Eligibility: Get Technical or Get Denied

Dennis Crouch

The principle that patent prosecutors are following today is in the headline: Get Technical or Get Denied.  The following is a case-in-point.

Nonprecedential decision today in Clarilogic v. FormFree Holdings affirming that the claims of FormFree’s U.S. Patent No. 8,762,243 are ineligible under 35 U.S.C. § 101 as directed to an abstract idea.   [Decision: clarilogic] The patent is directed toward a credit reporting scheme.  The gist – according to the court:

In brief, the … system seeks a potential borrower’s financial information from a third party, applies an “algorithm engine” to the data, and outputs a report. . . . the logic rules applied by the engine are received “from government entities or particular users.”

Claim 1 is drafted as a seven step method as follows :

1. A computer-implemented method for providing certified financial data indicating financial risk about an individual, comprising:

(a) receiving a request for the certified financial data;
(b) electronically collecting financial account data about the individual from at least one financial source,
(c) transforming the financial account data into a desired format;
(d) validating the financial account data by applying an algorithm engine to the financial account data to identify exceptions, wherein the exceptions indicate incorrect data or financial risk;
(e) confirming the exceptions by collecting additional data and applying the algorithm engine to the additional data,
(f) marking the exceptions as valid exceptions when output of the algorithm engine validates the exceptions; and
(g) generating, using a computer, a report from the financial account data and the valid exceptions,
wherein the financial account data comprises at least one of real-time transaction data, real time balance data, historical transaction data, or historical balance data; and the algorithm engine identifies a pattern of financial risk; the method is computer implemented, and steps (c), (e), and (f) are executed via the computer or a series of computers.

The Supreme Court’s atextual reading of 35 U.S.C. 101 has created a set of subject matter excluded from patentability – including abstract ideas.  The two step eligibility framework under Alice/Mayo first asks whether the claims are “directed to” an abstract idea and then, if so, asks whether the claims include “something more” beyond the abstract idea such as an “inventive concept” that is “sufficient to transform the nature of the claim into a patent eligible application.”  Quoting Alice.  These issues have generally been treated as questions of law amenable to judgment by a court even at the pleading stage of a lawsuit.

Step 1: The claims are directed to an abstract idea because their focus is “on collecting information, analyzing it, and displaying certain results of the collection and analysis.” (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).   Here, the court suggests the claims might have passed the test if the “algorithm engine” had been further identified or explained, but simply “claiming an algorithm does not alone render subject matter patent eligible.”

Step 2: The requisite ‘something more,’ does not include recitation of the use of a generic computer.  Here, FreeForm argues that its invention uses algorithms to transform data in parallel fashion to the way that Diehr used an algorithm to transform rubber.  On appeal, however, the Federal Circuit disagreed:

In contrast to Diehr, claim 1 recites a method that changes the way electronic information is displayed via an unknown and unclaimed process. Absent any limitation to how the data are changed, there is little, if any, transformative effect. Data are still data.

The problem, according to the court, is that the patent simply does not reach any inventive “technical manner” in which the “data is gathered, analyzed, or output.”

 

About Dennis Crouch

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

284 thoughts on “Eligibility: Get Technical or Get Denied

  1. Meanwhile, the robot cars which will (according to some very very serious people!) be conducting courtroom trials in twenty years continue to fail miserably:

    Based on the data in the documents, the [Uber] drivers had to take over from the self-driving system every mile for one reason or another. They include navigation issues related to unclear lane markings, the system missing a turn or bad weather preventing it from working properly. Drivers also had to take over due to auto-detected hard decelerations or abrupt car jerks more frequently last week than in January.

    Uber didn’t count events that might have led to serious accidents, such as those that would have damaged property or hit a person — those were counted as “critical interventions.” Thankfully, the vehicles drove an average of 200 miles between these critical interventions last week.

    Yes, but those “use logic to drive a car” patents are totally worth zillions!

    LOLOLOLOLOLOLOLOLOL

    Keep throwing money down the tubes, Genius Investors. We’ll all build special highways just for you because you’re oh so important in your own minds.

    1. MM, what if we create a new type of sentient being called Democratibots. Using the same arguments that Picard used to gain citizenship for Data, these Demoratibots will soon have citizenship, civil rights and the right to vote. Mass produced. They will eventually outnumber human voters and could “take over.”

      I wonder how they would react to a patent suit against themselves personally for using circuitry or programming patented by others, including their facing an injunction.

      Recall the Merchant of Venice and the pound of flesh?

      Looking forward to your book.

      1. Lol – kind of important to recognize that machines do NOT have those types of “rights,” eh Ned?

        Of course, one of my favorite words fits here:

        Anthropomorphication

        (Machines just do not have ‘mental steps’ – no matter how much effort is put into the Zombification of that deceased patent doctrine).

        1. “Lol – kind of important to recognize that machines do NOT have those types of “rights,” eh Ned?”

          Be sure to tell your new robot overlord that when they come asking.

          1. Tell you what 6, the day we have “robot overlords” is the day I stop being concerned with patent law.

            Until that happens, let’s try to see if Ned and Malcolm can at least try to get patent law correct when it comes to machines, manufactures, and processes.

            1. I don’t think I’ve ever asked you anon. Are you for or against AI research? Any limits you think we should put on it?

    2. Dennis, seriously, why do you allow MM to continue to dominate this blog? You have a paid blogger dominate everything on this blog.

      MM: your post is ridiculous. It has nothing to do with patent law and merely shows that you believe you can judge technology and have distain for technology. Patent law should be and maybe used to be (now it is run by Google judges like Hughes) not judging the technology by your personal feeling, but by apply the law.

      You are a disgrace MM.

    3. Doesn’t this go to show that all software is not obvious?

      Doesn’t this got to show that driving a car is not an inherent ability of computers, even though computers are designed to be programmable?

      Doesn’t this go to show that if they get it right, the invention will be non-obvious and worthy of a patent?

      Doesn’t this go to show that the eventual claim to a method of driving a car of the form:

      A method of driving a car comprising:

      Receiving desired destination information;

      Receiving current location information;

      Accessing map information;

      Accessing local rules of the road information based on the current location information;

      plotting a route based on the desired and current location information and the map information;

      Receiving at least one video input representing a forward, side and rear view around the car;

      Receiving at least one radar signal representing a forward, side and rear view around the car;

      Analyzing the video and radar information according to the following set of rules (insert here the successful rules);

      and controlling a speed and direction of the car to follow the path based on the analysis of the video and radar information and the local rules of the road information.

      …should and would be patent eligible, if only because this is the sort of progress we want to promote and to do so would also promote the general welfare, provide for the common defense and help ensure domestic tranquility?

      1. sounds of silence….. sue prize, sue prize, sue prize.

  2. In other sub-threads below, I see that the “cat has the tongue” of both DP and Ned.

    With Ned, it is customary for him to run away when inconvenient points are put on the table of discussion.

    I was hoping for more from DP.

    1. Somebody has to have the last word. I am too engrossed in contemplation of the myriad ways in which those … uh … those scary creatures that live under bridges, you know … can paralyze the effective functioning of economies that are over-dependent on kangaroo-power.

    2. But, Anon, yes, I would concede to you that the Second Law of Thermodynamics is a “law” and that “thermodynamics” is part of physics, and therefore the Second Law of Thermodynamics is a law of physics that is not invariant under time reversal.

      I would also concede that, if you ran the film of that thrown ball backwards, the ball would seem to get colder and gain kinetic energy, so the trajectory would differ from the corresponding forwards film, but nevertheless the trajectory of the ball would be approximately a parabola, viewed forwards or backwards, so there would be no appearance of anti-gravity (which was the original point at issue).

      But then, it would likely only be within the mind of a human beholder that some subtle patterns in the distribution of quarks, electrons, etc. will resolve itself as the perception of a mammoth being attacked by a sabre-toothed tiger.

      Nevertheless human culture has traditionally recognized a distinction between ingenuity on the one hand and natural philosophy on the other. The man who had been “working for eight years upon a project for extracting sunbeams out of cucumbers, which were to be put into vials hermetically sealed, and let out to warm the air in raw inclement summers” would, were he to succeed, deserve the grant of letters patent rewarding his inventiveness and ingenuity with exclusive rights in his invention for a limited period of years. But the Academy of Lagado had two “sides”, and the “projectors in speculative learning” resided on the opposite side to the inventors – though many seem to have engaged in what later would be called “applied science”. It seems that the Academy was a center of excellence in linguistics. Nevertheless some of its members were research-active in natural philosophy, one of whom had written a treatise on the “malleability of fire” for which he was seeking a publisher.

      1. But then, it would likely only be within the mind of a human beholder that some subtle patterns in the distribution of quarks, electrons, etc. will resolve itself as the perception of a mammoth being attacked by a sabre-toothed tiger.

        The subtle patterns will be what they will be regardless of the presence or absence of the mind of the human beholder.

        (Note that I am not saying that more than a human mind intruding with a type of measurement action would be absent some effect – but that effect, too, is not bidirectional as far as the arrow of time goes)

        As for the malleability of fire, I am reminded of a long ago undergraduate course in which we were studying that very subject… (but for very real world concerns related to the space program).

    3. Now I have been provoked into posting, I thought I might as well take the opportunity to sing my own cover version of the Old Piano Roll Blues.

      There are two desktop computers in this room. One was delivered by Dell. The other sort of came together by accident; I didn’t originally intend to provide myself with a second desktop computer, but one thing led to another. I focus on this second desktop computer. It started off with the purchase of a package from a retail store containing an ASUS motherboard with usual chips and a desktop fan. I had intended it to replace a defunct motherboard, but it turned out that the target case had a non-standard form factor. So off to the shop to purchase a desktop computer case and (if I remember correctly, as a separate purchase) the main fan. The machine subsequently assembled contains two internal hard disks, purchased at different times. The rest of the kit is plugged in, with stuff from previous machines or purchased separately: monitor, external USB optical disk reader, speakers, a USB-cabled and a wireless keyboard, a USB-cabled and a wireless mouse. To me, the assembly consisting of the motherboard, casing, fan and monitor, with the mouse and keyboard as control is the machine. It has an operating system, the BIOS, which can run operating systems copied onto partitions on the internal hard disks, or on optical and USB storage. That BIOS operating system is the intrinsic operating system that, from my point of view, is intrinsic to the machine, and enables it to play operating systems on storage media, either on the “internal” hard disks, which are merely bolted into trays and plugged in to the motherboard with SATA connections. Currently one hard drive has a bootable partition with a Fedora Linux operating system, and the other hard drive has a FreeBSD operating system that I don’t use.

      People might say, what is the use of a “computer” without an operating system that can run useful applications? What is the use of a CD player without CDs? What is the use of a “record player” with a turntable for vinyl LPs without a vinyl LP on that turntable? What is the use of a potato peeler without potatos to peel? What is the use of a combine harvester without a crop to harvest? Do people not consider record players as machines unless they have an LP already sitting on the turntable ready to play? Does flipping the LPs over, or putting a new CD in the CD player create a new record player or CD player? If not, is my desktop computer a functional machine at those times when it doesn’t have an operating system installed on internal hard disks? what is the essential distinction between, on the one hand, plugging a bootable memory stick into a USB port on my desktop computer, or a bootable DVD into the optical reader, and, on the other, putting a CD into a CD player and playing it?

      On that desktop machine, I do not normally upgrade over the network, so, about once a year, the disk partition containing the Fedora Linux operating system is reformatted, and the newly-released upgrade is installed. Also I transfer software updates to repositories on the hard disk, and update from time to time, and this often replaces the Linux kernel. But, to me, it is the same computer that I assembled a few years ago, though the running kernel changes on a regular basis. And then, of course, when I upgrade the operating system, I will be booting off an external USB device. Maybe that computer is not particularly useful unless I have booted a partition with an installed operating system to run an application. But a CD player is pretty useless unless it has a CD loaded and is playing it. A coffee plunger is pretty useless without coffee and hot water in it. The “machine” there is surely not the coffee plunger plus coffee plus water?

      The other desktop, that I am using to post here, is dual boot, with Windows 10 on one bootable partition and Fedora Linux on another. On the rare occasions when I boot into Windows, I don’t feel as though the desktop I am interacting with suddenly transforms into a different machine.

      So, to me, the desktop machine is a machine for running programs on storage media, where one storage medium, typically an internal HD partition, is singled out as the one containing the binary for the operating system currently in use. But, when running Linux, the binary file containing the Linux kernel is just data for the real operating system, namely the computer BIOS.

      And the monitor just displays pretty pictures, usually in GUI mode, but occasionally in text mode, just like an old dumb terminal.

      In view of the above, the Alappat doctrine that installing software on an existing computer creates a new machine makes no intuitive sense. The core of the computer, with the BIOS operating system is the pianola. The storage media, bootable or otherwise, are just the piano rolls.

      1. You are confusing yourself by not giving proper credence to the “functionally related” aspect of the patent doctrine that applies here.

        Try experimenting with a Britney Spears CD when you should be using an actual boot disk (or any disk with which you want to change a machine by configuring that machine with software). Being coy about this does NOT help your credibility, DP, as clearly you have been around long enough to already know this.

        1. But, as I understand it, the Printed Matter Doctrine, in its current formulation, is a CCPA/CAFC doctrine. One can ponder, from a personal perspective, what a doctrine should be, irrespective of what is currently in force. Those examples involving, if I remember correctly, sequences of numbers printed on bracelets do not, to me, carry much conviction.

          And I don’t see a bright line between human-readable data and machine-readable data, but that is another long post that I don’t want to get into right now.

          And, after all, maybe if TC Heartland and Lexmark are reversed, the situation will be getting close to the point where the only currently valid CAFC precedents and doctrines surviving from the 20th century formulated independently of SCOTUS are those that SCOTUS has not yet got its hands on. But maybe the Phillips standard will be the exception to the rule: perhaps SCOTUS are unlikely to wish to get bogged down in the details of claim construction.

          1. Check out the Hricik side of the blog and look for my very easy to understand Set Theory explication for the excpetions to the judicial doctrine of printed matter.

          2. Whether something “carries conviction” for you or not is rather immaterial.

            That’s not being rude, that’s just being real.

          3. LOL:

            Love that cute historical parallel:

            only currently valid ___ are those that SCOTUS has not yet got its hands on.

            Last time that happened, Congress woke up and delivered the Act of 1952.

            This time I would love to see Congress employ their Constitutional power of jurisdiction stripping to remove the non-original jurisdiction of patent appeals from the Supreme Court, set up a new (and untainted) Article III court (to preserve the holding of Marburg), and finally put a stop to the nose of wax mashing.

            1. OK, I will bite on this now.

              The Wikipedia article on “Vesting Clauses” quotes Article III, Section 1 of the U.S. constitution as follows:—

              “The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish. The Judges, both of the supreme and inferior Courts, shall hold their Offices during good Behavior, and shall, at stated Times, receive for their Services a Compensation which shall not be diminished during their Continuance in Office.”

              I will assume, for the purposes of this comment, that not only the wording but also the punctuation and capitalization just quoted correctly reproduces the original text. I have seen the text of the U.S. Constitution in other more authoritative sources, but for purposes of this comment, I am assuming that the above quotation is accurately presented.

              I was wondering yesterday whether or not the U.S. Constitution preserved 18th century norms of capitalization, and if so whether the adjective “supreme” qualifying “Court” was capitalized or not. It is not. Note that in “United States”, both words are capitalized. This clearly indicates that this phrase functions as a proper noun, and that whether or not the “States” are united is immaterial for purposes of constructing this constitutional clause.

              But given that the clause refers systematically to a “supreme Court”, indicates that the Court is indeed supreme. This seems confirmed later in the reference to “supreme and inferior Courts”. And the specific use of the word one seems to imply clearly that, under any reasonable canon of statutory or constitutional construction, there can only be a single supreme Court. All other Article III courts that Congress may “from time to time ordain and establish” are, under the text of this clause, inferior courts.

              The “one supreme Court” would not be supreme unless it exercised appellate jurisdiction over all the other “inferior Courts” that, collectively with the “one supreme Court”, constitute the body in which the “judicial Power” of the United States is vested.

              1. Your reading nullifies the Constitutional power of jurisdiction stripping and thus cannot be correct.

                Once again, DP, you aim merely to confirm a preconceived notion, and thus miss the meaning of the law.

                Each – and every (including the judicial branch) – are subservient to the Constitution, and you need to understand that the Foun ding Fa thers designed the system so that the Supreme Court was NOT supreme over the Constitution.

                Look into the Federalist Papers as to the concerns with a too-powerful Judiciary.

                1. DP,

                  Your reading is also incomplete in the notion of “original jurisdiction” accompanied by the fact that the judicial power from the Constitution is a limited power.

                  Sound-byte lawyering (as it appears that you are attempting) is deceptively simple, but nonetheless incredibly incorrect.

        2. But being coy that Alappat is not as dead as King Tut helps your “credibility” as determined by….you?

          Listen to arguments in front of any CAFC panel; they virtually laugh out loud when some hapless lawyer invokes the “new machine” argument without pointing out some new physical aspect of the “new machine”.

          DP, your location of the BIOS as part of the “machine” is pretty arbitrary, you may as well say the OS is too.

          From my POV, I can see an argument for software as a machine component if the information is not consumed by persons (e.g BIOS and lower-level OS functions), but if consumed by persons, it’s inevitably expressive and the “function” cannot be fairly, repeatedly, and economically separated by the workings of patent law.

          1. Alappat is not dead.

            If you want to pretend otherwise, that of course is your business.

            As is peddling that fantasy of yours which has zero connection with “the workings of patent law.”

              1. Beg to differ, Martin. But the holding of Alappat is excellent law. It is the dicta that is dead.

            1. Anon, for the 14th thousand time I ask you to tell us what the holding of Alappat was.

              1. And for the 14,000 time, do you recognize that a case has a holding for any argument that would change the result?

                You present a false view that I have not delivered on what at least is one holding in the Alappat case.

                I most certainly have.

                And I did so in our very first interaction on this matter.

                1. Our discussions on Alappat are in the archives.

                  Feel free to read them (apparently, perhaps, for the first time).

                2. anon, since you said it was the first thing, I assume you know exactly where to look and what to look for. You said that your statements were proof that you were not prevaricating. Yet you stand here before the world and do not defend yourself, implying, of course, that such proof of not prevaricating does not exist.

                  Everybody knows, anon, that you do this all the time — referring back to non existent statements you made in the past about this or that. You never to my knowledge have ever backed up the referrals with links to your statements, nor simply stopped all the running around in circles by simply making the statements once again, now, on the record that everyone can see what you said without conducting a fruitless and exhausting search.

                3. Ned – it was a hyperbole in that we have discussed this at depth several times, and each and every time we get close to having an inte11ectually honest conversation of the holdings (yes, plural) of Alappat you simply run away.

                  Every
                  Single
                  Time

                  For you to then come back and claim that it is I that refuse to hold the conversation is beyond chutzpah.

                  It is patently dishonest and unethical.

      2. Distant Perspective, remember that that diatribe by Rich about programmed computers being special machines and therefor per se eligible was just dicta. The holding of the case was that the claims, drafted in MPF format, covered the hardware disclosed — and equivalents, which could be programmed computers executing each MPF element, which together, in the claim, all added up to a rasterizer of a graphics unit for a display — a very specific machine.

        It was not until State Street Bank did Rich go all they way to Dante’s inferno and simply declare the programmed machine eligible.

        1. Alappat seems to have been messy, with jurisdiction issues, and it also involved means-plus-function elements. From my perspective, I would take issue with the fact that the input is specified as “illumination intensity data”, and the “machine” is functionally claimed as a “rasterizer” which presumably generates data to be displayed on an oscilloscope screen, but does not include in the claim the element of displaying the information on the screen. The issues that I would have with the claim would be resolved, if the claim itself had involved elements that explained how the “illumination intensity data” was arrived at, or at least did not specify some vaguely-defined genus of “data”, and if the claim had incorporated the element of displaying on the oscilloscope screen – so that what was specified in the claim took the form of an improvement to an oscilloscope.

          The remarks above are motivated by a reading of Diehr, that, to me, distinguishes Diehr from Benson and Flook. In relation to Diehr, maybe the opening of the door does not strike people as sufficiently inventive, but then, in 1981, programming a computer to compute solutions to the Arrhenius equation would seem to me even less “inventive” than opening an oven door. So, from my perspective, any “inventive concept” must derive from the ordered combination of claim elements.

          Now consider the process claimed fully from end-to-end, considered in terms of “information” generation and consumption, along the lines of the proposals that Martin Snyder regularly advocates here. No information is consumed that is not produced within the claimed process, and no information is produced that is not consumed within the claimed process. The temperature sensors generate “information” that flows into the computer, is transformed, flows out, and is consumed at the control that determines when the mold door is to be opened. Thus we have an exemplary industrial process, with elements such as measuring temperatures in the mold etc. that require to be considered under 102 for novelty and 103 for obviousness. The computational part is just another claim element in the process.

          By contrast, Flook takes, as input for any calcuation “data” obtained from goodness-knows-where, feeds this into an exceptionally elementary equation which, although not apparently disussed in the record, cannot possibly be regarded is in any way novel or inventive. The output is some number that is to be treated as an “alarm limit” to be used in some unspecified and certainly unclaimed fashion in some sort of process for catalytic conversion of hydrocarbons. What is claimed in Flook seems to provide nothing remotely resembling an “inventive concept” of any description. The formula is just an arbitrary formula. You could “invent around” it by simply specifying another formula, equally arbitrary, but different from that specified in Flook’s patent application. In terms of “information flow”, the “process” in Flook’s claim consumes unspecified data not arising in the claimed process, and produces other information, in the form of an “alarm limit” that is not consumed in the process. So there are significant differences between Flook and Diehr that are highlighted by a “semiotic” analysis.

          In summary, for Benson, claim 13 is the pure abstract idea, and claim 8 is a pianola-type claim in a very small computational device that turned out to be anticipated by a prior art shift register (Couleur).

          One can the look at Abele and Alappat, to see how these fit in with the analysis outlined above.

          1. Your analysis is deeply flawed, DP – you are hunting to fit some pre-conceived idea into the historical narrative, and you are not taking into account the very historical biases of the various Justices involved (and the push back that Judge Rich was able to provide, seeing as he understood better than anyone what Congress actually did in the Act of 1952).

            That is why Ned attempts to denigrate Judge Rich.

            1. Regarding legislative intent and purpose…

              In connection with remarks below, I suggest bearing in mind that confirmation hearings for Judge Gorsuch’s nomination to SCOTUS start next week, and that Judge Gorsuch is an avowed “textualist” who seems to align himself closely in that regard with the late Justice Scalia. This might perhaps be relevant in pondering whether appointing Gorsuch to SCOTUS will change things with regard to the receptiveness of SCOTUS towards the sorts of “everything under the sun” arguments typically presented in, for example, AIPLA amicus briefs.

              So on to Scalia himself and what “textualism” meant for him. I first encountered a discussion of the SCOTUS case Edwards v. Aguillard, 482 U.S. 578 (1987) in the essay “Justice Scalia’s Misunderstanding” in the collection of essays Bully for Brontosaurus by Stephen Jay Gould. The SCOTUS opinion is available on justia.com here:

              link to supreme.justia.com

              To the best of my knowledge, Scalia was a Catholic, not a Southern Baptist, or a member of a denomination particularly associated with promoting “Intelligent Design” positions, and therefore I presume that his dissent would not be based on a personal espousal of the principles of “Creation Science”, though there may be some practicing Catholics who are also young-Earth creationists. The whole opinion is long. I draw particular attention to section III of Scalia’s dissent (joined by Rehnquist).

              Apologies in advance for the length of the quote following, though I also expect that some would find it far more readable and interesting than the personal opinions I myself express here.

              “In the present case, for example, a particular legislator need not have voted for the Act either because he wanted to foster religion or because he wanted to improve education. He may have thought the bill would provide jobs for his district, or may have wanted to make amends with a faction of his party he had alienated on another vote, or he may have been a close friend of the bill’s sponsor, or he may have been repaying a favor he owed the majority leader, or he may have hoped the Governor would appreciate his vote and make a fund-raising appearance for him, or he may have been pressured to vote for a bill he disliked by a wealthy contributor or by a flood of constituent mail, or he may have been seeking favorable publicity, or he may have been reluctant to hurt the feelings of a loyal staff member who worked on the bill, or he may have been settling an old score with a legislator who opposed the bill, or he may have been mad at his wife, who opposed the bill, or he may have been intoxicated and utterly unmotivated when the vote was called, or he may have accidentally voted “yes” instead of “no,” or, of course, he may have had (and very likely did have) a combination of some of the above and many other motivations. To look for the sole purpose of even a single legislator is probably to look for something that does not exist.

              “Putting that problem aside, however, where ought we to look for the individual legislator’s purpose? We cannot, of course, assume that every member present (if, as is unlikely, we know who or even how many they were) agreed with the motivation expressed in a particular legislator’s preenactment floor or committee statement. Quite obviously, “[w]hat motivates one legislator to make a speech about a statute is not necessarily what motivates scores of others to enact it.” United States v. O’Brien, 391 U. S. 367, 391 U. S. 384 (1968). Can we assume, then, that they all agree with the motivation expressed in the staff-prepared committee reports they might have read – — even though we are unwilling to assume that they agreed with the motivation expressed in the very statute that they voted for? Should we consider postenactment floor statements? Or postenactment testimony from legislators, obtained expressly for the lawsuit? Should we consider media reports on the realities of the legislative bargaining? All of these sources, of course, are eminently manipulable. Legislative histories can be contrived and sanitized, favorable media coverage orchestrated, and postenactment recollections conveniently distorted.

              So much for Scalia. Maybe all current SCOTUS Justices are comfortable with a textualist approach when considering patent law.

              1. I have actually drafted or participated in drafting some “remarks” intended to become part of the legislative history. Typically, we did this when legislation was crafted by the patent bar and urged upon Congress.

                The other day on Gene Quinn’s site I was reading some of his remarks on the legislative history for the AIA where time after time legislators indicated that the upcoming legislation would have a grace period that would be good against third-party prior art. But as Gene said, his review of the actual legislation indicated that the grace period was only good against the acts of the applicant himself.

                I wonder just how many votes were swayed by the inaccurate discussion of the legislation. Had they understood what they are really voting for, would they have still voted, “Aye.”

                And better yet, would the people backing the legislation but who had not yet read it still back it had they known what was there?

                1. I may continue the discussion below in comments “replying” to a higher level posting, to avoid narrowing columns still further. I am wondering whether those legislators were democrats in the House? It seem as though the majority passed from democrats to republicans, and that the republicans on the Judiciary Committee were more consistently behind the AIA as passed than were the democrats on the Committee.

                  A web search found for me a compilation of the legislative history of the AIA compiled by a law firm. I won’t post a link here since, once I started working through it, it seemed that the firm had not intended public distribution (and therefore were possibly careless in placing it on the web without taking the precautions to prevent it showing up in search engines).

            1. LOL – the “allure” of the “I slept at a Holiday Inn last night.”

              How quaint.

        2. diatribe by Rich

          And in cue, there goes Ned trying to scape goat the single most knowledgeable judicial person regarding what CONGRESS did in the Act of 1952.

          You should be ashamed Ned.

        3. Forking this comment off Ned Heller’s comment 21.3.2.

          Usual disclaimer, IANAL.

          SCOTUS and Statutory Stare Decisis

          People may remember this phrase in the majority opinion in Bilski concerning the judicial exceptions for laws of nature, physical phenomena and abstract ideas: “And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.”

          What did Justice Kennedy mean by “statutory stare decisis”?

          I discovered the following article by Prof. Amy Coney Barrett, Professor of Law at the University of Notre Dame, published in 2005 in The George Washington Law Review:

          link to scholarship.law.nd.edu

          As explained in this paper, if a decision turns on a constitutional question, SCOTUS may be prepared to overrule prior precedent, because the process of amending the constitution itself is so impracticable. However, where the body of law is founded in statute, SCOTUS will not overrule precedent, essentially because Congress, if it disapproves of the law under governing precedent is free to legislate to amend the statute, and Congress is the body most appropriate to undertake this task. Thus, at SCOTUS level, where statutory stare decisis applies, prior precedent is only overruled in extremely exceptional circumstances. In the words of Prof. Barrett, statutory stare decisis at SCOTUS level is “super strong”.

          Thus, in accordance with the principle or policy, SCOTUS would not overrule any of Funk, Benson, Flook, Chakrabarty, Diehr, Bilski, Mayo, Myriad and Alice absent some “special justification” to do so. If there is to be change in the interpretation of statutes governing statutory subject-matter, it should come from legislation in Congress. Unless and until Congress legislates, the Courts, especially CAFC, are expected to develop case law consistent with binding SCOTUS precedents.

          The basic principle was set out by Justice Kennedy in the opinion for the Court in Patterson v. McLean Credit Union 491 U.S. 164 (1989), available on justia.com here:

          link to supreme.justia.com

          “Stare decisis compels the Court to adhere to that interpretation, absent some “special justification” not to do so. The burden borne by a party advocating the abandonment of an established precedent is greater where the Court is asked to overrule a point of statutory construction, which, unlike constitutional interpretation, may be altered by Congress. Here, no special justification has been shown for overruling Runyon, which has not been undermined by subsequent changes or development in the law, has not proved to be unworkable, and does not pose an obstacle to the realization of objectives embodied in other statutes…”

          1. Distant Perspective, your point here about statutory stare decisis is exceptionally important because Judge Rich and generally the Federal Circuit, and the C.C.P.A. before the Federal Circuit, absolutely refused to follow the Supreme Court cases on statutory subject matter. Judge Rich seem to be of the view that the ’52 Patent Act overruled and did away with “judicial exceptions.” He further stated that “new” in section 101 only meant and was completely covered by section 102, when that was not consistent with the Supreme Court cases before or after ’52.

            Generally the chaos of the last 40 or 50 years in patent law on patentable subject matter and generally can be traced to one man: Judge Rich.

            1. Ned,

              Once again (attempting) to impugn, instead of helpping a non-lawyer understand what Congress did in 1952 (and why Judge Rich was able to stand up to the Court, without ANY recriminations (funny how you never seem to address the fact Ned that Judge Rich was correct as to the meaning of what Congress did (and WHY Judge Rich would know that and the difference of the wax of nose mashing that the Supreme Court was engaged in.

              Funny that, you were the person that presented an article on the importance of not following dicta as if it were law.

              Do you remember that?

              Also, any time you want to supply your State attorney oath, I will be more than happy to explain to our non-lawyer friend exactly why thinking that the Supreme Court “can do no wrong” is simply NOT in accord with our duties as attorneys.

              Funny on that too – you never seem able to find that oath…

              1. Ned, why don’t you re-post that article about the difference between (actual) holdings and dicta when it comes to stare decisis….?

                I am sure that our rather quick study of a non-lawyer friend would enjoy that bit of understanding (even if it is rather inconvenient for you and your Windmill Chases).

                1. anon, as a drafter and advocate behind the ’52 Act, Rich was the last person in the world to sit as a “judge” on the meaning of the Act.

                  Imagine der Fuhrer writing the history of the Third Reich?

                2. To the contrary – that alone makes him the BEST person.

                  You have forever and a day simply failed to understand that.

                  Couple that with your “screaming silence” on 35 USC 100, and there is little doubt that what you advocate is simply not what the law IS.

                  And yes, we both know that – that is why you run and hide when you are reminded of the points on the table of discussion.

                  How is that providing your State attorney oath thing coming along?

          2. Quoting here a short paragraph commencing IIC of retired Justice O’Connor’s opinion in State Oil Co, v. Khan 522 U.S. 3 (1997), where the Supreme Court “with the utmost caution” overruled one of its prior antitrust precedents:

            “Despite what Chief Judge Posner aptly described as Albrecht’s “infirmities, [and] its increasingly wobbly, motheaten foundations,” 93 F. 3d, at 1363, there remains the question whether Albrecht deserves continuing respect under the doctrine of stare decisis. The Court of Appeals was correct in applying that principle despite disagreement with Albrecht, for it is this Court’s prerogative alone to overrule one of its precedents.”

            1. Ned really needs to provide you with the article on the difference between Holding and Dicta, as it directly relates to what it means to overrule a precedent.

              It is simply legal error to attempt to pick any phrase out of a Supreme Court ruling and say: “THIS is precedent and must be followed.”

      3. DP –

        If the yearly upgrade does not give you a new machine, then why bother with the upgrade?

        What if instead of erasable media, what you are calling an operating system were part of the bios? What if it were not possible (e.g. due to the involvement of solder) to upgrade the bios, and to get whatever functionality that now motivates the yearly upgrade you had to purchase another copy of the machine, the only difference between the old and the new being the bios? Are these two now not different machines rather than copies of the same machine? Don’t you now have one machine that makes coffee and another that makes coffee and also makes fruit smoothies?

        Your repeated use of the phrase “to me” makes it clear that you understand that this is all just a matter of perspective. Given that, it is not clear to me why you don’t want the patent system to promote progress in computer implemented methods the same why it promotes improvements in mouse traps and tooth brushes.

        1. The patent doctrine for DP to pick up and read about is the patent doctrine of inherency.

          Either the original machine is capable of the new functions that the upgrade provides, or it is not.

          1. (this is nothing more than that old fallacy of the House television show “quip” which FAILS for the Morse decision)

            DP clearly has enough intelligence and command of certain legal cases to show that he is – or should be – aware of the fallacy that he is engaging in.

            Kind or reminds me of a certain poster at the Quinn blog that got busted for being a mouth piece (and nothing more).

          2. Hint from anon concerning inherency gratefully acknowledged: note to self to look into this further. But almost certainly no further comment on this posting.

            1. It is getting a bit long in the tooth – appreciate the exchanges, DP.

    4. anon, I was following your continuance of the discussion with DP that I started when I was conjecturing how we could do anti-gravity. Running time backwards, inverting-time space don’t seem to work, even in theory. Stopping time would work. With no time movement, there would be no acceleration even if there were two masses adjacent.

      Just before the beginning of the universe, time did not move and mass was nearly infinite. But without time, there was no gravity, right? No acceleration? The large mass could stay as rest without collapsing. This would all change, of course, if time started to move.

      Ah, to build the anti-gravity machine. Almost as complicated as the transporter.

      1. Stopping time….

        You might as well simply try to live in a 2-Dimensional world…

        Please do not try to “play” with physics when you clearly are out of your league there.

  3. anon:

    “You overlook a little something that Prof. Crouch coined as the Vast Middle Ground.

    This of course is due to the Act of 1952 (something you, like Ned, seem intent on ig noring).”

    Just a reminder: The 1952 patent act was silent on functional claiming outside of 112f. anon refuses the point to particular support for his claim.

    Keep up the good work, Mr. President. Repeat the l-i-e long enough and surely everyone will believe it!

    1. No Ben, it was not.

      Open your eyes son.

      1. …and maybe if you ask really really nicely, Prof. Crouch may explain the coined term for you

        Unless of course, you think Prof. Crouch is a L I A R too…

        Yeah, that’s what I thought.

        1. Crouch’s October 20, 2014 post (“The Vast Middle Ground of Hybrid Functional Claim Elements”) does not claim that the 1952 act authorized hybrid functional claim elements.

          Feel free to quote it, or anything, to prove me wrong.

          1. Feel free to back up your rather incorrect statement.

          2. From the artilce itself:

            US patent attorneys have taken notice of these legal limits on means-plus-function claiming and have largely abandoned the form. Twenty years ago, most patents included claim terms written in means-plus-function form. Today, that figure is under 5%. But the strategy for many does not eschew functional claim elements, but rather to integrate functional limitations together with structural limitations with the result being broadly defined claim elements that avoids the limitations of 112(f).” (emphasis added)

            Do you understand what the “Middle” means in Vast Middle Ground?

            DO you understand that terms sounding in function are allowed (under the law) without invoking 112(f), and that the option of 112(f) is for pure functional claiming?

            Ben,

            Please stop embarrassing yourself. I realize that the DISQUS days are long gone where you could “upvote” every utterance of Malcolm, but try at least to think just a little about what you choose to post about.

            1. Sincerely, I appreciate you taking the time to try to quote supporting material.

              But I do not see anything in the quoted or bolded segment which says the 1952 act authorized hybrid functional claims.

              Your arguement appears to be:

              1. The 1952 act authorized the 112f claim form.
              2. Non-112f functional claims exist.
              Therefore:
              3. Non-112f functional claims are authorized by the 1952 act.

              3 does not follow from 1 and 2. The 1952 act is silent regarding non-112f functional claiming. The 1952 act is also silent about claims involving xylophones, and it would be absurd to claim the 1952 act authorized xylophone claims.

              I understand that limitations sounding in function were allowed based on pre-1952 case law. Non-112f functional claims may still be valid, but they are not valid BECAUSE of the 1952 act.

              1. What you see would be greatly improved if you opened your eyes.

                Start by answering the questions I put to you:

                Do you understand what the “Middle ” means in Vast Middle Ground?

                Do you understand that terms sounding in function are allowed (under the law) without invoking 112(f), and that the option of 112(f) is for pure functional claiming?

                Then realize that the coined term is not mine.

                Think son.
                Think.

                1. The use of the term ‘middle ground’ does not imply that it was authorized when the endpoints were authorized.

                  That would be like saying the US acquired the Ohio River Valley during the Louisianna Purchase because of their relative positions. It is a cute argument, but it ignores history and is incorrect.

                2. It is neither incorrect nor does it ig nore history.

                  Quite the opposite, in fact, as you have to ig nore history (much like you are attempting to answer my questions put to you) to try to reach your FAR too black-and-white/ either-or version.

                3. Assertions without evidence or even coherent arguement.

                  The only way that the 1952 act could have created the middle ground through the definition of the end points is if terms sounding in function were disallowed prior to 1952, which is not the case.

                4. Ben,

                  You keep on avoiding giving answers.

                  This makes your Malcolm-like accusation of “Assertions without evidence or even coherent arguement.” fit you rather than me.

              2. I understand that limitations sounding in function were allowed based on pre-1952 case law.

                Let’s identify what this means to you.

                Are you saying that it was ONLY the pure functional claiming that is new per the Act of 1952?

                Then read Federico’s comments directly on the enlarged scope of terms sounding in function (which includes BOTH the new “pure” option as well as the VMG.

                Then start a conversation with Random who thinks that NO use of functional terms is proper (at least at his rather canardish “Point of Novelty for eligibility” views.

                1. Yes. The 1952 act does not opine on non-112f functional claiming. It is silent on the subject.

                  Federico’s comment:

                  The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for combination may be expressed as a means or step for performing a specified function, without the recital of structure, material, acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that some decisions such as Halliburton Pil Well Co v. Walker are modified or rendered obsolete.

                  Federico’s comment does not suggest the 1952 act does anything regarding non-112f functional claims. The reference to greater liberality to functional claims in combination is clearly talking about the 112f form.

                2. There is another comment by Federico – one of an apparent personal opinion on what Congress did to unleash that very VMG that seems beyond your “vision.”

                  (As well as what the abrogation of a certain Supreme Court case means for the entire topic – BOTH VMG and the pure option.

                  When you open your eyes, you can see that bigger picture…

                3. Federico’s comment does not suggest the 1952 act does anything regarding non-112f functional claims.

                  That is just not so.

                4. …and further, you have not answered as of yet my questions to you.

                  Understanding those “non-112(f) views of yours are critical here, but you do not seem to want to venture there…

                5. …instead you seem to want to merely trip yourself up on the “pure” functional claims, as if “functional claiming” ONLY deals with the “pure” aspect.

                  It does not.

                  That is also why the canard of “Point of Novelty” for eligibility discussions always gets mistakenly dragged in. That part of the fallacy goes hand in hand with your eyes being closed here.

                6. “There is another comment by Federico – one of an apparent personal opinion on what Congress did to unleash that very VMG that seems beyond your “vision.””

                  Quote it.

                  “…and further, you have not answered as of yet my questions to you.”

                  I answered your one question in post 20.1.1.1.2.1.2. The 1952 act is silent on non-112f functional claiming. Authorizing 112f is the sole ‘new’ part of the 1952 act regarding functional claiming.

                  And could you try to not make so many replies to the same comment?

              3. Ben, functional claiming was only condemned when it occurred at the exact point of novelty. Combinations of old elements, some or all of which were expressed functionally, were specifically “OKed” in Faulkner v. Gibbs (1949) link to scholar.google.com when the invention was in the combination.

                Since Westinghouse v. Boyden Power Brake (1898), functionally expressed elements in combination claims were construed exactly as mandated by the construction clause in 112(f).

                112(f) applies regardless of whether the claim element is at the PON or not. It has not been limited to the use of MPF, but seems to apply to any functionally expressed element.

                Generally, anon does not know what he is talking about. It is good to see you challenge him.

                1. Ned,

                  Quoting pre-1952 cases really does not help you (expressly because YOU have such a difficult time accepting just what happened with the Act of 1952.

                  Ben – as predicted, Ned comes along with the “Point of Novelty” for eligibility fallacy….

  4. Although the details are scarce, President Donald Trump’s proposed budget, “America First: A Budget Blueprint to Make America Great Again” (PDF), paints a dramatic picture for the American science and medical communities that is facing huge potential budget cuts.

    Swirl down the t 0i let, America! So awesome.

    Of course, the education budget will be cut, too. No biggie! Every kid will get a voucher to buy his/her choice of over 100 different versions of The Holy Bible.

    Promote the Progress!

  5. For eligibility, the cases cited in the USPTO MPEP under that heading show that it is necessary not just to claim a result bit also to specify the combination of features that give that result.

    Paraphrasing the claim under consideration:

    1. A magic-kingdom-implemented method for providing certified financial data indicating financial risk about an individual, comprising:
    (a) receiving a request for the certified financial data;
    (b) magically collecting financial account data about the individual from at least one financial source,
    (c) transforming the financial account data into a desired format;
    (d) validating the financial account data by applying a magic engine to the financial account data to identify exceptions, wherein the exceptions indicate incorrect data or financial risk;
    (e) confirming the exceptions by collecting additional data and applying the magic engine to the additional data,
    (f) marking the exceptions as valid exceptions when output of the magic engine validates the exceptions; and
    (g) generating, using the resources of the magic kingdom, a report from the financial account data and the valid exceptions,
    wherein the financial account data comprises at least one of real-time transaction data, real time balance data, historical transaction data, or historical balance data; and
    the magic engine identifies a pattern of financial risk; the method is implemented using the resources of the magic kingdom, and steps (c), (e), and (f) are executed via elves or a series of elves.

    Very little information is lost by this transformation from the real world to the magic world, the reason being that although the outcome is specified, there is little about what creates that outcome. As an Australian colleague succinctly put it: “What does the computer contribute to the feast?

    1. This is not a statement of how to apply a law, but how to conduct a witch trial.

      The issue should be prior art and obviousness issues along with enablement.

      This looking at a claim and judging it based on how the judge feels about it is not law. Humans spent many, many years trying to get away from this type of judgment.

  6. OT, but does anyone else feel like Trump is a character from a Tim Burton movie?

  7. I very much prefer “Eligibility: Get Technical or Get Wrecked-nical.”

  8. Another super case based squarely on principle. Which is, we have no clue what “abstract” means but we think it means “most computer inventions can no longer be patented.”

    So simple really. Who needs Congress to set policy?

  9. …still waiting for someone to define “technical”

    (and please, in a non-circular manner, thank you)

  10. We don’t need no stinking prior art. We don’t need no stinking 103 arguments. We have Alice. Now become invalidated.

    1. I think you are being way too hard Night. Without Alice, Google and Cisco et al. might have to pay for technology they copy and they really are having a rough time, what with Trump not yet being successful in lowering the corporate tax rate. Give ’em a break.

      1. What could go wrong with that?

        😉

  11. COFFELT v. NVIDIA CORPORATION
    link to cafc.uscourts.gov

    Invalid under 101:

    1. A method for deriving a pixel color comprising the steps of:
    a computer calculating a first position vector for a geometric graphic object;
    a computer calculating a particular steradian region of space;
    a computer calculating a particular steradian radius of said steradian region of space;
    a computer calculating that said first position vector is located in said particular steradian region of space;
    a computer calculating a second position vector for a geometric graphic object;
    a computer calculating that said second position vector is located in said particular steradian region of space;
    a computer calculating a length of said first position vector;
    a computer calculating a length of said second position vector;
    a computer comparing said first length to said second length;
    for a first pixel, a computer deriving a pixel color for said first position vector from a result of said length comparison;
    for a second pixel, a computer deriving a pixel color for said second position vector from a result of said length comparison.

    1. The patentee: the claims allow a computer to derive “realistic complex
      3D shadows

      The claims don’t “allow” anything except for the right to file a lawsuit against people who infringe them.

      It is true, however, that the claims cover computer-implemented methods that can result in incredibly simple and “realistic” shadows.

      It’s also true that both the terms “realistic” and “complex” are incredibly subjective and therefore worthless from a patent law perspective.

      1. The claims don’t “allow” anything except for the right to file a lawsuit against people who infringe them.

        Please get into a profession in which you can believe in the work product produced.

        The cognitive dissonance so evident in your posts simply cannot be healthy.

    2. The appellant seems considerably confused.

      A “steradian” is the SI unit of solid angle, just as a radian is the SI unit of planar angle. Thus the sphere subtends a solid angle of 4 pi steradians at its centre. But the patentee is allowed to be his own lexicographer: “A steradian is a particular region of space with a boundary defined by four vectors”. Given that this definition of “steradian” is non-standard, the manner in which those four vectors determine a region of space needs to be defined. Presumably the only such “definition” is the diagram in Figure 1. Then the patentee seems to assume that vectors, coordinate systems etc. are physical objects existing in the space of physics through which we move. But of course they exist only in the 3-dimensional space of mathematics (which is a three-dimensional vector space over a Dedekind-complete ordered field, taken to represent the field of “real numbers”, with the standard scalar product and Euclidean norm). This mathematical 3-dimensional space is an abstract intellectual concept that models the space through which, as physical beings, we move, on scales corresponding to everyday life, but not, under current physical theories, at the sort of scales where general relativity is applicable (hence the perceived “force of gravity” resulting from the curvature of space-time) or down to the scale of the Planck length (where space-time is at best “space-time foam” or “quantum foam”, as suggested by John Wheeler over 60 years ago). Of course, one could suppose, alternatively, that these vectors and coordinate systems live in a computer-science model of space that approximates in turn to the mathematical model of flat Euclidean 3-dimensional space. But, in any event, “vectors” and “coordinate systems” are not real-world objects to be found in the “space” of experience. They could be categorized as abstract “information”, or as “abstract intellectual concepts” or as instances of computer-science data structures. They are certainly not physical objects, unless the “physics” is taken to consist of electrons, protons and neutrons etc. in the innards of a computer. And the resultant “pixel colors” are similarly just abstract data.

      It seems to be a pattern that, rather than a Rule 36 affirmance, the CAFC seems to publish a per curiam opinion in cases where one of the parties appears pro se.

      1. Distant, understood.

        Now consider anti-gravity — which is achieved by what? Stopping time so that no acceleration occurs, or by adding negative acceleration by reversing time?

        Of course, we can consider these two “inventions” in the mind. But they would be impossible to construct.

        1. As opposed to the items hat can be created here…?

          Methinks the argument proves too much.

        2. Ed the Ned, you are always just full of new abstractions in your head that you use to limit patentability.

        3. Reversing the direction of time doesn’t do the job: if you run the video backwards, the earth still orbits the sun.

          And, in general relativity, particles will follow what seems to be the straightest path possible (in technical terms, a time-like geodesic) through space-time. But, analogous to a ball rolling in a funnel, the curvature of space-time will ensure that the earth, following this straightest path, nevertheless ends up orbiting the sun.

          So anti-gravity would seem to exist only in SciFi stories, such as Breeds there a Man…?, by Isaac Asimov (1951).

          1. Sorry, wrong short story. Should have been Noise Level by Raymond F. Jones, which I have located on the web here:

            link to vvforums.com

            The Asimov story is powerful, but not about anti-gravity.

          2. So, Distant, not only time has to be inverted, but all of time-space?

            1. Laws of classical physics are invariant under reflections, rotations and time reversal. So you don’t get anti-gravity in classical physics under any sort of inversion of time or space.

                1. Specifically entropy in the context of Information Theory, a mathematical discipline arising out of the work of Claude Shannon, in particular.

                  The Wikipedia article on Information Theory is here, and “entropy” is first mentioned in the first sentence of the second paragraph:

                  link to en.wikipedia.org

                2. Oh, in that context…

                  If the initial conditions are highly ordered then the system will evolve to a disordered state. But the fundamental laws of motion and gravitation, Maxwell’s equations etc. are invariant under time reversal.

                3. You have not yet dealt with the arrow of time as pertains entropy.

                  The universe simply is not bi-directional when it comes to time.

                4. …which just goes to show that the theories of man (and not laws of nature) that do not account for this cannot be totally correct and are merely man’s approximations of the actual universe.

    3. Postscript.

      When patent lawyers are asked on the Web to give an instance of subject matter that is not patent-eligible under 101, they often mention “fine arts”. Are utility patents granted for techniques in the art of technical drawing? Would the perspective techniques of Renaissance artists, if invented today, be patentable subject matter? Isn’t this invalidated patent merely fine arts on a computer. And doesn’t claim anything other than claim elements rooted in extremely elementary mathematics for assigning “pixel colors” in a fairly arbitrary fashion, represented as data, but presumably intended for displaying pretty pictures, say, on a computer monitor.

      1. I presume you would agree that a method for training a cat would actually be eligible?

        What remains ineligible are things that exist sole in the mind, such as beauty, value, grace, and, for that matter, time advancing at a negative rate.

        1. I probably would not agree about training a cat. The late Justice Scalia’s point in the Bilski oral argument was that the 19th century US economy was heavily dependent on horse-power, so, if methods of training horses were considered as patentable subject-matter under 19th century patent laws, then there would be loads of patents on record, concerned with training horses. I saw a response from a patent lawyer on the web saying, of course there were patents on training horses, and then giving a list of patents on bits and bridles and the like, which are of course traditional manufactures and/or machines. So Scalia’s point presumably stands: horse-whispers and horse trainers in the 19th century did not patent their methods of training horses. But of course this argument can be refuted by coming up with a 19th century patent that is not drawn to traditional arts, machines etc.

          And if methods of training horses were not patentable under 19th century patent common law, and if the wording of the ‘Inventions Patentable’ portion was taken over essentially unchanged into article 101, with the substitution of process for art, where the term “process” had been construed in Cochrane v. Deener as being a classic industrial process, that would imply, under canons of statutory construction, that the meaning of “process” did not change on account of the passing of the 1952 act. Therefore, under this textualist argument, methods of training horses would be ineligible, and, by analogy, methods of training cats would be ineligible to this day, whether or not one waved around laser pointers.

          Another argument is to look to other parts of the statute. The requirements for “novelty” in section 102 describe prior art as being patented, described in a printed publication, in public use, on sale, or otherwise available to the public. But there are some “processes” so banal that it would be difficult to find a publisher. People might be fascinated by cat videos on youtube, but do they really pick up magazines to learn about how people can make sedentary cats start jumping around the place. It is possible that many people waved laser pointers around, and watched their cat chasing after the light spots without thinking: “Oh! I must write about this in our parish magazine! The neighbours really will be fascinated to read about it!” So where would you start looking for allowable prior art for all the “trivial”, “everyday” processes that people are accustomed to engage in in private. Does that mean that all these mundane activities that people engage in in private are all new, and therefore patentable, unless someone else has spent significant amounts of money to patent them?

          1. Everybody knows that, in the US, progress in horse whispering came to a standstill precisely because of the lack of patents. Meanwhile, in Australia, which granted thousands of horse whispering patents, a huge and incredibly profitable industry sprang up and flourished. The area south of Perth was known as the “Horse Ear Highlands” and basically provided the economy for the entire country until horses were replaced with kangaroos.

          2. It is possible that many people waved laser pointers around, and watched their cat chasing after the light spots

            Maybe. The key discovery, of course, was that cats like to chase light spots. And prior to laser pointers, there were no light spots for cats to chase. Heck, just a few years prior to the invention of the laser pointer, it was illegal to expose a cat to any kind of light. That’s why today their pupils get so small when they are in the sun.

      2. Contrast (with music), the art of making a violin (think Stradivarius) and the act of playing a violin.

        1. I was thinking of the digital argument mastering the technique of programming the computer in simple ways to produce visual effects, like the painter mastering the arts of painting in oils, or the violinist developing the suppleness of the right wrist, and mastering the knack of moving the left hand up and down between 1st position and 3rd position, landing on the right note on a regular basis.

            1. You confuse the ability to create effects with the artistic application of that ability.

  12. “An ‘inventive concept’ that is ‘sufficient to transform the nature of the claim into a patent eligible application.’”

    That has been utter nonsense since it was first uttered. It means that mental steps are not patentable unless they are non-obvious, in which case mental steps are patentable, in which case you could have skipped the Alice step 1. But once you have concluded that the claim covers a mere abstract idea, there is no need to determine if it is a really clever abstract idea, if indeed abstract ideas are not eligible subject matter.

    Perhaps all Alice cases could be answered by the mental steps doctrine, or step 1 of the Alice test. A compendium of all Alice cases that pass muster might demonstrate that they all comply with the machine-or-transformation test anyway. Alice just provides some head-of-a-pin sophistry.

    1. “An ‘inventive concept’ that is ‘sufficient to transform the nature of the claim into a patent eligible application.’”

      That has been utter nonsense since it was first uttered. It means that mental steps are not patentable unless they are non-obvious

      That is most definitely not what the statement means.

      Wow. Try to learn something, people.

      1. So, what is an inventive concept sufficient to transform an abstract idea into a eligible claim? Do you just know it when you see it? How do you make sense of the rule?

        1. what is an inventive concept sufficient to transform an abstract idea into a eligible claim?

          First of all, we know the answer can’t be “a non-obvious concept” because a mental process doesn’t become eligible merely because “it’s non-obvious”. Likewise, it doesn’t matter that the mental process is “useful” or “incredibly valuable.” It’s still ineligible. That’s not Alice, by the way. That’s common sense. It’s also the fundamental principle underlying Mayo — the most important patent law case of the 20th century. The claim in that case was about a very specifically claimed mental process, i.e., thinking an (allegedly) non-obvious thought about the meaning of data that obtained by an old data gathering step.

          An inventive concept becomes non-abstract when it involves either a new combination of physical structures or the achievement of a transformation of matter that was either previously undescribed or was not known to occur as a result of the described steps. Everything else is suspect.

          Put another way, any time that information or the application of logic to data/information are the “innovative” aspects of claim, you’re looking at a potential 101 problem. The degree of that problem is directly proportional to the skill of the lawyer who represents the party you assert your patent against.

          Information and data processing logic do not belong in our patent system. Shoe-horning them has done incredible damage to the system. Expunge it now.

          1. MoT and your penchant for making a mere style choice of claim form options just does not cut it Malcolm.

          2. MM: I think you and I are in agreement on the substance of the issue. I just think Alice is so poorly expressed that it is incomprehensible and could have been addressed with the concepts you mention, which all were standard doctrine before Alice.

            1. I just think Alice is so poorly expressed that it is incomprehensible

              Partly that’s a problem with Clarence Thomas’ writing, partly it’s a problem with the claims at issue (hardly a model of coherency), partly it’s a problem with the legal briefing by the compromised defendants (a huge problem), and partly it’s a problem with readers taking things too literally.

              It’s absolutely true that the concepts I’m mentioning were “standard doctrine” although certain aspects of that “standard doctrine” are just as “vague” as anything the Supremes have ever written, and intentionally so (e.g., the phrase “functionally related” in the context of the so-called “printed matter doctrine” — another subject matter eligibility screen).

              1. Lol – standard doctrine that you volunteered admissions against your interests….

                Nice.

        2. Just attended a CLE at the PTO last week and there was a judicial panel that included an EDVA judge who outright boasted about the fact that he used the “I know it when I see it” test and admitted there was not only no other rationale to rely upon and that none was needed.

          This did not set well with another judge (Sleet from DE) on the panel. Notably this Sleet has issued more opinions invaldating patents under 101 than any other district court judge in the US. He says he is beginning to believe that motions under 101 are possibly unduly violating 7th amendment right to trial and that he is reevaluating his positions on the use of invalidations under 12(b) as a means for resolving cases.

          1. Bluto, right to a jury trial for invalidity? Where have I seen that argued before?

            1. I understood him to state that there are likely facts being considered at the 12(b) stage that make contentions of invalidly under 101 better suited for a jury rather than a judge. Another judge on the panel thought that a better option would be to have these matters considered in a motion under rule 56 opening up the matters to additional evidence (such as expert testimony) rather than matters on the pleadings only.

              Other than the EDVA judge, the rest of the panel (including FRM Judge Michel) were very uncomfortable with the current state of affairs.

              1. Incidentally, I had a very nice conversation with Judge Newman where Alice was concerned. I’ll leave it up the readers to guess where she stood on the matter. Needless to say, in her presentation she provided a robust defense of the patent system as a machine for economic generation for the US. She believes that the US system is in worse shape that it was prior to the creation of the CCPA where rampant judge made law was choking off the patent system. I do not disagree.

                Several venture capital firms went on record as saying that their firms see the EPO and China as much more favorable grounds for investing in IP. They were clear that R&D is slowing down in life sciences in the US and that continued export of technology to other more favorable jurisdictions is underway and unlike to abate.

                Incidentally, China is about to adopt a new article to their patent laws that will expressly allow software and business methods as patent eligible.

                1. Several venture capital firms went on record as saying that their firms see the EPO and China as much more favorable grounds for investing in IP. They were clear that R&D is slowing down in life sciences in the US and that continued export of technology to other more favorable jurisdictions is underway and unlike to abate.

                  Never fear! Once we stop the brown people from coming in and get the white people breeding again, we’ll totally rule the world in everything just as The Invisible Sky Daddy intended.

                2. China is about to adopt a new article to their patent laws that will expressly allow software and business methods as patent eligible

                  That’s so awesome for patent attorneys who lack scientific skills! Thanks for sharing this wonderful news. Patent attorneys who lack scientific skills should rejoice.

                3. MM: “Once we stop the brown people from coming in and get the white people breeding again, we’ll totally rule the world in everything just as The Invisible Sky Daddy intended.”

                  It is bigoted, ra … cist comments like this that make me cringe. Unfortunately, we have an entire party stoking the fires of racial hatred, and it gets almost intolerable every four years when we have to listen to their ra …cist/bigoted spew.

                4. Grand adventures in missing the point, Moon Man. No one cares how many patents get pumped out of a flawed patent office if the money that buys those patents isn’t interested in buying them anymore. The PTO is only 50% of the problem in this equation. No one wants to buy an asset having indeterminate value or protection.

                5. “The Invisible Sky Daddy”

                  MM likes to mock the invisible sky daddy that is the basis for the civilization producing everything he enjoys in life including his muh progress.

                  Even if he ain’t real MM, the effects of him are.

                6. invisible sky daddy that is the basis for the civilization

                  Nobody could have predicted that creationist bal 0ney would worm its way into the president Trumpist’s script.

                7. “Nobody could have predicted that creationist bal 0ney would worm its way into the president Trumpist’s script.”

                  MM thinks that something other than Christianity relative solidarity and society managed to hold off the muslim invading hordes of the 1100-1400’s, and the mongolian invasions of 1200’s and held society together while it happened. Lol.

                  MM doesn’t know squat bout history.

                  Hint MM, before your modern leftist religion was born with the state as it’s invisible sky daddy there was another invisible sky daddy that did a lot of the work that your state is trying and failing to do today.

              2. No surprise that MM is an atheist and a political liberal, it explains quite a bit.

                1. Nothing wrong with that – per se – but what the H has that to do with patent law?

                  Prof., that byline…

                2. You are right. Nothing wrong with it per se but a proselytizing and arrogant attitude are very common traits in that demographic, as well as an over-inflated sense of being right about everything with a side helping of having to let everyone know about it. His behavior makes so much more sense to me now.

                3. Thanks BlutoBlutarsky,

                  I don’t worry about demographics – his writing alone screams volumes about how maladjusted he is for this line of work.

      2. Wow. Try to learn something, people.

        Maybe try teaching – instead of just braying your feelings…

      3. MM, I agree with you here. It is a wonder that somewhat intelligent people continue to spout this kind of nonsense. A psychologist might look into the lack of willingness to see reality for what its is in most of the patent bar who have grown up under the tutelage of Judge Rich.

        1. Yes Ned, once again your Windmill Chase of trying to blame Judge Rich for what Congress did in the Act of 1952.

          You and Malcolm deserve each other.

    2. The so-called “mental steps doctrine” is nothing more than subject matter eligibility using different words.

      1. I agree with that, but I understand “mental steps.” I don’t understand what “an inventive concept sufficient to transform and abstract idea into an eligible claim” is. Is an inventive concept an eligible, non-abstract element that is non-obvious, or can it be another clever abstract idea, in which case the claim itself remains an abstract idea.
        For example, would encryption be ineligible, unless is has some addition really clever inventive concept, or would it be ineligible unless it depends on some inventive device to implement it? From the mental steps doctrine, the answer is clear. From Alice, the answer cannot be discerned.

        1. Butting in here, as this is one of the examples that has been going round my mind. A simpler example to consider might be compression, or error-correcting codes. LZW compression implements a mathematical algorithm on a computer. This has practical uses, when you want to back up data, squeeze files onto a memory stick etc., and the effectiveness depends only on the (mathematical) entropy of the data file, not on any “meaning” expressed in the data file. So this practical effect could, if Alice is interpreted narrowly, be the “something more”. Thus MPEG LA might not be packing up their bags any time soon.

        2. “an inventive concept sufficient to transform and abstract idea into an eligible claim”may be several things:

          – a hedge so that some future “process” or technology could be accommodated by the language of Section 101 and the three (current) exceptions

          – a reiteration that if there is simply no invention to be found within the claims, the subject matter can’t be eligible for lack of anything “new”, as required by Section 101

          – a reflection of the fact that you can’t analyze obviousness or anticipation or complete description for an otherwise statutory putative invention where the novelty cannot be located.

          I do agree that the Alice regime is flawed and far too forum/judge specific and unbounded. Construction of eligibility should be a formal step, like Markman and unfold with similar predictability of procedure, burden of proof, etc.

          I’m also willing to politically see a compromise where novel algorithms are at the heart of claims. Logic and information processing per se (rather than machines that process data) should have no place in a sane patent system, but if the political values of enough people disagree, at the very least, information consumed by human beings should be absolutely off-limits to patenting.

          1. Martin, it is not unbounded if you think of it in terms of the MOT.

            1. Ned,

              You mean the clue that was rejected as a legal requirement by ALL nine Justices in the Bilski case?

              That’s right Ned – ALL nine.

      2. Your feelings are noted (maybe you want to share why the “mental steps doctrine” was buried and why there are attempts at creating a new Zombie version…)

    3. There are non-obvious mental steps which are nontheless ineligible.

      1. Are there non-obvious mental steps are nontheless eligible? Any examples of a case that holds that all your recited steps wouldn’t be eligible except for this one clever thought at the end? Some Alice cases say, explicitly, that all the inventor has done is to implement an old mental process on a computer, when they should say all the inventor has done is set forth a mental process, so we don’t care if its new or old. Those cases suggest that implementing a new mental process on a computer might be eligible.

        1. There is no coherent reading of Mayo and Alice together that permits a “clever” mental step to be eligible for patenting. This is a great result, by the way.

          Those cases suggest that implementing a new mental process on a computer might be eligible.

          Alice “suggests” this only because the issue wasn’t put before the Supremes. It wasn’t put before the Supremes because the defendants didn’t want to put it before the Supremes. And the Supremes chose not to go beyond the facts that were before them.

          Get a good attorney and take a claim that protects instructions for performing otherwise ineligible logic using an old machine designed solely for that purpose (i.e., carrying out logic instructions on data) to the Supreme Court and we can end the farce quickly.

          1. The Supreme Court in Alice reached things explicitly (as in stipulated by both sides to NOT be an issue) that were not “put before them.”

            Your “explanation” does not work.

            1. The Supreme Court in Alice reached things explicitly (as in stipulated by both sides to NOT be an issue)

              LOL

              Got that, folks?

              Wow.

              1. You seem to struggle with something that is a known fact.

                Why is that?

          2. In the meantime, try using the appropriate patent doctrine of inherency – otherwise all that you are doing is using the Big Box of protons, neutrons and electrons “logic.”

    4. K. David C: “It means that mental steps are not patentable unless they are non-obvious, in which case mental steps are patentable, in which case you could have skipped the Alice step 1. ”

      Disagree.

      1. Ned: I do not disagree that the stated the rule is wrong, but I don’t agree that Alice does not state the disagreeable rule, or that cases following Alice do not decline to follow the wrong rule. :)

        1. K. David, if one views “abstract” as the converse of the MOT, then everything becomes clear.

          As to “inventive application,” we know that saying no more that “do it on a computer” is not inventive because the computer itself is not “new.” Again, think here about the MOT.

          In the Nielson case discussed in Morse, the provision of the heated box to provide heated air to the furnace was deemed inventive. In Funk Bros., the package of bacteria was not.

          What I draw from this is that the “application” must at least be “new.” The heated box/furnace combo was new. The package of bacteria was not. Packages of bacteria apparently were known.

          1. OK, Ned, I am still exploring Alice. If Alice “abstract” meant the converse of MOT, why even mention a two part test? Was the two part test necessary to decide Alice (I don’t think so) and would the MOT test have provided the same result? It certainly would have. I wonder if their is a gap between Alice and the MOT test.

          2. Converse of the MoT…

            Gee Ned, first you have to deal with ALL nine of the Justices and one of the holdings of Bilski.

            Let me know when you have a legally cogent theory/argument/heck-even-belief that does that.

  13. What? You mean you need to limit the claim by inclusion of the algorithm rather than just a functional result of running the algorithm? If only someone had been telling you guys that was the law for over three years (as I was saying under 112a prior to Alice coming down).

    I can’t believe the court is just making stuff like this up to blindside people! Don’t worry though prosecutors, the office will still let your junk claims through.

    1. Are you saying that You (the Royal You, of which, as an examiner, you are a part of) are NOT doing your job, or are you saying that your job – as defined by the most recent guidance of December 2016 – is just not up to snuff in and of itself?

      1. The Dec 2016 “guidance” is a j0ke at the expense of naive applicants and k00l-aid drinking patent attorneys.

        McWrong is going to be kicked to the curb, where it belongs.

        1. Your feelings are noted.

          (Maybe try something of a substantive nature in your comments…)

      2. The latter. For example, the guidance would never allow the office to get the right answer on the recent intellectual ventures case (see post on this website last week) because those claims explicitly included the editing of xml. The office would call an alice rejection to claims which allegedly made it easier to edit xml (something that only occurs in computers) clear error. When the utility is technical in nature they don’t bother to actually perform the analysis like they should, they just give it a pass, as if 101 is a technical utility test.

        In this case, the “financial” limitation would actually make it more likely to be alice rejected. If you just called it a method for validating data it would likely surpass alice. That’s because right now the claims are directed toward financial transactions which only use a computer for processing, while if you removed the word financial you’d get some terrible QAS in the office telling you it was a computer security improvement.

        Look at how bad people on this board are at getting it. They are lawyers and have had years. Now imagine non-lawyers who get a legal decision filtered through three people before it gets to them trying to get the right answer. The test ends up becoming some shorthand entirely different from what it actually is (“Does this have technical utility?”).

        So yeah, it sucks. But this one is probably filed under “you get what you pay for.” If you want lawyers running the show, pay lawyers. If you’re going to pay engineers, you’re not gonna have a great legal analysis.

      3. The latter. For example, the guidance would never allow the office to get the right answer on the recent intellectual ventures case (see post on this website last week) because those claims explicitly included the editing of xml. The office would call an alice rejection to claims which allegedly made it easier to edit xml (something that only occurs in computers) clear error. When the utility is technical in nature they don’t bother to actually perform the analysis like they should, they just give it a pass, as if 101 is a technical utility test.

        In this case, the “financial” limitation would actually make it more likely to be alice rejected. If you just called it a method for validating data it would likely surpass alice. That’s because right now the claims are directed toward financial transactions which only use a computer for processing, while if you removed the word financial you’d get some terrible QAS in the office telling you it was a computer security improvement.

        Look at how bad people on this board are at getting it. They are lawyers and have had years. Now imagine non-lawyers who get a legal decision filtered through three people before it gets to them trying to get the right answer. The test ends up becoming some shorthand entirely different from what it actually is (“Does this have technical utility?”).

        So yeah, its bad. But this one is probably filed under “you get what you pay for.” If you want lawyers running the show, pay lawyers. If you’re going to pay engineers, you’re not gonna have a great legal analysis.

        1. Actually re-reading your question the answer is “both.” The guidance is bad, but the 101 QASes are generally terrible, and those people are examiners, so in a sense it is the royal “us” as well. You’ve got a bunch of people totally in the dark being led to a bunch of primarys who aren’t any smarter than them (legally speaking) and neither of them know what they’re doing.

          1. You’ve got a bunch of people totally in the dark being led to a bunch of primarys who aren’t any smarter than them (legally speaking) and neither of them know what they’re doing.

            They’re trying to please the squeakiest “customers” is what they’re doing.

            1. They’re trying to please all of the “customers”, not just the squeaky ones, rather than apply the law.

        2. the guidance would never allow the office to get the right answer on the recent intellectual ventures case (see post on this website last week) because those claims explicitly included the editing of xml

          xml is just a language for instructing an instructable computer about what logical steps the instructable computer should carry out on logic.

          DDR Holdings is just as silly as McWrong and will also end up in the dustbin of history in short order.

          1. carry out on logic.

            Typo: should be “carry out on data.”

        3. If you just called it a method for validating data it would likely surpass alice.

          I highly highly doubt that. It would definitely be anticipated or obvious as all get-out, though, and nobody would care.

          1. MM: Nothing you say has anything to do with a system of jurisprudence.

            You merely want to judge an invention without applying the law. Gee, that is what our entire system of law and Constitution said was wrong. Gee, that is what it took people thousands of years to figure out was not a good idea.

            Gee, you are kind of medieval.

        4. But this one is probably filed under “you get what you pay for.”

          Um, we pay for a full and rigorous examination in order to earn that presumption of validity at the patent grant stage.

          Maybe you are confusing yourself with the Office internal metrics (again).

          1. Um, we pay for a full and rigorous examination in order to earn that presumption of validity at the patent grant stage.

            Maybe you should ask the office to form a “lawyers-only” commission you can pay extra for, or conversely ask them to fire all the non-lawyers and only do lawyers.

            The offices budget, fee structure, hiring policies and examination corp distribution are all above my head. Your complaint isn’t with me.

            1. I don’t care about YOUR problems, that is I care to the extent that you try to make the Office internal problems into my and my client’s problems.

              Further, I have many times now provided helpful suggestions for the Office to handle YOUR problems.

              As I indicated, you appear to be crossing a line (again) with your confusion of what IS paid for and the internal goings on with how to deliver that which is paid for.

              Please maintain focus on the difference.

              1. I have many times now provided helpful suggestions for the Office

                You also pulled the lever for a Presidential candidate who wasn’t even in the race as a “protest.”

                But you’re a very serious person! Totally all about helping others.

    2. Does the office even have good guidance for *scope of enablement* and written description wrt original claims? Lizardtech, etc.

      I remember some training a while back, but ofc it focused on the most egregious examples.

      1. No, in fact I recently talked to a QAS which not only didn’t do scope of enablement/possession right, they didn’t even comply with what the MPEP says.

        WD at the office is “were these or similar words in the spec as filed” – i.e. it’s solely new matter. Enablement, for my field, is a non question. Everything is enabled.

        1. Yay.

          Also, isn’t enablement (without regard to scope) incredibly easy due to a Fed Circuit decision? The name of the car is failing me.

    3. Random, it has to be more than just the alogrithm. Look at Bilski.

      What we see is that no claim is eligible unless it passes the MOT. Failing to pass the MOT is another way of saying the claim is abstract.

      1. …except for what the Court actually HELD in Bilski, Ned you would almost be right.

        As it is, well, no, you are just not correct.

  14. “a-textual reading”

    Going back to Bilski, Kennedy said the exceptions are not in the statute, but are “consistent” with “new and useful” in 101 and 150 years of stare decisis.

    I wonder whether there is another doctrine that says if applying extra-statutory law because of stare decisis, Judges should apply that law”judiciously”

    1. H2H, the exceptions came out of England as did “101.” The fact that they are consistent should not be surprising.

      1. 101 actually came out of Congress in 1952, Ned.

        Carved out of the prior “single paragraph” include such things as 102 and 103.

        Also, section 100 came out of the 1952 Act.

        And yet, you continue to pretend otherwise.

        1. Anon, read Graham. What is now 101 is unchanged since 1793. The prior art portion was carved out and substantially changed.

          1. You mean the self-serving DICTA in Graham, Ned?

            You have drunk enough Kool-Aid for the both of us, so I will pass on chasing Windmills with you.

          2. Plus, you should realize that carving out means that the meaning of what is left MUST have changed.

            Congress even helped you with 35 USC 100, as well as the notes to the new 103 section – both of which have previously been presented to you, and both of which you continue to ig nore.

  15. That pendulum is really swinging back! Wow.

    Look at all that swinging. Wheee!

  16. Logical rules encompass many types of methods. Are methods now ineligible?

    1. Are methods now ineligible

      LOL

      Please advise your clients that they are. You’re a very serious person! A real deep thinker.

      After you take their money and run, they will find a competent attorney who doesn’t have his head stuck up his behind.

    2. “A method that achieves this result” is ineligible. That method, like every method you’ve ever seen, becomes eligible when you disclose, and limit to, the steps which cause the result to happen. Saying you have “an algorithm” or “logical rules” and only saying what the result of using them is does not “describe” a “concrete” invention, it only becomes concrete once you limit the result by the steps you’ve posited to create the result.

      e.g. “A method for firing a projectile” is abstract. Firing a projectile by notching wood onto a taut string and utilizing string tension is a concrete bow, as distinguished from loading a container with combustible substances and directing a controlled explosion in a tube, which is a gun. Results are always abstract. Means are concrete.

      1. Saying you have “an algorithm” or “logical rules” and only saying what the result of using them is does not “describe” a “concrete” invention

        “wherein said logic engine uses a pre-determined set of logical rules to determine [insert result here]”

        How’s that? Box of protons! Set theory!

        1. ?

          Maybe you should try to read what others actually post….

      2. I don’t disagree, but to pretend as if methods that include logical rules are ineligible (a al MM) is flatly false.

        1. A method which hinges eligibility on the phrase “logical rules” (or similarly, “algorithm”) is categorically ineligible. That is the same thing as saying “performed in software” which is field of use. The claim has to limit the rules in a particular way. If you read McRO you know that that was a big point in the decision – it wasn’t a claim to all rules, but rules that functioned in a particular way.

          Particular logical rules are eligible, the generic class of “using ‘logical rules'” is not.

          1. BTW by this I don’t mean to say I disagree with you, but I don’t necessarily disagree with MM at post 6 either. You’re saying computer logic is not categorically ineligible. That is true. He says that new logic rules are ineligible, that is true so long as they are drawn broadly enough to be “all rules which achieve a result, even if that result is new.” If he suggests that *particular* new logic is ineligible, then that is incorrect.

            1. There is a conflation between 112 and 101 going on…

              (they really are distinct sections of patent law)

    3. Bluto, the transformation of an idea from one state to another is not a patentable process.

  17. the logic rules applied by the engine

    These “engines” that apply “logic rules” are old.

    Are new “logic rules” eligible for patenting? 101 doesn’t say that “rules” are eligible subject matter, regardless of whether those “rules” are “logic rules” or any other kind of rules. There’s nothing “atextual” about this and it’s a bit odd to suggest otherwise. As everyone knows, the statute makes no sense as a “filter” of subject matter if the statute can be avoided by pure scrivening (i.e., dropping in the word “process” or “apparatus” somewhere within the text of the claim).

    Anyways, it’s good to see the Federal Circuit referring to logic as logic, rather than pretending it’s some kind of fake “structure” (e.g., a “data structure”). That can only help speed things along to the (ahem) logical conclusion …

    1. Perhaps you would like to rephrase your feelings using the patent doctrine of inherency….

      After all, your “logic” here is nothing more than “protons, neutrons and electrons are old.”

      Hint: configuration.

      1. your “logic” here is nothing more than “protons, neutrons and electrons are old.”

        No, it’s not. And everyone with half a brain can see that.

        But as far as you can tell, you’re some kind of super genius. Tremendously smart! Also very humorous and clever. Everybody loves you!

        Please keep the laughs coming.

        1. Actually, yes, your logic is exactly that.

          Perhaps if you dabbled in something more than your feelings and provided something of substantive nature to your desired End results, you just might have more than the Big Box.

          1. Actually, yes

            Nope. Nice try, though.

            It should go without saying that repeating your silliness doesn’t make you any less silly. But because you really are that dense, we’ll say it anyway.

            1. This is like you telling me to stop digging while you are still furtively clutching the shovel.

  18. If you want a laugh listen to the oral arguments. The attorney for the appellant was practically laughing the whole time. At one point the judges asked him if he seriously thought that merely gathering someone elses data and then analyzing the data using someone elses algorithm is somehow inventive.

    1. Appellant was laughing? Appellant?

    2. B-b-but this is certified data!

    3. Generating a report. Lol

  19. Nonprecedential by the “luck of the draw” of:

    LOURIE, REYNA, and CHEN

    1. Yeah but its NON-P because that was already the lawl.

      1. Have you read the case 6 – there are a couple of points that seem to be “new law” (or at least a new twist – see for example the comment 9 by H2H).

  20. Dear Fed. Cir.:

    What you’ve just said is one of the most insanely idiotic things I have ever heard. At no point in your rambling, incoherent response were you even close to anything that could be considered a rational thought. Everyone in this room is now dumber for having listened to it. I award you no points, and may God have mercy on your soul.

  21. I wonder if they defined “technical”….

    😉

    1. …or did I blink when Congress changed patent law and added a “technical arts” test…?

      😉

  22. > “Data are still data.”

    So, Renya’s job is a) input patent law cases and statutes; b) input case briefs; c) apply algorithm to apply the statutes consistent with the case law; and, d) output opinion. So, according to this decision this must also be abstract.

    So, we have learned that a machine that would replace Renya would be abstract and ineligible under 101.

    I just don’t understand why these people bother to write using English. Why not just product random letters as their work product.

    1. Not only just “abstract” (undefined), but applying the “lesson” here, there is NO difference between the inputs and the outputs.

    2. So, Renya’s job is a) input patent law cases and statutes; b) input case briefs; c) apply algorithm to apply the statutes consistent with the case law; and, d) output opinion. So, according to this decision this must also be abstract.

      A-D are abstract. But Reyna doesn’t come in and perform those generic acts, Reyna comes in and applies a different act based on the case before the court every time. The scientific method is abstract, but scientists apply it concretely every day. “Investigation” is abstract, but police apply the tools of investigation to concretely solve cases.

      Are you seriously not getting this? There’s a difference between a generic “apply algorithm, output opinion” and “apply the logic in this analysis section to output the opinion Clarilogic v. FormFree Holdings.” Clarilogic is concrete. “Outputting an opinion” is the abstract act of writing.

      Every judge analyzes. If your steps are so broad they cover what every judge does, you’ve captured the abstractness of american jurisprudence. When your steps are distinct enough that they distinguish between, e.g. what Scalia would do versus what Roberts would do, now you have a concrete thing. You understand the difference right? No one person is capable of being all judges (and if so we mind as well shut down the judiciary and hand it over to him) so they can’t possibly have invented the field. Their scope has to be limited to what they in particular do.

      1. There’s a difference between a generic “apply algorithm, output opinion” and “apply the logic in this analysis section to output the opinion Clarilogic v. FormFree Holdings.”

        There is a difference but it’s not a difference that would make the latter “method” eligible for patenting.

        1. I disagree. New methods of analysis are eligible.

          Ex: The prior art is that if someone was accused of a crime we would flip a coin and if heads, declare them guilty.

          Someone submits the code of criminal procedure as an alternate logic algorithm and argues that people are more likely to accept the results of an outcome when they have a chance to face their accuser, leading to overall improvement of the process.

          The new “logic” algorithm is eligible and patentable, even though it is doing nothing more that taking different inputs to achieve the same data output (guilty/not guilty?).

          1. …in other words, the Means to any (desired) Ends is important…

            😉

          2. Someone submits the code of criminal procedure as an alternate logic algorithm and argues that people are more likely to accept the results of an outcome when they have a chance to face their accuser, leading to overall improvement of the process.

            The new “logic” algorithm is eligible and patentable, even though it is doing nothing more that taking different inputs to achieve the same data output (guilty/not guilty?).

            Let’s put it this way: as you’ve admitted, the PTO is incompetent to screen this kind of junk out. But go ahead and assert it against me and I give you my 100% assurance that you’ll be holding a worthless piece of paper by the time we’ve finished fighting.

            1. Never mind the broken scoreboard, Malcolm is perfectly fine with it.

              Sir Thomas More comes to mind…

      2. RandomGuy: your response is not patent law. You want to use Alice like the Fed. Cir. does. You look at the claim and rather than using 102/103/112, you state that you think it is too easy, so it is abstract.

        That isn’t a judicial system, but a witch trial.

        1. RandomGuy: your response is not patent law. You want to use Alice like the Fed. Cir. does.

          Man I hate it when people accuse me of using the law the way courts do. I’d say I use it more the way the Supreme Court does, as I rarely agree with the Federal Circuit, but I suspect you’d have the same problem there.

          You look at the claim and rather than using 102/103/112, you state that you think it is too easy, so it is abstract.

          You’re the same guy who said Written Description is bs too, right? So really you’re down to just 102/103.

          That isn’t a judicial system, but a witch trial.

          Witches put up more of a fight.

          1. >>Man I hate it when people accuse me of using the law the way courts do. I’d

            Yeah, I know. It is sad when I compare irrational witch arguments to what the Fed. Cir. does. Google has purchased the Fed. Cir.

            I never said what you said I said about 112. You made that up.

            1. Whenever you refer to 112a, you truncate it down to ‘enablement’. (I.e. post 18.1.)

              1. Ben,

                One example is not “whenever.”

                And even if it were, that still does not make the comment by Night Writer align with the accusation by Random.

                You sure do tend to pick losing comments to try to “jump in” on.

                Maybe you should try something else.

    3. Where do you find all the straw to keep building Night?

      The machine that replaces Renya would be eligible today, yesterday, and tomorrow.

      The algorithms that the machine executes to create the result of replacing Renya were eligible yesterday, not today, and who knows tomorrow?

      Why do you bother to continuously conflate information processing with information processing machines?

      1. Mr. Snyder, how soon you forget that claims in Alice included machines.

        That you too want to throw accusations at Night Writer (and get those accusations wrong) merely points out that you are anti-patent at heart.

  23. Dennis, one can see shades of Rubber-Tip Pencil or, for that matter, Hotel Security and O’Reilly v. Morse in the current jurisprudence of the Federal Circuit and the lower courts in fleshing out the bare-bones of Alice.

    1. One can see that there are no rules and that this is a witch hunt where the Fed. Cir. is excluding inventions they don’t think should be eligible ’cause, ’cause.

    2. It’s two lines of cases that growing. Honestly, we have a set of cases that said algorithms must be defined for there to be 112/6 support – it’s not a big step to say that algorithms need to be defined for enablement under 112/1. I don’t understand why the court has to use 101 as their vehicle, but the result is probably right.

      1. The Means to the Desired Ends very much matters for the legal world.

      2. At this point in time, 101 is clearer than 112 when it comes to do it on a computer junk. That incoherency in 112 is the CAFC’s fault.

        1. If by “clearer” you mean “a muddled mess totally depending on the luck of the draw,” then (and only then) would you be correct.

          1. …the en banc (pre-Supreme Court) CAFC Alice decision remains an indicator of that “certainty.”

          2. totally depending on the luck of the draw

            Same thing applies to 112 and 103, except even more so.

            But the s0 ftie w0 ftie crowd doesn’t complain about those as much because the judicial activism laid on top of those statutes is, overall, kinder to the w0rst claims ever granted by any patent system, ever.

            Of course, not complaining “as much” still leaves room for a ton of complaining but the s0 ftie w0 ftie crowd never ever stops wh ining. It’s all they know how to do really.

            1. Once again, your falsehoods were explained away in the easy to understand Set Theory explication that I invited you to join in on (in an inte11ectually honest manner).

              You
              Ran
              Away

              “Go figure Folks”

              1. your falsehoods were explained away

                More like “waved away in your own mind thanks to the magical unicorn who lives there.”

                But, hey, nobody really cares what you think about anything, “anon.”

                Tell us about Life Tech and your “statutory construction” theories again. That was hilarious.

                1. Nonsense Malcolm – the explication was direct and simple – you refused to even engage.

                  It is beyond clear as to why you made that choice.

        2. 101 is also a MILLION DOLLARS less costly, which “means” something to some people, as their “ends” are not to be bankrupted at the merest assertion, or flock of them.

          Only a pedantic ideologue would elevate immaterial process over material result in the pursuit of justice.

          1. “Cost” is not a proper motive for subverting the law, Mr. Snyder.

            You still want the Ends and you merely want improper Means to those Ends.

            You still insist on clenching your eyes tight to the terrain of law.

            1. And your name calling is simply wrong.

              Try to get things right, please.

      3. Honestly, we have a set of cases that said algorithms must be defined for there to be 112/6 support – it’s not a big step to say that algorithms need to be defined for enablement under 112/1. I don’t understand why the court has to use 101 as their vehicle, but the result is probably right.

        You’re somewhat behind the times, as the court has already said that algorithms need to be defined for 112/1 written description. 101 is a similar vehicle because prior to 1952, it was 101 and 112b to cover enabled but unposited scopes. After 1952 the federal circuit screwed up both 101 and 112b and decided to invite wd to help fix itself, but wd has never come up before the supremes, so now some 101 jurisprudence (species/genus questions) is similar to some 112/1 jurisprudence.

        1. The “is a similar vehicle” falls to the mess of conflation.

          THAT is the underlying issue with the re-writing of patent law by the Supreme Court.

          1. It’s not conflation because they are different goals which happen to overlap a lot of the time (in the same way enablement and written description have different goals which happen to overlap often). The function of 101 is to prevent someone from occupying an entire field by utilizing the basic building blocks. If you could occupy the entire field of judging, as Night tries to do in Post 2, the system as a whole suffers because it chills others from disclosing their inventions.

            There happens to be a lot of overlap because in fact nobody ever invents an entire field. Morse is kind of the poster boy for this. Morse disclosed his principle and said “Hey I’ve done it all” but he in fact did not have more sophisticated machines which used his principle. He invented the telegraph, not the instant messenger, even though both use the same principle. Morse’s claim could have been disposed of under 112 because its clear he didn’t posit the instant messenger. But just because both rejections apply doesn’t mean they’re the same rejection.

            It is possible that one document could conceivably be both the first word and the last word on the subject – that it is new and yet after reading it there is clearly nothing more to ever contribute – and at that point you’d have no 112 rejection and an interesting eligibility case, but nobody has ever done it before and I don’t think it’ll happen any time soon.

            1. You appear to want to use the excuse of “overlap” as saying that conflation is “OK.”

              It is not.

            2. The function of 101 is to prevent someone from occupying an entire field by utilizing the basic building blocks.

              Actually the purpose is to keep the basic building blocks unencumbered by patents, period. And this is an important distinction.

              1. Basic building blocks – like protons, neutrons and electrons…

        2. Yes, even the most rabid bloggers on this post would logically prefer meatless-specification [mere result-wish-list or Jules Verne] patents disposed of on 112 grounds rather than the historic Sup. Ct case law list of “unpatentable subject matter” aka non-textual “101” issues.
          But the important practical difference the courts are well aware of is that the Supremes have made the 101-expanded “unpatentable subject matter” list a “threshold” issue that should get prompt S.J. consideration early-on in a lawsuit. I.e., a potential cheap and fast case disposal. Whereas 112 and other issues can, and all too often do, simply get put off until trial – several million dollars in costs later. Especially by the one single overloaded D.C. judge G that now has 25% of all patent suits.

          1. Yes, even the most rabid bloggers on this post would logically prefer meatless-specification [mere result-wish-list or Jules Verne] patents disposed of on 112 grounds rather than the historic Sup. Ct case law list of “unpatentable subject matter” aka non-textual “101” issues.

            But WD is often not immediately apparent. For example, it’s easy to show that Morse’s telegraph was not the last word in the function of “printing at a distance” now that we have the benefit of hindsight and see that other people achieved the result using entirely different means. But how do you determine it *at the time of examination*?

            The only thing you can do under 112 is bank on the same logic that 101 uses. That’s why WD and Alice act similarly sometimes, they both come from the same logic in Morse – sure you’ve disclosed basic principle X, but that doesn’t mean you’ve thought of everything you can do with the principle.

            The reason 112 seems stable is only because the damage has already been done – someone has invented around the actual invention in a manner that still technically falls under an overbroad scope, gotten threatened, refused to back down, and now there is a case. But the point is to prevent the threatening to begin with – the claim should never exist to chill the inventing around. If you started applying 112 the way 101 is applied (i.e. at the outset or at the time of examination), it would seem unstable too because you’d be rejecting based upon the hypothetical of what could be.

            Imagine if every time a functional limitation was used the office responded with “point to where in your specification you prove that your disclosed means foreclose other methods of achieving the function.” e.g. Person invents the bow, but claims the function of firing a projectile. Imagine if the office said “okay, disprove all the other means of firing a projectile.” That would be a herculean task that you’d clearly balk at. Instead the office just allows the overbroad claim and waits for the patentee to be bad enough to pick a fight with someone who invents the gun. Then 112a kicks in and the benefit of hindsight makes clear that obviously this bow guy didnt invent every manner of firing a projectile because look at how different the gun is.

            1. >Imagine if every time a functional limitation was used

              If only there were some paragraph of 35 USC §112 that informed people what to do when things were functionally claimed…

              Of course, 35 USC §112(f) has the problem that people would argue:
              “Everything is a means for performing a function! Like a conductor!”
              “Well, a conductor is something that carries a current when a voltage is applied without significant resistive losses…”
              “But wait, now we have even more functional language! It’s turtles all the way down, I tell you!”

              So instead of a “know-it-when-I-see-it”-type 112(f) analysis, we end up with our botched 112(f) “three-prong” analysis, where applicants can simply state, “I don’t want to limit myself and claim like Morse did! No 112(f) for me, thanks, I’m good.”
              Or, “Oh, I’ll just change ‘means for analyzing’ to ‘module for analyzing,’ I mean… ‘an analyzer!’”

              And 112(b) application isn’t good, so when 112(f) isn’t invoked and you still have functional claiming, said claiming isn’t indefinite. And 112(a) is a cakewalk, like you’ve noted.

              Hence, ‘abstract idea’.

              Awaiting moderation.

              1. Of course you’re right about this. Whenever there is software that is defined by functional result, we ought to summarily apply 112f, likely find no algorithm and kick it under 112b. But 112f isn’t the office’s choice to invoke.

                There simply is no way of getting around the fact that either you need to apply the judicial exceptions and 112b’s requirement to particularly point out and claim or you need to apply written description in order to come to proper conclusions about scope.

                It’s not just a choice of how you want to prosecute it either. Under 101/112b the burden is on the applicant to show a proper scope, while under 112a its on the office to prove overbreadth.

                The solution is simple, of course. You fully argue both 101/112b and 112a and you take it all the way up and ask the Supremes to explain which is the proper standard – the one they made back in Morse or the one the federal circuit made around Ariad?ish.

                I still think it is much simpler to just say “When you have broad functional language in there and you argue your intent is to claim the generic act, you’re being abstract and violating 101, and when you argue specific examples you’re not particularly claiming with the broad language and violating 112b.” Either way the solution is always the same – you can’t claim your novelty by function unless you can show that you’ve invented every way of achieving something, but science is by its nature inductive rather than deductive – you pretty much can never have that proof.

                1. but “fastener” is ok, even if you haven’t disclosed embodiments with every conceivable fastener…. and screw is ok even if you haven’t disclosed embodiments with every conceivable screw …. and nail is ok even though you haven’t disclosed embodiments with every conceivable nail….

                  give me a break….

                2. but “fastener” is ok, even if you haven’t disclosed embodiments with every conceivable fastener…. and screw is ok even if you haven’t disclosed embodiments with every conceivable screw …. and nail is ok even though you haven’t disclosed embodiments with every conceivable nail….

                  Again, not if that is the novelty. You cannot invent the first thing that sticks something to something else, state you invented the field of fastening, and claim all fasteners. As I have repeatedly said, there is a difference between between being particular about the novelty versus what isn’t. The line from Wabash is “The difficulty of making adequate description may have some bearing on the sufficiency of the description attempted, but it cannot justify a claim describing *nothing new except perhaps in functional terms.*”

                  When you invent a new engine, that engine has to be described with particularity. When the invention is a new tailpipe and the engine is being referenced solely for the fact that its outputs are relevant to your invention, the engine need not be particular.

                  In this case the computer is verifying something according to rules. The rules are central to the invention, as changing the rules would change the entire conclusion. The rules have to be particular. The processor, which is a functionally-defined device, is not the focus of this invention and need not be described with particularity. When someone else invents a new processor, unsurprisingly, they will have to be particular about the structures in their processor.

                3. Hand to God, the first one I checked:

                  US3296997A

                  1. IN AN EXHAUST SYSTEM FOR AN INTERNAL COMBUSTION ENGINE MOUNTED WITHIN THE HULL OF A MARINE CRAFT SO AS TO BE DISPOSED BELOW THE WATER LINE WHEN THE CRAFT IS AFLOAT, AN EXHAUST LINE ADAPTED TO BE CONNECTED TO THE ENGINE FOR CARRYING OFF COMBUSTION GASES , A LIQUID LINE FOR CONNECTION TO THE ENGINE FOR CARRYING OFF ENGINE COOLANT LIQUID , A MUFFLER DRUM HAVING A BOTTOM AND ADAPTED TO BE DISPOSED BESIDE THE ENGINE AND BELOW THE WATER LINE , A FLUID DISCHARGE LINE HAVING A SINGULAR INTERNAL PASSAGEWAY AND HAVING ONE END CONNECTED TO SAID EXHAUST LINE AND SAID LIQUID LINE TO RECEIVE AND INTERMIX IN SAID PASSAGEWAY FLUIDS THEREFROM AND THEN EXTENDING AWAY AND DOWNWARDLY FLUIDS THEREFROM AND THEN EXTENDING AWAY AND CONNECTED TO THE DRUM TO BE IN OPEN COMMUNICATION THEREWITH TO DISCHARGE SAID INTERMIXED FLUIDS INTO THE DRUM SO THAT THE LIQUIDS FALL UPON THE BOTTOM THEREOF, AN UPRIGHT IMPERFORATE WALLED STACK ON THE DRUM EXTENDING DOWNWARDLY INTO THE DRUM AND HAVING ITS LOWER OPEN END DISPOSED WITHIN THE DRUM BELOW SAID OTHER END OF THE FLUID DISCHARGE LINE SPACED RELATION TO THE DRUM BOTTOM AND ITS UPPER END DISPOSED ABOVE THE WATER LINE, CONDUIT MEANS CONNECTED TO THE UPPER END OF THE STACK AND EXTENDING THROUGH THE HULL ABOVE THE WATER LINE, AND THE SPACE WITHIN THE DRUM BETWEEN CONNECTION OF THE FLUID DISCHARGE LINE TO THE DRUM AND THE LOWER OPEN END OF THE STACK BEING UNENCUMBERED WHEREBY AS THE LIQUID ON THE BOTTOM RISES TOWARD SAID LOWER OPEN END OF THE STACK A PRESSURE DIFFERENTIAL WILL BE SET UP BETWEEN THE DRUM INTERIOR AND THE STACK INTERIOR SO THAT THE KINETIC ENERGY OF THE COMBUSTION GASES WILL CARRY PORTIONS OF THE LIQUID UPWARDLY THROUGH THE STACK AND OUT THE CONDUIT MEANS.

                  link to patents.google.com

                4. …Random,

                  You overlook a little something that Prof. Crouch coined as the Vast Middle Ground.

                  This of course is due to the Act of 1952 (something you, like Ned, seem intent on ig noring).

          2. Paul,

            That’s pure “Ends justify the Means” thinking.

            As an attorney, you should be revolted by such.

      4. My thoughts exactly, – why not 112/6 and 112/1 – as the rejection. Limit the 101 ipse dixi test to if and only when you pass other the objective reasons. No question this Alica test has collapsed into the ‘gist’ or ‘heart of the invention test’ – which as we all know, was overturned with the ’52 Act. Create strawman claim – then ignite.

        1. No question this Alica test has collapsed into the ‘gist’ or ‘heart of the invention test’ – which as we all know, was overturned with the ’52 Act.

          And yet, certain sAme ones here insist on trying to re-write history as if the Act of 1952 just did not happen.

      5. H2H, but when there is nothing but algorithms employing mental steps in a claim, no matter how much detail, no matter how non obvious the detail is, the claim still will fail under 101.

        Bilski is an example. Also, see today’s 101 case at post 14 above.

        To pass the threshold, the “software” must involve something technical — some actual tie to something the computer or computers system is doing physically — like communicating signals, doing sorts (which involves storage and retrieval of data) or drawing on displays (Alappat).

        1. Ned,

          You do realize that “communicating signals” is actually a bad example to use, right?

        2. Ned –

          So, insignificant post solution activity is key to eligibility?

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