I previously wrote about the pending RecogniCorp petition for writ of certiorari to the Supreme Court that asks for clarification of the Abstract Idea analysis. I see the basic question here as to whether Parker v. Flook is good law. The Supreme Court will likely discuss the case in their January 5 conference.
In my prior post I had included a copy of claim 1 from the asserted U.S. Patent No. 8,005,303. However, it turns out that the claim 1 was amended during a third-party-initiated ex parte reexamination and now reads as follows:
1. A method for creating a composite image, comprising:
displaying facial feature images on a first area of a first display via a first device associated with the first display, wherein the facial feature images are associated with facial feature element codes;
selecting a facial feature image from the first area of the first display via a user interface associated with the first device, wherein the first device incorporates the selected facial feature image into a composite image on a second area of the first display, wherein
the composite image is associated with a composite facial image code having at least a facial feature element code and wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters to the multiplication operation; and
reproducing the composite image on a second display based on the composite facial image code.
In the reexamination, the examiner particularly found that the added limitations were not found in the prior art and sufficiently inventive to avoid an obviousness rejection.
101 is very easy to understand. Just look at structure.
All the anti arguments below amount to some characterization of structure that contributes to the functions of a machine as not being eligible ’cause it is part of some category in the human brain.
And, a new math formula is bad? So, that is like saying well they said there was only a new gear structure or only a new molecule.
All your games are the same. You take a structure of a machine and say it is not patent eligible because it is a witch (or whatever category you assign it to).
A machine that takes space, time, and energy is performing functions that are useful that people paid for. The antis open the machine and point to parts of it and say that there is a witch. Just ridiculous.
It is a strange argument that the antis make that a general purpose computer comes with all the functionality. Everyone without an agenda sees the general purpose computer as a tool.
So, I guess the machines exist to make every molecule possible, so I’d think they are all anticipated and it is no longer possible to claim a new molecule.
Also, what if the machines to make the molecules are controlled by computers so that you just need the right program to make the new molecule. Then all the molecules are anticipated by the logic of the antis.
But, of course, the likes of Ned and MM would never address these arguments.
This logic can be extended. It means that all manufactured that are made with a computer that controls the process are anticipated.
What if a robot is made that can move like a human? Then all inventions that can ever be made are anticipated by the general purpose computer that is controlling the human like robot.
You see making up science like the antis leads to absurd results.
“101 is very easy to understand. Just look at structure.”
Why is it then that experienced judges in the Federal Circuit are incapable of understanding it as demonstrated by the opinions that they write?
Why, also, is it then that experienced prosecution practitioners do not take pains to draft claims of a clearly transformative nature that clearly fall into a selected one of the four eligible categories? Especially in the present judicial climate.
Why Paul? Giles S. Rich. Detail: Nominalism; “Do it on a computer.” See, Flook at 590.
Post Alice, nominalism does not work. The search is for an inventive application like in Nielson and Diehr: an improved process or machine.
>Post Alice, nominalism does not work. The search is for an inventive application like in Nielson and Diehr: an improved process or machine.
Ned, I think you are right that this is what the judges are doing. I don’t think it has anything to do with the Patent Act nor with science.
It is judicial activism where the judges are burning down the patent system just like they burned down the anti-trust laws.
Night Writer, I agree with you that there is a larger war being waged between efficient infringer’s and intellectual property owners. I further agree that a key arrow in the quiver of the efficient infringer is Alice and Mayo. But that does not mean that just because they are using that arrow, that the arrow must be unwarranted.
The problem is that with the AIA, the efficient infringer crew went one step too far. While we have yet to hear from the Supreme Court in Oil States, it looks like my challenge the constitutionality of IPR might prevail.
Ned,
It is far more likely than not that YOUR inability to apply the separation of powers concept to each and every one of the three branches of the government is what made YOUR challenge to be NOT the one that made it to the Supreme Court.
As it stands, your “championing” on property grounds does not “do enough” to move you from the anti-patent” side of the fence to the “pro-patent” side of the fence.
Anon, the reason MCM Portfolio did not make the Supreme Court’s because of the death of Scalia. Goresuch provided the additional vote. Also, given the 5-4 split in Stern v. Marshall, it is likely that without Scalia, the court would’ve split 4-4.
Regardless, the Oil States petition raised the same issues and used the same arguments we did in MCM Portfolio. It was a virtual copy of our petition.
Except it is NOT YOU as the champion.
That says more than the reasons you give here.
What Ned does not address (and NEVER addresses) is that his “opposite of nominalism” ‘approach is the very thing of the broken scoreboard and the swallowing up of what Congress actually wrote by the exceptions as re-written by the Court.
So now with Ned’s “version,” we have items belonging to the right type of utility AND nominally passing the other prong of 101 (the statutory category prong), and STILL being judicially eliminated while legislatively passing eligibility of 35 USC 101.
Anon, “…right type of utility.”
And exactly what type is this?
Another Br’er Rabbit type of question…
Of course, this utility is of the Useful Arts type of utility (and as so often that I have to remind MaxDrei, this is a different choice by our Sovereign than the foreign “technical arts” choice).
The subject blog post notes in closing “In the reexamination, the examiner particularly found that the added limitations were not found in the prior art and sufficiently inventive to avoid an obviousness rejection.” Based on SCOTUS/Federal Circuit 101 precedent (stemming back to the SCOTUS decision in Mayo where Justice Breyer indicated that assessment of a claim for patent eligibility is a condition precedent to consideration of patentability under 102, 103 or 112), however, the examiner’s finding regarding non-obviousness, per reexam, would seem to be irrelevant to the holding in Recognicorp. Indeed, the Federal Circuit indicated in Two-Way Media, “Eligibility and novelty are separate inquiries.” So, whether it seems reasonable or logical, it does appear to follow, from SCOTUS and Federal Circuit precedent, that a claim can be patent ineligible, notwithstanding its patentability under 102 or 103.
…which begs the question as to “applying” the Supreme Court written “law of 101,” wherein does the notion of “conventional” come from in order to determine the (undefined) “substantially more”
Gary, your post only shows just how muddled and self-conflicting the scrivening by the Court in the area of 101 has become.
Congress
WAKE UP 
App lets you shop while you drive
It’s like a miracle! Nobody could have predicted this. Next thing you’ll know I’ll be able to fly into outer space … and use a computer to order a soft drink of my choice! Or put in my request to use the bathroom.
Promote the progress! We live in an age of miracles and without logic patents we’d still be making houses out of wood like the silly Amish!
Justice Breyer indicated that assessment of a claim for patent eligibility is a condition precedent to consideration of patentability under 102, 103 or 112
Let’s see the exact cite in context.
The fact of the matter — and Breyer was well aware of this — is that eligibility of a claim often depends on (surprise!) whether there is “something more” that is patentable (i.e., new and not “conventional”) beyond any ineligible subject matter recited in the claim. Because of this fact, it is not possible to evaluate the eligibility of a claim in many instances without understanding the relationship of the claim to the prior art. And understanding that relationship requires the same analysis one would employ to understand whether those other elements are anticipated or obvious.
Basic easy-to-understand stuff. Don’t run into the weeds because you are scared of open spaces. Just learn not to be afraid. In short: grow up.
Says the least grown up poster on these boards.
Stultifying.
the Federal Circuit indicated in Two-Way Media, “Eligibility and novelty are separate inquiries.”
Sure. Just like “should I make a U turn” or “should I drive around the block” are “separate inquiries.”
Nothing profound about this. The inquiries are often related (in the case of eligibility in the computing context, they are almost always related).
..because “computing”…
Gary Cohen, what you don’t seem to clearly understand, Gary, is that when claims include both patentable subject matter and unpatentable subject matter that invention has to be in the patentable subject matter. If one conducts the novelty and obviousness analysis and gives weight to the unpatentable subject matter without first determining whether it is applied in inventive application (think of the printer matter doctrine) so as to at least transform the otherwise patentable subject matter into something improved, then one can patent any unpatentable subject matter simply by including in the claim otherwise patentable subject matter.
An example of what I am talking about is a CD-ROM with a different song. Clearly songs are unpatentable subject matter. The relationship between the song and the CD-ROM remains as always. The fact that the song is claimed in conjunction with a CD-ROM should make no difference to the patentability of the claims a whole because the song is not being applied to the underlying subject matter in inventive application. Thus to conduct the analysis of 101 and 103 on the claim is a whole without somehow excluding the song will result in the patentability of the claim thereby effectively patenting song.
“that invention has to be in…”
That is NOT US law, Ned.
possibly salvaged (in part):
Your comment is awaiting moderation.
January 5, 2018 at 5:20 pm
“(think of the printer matter doctrine)”
You have YET reflected that you understand that doctrine, Ned – including the important exceptions to the judicial doctrine of printed matter.
Way back when, I provided you a very easy to understand Set Theory explication and invited you to participate in a discussion of that explication.
You refused.
“An example of what I am talking about is a CD-ROM with a different song.”
More b01 10cks. Do NOT use an example from outside of the Useful Arts – such is not pertinent and does NOT prove the point that you are trying to make.
It’s a hideously structured claim. The relative adverbial clauses (start with “wherein”) modify “method.” The punctuation misapplies a mix of American and British rules.
Usually when I see “first device” in a claim, I expect to find reference later to a “second device.”
The examiner should have made an informality objection to force the applicant to fix the claim.
Here is a better structure for the claim.
When the claim is correctly structured so that the relationships between clauses are perspicuous, the relative adverbial clauses are seen to be non-limiting, and the obviousness rejection is seen not to have been overcome.
The applicant seems to be claiming the use of two displays in a facial recognition system — neither novel nor nonobvious.
The first and final two relative adverbial clauses make no sense (create indefiniteness) because they are in the passive voice but include no agent.
The last relative adverbial claim is gibberish (indefinite by misplaced modifier) because it indicates that a facial code uses one or more code factors as input parameters to the multiplication operation.
I feel sorry for the justices when they have to deal with crap like this claim.
The MPEP should include a 000 section that covers basic grammar. Such a section would assist patent examiners, APJs, and patent prosecutors.
I thought about the claim some more and rewrote it again. It is still broken because of the phrase “first device,” modificand of “using,” etc. I indicated antecedent basis erroneously, and the fourth relative adverbial should have been a nominative absolute.
Technically the relative adverbials modify the object of the implicit “I/We claim” — in this case “a method.”
A nominative absolute loosely modifies the implicit verb “claim” and are good for local lexicography. Remember the applicant is his own lexicographer.
I avoid plurals in writing a claim whenever it is possible. The indefinite article generally signifies “one or more.” Because noun declension and verbal conjugation is deficient in English, using plurals can create confusion.
Note that “for creating a composite image” is purely descriptive. For some claim drafters such a descriptive/adjectival prepositional phrase is optional. This phrase does not and should not create antecedent basis for “composite image” in the “reproducing”-limitation.
Here is my second pass at correcting the patentese grammatical structure of the claim.
Later I will review the written description because the claim is in fact very confusing under BRI. I suspect a limitation is being implicitly imported from the written description. It is not a problem for an Article III court, but this claim should never have passed examination.
The phrase “a composite facial image code having at least one facial feature element code” might be clearer if it were formulated with “including” instead of “having.” (I assume a composite facial image code is a data structure of some sort.)
Here is a rewrite: “a composite facial image code including at least one facial feature element code.”
I look at patentese grammatical structure because I have primarily consulted on claim interpretation during litigation. In general, Article III court claim construction is much easier from both plaintiff and also defendant perspective if the claim structure (including punctuation) makes sense grammatically.
The examiner does no one any favor by slacking on grammar even if Americans are grammatically illiterate nowadays.
“The examiner does no one any favor by slacking on grammar even if Americans are grammatically illiterate nowadays.”
Sure,
There is some bad grammar out there.
They’re sometimes limited by client directives (not a good excuse, I would agree).
Their fault, though is not limited to the party that you are discussing. Feel free to parse through some of the examiner language. And this is even spotting them a GENEROUS dose of boilerplate (which is merely cut and paste).
A fundamental design flaw in Intel’s processor chips has forced a significant redesign of the Linux and Windows kernels to defang the chip-level security bug.
Crucially, these updates to both Linux and Windows will incur a performance hit on Intel products. The effects are still being benchmarked, however we’re looking at a ballpark figure of five to 30 per cent slow down, depending on the task and the processor model.
But no refunds of course. Just buy the new chips. They don’t have these kinds of flaws. They’re perfect, like bitcoins.
No need to buy anything – computers already have “everything in there”
It is a strange argument that the antis make that a general purpose computer comes with all the functionality. Everyone without an agenda sees the general purpose computer as a tool.
So, I guess the machines exist to make every molecule possible, so I’d think they are all anticipated and it is no longer possible to claim a new molecule.
Also, what if the machines to make the molecules are controlled by computers so that you just need the right program to make the new molecule. Then all the molecules are anticipated by the logic of the antis.
Lol – that is exactly “their logic” that is captured by the Big Box of Protons, Neutrons, and Electrons example that I have been using to sl ap them upside the head.
Note as well that Greg comes to exactly that same conclusion with his panning of the Flook decision (on the discussion-inhibited threads).
didn’t this happen back in 1994? Anyone here as old as me? but back then Intel voluntarily replaced the defective Pentium chips.
No way that they take cert on this one.
Nice arrangement of communication elements, Greg. How long did it take you to design and build? I’m guessing you worked with a team since the simplest designs are often the most difficult to conceive of and implement, as everyone knows.
Way to try to take the larger issues out of context and attempt to inject confusion.
I’ve provide you (over and over and over) a path to avoid confusion and gain clarity on this matter.
Which of course does not even reflect the fact that YOU made an admission against your interests of knowing and understanding the exceptions to the judicial doctrine of printed matter W A Y back when in a conversation with David Stein.
Maybe after a full dozen years, this site may actually decide to do something about your known deceptions and transgressions against inte11ectual honesty.
Most likely not, but the New Year is always a time for hopeful considerations.
Way to try to take the larger issues out of context
How did you calculate the size of the issues? Did you use a context size evaluation factor associated with an issue identification code?
Presumably there was some logic involved because, well, you processed information.
Tell everyone, “anon.” You’re a very deep and serious person, just like David Stein.
Nice dust kicking.
How is your project for copyrighting logic coming along?
Tell everyone, “MM” – that “deep and serious” poker tell of yours already does – but not in the way that you probably want it to.
i wouldn’t say “no way”, the petition is well done. But I give it a 25% chance.
Speaking of massive large-scale frauds on the public:
link to bloomberg.com
Driverless cars are set to hit the road, first in the U.S. in the next couple of years and reaching 1 million in annual global sales by 2025, according to a new forecast from researcher IHS Markit. Fueled by the rise of ride-hailing, governments outlawing human-operated vehicles in big cities and a race to dominate the nascent sector by both tech giants and automakers, self-driving cars will surpass 33 million in yearly sales by 2040, the researcher predicts.
Anyone care to bet on this? After all, it’s not as if these con artists are just starting their propaganda campaign.
The best part: remembering the deep thinkers here trying to defend patents on “using logic to park a robot car.” Fun times. Silly Con Valley is filled with the best and brightest.
Wake up! It’s time to watch an ad so the world can keep turning.
I still can’t figure out his obsession with self-driving cars.
I know, right? It is just the type of thing that if the government actually controlled the items (as opposed to private industry), that his “socialist tendencies” would have him exclaiming all the virtues of such centralized control (after all, auto deaths are so much higher than gun deaths and we all know how “safety” is the hallmark of his wanting to take gun rights away from the individual, in favor of the commune (or State).
the examiner particularly found that the added limitations were not found in the prior art and sufficiently inventive to avoid an obviousness rejection.
Because nobody could have predicted that multiplication “using a code factor” would improve a process for “creating a composite image.”
The great news is that — if the Supremes take this petition — this case is far more likely to represent the end of logic patents than a “new beginning.”
And nobody will notice a thing.
And nobody will notice a thing.
Well, except for a tiny tiny handful of otherwise unqualified patent agents.
Johnny Carson’s Karnak returns with:
“What is the Big Box of Protons, Neutrons, and Electrons.”
(It is not just Flook that is in question, but also the “non-elimination of steps within a claim” of Diehr that is at issue)
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