Abstract Analysis in Other Areas of the Law

One of the struggles of the Subject Matter Eligibility test is understanding the definition of the legal term “abstract idea.” The Supreme Court has used the term “abstract” in many other areas of law – perhaps most pointedly in the area of standing and the requirement of a concrete, non-abstract harm.

In the 2016 internet law case of Spokeo v. Robins, the Supreme Court explained:

When we have used the adjective “concrete,” we have meant to convey the usual meaning of the term—“real,” and not “abstract.” . . . “Concrete” is not, however, necessarily synonymous with “tangible.” Although tangible injuries are perhaps easier to recognize, we have confirmed in many of our previous cases that intangible injuries can nevertheless be concrete.

The use of “abstract” here is strikingly similar to that used by the Supreme Court in its eligibility analysis.  A concrete harm (or invention) must be sufficiently real, but need not actually be a tangible harm. [Decision]


Spokeo is a ‘people search engine’ often used by potential employers.  They substantially screwed up Robins’ information and he sued — alleging willful failure to comply with the Fair Credit Reporting Act’s requirements.  The issue before the Supreme Court was whether the plaintiff could establish any concrete harm based upon the online errors.  After the Supreme Court clarified the standard, on remand the Ninth Circuit held that the reputational harm associated with false information was sufficiently real, concrete, and not abstract – even if not tangible.

Although Spokeo offers a parallel abstract-ness analysis, it doses not actually get us closer to a straightforward definition of the term.  What it may do, though is open the analysis to a wider set of precedent.

109 thoughts on “Abstract Analysis in Other Areas of the Law

  1. 11

    link to youtube.com

    Now, this doll can write any letter, book, or writing a human can. You just need to adjust it correctly.

    So, then all writing is nothing according to the thinking we see here. Writing is just a matter of getting the right settings (program) for the doll. This doll anticipates all writings.

    1. 11.1

      All writings should be considered already copyrighted by this doll. We should close the copyright office.

    2. 11.2

      Notice that the anti-patent propagandist will not respond to this. Because they can’t. This is pretty much the same argument they make with software.

  2. 10

    Jochim Martillo: I consider the confusion over 101-eligibility to be at least partially manufactured.


    The “confusion” is pretty much 100% manufactured by the patent maximalists and s0 ftie w0f tie types who undoubtedly prefer “confusion” to the most reasonable alternative, i.e., seeing their logic and information patents chucked into the trash where they belong.

    For goodness sakes, JM, some of us were paying close attention to these issues years before Prometheus v. Mayo. Where were you when we were trying to explain the basics to the “I’m-so-confused” crowd?

    Oh my goodness please keep the laughs coming.

    1. 10.1

      Several groups are creating confusion, and they have different agendas.

      SCOTUS, which introduced the meaningless term “abstract idea” 93 years after Kant published The Critique of Pure Reason.

      Gutter Schumpeterians, who believe only large incumbent companies should hold IP so that settled expectations will not be disrupted.

      Those who believe all software should be patentable.

      Those who believe no software should be patentable.

      The conflict is an intellectual disaster and creates the perfect situation for bad laws to be enacted, and for those, who want to jump IP claims or to poach IP, to castrate the US patent system as they reap the profits, impoverish the rest of us, and render the US a third-rate power over the next century.

      I won’t argue that epistemology is easy, but if we apply epistemological reasoning to the US intellectual property legal regime, we can at least get everyone on the same page and restore sanity.

      What was I doing while this intellectual disaster was starting? I was inventing one of the key components of modern cloud computing.

      1. 10.1.1

        The conflict is an intellectual disaster


        Pretty sure you’re the “intellectual disaster”, Joachim. I do love your attempt to pretend that you’re the “truly objective one” here. Deep deep stuff.

        What was I doing while this intellectual disaster was starting? I was inventing one of the key components of modern cloud computing.

        Right. When did the cocaine abuse start getting the best of you?



          I don’t appreciate to be called a cocaine abuser.

          MM should be banned from this blog for not maintaining minimal civility.

          As for whether I invented a key component of modern cloud technology, I direct reader to this patent application. It is a proper continuation of a 1991 patent application, which is public but not published.

          One cannot build a modern cloud without creating logical switching devices, which are also used by Docker.


            Off topic, but since it was cited here, Application Publication Number US20120257634 A1 by Inventors Joachim C. S. MARTILLO and 5 others, published Oct 11, 2012 from Application number US 13/368,316 filed Feb 7, 2012, claims a continuation Priority date of Oct 8, 1991 from Application Serial Number 07/773,161 ???
            Can someone please explain how the PTO can justify the pendency in late 2017 of an application claiming on its face a Priority date of Oct 8, 1991 – TWENTY-SIX YEARS AGO? Should not its patent term have expired six years ago, and been prevented from being validly filed in 2012? [Because filing a continuation triggers the current 20 years from earliest priority date claim patent term statute.]


              The original patent application is pre-GATT. It follows the pre-GATT law of term. The continuation was filed after the magic date of June 8, 1995 but before the magic date of March 16, 2013. It is therefore post-GATT pre-AIA. So what if it has no term? The written description received more attention, and the claims were system claim versions of the original device claims.

              America Invents Act: Effective Dates

              The continuation was eventually abandoned.

              The parent application is partially under different rules most important with respect to term but also MPEP 706.07(g) Transitional After-Final Practice [R-07.2015].


                JM, the AIA does not affect patent term, and you have not explained how yout original Application Serial Number 07/773,161 [asserted on the continuation record as having been] filed Oct 8, 1991 can still be pending as an application after TWENTY-SIX YEARS and thus still capable of having a patent term after finally issuing for 17 MORE years? Are you and/or the PTO trying to break Lemelson and Hyatt records for submarine applications?

                1. The 07/773,161 application is before the courts. There was a very messy bankruptcy, which obscured ownership. IANAL, and while I know a lot about IP law, property ownership is an issue of Massachusetts Commonwealth law, about which I am not so knowledgeable.

                  It is hardly the longest-running question of IP rights.

                  The Battle of the Bonds took about 53 years to resolve.

                  I should note that I have no interest in the ‘161 application or the patent prosecution entity. The damage, which I personally suffer from USPTO misbehavior, is purely reputational.

                  Yet I consider the misbehavior a national issue because the USPTO (or a deeply embedded group within the USPTO and DOJ) are working for changes that will wreck the US patent system and render the USA a 3rd rate power within 100 years.

                2. I should add that if the ‘161 application has become a submarine, USPTO shenanigans associated with the illegal and unlawful SAWS program made it a submarine. But for SAWS it would have been allowed and expired long ago. (It was actually allowed at one point and then pulled back — a documented SAWS procedure.)

                3. JM, thanks for the response. If a significant part of that 26 year application prosecution delay was due to the PTO SAWS program as you indicate it should have been a slam dunk APA suit for an unexcused agency refusal to do its job?
                  Also, how could the PTO use a bankruptcy proceeding as a gross delay excuse unless the parties disputing current ownership of the application have refused to agree on what patent attorney is authorized by both of them or the bankruptcy judge to respond to office actions and pay any issue fee? Why is not the PTO Solicitor looking into gross pendency and grossly extended patent term applications like this?

                4. it should have been a slam dunk APA suit for an unexcused agency refusal to do its job?

                  that’s funny (but sad if you are earnest)

                5. IANAL, and I have personal interest neither in the ‘161 Application nor in the patent prosecution LLC. Because I was involved in the patent prosecution from the beginning, I can describe the prosecution history. There is a summary document.

                  SAWS After SAWS

                  For the plethora of court cases in the CFC, the CAFC, and the DC, I have to consult the public record of the proceedings and listen to the recordings that the CAFC makes of public hearings and that the CAFC then puts up on its web site.

                  You can also consult public PAIR with respect to the parent and child patent applications.

                  As for the time wasted because of SAWS, I expect the cases under 35 USC § 145 and under the Tucker Act to be resolved around 2025 (i.e., ~34 years after the filing of the parent application). The percentage of time wasted due to SAWS will probably reach 62%. In man-years the percentage will be much higher.

                  The USPTO (or more correctly a deeply embedded group with the USPTO and the DOJ) seems to use SAWS and similar unlawful programs to circumvent Tafas.

                  This group has astounding misunderstandings of law, of history, and of economics. SAWS seems to be created in the aftermath of the adjudication of In re Alappat.

                  This group along with outside propagandists seem to have manufactured the patent troll crisis in order to use a form of Friedmanite shock therapy to create a situation, in which at least 300 years of case law can be overturned.

                  As for challenging the ownership of the ‘161 Application, the USPTO challenges on the basis of an incorrect reading of 35 U.S. Code § 261 and by ignoring Massachusetts Commonwealth property law along with Erie Doctrine.

                  No one else challenges the ownership of the ‘161 Application by the patent prosecution entity.

                  As for USPTO Solicitor Nathan Kelley, I am disturbed that he became solicitor in November 2013, but SAWS (a prima facie and self-evident violation of the APA) was not alleged to have been canceled until March 2015, and such secret unlawful programs appear still to continue.

                  As far as I know, only inventor John Harvey has managed to move applications out of SAWS. He was able to do so because the original examiner seems to have had some sort of breakdown due to the unethical and unlawful directives from USPTO top management. During the breakdown he acted bizarrely enough and disclosed enough information to Harvey’s attorneys that the USPTO top management decided to clean up the mess and to extricate itself as quickly as possible by allowing a number of the claims. Andrew Faile took over the examination.

                6. Joachim,

                  merely “seem”…?

                  Do you not remember the admission (finally) by the Office during the SAWS debacle that SAWS was merely one of MANY such programs within the Office?

                  And yet, there are examiner types on these boards that STILL think that any mention of SAWS or its star chamber aspects merely is the stuff of wacky conspiracy theorists…

                7. JM,
                  Cute how you attribute the delay to SAWS when you forgot about the application for 14 years. It’s amazing what the office will let people revive, right?

                8. Typical misrepresentation of facts.

                  The ‘161 Application reverted to us by operation of law, but the USPTO demanded a writing. It took 14 years to get it.

                  OPLA allowed revival as abandoned inadvertently after we tried to revive it as abandoned unavoidably.

                  Then the USPTO did a fake examination, which breached the implied in fact contract, because the USPTO secretly ignores Tafas.

                  The USPTO followed SAWS procedures exactly in this case even though SAWS violates the APA and is unlawful.

                  The USPTO accuses everyone else of gaming the system when it is the ultimate gamer of the legal system.

                  We dotted every i and crossed every t.

                  The PTAB APJs lied in official US government documents.

                  The CAFC defers to the PTAB under Chevron.

                  Isn’t this situation disturbing?

                  The gaming is described in the summary document.

                9. “The ‘161 Application reverted to us by operation of law, but the USPTO demanded a writing. It took 14 years to get it.”

                  But you signed a declaration saying:
                  “I assumed that they would complete the patent in a timely manner” and “We were under the impression that a patent had been issued and did not learn that The Patent Application had gone abandoned until recently” 14 years after the patent was abandoned. Your own statements indicate that you didn’t spend 14 years on onerous USPTO requirements, because you were oblivious to the application’s status.

                  That’s hardly dotting every I.

                  Or as one petitions officer wrote:

                  “In this instance, the diligence that is generally used and observed by prudent and careful men in relation to their most important business was not exercised with respect to the prosecution of this application.”

                10. So? I did not know as much about patent law in the early 1990s as I do now, and the USPTO explicitly told me in March 1993 that I should follow my lawyers’ recommendation, which was to obtain a declaration (by definition — I think — a writing) from the President of Clearpoint.

                  I along with my former partner at Constellation Technologies diligently tried for the next 14 years to obtain that writing, which we finally did obtain.

                  [You are focusing on a side issue and on my former misunderstanding of the law. IANAL.]

                  In any case, if the USPTO thought we did not own the patent application in 2007, it should never have returned the application to pending status.

                  If the USPTO later decided that the patent prosecution entity did not own the patent application (in terms of ownership I was out of the picture at that point), the USPTO should have returned the ‘161 Application to abandoned status instead of performing a fake examination.

                  That fake examination — I now understand — is a breach of the implied-in-fact contract just as a doctor breaches an implied-in-fact contract when he takes money and performs a fake examination.

                  If the USPTO had returned the ‘161 Application to abandoned status, the patent prosecution entity could have sought remedy under 28 U.S. Code § 2201 (Creation of remedy) in the District Court of the District of Massachusetts, which was the appropriate court

                  1) to determine the ownership of the patent application under Massachusetts Commonwealth law,

                  2) to issue the order for the USPTO to return the patent application to pending status, and

                  3) to issue an order for the USPTO to resume prosecution.

                  [IANAL. It is possible that after adjudicating ownership, the DC of the District of Massachusetts would transfer the case to the DC of the EDVA to issue the two latter orders.]

                  Instead, the USPTO continued the fake prosecution of the ‘161 Application, and now the patent prosecution entity is arguing ownership under Massachusetts law in the CAFC in an appeal from a 35 USC § 145 case in the DC of the EDVA. (I am not a party in this case).

                  The EDVA DC judge adjudicated ownership improperly under 35 USC § 261, which is inapplicable federal law, instead of under Massachusetts Commonwealth law.

                  I see gaming in that the USPTO seems not to have wanted the ownership adjudicated

                  1) where it was appropriate for adjudication (DC of Massachusetts) and

                  2) where the USPTO would almost certainly lost according to the Massachusetts case law.

                  The USPTO forced adjudication into a venue and jurisdiction, which the USPTO believed would be more sympathetic to the USPTO’s position.

                  It is hard to find more obvious gaming and a more obvious violation of Erie doctrine in recent times.

                  I have to admit that even without the gaming associated with ownership the USPTO might still have performed a fake examination under SAWS or some other unlawful secret “quality assurance” program, but at least the patent prosecution entity would be arguing patentability and not ownership in the DC of the EDVA or in the CAFC.

                11. Joachim,

                  You no doubt realize by now that Ben is an apologist of the Office and regards SAWS as some fantastical “conspiracy-theorist” non-reality (even if the Office has not already publicly announced not only that it was real, but that it was merely one of dozens of similar Star Chamber like programs in direct violation of examination supposed to be entirely in writing and on the record as it were).

                  His defense of the indefensible should tell you all that you need to know in your discussion here.

                12. anon, take a look at the file wrapper in public pair. His signed declarations make it clear he dropped the ball on this patent from 1993-2007, but he blames the PTO for that 14 year delay. It could be that he was a victim of SAWS after 2007, but the little boy has already cried wolf once.

                13. What a liar Ben is!

                  Did I blame the USPTO for the 14 year delay?

                  Can Ben do simple math? What percentage is (2025-2007)/(2025-1991)? (Okay, I admit to fat-fingering the 62%. I meant 52%, but in that calculation, I am being optimistic about the resolution date.)

                  Without the writing by Clearpoint’s President, the USPTO would not allow us (my erstwhile partner and me) to continue prosecution.

                  Without the writing, which did not take place until 2007, OPLA would never have granted the petition for revival.

                  The President of Clearpoint refused to make a writing until the bankruptcy cases were behind him as he stated in his declaration. How did we (my erstwhile partner and I) drop the ball? To me it seems like an unavoidable abandonment by definition.

                  Note that Ben in complete intellectual dishonesty does not comment on the gaming in performing a fake examination or on the attempt to do an end run around Erie Doctrine.

                  Also in case Ben has read the prosecution summary document, I have to note that Ben does not comment on the falsification in a government document by PTAB APJs Dixon, Frahm, and Hughes (a federal crime considered equal to perjury, 18 U.S. Code § 1001 – Statements or entries generally) apparently at the behest of USPTO top management.

                  Many people have legitimate constitutional doubts about IPR, but the issue of APJ honesty has not surfaced.

                  Maybe it should.

                  How typical are Dixon, Hughes, and Frahm? They are supposed to be 101 eligibility experts.

                  How many APJs participated in SAWS or are participating in other secret unlawful “quality assurance” programs?

                  How many APJs have become accustomed to committing federal crimes during their adjudications?

                  These questions are serious and suggest to me that a special prosecutor and minions should be crawling all over the USPTO.


            Joachim Martillo, that is pretty cool.

            In terms of patents, you may want to try to think of inventions in terms of information theory. Think about what it takes to represent an invention in terms of bits of information, and of the structure of the invention.

            The proper way to think of inventions is structure. Then the question is what structure should not count. Non-functional structure–probably. Structure that is attributed to an equation–no. Etc.

            All of patent law becomes very easy when you think of the atomic units properly.


              I tried to apply epistemology to 101-eligibility because philosophical thinking seems rather close to legal reasoning. Unfortunately, there is at least one major terminological conflict.

              It may be possible to apply information theory, but there might be more resistance among legal professionals, and terminological conflict probably exist. Both structured and unstructured data are information or signal and not noise.

              An interesting problem might be trying to reformulate the decisions of the cases I listed in terms of information theory.

              This set might be representative:

              Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341 (Fed. Cir. 2010) (en banc.),

              Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498 (1874),

              Gottschalk v. Benson, 409 U. S. 63, 67 (1972),

              In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994),

              Mayo Collaborative Servs. v. Prometheus Labs., Inc.,

              Alice Corp. v. CLS Bank Int’l,

              In re Warmerdam, 3 F.3d 1354, 31 USPQ2d 1754, (1994), and

              Diamond v. Diehr.

              BTW, when I google


              I find 28 pages.

              When I google


              I find only 22 pages.

              The former search is a good deal stricter than the latter because I had to include Kant’s first name in order to filter out a tremendous amount of noise. I missed a tremendous number of valid matches that just used Kant’s family name.


                The answer was above was somewhat flip.

                Kevin Collins uses an approach based in the knowledge/embodiment dichotomy, which is an attempt at a semantic information theory of patent eligibility.

                Here is a paper.

                The Knowledge/Embodiment Dichotomy

                Here is the conclusion.

                Surprisingly, patent doctrine and theory have failed to recognize one of the most fundamental and intuitive limits on the reach of patent eligible matter: the knowledge/embodiment dichotomy. The knowledge/embodiment dichotomy distinguishes between claims to knowledge-advances and claims to embodiment-advances. It invalidates the latter and thereby prevents newly created knowledge from being rewarded with a patent.

                To date, the failure of courts and scholars to give de dicto recognition to the knowledge/embodiment dichotomy has not led to the de facto wide-spread patentability of newly created knowledge. The extant exclusion of mental processes from patent eligibility and the printed matter doctrine effectively police fragmentary stretches of the dichotomy in an indirect manner. However, without access to the conceptual framework, vocabulary, and doctrine that is needed to enforce the dichotomy in a transparent, mean-what-you-say-and-say-what-you-mean fashion, the PTO and the courts distort patent
                doctrines that are usually tasked with achieving completely different goals in order to fill the gaps between fragments. The Supreme Court’s opinion in Mayo Collaborative Services v. Prometheus Laboratories, Inc. on the patenting of “laws of nature” and the PTO’s distinction between functional and nonfunctional descriptive material in software-on-disk claims both exemplify these doctrinal contortions that in practice, if not in name, invalidate claims that run afoul of the dichotomy.

                While this ends-justify-the-means approach to enforcing the knowledge/embodiment dichotomy may lead to the correct result in individual cases, the distorted doctrine has its own costs. Overt recognition of the knowledge/embodiment dichotomy as a limit on the reach of patent eligible matter would eliminate those costs.

                1. Collins work is an over reach – albeit perhaps interesting, there is a lack of tie to any sense of legal reality.

  3. 9

    Don’t forget that an idea is inherently abstract. Then look at what Judge L Hand said about idea-expression merger and how the threshold of when a mere idea turns into copyrightable expression is quite low. The same should be true for the threshold of when an abstract idea turns into an eligible embodiment (article of manufacture…). “Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his “ideas,” to which, apart from their expression, his property is never extended. Holmes v. Hurst, 174 U.S. 82, 86, 19 S. Ct. 606, 43 L. Ed. 904; Guthrie v. Curlett, 36 F.(2d) 694 (C.C.A. 2).” Nichols v. Universal Pictures Corporation et al. Circuit Court of Appeals, Second Circuit November 10, 1930 45 F.2d 119; 7 USPQ 84.

    1. 9.1

      Hence I apply a theory of knowledge and not a theory of ideas.

      The juridical thinking can’t help but be fuzzy when patent eligibility is conceived in terms of the undefined term “abstract idea.”

  4. 8

    It’s really not that difficult to define:


    existing in thought or as an idea but not having a physical or concrete existence.
    “abstract concepts such as love or beauty”
    synonyms: theoretical, conceptual, notional, intellectual, metaphysical, ideal, philosophical, academic; rareideational
    “abstract concepts”
    consider (something) theoretically or separately from something else.
    “to abstract science and religion from their historical context can lead to anachronism”
    extract or remove (something).
    “applications to abstract more water from streams”
    synonyms: extract, isolate, separate, detach
    “he abstracted the art of tragedy from its context”
    a summary of the contents of a book, article, or formal speech.
    “an abstract of his inaugural address”
    synonyms: summary, synopsis, précis, résumé, outline, abridgment, digest, summation; wrap-up
    “an abstract of her speech”
    an abstract work of art.
    “a big unframed abstract”

    link to merriam-webster.com

    The Crisscrossing Histories of Abstract and Extract

    Abstract is most frequently used as an adjective (“abstract ideas”) and a noun (“an abstract of the article”), but its somewhat less common use as a verb in English helps to clarify its Latin roots. The verb abstract is used to mean “summarize,” as in “abstracting an academic paper.” This meaning is a figurative derivative of the verb’s meanings “to remove” or “to separate.”

    We trace the origins of abstract to the combination of the Latin roots ab-, a prefix meaning “from” or “away,” with the verb trahere, meaning “to pull” or “to draw.” The result was the Latin verb abstrahere, which meant “to remove forcibly” or “to drag away.” Its past participle abstractus had the meanings “removed,” “secluded,” “incorporeal,” and, ultimately, “summarized,” meanings which came to English from Medieval Latin.

    Interestingly, the word passed from Latin into French with competing spellings as both abstract (closer to the Latin) and abstrait (which reflected the French form of abstrahere, abstraire), the spelling retained in modern French.

    The idea of “removing” or “pulling away” connects abstract to extract, which stems from Latin through the combination of trahere with the prefix ex-, meaning “out of” or “away from.” Extract forms a kind of mirror image of abstract: more common as a verb, but also used as a noun and adjective. The adjective, meaning “derived or descended,” is now obsolete, as is a sense of the noun that overlapped with abstract, “summary.” The words intersected and have separated in modern English, but it’s easy to see that abstract applies to something that has been summarized, and summarized means “extracted from a larger work.”

    It’s only difficult in this context because the courts are vexed that intangible inventions are worth major money.

    It seems simple enough to me. If a human mind processes something, that thing is abstract. That should solve the statutory interpretation of “Process” simply and cleanly. No human mind, no statutory abstraction.

    As to the second meaning- as a summary or condensation or outline, it’s a patentability issue connected with a 103 or 112 inquiry. If an invention is not claimed as an invention, but rather as an abstraction of an invention or of a concept that itself is not inventive, you can’t haz a patent. The invention should be construed in a Markman like process to resolve this non-statutory abstraction.

    1. 8.1

      Martin, I think it is far easier to understand what the courts are driving at by looking at the cases that spawned the doctrine: Nielson, Tatham and Morse. These cases confronted claims to broad principles together with not limiting the claimed subject matter to any particular apparatus or or to any particular process that was sufficient to carry into affect the claimed principle. The principle itself was typically a law of nature or phenomena of nature.

      Now it is true that these claims might be very specific about the prior art. For example in the Nielson case, the claim is very specific about the furnace and the bellows. But when the claim got to the means for heating the air between the bellows and the furnace, all the applicant disclosed was a (heated) box, with the further words that the box can be varied in shape and size to fit the application. But in point of fact, it was discovered that the heated box would not actually work and that one has to provide elongated thin tubes between the bellows and the furnace.

      Of course we know Morse case was even broader in that the inventor claimed any means or method for communicating at any distance using electromagnetism. It made no difference that the specification disclosed a particular means for carrying out the claimed process.

      But, one also has to compare this to Benson where the claim was to a mathematical procedure conducted on a generic computer. Effectively the court held mathematics was an idea (an abstract idea?), and to allow the claim to mathematics conducted on the computer would be the same as to allow a claim to mathematics conducted using pencil and paper. Surely, these claims provided no new or improved manufacture – even though in each case they limited the calculation to a specific means or method.

      So when the courts deciding whether a claim is ineligible under 101, they are looking for claim “directed to”otherwise ineligible subject matter such as mental processes (mathematics) and disembodied ideas, laws of nature or the like. In step II, they are testing whether the claims do more than claim the ineligible subject matter. To do this, they need to see something in the claim that the claims that improves a pre-existing manufacture and not just claim the use of pre-existing manufacture to achieve a result that itself is not a manufacture.

      And when I say manufacture, I include machines and compositions and processes that would otherwise pass the MOT.

      Thus if a claim claims an improved circuit structurally, the claim is not directed to an abstract idea. But if a claim claims any circuit that performs mathematical function X, one might justifiably argue that the mathematical function X is an abstract idea, and while there might be a circuit disclosed in the specification that performs the recited function, claiming all circuits that perform the recited function claims no more than the abstract idea.


          Yes, many such 101 challenged claims should go away for lacking scope of enablement – in theory. But in practice they do not go away that way. Because it is almost impossible to get a summary judgement or even a D.C. decision on that issue, and Fed. Cir. panels are not all that consistent on 112 issues either. And the PTO until recently rarely ever even rejected application claims on that basis.


            Our patent laws were drafted to make it difficult to invalidate an issued patents. Presumption of validity wasn’t meant to be window dressing.


          Ned But if a claim claims any circuit that performs mathematical function X, one might justifiably argue that the mathematical function X is an abstract idea, and while there might be a circuit disclosed in the specification that performs the recited function, claiming all circuits that perform the recited function claims no more than the abstract idea.


      1. 8.1.2

        Epistemology (the philosophical discipline focusing on the theory of knowledge) provides an effective approach to the question of patent-eligibility because it provides a framework for classifying knowledge. After classification, we can identify what sort of knowledge must be included within the metes and bounds of a claim for the claim to be valid under 35 U.S. Code §§ 101-103.

        SCOTUS’ approach creates chaos because patent-ineligible knowledge per se is defined as the knowledge associated with an abstract idea, which is not defined, while 35 U.S. Code § 101 gives patent-eligible examples but does not define what sort of combination of knowledge as a whole must be staked out in a claim for a claim to be patent-eligible.

        The two missing definitions create a black hole that consumes all the logic of IP law with respect to patents.

        Simplified epistemology tells us the classes of knowledge are prior (not the patent law usage), posterior, analytic, and synthetic.

        Epistemological Definitions (Somewhat Simplified).

        Prior knowledge: the knowledge which is independent of experience. Because natural laws and natural phenomena (like a naturally occurring element, mineral or compound) are discovered and not invented, they are prior knowledge. In Kantian formalism mathematical postulates and theorems have a somewhat more complex status, but for the purposes of patent law, it is reasonable to consider the former prior knowledge while the latter is analytic knowledge derived from the former. A mathematical algorithm like the Spanning Tree Algorithm is often a mini-constructive theorem, which is mathematical analytic knowledge.

        Posterior knowledge: the knowledge which derives from experience. This knowledge can be deduced from prior knowledge analytically, it it may be created by an inventor synthetically.

        Analytic knowledge: the knowledge, which can be expressed via an analytic proposition. An analytic proposition is a proposition, whose subject idea contains its predicate. Kant’s example is: “All bachelors are unmarried.” The theorems of a mathematical system are inherent in the postulates. The concept of inherency in patent law is akin to analytic knowledge, but inherency may involve conventional synthetic knowledge. (The case law associated with the US patent system avoids bright-lines.)

        Synthetic knowledge: the knowledge, which cannot be expressed via analytic proposition.

        When a chemist first synthesizes an unknown compound, it represents posterior, analytic, and synthetic knowledge, but subsequently the synthetic compound (when first created, a transformation from the precursors) is considered to represent prior knowledge (because it is a natural phenomenon) although a new method of synthesis of the compound may be synthetic if not derived analytically (or in patent law and MPEP terminology predictably as the issue is discussed in the seven KSR rationales) from posterior knowledge.

        While a mathematical algorithm contained within the metes and bounds of a claim is not sufficient to make a claim patent eligible, a protocol, which applies that algorithm and which is encompassed within the metes and bounds of the proposed claim, may render the claim patent eligible. In communications and networking a protocol serves as a means to organize the actions of devices or of apparatus (plural — the word is originally from the Latin fourth declension and has a plural pronunciation different from the singular pronunciation, to wit, apparatūs or apparatús versus apparatus) and thus transform a collection of individual devices and of individual apparatus into a coherent communications or networking system.

        Radia Perlman distinguishes algorithm from protocol in her famous 1985 paper entitled “An Algorithm for Distributed Computation of a Spanning Tree in an Extended LAN.”

        Perlman never applied for a patent that would have made claims encompassing the Spanning Tree Protocol, but the claims of US 5018137 (Backes, “Transparent load sharing for parallel networks”, 1991) encompasses within its metes and bounds a minor extension to the Spanning Tree Protocol originally defined by Radia Perlman and later modified by the IEEE into IEEE 802.1d. This extension represents synthetic knowledge that improves the original Spanning Tree Protocol.

        Protocols need not included mathematical algorithms. It is hard to identify a mathematical algorithm in HDLC bit-stuffing and bit-stripping, which nevertheless transform of raw data communications link into a packet (or frame) oriented communications link.

        The patents of Cal. Inst. of Tech. v. Hughes Communs., Inc. explicitly refer to an error correction algorithm but encompass within the metes and bounds of their claims an error correction protocol creating an error-free communications link between machines from a communications link that was not error-free. Thus the claim stakes out a method for transforming a real communications link that connects two computers and that is subject to errors into an error-free virtual link.

        Kudos to Judge Mariana R. Pfaelzer for excellent understanding of the claims, of the patents, and of the § 101-case law.


          I try to give an epistemological overview of the key 101-eligibility cases in Undermining the patent system and dismantling the healthcare system are two steps in an ongoing effort to harden class and racial divisions.

          Unfortunately, the epistemology is not the main topic of the above Linkedin article. I discuss the epistemology because I consider the confusion over 101-eligibility to be at least partially manufactured.

          I need to break out the epistemology section into a separate article.


            “Undermining the patent system and dismantling the healthcare system are two steps in an ongoing effort to harden class and racial divisions.”

            That is probably correct.

            Undermining anything related to the patriarchy in this country is fair game to leftists. Anyone that doesn’t understand this yet is in for a superze.


          Interesting stuff. What about information theory. Think of inventions as structure and the bits that would be needed to represent the structure.

          I think all structure should be eligible. I think the exceptions are looking at certain structure and saying that it is magical structure. That is where all the problems start.

  5. 7

    I have always thought that the Bilski claims were sufficiently concrete as to not be abstract and yet they were not directed to a new or improved “manufacture” (where manufacture is intended to comprise the 4 classes.)

    Thus a search for concreteness is not sufficient.

    1. 7.2

      Epistemologists describe mathematical formulas in finance as pure analytic knowledge.

      By the Church Turing Thesis these calculations can all be done on pencil and paper.

      Nowadays it is obvious to computerize such calculations.

      Should claims whose metes and bounds encompass only the computerization of purely analytic formulas be allowable?

      What would the “inventor” be trading in exchange for the grant of a short term monopoly?

      That is the question!

      1. 7.2.1

        Yes that is probably the only question that is left in 101. The abstract nonsense of Alice should be done away with.

        Let’s remember that computers are physical devices with structure that take space, time, and energy to perform information processing.

        To my mind, equations should be patent eligible. They are structure and as long as claim scope is enforced the problems really aren’t that great.

    2. 7.3

      So, you admit the claims are enabled, and yet feel there is some structure that is being claimed that is magic and must be excised.

      Read Deener. Deener is very close to software claims and the SCOTUS gets it right. Just imagine each bit of represented information as a grain of wheat.

  6. 6

    Words can have different meanings in different contexts. That’s one of the reasons that we don’t allow people to protect “new words” with patent claims.

    Think about this for a moment. It’s important and relevant to the ineligibility of logic patents.

    Logic and information are ineligible for patenting. That’s the starting point, Dennis. The starting point is not “computers are shiny and useful therefore software is eligible for reasons.”

    1. 6.1

      Once again you attempt to dissemble on “logic patents.”

      Logic cannot be copyrighted.

      And yet, copyrights exist for aspects of software – just as patents exist for aspects of software.

      A little inte11ectual honesty from you Malcolm on a point that you L I E incessantly about would be nice.

      1. 6.1.1

        Logic cannot be copyrighted.

        Nor can hamburgers. No idea what point you think you’re making.

        I do know that nobody cares, and nobody ever will.

    2. 6.2

      ” Logic and information” — MM

      ?? We are claiming information processing methods and machines.


          And???? Are you seriously arguing that improved operations of computing devices aren’t worthy of a patent?

          For example, electronic devices that cannot communicate on a cellular network are equivalent in value to electronic devices that can? Methods for cellular communications aren’t patent eligible to you? UEs are all basically identical but for their programming. A cell company that provides superior firmware and device functionalities that are software based aren’t worthy of patents?

          Based on your definition, no telecommunications patents are ever eligible.


              No one is arguing that claims that cover a result per se should be allowed. Valuable telecommunications methods would fall under Moon Man’s “logic patent” tr1pe.


          I have posted here several times quotes from respected books on information processing that say expressly that the functional language is meant to encompass all known results.

  7. 5

    This is getting ever more Alice in Wonderland.

    the debate is about a test for the “eligibility” for a patent claim. Keep in mind that a claim is a definition, a definition of an inventive concept. Keep in mind the word “concept”.

    We are now asked to focus on the word “idea”. That is a synonym for “concept”. Every patent claim is directed to a concept, that is to say, an “idea”.

    For me, an “idea” is inherently something that is “abstract”. So adding the adjective “abstract” to the noun “idea” adds no further meaning whatsoever, entirely superfluous. Who wants in their head an idea that is not abstract but, rather, “concrete”? How shall I know the precise moment when the abstract idea in my head turns to concrete?

    I have the feeling that the binding of non-eligibility to the notion of an idea that is “abstract” is acquiring its own unstoppable momentum. Weird!

    I cite Wikipedia on “Escalation of Commitment”
    link to en.wikipedia.org

    As John McInroe used to say to those laying down the law: You cannot be serious.

    1. 5.1

      “Who wants in their head an idea that is not abstract but, rather, “concrete”? How shall I know the precise moment when the abstract idea in my head turns to concrete?”

      You shall know the precise moment when you see in your minds eye all the schematics or blueprints and/or the new bits of code to be written to embody the invention. When all that is left is to write it down, then the concrete is poured. When you have written it all down, the concrete has set.

      1. 5.1.1

        Ok Les. Blueprints, you say. So, a concrete example. Go back a few years, to 1894 in fact. I just conceived something as concrete and simple as the Space Elevator. Just a long strong tether really.

        link to en.wikipedia.org

        When does my claim change from abstract idea to concrete idea?

        Perhaps when I include in my claim the word nanotube?

        Or only when I’ve got my elevator up and running?


          When does my claim change from abstract idea to concrete idea?

          When you’ve articulated an enabling distinction from the prior art in objective structural terms.

          This isn’t hard, folks.


            When you’ve articulated an enabling distinction from the prior art in objective structural terms.

            I certainly hope that you are not implying that an optional claim format is something other than optional…


            Well, MM, it might not be “hard” for you but it does seem to be quite “hard” for quite a few other people.

            I have in mind the distinction between what you claim and what you disclose. Disclose one way to solve a technical problem. Does that entitle you to claim the problem as such, in other words, ALL ways to solve the problem?

            Some people seem to think so. However, from your word formulation (claim the structure), which strikes me as reasonable, it seems you are not one of them.


          “When does my claim change from abstract idea to concrete idea?”

          Are you objecting to the lack of standard, or are you asserting that there can be no standard?


            Ben, I think there can be a standard, but that “abstract vs concrete” is too indefinite to be useful.

            For me, the European test “Technical Y/N” (Useful arts Y/N) is useful because it is binary, and is independent of the state of the art. Abstract vs concrete is, to the contrary, not. As technical fields mature, claims get less and less “abstract”. At the beginning, the inventive insight lies in fingering “the problem” so that a claim to all ways to solve that “problem” is patentable. Compare for example 1) the world long ago, before anybody conceived of a “toothbrush” with 2) the world of toothbrushes today.

            Or my 5.1.1 example of the Space Elevator.

    2. 5.2

      The “concept” or “idea” which is the definition a claim provides, IS not what the claim is directed to i.e. the idea IS not what the referents of that concept ARE. These are distinct things.

      The idea of a table, the concept of a table as defined by words, refers to actual tables in reality, not the idea of a table, only “the idea of table” refers to that. The idea of “the number 10”, the concept denoted by “10” refers to the abstraction, and not to any particular grouping of 10 concretes. The idea “10 circuits” however, is a concept which refers to any “10 circuits” but does not have as any of its referents any abstractions.

      So, it is possible for concepts and ideas and definitions to refer to concretes or to abstractions, some refer to that which exists external to the mind and some refer to that which pertains only to mental contents and processes.

      It is possible for a claim to be directed to an abstraction, but it would be invalid and as you know very misguided. “Claim 1: A concept for handling a group of similar concretes, wherein the concept comprises: a collection of explicit characteristics defining commonality between the concretes by virtue of the characteristics manifesting themselves in each and every concrete of the group of similar concretes, and wherein the concept is used to denote or refer to an instance of any concrete of the group of similar concretes.”

      1. 5.2.1

        This is not a pipe.

        The treachery of Images” by Rene Magritte

        …from the wiki***:

        The painting is sometimes given as an example of meta message conveyed by paralanguage.[12] Compare with Korzybski’s “The word is not the thing” and “The map is not the territory”.

        *** link to en.wikipedia.org


          meta message conveyed by paralanguage

          Is conveying a new non-obvious meta message a patent eligible process?

          Does your answer change if you scriven in the phrase “wherein said meta message is electronically displayed on a tangible screen”?

      2. 5.2.2

        It is possible for a claim to be directed to an abstraction, but it would be invalid and as you know very misguided. “Claim 1: A concept for handling a group of

        What if you store the concept on a hard drive configured to allow future retrieval of the concept?

        Eligible? What’s the reasoning behind your answer?

        Think carefully about your answer.


          Configuration of spins, atoms, molecules, etc. may be made to a media of a hard drive into a pattern which corresponds with the concept, but the concept itself (being abstract) is not literally stored in a hard drive.

          From your summary, the pattern likely is not functional, but simply is descriptive. Moreover, wrt the hard drive itself, all it has done is stored the pattern for its eventual retrieval… and it seems to do so in complete ignorance of the content, and there being no functionality caused by the pattern. (Here I assume the hard drive itself is programmed in software or hardware to function to store and retrieve patterns, but this programming and functionality is distinct from the purely descriptive pattern corresponding to the concept.

          So.. my answer is that the purely descriptive pattern representing the concept is not eligible, and the hard drive although eligible, simply is not inventive by virtue of it storing and retrieving something when it functions in complete ignorance to the content of that something.


            …which brings us all (ladies and gentlemen) to the proper understanding of the exceptions to the judicial doctrine of printed matter in that there is a functional relationship present.

            Software really does DO something – it is a “ware” and is entirely equivalent in the patent sense to other machine components, other “wares.” If there were NO functional relationship, then no one would bother with soft”ware” and the other design choice of hard”ware” would be utilized to achieve the same claim scope.

            So why then the concerted effort to “classify” software as if it were some “boogeyman” that needs to be banished from patent eligibility?

    3. 5.3

      getting ever more


      NOT to those of us that understood the ramifications of the decision when it was first released.

      Do not confuse the dawning realization of what the decision entails with any type of evolving jurisprudence. The scoreboard is broken. Repeatedly referring to the broken scoreboard does not continue to break it. It is already broken.

  8. 4

    This is totally off-topic to the theme of the OP, but I notice that on Friday the CAFC affirmed the invalidation of some of the Univ. of Md’s claims in an inter partes re-exam. Maybe the university just forgot to plead sovereign immunity as a defense, but does not the fact that the CAFC affirmed this PTAB judgment rather call into question the premise that anyone (even states) enjoy sovereign immunity from PTAB inquiries?

      1. 4.1.1

        The basis for sovereign immunity in IPR is the XI amendment, which provides in pertinent part that “[t]he Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States… .”

        To my mind, we can quibble about whether the PTAB can be said to be exercising “the Judicial power of the United States” at all, but if it is exercising this power in IPRs, then it is just as much exercising it in inter partes re-exams. The same thing happens in both processes (the PTAB sits in judgment of whether a set of claims are patentable).


          PTAB sits in reexams? I thought those go through examiners. I’m pretty sure there’s no PTAB involvement in ex parte reexam, which is still on the books. Can’t see why the so-called inter partes reexam would be different.


            Re-exams do go through examiners, but they end up in front of the PTAB before they get to the CAFC. Once they are in front of the PTAB, the PTAB is exercising just as much judgment over those claims in the re-exam as it does in the IPR.


              Perhaps it’s a distinction without a difference, but in IPR the PTAB is adjudicating a dispute between parties, whereas in reexams the PTAB is reviewing an examiner’s action. The result is ultimately the same — claims upheld or canceled — but the posture is different.


                Yes, one can name some distinctions between IPR and inter partes reexam, but (as you acknowledge, “distinction without a difference”) none that are genuinely material to the point in issue here.

    1. 4.2

      Greg, I think you get it. The judicial power depends upon whether the remedy judicial in nature. Revocation of a patent claim based upon invalidity certainly is judicial in nature and I would argue that the procedures involved in the remedy are substantially irrelevant.

      That is why I have always contended that the violation of an IPR is its remedy, not its procedural posture, because it is imposing a judicial remedy under circumstances where the patent owner as a constitutional right to a day in court and to a jury. Reexaminations impose have the same constitutional problem because they have the same remedy the same grounds.

      1. 4.2.1


        “That is why I have always [ignored] the violation of an IPR [in] its procedural posture,”

        Of course, this is a different argument than Ned’s 7th Amendment argument.

        But Ned, the procedure itself of the IPR is Constitutionally infirm. This is not to say that you do not have a 7th Amendment argument, but it is to say that the 7th Amendment argument is by no means the ONLY argument against IPRs.


          anon, if a statute requires unfair procedures, then it is unconstitutional. If a rule is unfair, the rule is unconstitutional, but the statute still may be constitutional.

          I am not sure the folks over at G’s site understand this.

          The statute puts the decision over the validity of a patent into a political organization. The statute permits jury rigging of the judges a politician to decide cases the way the politician wants them decided. As was observed by Professor Epstien, this is unconstitutional under the 5th Amendment as well. But it does not follow that the only solution to bias it to provide a trial in an Article III court.

    2. 4.3

      Or maybe the University agreed that it had waived immunity by its patents also being sued on in a D.C.?

  9. 3

    Re: “concrete:”
    Somewhat ironically (in view of the over-ruling of In re Alappat and State Street wherein “concrete” was part of the test), in Ultramercial the Court asserted that the abstraction to which the claim in issue was directed lacked any “concrete and tangible form.”

      1. 3.1.1

        NW, as with anon, I will not respond to misleading rhetorical questions about something I clearly did not ever say. [In this case a 112 question when the subject is judicially created unpatentable “abstract” subject matter.]


          If it lacks a “concrete and tangible form”, then it is not enabled.

          Do you disagree with that statement?


            “If it lacks a “concrete and tangible form”, then it is not enabled.

            Do you disagree with that statement?”


            A device for marking paper.

            It’d be hard to describe this as unenabled, given that the prior art has burnt sticks, pencils, pens, paint brushes, ink screens, moveable type presses, rotary plate presses, inkjet printers, laser printers, ect.

            But it’s abstract because its described at such a high level.


              A device for marking paper.

              It’d be hard to describe this as unenabled…

              Hm, I disagree. Enablement must apply through the whole claim scope. If one’s claim is as broad as “a device for marking paper,” then one’s disclosure must have enabled every possible device for marking paper. I feel fairly safe in saying that no single disclosure achieves that standard, and therefore, no disclosure can be said to be enabling for a claim so broad.


                How about: A device for marking paper with a pigment?


                1. It’s disclosure + prior art (i.e., knowledge of PHOSITA) which must enable.

                2. Do you always apply such a strict enablement analysis? Do you thinks “processor configured to…” should be invalid because of yet unenabled 8nm gate processors? Or do you, as everyone else does, exclude the extreme reaches of scope in enablement?


          about something I clearly did not ever say.

          It’s pretty clear that you said that In re Alappat was overruled.

          You not responding is not – and never has been – “limited” to any type of “misleading rhetorical questions about something I clearly did not ever say” when it comes to points that I have challenged you upon (points that you have said). Quite clearly, one of my “beefs” with you is that you do not engage on THE “something” and only snipe from the s(n)idelines in regards to the “clearly did not ever say.”

          That’s quite a bit different than the spin that you are attempting here in portraying our interactions. Your spin is thus rejected.


            Your spin is thus rejected.


            I think you just got “decimated”, Paul, in “anon’s” mind at least. Gruesome!

    1. 3.2

      Are you sure that State Street has been overruled? I think that it is clear enough that the “useful, concrete, and tangible” test is not good law (Bilski v. Kappos, 561 U.S. 593, 614 n.1 (2010), “[I]t would be a grave mistake to assume that anything with a ‘useful, concrete and tangible result,’ may be patented”), but it is not clear to me that State St. is totally effaced from the §101 jurisprudence. Indeed, even Justice Stevens’ concurrence (which offers a much more constricted view of §101 than does the Court’s opinion) says of State St. (Id. at 641 n.40) that “State Street dealt with whether a piece of software could be patented and addressed only claims directed at machines, not processes. [Judge Rich’s] opinion may therefore be better understood merely as holding that an otherwise patentable process is not unpatentable simply because it is directed toward the conduct of doing business—an issue the Court has no occasion to address today.” That looks to me as if the Court is acknowledging that the essential holding of State St. is sound, even if the test employed to reach that holding was improper.

    2. 3.3

      in view of the over-ruling of In re Alappat and State Street

      State Street was certainly denigrated by the Court (but not expressly overruled).

      In re Alappat was affirmed to be still controlling law by the very first CAFC panel to hear a related matter after the Supreme Court’s Bilski case.

      Do you have an actual citation that addresses and overcomes the CAFC panel decision concerning In re Alappat and your presumption that THAT case has been overruled?

      (further, the two cases stand separately, and notably, my positions in regards to the statutory law as actually written by Congress in 1952 do not depend on State Street – a point that Ned will on occasion try to kick up dust on)

  10. 2

    I think that each of the inventions that the SCOTUS ruled was ineligible have been concrete. So, 101 has actually little to do with this.

    What 101 is about is understood by Benson. The way to think about inventions is structure. (One could actually use information theory to understand patent law and it would be a far superior understanding.) So, what 101 is about is looking at the structure and then picking out parts of the structure and contending that these are magic portions that should not be eligible because they are one of the exceptions.

    Plus, on its face, the abstract exception as being used in Alice is absurd. They are saying it doesn’t matter that it is enabled, we have decided it is abstract. Ridiculous.

    1. 2.1

      The is nothing ambiguous about what the term “abstract” technically means nor what the actual referents of the term are in reality.

      The only thing that is ambiguous is the term’s arbitrary misuse by an isolated collection of nontechnical persons…

      1. 2.1.1

        I agree Anon2. I know that I have read before some exerts about the term abstract from some high court. In law school, I printed out all the SCOTUS on patent law (and some from England) and all the major ones from the Fed. Cir. and read them all.

        I remember there was something that said that abstract was a problem because someone could claim something like, build a machine that has fewer parts, but performs the same function. The problem they were describing in the opinion was enablement.

        (Claims should have a scope of their enablement.)

        The use of abstract in Alice is nonsensical.


          Actually, I would really like to find this analysis. I think it illustrates that the SCOTUS has just decided to make a new definition of abstract that is untethered from the Constitution or previous case law.

          (I wonder if abstract is discussed in some English case long ago.)

  11. 1

    Dennis —

    Interesting. “Concrete” in standing analysis is remarkably similar to “nonabstract” as that term was understood during the Chakrbarty/Diehr/machine-or-transformation era — “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” — the statutory language is clear that a claim directed to an “improvement” to a machine, even if the increment is not itself eligible, is eligible.

    Every time I read these two sentences in Alice they take my breath away —

    The fact that a computer “necessarily exist[s] in the physical, rather than purely conceptual, realm,” is beside the point. There is no dispute that a computer is a tangible system (in § 101 terms, a “machine”) …

    “Machine” is “beside the point?” What happened to the “improvement thereof” categories of § 101?

      1. 1.1.1

        Night – I understand the logic of your conclusion “An improvement is a new machine.” However, the statute is clearly directed to new machines as well as “new improvements thereof.” This suggests to me that there is a statutory difference between a “new machine” and a “new improvement to a machine.”


          Or, the statute suggests that the authors were aware of the potential for misunderstanding and hence it was written in a way to avoid errors arising from not understanding an improved machine is a new machine…so both are covered “just in case”.


          Is “new improvements thereof” also the basis for “new use” of machines claims?


            “Using” something defines a process. If the machine (concrete) is exactly the same and you are using it differently you simply do not factually have a different machine. One must be careful to properly define what “identical” means.

            e.g. Table salt (concrete) for food was known. Salt in tiny sized granules was known. At some point in time salt in a crystalized form (bigger size special shape) better for melting ice on roads.. might have been inventive. Also, spreading salt in any form, on an icy road, might have been an inventive process. But table salt in the exact same form, composition etc. of table salt was what it was and it was known regardless of whether it could be put to new use.

            For a machine the same applies. If a machine is in a different configuration, size, form, function, etc. it is different, i.e. not identical. If you are using a printer for a paperweight, then “placing a printer on paper to immobilize the paper” is a process, but it is likely obvious. Strictly speaking I have assumed a machine at a first location is identical to the self-same machine which has not been altered in any except moved to a different location.


              Forgot: placing the printer on the paper is not a new machine. If you modified the printer with special paper engaging but non-damaging pads… then you would have a new machine of course.


              Aptly captured (long ago) on these pages under the Grand Hall thought experiment.

              By the way, not a single anti-software patent person has been able to provide a cogent defense in view of that thought experiment.



            The “new use of” ALSO comes into play (directly from Congress) in the 1952 Act and the creation of 35 USC 100(b).

            Ned would be able to attest to this from the historical perspective, given his love of history


          This suggests to me that there is a statutory difference between a “new machine” and a “new improvement to a machine.”

          Where would you go with such a difference?

          For argument’s sake, let’s take you at your point and say that there is a statutory difference between any of the statutory categories (why limit to “machine?”) and the “new improvements thereof” clause.

          What then?

          What point do you arrive at WITH seeing a statutory difference?

          Does anything else in the whole body of patent law depend on the statutory difference that you think there exists?

          (genuinely curious, minimal snark)

    1. 1.2

      Alice” (and as exemplified by the topic of this thread) is a broken scoreboard.

      It is time to recognize and fix the broken scoreboard.

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