whole ineligible. Thus in Mayo, had the inventors presented a novel method of analyzing blood, as opposed to simply claiming the understanding of the meaning of the test results, the claim as a whole would have been directed to patentable subject matter.

              1. 12.2.1.1.2.1.1

                Ned: even if the rules themselves were completely ineligible and completely old and known, the claim would still pass muster if the method of applying them to produce improved lip syncing were new or improved.

                There is no “improved result test” for patent eligibility. Sorry but that’s not how it works, and we can all be very thankful for that.

                Think Diehr.

                Diehr’s obvious junk claim was deemed eligible only because the obviousness of its physical components was not addressed.

                simply including ineligible material subject matter in a claim otherwise directed to patentable subject matter does not render the claim as a whole ineligible.

                Nothing I’m saying is inconsistent with this. We’re talking about a programmable computer that exists to carry out instructions that are ineligible for patenting. The only difference between the claim here and the prior art are those ineligible instructions. That’s a huge problem. You can ignore the problem by creating a legal fiction that says “don’t think about this because $” but the problem doesn’t go away. It’s never going away until legal fiction (“logic is an ineligible abstraction except when it’s carried out by a computer because then it’s the essence of electronic structure”) is eliminated from the system. At that point, “do it on a computer” patents will be eliminated from the system and the patent system will return to something resembling a sane system. Until then, the farce will continue.

    3. 12.3

      “This case is “important” only insofar as it represents the inevitable step backwards that the CAFC takes whenever it takes two baby steps forward.”

      The pendulum is swinging back…. is that what you mean?

      1. 12.3.1

        The pendulum is swinging back…. is that what you mean?

        Right. And when you recover from the flu, you’re becoming younger!

        Never stop believing.

        1. 12.3.1.1

          Malcolm – you are the one leaning entirely on “believing”

          That, and your typical empty ad hominem.

          Now you resort to your favorite rhetorical t001 of AccuseOthersOfThatWhichMalcolmDoes…

          You
          F001
          No
          One

  14. 11

    Undisputable facts:
    – A method claim is infringed by performing the acts recited in the method.
    – Claims are given their BRI by a PHOSITA in light of the spec when performing 101 analysis.*subnote1
    – Each and every act of the claim in the presented patent can be performed (and therefore the claim infringed) by a human-being mentally thinking or using pen and paper.

    Let’s go over them in detail.

    1) obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said sequence
    – reading a chart (or perhaps picking up the chart that’s written on paper), the chart comprising a simple look-up table that gives weight vectors based on the look-up of the current phoneme and the most recent prior phoneme (and maybe future phoneme).
    2) obtaining a time data file of phonemes having a plurality of subsequences
    -reading a piece of paper containing phonemes in a sequence and their respective “time”
    3) generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph …. by evaluating said plurality of subsequences against said first set of rules
    – using the look-up chart you just read, as well as the piece of paper containing the phonemes sequences, to create a list of weight vectors. Mentally generated or maybe you write it down on paper.
    4) generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters.
    – removing from the list of weight vectors, any vector whose display time is too short a duration to actually be displayed/relevant/matter. Mentally removed if the list is mental, or you erase or cross out the written on paper list items. In the context of the example presented for step 5 below, it could be the facial expression between drawn frames that is dropped.
    5) applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.*subnote2
    – drawing the faces and lips of cartoon characters in a comic strip based on what they are saying and the previously generated final list of weight vectors.

    The claim in its entirety is an abstract idea infringable by a human-being using their brian and pen and paper. There are zero limitations in the claim that are not the abstract idea. And, therefore, there is absolutely nothing to consider for step 2 of mayo. “the ordered combination” doesn’t matter, because a claim that is wholly and absolutely abstract is still abstract regardless of what combination it is presented in. Similarly, limitations from the spec are not read into the claim. The CAFC saying “As the specification confirms, the claimed improvement here is allowing computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters”” is embarrassing. This language is nowhere in the claim. Shame on you CAFC. First, there is nothing in the method claim even close to the word “computer”. Second, nowhere does the claim require the result to have any particular degree of accuracy or realism. There is no synchronization threshold in the claim. The claim can still be infringed when achieving the result of completely unrealistic and inaccurate lip synchronization.

    *subnote1: there’s often debate regarding steps performable mentally by humans, and the pendulum of i) “interpreting the claim in light of the spec” versus ii) “don’t read limitations from the spec into the claim”. Some proponents argue that a very broad verb act (eg, obtaining a first set of rules…) is not reasonably construed as infringable and performable by a human being mentally if the spec does not mention that the act can be performed by a human mentally or via pen and paper (using interpretation basis i of the pendulum). Other proponents argue that a very broad verb act is reasonably construed as infringable and performable by a human being mentally, even if the spec’s only example embodiment is achieved by a computing device, because examples aren’t necessarily limiting and limitations in the spec are not read into the claims (using interpretation basis ii of the pendulum). Basis ii is the current standard for all other 101 exceptions and is used for abstract ideas as well.

    *subnote2: The interpretation of step 5 is the catalyst to the entire claim. The lack of addressing this step in detail by either district or cafc is quite embarrassing. For comparison, the method comprising only steps 1-4 is undeniably abstract and infringable by a human by merely thinking. Step 5 may invoke 112f (sixth paragraph). It discloses a result: “[in order] to produce lip synchronization and facial expression control of said animated characters” and broadly discloses an act “applying said final stream of output morph weight sets to a sequence of animated characters”. Unfortunately the act is commensurate in scope with the result because the result is also broad, and therefore it probably shouldn’t invoke 112f. If the result had been more specific (e.g., “in order to produce lip synchronization and facial expression control of animated characters within x degree of accuracy” or some other hopefully definite nonsense) it would undoubtedly invoke 112f. The lack of addressing the claim construction of step 5 in detail by the courts is unacceptable.

    The reason we want the last step to invoke 112f is so we can look to the spec, and read limitations into the claim’s step 5 for how the final stream is “applied” to produce this particular lip synchronization. In doing so, we may be able to narrow the claim interpretation enough so that step 5 can not possibly be construed as performable by a human-being mentally or via pen and paper. Hopefully something regarding 3d computer animations and how a computer is doing xyz to achieve the result, etc.

    When a claim can be infringed by a human-being either mentally or using pen and paper, it is non-statutory under 101. This trumps all. You do not get a monopoly on how a human can think.

    But, as noted above, both of these decisions by these courts are embarrassing. Neither of them walk through the steps of the method claimed and discuss which steps can be achieved by a human-being mentally. And that is the foundation of analysis when determining whether something is “abstract”. Basic claim construction, how does it work? Stop trying to summarize claims for quick decisions. Actually go through and look through the claims element-by-element or step-by-step. Only then can you even begin to start 101 analysis.

    1. 11.1

      penny: The CAFC saying “As the specification confirms, the claimed improvement here is allowing computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters”” is embarrassing. This language is nowhere in the claim. Shame on you CAFC. First, there is nothing in the method claim even close to the word “computer”. Second, nowhere does the claim require the result to have any particular degree of accuracy or realism. There is no synchronization threshold in the claim.

      Yup.

      And with respect to your additional points, the larger point is that there is nothing whatsoever here that is directed to specifically improving computing functionality, generally (regardless of data “content”). It is a method of applying logic, carried out by a prior art programmable computer, where that logic is relevant to a prior art context (animation — literally an art form).

      You might as well claim a method of drawing a picture “on a computer”, using logic, where that picture is allegedly “more accurate” than a drawing using some different logic. Totally awesome! What could possibly go wrong with polluting our patent system with stuff like this?

    2. 11.2

      The claim cannot be infringed by anyone and the “entirely in the mind” rendition that you desire.

      Sorry, but you are just not correct.

  15. 10

    Interesting words from Random at 5.1.4, including:

    “….what the claim is saying is that the shape of a mouth at any given time is based upon how the part of a word sound that is being made at that time.

    That’s not telling you anything new”

    And Random’s conclusion?

    “…unless you think it is relevant that (in animation, mind you) the claims are drawing pictures in a relative manner – relative to base looks. I think that is nothing but conventional.”

    Me, I think it that very thing might be “relevant” to patentability. What if the secret of success, in getting computers rather than a human to do animation, is the insight that one should indeed draw the pictures “relative to base looks”?

    But apart from that, I suspect what got this claim through the eligibility filter is that it is directed to a manner of new manufacture (pace England’s centuries old “Statute of Monopolies” rather than to a business machine.

      1. 10.1.1

        In case it isn’t clear to anybody, by “business machine” I mean a machine, any old data processor, but one that has been programmed with business services software, regardless whether or not that software as such is new, and whether or not it’s inventive. The data proceesor in Diehr, for example, was not a business machine but, rather, a rubber moulding machine.

        1. 10.1.1.1

          You do realize that by programming you have changed the previous machine, right?

          Proper patent doctrine here is inherency.

        2. 10.1.1.2

          Further, your attempt with example of Diehr simply does not answer the direct question I asked of you: is “business machine” somehow not a machine?

          You seem hung up on the word “business” – are you once again not respecting differences in sovereign choices?

    1. 10.3

      What if the secret of success, in getting computers rather than a human to do animation, is the insight that one should indeed draw the pictures “relative to base looks”?

      There’s absolutely nothing to back this up other than conjecture. The application doesn’t assert that efficiencies are created by considering a look as relative-to-base-looks. Plus, assuming that were true, do you really think something becomes *less* abstract because it is structurally the same but thought about in a different manner? What happens to the embodiments that are “base” looks? (i.e. the claim embraces in one embodiment a picture of a person not speaking, which would definitely be a base picture and clearly existed in the prior art)

    1. 8.1

      He already gave his “feelings” on an earlier thread, and has nothing by way of actual legal analysis to present.

  16. 7

    “A second problem with the framework is that the meaning of “abstract” has not been fully defined.”

    Hilarious, Professor. But yes, you are right. A term that NEVER has been defined, by definition, has not been “fully” defined. Or use any other adjective you like before “defined”. The genus covers all species.

    This is banana republic jurisprudence.

  17. 6

    Any significance to the fact that all three judges are Obama appointees and so might be thought to have anti-patent leanings? Or is that not how these things work?

    [ -2L, new to all things patent ]

    1. 6.1

      Some on this board usually insist on such; no real evidence to support that assertion except a loose correlation between left-leaning judges and skepticism wrt to patents.

      To clarify, the individuals asserting such usually imply appointments that are “pro-google” due to improper persuasion because of money.

      On the other hand, the Supreme Court has been fairly unanimous wrt its patent jurisprudence – it doesn’t really break down on “party” lines.

      Both find certain aspects to not like about patents, both find certain aspects to like about patents.

    2. 6.2

      interesting observation Patrick and welcome to the jungle.

      It is interesting that all three judges have previously ruled software claims ineligible and now they all rule these claims eligible. This is very significant because we are starting to see a line in the sand and not just the randomness of different judge panels. These three judges have indeed been painted as being anti-software. I still believe them to be anti-software but they have surprised me a little here.

    3. 6.3

      Any significance to the fact that all three judges are Obama appointees

      None.

      so might be thought to have anti-patent leanings

      Except Obama, like all Kenyans, is s00per d00per disturbed by abrupt mouth movements on animated 3D characters. You didn’t know this?

  18. 5

    Defendants’ attorney’s argument that any rules-based lip-synchronization process must use the claimed type of rules has appeal, but no record evidence supports this conclusion. Defendants again rely only on the patents’ description of one type of rules, but the description of one set of rules does not mean that there exists only one set of rules, and does not support the view that other possible types of rules with different characteristics do not exist.

    This language *should* draw a Supreme Court review based on my post at 4. This is the relevant distinction.

    The Defendant suggests that the claim is directed toward all ways of doing something. The Patentee counters that other manners could exist. The court looks at the lack of evidence either way and under their written description genus/species logic comes to the conclusion that the claims don’t preempt all manner and stand absent further information.

    The actual rule is the opposite – under the 101/112b dichotomy, the claim fails because of precisely that inductive reasoning – the lack of evidence that there are not other rules which achieve the function means it is unreasonable to use the vague functional language to describe the disclosed rules in the specification.

    Analogy – Applicant invents the bow. Claim 1 discloses the structure of the bow – the wood, the string, etc. Claim 2 claims a machine that fires projectiles by applying string propulsion. Under the standard the Federal Circuit is using, a defendant can’t use a 101 defense to Claim 2 because they haven’t proven that string propulsion is the only manner of firing a projectile (completely opposite of the Morse holding) and they can’t use a 112b defense because a bow actually fires projectiles (opposite General Electric). Instead, they have to use a 112a defense and provide evidence that there may be other manners of firing projectiles, such as via chemical explosion.

    Under the proper Supreme Court standard, the specification’s failure to prove that string propulsion is the only manner of firing projectiles is sufficient to tank the claim – the mere possibility that a gun may be invented triggers the overbreadth concern.

    See, e.g. Morse: “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.”

    How does that not apply here? The Federal Circuit itself says the claims are drawn to a genus. Are there not species within the genus that are qualitatively different from the disclosed species? One would think so, or otherwise the Federal Circuit would be calling the claim as being directed to a species. If the specification simply describes a species and the claim is drawn to a genus, does that not trigger the fear that “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”?

    One can see by the use of the words “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.” That the Morse logic compels the Written Description requirement. But Morse was a case that was solved on its own, with mere logical reasoning and without the need for extrinsic evidence taking. The Federal Circuit’s WD requirement demands additional showings and evidence from the defendant, and the instant opinion makes them a requirement of law, as it forecloses the Morse logic-only rejection.

    It is a moving of the goalposts. The Supremes may not take it (I don’t understand why one does not demand that WD and particularly claiming be decided alongside 101 – get a holding that says the evidence is insufficient so that an argument can be made on appeal that the evidence isn’t necessary under the proper standard) but they should because the claims are invalid under the 101/112b dichotomy.

    1. 5.1

      Random, Faulkner v. Gibbs. Only when the claims are functional at the exact point of novelty is there a problem. That is not the case here. There appears to be novelty in a combination were the rules to be applied themselves were just one element of that novel combination.

      I found this persuasive:

      The district court determined that claim 1 of the ’567
      patent is “drawn to the [abstract] idea of automated rulesbased
      use of morph targets and delta sets for lipsynchronized
      three-dimensional animation.” Patentability
      Op., 55 F. Supp. 3d at 1226. We disagree. We have
      previously cautioned that courts “must be careful to avoid
      oversimplifying the claims” by looking at them generally
      and failing to account for the specific requirements of the
      claims. TLI Commc’ns, 823 F.3d at 611; see also Diehr,
      450 U.S. at 189 n.12. Here, the claims are limited to rules
      with specific characteristics. As the district court recognized
      during claim construction, “the claims themselves
      set out meaningful requirements for the first set of rules:
      they ‘define[] a morph weight set stream as a function of
      phoneme sequence and times associated with said phoneme
      sequence.’” J.A. 4171 (Dist. Ct. Claim Construction
      Op. 16) (quoting ’567 patent, cl. 1). They further require
      “applying said first set of rules to each sub-sequence . . . of
      timed phonemes.” Id. Whether at step one or step two of
      the Alice test, in determining the patentability of a method,
      a court must look to the claims as an ordered combination,
      without ignoring the requirements of the individual steps. The specific, claimed features of these rules allow
      for the improvement realized by the invention.

      The rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences. See, e.g., ’576 patent
      col. 3 ll. 19–33. Defendants do not dispute that processes
      that automate tasks that humans are capable of performing
      are patent eligible if properly claimed; instead, they
      argue that the claims here are abstract because they do
      not claim specific rules.

      If the novelty is in the combination, each element of that combination can be expressed broadly without encountering the problem of Morse. I think the result here is correct.

      I think the problem the lower court had with the claims was the assumption that the only novelty was in the rules when it appears that the timing of the application of the rules, and other limitations like that, were both novel and an improvement.

      Now, if this is factually incorrect, and what I am saying here about the facts is in fact not true, then I will reconsider.

      1. 5.1.1

        Faulkner v Gibbs….?

        Ned – pre 1952 and (once again) you attempt the canard of “Point of Novelty” in a 101 setting.

        Please use the appropriate and controlling law as written by Congress.

        Thanks.

        (ps: claims as a whole…)

      2. 5.1.2

        I think its not whether the claim is functional at the point of novelty, but rather if you seek to patent a means or an end? The former being patent eligible, the latter is not.

      3. 5.1.3

        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. “

      4. 5.1.4

        The rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences.

        A “morph weight set” is just a fraction between two pictures. For example, you might approximate a “smirk” as: For one side of the face, .33 of a “smile”, .67 of a “resting face.” (Obviously this would be with sound-based mouth shapes, but you get the idea)

        Timing needs no explanation.

        Phoeneme sub-sequences just means “part of how a word sounds.”

        In other words, what the claim is saying is that the shape of a mouth at any given time is based upon how the part of a word sound that is being made at that time.

        That’s not telling you anything new.

        The only thing that is new is that hard-and-fast rules are applied (as they have to be, as its on computer) between base images as opposed to just a general “feeling” that that is how it should look when it is drawn by hand. *Of course that is the case* – a computer has to function by rules.

        You’re trying to make a “novelty in the combination” thing where none exists – the claims command rules to be made and then command applying the rule at the time the rule would be applied – unless you think it is relevant that (in animation, mind you) the claims are drawing pictures in a relative manner – relative to base looks. I think that is nothing but conventional.

    2. 5.2

      I don’t understand why one does not demand that WD and particularly claiming be decided alongside 101

      You are correct – you do not understand (and hence, you show that you understand neither).

      ;-)

    3. 5.3

      I agree with RandomGuy that these claims seem to me to fail the WD requirement. The CAFC seems to be saying that the claims really are limited to some particular genus of rules disclosed in the application, but I just do not see this limitation in the claims. It looks for all the world to me like the inventors have invented one set of rules to achieve a particular effect, and then they claim all rules that achieve that same effect. This is not a valid claim under Morse.

      I am glad, however, that the CAFC shot down the 101 invalidity. To say that these claims are not valid under 112(a) is not nearly the same as to say that they are invalid under 101. As others on this board are frequently careful to point out, it is not enough for a court merely to reach the right result. They need to get there by the right legal doctrine. If they had let the invalidity one 101 grounds stand, it would have done all sorts of mischief in other cases, even in cases where the claims do not fail the WD requirement.

      1. 5.3.1

        Yup to your second paragraph (and so often the “Ends justify the Means” mindset is simply unthinkingly adhered to that one has to wonder why)

      2. 5.3.2

        “obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;”

        It is not possible to recite every set of rules fairly encompassed by the invention. In any given embodiment, the rules say get to state Y from state X via path P. One can vary path P an infinite number of ways and still be using the inventors invention (define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence). Path P is immaterial and one should not be able to work around the patent by varying path P. A finger print characteristic that says that method R is an example of the invented method is that the morph weight set stream is generated as a function of phoneme sequence and time of said phoneme sequence. If an accused method includes all the finger print characteristics recited in the claim, it is an infringing method.

        1. 5.3.2.1

          Hm, so you mean to say that the claim language conveys to a person of ordinary skill particular features about the claimed rule? If so, then I stand corrected about my conclusion that these claims fail the WD requirement. I gather that RandomGuy disagrees with you about the degree to which one could recognize actual features of the claimed rule from what is said in the claims, but I am certainly not the person of ordinary skill in this field, so I am not competent to decide which of you is correct. I thank you, however, for pointing out to me that there is more to the claims than I had quite appreciated at first.

          1. 5.3.2.1.1

            Read the decision. The court explains the particular features the court found in the claim language about the rules, i.e., why they found the claims were not directed to merely an abstract idea…

            1. 5.3.2.1.1.1

              Sure. I did read the decision and I know that is what the court says. I guess I am not necessarily convinced that the court was correct, but I realize now that I am not really properly equipped to say whether it was right or not. This technology is more outside my realm of understanding than I had first realized. I withdraw any claim about whether or not these claims satisfy WD. I stand by my agreement with the court’s 101 analysis, however.

        2. 5.3.2.2

          You can’t claim “Getting from X to Y.” Path P is the invention. The fact that you don’t want to claim your Path P when “one can vary path P an infinite number of ways” is just a statement that you don’t think your invention is particularly effective or useful at performing the abstract idea.

          Path P is immaterial

          Wrong. Path P is all that matters. Embodiments with a good ruleset have value, embodiments with a bad ruleset have none. The entire utility of the invention is premised upon which rules are written.

          1. 5.3.2.2.1

            I’m not sure what you are thinking here. In my mind, path P would be different for different characters. Foghorn Leghorn’s mouth moves differently than Yosemite Sam’s.

            If path P doesn’t make any sense or does not work, you are not practicing the claimed invention, since as you are fond of complaining about, the claims recite a result.

      3. 5.3.3

        The CAFC seems to be saying that the claims really are limited to some particular genus of rules disclosed in the application, but I just do not see this limitation in the claims.

        Yes, but further – assuming it to be true, you can’t just stop the analysis at “oh it’s a genus so we consider it under 112 instead of 101.” Alice was limited to a “genus” of calculations that are “done on a computer.” That genus limitation was not considered under the first step of the alice analysis and wasn’t even sufficient to change the outcome under the second step.

        It looks for all the world to me like the inventors have invented one set of rules to achieve a particular effect, and then they claim all rules that achieve that same effect. This is not a valid claim under Morse.

        EXACTLY – doing that is not valid UNDER MORSE. The problem is that because the Federal Circuit didn’t apply Morse correctly, they had to write Ariad. And now they are saying “Gee this doesn’t look valid UNDER ARIAD.” It’s probably true its not valid under Ariad, but the Ariad test and the Morse test are different tests, and it’s not proper to say that because Ariad is a test we like more we give it a pass under Morse.

        If they had let the invalidity one 101 grounds stand, it would have done all sorts of mischief in other cases, even in cases where the claims do not fail the WD requirement.

        There’s just no way to square this statement with the above one. Morse may sound in what today we call WD, but Morse is a 101 case. When the logic of Morse applies, the proper rejection is under 101. When you invent one species of a genus but then claim the whole genus you are using inductive logic to claim an abstraction. That is a 101 violation, per Morse.

        The fact that the Fed Cir came up with a similar test that considers the support for a genus as opposed to a species and call it “written description” doesn’t displace the Supreme Court caselaw. They lack the ability to displace the caselaw.

        You’re letting the tail wag the dog. Which is doubly wrong because the WD test under the Fed Cir is more stringent (in some respects) than the logic of Morse. But the logic of Morse is sufficient to reject, and the Fed Cir, as an inferior court, can’t go commanding an additional hurdle be met to find invalidity. Under the Morse logic, the mere fact that the inductive logic is used (I created one rule, other rules would exist, I assume they would all be similar to my rules, thus I claim all rules) is sufficient to tank the claim. Under WD, there is essentially a requirement that the inductiveness be sufficiently improper (i.e. Defendant – prove that the other rules that would exist are not similar). That extra hurdle cannot stand.

        I just don’t know how you can say that a Supreme Court case fits the facts, but then turn around and say it was proper for the Federal Circuit to displace the Supreme Court test with their own.

        1. 5.3.3.1

          As I explained elsewhere, I disagree with the premise that Morse is a 101 case. I think that Morse is a WD case. In any event, if McRO really did invent one rule and then claim all rules that achieve the same effect, then I agree that the claim is invalid under Morse. I just do not agree that this makes the claims invalid under 101, because I do not agree that Morse is a 101 case.

          1. 5.3.3.1.1

            Greg, you and I are in full agreement on this. The Supreme Court went off the deep end in Bilski. Stevens was right, and always has been right. I was hoping that the Federal Circuit would understand that the Supreme Court in subsequent cases such as Mayo and Alice were migrating toward the Stevens view that the problem with business method claims is the fact that business methods are not patentable subject matter under 101 and not because they are abstract.

            1. 5.3.3.1.1.1

              Couple of responses:

              (1) We both agree that Morse should not be understood as a 101 case.

              (2) I am not sure that I agree that the Court “went off the deep end” in Bilski. Mostly I think that the Court simply made a muddle of things in Bilski, but more in an incompetent manner than in a crazy manner.

              (3) I definitely do not agree with Justice Stevens’ Bilski concurrence. I think that Justice Stevens’ Flook opinion proves that he never really understood 101, and his Bilski concurrence simply confirmed as much in my mind.

              (4) I also do not agree that business methods are per se in eligible. Many such methods, of course, are unpatentable, but I just cannot see statutory warrant for the claim that they are all per se excluded. It might well be a good idea for Congress to go ahead and craft such a per se exclusion (I take no position one way or the other, having not thought carefully enough about the point), but I cannot agree that Congress already has done so.

              1. 5.3.3.1.1.1.1

                Quit in fact, Congress has expressly NOT done so, Greg – and both you and Ned should know this by now.

                Tell me Ned, why would Congress even need to create a partial “out” for business methods in the original PUR, if your view were indeed correct?

                The answer of course is that they would not – any such legislation would de facto be void as unnecessary.

                Is it time yet again for you to run away from this long understood counter point?

  19. 4

    Wow, what a great writing that shows exactly how the CAFC went off the rails:

    Defendants do not dispute that processes that automate tasks that humans are capable of performing are patent eligible if properly claimed; instead, they argue that the claims here are abstract because they do not claim specific rules.12 This argument echoes the district court’s finding that the claims improperly purport to cover all rules. Patentability Op., at 1227. The claimed rules here, however, are limited to rules with certain common characteristics, i.e., a genus.

    Claims to the genus of an invention, rather than a particular species, have long been acknowledged as patentable…Patent law has evolved to place additional requirements on patentees seeking to claim a genus; however, these limits have not been in relation to the abstract idea exception to § 101. Rather they have principally been in terms of whether the patentee has satisfied the tradeoff of broad disclosure for broad claim scope implicit in 35 U.S.C. § 112.

    When the opinion says “Patent law has evolved” the “evolution” being talked about is the Ariad-style 112 written description requirement, since 112a’s enablement and 112b’s particularly claim requirement have been around since the beginning of claims.

    The Supreme Court has never endorsed the written description requirement, let alone called it the sole test for determining a proper breadth of scope.

    The reason the written description requirement “evolved” is because the CAFC misapplied both halves of the previous overbreadth standard: Morse and General Electric (i.e. abstractness and particular claiming). Following the 1952 act the CCPA read 112b (which used virtually the same language as the prior statute) as only failing to be definite when the claims were insoluably ambiguous. In other words, the particular claiming that provided notice to the public was essentially written out of the statute. They no longer followed General Electric. Similarly, both the CCPA and the CAFC simply didn’t apply the abstractness test so long as there was *any* machinery whatsoever. This essentially wrote Morse out of the caselaw.

    Prior to 1952, overbreadth was handled in two ways – enablement and with an abstractness/particularly claiming dichotomy. This case, where the command is to come up with a set of rules that achieve a function, cannot accurately be policed by enablement, because there is no mechanism by which one can measure a-priori the hypothetical person of ordinary skill’s ability to rationalize. The prior-to-52 caselaw made it simple: If the claim was intended to be directed to a particular ruleset, but the ruleset was not claimed, the claim failed under 112b because it failed to point out and particularly claim the subject matter of the invention. When the claim was intended to be directed to the application of a range of rules, it failed under an abstractness test because it was nothing more than a command to apply an abstract concept.

    Notice how the above paragraphs are couched in terms of a WD analysis – the question they ask is whether the genus is sufficiently supported. That has the effect of placing on the defendant a burden – a showing that what is disclosed does not “fill the breadth” of the claim. Under the pre-52 analysis, the mere fact that inductive reasoning was used was sufficient to kill the claim.

    If the best rejection to be made is not a 101, it is a 112b rejection under General Electric. I simply don’t see how it could be anything else – the admitted prior art is that there was no ruleset, everyone agrees the invention is in the application of new rules, and the rules are claimed by their functional result. How is that any different from structurally-undescribed filaments that are claimed by their functional result? General Electric was cited by approvingly by Nautilus and is still good law.

    Either way, the claims can be disposed of on their face based on the disclosure. One simply cannot do what this disclosure wants to do – provide an example and then claim anything else that achieves the function. You simply cannot provide a species and then count on inductive reasoning to get you to a claim to a genus. Morse said that. Lizardtech said that. Perkin’s Glue said that. It’s true that that would fail under a 112a WD analysis (barring further facts) but it should be disposable under 101/112b on its face.

    1. 4.1

      Just to be super clear here: The Court thinks its better to take this issue under WD than abstractness. The sole reason they think that is because they invented WD. The reason WD was invented is because they spent 40 some years misapplying the previously established 101/112b.

      They had to reinvent the wheel because they were using a perfectly good wheel wrongly for so long, and now they claim their reinvented wheel is the only manner of getting around.

      1. 4.1.1

        A couple responses:

        (1) “The Court thinks its better to take this issue under WD than abstractness.” I agree that the court thinks that it is better to take this up under WD than under 101. As it happens I agree with the court on this point.

        (2) “The sole reason they think that is because they invented WD.” Hm, I disagree. I know that a lot of people like to say that Morse was decided on 101 grounds, but Morse does not actually purport to ground its holding in the contemporary antecedent to 101. I think it is much better to understand Morse as having been decided on WD grounds, although the precise “written description” terminology did not yet exist at the time. In other words, the CCPA did not invent WD. The SCotUS did. The CCPA/CAFC just continue to apply it.

        (3)”The reason WD was invented is because they spent 40 some years misapplying the previously established 101/112b.” Hm, once again, I disagree. I agree that there are pre-1952 101 precedents and 112(b) precedents that the CCPA/CAFC could have used to reach the same result here, but I would submit that if the CCPA/CAFC preferred to invoke WD instead of 101 or 112(b), it is because those pre-1952 precedents sit uneasily with the 1952 statute.

        For example, it is technically accurate but nonetheless misleading to say that “the 1952 act… used virtually the same language as the prior [112(b)] statute.” 35 USC 70 of the 1946 did not provide (as the 1952 act provides) that proof of invalidity must be by clear and convincing evidence. It is not crazy, once the Congress raises the standard for proving invalidity, that the interpretation of invalidity provisions should change accordingly. In other words, it is perfectly valid for the CCPA to have concluded that the Congress had over-ruled the Supreme Court (as is their right when it comes to matters of statutory law, McClurg v. Kingsland, 42 U.S. 202, 206 (1843) (“[T]he powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution…”)), in which case they would have been grounding their holding in obsolete law if they were to use 112(b) instead of 112(a).

        (4) “They had to reinvent the wheel…” I simply disagree that the WD requirement constitutes a case of reinventing the wheel. As I said above, the SCotUS invented the WD requirement in Morse. The most that the CCPA/CAFC can be said to have done is to have given the requirement a new name, and to have grounded it more carefully and explicitly in a particular statutory text than the SCotUS had previously done.

        1. 4.1.1.1

          So many (including especially Ned), do not understand that “plenary” bit about Congress and what happened in 1952.

          Of course, this is typically driven by the desired ends that these sAme ones ant the statutory law to be (even as they want to be able to use the wrong branch of the government [i.e., common law] as the means to those ends).

        2. 4.1.1.2

          I know that a lot of people like to say that Morse was decided on 101 grounds, but Morse does not actually purport to ground its holding in the contemporary antecedent to 101.

          No, Morse is clearly a 101 case. I can understand your position that it seems in some language in that case to be talking about WD, but that is simply because when you go super-broad with your functional language you have both a WD problem (as you lack possession of the full scope) and a 101 problem (as it preempts).

          As you get more and more vague at some point you pass the boundary where you are inventing and you are simply commanding others to invent. I would like a flying car. A flying car is probably enabled (in some manner) by currently existing technology. If I turn to an engineer and say “Make me a flying car” it frightens the word out of its meaning to call me “the inventor” of that car. I had an idea or a desire and someone else invented to meet my desire. It is true I lack the full scope of “flying cars” under 112, but I fail to even meet the 101 standard of getting beyond an abstraction.

          The claim is a command to apply rules to achieve a result. The rules are not limited to a particular ruleset, and the limitations that are placed on the rules are vague and true of a vast swath of rules. The applicant not only lacks full possession, *but is not an inventor of the generic scope.*

          35 USC 70 of the 1946 did not provide (as the 1952 act provides) that proof of invalidity must be by clear and convincing evidence.

          That’s not the relevant issue. The relevant issue is that prior to 1952 112b had substantive claim-tightening requirements – the phrase “point out and particularly claim” had teeth. Post-52 that phrase was essentially rewritten as “have some definable meaning.” There was no longer a requirement that a claim be particularly limited to the subject matter someone was claiming as the invention.

          The way this claim would have been done prior to 52 would be to ask if the claim was directed toward the particular rules disclosed in the specification. If the answer is yes, the claims would be struck under 112b because listing a quality is not a particular claiming of the rules. If the answer was no it would be struck under 101 because it would be a claim to the abstract act of using generic rules.

          The only reason you’re calling it a 112a rejection is because you view 112b’s command to particularly claim the subject matter of the invention by the federal circuit’s post-52 interpretation of it – i.e. a person can claim whatever they want, and we police overbroad scopes under 112a. But the “particularly pointing out” language of 112b was preexistent and was previously interpreted as a substantive check on what the claim could say.

            1. 4.1.1.2.1.2

              Sure, but RandomGuy’s point above was that the antecedent statutory text (35 U.S.C. 33 (1946)) was nearly word for word identical to the 1952 112(2). The 1946 US Code said (section 33) that “[b]efore any inventor or discoverer shall receive a patent… he shall make application therefor,… and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” This is the part of the statute on which United Carbon and Wabash are grounded. Given that the statutory language did not change in this regard when the1946 § 33 transitioned into the 1952 § 112, it follows that United Carbon and Wabash are still good law (except to the extent that Wabash is superseded by the addition of § 112(3) to the 1952 code). That, I take it, is the only point that Random Guy is trying to make, and so far as that goes I think he is correct.

              1. 4.1.1.2.1.2.1

                Greg, it might also be useful to point out that the Supreme Court in Nautilus, link to scholar.google.com, relied heavily on both United Carbon (1942) and Wabash (1938). The Supreme Court obviously believes that the current statute regarding definiteness of claims did not overrule those cases.

                1. Ned,

                  The Supreme Court is infamous for ig noring the Act of 1952. Providing more examples of their “broken scoreboard” syndrome, while talking about their broken scoreboard tendencies is rather NOT compelling.

                  At all.

              2. 4.1.1.2.1.2.2

                Just because the words may align does NOT mean that the law was unchanged, Greg.

                Clearly, the revamp and unfolding of a single paragraph into separate sections indicates otherwise.

                1. I take your point when it comes to §§ the definite of patentable subject matter. That material had all once been together in 1946 § 31 and the 1952 act split into §§ 101, 102, & 103.

                  When it comes to rules of adequate disclosure and clarity of claims, however, Congress did not break the old 1946 § 33 into different sections. It all came over into 1952 § 112. I suppose you can say that it was split up into separate paragraphs, but that seems like a really thin reed on which to hang an argument that Congress intended to supersede pre-1952 case law related to adequacy of disclosure and clarity of claims.

                2. Whoops, I hit “post” before I had finished revising. The first paragraph above should say:

                  I take your point when it comes to the definition of patentable subject matter. That material had all once been together in 1946 § 31 and the 1952 act split into §§ 101, 102, & 103.

          1. 4.1.1.2.2

            No, Morse is clearly a 101 case. I can understand your position that it seems in some language in that case to be talking about WD, but that is simply because when you go super-broad with your functional language you have both a WD problem (as you lack possession of the full scope) and a 101 problem (as it preempts).

            Allow me to meet you half-way. I can agree that there are notes of Morse that sound in § 101. It seems to me, however, that those parts of Morse are basically irrelevant nowadays. Sure, next time someone writes a claim “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of [law of nature]…,” then we can say that this claim is invalid under § 101.

            However, no one ever writes that sort of claim anymore. Certainly that is not the sort of claim at issue in McRO. Rather, the part of Morse that really is at issue (or at least should be at issue) in the McRO litigation is the part of Morse that holds that “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,” (emphasis added). O’Reilly v. Morse 56 U.S. 62, 113 (1853). This part clearly sounds more in WD than in § 101.

            In other words, I will agree with you that Morse concerns § 101, but not in any way that is really relevant to the present case. Meanwhile, the SCotUS has treated Morse as a WD case as often as a § 101 case. See, e.g., Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 257 (1928); Mitchell v. Tilghman, 86 U.S. 287, 392 n.† (1874). Therefore, I stand by my assertion that the CCPA has done no violence to the jurisprudence. It is merely funnelling Morse into the appropriate statutory channel in view of the fact that Congress has rearranged the statutory text since Morse was handed down.

            1. 4.1.1.2.2.1

              Greg, I do not know if there is any black-and-white in this issue, it is all gray. How can one say that there is any difference between a claim that is broader than what the written description supports and a claim that is effectively claiming at the level of an idea, the so-called “principal in the abstract?” Are they not essentially the same thing?

              1. 4.1.1.2.2.1.1

                Not only are they not the same thing, but it seems to me that it is really important not to confuse the two.

                Some examples should illustrate the point:

                (1) I describe a motor car in my application, but I later amend my claims to claim a sail boat. There is no doubt that a sail boat is an article of manufacture, so there is no 101 problem here, but there is still a WD problem.

                (2) I disclose compounds with methyl, ethyl, propyl, and butyl substituents. Then I amend my claims to claim compounds with C1 to C50 alkyl substituents. Once again, there is no 101 problem here. Even with the C50 substituents, the claimed compounds are still very much compositions of matter, and they are not products of nature. Still and all, there is very likely a WD problem.

                (3) I describe every last phenomenon that can occur from assembling a certain combination of zinc and mercury salts. Every last one. There is not a thing that I do not say on the subject. Then I claim: “all useful effects of achieved by combining a zinc salt selected from… and a mercury salt selected from… .” There is no WD problem here. By the terms of my hypo, I have described every phenomenon. Still and all, there is a 101 problem.

                In other words, these issues really are analytically distinct. I am not saying that they are mutually exclusive. A given claim may fail for both 101 and WD. I am saying, however, that the assertion that there is no black and white, that it is all gray, is wrong. One can, if one cares to think carefully, separate out the WD problem from the 101 problem. The fact that can both occur at times in the same application does not mean that WD shades into 101, or vice versa.

                1. Summary: claiming a principal in the abstract certainly has a written description problem, but just because something has a written description problem does not mean that one is claiming in the abstract.

                  I do not disagree.

                  So while claims might be too broad, if they include some of the necessary means or method for carrying out the invention, they are claiming something non-abstract. But, when one is claiming a result, as opposed to claiming any means or method for achieving that result, one is claiming at the level of abstraction.

                  Thus, if one includes some of the means or method for achieving the result in the claim, one is not claiming an abstraction and there really is no 101 problem, albeit there might still be a written description problem.

                  Good discussion.

              2. 4.1.1.2.2.1.2

                Ned,

                “principle in the abstract” was one of some 20 or so synonymous terms that made Congress be fed up with the Supreme Court enough to act and revoke its prior granted common law authority to set the meaning of the word “invention.”

                Congress instead opted for section 103.

                That the Court is mashing wax nose of 101 with the recycling of “principal in the abstract” and the absolute mess they have made of 101 is merely reflected in its dismissal of what happened in 1952.

            2. 4.1.1.2.2.2

              Parts of Morse “sound in 101” because at the time of Morse, there was NO 101, but only a single paragraph.

              It is the Supreme Court itself, in its own scrivining in the post-1952 era that has – solely on its own – “decided” to attempt to rewrite 101 AS IF that single paragraph was STILL ALL IN 101.

              This is simply legal error.

              That the error is being made by the Supreme Court does not make any LESS of an error.

              1. 4.1.1.2.2.2.1

                I agree that the SCotUS is badly messing up §101. My point is that, to the extent that Morse speaks to §101 issues, I do not think that the Congress drafted 101 in a way to abrogate Morse. However, the aspects of Morse that implicate §101 are sort of beside-the-point any more. Who drafts a claim nowadays “I claim all tangible and practical uses of [law-of-nature X]”? No one writes that sort of claim any more. Granting that such a claim would fail under §101, this is not really a point worth discussing, because that sort of claim is never presented anymore.

                1. Greg, you should be aware that the language of 101 has been in the statute in substantially the same form since 1793. There were minor linguistic changes between 1790 and 1793. In particular, “discovers” was removed, and both “new” and “composition” were added. To me, Thomas Jefferson wanted to add in compositions to patentable subject matter, but at the same time not in a way that to allow the simple discovery of existing compositions to be patentable.

                2. The problem you have with this very old argument of yours was that it was addressed in Graham, where the Supreme Court decided that 103 was a codification of its precedent surrounding Hotchkiss, save for the second sentence that addressed Cuno.

                3. Right, the language of what is now 101 was substantially there before 1952, but I agree with anon that the fact that Congress chose to separate it out from language regarding novelty is significant. Congress explicitly did not intended to carry over all the previous case law. For example, 103 was added with the explicit intention to abrogate some of the excesses of the old “inventiveness” standard. Congress wanted to drive home that the subject matter eligibility (now 101) is not supposed to be measured relative to the state of the art (now 102), although one could be excused for not understanding that distinction back when eligibility and novelty were both covered in the same code section.

                  His argument that all the pre-1952 stuff goes out the window is a lot weaker, however, when it comes to the statutory disclosure and clarity requirements, because Congress did not pull them apart into separate statutory sections as it did with eligibility and novelty.

                4. [T]he Supreme Court decided that 103 was a codification of its precedent surrounding Hotchkiss.

                  Yes, the Supreme Court did decide that. I rather wish that they actually acted like they believed what they wrote in Graham. Anyone who can read KSR and say with a straight face that they are treating 103 just like the Hotchkiss court treated the “invention” requirement should go into champion league poker.

                5. Now you might also consider the holding of Hotchkiss: it was known that clay was useful in doorknobs, and the substitution of clay into mechanical aspects of the doorknob was functionally the same as with wood or other materials.

                  Effectively, this requires, I think TSM. But rather than argue TSM, it might be better to simply argue Hotchkiss. The Supreme Court and the Federal Circuit might actually listen to such an argument.

        3. 4.1.1.3

          The most that the CCPA/CAFC can be said to have done is to have given the requirement a new name, and to have grounded it more carefully and explicitly in a particular statutory text than the SCotUS had previously done.

          Were that all that they did, that would be fine (but for that taking it out of 101 means it’s no longer a “threshold issue” but that’s fine from my standpoint). But they substantively changed the difficulty of meeting the test.

    2. 4.2

      “One simply cannot do what this disclosure wants to do – provide an example and then claim anything else that achieves the function. You simply cannot provide a species and then count on inductive reasoning to get you to a claim to a genus. ”

      Can you disclose a genus, disclose a preferred embodiment (species) and then claim the genus?

      1. 4.2.2

        Only when 1) there are not distinct means within the genus or 2) when you’ve disclosed all of the distinct means of the genus.

        So naturally the question becomes “when are means distinct” which I think has not been directly answered, but it may be sufficient answered by looking at the means-plus jurisprudence – substantial similarity in manner and result or equivalence.

        The one thing that obviously cannot happen (under either the FC’s WD test or the Supreme’s Abstract test) is for the claim to encompass two completely distinct manner of achieving a function while the specification only demonstrates command of one of the manners. The second manner needs to remain open so that someone will be encouraged to disclose it – the supremes would call that a claim to an abstract result and the federal circuit would say it fails written description.

        In any case it’s not met here – different rulesets would have different levels of effectiveness (evaluate sub-sequences, generate transition parameters and apply transition parameters to create a final morph weight set) through different means, i.e. some rules of his claimed ruleset would approximate a human mouth movement significantly better than others. He simply doesn’t have support for the genus.

        1. 4.2.2.1

          “The second manner needs to remain open so that someone will be encouraged to disclose it – the supremes would call that a claim to an abstract result and the federal circuit would say it fails written description.”

          The second manner can still be patented and therefore its disclosure is still encouraged.

          The situation that you say cannot happen is handled via cross licensing.

          You invent and disclose and claim a lever. The embodiment you disclose is made of wood. I buy one and try to use it to move the world and discover it is at one time both too brittle and too flexible for the load. I work hard on making one suitable to may task and disclose my titanium lever which can be made any length (not limited by the height of trees) and is far stronger than a wooden lever the same size.

          I patent my improvement to the lever.

          I can’t make, use, sell or import my lever without your permission because your claims read on my lever. So, I offer you a license to make versions of my lever in exchange for a license to make levers that “read on” your lever. I’m standing on your shoulders. I would not have thought of a lever without your teaching. So, for the life of your patent I pay tribute to that fact either with cash payments or with cross licensing.

          That is how the system is SUPPOSED to work.

          1. 4.2.2.1.1

            The second manner can still be patented and therefore its disclosure is still encouraged.

            You can get a patent but its not worth what it should be. Again – you invent the bow, I invent the gun. My gun is totally different from your bow, but I can’t practice it without your consent, which you won’t give me if you have a monopoly on all machines that fire projectiles. To the extent someone else makes a gun I can sue them for infringement, but they were already warned against infringing my gun because they couldn’t have built any projectile-firer based on your patent.

            The situation that you say cannot happen is handled via cross licensing.

            You’re not a very good businessman – if I have the ability to sell all of the possible projectile firers but one, and I’m the only one who can, I make more money than if two people are competing on gun sales. Sure, I lose the “people who would only purchase a gun” market, but I have no competition on any other projectile. Cross licensing is possible, but when one has an overbroad scope they lack incentive.

            Regardless, that’s not the whole point. The problem is with someone being given an exclusionary right for something they didn’t invent. It doesn’t matter whether the gun gets patented, what matters is that you invented the bow, not the gun, and thus only the bow is taken from the public and the gun still belongs to them. A person should not be rewarded for inventing the gun when they did not invent it, and an exclusionary scope that encompasses the gun is overbroad of the actual contribution.

            I patent my improvement to the lever.

            Yeah I understand how improvements work. But you’re assuming the difference – I’m not suggesting you can’t have an improvement that would lead to your situation. I’m suggesting that when you invent a lever you can’t also use fancy wordplay to validly claim a rope and pulley system, even though both can achieve the result of “lifting things.” There’s a point at which a person of skill would just call things different inventions, and once you pass that point no amount of clever claiming can allow your “example embodiment” to support the scope.

            A fax machine prints at a distance. So does the Morse telegraph. If you think Morse could have prevented anyone from making the fax machine simply by labelling his telegraph as an “example embodiment” you misunderstand the patent power on a fundamental level.

            1. 4.2.2.1.1.1

              “Again – you invent the bow, I invent the gun. My gun is totally different from your bow, but I can’t practice it without your consent, which you won’t give me if you have a monopoly on all machines that fire projectiles.”

              No, it is not totally different. The gun involves a launcher, a projectile and a force delivery mechanism, just like the system and method I claimed. Therefore, I get a cut. It is only fair.

              1. 4.2.2.1.1.1.1

                For whatever little it is worth, I disagree that it is “only fair” that the inventor of the bow gets a cut of the gun sales simply because the bow inventor came up with the idea of projectiles before the gun inventor. If this seems clear to you, I would ask that you unpack a bit the reasoning by which you arrive at this conclusion, because it is rather opaque to me.

                1. Its not “simply because the bow inventor came up with the idea of projectiles before the gun inventor.”

                  I’m assuming rocks were thrown by hand in the prior art.

                  Its because the inventor came up with, a launcher, a projectile and a force delivery mechanism and claimed it as such before the gun inventor.

                2. O.k. That does not materially change my response. It is not intuitively obvious to me that it is “only fair” that the inventor of the bow should get a cut of the gun revenue for coming up with “a launcher, a projectile and a force delivery mechanism.” Do you care to unpack the reasoning by which this does seem “only fair” to you?

                3. I would like you to understand the point. However, I don’t understand why my point is not clear to you. The inventor invented a class of devices, a class of weapons. The class is defined by those three components. The “gun” is an example of weapons of that class. Knives are not. Lasers might be, depending on whether photons are particles/projectiles or waves.

                  If someone later invents a machine gun, is that still a gun and is the gun inventor due a royalty on the machine guns even though he didn’t disclose or invent the “machine” aspect? Of course

                  … same, same…

                4. To say that “[t]he inventor invented a class of devices… defined by those three components [i.e. a launcher, a projectile, and a force delivery mechanism]” merely begs the question.

                  The whole question at issue is whether the inventor did, in fact, invent a class of such weapons, or whether the inventor invented only one member of such a class. If the only embodiment described in the spec is a bow, how do we know that the inventor invented a whole “class” that extends beyond the bow?

                5. We know it by the breadth of the original claims at a minimum and by the breadth of the disclosure. For example, the first pass at the description of the invention uses the broad language of the claim. After that there is a paragraph that beings: “For example,” followed by the description of the preferred embodiment (e.g., the bow and arrow).

                6. Re: gun/machine gun

                  Here I am very comfortable with your licensing-is-the-answer theory. The inventor the machine gun is clearly building on the gun inventor’s work, so I can agree that it is intuitively fair that the gun inventor should get a cut of the machine gun revenues (assuming that that gun has not expired at the time of the machine gun’s market launch).

                  It is less clear to me that the gun inventor is building upon the bow inventor’s work. In fact, the exact opposite is clear. It is clear to me that the gun inventor is not building upon the bow inventor’s work. The world’s foremost expert on bow’s would be no better suited than I am to invent the gun. Meanwhile, the gun inventor could arrive at his invention without having even heard of a bow. The two technologies are almost completely unrelated, unless you care to describe them each at a very high level of generality (“they are both made of solid matter,” “they both comprise a propulsion means,” etc).

                  In other words, I can concede the intuitive fairness of the later inventor paying royalties to the earlier inventor where the later inventor builds upon the earlier’s work. It is far harder for me, however, to intuit the fairness of making the later inventor pay royalties when the later invention does not build upon the earlier.

                7. Yes, well… they way we know in the less intuitive scenarios whether a later invention is building on earlier work is we compare the claim language to what the later inventor is doing. If the later invention includes all the finger print swirls and loops recited in the claim, then its an instance of the invention.

                  I submit that the reason you intuitively see that the machine gun is an instance of a gun is because we have the broad word “gun” to work with.

                  If there was a broad word (e.g., “Batleth”) that covered any structure that launched a projectile by any mode of force application, I think you would have an intuitive feel that the inventor of the first Batleth (Bow and Arrrow) is due a royalty from the guys making the second Batleth (gun and bullet).

                8. We know it by the breadth of the original claims at a minimum and by the breadth of the disclosure.

                  See, we know because he says it. So if I invent one species of “an invention that was non-obvious on [Filing Date]” and I recognize that my one invention is one member of the larger class, I can say that I invented the larger class, because that is what I posited.

                  When I invent something I will definitely be claiming the class “things not yet invented” so that all future inventors will have to get a license from me. It’s just as enabled and posited as the bow/projectile launcher -> gun is.

                9. Good idea. Because narrow claims are worthless because they are easy to work around. If narrow claims were all that were available, patents wouldn’t be worth the effort and expense.

                10. [The] way we know in the less intuitive scenarios whether a later invention is building on earlier work is we compare the claim language to what the later inventor is doing.

                  I just do not agree with this premise at all. If you showed me two inventions (e.g., gun and long bow), and asked me to figure out whether one built upon the other, I would not even bother looking at the patents to make that determination. Self-serving science fiction in a patent application is the least relevant evidence that I can imagine to nail down the intellectual ancestry of a given invention.

                  I submit that the reason you intuitively see that the machine gun is an instance of a gun is because we have the broad word “gun” to work with. If there was a broad word (e.g., “Batleth”) that covered any structure that launched a projectile by any mode of force application, I think you would have an intuitive feel that the inventor of the first Batleth (Bow and Arrrow) is due a royalty from the guys making the second Batleth (gun and bullet).

                  Once again, I dispute the premise. I doubt that the words we used to name the two items would play any role in my process of reasoning at all. I would look at the two devices to try to determine an intellectual lineage, and maybe operators manuals or inventor’s notes.

                  I expect that you are correct that the language one used to describe the items would have an unfortunate influence on one’s conclusions, but that is only as much as to say that human minds are sometimes easily distracted by irrelevancies. If we were actually to give into the tendency to be swayed by word choice, that would simply be evidence of our own mental frailties, not evidence of actual intellectual linkage between the two devices.

                11. Whoops, “I doubt that the words we used to name the two items would play any role in my process of reasoning at all,” should have been “I doubt that the words we used to name the two items should play any role in my process of reasoning at all.”

                12. “I just do not agree with this premise at all. If you showed me two inventions (e.g., gun and long bow), and asked me to figure out whether one built upon the other, I would not even bother looking at the patents to make that determination. ”

                  Well, would you have difficulty figuring out if one built on the other if the items were your long bow and a cross bow?

                  How about if it were a cross bow and a gun?

                13. I have never read any patent disclosures for bows, crossbows, or guns. Still and all, I feel fairly comfortable attributing an intellectual dependence between the bow and the cross-bow, and no dependence between the cross bow and the gun. The patent disclosures (or claims) have nothing whatever to do with the process of reasoning by which I arrive at those conclusions, and I expect that they would equally well have nothing to do with the process by which one of skill in the art (not me, to be sure) would assess the intellectual relations among bow, cross-bow, and gun.

                14. You just may be surprised, Greg (not saying that’s the case here)…

                  English show of a number of years ago called “Connections” traced some rather surprising linkages between some extremely diverse fields.

                  Worth trying to find and watch…

      2. 4.2.3

        To use the example I used elsewhere – Consider someone who invents the bow. A claim to a genus of “machines that fire projectiles” would encompass a gun. Nobody would consider a bow and a gun to be of the same species. They function on two entirely different principles. No matter how much language you put in about the invention being a machine that fires projectiles and how much you stress that a bow is just “one embodiment of the invention”, you will never have support for the genus unless the specification also discloses a chemical explosion principle (and even then, it would have to disclose every other distinct manner of propelling a projectile).

        Are there closer examples? Sure. For example, does a genus that fires projectiles “by manner of string propulsion” become a close enough genus? Is a catapault a distinct means of performing the function from a bow? I would think so. What about a genus that is hand held and fires an arrow through string propulsion – Is a crossbow distinct from a bow? Probably so that genus is also overbroad, as both the loading mechanism and holding mechanism has changed in substantial effectiveness from a standard bow, but at least we’re getting closer.

        But you can’t describe a bow and expect your claim to reach an “infringer” who has a gun, regardless of how good your drafter is – the valid claims won’t find the gun infringing and the ones that do reach it are invalidly overbroad. That is likely the case here.

        1. 4.2.3.1

          I can disclose and claim a method of launching a projectile comprising placing the projectile in a support and applying force to a surface of the projectile and disclose a bow and arrow as a preferred embodiment. I can have an independent claim that broadly recites placing the projectile in a support and applying force to a surface of the projectile.

          There is no reason, 101 or 112 that that claim would be rejected.

          You can invent and patent a gun with chemical propellants.

          Since my claims read on your gun, for the life of my patent you need to get a license from me. I invented the genus. That’s why I thought to claim it broadly and to point out that the preferred embodiment was but one embodiment. Having seen my invention you now want to improve upon it. Fine. But recognize that you are standing on my shoulders and pay me what I am due.

          1. 4.2.3.1.1

            I can disclose and claim a method of launching a projectile comprising placing the projectile in a support and applying force to a surface of the projectile and disclose a bow and arrow as a preferred embodiment. I can have an independent claim that broadly recites placing the projectile in a support and applying force to a surface of the projectile.

            Sure, you CAN claim anything, but the question is “Is the claim valid?” That claim is not valid because it is nothing more than the recitation of Newton’s third law. There’s no claim, whether it is “1. A method comprising placing a projectile in a support; and applying force to a surface of the projectile” or any other that is valid under caselaw.

            I understand what you’re thinking, you’re thinking “I can do this to anything – person brings in a widget, I describe the widget, I put ‘example embodiment’ in front of that description, and then I describe all the functionalities as vaguely as I want until I run into a 103.” That is not a valid way to claim. You can try it, you might even get someone at the office to give it to you, but it won’t hold up in court.

            You can’t do precisely what you are trying to do, because the only way to conclude that you have invented the functional scope (in most every circumstance, not all) is to use inductive reasoning – to assume that all other points within the genus are similarly situated to the example embodiment. Inductive reasoning is faulty by nature. Further, we can posit examples where the inductive faultiness is proven: A disclosure of string tension might appear at first blush to be the only way to make projectiles fly, until someone comes along and discloses chemical explosion. The inductive assumption cannot be made as a matter of law – that is a virtually per se statement from the Supreme Court. The Federal Circuit has a watered-down version of that, but they understand the same inductive problem.

            There is no reason, 101 or 112 that that claim would be rejected.

            Under 101 the claim is invalid because it does nothing more than describe a natural law. Under 112 the claim is invalid because the only method posited of applying force described in the specification is with string tension, while an infringing embodiment is chemical explosion. The gun proves the lack of written description of the full breadth of the claim scope.

            Since my claims read on your gun, for the life of my patent you need to get a license from me.

            Nah, your claims aren’t valid, and you put a lot of stock in getting an allowance from an office that doesn’t employ attorneys. Presumptions of validity are just that – presumptions. I don’t need anything. In fact, you need to pay me to stop me from going into court to get a declaratory judgment and throwing your claims out. At least you might be able to sue someone not as smart as I am.

            I invented the genus.

            No. You mistakenly think that you can assert a claim to the genus. The person who invented the bow didn’t invent the gun. He didn’t posit the gun. He didn’t enable the gun. The fact that the gun is vastly superior to the bow and wasn’t around for hundreds of years after the bow is proof that the bow disclosure was insufficient for the creation of the gun. The gun is not an a liability of infringement, it is simply evidence that *disproves* the claim to the genus.

            Again, this isn’t up for debate. This isn’t a grey area. You’re not even possibly right. This case was already decided – Morse invented the bow, and the court said that the mere fact that a gun may exist in the future is sufficient to tank the claim. Morse has been reaffirmed constantly and the logic doubled- and tripled- down on. You’re not allowed to do what you’re asserting you can do.

              1. 4.2.3.1.1.1.1

                Les can you explain what Lizardtech means to you. Why did removing some limitations make the claim invalid?

    3. 4.3

      all claims are supposed to preempt something so I think your point may be in apposite. I think what the court is saying here is that you can patent a specific way of achieving a result, but you can’t claim the result itself. I.e. you can’t claim an idea, but you can claim an application of the idea to a new and useful end.

      1. 4.3.1

        Of course all claims preempt something.

        I think what the court is saying here is that you can patent a specific way of achieving a result, but you can’t claim the result itself.

        Right, but the question is at what point have you added enough to be “a specific way.”

        1. 4.3.1.1

          the question is at what point have you added enough to be “a specific way.”

          As I recall, according to Judge Newman the answer is the point where you described a method using any words or a figure different from the words you used in the claim. That’s an “algorithm” with sufficiently fake “structure.” Smell the electronic “essence”!

    4. 4.4

      The Supreme Court has never endorsed the written description requirement, let alone called it the sole test for determining a proper breadth of scope.

      A few responses:

      (1) I am not sure that one can say that the SCotUS has never endorse the written description requirement. In Festo, the Court listed “describe” as a separate requirement from “enable” when listing off the 112 requirements. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002) (“The claimed subject matter must be useful, novel, and not obvious. 35 U. S. C. §§ 101–103… In addition, the patent application must describe, enable, and set forth the best mode of carrying out the invention. § 112…”).

      (2) Similarly, as noted before, the Court in Morse explicitly voided Claim 8 because the invention claimed was not described. What is this, if not the “written description” requirement.

      (3) As for the WD requirement being the sole test for attacking over-breadth, I think you are attacking a straw man here. I am not sure that anyone takes the position that WD is the only requirement that cabins over-breadth. If my claim is so broad as to read on the art, then I must narrow it. This is not because of WD (it may well be that I have described and enabled the full scope of the claim adequately), but because of 102/103. Similarly if my claim reads on both tangible software media and transitory (e.g. WiFi) signals, I must narrow it. Once again, this is not because of WD but because of 101.

      In other words, we all agree that 101–103 have a role in cabinning over-breadth. Some of us merely dispute that 101 has such a role in this case.

  20. 3

    “One problem with the two step framework is based upon the fact that all inventions can be boiled down to an ineligible abstract idea.”

    Exactly. An internal combustion engine is nothing more than the abstract idea of converting combustion of hydrocarbons into mechanical work. And a generator is nothing more than the abstract idea of converting combustion of hydrocarbons into electrical work.

    Not sure why examiners keep crying that they need more time. How much time does it take to write these 101 rejections anyway?

    1. 3.1

      Sure, everything can sound ridiculous when you only apply one step of a multiple step procedure. *Most* everything can be boiled down to an abstract idea, but then a second step only throws out claims that don’t have significantly more. A claim to an ICE is more than the abstract idea because it is a novel, concrete manner of getting the function to occur. Compare that with Morse who had a claim that was directed to all manner of printing at a distance, non-limited by the particular configuration of machine parts that achieve the result.

      That’s like saying “America is a tyranny. The police can just arrest someone whenever they want and nobody will stop them” which a 100% true statement – you basically cannot stop a policeman from physically arresting someone if they want to – until you take into account that there are further procedural safeguards that can cause them to quash the arrest or release you after a certain amount of time or lack of proof.

      1. 3.1.1

        Define “significantly more,” please.

        Then (and better yet), find the proper statutory authority for that.

        1. 3.1.1.1

          Define “undue experimentation,” please.

          Then (and better yet), find the proper statutory authority for that.

          Stop being so trite. Either get elected and change the law or quit complaining that the interpretive branch is interpreting in a manner to avoid a constitutional question, as it’s done for 200 years.

            1. 3.1.1.1.1.1

              Not really – you accept that undue experimentation is a proper standard, but undue experimentation isn’t in the statute. What makes undue experimentation a proper standard but not significantly more?

              See I have a unifying theory. It’s not flashy, because its true everywhere else in law – the judiciary is entrusted with generating tests for effectuating a constitutional statutory scheme and they are bound to strike down unconstitutional schemes. Both undue experimentation and significantly more are examples of the former.

              “Undue” experimentation, when it first came out, was also undefined, because we didn’t know what not-undue was yet. Right now we’re sitting in the timeframe where the not-significantly-more is still being defined. Don’t worry child, it will pass.

              1. 3.1.1.1.1.1.1

                You employ a atrawman and do not answer my question.

                No one except you is talking about undue experimentation.

                Answer my question directly – without setting up an argument that I never used in order to knock down that argument.

                (and separately, here is a wrench for your “unifying theory: void for vagueness; and here is another: learn the difference between common law and statutory law)

              2. 3.1.1.1.1.1.2

                Not really – you accept that undue experimentation is a proper standard, but undue experimentation isn’t in the statute. What makes undue experimentation a proper standard but not significantly more?

                “Undue” experimentation can be easily interpreted as a factual question based on what a routine level of work is in the art. For example, if it’s considered routine to try a half dozen chemical assays or swap an order of operations in a function, then that would be “due” experimentation. If it’s not considered routine to try a thousand different alternatives and that’s what’s required to achieve the invention, then that would be “undue”.

                What’s “something more”? What does that even mean as a phrase? It’s more than “something less”, I suppose, but that’s about all it says. It’s not a proper standard because one cannot formulate a factual test for it beyond “I know it when I see it.” And that’s just obscene.

      2. 3.1.2

        You funny.

        Of course after the examiner “finds” that the claim is “directed to” the “abstract idea” of “converting the combustion of hydrocarbons to mechanical work” the examiner then “finds” that the “conventional elements” (cylinders, pistons, etc.) don’t add “significantly more” because they are…wait for it…conventional.

        Circular reasoning is so convenient!

        1. 3.1.2.1

          Sure an examiner *can* find anything, just like a district court can. The examiner can also find that a PHOSTIA would interpret the words a specification in a manner they wouldn’t, or find obviousness where none exists, or find a term ambiguous when it is not. Is your argument that we shouldn’t have review because examiners might screw up? Just issue a patent on every claim?

          The cylinders and other elements are conventional, but the configuration of them together (i.e. the claim as a whole) is not. There is no question but that the configuration in the ICE creates a unique unconventional functionality.

          By the way, how do you not also have an issue with 112 then? Because the court used a combustion engine in their hypothetical there – you might enable a particular engine but you don’t enable all engines. Why don’t you have a problem with an examiner being entrusted to “find” when the claims are particular enough that enablement exists?

          Are examiners going to make bad 101s? Sure. That’s the problem with not wanting to pay to hire lawyers (and even lawyers seem to have problems with 101). That may mean you’ll have to appeal more than if you had the office staffing the examiner core with attorneys. That doesn’t mean the system can’t reach a just conclusion.

          1. 3.1.2.1.1

            A non-sequitur with “staffing with attorneys” – you have your job; DO your job. Don’t whine that “lawyers do it better and it is so unfair to have non-lawyers dealing with lawyers.

            1. 3.1.2.1.1.1

              Do you consider context when you post or do you just fire off your little missiles?

              I’m fine with doing my job. He’s got a problem with examiners doing the job.

        1. 3.2.1.1

          ICEs came out a long time ago. I think if there were abstract idea rejections of them someone would have dug up the case already.

          1. 3.2.1.1.1

            Umm…. Isn’t the first step of Alice to look at the state of the art (i.e., a general purpose computer), so yes, the fact that ICE came out a long time ago may increase the likelihood that an ICE-based invention might be abstract under Alice, as applied by the Supremes.

            1. 3.2.1.1.1.1

              Umm…. Isn’t the first step of Alice to look at the state of the art (i.e., a general purpose computer), so yes, the fact that ICE came out a long time ago may increase the likelihood that an ICE-based invention might be abstract under Alice, as applied by the Supremes.

              Wait, are you suggesting that someone is claiming an ICE for the first time nowadays? Like they grew up their entire lives without knowing how a car works and they gained enough technical knowledge that they could create an ICE but not enough to know that it preexisted, and they genuinely think they invented the ICE?

              I doubt that occurs.

              All of the claims to an ICE-qua-ICE are long gone. As 6 said, nobody is getting (or has gotten, to my knowledge) 101 rejections on ICEs. Are there current inventions which may use or reconfigure, in some manner, an ICE? Sure, just like there are inventions which use a screw. Using a screw doesn’t inherently make your invention concrete, just like using an ICE doesn’t. You invented neither the screw, nor the ICE, so you can’t count on them to make your inventive aspect concrete. There are concrete system configurations that include an ICE, and those claims are eligible. There are also abstract things you can do that involve an ICE (e.g. a claim that says “An ICE that performs Function X” without more) whose claims are ineligible.

              tl;dr – When the ICE was first invented, a claim directed to the structure of the ICE would be eligible under today’s Alice law, contrary to what AAA JJ said. When the ICE is claimed today, just like the generic computer or a screw, it does not necessarily confer eligibility in the same way that affixing a new fiction story on an old book does not result in an eligible system – it’s a question of what the inventive aspect is.

              1. 3.2.1.1.1.1.2

                Wait, are you suggesting that someone is claiming an ICE for the first time nowadays?

                No, but no one is claiming a general purpose computer for the first time nowadays.

                Without getting into the propriety of 101 rejections, I could certainly craft an ICE claim that I’m sure we could all agree would fail under 101. Say, “a method of travelling between two points, comprising: using an internal combustion engine to travel from a first point to a second point.” Abstract, no?

                1. For whatever little it is worth, I would not agree that the proffered claim is abstract. It rather tortures the word “abstract” to use it so, although it is quite the fashion of late to stretch “abstract” to reach anything that might have formerly been termed “obvious.”

                2. Correct Greg.

                  If you have been following along, I have explained exactly why this seems all so familiar (the infusion into 101 of obviousness).

                  Prior to 1952, Congress had granted a great power to the Court to set the meaning of the word invention through the t001 of common law evolution.

                  But the Court was simply TOO anti-patent, especially in the turn of events of the 1930’s and 1940’s (ever hear the story of “The only valid patent is one that has not yet appeared before us“…?). From what MAY have been a “noble” desired Ends, the Means to those ends jeopardized ALL patents (reminiscent of a very recent remark by Malcolm, btw).

                  Congress reacted against this anti-patent zeitgeist and stripped the Court of its common law power and instead of “invention” (also known as “spirit of invention,” “gist of invention” and about twenty other terms), Congress instead put in place 103, Congress also warned against the judicial muc kery in the notes to 103 (which I have provided numerous times).

                  All of this is also captured and explained by one of the architects for Congress of the Act of 1952 – and published in a seminal paper in or about 1962 (by Judge Rich).

                  The Supreme Court’s work simply reflects the lost history lesson, and those not willing to learn that lesson have forced all of us to repeat that history lesson.

          1. 3.2.2.1.1

            “I do not believe you.”

            Your disbelief doesn’t affect the truth one bit.

            “Sorry.”

            No apologies necessary.

            “Feel free to prove me wrong.”

            Not worth my time or effort.

            1. 3.2.2.1.1.1

              You don’t have a client that thinks they invented the ICE. You have a client that made some sort of configuration change to the ICE and *you* described it in abstract terms rather than concrete structural changes because you wanted to get him a huge scope.

              i.e. “I submitted really vague functional claims and I got a 101 and it upset me”

        1. 3.2.2.2

          I rather am disinclined to believe you either. Still, depending on how abstractly you decided to try to claim it I suppose it is hypothetically true that one could have issued. Even so, I’m quite sure you “overcame” it with practically 0 effort.

          1. 3.2.2.2.1

            “6” – there is zero difference between a “general purpose computer” and an ICE if you apply Alice, as the Supreme did. Hence, the flaw in Alice.

            1. 3.2.2.2.1.1

              That’s right, when the general computer or the ICE is not the focus of the invention it won’t count as significantly more. That’s not a flaw, that’s a feature.

              Kind of like how making paper was originally eligible, as was the paper itself, but once you admit the paper is pre-existent a system comprising the paper and words written on the paper is not eligible, because the “inventive aspect” is either 1) the words or 2) the act of writing the words down, both of which are ineligible.

              AAA JJ’s original question was phrased as someone claiming to have invented the ICE. The ICE-qua-ICE is eligible, and nobody would 101 a particular structural claim to that. But when the claim is to a system that includes a *known* ICE the ICE probably won’t confer eligibility because the ICE will probably be used in its conventional manner. ex: I claim a system comprising a flying car where the car is powered by a known ICE. “A flying car” (absent limitations that define how the car is made to fly) is abstract. An ICE to power a car is a conventional act. There the ICE does not confer eligibility.

              It’s not a difficult concept once you recognize that the claims are not the end-all-be-all of what the applicant considers their invention to be. Eligibility does not depend on the scriviner’s skill. If I include a computer in my system claim but it’s clear from content that I mean it to be any old pre-existing general purpose computer, then we can’t make my system eligible because it asserts *some other person’s* invention. A computer was originally eligible and novel, and thus patentable. Then it was eligible (because people thought they invented it) but not novel, and failed under 102. Then computers became ubiquitous, and a person doesn’t even assert to have invented the computer anymore, and then it fails to impart eligibility either. That’s all Alice was saying – there was an ineligible method that wasn’t saved by putting it on a computer because a computer was conventionally known.

              1. 3.2.2.2.1.1.1

                You have the printed matter doctrine completely wrong – Ned then double down with the canard of examples from outside of the Useful Arts.

                (Among other well known “conventional” errors in your 101 “understanding”)

              2. 3.2.2.2.1.1.2

                “AAA JJ’s original question was phrased as someone claiming to have invented the ICE. ”

                No. I never “claimed” the inventor invented “THE” initernal combustion engine. The inventor did invent AN internal combustion engine.

                Classic examiner tactic: misstate the applicant’s argument, and then shoot down the misrepresentation.

                I assume that’s SOP for you during examination. You must be a nightmare to deal with. Of course, you’re not unique in that aspect. It’s pretty much SOP throughout the PTO.

                1. “The inventor did invent AN internal combustion engine.”

                  That just so happened to have a “configured” computer attached thereto? Or is it that they (you?) tried to describe the engine by what it does, perhaps also involving some equations?

                2. “That just so happened to have a ‘configured’ computer attached thereto? ”

                  So an internal combustion engine that has a “configured computer attached thereto” is not patent eligible subject matter? Why is that?

                  “Or is it that they (you?) tried to describe the engine by what it does,…”

                  And that’s not allowed? If so, I wasn’t aware of that. Do you have a cite for that proposition?

                  “…perhaps also involving some equations?”

                  Is there some prohibition against equations in patents? Again, if there is I wasn’t aware of that. Do have a cite for that proposition?

                3. “So an internal combustion engine that has a “configured computer attached thereto” is not patent eligible subject matter? Why is that?”

                  It won’t necessarily be ineligible. But generally just like with trying to claim (old computer) distinguished by new programming if you’re trying to distinguish the (old engine) + (old computer) by tacking on (new programming) the reason will be often that your programming is abstractly worded and is an attempt to claim the abstraction of either the programming or the functionality of the programming as opposed to legit claiming the ICE. With that being said, there may be some room for a programmed ICE in the patent system’s eligibility. Maybe. I somewhat doubt there will be that many valuable claims that could be had, but perhaps a few here or there describing controlling actual physical parts of the ICE in specific ways or similar.

                  “And that’s not allowed? If so, I wasn’t aware of that. Do you have a cite for that proposition?”

                  You are well aware that it may well run afoul of 101. There’s no need to play coy.

                  “Is there some prohibition against equations in patents? Again, if there is I wasn’t aware of that. Do have a cite for that proposition?”

                  Nice strawman, again, no need to play coy.

                4. But generally just like with trying to claim (old computer) distinguished by new programming

                  Do you mean like In re Nazomi…?

                  (or this case..?)

                  ;-)

                5. So we’re in agreement then – there are claims out there which describe an ICE that didn’t get a 101 rejection.

                  Why didn’t you write your claims like those claims?

                6. You have the examiner playbook down pat. Law school didn’t help you one bit. I guess you wasted those three years.

  21. 2

    I have barely paid any attention to this case, and don’t much care about it, but just from all the language being used I sense the USSC will descend and right their ship once again.

    1. 2.1

      Not really 6. There seems to be a dispute regarding the facts between the Federal Circuit and the district court. If the facts are as the Federal Circuit say they are, then the Federal Circuit is correct. The facts are as the District Court say they are, then the District Court is correct. That is why the Supreme Court is not going to step into this.

      1. 2.1.1

        MMM, yeah Ned I hear you that it could be a fact issue, but I doubt it Brah. 101 is nigh perfectly an issue ol lawl.

            1. 2.1.1.1.1.1

              They won’t touch it because they don’t want to have any responsibility for defining the baseless standard of “abstract” that they refused to define in Alice.

              Alice will die the de ath of a thousand cuts at the Fed. Ct. level and SCOTUS will watch from the sidelines. Each case that finds eligibility illustrates the flawed and incomplete standards set forth in Alice.

              1. 2.1.1.1.1.1.1

                “Alice will die the de ath of a thousand cuts at the Fed. Ct. level and SCOTUS will watch from the sidelines. ”

                Bold prediction bro, but it’ll take 40+ years for that “death” to occur and both of us will be retired or dead. Further, I kind of doubt it. They’ve already shown considerable interest in slapping down the Fed. Circ. anytime the opportunity presents itself. It’s like a fun game for them.

                1. They’ve already shown considerable interest in slapping down the Fed. Circ.

                  And that is why Congress needs to use its power of jurisdiction stripping and remove the Supreme Court from the NON-original jurisdiction of patent appeals (so long as a new and untainted Article III court remains in the loop to satisfy Marbury).

  22. 1

    One problem with the two step framework is based upon the fact that all inventions can be boiled down to an ineligible abstract idea.

    …the (unlimited) power of the “Gist/Abstract” sword – any judge can pick for themselves to what level they want to “Gist” and “Abstract.”

    The Supreme Court re-wrote the law of 101 and left it (by definition), vague.

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