Patent Eligibility: Underlying Questions of Fact

by Dennis Crouch

Important statement from the Federal Circuit today on the factual underpinnings of the eligibility analysis:

While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.

Berkheimer v. HP, Inc. (Fed. Cir. 2018) [Berkheimer].  The decision penned by Judge Moore partially vacates the lower court’s summary judgment of ineligibility.  In particular, the court affirmed ineligibility of claims 1-3 and 9 of Steven Berkheimer’s U.S. Patent No. 7,447,713, but found that dependent claims 4-7 were not proven ineligible.

The short decision by Judge Moore and joined by Judges Taranto and Stoll is in substantial tension with prior treatment of eligibility analysis that has generally permitted resolution of the issue on the pleadings as a pure question of law.  The decision’s unsatisfying distinguishing point is that the court’s prior practice “demonstrate [that] not every Section 101 determination contains genuine diputes over the underlying facts material to the Section 101 inquiry.”  The court needs an en banc powwow to clarify the issues here.

= = = = =

Claims at issue (1-3 and 9 are ineligible; Underlying facts required to determine whether 4-7 are ineligible).

1. A method of archiving an item in a computer processing system comprising:

presenting the item to a parser;

parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

evaluating the object structures in accordance with object structures previously stored in an archive;

presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.

3. The method as in claim 1 which includes, before the parsing step, converting an input item to a standardized format for input to the parser.

4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.

5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

6. The method as in clam 5 which includes compiling an item to be output from the archive, wherein at least one object-type structure of the item has been edited during the one-to-many change and wherein the compiled item includes a plurality of linked object-type structures converted into a predetermined output file formal.

7. The method as in claim 6 which includes compiling a plurality of items wherein the at least one object-type structure had been linked in the archive to members of the plurality.

9. The method as in claim 1 which includes forming object oriented data structures from the parsed items wherein the data structures include at least some of item properties, item property values, element properties and element property values.

126 thoughts on “Patent Eligibility: Underlying Questions of Fact

  1. 22

    The CAFC, blundering again: Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.

    I doubt that the italicized text will stand up to Supreme Court scrutiny or even CAFC en banc scrutiny. The reason why is that the eligibility analysis requires (in the typical case) a comparison of the claim to the prior art to understand whether anything “significantly more” has been added to the claim beyond the subject matter that would otherwise be deemed ineligible on its face. It seems highly, highly unlikely that the mere recitation of the prior art or even an obvious variation on the prior art can ever qualify as “significantly more” for the purpose of passing through 101. [Note: I’m not referring here to the recitation, in addition to the ineligible subject matter, of non-obvious combinations of the prior art.]

    An easy example to consider for understanding the issue is a Prometheus-type claim. First, we recognize that a method claim such as this one:

    “A method, comprising the step of considering whether a measured value of X is greater than Y, which suggests carrying out step Z in the future.”

    is an ineligible method claim (if I’ve lost you at this point, then all bets are off!). Prometheus attempted to protect exactly this kind of ineligible method by limiting their claim to a particular context, i.e., to a medical context where X was measured using technology that existed in the prior art. That effort was rejected by the Supreme Court, and rightly so, because the prior art (unless it’s patented) is part of the public domain. The policy driver or underlying principle of the Prometheus v. Mayo decision is that people are free to practice the prior art (in this case data-gathering technology) and they are free to think about the data they collect (because patents can’t be used to protect facts or thoughts about facts; these are the judicial exceptions which are ultimately rooted in the Constitution, particularly the First Amendment). Hence the requirement for the claim to recite “significantly more” than “conventional” “well-known” steps.

    Now let’s consider a more specific scenario. Let’s say that a patent application publishes January 2 and describes, in great detail, an amazing new machine (“the TypeReader”) that can “read” the text that was typed on a keyboard up to one month after the typing took place. The TypeReader machine is perfectly eligible (the attorneys who drafted the application worked very hard at describing the machine so as to avoid 101 issues). Sensing that this might be my chance to escape the grim life of a patent attorney, upon reading the publication I spend the next 48 hours drinking pot after pot of coffee and preparing and filing an application claiming over 10,000 different types of documents that can be identified using the TypeReader (starting with “government documents”, of course, but branching out in every direction and with greater specificity).

    Respectfully, all 10,000 of those claims should be found ineligible and it shouldn’t matter that the TypeReader was definitely not “routine” or “conventional” when I filed my application (on the contrary, the tech was virtually unknown and nobody was using it!). The key facts are that the TypeReader was in the prior art and the subject matter I was adding to my claims (e.g., “said identified text is the text of a patent application”) is not eligible subject matter. If you have difficulty following this part, perhaps consider the situation from the viewpoint of the TypeReader inventor (maybe your client!) who finds himself guilty of infringing my patent (?!) because he used his own invention on a keyboard where someone had typed in the “wrong” kind of document (i.e., the kind that I recited in my claims), or who finds that nobody wants to buy the thing because using it guarantees the infringement of another patent (turns out that there were several hundred other patent attorneys obtaining their own similar patents over the same period).

    I recognize that there are all kinds of different hypotheticals (including variations on this one) that will raise different issues. My point is that any effort by the CAFC (or the PTO) to make some kind of “game-changing” distinction between “routine”/”conventional” versus “all the limitations except the ineligible one were taught in this pub three days before you filed” is, ultimately, going to fail in much the same way that Prometheus failed. The underlying principles/policy considerations are bedrock and if the CAFC failed to recognize the issue presented in my “non-routine” prior art hypothetical this time, they’ll recognize it soon enough in a simpler context (I have a feeling that other panels have already recognized the issue… but my memory isn’t good enough to recall the case(s) off the top of my head).

    1. 22.1

      MM,

      You offer an interesting (and fun) example. Style points for the humor, and my condolences on the hypothetical restriction requirement that hypothetical you is going to have to respond to. I also think hypothetical you might have to come up with some “creative” arguments to address some hypothetical obviousness rejections.

      In all seriousness though, although I don’t preface every single post with this, I definitely think that there are serious issues that the Supreme Court has had to grapple with in coming up with the eligibility exceptions. The Supreme Court’s rationale in Mayo makes a lot of sense (although other positions could equally make sense), and to be honest I’m not even sure I know what my feelings on the actual policy issues are. Fortunately, no one really cares what my feelings are, so I’m free to just study the Supreme Court’s jurisprudence and try to synthesize it into some sort of coherent framework.

      Your closing paragraph makes a lot of sense. To a large extent, this isn’t even really anything controversial, you are just noting that Flook’s holding that where “[a] formula is the only novel feature of [a] method”, “the discovery of this feature [does not] make[] an otherwise conventional method eligible for patent protection” (Parker v. Flook, 437 U.S. 584, 588 (1978)) can apply to bar claims where the only novel feature is ineligible.

      You have probably already seen it, but if not you may find interesting Lemley’s article on point of novelty which argues that ” ignoring the point of novelty of an invention makes little sense as an across-the-board matter and leads to a variety of harmful consequences” and that “a patent regime that pays attention to what the patentee actually invented, not what the patent lawyer wrote down, is more likely to achieve the goal of promoting innovation.” Lemley, Point of Novelty, 105 NW. U. L. REV 1253, 1255 (2011).

      JCD

      1. 22.1.1

        Agreed.

        MM definitely gets it, but better, says it well.

        1. 22.1.1.1

          That’s some serious “6-is-a-genius-because-he-agrees-with-me” going on there Ned.

        2. 22.1.1.2

          Ned, your 101 nonsense destroys your reputation.

          Not one intellect in patent law beyond Lemley and his clones thinks that Alice makes a whit of sense.

          And, you acting as if the language in Alice is a statute is ridiculous.

          1. 22.1.1.2.1

            Well Night Writer, I hear an awful lot of people spouting off a lot of nonsense about Alice and it is not coming from the likes of Lemley.

            The whole construct makes sense if you read the cases from which the doctrine originated: Neilson v. Hartford, just for example. The objective is to determine whether the claimed subject matter is directed to a new or improved machine, manufacture, composition or process. If what is claimed is not directed to the above, it will be declared to be a claim directed to ineligible subject matter or (a principal in the) abstract. Is this that hard to understand?

            The cases say this – they are looking for some improvement in an otherwise statutory machine, manufacture, composition or otherwise statutory process. Just read them. It is not that hard.

            1. 22.1.1.2.1.1

              If what is claimed is not directed to the above, it will be declared to be a claim directed to ineligible subject matter or (a principal in the) abstract. Is this that hard to understand?

              “directed to” is a an improper “Gisting.”

              Congress provided the direction as to exactly who gets to say what the invention is (and how) – and that party is NOT the Court, and it is most definitely NOT by applying some canard of “Point of Novelty” while doing an eligibility analysis.

              35 USC 112(b): (b)Conclusion.—
              The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter
              which the inventor or a joint inventor regards as the invention.

              This is NOT just a “requirement,” as it is ALSO a designation of authority.

              But back to software and your own attempts at obfuscation (all the while pretending that someone else is “missing something) – Why is it difficult for YOU to understand Ned that you cannot use “magic” and have a machine without software BE the same as a machine changed and reconfigured with the addition of software?

              You ALWAYS want to skip that first important step and mouth “just use” when – IN FACT – your skipping is part and parcel of the deception involved in attempts to remove software from patent eligibility.

              YOU are the one that wants to skip the factual basis and the reality and use some “sound bite” as justification for ignoring what is really going on.

              YOU are the one that wants to abrogate the words of Congress and have – as Night Writer has recently put it – the Court make things up from an “equitable” standpoint.

              Bottom line Ned is that YOUR Windmill Chases do not accord with the words of Congress, and that YOUR Windmill Chases require the Court to re-write (and NOT just interpret) the statutory law.

              Which brings us back to the LARGER issue and YOUR culpability in the shame of the broken scoreboard NOT being addressed.

              Separation of Powers is NOT just making sure the executive branch does not take power away from the judicial branch, you know. ALL THREE BRANCHES are controlled by the Separation of Powers doctrine. Where – as here – you turn a blind eye to transgressions by a particular branch in order to arrive at your desired end state, your credibility for speaking out against any other violation of Separation of Powers is greatly diminished.

              1. 22.1.1.2.1.1.1

                Anon, the Supreme Court long ago caught on to the tricks of patent attorneys, surrounding the inventive subject matter with mountains of description of context and the prior art.

                1. Your adoration of the Royal Nine is woefully misplaced Ned.

                  The score board is broken and THAT is the issue.

            2. 22.1.1.2.1.2

              I’ve read every 101 case and wrote a paper about 101, Ned.

              1. 22.1.1.2.1.2.1

                Have you read Neilson v. Hartford?

              2. 22.1.1.2.1.2.2

                Any chance of a link or cite?

            3. 22.1.1.2.1.3

              Ned, anon basically stated my position too.

              The core of what you are doing is trying to supplant the statute.

              Plus, the whole test of a “improvement” in 101 is clearly and unequivocally meant to be determined in 102 and 103. If there is no improvement, then it will fall under 102/103.

              1. 22.1.1.2.1.3.1

                Night, the improvement has to be and stuff that is otherwise eligible subject matter. Example: CD-ROM with a new or improved music.

      2. 22.1.2

        Relying on Lemley and the “Point of Novelty” is a nonstarter, JCD.

        1. 22.1.2.1

          I agree anon. JCD really doesn’t get 101.

    2. 22.2

      MM, I agree. The distinction between conventional and in the prior art wrt to the eligible parts of the claim is not an issue of eligibility, it is and issue of patentability under 103 at best. It makes no difference if the ineligible material is new or old. Diehr is a good example of that where the math was quite well known.

      1. 22.2.1

        Ned, MM, you guys have been reduced to spouting gibberish.

    3. 22.3

      There is nothing game-changing about the meaning of the words that you are here attempting to change yourself.

      Conventional means more than merely not novel.

      Why is it (now) that you are realizing this and so stridently (but rather emptily) saying that the plain meaning of these words “will stand up to Supreme Court scrutiny or even CAFC en banc scrutiny” and are somehow “a blunder.”….?

      Are you finally grasping the notion that I (FIRST ON THESE BOARDS) shared?

      Maybe instead of the instant reactions of yours to engage in mindless ad hominem (or your ‘cheered’ Accuse Others meme), you actually pay attention to the substance of the comments made, you would not be so late to the party…

    4. 22.4

      MM >>I doubt that the italicized text will stand up to Supreme Court scrutiny or even CAFC en banc scrutiny.

      The lot of you continue your 101 nonsense. The reason the italicized portion if fine is that this is not the application of law. This is the application of equity. The Alice test is not the application of a statute. It is the SCOTUS making equity rules.

  2. 21

    It’s always been the case that when an attorney waves her hand at the judge in a 101 motion hearing and says “but what we are doing is not conventional” it’s the end of he motion (or should be) the end of the motion, because the truth or falsity of that statement will not be found in the body of the pleadings or the text of the patent. It’s a factual dispute and the fatal flaw of the whole use of 12(b)6 as an early 101 adjudication.

    That’s why an expanded Markman procedure to construe the actual invention is vital- both sides can present limited factual evidence (occasionally in the form of technology tutorials) and the judge has at least some record to point to in making the determination.

    “presenting an evaluated object structure for manual reconciliation” is
     indisputably human consumption of information, and should be ineligible, in my view.

    Maybe this is the case that makes it to the Supreme Court. This intracircuit split that is allowed to live on for years and years is intolerable. A total mess. A 101 finding it is a pure game of chance in getting the right district judge and CAFC panel, and that is NOT how justice should operate.

    1. 21.1

      I agree with your first and third views Martin.

      Your second view still suffers from a crabbed understanding of utility (your “human consumption” prong disregards the fact that at bottom line ALL utility is concerned with human consumption).

    2. 21.2

      “It’s always been the case that when an attorney waves her hand at the judge in a 101 motion hearing and says “but what we are doing is not conventional” it’s the end of he motion (or should be) the end of the motion, because the truth or falsity of that statement will not be found in the body of the pleadings or the text of the patent. It’s a factual dispute and the fatal flaw of the whole use of 12(b)6 as an early 101 adjudication.”

      Exactly correct. Well stated.

    3. 21.3

      Exactly correct. Well stated.

    4. 21.4

      101–is a test where if the judge doesn’t like the invention they can invalidate all the claims. It is not law, but equity.

      101 is like going before a king/queen.

    5. 21.5

      A lot of the problem is that the D has to make all their invalidity contentions upfront. That is very expensive and has to be done before Markman.

      Plus all the discovery issues.

      Basically, the P can make the D pay a lot of money upfront. That is the problem.

      1. 21.5.1

        Is that strictly a “patent” problem or is that a structural problem due to general law suits?

        1. 21.5.1.1

          A general problem. But, I think the invalidity issue can be expensive upfront and it is not always an issue in litigation.

  3. 20

    David Stein asks a question:

    do you believe that the kind of § 101 analysis that Alice and Mayo require can be satisfied by a collection of boilerplate recitations?

    Answer: Depends on the claim.

    Just gluing together snippets of text from the IEG and Alice, with barely any application to the case at bar?

    Anser: If the claim protects logic carried out on data by a computer then there is no way to argue that “Alice has barely any application to the case” because that’s what Alice was about.

    Or are you suggesting that there is “new” logic being “innovated”, David? Is that what you’re suggesting? What makes a logical step “new”, David? Using new words? Applying the logic to data that you’ve describing using words that haven’t been used to describe data before? Tell everyone. Hurry up, though, because I’ve got to compile a few semi-reconciled multiply-parsed dynamically linked data object attribute sets into a jailcell-style MRME-standard floating-cloud password protected pseudo-archive, and I don’t have all day.

  4. 19

    Just so it doesn’t get lost here amidst all the gleeful celebration by the maximalists. This claim:

    1. A method of archiving an item in a computer processing system comprising:

    presenting the item to a parser;

    parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

    evaluating the object structures in accordance with object structures previously stored in an archive;

    presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

    went up in flames. Is there anyone out there who is confused by this?

    Maybe someone who works in the reconciliation arts can help explain the deep deep and s00per techn0 process here. Anyone here in the reconciliation arts? It’s very very serious stuff. Reconciling, that is. Especially reconciling attributes. Whoo boy that’s some mighty difficult stuff. Like MIT professors don’t even get into it. It involves … rules. Can you believe it? And logic. Very deep.

    1. 19.1

      Methinks Minnie Mouse is feeling threatened today given the number of posts, name-calling, etc. going on in this thread…

      1. 19.1.1

        No, there’s nothing here to be “threatened” by.

        That said, I’m not afraid to call out the excessive ign 0rance and dissembling and hypocrisy when it’s flowing out of the comments like a river.

        1. 19.1.1.1

          That said, I’m not afraid to call out the excessive ign 0rance and dissembling and hypocrisy when it’s flowing out of the comments like a river.

          I call B$ – otherwise, you would be spending all of your time calling out yourself.

  5. 18

    Trying not to laugh at the excitement shooting downt the legs of the maximalists down below.

    News flash: this will change nothing except possibly to lower Judge Moore’s credibility on this subject (which is surprising given that it was already near the bottom).

    4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.

    Storing “without substantial redundancy” is conventional and old in the art of storing stuff and pretending otherwise is sanctionable. Pull your heads out, people.

    5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

    The ability to effect multiple changes simultaneously is desirable for reasons known to human beings since forever (it’s called “efficiency”). Pretending otherwise is sanctionable. Claiming the result functionally does not change any of this, but it does make the allged “innovation” that much less innovative. “The method as in claim 4, wherein a robot feeds you delicious food.” <– can I haz patent now? Where is evidence people knew about delicious food? Gork must have evidence!

    6. The method as in clam 5 which includes compiling an item to be output from the archive

    Compiling and outputting information from an archive is ancient.

    wherein at least one object-type structure of the item has been edited

    Compiling and outputting edited information is ancient. Content of information is not relevant to analysis. Even the so-called printed matter doctrine recognizes this nonsense as nonsense.

    during the one-to-many change

    Doesn’t matter when the content change was made, the content is still irrelevant.

    wherein the compiled item includes a plurality of linked object-type structures converted into a predetermined output file formal.

    LOLOLOLOLOLOLOLOLOLOLOLOL The English language called. It wants to put to sleep permanently before it’s tortured further by bo tt0m feeding scriveners.

    7. The method as in claim 6 which includes compiling a plurality of items

    Because repetition of ancient steps makes them sooooooo fresh. Lookie folks! The available real estate objects are being compiled a plurality of times! Bet you didn’t see that coming. It’s totally different from compiling once. Like twice as different.

    Very deep serious stuff. Judge Moore thinks so and she still can’t believe that her kids know how to use Instagram.

    1. 18.1

      MM, methods for storing objects in an archive that reduce storage requirements improve computer functionality. I don’t see how a claim that provides a new and improved method for archiving is made ineligible just because archiving in a manner that reduces storage requirements as a class is old.

    2. 18.2

      Do you know what is ancient?

      Protons.

      Do you know what is ancient?

      Neutrons.

      Do you know what is ancient?

      Electrons.

      Do you know what is ancient?

      How these particles are configured, that is, the law of nature by which ANY configuration is enacted.

      Gee Malcolm, do you need help connecting the dots with YOUR “logic…?

  6. 17

    Patent eligibility, the Gruberdegook of patent law.

  7. 16

    Nobody could have predicted that if you tell a computer “If X = available real estate then Y is a reconciled data object” that the computer would actually reconcile the data object.

    Because if it was so predictable, then why didn’t anybody predict it? Huh? Zing!

    By the way, I graduated from Harvey Mudd College so I’m a very serious person.

    The best and the brightest, folks.

  8. 15

    “While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry.”

    Judge Taranto must have been dragged kicking and screaming on this one.

    1. 15.1

      No doubt.

      “While patent eligibility is ultimately a question of law, the district court erred in concluding there are no underlying factual questions to the § 101 inquiry. Id. at 642. Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. Whether a particular technol- ogy is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”

      “Here, the district court concluded that the claims do not contain an inventive concept under Alice step two because they describe “steps that employ only ‘well- understood, routine, and conventional’ computer func- tions” and are claimed “at a relatively high level of gener- ality.” Berkheimer, 224 F. Supp. 3d at 647–48 (quoting Content Extraction, 776 F.3d at 1348). Mr. Berkheimer argues portions of the specification referring to reducing redundancy and enabling one-to-many editing contradict the district court’s finding that the claims describe well- understood, routine, and conventional activities. He argues, both below and on appeal, that summary judg- ment is improper because whether the claimed invention is well-understood, routine, and conventional is an under- lying fact question for which HP offered no evidence.”

      Looks like absent clear and convincing evidence such as multiple prior art references and/or an examiner’s affidavit, any rejection that attempts to characterize something as “well-understood, routine, and conventional” should be disregarded as mere examiner opinion (which it is).

      1. 15.1.1

        …in other words, the “requirement” for 101 is even more severe than the requirements in 102 and 103.

        This.
        Will.
        Be.
        Gold.

        1. 15.1.1.1

          the “requirement” for 101 is even more severe than the requirements in 102 and 103.

          Not sure how you get there but if that’s true then there’s been a very serious error by the CAFC indeed.

          1. 15.1.1.1.1

            I “got there” by understanding the meaning of the words used by the court as shared in the post to which I replied.

            Have you bothered reading either?

          2. 15.1.1.1.2

            MM,

            If he means what I think he means, then it isn’t actually that controversial.

            The court made clear that “[w]hether a particular technology
            is well-understood, routine, and conventional goes
            beyond what was simply known in the prior art” as “[t]he
            mere fact that something is disclosed in a piece of prior
            art, for example, does not mean it was well-understood,
            routine, and conventional.” Berkheimer v. HP Inc., appeal no. 2017-1437, slip op. at 14 (Fed. Cir. Feb. 8, 2018).

            The PTO itself has already acknowledged this, noting in the MPEP that “[a]n additional element (or combination of additional elements) that is known in the art can still be unconventional or non-routine”. MPEP 2106.05(d)(I)(1). The MPEP even notes that it’s possible where “features were taught by a single prior art reference (thus anticipating the claims) … [that] the features were not conventional and thus were considered to reflect an improvement to existing technology”. Id.

            The MPEP goes farther than I might have expected it to, but I think the court’s statement in Berkheimer should be relatively uncontroversial.

            The same is true, by the way, of its statement that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination”. This is plainly self-evident and isn’t even worth debating. Berkheimer v. HP Inc., appeal no. 2017-1437, slip op. at 14 (Fed. Cir. Feb. 8, 2018).

            You can argue about the legal implications of this, or the relevance to any specific case, but the proposition itself seems unassailable. Even if a fact is common knowledge (e.g. that it’s conventional to put wheels on vehicles), it is still a factual determination.

            1. 15.1.1.1.2.1

              The new MPEP falls short – F A R short on the 101 instructions vis a vis what it takes for a member of the administrative agency of the Executive branch (falling under the APA) must do in regards to the factual predicates of “well-understood, routine, and conventional goes beyond what was simply known in the prior art.

              Painfully so.

            2. 15.1.1.1.2.2

              The MPEP goes farther than I might have expected it to, but I think the court’s statement in Berkheimer should be relatively uncontroversial.

              It’s actually totally incorrect and has no chance of standing up to judicial scrutiny.

            3. 15.1.1.1.2.3

              Even if a fact is common knowledge (e.g. that it’s conventional to put wheels on vehicles), it is still a factual determination.

              Judicial notice exists and there is no requirement under the law to pretend that we were all born yesterday.

              You’re a w @ nker.

            4. 15.1.1.1.2.4

              The MPEP even notes that it’s possible where “features were taught by a single prior art reference (thus anticipating the claims) … [that] the features were not conventional and thus were considered to reflect an improvement to existing technology”

              That makes no sense at all. You can’t reclaim the prior art.

              Period.

      2. 15.1.2

        And should I add (again) that the process of an examiner with his facts fall under the restrictions placed on examiners called “Taking Official Notice”….

        Guess what one item is forbidden from having Official Notice taken?

        A: the state of the prior art.

  9. 14

    > In particular, the court affirmed ineligibility of claims 1-3 and 9 of Steven Berkheimer’s U.S. Patent No. 7,447,713, but found that dependent claims 4-7 were not proven ineligible.

    Now that’s interesting.

    One of the memorandum updates to the Interim Eligibility Guidance states:

    “The IEG states: “After identifying [an abstract idea], identify any additional elements in the claim beyond the judicial exception and explain why they do not add significantly more to the exception. The explanation should address the additional elements both individually and as a combination when determining whether the claim as a whole recites eligible subject matter. It is particularly critical to address the combination of additional elements, because while individually-viewed elements may not appear to add significantly more, those additional elements when viewed in combination may amount to significantly more than the exception by meaningfully limiting the judicial exception.”

    Examiners routinely and invariably skip this step. They identify an “abstract idea,” present some kind of explanation (typically a few sentences of boilerplate), identify a case (typically irrelevant) – and then tack on something like this:

    “The remaining claim elements fail to provide significantly more. The dependent claims are rejected on the same basis.”

    The End.

    The gap between what the IEG requires and what examiners are writing in their office actions is immense. It’s long past time for the PTO to start enforcing some of these IEG requirements as requiring more than copying-and-pasting a line of generic boilerplate.

    1. 14.1

      The examiner approach may well continue to be sufficient to provide a prima facie case of ineligibility.

      1. 14.1.1

        DC>> “to be sufficient”

        I am sure they will continue to do it. But what happens now is wrong. They cause the client to have to respond to extra office actions by providing so little information in the first rejection. I think it also does not comply with the section of the MPEP that says they are supposed to thoroughly examine the application and provide a thorough response.

      2. 14.1.2

        I entirely disagree Prof.

        The mandatory directions (as in binding upon the examiners) is a bare minimum of what it takes. Lacking that, there can be NO prima facie case made.

        And that is outside of the present case here which stands for the fact that facts cannot be “hand waved” – let alone the additional fact that examiners must operate under BOTH APA and USPTO restrictions on how they handle and present facts (and when they must do so).

        How in the world do you suppose that ignoring the directions on how to examine under 101 and the mere presentation of boilerplate would ever suffice to establish a prima facie case?

      3. 14.1.3

        Dennis, do you believe that the kind of § 101 analysis that Alice and Mayo require can be satisfied by a collection of boilerplate recitations? Just gluing together snippets of text from the IEG and Alice, with barely any application to the case at bar?

        In other words: Is patent examination primarily the product of the examiner’s mental Yes/No decision, such that the office action is simply a legal template for a checkbox-style answer? Or does patent law require the examiner to follow a specific analytic process and explain it in the office action?

        This is an enduring question – one that not been directly confronted. It dates back to KSR and beyond, but the divide is definitely growing more severe in the context of § 101.

        1. 14.1.3.1

          David,

          The actual answer is a bit weird with respect to examiners because their office actions generally aren’t a final agency action that is appealable (although there may be some ways to appeal deficiencies in an examiner’s action). However, what is clear is that it definitely does matter at the Board, as the Board has to operate under APA review.

          I believe that my viewpoint is much in line with yours, by the way. I think that examiners have a really difficult job, but that patent examination quality is rather poor in some respects because of the realities of the job and the incentives that examiners face. I don’t blame any single examiner for that, but I think that it would be helpful to realign the incentives so that examiners would be incentivized to put together detailed, specific office actions clearly explicating their reasoning. At the moment, this is definitely not the case, and examiners are in some ways disincentivized from doing so.

          Note that this isn’t just a one way street, as I think that this can result in both bad rejections and bad allowances. On this latter note, I think that many examiners and art units don’t take advantage of KSR nearly as much as they likely could.

          The common thread to both bad rejections and bad allowances is that if you don’t take the time to set forth and articulate a reasoned rejection, then it’s easy to get it wrong. I can’t tell you how many times I write an outline for a brief or come up with an argument for a response and then find it completely fall apart once I have to start specifically articulating my argument.

          The same is true for examiners, and encouraging boilerplate rejections with haphazard citations to portions of references not only enables bad actors to take advantage (I believe that this is the minority of examiners), but additionally can sometimes cause well-intentioned examiners to fail to appreciate some nuance because they didn’t have to actually articulate a logical rejection (and would be less productive than their fellow examiners who choose not to). In this sense, examination can be viewed as a race to the bottom, where competing for productivity makes it hard for an examiner to justify spending a lot of time to articulate each rejection.

          I agree that §101 issues seem to be exacerbating this to some degree (especially in some art units), but as you noted, these issues predated §101 (and in some ways created some of the controversy that led to a desire for an expanded eligibility exception). I believe that these issues also contributed to the call for additional post-grant review, which led to the current IPR issues that some posters on here have done such a great job highlighting.

          1. 14.1.3.1.1

            JCD,

            Examiners are also bound by the APA (as well – as noted – Office restrictions on how facts are treated).

            See my other comments herein.

            1. 14.1.3.1.1.1

              anon,

              (1) Is there a practical effect you have in mind when you say that “Examiners are also bound by the APA”? Generally, you would appeal a Board decision. I haven’t spent enough time thinking about it and researching, so it’s likely that there may be some ways to effect review of examiner action under the APA, but is there something you have in mind? Have you ever successfully appealed an action by an examiner independent of appeal of a Board affirmance of the examiner’s action? Have you ever successfully argued that the Board can’t cure a defect in an examiner action so long as appropriate due process is provided?

              (2) With respect to restrictions on official notice, are you referring primarily to

              -In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970) (not appropriate if not “capable of such instant and unquestionable demonstration as to defy dispute”);

              -In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973) (“[W]e reject the notion that judicial or administrative notice may be taken of the state of the art. The facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and are not amenable to the taking of such notice.”);

              -In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (the Office “cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense”, instead, the Office “must point to some concrete evidence in the record in support of these findings”; and

              -In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002) (“[j]udicial review of a Board decision denying an application for patent is thus founded on the obligation of the agency to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions.”; a “Board decision ‘must be justified within the four corners of the record’”).

              (3) With respect to an agency obligation to abide by its own regulations, are you referring primarily to the Accardi doctrine, its original trilogy of cases (United States ex rel. Accardi v. Shaughnessy, 347 U.S. 260 (1954), Service v. Dulles, 354 U.S. 363 (1957), and Vitarelli v. Seaton, 359 U.S. 535 (1959)), and its progeny? In Morton v. Ruiz, 415 U.S. 199 (1974), the Supreme Court offered an expansive application of the Accardi doctrine applying it to a requirement in an agency’s unpublished internal manual, but it’s not clear how to reconcile this with the subsequent approach in Schweiker v. Hansen, 450 U.S. 785 (1981) where the Court held that a claims manual had no legal force and did not bind the Social Security Administration. Schweiker at 789. Are you aware of any application of the Accardi doctrine to the MPEP or published PTO guidance such as memos? I’ve found some suggestion that back in 2016 the PTO director indicated in an OED final order that the “USPTO’s broad authority does not extend to acting inconsistent with the plain language of its regulations” and that “the USPTO must follow its own regulations and its own unambiguous commands”, but (1) I haven’t been able to track this final order down yet, and (2) I’m not sure how useful it would be outside of a regulation context.

              That’s a lot, but feel free to chime in if you have any helpful thoughts or comments. I am currently working on a brief for the issue of whether a Board’s factual finding that “the claim elements amount to no more than the recitation of … ‘functions that are well-understood, routine, and conventional activities[,] previously known to the pertinent industry’” should be set aside under the APA as unsupported by substantial evidence.

              1. 14.1.3.1.1.1.1

                I wouldn’t bother with any angle that tries to argue the Examiner didn’t “comply” with X, Y or Z. The Board is overly fond of pointing out that any procedural errors have to be brought by petition to the Director. You see that a lot now in their affirmances of 101 rejections, where the Appellant will say “the Examiner didn’t comply with the Guidelines,” to which the PTAB says “tough luck, you should have brought that up on petition.”

                1. JNG,

                  Great point. Do you think that this would insulate Fed. Cir. review of examiner action?

                  5 U.S.C. §704 makes clear that “[a] preliminary, procedural, or intermediate agency action or ruling not directly reviewable is subject to review on the review of the final agency action.”

                  The traditional doctrine of exhaustion of available administrative remedies doesn’t apply, as the Supreme Court has made clear that “where the AP A applies, an appeal to ‘superior agency authority’ is a prerequisite to judicial review only when expressly required by statute or when an agency rule requires appeal before review and the administrative action is made inoperative pending that review.” Darby v. Cisneros, 509 U.S. 137, 154 (1993).

                  37 CFR 1.181 indicates that “The mere filing of a petition will not stay any period for reply that may be running against the application, nor act as a stay of other proceedings”. Thus, it seems clear that this is not a case where “the administrative action is made inoperative pending that review.” Darby at 154.

                  Consequently, although the Board may take the position that any procedural errors have to be brought by petition to the Director, it seems like there is a strong argument that this actually reinforces the position that these procedural errors could be appealed to the Fed. Cir. under the APA as part of the appeal of a Board’s affirmance of an examiner’s rejection even if there was never a petition filed.

              2. 14.1.3.1.1.1.2

                The Office published an official memo directing examiners on the restrictions and requirements of applying “Official Notice.”

                My note to 6 contains a link.

    2. 14.2

      David,

      FYI (you likely already know this, but I post it just in case you or someone else on here does not), the MPEP has now been updated to incorporate much of the interim guidance. For example, much of the language you quoted has been incorporated into MPEP 2106.07.

      Also, my experience has been much the same as yours. Sometimes the Board will find such an approach by an examiner problematic, and sometimes they will affirm. My experience is that you ideally want both a strong substantive argument and a strong procedural argument. In other words, if the examiner does a deficient job of rejecting claims that the Board feels are ineligible, then you may not find much success emphasizing the formal deficiencies.

      1. 14.2.1

        What you want is an eligible invention in the first instance.

        If you’re filing on data processing methods performed by a programmable computer, then you should consider yourself lucky to get the time of day from the PTO.

        I’ll say it again: there is NO such method (or pseudo-method claimed as a “configured to do it” computer) that isn’t tankable by a competent attorney who wants to tank it and who’s hands aren’t tied by a client unwilling to make the best arguments.

        And that’s as it should be.

        You can take your client’s money and file for your worthless patent. Just be sure to cash the check. Your client, of course, will do the same thing when it comes time to con the “investor” out of his money.

      2. 14.2.2

        Agreed JCD.

        Notwithstanding that, the procedural argument ALONE should suffice, given that the USPTO is required – under law – to abide by both its internal regulations as well as the APA.

        I would like to see the Office pay ALL costs associated with prosecution in those cases in which it is found that they do not follow their own rules.

        And then some – penalties should not be out of the question. ESPECIALLY given how particular Art Units within the agency are KNOWN to not follow the rules.

      3. 14.2.3

        My experience is that you ideally want both a strong substantive argument and a strong procedural argument. In other words, if the examiner does a deficient job of rejecting claims that the Board feels are ineligible, then you may not find much success emphasizing the formal deficiencies.

        I agree.

        Every appeal brief that I’ve filed over the last couple of years – and it’s been a lot – has not only identified several deficiencies in each basis of rejection, but also presented an affirmative case for allowance on that general point of law (so that the panel does not think that I’m merely calling out a technicality, and issues a sua sponte rejection that fixes the substantive deficiencies). For instance: not only does the examiner’s § 102 rejection exhibit serious prima facie burden issues; but that the claims recite a technically meaningful point of novelty that is absent from the reference.

        The § 101 argument that I raised above was just one of several such deficiencies. That one problem would fall far short of warranting an appeal. Rather, it is part of an overall theme: the panel can neither hold that it satisfies the prima facie burden nor issue a new rejection that fixes the examiner’s problems. The rejection is both technically flawed in too many ways, and also substantively flawed because the claims recite a clear, significant technical improvement.

        1. 14.2.3.1

          the claims recite a clear, significant technical improvement in the functional terms which my clients find easiest to dream up, and which are easiest for me to understand. Also I like robots. They’re cool! .

          Fixed for accuracy.

    3. 14.3

      “The remaining claim elements fail to provide significantly more. The dependent claims are rejected on the same basis.”

      The End.

      “B-b-b-ut Examiner, our objects are r-r-r-reconciled!”

      Deep deep stuff.

  10. 13

    Longtime careful readers will remember that Judge Moore has infamously relied on her personal memory of computing devices she purchased to assess the state of the state of the art of computing technology, as if her purchasing power somehow gave her access to that knowledge.

    Then at the same time she and her cohorts on the CAFC somehow manage to be impressed by using a “remote server” to do carry out a data processing task … in 1998.

    The US patent system is a f r e a king j 0 ke and the reason why is that the system started granting patents on carrying out logic using a computer. That was an incredibly silly decision and, other than a tiny tiny class of patent attorneys and b0 tt0m feeders, we’re all paying the price for it.

    1. 13.1

      Just as a sanity check:

      I do patent prosecution all over the world. In US, EP, KR, CN, JP, TW (those are the primary ones), and I have done some in CN, MX, Brazil, South Africa, Russia, etc.

      Guess what? It is rare that I don’t get claims allowed in all the jurisdictions that are as broad as the claims allowed in the US. Often, the EP allows claims that the US rejects. I would say it is harder to get an allowance out of the US then the EP right now. Plus, many countries just give you a patent based on the IPRP.

      Anyway, reality. The US patent system is as tough as any system in the world.

      1. 13.1.1

        And I have done this for a number of different technologies. Mechanical, electronic, information processing, etc.

        So, please stop writing nonsense.

        1. 13.1.1.1

          So, please stop writing nonsense.

          Happy TWELFTH anniversary to Malcolm and his nonsense.

  11. 12

    Have we reached the point yet where most patent attorneys were born after the Commodore Vic-20 was marketed to middle school students whose parents shopped at K-Mart (i.e., 1980)?

    If so, what’s the deal with these younger patent attorneys? Like how incredibly clu e less are you?

  12. 11

    Perhaps the PTO needs to simply publish a list of well known facts about programmable computers (i.e., they are conventional data processing tools) to help out the tiny bleating class of willful ign0rami who were simultaneously born yesterday and are also The Most Important Innovators Evah. Then they’ll stop bleating.

    Oh wait: they’ll never stop bleating. It’s all they know how to do.

    1. 11.1

      publish a list of well known facts about programmable computers

      How about a list of well known facts about protons, neutrons and electrons?

      After all, YOU continue to want to use that fallacious “logic”…

      1. 11.1.1

        How about a list of well known facts about protons, neutrons and electrons?

        Pretty sure those are called textbooks. I’ve helped write a couple and I’m sure that’s true of a few Examiners as well.

        It may have escaped your attention, Billy, but the Silly Con Valley Boys are coddled by the PTO in a way that chem/bio practitioners are not. I can make a list of the differences for you, again, in case you’ve forgotten. But we both know that even you aren’t that s t 0 0 pit.

        1. 11.1.1.1

          Pretty sure those are called textbooks. I’ve helped write a couple and I’m sure that’s true of a few Examiners as well.

          Pretty sure that you missed the point there Malcolm.

          Whether or not “textbooks” your attempted “logic” would toss EVERYTHING configured from protons, neutrons and electrons (no matter which optional claim format you may choose to use).

  13. 10

    TELEVISION MINI-SERIES ARE SUPER HOT RIGHT NOW WHY IS THE PATENT SYSTEM NOT RESPONDING?????????

    1. 10.1

      Stop yelling!

  14. 9

    What’s the density of a reconciled object?

  15. 8

    Greetings Dennis

    This is precisely what I posted about last month; the PTAB has insisted repeatedly (in hundreds of published ex parte opinions now) that it does NOT have to provide any facts or evidence in their 101 analyses.

    link to ipwire.com

    This should put a big hole in that argument and force a whole bunch of remands for reconsideration.

  16. 7

    Dennis: The short decision by Judge Moore and joined by Judges Taranto and Stoll is in substantial tension with prior treatment of eligibility analysis that has generally permitted resolution of the issue on the pleadings as a pure question of law.

    Again (and Dennis knows this), in some cases the issue will be a “pure question of law”. That’s because eligibility comes in different flavors (Dennis knows this as well — he just regularly forgets to mention it because …. why? Care to answer to your readers, Dennis?).

    For instance, one flavor is what I would call “bald ineligibility.” This is where the claim doesn’t even pretend to protect eligible subject matter. An example would be “A method of performing math, comprising taking [insert number here] and dividing by [insert another number here].” There is no “factual analysis” required there and most people could see that immediately. Now, it’s entirely possible that a patentee could argue “But wait! Look at my spec. The only example requires a machine to perform the math.” Theoretically, that could persuade an incompetent judge to let the dipute slip past summary judgment. But that hardly ever happens (and such claims are rarely presented).

    A much more common flavor of ineligibility is the routine case where the claim pretends to be eligible by burying the ineligible subject matter inside (or alongside) the recitation of prior art. This is often accompanied by excessive scrivening to further obscure what is being claimed (a typical example is referring to data as some sort of “structure” or by reference to some allegedly “analogous” structure like an “object” — that doesn’t change the data from being data, of course, as every educated person above the age of 12 understands perfectly well). In these routine cases, there is typically no genuine dispute about what is in the prior art. It’s admitted in the specification, either expressly or implicitly (e.g., “one skilled in the art will recognize that there are multiple ways of performing X”). The classic example is the use of a computer to carry out an otherwise ineligible data processing task. Computers are conventional data processing tools. This is not disputable by reasonable people. Juries can’t find otherwise. Nobody can, expect possibly for a few members of the CAFC when they really like the patentee’s hairstyle.

    Dennis: The decision’s unsatisfying distinguishing point is that the court’s prior practice “demonstrate [that] not every Section 101 determination contains genuine diputes over the underlying facts material to the Section 101 inquiry.”

    What isn’t “satisfying” about this well-known fact, Dennis? Please explain.

    1. 7.1

      MM, … a typical example is referring to data as some sort of “structure” or by reference to some allegedly “analogous” structure like an “object” — that doesn’t change the data from being data, of course …

      That’s what had me a bit confused in the Thales case. The claim referred to an “angular rate signal” “measured” by the inertial sensors. But in truth, the inertial sensors did not produce an angular rate signal at all. That signal was computed using the raw data output by otherwise conventional inertial sensors. I had assumed, based upon the language of the claim, and before investigating, that the sensors were a new kind of inertial sensors that output a new kind of signal. I was wrong in that, and the source for confusion lies in the claim itself because of its requirement that the angular rate signal be an output of the inertial sensor when in fact it is not.

      Misleading. And probably intentionally so – calling calculated numbers signals.

  17. 6

    As with a summary judgment, there must be no underlying material issue of fact before something can be decided on the pleadings. In most 101 cases decided heretofore on the pleadings, the only hardware or prior process involved in the claim are generic; and they are being used, not improved. Thus the only issues are legal.

    1. 6.1

      Once again Ned, what you mouth sounds in inherency doctrine and you refuse to commit to such.

      Once again, one cannot “just use” a machine unless one first changes that machine with the reconfiguration that occurs when the software that is “just being used” is added to the machine.

      1. 6.1.1

        one cannot “just use” a machine unless one first changes that machine with the reconfiguration

        Then claim this alleged “reconfiguration” in objective structural terms and your eligibility problems will disappear.

        Once again, folks: if you lack the intelligence or intellectual honesty to have the conversation, then just stay out of it. Repeating nonsense about “reconfigured machines” when the claims don’t describe the “reconfiguration” (and only the function) is a d.o.a. “argument”. It’s not even kindergarten level. Grow. Up.

        1. 6.1.1.1

          claim this alleged “reconfiguration” in objective structural terms and your eligibility problems will disappear.

          I have debunked your statement many times now.

          BOTH along the lines that you seek an optional claim format to somehow NOT be optional,
          (how many times do we need to rvisit that?)

          as well as along the lines that your statement is simply NOT TRUE, nor in accord with the broken scoreboard of the Supreme Court (see Alice, see also the repeated replies on how ANY “software” claim that you do not like CAN BE rewritten in your “physical objective claim terms” by indicating radial dimensions of a Computer Readable Medium that reflects THE EXACT SAME other optional claim format, but would then result in a claim tens to thousands of pages long and for which no human would be able to directly make sense of).

          Your admonition of “Grow Up.” is something YOU should do – but your typical meme of Accuse Others is nothing new.

      2. 6.1.2

        one first changes that machine with the reconfiguration that occurs when the software … is added to the machine.

        “Adding software” to “configure” a programmable computer is conventional.

        Got anything else? Oh wait: you just want to skip to the function, right?

        News flash: “functions” aren’t eligible subject matter.

        Maybe try claiming the method of typing the instructions into the machine. You know: the steps that are carried out by the allegedly “skilled” “artisan”.

        Welcome to the world of grown up patents, “anon.” Unsurprisingly, you’re not going to like it. And we all know why.

        Dennis knows, too. But for some reason he just can’t bring himself to talk about it.

        1. 6.1.2.1

          “Adding software” to “configure” a programmable computer is conventional.

          Adding conventional protons, neutrons and electrons together to “configure” ANYTHING is conventional.

          THAT is your level of “logic” Malcolm.

          Figure that out before yapping the same fallacy over and over and….

          1. 6.1.2.1.1

            Adding conventional protons, neutrons and electrons together to “configure” ANYTHING is conventional.

            And that’s why we aren’t allowed to claim those configurations functionally. That’s why we are required in most cases to present evidence of unexpected results to prove non-obviousness.

            Game. Set. Match.

            Anyone else want to step up and fail? Feel free.

            1. 6.1.2.1.1.1

              Game. Set. Match.

              Except for the FACT that your optional claim format choice is just that:

              optional.

              D
              O

              H
              !

          2. 6.1.2.1.2

            …or as put to you differently (and reflecting your very own admission against interests), the exceptions to the judicial doctrine of printed matter simply do NOT require that any one “printed matter” item must be novel in kind over all other permissible printed matter of the same TYPE.

            ALL that is required is the aspect of “functionally related” – even if the TYPE of “functionally related” is itself conventional.

            Hence: the direct comparison to the VERY conventional nature of the classical fundamental particles of protons, neutrons, and electrons which merely reflects YOUR VERY OWN attempts at “logic.”

            Your fallacy is to both try to condense ALL software to somehow being “the same thing” (when it is clearly not so) AND at the same time try to elevate some non-existent requirement that only novel TYPES of programming (the “non-conventional”) is somehow “required.”

            Under NO view of patent law is such the case.

            Given your prior admissions (against interests) of YOU knowing and understanding the legal meaning and controlling nature of the exceptions to the judicial doctrine of printed matter, ALL of your (rather feeble) arguments to the contrary of your admission must then necessarily be viewed as unethical advocacy.

            1. 6.1.2.1.2.1

              Like I’m going to read that.

              1. 6.1.2.1.2.1.1

                Reading would be but a first step.

                Two other important steps from you would also be required:

                Understanding.
                Incorporating.

                Of course, your feelings get in the way of that, and since you operate on feelings above reason, there is little chance that you all on your own will change your rather unethical advocacy style here on this blog.

                Maybe 12 years of documented blight of this nature is not enough for the editor to realize this, but I guarantee you, most everyone else (except perhaps the blindly zealous antipatentists) quite understand the irrationality in your tactics.

  18. 5

    Judge Moore is correct, in my view. Lets hope we get en banc clarification asap.

    As an aside, this situation illustrates how assigning all patent appeals to a single court can retard the development of the law. Judge Moore would have had to follow Fed. Cir. precedent if she felt it was binding and wasn’t able to distinguish it. Another court of appeals, however, would have been free to write on a clean slate and move the development of the law along much faster.

  19. 4

    “Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”

    This eviscerates 95% percent of the pending 101 rejections, IMO. Examiner’s have been relying on their ability to use this as a hand-waiving maneuver to dismiss claim terms.

    The 101 gravy train just derailed.

    1. 4.1

      This eviscerates 95% percent of the pending 101 rejections

      No, it doesn’t because 95% of pending 101 rejections don’t involve disputes of fact.

      Sticking your head in the sand and pretending that, e.g., computer networks, wireless transmissions and/or “access protocols” were invented yesterday does not create a “dispute of fact” within the meaning of the law. It just demonstrates to the world what a p@ thetic s c u mb@g you are.

      Note that I’m talking about you, personally. I’m talking about the b0 tt0m feeders like the people who wrote these junk claims. There are a lot of them out there.

      1. 4.1.1

        Note that I’m not talking about you, personally.

        Oops. Missed a word.

      2. 4.1.2

        Almost every 101 rejection does not rely on some unfounded claim that a claim element is “well-understood, routine, and conventional.” This requires the examiner to do extra work and find evidence. Basically, game over. Path of least resistance and all.

        1. 4.1.2.1

          Oops “does rely”

    2. 4.2

      En banc guidance from the Federal Circuit would be welcome.

      The PTO’s current guidelines (see MPEP 2106.05(d), part I; Jan. 2018 revision) indicates that “courts have not required evidence to support a finding that additional elements were well understood, routine, conventional activities, but instead have treated the issue as a matter appropriate for judicial notice.”

      And, “A prior art search should not be necessary to resolve the inquiry as to whether an additional element (or combination of additional elements) is well-understood, routine, conventional activity.”

      And further, “an examiner should only conclude that an element (or combination of elements) is well-understood, routine, conventional activity when the examiner can readily conclude, based on their expertise in the art, that the element is widely prevalent or in common use in the relevant industry.”

      This decision recognizing some factual underpinnings to the “well-understood, routine, conventional activity” analysis has at least the potential of requiring supporting evidence on the part of an examiner, rather than simply relying on an examiner’s presumed “expertise”.

      1. 4.2.1

        The PTO’s current guidelines (see MPEP 2106.05(d), part I; Jan. 2018 revision) indicates that “courts have not required evidence to support a finding that additional elements were well understood, routine, conventional activities, but instead have treated the issue as a matter appropriate for judicial notice.”

        Right. What’s the problem with that? Answer: there isn’t any.

        This decision recognizing some factual underpinnings to the “well-understood, routine, conventional activity” analysis has at least the potential of requiring supporting evidence on the part of an examiner,

        And that potential is realized all the time. News flash: not every claim falls under 101, in contrary to the incessant bleating of the eternally whining maximalists. It’s not even close.

        1. 4.2.1.1

          Right. What’s the problem with that? Answer: there isn’t any.

          Except for the fact that it is just not correct, you mean?

          Or are you letting your disdain for ALL innovators and anyone wanting patents to get the better of you again?

    3. 4.3

      Bluto, novelty or newness in something otherwise ineligible is irrelevant. If the only asserted novelty is in that which is ineligible, then the case can be decided as a matter of law.

      1. 4.3.1

        You are doing that “presupposing a witch” thing again Ned.

        Otherwise known as attempting to use the patent doctrine of inherency without committing to it.

        And we both know why you refuse to commit to it, eh?

        Something about “magic” involved in “just using” a computing device that has NOT been re-configured with software…

      2. 4.3.2

        What are you attempting to respond to, Ned? Have you read the case at issue? Assertions by the office that something is “well-known” cannot be sustained without clear and convincing evidence. They even go so far as to state that mere presence of that element in prior art isn’t even enough.

        This has nothing to do with novelty or newness. Blurring the lines between 101/102/103 is a double edged sword that the Fed Ct has just sharpened for any rejection that touts that a claim includes things that are “well-known” or are “generic functions.”

        Without this magic wand, many 101 rejections are not sustainable, especially if the applicant can make a colorable argument that the elements are not well-known or generic.

        Watch for the use of phrases like “well-known” or “generic computer function” to all but completely disappear from 101 rejections in response.

        1. 4.3.2.1

          Bluto, I was trying to point out that no matter how new or nonobvious ineligible subject matter is, it cannot add to whether the claim includes an inventive application. The point is, subject matter that is otherwise eligible must be improved.

          Consider Bilski. It had dependent claims that had in a great deal of detail about the risk reduction procedures and mathematics. But this detail, no matter how unconventional, new and nonobvious, could not support eligibility of the claim because the details themselves were ineligible and they were improving something that was also ineligible.

          Consider the CD-ROM with new music. No matter how detailed the description of the music, an improvement in music cannot support eligibility. If music is ineligible, so is “improved” music.

          You seem to think that adding masses of detail and particularity to the ineligible aspects of the claim can somehow support eligibility. I think that it cannot. We are not here blending 101/102/103, because it is important to consider and give weight in the 102/103 analysis to only to those aspects of the claim that are otherwise eligible.

          Regarding the case at bar, it is clear that the specification disclosed an improvement in computer functionality (the something that is otherwise eligible) by archiving objects non-redundantly thus saving physical space, and by editing object structures one-to-many thus improving efficiency. The court held that the broader claims did not claim either of these alleged improvements. However some of the dependent claims apparently did. Thus, the Federal Circuit remanded back for further consideration.

          1. 4.3.2.1.1

            We are here not blending

            Odd. That is precisely what you are attempting.

          2. 4.3.2.1.2

            “You seem to think that adding masses of detail and particularity to the ineligible aspects of the claim can somehow support eligibility.”

            How in the world did you extract this from my comments?

  20. 3

    Dennis maybe you can start trying to educate people instead of adding to the noise with silly headlines about “is climate change an abstraction” and the like.

    The panel here is simply noting a basic fact: summary j isn’t appropriate when there is s genuine dispute about an underlying fact. In most eligibility cases, there isn’t such a dispute. Everybody knows this and everybody knows why.

    Also these claims are disgusting junk. Give us a break already.

    1. 3.1

      Except everybody has known this since the start of the 101 SJ slaughter. What everybody has been wondering is when the CAFC or SCOTUS would force the lower courts to actually respect the law.

  21. 2

    This has the potential to really upset the cart of SJ motions. (Actually, I said this long ago. Many years ago.)

    For practice tips, I wonder if this doesn’t mean that we should get in expert statements into the prosecution record.

    1. 2.1

      This has the potential to really upset the cart of SJ motions.

      The “potential” was always there and lots of motions for SJ have been denied already, for many years, because there was a genuine factual dispute.

      But in most cases there isn’t a genuine factual dispute. There’s just a patentee or an applicant who is a L I A R and who deserves to be sanctioned.

      My goodness people, wake up already. The behavior of the maximalists has been well-documented for a long, long time. Do I need to start summarizing all the oral arguments for everyone again so we can see how disgusting these P I G S are?

      1. 2.1.1

        You are truly insane MM.

        1. 2.1.1.1

          You are truly insane

          LOL

          Right. I’m “insane” for pointing out facts that are well-known to literally anybody who has been paying even modest attention to the last ten years of 101-related decisions.

          I guess I’m just going to have to start summarizing the oral arguments again. Get ready. I still have some leftover disinfectant and my hazmat suit.

  22. 1

    Who first on this blog posited that an underlying element of the 101 analysis is indeed fact based?

    Yes, that would be me.

    (note Malcolm: this is what comes of applying critical thinking and not merely wanting some parroting from a broken score board)

    The impact of this of course varies as to WHO is doing the 101 analysis, and WHEN that analysis is being done.

    GIVEN that examiners in the USPTO are NOT judges, and ARE constrained by both the APA and their own requirements on how to work with facts (and even unstated taking official notice of facts), there needs to be a serious change – as in updated rigor – applied to the current “hand waving” that examiners so often do in merely declaring “conventional” or “routine.”

    1. 1.1

      It wasn’t you, you ridiculous excuse for a human being.

    2. 1.2

      Using computers to carry out logic is routine.

      1. 1.2.1

        Using iron to build machines is routine.

        1. 1.2.1.1

          Not sure what your point is.

          Claim your iron machine using 0bjective structural terms that distinguish the iron machine from prior art iron machines and you will not have an eligibility problem. Same is true of silicon machines.

          Seriously: if you lack the intelligence to have the discussion, then stay out of it.

      2. 1.2.2

        Using atoms to build molecules is routine.

        1. 1.2.2.1

          Using atoms to build molecules is routine.

          Not sure what point you’re trying to make here.

          If you claim your molecule in objective structural terms distinguishing it from prior art molecules (and molecules found in nature), you won’t have an eligibility problem.

          Seriously: if you lack the intelligence to have the discussion, stay out of it.

          1. 1.2.2.1.1

            “Seriously: if you lack the intelligence to have the discussion, stay out of it.”

            HAHAHAHA!! That’s the funniest thing I’ve read from Minnie Mouse in a long time!

            1. 1.2.2.1.1.1

              You still read Malcolm’s blather? You can’t get that time back, you know.

              1. 1.2.2.1.1.1.1

                I think you are right Atari Man.

              2. 1.2.2.1.1.1.2

                Unfortunately, Atari Man, that “blather” if not refuted garners a “semblance of truth” (at least to those that want to believe it, like Martin Snyder for example), and follows the very well known propaganda maxim of “repeat a L 1 E often enough….”

                Pretending that Malcolm has not said anything just is NOT effective in the larger scheme of things.

                Why else do you think that he has persisted for twelve years now spooning out the very same blight?

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