Is it Patent Eligible?

Eligible?:

1. A method for implementing a blackjack game in a physical casino, the method comprising:

providing the physical casino with a physical gaming table with a felt layout on top of the gaming table, the felt layout including a plurality of betting circles imprinted into the felt layout;

providing one or more physical decks of cards;

receiving a wager from the player in the form of one or more physical chips in a player’s betting circle of the plurality of betting circles;

dealing, using the one or more physical decks of cards, cards for a player’s hand and cards for a dealer’s hand;

enabling the player to play out the player’s hand;

resolving the dealer’s hand, comprising, upon meeting a bum condition of a number of the cards for the dealer’s hand exceeding two and a point total of the cards for the dealer’s hand exceeding a predetermined amount and equaling a preset total,

burning a card in the cards for the dealer’s hand and dealing an additional card for the dealer’s hand; and

resolving the wager according to predetermined blackjack rules.

PTAB says not eligible. Ex Parte Hall, APPEAL 2017-002594, 2018 WL 460997 (PTAB Jan. 12, 2018). The Board’s two step analysis is as follows: (a) the claims are directed to the abstract idea of “rules for conducting a wagering game;” (b) although the claims is tied to physicality, it does not provide “something significantly more than a claim on the abstract idea itself.”

126 thoughts on “Is it Patent Eligible?

  1. 16

    This thread is a little old in the tooth (especially for the anti-patent drive-by monologue “sAme one” “contributors, but the title fits the topic of the link:

    link to yahoo.com

    From the link:

    The researchers think the particles might flit from one nearby atom to another as they pass through the rubidium cloud—like bees in a field of flowers. These passing photons can could form “polaritons”—part photon, part atom hybrids. If more than one photons pass by the same atom at the same time, they might form polaritons that are linked. As they leave the atom, they could stay together as a pair, or even a triplet.

    In other words, the nature of the “intangible” “wavelength” of a photon, through the dual nature of particle/wavelength is now even more so becoming clear that tangible particles can be CONFIGURED.

    Someday the reality of the universe will be caught up to by the legal chicanery of such decisions such as In re Nuitjen

  2. 15

    anon The real issue is that the score board is broken.

    The real issue is that you’re an entitled whiner.

    My goodness give us all a break already you ridiculous inf@ nt.

    1. 15.1

      LOL – as the Accuse Others meme is being worn clear through…

      A break already? How about your 12 years of documented blight?

  3. 14

    Scope of enablement is the way to think about it. The only problem in the Morse case was the use of the word “any”.

    Plus, Diehr is not worth thinking about. It is a contrivance to get around Benson.

    The way to think of 101 is that Benson needs to be expressly overturned with legislation along with Alice. Read Deener.

    The endless prattle about is ridiculous.

    1. 14.1

      Again, too, according to the people on here a computer with any software is the same as the computer. OK. Then what if the computer is hooked up to a machine that builds molecules (which is possible as we know how to construct any molecule). Then every molecule is per se obvious as being disclosed already.

      Etc. You see, when you try to mis-characterize science, it always breaks in some way.

      1. 14.1.1

        Night Writer,

        Let me amend your statement “just a touch:”

        according to the people on here a computer with (ANY) software is the same as the computer with NO software.

        That statement is the very essence of the Grand Hall Experiment, introduced in the comment section of this very blog many years ago now.

        There have been a sum total of ZERO views that have taken that thought experiment, appreciated the meaning of that thought experiment, and integrated the lesson from that thought experiment and have been able to maintain the anti-patent rhetoric that is blasted out time and again and again and again (from the likes of the exact sAme ones on this blog).

        Zero.

        Until the issue is approached with some semblance of inte11ectual honesty on the plain facts of the real world, ALL that we will see in the comments section here is the sAme exact type of drive-by monologue statements that make up the Internet style “shout down” that the anti-patentists engage in.

        Nothing more.

        The counter points have long been on the table of dialogue.
        They need to be read.
        They need to be acknowledged.
        They need to be understood.
        They need to be integrated into the anti’s arguments.

        1. 14.1.1.1

          And, the reason they are intellectually dishonest and anti-patent judicial activist is that they won’t engage in real debate. They simple ignore the facts that don’t suit their agenda.

          1. 14.1.1.1.1

            they won’t engage in real debate

            LOL

            I’m ready to “debate” at any time. Suit up your finest. You ain’t it, I can tell you that.

            And if “not engaging” is a real problem for you, take your miserable whining over to Big Jeans place where anyone who doesn’t parrot his inane talking points is banned. Ya silly hypocrite. Grow up already.

            1. 14.1.1.1.1.1

              Your comments here are simply and rather unsurprisingly untrue.

              Noting you put “debate” in quotes, as it is no wonder that you refuse to reply what Night Writer actually wrote: real debate.

              Such would include inte11ectual honesty – of which you are bereft.

              And again, your 0bsess10n with Quinn surfaces, and you are clearly not correct about what it takes to get banned there. Unlike this blog which puts up with your L I E S for a full dozen years now, engaging in the tactics that are your forte are what will get you banned.

              By the way, did you see this:
              link to ipwatchdog.com

              Ya silly hypocrite. Grow up already.

              says the site’s biggest hypocrite and one needing most to grow-up….

              Not surprising, since your number one meme has long been Accuse Others Of That Which You Do.

        2. 14.1.1.2

          The counter points have long been on the table of dialogue.

          Yes, the alleged “counterpoints” are stale and they smell.

          They need to be read.

          That happened a long time ago.

          They need to be acknowledged.

          The alleged “counterpoints” were acknowledged to be vapid and non-responsive.

          They need to be understood.

          LOL. They were pretty easy to understand to the extent they weren’t self-serving or gibberish.

          They need to be integrated into the anti’s arguments.

          No, Billy. That’s not how it works.

          1. 14.1.1.2.1

            LOL – except for the fact, “Billy” that the only reason why you refuse to “have that work” is because of your antics would cease to exist.

            I am sure that shocks no one.

      2. 14.1.2

        NW according to the people on here a computer with any software is the same as the computer

        Nobody is saying that. You’re taking the result of a legal analysis of a patent claim and confusing it with a non-legal statement about an object.

        It’s like ranting on a criminal defense blog that “According to the people on here k lling a person with a gun is the same as k lling them with a baseball bat.” Well, for certain legal purposes it is the same. Mocking people in this manner just makes you look like a f king id i 0t.

        1. 14.1.2.1

          You’re taking the result of a legal analysis of a patent claim and confusing it with a non-legal statement about an object.“:

          You are being entirely dishonest.

          What exactly about the intersection of “non-legal statement about an object.” AND “the result of a legal analysis of a patent claim” are you having difficulty with, Malcolm?

          Other than your feelings getting in the way?

    2. 14.2

      Night, if using a computer and making a new computer are the same thing, then why did Benson come out the way it did?

      1. 14.2.1

        Ned,

        Why did Benson say this:

        It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

        1. 14.2.1.1

          Anon, there is a quite a bit of difference between categorically holding that software is eligible regardless of what it is based upon it being loaded into a computer and allowing the eligibility of software that improves computer or computer system functionality. If software is categorically eligible, it would permit the patenting of business and mathematical methods that do nothing about improving computers or computer systems.

          It is down what surprising that you do not see the difference. But you have been arguing this point for generations indicating either that you do not see the difference or are incapable of seeing the difference.

          1. 14.2.1.1.1

            “categorically”

            STOP right there.

            Do you remember all of the dust kicking that you have done over that particular word?

            Think about it – it goes back YEARS.

            NO ONE is attempting to say “categorically” for ANY subset of ANY statutory category. Instead, the obfuscation (from you) comes in with attempting to use the “ly” as opposed to the normative “as a” – as in, “as a category, one cannot dismiss or attempt to denigrate methods of any kind, given that methods are a FULL EQUAL category, just as valid as any of the hard goods categories.

            Now, then, let’s try to parse through your attempted obfuscation here.

            You want to NOT draw to the plain facts of the matter as exemplified in the Grand Hall experiment, is that correct?

            You want to NOT admit – on its face – that there is IN FACT no magic and that an actual physical change MUST occur when looking at a time slice between a machine PRE-software loaded and a machine POST-software loaded (and in which the machine is necessarily changed due to that REconfiguration that occurs with the loading of the machine component called software.

            Is that correct?

            Please answer these questions first – without guile or subterfuge.

            Once you answer these questions – and establish in an inte11ectually honest manner – that the basis of MANY of your very own arguments are without – in fact – merit, THEN we can get to the second phase of your questions wherein you seek to insert “policy” concerns.

            (At this point we do not even have to dismiss your facial fallacy regarding business methods).

            As it is, you seek to obfuscate while claiming it is I that somehow “does not see” something.

            No Ned, the “not seeing” here is YOU and your desired tactics.

            Those tactics f00l no one.

            It’s time instead for you to be inte11ectually honest.

            1. 14.2.1.1.1.1

              The test of whether the computers in the great hall experiment are new is whether they are the same or different when one turns them off and then turns them back on again.

              1. 14.2.1.1.1.1.1

                And that turn off/turn on does not help you.

                YOU still have to face the facts that when a machine is changed and reconfigured when that software is loaded, you have – in fact – changed the machine.

                Software simply does not – and cannot – operate by “magic.”

                1. when a machine is changed and reconfigured

                  Claim the “reconfiguration” in objective structural terms distinguishing the “reconfigured” machine from prior art machines on that basis and your eligibility problems will disappear.

                  Go ahead.

                  Otherwise you’re just claiming logic “on a computer.” And logic is ineligible subject matter. This is an Alice problem that you need to overcome, which is to say that it’s a fundamental problem that you can’t overcome.

                  So you’ll kick up dust and whine, whine, whine.

                  Game. Set. Match.

                  [shrugs]

                2. in objective structural terms

                  Yet again you trot out your optional claim format as if that were anything but an option.

                  Software is not logic – as you well know, so you might as well stop that dissembling.

                  Game. Set. Match.

                  Not in your favor, so your continuing to [shrug] remains most odd.

              2. 14.2.1.1.1.1.2

                Ned, this is just like a way to convince ignorant people. Please stop this.

        2. 14.2.1.2

          Why did Benson say this: “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.“

          Because (1) they were clueless, (2) they were spineless, and (3) the issue was poorly briefed because that wasn’t the issue squarely before the Court.

          Note that the Supreme Court has completely reversed itself in short periods of time (relatively speaking). Bowers v. Hardwick lasted less than 20 years and it isn’t ever coming back. Your beloved dicta (LOL) in Benson is worth diddly squert. Less than your beloved dicta (LOLOLOL) in Bilksi.

          Just wait for the back of the hand, “anon.” It’s coming at you. Ouch.

          1. 14.2.1.2.1

            Bowers….?

            What are you sniffing?

      2. 14.2.2

        Ned >Night, if using a computer and making a new computer are the same thing, then why did Benson come out the way it did?

        Ned, please stop trying to cleverly simplify. “Using a computer”? Is that what it is? Or is it inventing an information processing method/machine and then using a general purpose computer to implement your invention?

        We both know the answer. Ned, the CAFC/SCOTUS can proclaim that the Sun orbits the Earth, but that doesn’t make it so in fact.

        1. 14.2.2.1

          but that doesn’t make it so in fact.

          The real issue is that the score board is broken.

          Note how Ned (among others) try to “defend” the broken score board by merely – and without critical thought – try to say “The score board says…” when the fact of the matter is that the score board is now a mess of a self-conflicting Gordian Knot.

          For all of the jumping on the band wagon to use the Court’s ad hominem towards patent attorneys (i.e., “scriviners”), the Court itself exhibits a woeful application of its own “scrivining.”

          Those of us who are attorneys should look deeply at our own State attorney oath and see if our fealty be with the Court (above the Constitution) or with the Constitution (with each and every branch constrained by that Constitution.

          As noted previously, the single exception of the Commonwealth of Massachusetts clearly designates OUR duty.

          Some, such as Ned, subvert that duty when the broken score board aligns with their personal views of what should and should not be patent eligible. Their desired “Ends” are used to justify their “Means” of turning a blind (but selectively blind) eye to the violation of the separation of powers that occurs – for patent law – with the legislating from the bench.

          As I have noted, common law is all fine and good – for those places wherein common law is applicable. The statutory law that is patent law is NOT one of those places, given how patent law has been set forth in OUR Constitution.

          Until there is a Constitutional amendment and the power to write patent law is set differently (or Congress again chooses to share its authority properly), EVERY attorney should be aghast at what the Supreme Court is doing.

          1. 14.2.2.1.1

            “anon” Their desired “Ends” are used to justify their “Means” of turning a blind (but selectively blind) eye to the violation of the separation of

            *click* (((((((((YAWN)))))))))

            Give it a rest, hypocrite. You don’t give a shert about the “separation of powers” and we all know it. You’re just a glibertarian trying to stuff his pockets and spewing shert everywhere while you do so.

            1. 14.2.2.1.1.1

              …except for the fact that you are wrong, continue to be wrong and the only thing that you can do is to spout your usual stream of mindless and pointless ad hominem.

              Try a little substantive arguments on point instead of the ad hominem.

              You won’t.
              You can’t.

        2. 14.2.2.2

          Night Writer,

          Also take note that Ned will NOT address the quote from Benson.

          This will NOT be the first time that Ned runs away from that quote. It will not be the last time.

          1. 14.2.2.2.1

            anon, that is part of the game they play. They ignore anything that doesn’t fit their agenda.

            if I had to guess, I’d say that Ned is getting money for pushing this. Either directly or by being accepted by his mentor R. Stern (the author of heart of of all evi1 of patent law–Benson.)

            1. 14.2.2.2.1.1

              Night Wiper: They ignore anything that doesn’t fit their agenda.

              Projection, folks. It’s a thing with these people. They can’t help themselves.

              1. 14.2.2.2.1.1.1

                Projection, folks. It’s a thing with these people. They can’t help themselves.

                Says the absolute Queen of Accuse Others Of That Which Malcolm Does…

                Stultifying.

  4. 13

    Plus, Deener. Read that case.

  5. 12

    Greg DeLassus This is aesthetics, not law properly speaking, and at the point that patent tribunals are doing aesthetics instead of law, one really has run badly off the rails.

    Looks like we have another vote for eliminating design patents entirely. Definitely an idea whose time has arrived. Let’s make an even bigger f0 0l out of Dave “Kappy” Kappos, shall we? Assuming that’s even possible.

    I’m sure the glibertarians are with me, right? Smaller government and all that. Right? Right? (LOL – hypocrite sc um b@gs)

  6. 11

    Of course this claim is ineligible. My goodness what a pile of junk. Why on earth would we want this g@ rbage in our patent system?

    Best part: the Repu k k k e and glibertarian types out there weeping and moaning that these patents aren’t granted while at the same time they p ss themselves and cry about “big government.” What an incredible bunch of ign 0r ant hypocritical s cu m b@gs.

    1. 11.1

      From below: Valid claims can have as much printed matter as they want. The printed matter is just not given patentable weight in 102/103 considerations.

      The so-called “printed matter doctrine” is nothing more than an eligibility analysis applied in a particular context and rephrased using different language (much as the EP couches its subject matter eligibility analysis as part of its consideration of “inventive step”). Note that the same hypocrites who spent years soiling themselves over “claim dissection” (“not allowed! not allowed! wah! wah!”) never got worked up at all over the so-called printed matter doctrine which performs the identical analytical steps: identification of what’s “printed matter” (i.e., ineligible information) and what isn’t (i.e., the otherwise eligible physical structures or physically transformative methods). If what isn’t “printed matter” is in the prior art or obvious (i.e., conventional) then the claim is dead.

      Deal with it, folks.

      I’m also trying not to laugh here as Risch seems to suggest that the USPTO isn’t granting enough patents on enough junk. Games would be so much better and more fun if only there were more patents on them! Then again, Risch also believes that teaching a robot how to use logic to park a car should be patentable which is really just another way of saying that Risch is a really cr@ ppy driver and probably gets on the freeway slower than a blind 97 year old.

      1. 11.1.1

        LOL – you and your inane attempts to portray the judicial doctrine of printed matter (leaving out of course the important exceptions to that judicial doctrine).

        Leaving out material items – how fricken usual for you, eh Malcolm?

        1. 11.1.1.1

          (leaving out of course the important exceptions

          The so-called “exceptions” aren’t relevant to my points I’m making about the relationship between the so-called “doctrine” and 101 (a relationship which you don’t deny, presumably because you can’t … although that hasn’t stopped you in the past LOL).

          Well, I guess the so-called “exceptions” are relevant to the hypocrisy of you and your cohorts who screech about how “abstract” is just impossible — impossible! — to understand. But somehow “functionally related” (LOL) is the clearest thing ever. Sure it is! Because you say so.

          1. 11.1.1.1.1

            The so-called “exceptions” aren’t relevant to my points

            B$.

            Try again – those are DIRECTLY on point.

      2. 11.1.2

        Actually I wonder if I’m confusing Risch with someone else. I’m sure he’ll be along to clarify his position on the patentability of methods of using logic to pilot a car (which is totally different from using logic to decide where and how to toss or kick a ball at a person or object).

        1. 11.1.2.1

          Your 0bsession with piloting cars is noted.

          You ARE confused, as that is YOUR strawman and NO ONE has the “position” that you straw man about.

  7. 10

    I’m surprised no one on this thread brought up the Fed. Circuit’s In re Smith. There, the card game was found ineligible, but the Federal Circuit opined that the if the deck of cards had been “non conventional,” then the outcome would have been different. I didn’t read the case, but I’m assuming that the PTAB would be following In re Smith here, arguing that the deck of cards and table provided in the claims are conventional (we all know that 35 USC 100(b) has now been “interpreted” out of the statute).

    An interesting question might be this: What if the layout of the felt gaming table was a non-conventional layout? Would this be the same as a “non-conventional deck of cards” referred to in In re Smith?

    1. 10.1

      Agreed. See note 8.

    2. 10.2

      Here’s a thought: if you invent a “non-conventional” (i.e., non-obvious) card table, then just claim it like a reasonable grown up would.

      The game playing by the maximalists is utterly transparent and this is one of the recurring issues that proves what a pile of know-nothing b0t t0m feeders they are.

      If you think you’ve got some “non-conventional” eligible structure, then claim it as such.

      If you don’t, then get the f ck out of the patent system.

      1. 10.2.1

        Again, you have absolutely nothing intelligent to add.

        1. 10.2.1.1

          Twelve years now, Bguy, twelve years.

  8. 9

    A CORREct determination.

  9. 8

    A method of organizing human activity, including games, is not patentable as such. However the means for implementing such gains may be patentable provided they provide a new or improved machine, manufacture, process or composition.

    Here, it is quite apparent that there is no new means provided. Thus there is no patentable invention disclosed.

    1. 8.1

      Does that fit with (slightly altered):

      A method of organizing human activity, including curing disease, is not patentable as such.

      Where exactly does this “organizing human activity” come from and what does it mean?

      I am sure that it is a “soundbyte” from somewhere, but wielded in a vacuum (as here by Ned), it’s a bit meaningless.

      1. 8.1.1

        Where exactly does this “organizing human activity” come from

        For starters, there is the First Amendment jurisprudence. If your patent prevents me and my friends from organizing ourselves, then you’ve got a Constitutional problem. But go ahead and pretend otherwise, “anon”! You’re a very serious glibertarian and totally not a hypocrite who will do and say literally anything if it makes you feel good at that moment.

        It also comes from the fact that “organizing human activity” typically includes laying abstractions over existing human activity. Consider five people sitting around a table talking. Ancient stuff. But wait! One of them is a “Blarphant” (in charge of “reconciling”), the other is a “Curtort” (with a “plurality of attributes”), the other is a Parser (in charge of — wait for it — “parsing stuff”) and yet another is in charge of keeping track of everybody’s favorite DVD purchases. Totally new! And therefore totally patent worthy, according to the typical maximalist “analysis” of Things that Definitely Should Be Patentable. Because what harm could there possibly be in making some rich people richer by giving them the ability to sue other people for organizing themselves? Gee, it’s such a difficult question.

        and what does it mean?

        It definitely doesn’t mean “anything involving a human” which is something that only a brainwaveless derpshert like you would suggest.

        1. 8.1.1.1

          You mouth FA and – as usual – fail to make anything even remotely substantive as a tie to something that might pass as a legal position .

          Try again.

          1. 8.1.1.1.1

            Would LOVE to see a case that deals with patents and FA aspect of freedom of assembly – if any such thing exists outside the confines of your mind and in the real world.

            Please provide that
            Surprise me.
            Thrill me.

            Or just be your usual bloviating self.

          2. 8.1.1.1.2

            You mouth FA and – as usual – fail to make anything even remotely substantive as a tie to something that might pass as a legal position

            LOL

            Here’s a guarantee: go ahead and challenge the restriction against “organizing human activity” and see how it turns out. I can tell you how it will turn out: my arguments will be tracked pretty much perfectly and your arguments will be mocked.

            Been there, done that. Several times now. I know you’d love to pretend otherwise but I’ll never ever let that happen. You’re a useful (ahem) t0 0l in that regard.

            Would LOVE to see a case that deals with patents and FA aspect of freedom of assembly

            Then go ahead and challenge the restriction against patents that protect “organizing human activity.”

            [shrugs]

            News flash: intelligent attorneys don’t need “case cites” directly on point to win their case. You haven’t noticed this? LOL

            1. 8.1.1.1.2.1

              I do not need or want a “guarantee.”

              Just do as I ask.

              OR – as you are doing now, merely continue your usual bloviating.

              Been there, done that. Several times now

              Pure B$. – you have never done that.

  10. 7

    Although I don’t know the game of blackjack very well, where’s the novelty?? Isn’t this how the game is already played in every casino in the world and has been for centuries? Unless I’m somehow not noticing some important feature in the claim, then for completeness it should also have been rejected under 35 USC 102 as being anticipated.

    1. 7.1

      Mark, whether or not the game rules themselves are new are obvious is completely irrelevant. Invention has to be in the means – the new or improved machine, manufacture, etc.

      1. 7.1.1

        So was the processed grain in Deener a new manufacture? Or what was it?

        1. 7.1.1.1

          Notice another one of these inconvenient truths that the antis just pass on every time.

  11. 6

    PTAB’s guide to making Alice rejections:

    Step 1: Generalize the claim until you are able to form a sentence with 6 words or less. Very important: do not look at the specific limitations of the claim. In most cases, using the claim’s preamble is sufficient.

    Step 2: Say the rest of the claim does not amount to significantly more than the sentence you made up in Step 1.

    Pro tip – If the applicant argues against the rejection, say the applicant has not offered evidence the claim is patentable. If applicant counters with evidence, say evidence is not needed for a 101 rejection.

    1. 6.2

      Hmmm, you babble just as if you either do not understand the issues presented by Bilski-> Alice, willfully refused to understand, or are incapable of understanding. I am sure the readers of this blog know which of these applies to you.

      1. 6.2.1

        As readers know what applies to you Ned (and your quite frankly asinine view that there are no problems with the Supreme Court line of 101 cases, when it is beyond clear that the entire mess of Supreme Court 101 jurisprudence is one giant ball of Gordian Knot).

        YOU are the next to last person who should be lobbing insults on “understanding the issues.”

        1. 6.2.1.1

          anon, jumping up and down and saying the sky is falling does not make it true.

          When you say things like a programmed computer is a new or improved machine without more tells me that you simply will not accept reality.

          1. 6.2.1.1.1

            Your comment is awaiting moderation.
            February 10, 2018 at 5:07 am

            Ned,

            You are the one not accepting reality and wanting some type of “magic” to account for new capabilities with no change.

            Attempting to turn this around and Accuse Others Of That Which You Do is such the Malcolm move.

            It does not work for him. Why do you think that it will work for you?

          2. 6.2.1.1.2

            Ned, >>When you say things like a programmed computer is a new or improved machine without more tells me that you simply will not accept reality.

            That is without question reality. The CAFC/SCOTUS can’t change science. They can make proclamations and make us write briefs that say it so, but we all know it is not so, in fact.

            1. 6.2.1.1.2.1

              Ned reminds me of a clergyman from the middle ages who would argue that of course Galileo was wrong because the Church says the Earth is the center of the universe and all things rotate about the Earth.

              He employs that level of critical “thinking.”

            2. 6.2.1.1.2.2

              Night, you have to face facts. Rich decided Benson based upon the fact that in his view a programmed computer was eligible per se as a new machine. The Supreme Court did not follow his reasoning or even discuss it, finding instead that the invention was the otherwise ineligible mathematical algorithm and limiting the claims to computers was like limiting the claims to pen and pencil.

              Rich’s reasoning may have been impeccable given the promise. But as premise was obviously not given any weight by the Supreme Court indicating that there is something severely wrong with the premise.

              1. 6.2.1.1.2.2.1

                Ned,

                YOU are the one that needs to face facts – as in the facts of the real world, and NOT the results of any particularly broken score board.

                You hide behind foibles and broken score boards, much as clergymen in the times of Galileo hid behind the edicts of the church.

                For you to then turn around and tell someone else – anyone else – to “face facts” is plainly ludicrous and asinine.

                YOU continue to (selectively) “adore” the Supreme Court as if they could do no wrong, when it is beyond clear that they not only can do wrong, but HAVE done wrong.

                May I remind you that your State Attorney Oath for California does NOT place the Supreme Court above the Constitution when your Oath spells out your legal and ethical obligations?

              2. 6.2.1.1.2.2.2

                The history of Benson is that it was an attempt to make software ineligible by a one R. Stern head of IP at the Justice Department. Everyone knew that it was judicial activisim.

                Benson is without question the worst decision ever for patents in the USA.

                Benson had nothing to do with reason or science. It was an attempt to swallow all of information processing into one of the exceptions that the SCOTUS pulled out of their you know whats.

                1. Night, regardless of the attitude of the Justice Department at the time, all I want you to do is focus on what the Supreme Court did. It did not adopt the reasoning of Judge Rich which would have held the claims eligible simply because of the use of a computer to run the claimed mathematical algorithm based upon the thinking that a program modified the structure of a computer.

                  The Supreme Court specifically stated that it was not holding software ineligible, acknowledging that software could possibly improve a computer. Indeed, there is no doubt that some software such as operating systems there were in fact improve computers.

                  But note that the OS is there after he turned the power off and turn the power back on again. That is not the case when one is using a computer or a hand-held calculator to calculate a mathematical algorithm.

                2. one is using a computer or a hand-held calculator to calculate a mathematical algorithm

                  LOL – what you are “shifting to” is NOT software.

                  Tell me Ned – do you rewrite software for you computer EVERY TIME you turn it on in the morning?

                3. Ned,

                  What I do agree with is that the SCOTUS hasn’t figured this out yet. They are in a mode of limiting patents and the SCOTUS has little integrity.

                  You know, it kind of gets ridiculous when you say that software that can drive cars, diagnose tumors, etc., is not patent eligible.

                  The projection now is for software to replace hundreds of millions of jobs in the next 50 years.

                  How in the world would a technology that is replacing 100’s of millions of jobs not be patent eligible? That is simply madness and illustrates how much power money has in this country.

  12. 5

    IF the claim merely had one step, “providing the physical casino with a physical gaming table with a felt layout on top of the gaming table, the felt layout including a plurality of betting circles imprinted into the felt layout.” Do you think the claims would still have been found to be directed to an abstract idea? I think its nonsense that courts are holding claims like these to be abstract when claims that would have recited less would not have been found abstract.

    Nevertheless, the claims are fairly useless since the claims likely require 2+ parties to infringe . Normally the entity who provides a blackjack table (i.e. table seller) does not also receive bets (i.e. dealer)

    1. 5.1

      The table seller sells the table. The claim does not recite “selling the table.” The casino owner “provides” the table to the physical casino.

      The bigger problem is method claims having elements that are not “acts.” “Enabling the player to play out the player’s hand” is not an act. If I tell you to “enable me,” you would have no idea what that means. Eventually, Williamson will extend to method claims and these will start being interpreted as 112(f).

      1. 5.1.1

        Enable me has meaning. As in, wait or give them a card if they ask for it.

        1. 5.1.1.1

          Which dictionary exactly is it that defines “enable” as “to wait or give a card upon request?”

          If it is defined it in the spec, then its essentially 112(f). If the spec doesnt provide specific acts for “enabling” it should be indefinite. Just like apparatus claims and 112(f) and made up words.

          1. 5.1.1.1.1

            If it is defined it in the spec, then its essentially 112(f)

            That is not how 112(f) works.

            I smell Slashdot/Techdirt stench….

            1. 5.1.1.1.1.1

              Yeah, 112(f)?? lol…

          2. 5.1.1.1.2

            Cause no one in a casino knows how to enable a person to finish playing a hand of blackjack.

    2. 5.2

      IF the claim merely had one step, “providing the physical casino with a physical gaming table with a felt layout on top of the gaming table, the felt layout including a plurality of betting circles imprinted into the felt layout.” Do you think the claims would still have been found to be directed to an abstract idea?

      No, it would be simply be found anticipated.

      What’s your point?

      If you added a limitation like a “non-0bvious” message printed on the table (i.e., “Mike the guy who comments at PatentlyO smells like elderberries”) then that limitation would be “ignored” and the claim would still be found anticipated. Why would it be “ignored”? Because that information is ineligible subject matter (also happens to be abstract). “Ignoring” that limitation is just another way of saying that the claim is ineligible which is just another way of saying that you aren’t “innovating” you’re just being a j@ ck @ s s.

  13. 4

    Under 101 as written: subject matter eligible
    Under S. Ct. jurisprudence as it currently stands: not subject matter eligible
    Under 102/103: not patentable- they should have asked me how I’ve dealt Blackjack before. (no comment on 112 at this time)
    PTAB and the Courts need to focus on 102/103 rather than trying to sweep everything under the 101 rug.
    Congress needs to step in.

    1. 4.1

      [T]he Courts need to focus on 102/103 rather than trying to sweep everything under the 101 rug.

      Amen!

      1. 4.1.1

        The peanut gallery: [T]he Courts need to focus on 102/103 rather than trying to sweep everything under the 101 rug.

        Except that the vast majority of rejected claims are still being rejected under 102/103, and not 101.

        Pretty sure it’s not “the Courts” who have “lost focus” here.

        1. 4.1.1.1

          Obtuse. Is it deliberate?

          (he clearly is NOT talking about non-101 items)

  14. 3

    ” (a) the claims are directed to the abstract idea of “rules for conducting a wagering game;””

    Nonsense. The claim in not directed to the abstract idea “rules for conducting a wagering game.” It does not preempt all rules for a wagering game. The claim is directed to particular methods of playing particular games. I only use the plural here because 16 and 21, or other threshold values are not specified and variations on the game are possible by changing those values.

    1. 3.1

      Les, you have not “Gisted” high enough.

    2. 3.2

      Agreed. Mind you, it is far from clear to me that the claim encompasses anything that might be called “useful,” so I think that it still fails on §101 grounds. Utility is not the same as subject matter eligibility, however, and the eligibility of this claim really ought not to be in dispute.

      1. 3.2.1

        I think the casino raking in $$$ would disagree with useful…as would the people getting free drinks for playing…js

        1. 3.2.1.1

          I think the casino raking in $$$ would disagree with useful

          And Re pu k k ke s aren’t r@ cists! Because they say so.

          1. 3.2.1.1.1

            ?

            Aside from your (usual) political feelings, what point are you trying to make?

            That you FEEL that those who use the patent system to make money (even those raking in $$$) are “B A D”…?

            Do you inform your “clients” of this view of yours?

            1. 3.2.1.1.1.1

              what point are you trying to make?

              That asking casino owners whether they think card games are “useful” is like asking Repu k k k es if they’re r@ cist.

              You know what answer you’re going to get and it’s guaranteed to be wrong.

              1. 3.2.1.1.1.1.1

                You keep on fixating.

                Maybe try to just answer the question WITHOUT the ad hominem.

                (LOL, like that will ever happen )

  15. 2

    Where can I find an “objective physical structure” for this thing called “significantly more?”

  16. 1

    See my article A Surprisingly Useful Requirement. link to papers.ssrn.com

    You never even need to get to subject matter/abstract ideas – this is a pretty clear printed matter doctrine failure, which is an offshoot of practical utility.

    1. 1.1

      Haven’t read your paper yet, but I would posit that games certainly have utility.

      Some improve physical dexterity, some improve mental acuity, some do both.
      Further, how many game patents have been granted (without any quibbles as to eligibility)?

    2. 1.2

      eeks – 56 pages Michael…?

      I will say this though – your beginning distinction between utility and usefulness is problematic in view of how innovation works.

      Very often the beginnings of disruptive innovation wold not pass your distinguished “usefulness” screen, thereby artificially limiting innovation (and steering it into the more mundane “improvements thereof” category.

      1. 1.2.1

        56 pages is short! Thanks for reading. Comments:
        1. Yes, that’s right – some disruptive innovation might not be useful in the legal sense – a general idea to do something. But I have a pretty expansive view of utility
        2. There are actually not that many game patents at all, given how many games there are
        3. The dexterity types of usefulness you describe in games are all functional – not just another use of printed matter.
        4. Note that I’m not saying I would say games are not patentable – only that traditional doctrine makes it clear. My discussion makes clear it is much more nuanced, and that the rules might be patentable sometimes:

        “The application of rigorous practical utility to ordered information is not without complication. Board games, for example, present a thorny problem. People have been patenting “game boards” for some time. Technically, a game board with no other parts is nonuseful printed matter; the game is printed on cardboard (an old medium) and has no new practical usefulness. Only the first-ever board game had novel usefulness for entertainment as a game. All subsequent board games had the same entertainment use as the first one.
        However, game-board patent claims typically include additional parts and their interaction with the game board as part of the invention. The claim is to not just the board, but to the combination of the board, the supplemental parts, and their interactive function. Such claims add new practicality—people use the different parts in a new way for a different purpose (a new game), much the same way they might play a new kind of musical instrument or gambling machine, both of which have eligible practical utility. On the other hand, if a known set of game pieces is used—with or without different labels—then the game pieces could not be patented because they are not new. The printed-matter limitation is only on the physical structure; the new game rules might be a new and useful process for using the old game.”

        1. 1.2.1.1

          Just a game to try to limit patents. Give me a f’ing break.

        2. 1.2.1.2

          Prof Risch, anon is far to indolent to actually read the paper. He/she might glance at the abstract to see if it confirms any bias or is “wrong” on this level or that.

          On the substantive questions: IMO new designs for board games should be protected by copyright- as may be designs for felts for table games or other printed materials.

          If Congress has not spoken of utility for games as games in totality (not physical structures used in games, such as a better pin setting machine for bowling), it would be a question of law for the CAFC, but IMO games confer the utility of entertainment devices and should pass the utility requirement of 101.

          On the information aspect however, as in many of these eligibility treads, I  link to my thoughts regarding human consumption of information as the ultimate certainty of abstraction.

          These claims are to information, as you identified, and that information is consumed by persons, rather than non-human actors, in the completion of the method to a result. Thus they should be ineligible, again IMO.

          1. 1.2.1.2.1

            The question is why a copyright should mean no patent. I address this question a bit in Everything is Patentable.

            As to games, where my article mostly lands is that a new game with old parts has no new practical utility, but a method for playing the game might have that utility.

            1. 1.2.1.2.1.1

              Because in a practical, everyday business sense, the copyright is sufficient to prevent the kind of direct copying that would cost profits or sales in a game market.

        3. 1.2.1.3

          2. There are actually not that many game patents at all, given how many games there are

          Gee, I wonder why.

        4. 1.2.1.4

          Rescued from the filter (maybe):

          Your comment is awaiting moderation.
          February 10, 2018 at 9:41 am

          “56 pages is short!”

          I see why you state that.

          I find fault in your immediate writing along a number of vectors – including the “too short” aspect.

          Along that aspect, you are simply trying too hard to say too much in too short of a space. ALL of your arguments suffer from that crabbing.

          I also find fault along fundamental views of both fact and law.

          Along the fact vector is that it appears that you do not grasp innovation theory, and want (especially) a prong of your usefulness to have an inordinate impact on patent eligibility.

          That is to say, the factual predicates of innovation OFTEN will show a negative trend against “current practices” and you would want to create a requirement for showing a positive trend – the exact opposite of what innovation provides (and this in especially the short term is especially detrimental to the very reason why a patent system would be put in place as it is in the nascent stages where protection from established interests is MOST beneficial).

          Your view would actually – and substantially – HARM innovation.

          From the legal vector, you also appear to want to place MORE policy type controls with the wrong branch of the government. Under your suppositions, usefulness (contrasting with utility) will only place legal certainty in more jeopardy, as you infuse even more “policy” leverage in the unaccountable (and unaccounting) judicial branch as opposed to how the legal system is set up with the Legislative branch – being most accountable – set to determine policy.

          I also find your attempted coverage muddling. For example, the entire aspects of usefulness in regards to damages can be – and should be – separated from any discussion on eligibility, and yet you want to conflate the two.

          I find TOO much emphasis in your article on some sense of “overlap” when the best law is that law that brings clarity (rather than that law that provides a lack of clarity because of conflating different sections of law).

          The piece evidences impacts of other discussions, and some of the footnotes leave the impression that the items actually discussed are not discussed fully or even in a manner that would allow one to draw conclusions on the items in the article. Hinting at other items not present that would need to be considered is simply p00r writing. I suggest that you take more time and make your pieces more focused.

          Q: How do you eat an elephant?
          A: One bite at a time.

      2. 1.2.2

        He is just tying to create a useful witch. A new way to invalidate claims of a patent without comparing it to the prior art and determining obviousness.

        Shameful.

    3. 1.3

      “You never even need to get to subject matter/abstract ideas –this is a pretty clear printed matter doctrine failure”

      You seem to be suggesting the claims are invalid because they contain printed matter. But printed matter in a claim doesnt make the claim ineligible or unpatentable… Valid claims can have as much printed matter as they want. The printed matter is just not given patentable weight in 102/103 considerations.

      1. 1.3.1

        Yeah, I might dial this back a bit since it is a method claim – per my comments above.

        1. 1.3.1.1

          I see from your bio that you are a dabbler in computer code. I see a pattern where people that learn to program, but never figure out what they are actually doing, i.e., never understand the theory of computation and never understand the underlying electronics of computers.

          The pattern is one of somehow thinking that programming is like writing and should not be patentable. The reality is that the environment that has been created to support your programming merely masks almost all the underlying processes.

          Do us a favor, before you write anymore about 101–ever–takes some classes at Villanova in EE and learn how to make a chip. Also, take some classes (probably have to go to U of Penn) in the theory of computation.

          Then come and talk to us.

    4. 1.4

      Prof. Risch,

      I’ve spent a lot of time recently diving through eligibility jurisprudence and articles and I wanted to say that your articles Everything is Patentable, 75 Tenn. L. Rev. 591 (2008) and Nothing is Patentable, 67 F. L. Rev. 45 (2015) were very insightful and incredibly helpful.

      One thing that struck me in my own review of Supreme Court eligibility jurisprudence is that the general rationale for the Court’s decision in Morse is well reasoned (Morse “prevents others from attempting to improve upon the manner and process which he has described in his specification,” and “[h]e can lawfully claim only what he has invented and described, and if he claims more, his patent is void.” Morse, 56 US 62, 120-121 (1853)) and makes a lot of sense, but that it is difficult (arguably impossible) to reconcile all subsequent eligibility decisions under this rationale.

      Not surprisingly then, I generally find the premise of overbreadth as a foundation for eligibility exceptions outlined in your article with Lemley, Sichelman, and Wagner, Life After Bilski, 63 Stan. L. Rev. 1315 (2011) to be incredibly compelling. It seems like the Supreme Court in Mayo found it persuasive as well. In reading the article, I was intrigued to see the note that “[e]ven the outcome, though not the methodology, in the troublesome case of Parker v. Flook might be explained by our theory.” Id. at 1335.

      One potential theory that I have been playing around with is the idea that Supreme Court eligibility jurisprudence can be understood as using 35 U.S.C. §101 as a vehicle to continue to incorporate the foundational concern that applicants provide sufficient quid pro quo for a patent. See, e.g., Universal Oil Prods. Co. v. Globe Oil & Refining Co., 322 U.S. 471, 484 (1944) (“the quid pro quo is disclosure of a process or device in sufficient detail to enable one skilled in the art to practice the invention once the period of the monopoly has expired.”)

      Within this framework, 35 U.S.C. §101 could be understood as requiring sufficient quid pro quo (in the form of disclosure of an invention) in exchange for a patent. This framework is clearly in line with Morse and the overbreadth premise, but potentially offers a way to reconcile Flook as well.

      For example, 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)) could be understood as holding that the discovery of a novel mathematical formula is not sufficient quid pro quo for a patent.

      Obviously, this doesn’t actually answer any of the underlying questions raised, for example, in Prof. Lefstin’s excellent article Inventive Application: A History (67 Fla. L. Rev. 565 (2015)), but I’ve been trying to figure out if it’s helpful in trying to reconcile some of the seeming disparate rationales under a coherent framework.

      1. 1.4.1

        [T]he Court’s decision in Morse is well reasoned… and makes a lot of sense, but that it is difficult (arguably impossible) to reconcile all subsequent eligibility decisions under this rationale.

        Yep. That pretty much says it all. Morse makes good sense, and everything about Morse that is worth keeping in the patent system was incorporated into §112(a), as interpreted by the CCPA’s (mostly Judge Rich’s, really) pellucid “written description” jurisprudence. That aspect of Morse that has been shoe-horned into §101 jurisprudence, however, has been useless at best and positively inimical to the sound function of a patent system at worst.

        1. 1.4.1.2

          Greg, Morse in the case it relied upon, Neilson, make a lot of sense if you consider that in each case the claim at issue arguably was claiming a natural phenomena at the level of abstraction. In Neilson, the courts eventually gave Neilson’s patent because he had disclosed and claimed a specific implementation, albeit very broadly: the heated box between the bellows and the furnace. The claim in Morse failed because it did not include any of the specific means or methods for implementing the principal.

          This approach applies equally well to claiming unpatentable subject matter if one considers that ultimately the requirement of the claims is to claim an the invention that is itself a new or improved manufacture or mode of making a manufacture (Statute of Monopolies) or its American version, 101.

          You should also be aware of Westinghouse v. Boyden Power Brake where the Supreme Court held that a functionally claimed apparatus should be construed to cover the corresponding structure described in specification and equivalents. Thus the common mode of construction of functionally claimed elements at the time of Halliburton was to construe them to cover the corresponding structure etc. and equivalents. Halliburton upset that applecart because such claims were indefinite in its view. Congress passed 112 (f) to restore Westinghouse. Thus today, it should not be an objection that a claim is claimed as a result, because the courts should construe such claims under 112(f) thus preserving their validity.

          Thus the application of Morse today is singular: Morse is applicable when invention being claimed is not otherwise directed to subject matter that is a manufacture, etc. under the Statute of Monopolies, or under a new or improved machine, etc. under 101.

          1. 1.4.1.2.1

            Yet again Ned misrepresents the law and attempts to place the process category as a mere subset of the hard goods categories.

            Ned intimates that the modern day equivalent of 101 is strictly like the statute of monopolies and disregards what Congress actually did in 1952 and 35 USC 100(b).

            No doubt this is due to his Windmill Chase against methods of doing business.

          2. 1.4.1.2.2

            Morse is applicable when invention being claimed is not otherwise directed to subject matter that is a manufacture, etc. under the Statute of Monopolies…

            I expect that you are correct about this, but that really proves my point. Determination of what is and what is not a “manufacture” is so famously arbitrary in the law as to be a joke. Copper discs are not manufactures (United States v. Potts, 9 U.S. 284 (1809)), but cut coral is (Hartranft v. Wiegmann, 121 U.S. 609, 615 (1887)), despite the fact that much more human effort is required to turn copper ore into copper discs than to cut live coral from the sea bed.

            The question of “how much” transformation is necessary to move something into the “manufacture” category lies entirely in the eye of the beholder, and has no more to do with “law” properly speaking than does the length of the Lord Chancellor’s instep. It is precisely this aspect of Morse (and not the aspect that gives rise to our modern “written description” law) that brings disrepute on patent law and frustrates the ends that patent law was meant to serve. This is aesthetics, not law properly speaking, and at the point that patent tribunals are doing aesthetics instead of law, one really has run badly off the rails. This is what is wrong with the recent efforts to make use of Morse in the §101 context.

            1. 1.4.1.2.2.1

              (it is not out of bounds to note who (and what animus that “who” carries) is wanting to so conflate and obfuscate 101.)

      2. 1.4.2

        JCD,

        Once again adoring Flook without recognizing that Flook was cabined by Diehr is pure legal error.

        1. 1.4.2.1

          anon,

          I appreciate the reminder and caution. I don’t think it’s accurate to say I adore Flook, more that it is a challenging case to reconcile with much of the other jurisprudence so I tend to spend a good bit of time thinking about it. In general, I tend to spend way more time reviewing the older jurisprudence which finds ineligibility than that that which finds eligibility, so yours was a good reminder to go back and re-read Diehr.

          1. 1.4.2.1.1

            Rescued from the filter (maybe):

            To JCD at 1.4.2.1:

            Your comment is awaiting moderation.
            February 10, 2018 at 5:12 am

            “more that it is a challenging case to reconcile”

            Some things cannot be reconciled – and one should note that attempts to do so may just simply end up doing MORE damage to the law.

            The bottom line in the 101 fiasco is that the Supreme Court has messed things up.

            Attempts to “reconcile” or somehow ignore this fact are flawed at their heart.

            Look again at your attorney oath. Outside of the Commonwealth of Massachusetts, I know of NO attorney oath that places the judicial branch ABOVE the Constitution.

            And for good reason.

            AND To JCD at 1.4:

            Your comment is awaiting moderation.
            February 10, 2018 at 9:59 am

            “using 35 U.S.C. §101 as a vehicle to continue to incorporate the foundational concern”

            JCD,

            You overlook one critical element: that “concern” is NOT within the powers of the Supreme Court.***

            The Supreme Court had its authority to set the meaning of the word “invention” through common law evolution S T R I P P ED away in the Act of 1952.

            ANY of this “using as a vehicle” for the Court to legislate from the bench VIOLATES separation of powers concerns.

            This is nothing more than a sign that the Court is addicted to a power it no longer has.

            Not only is this understanding critical for the sake of the law itself – it is critical for anyone attempting to create some coherent and cohesive view of the Supreme Court decisions that themselves are NOT cohesive.

            ANY objective view of the history of the Supreme Court decisions will show that the underlying authors and their views – their policies – have shifted back and forth and CANNOT be unified into one cohesive view.

            The problem of the Court “using common law” is that the Supreme Court itself does not hew to the strictures of “settling” through common law. The Supreme Court does whatever the F it wants to – past decisions be dammed. THEY do not care if their latest decision does not square with an earlier one.

            A student of history can see this is one of the drivers for Congress finally getting fed up with the Supreme Court (as well as the Supreme Court’s anti-patent views) and prompted the Congress to rewrite patent law in 1952.

            The saying: “those who do not learn from history are bound to repeat it” is exacerbated with the fact that the scoreboard is broken and the ISSUE of the scoreboard being broken is not being taken up by academia of by Congress.

            We’ve been through “policy from the judicial branch” as driver, and it has turned out very badly for innovation protection.

            *** Turning back to this thought, the power that the Supreme Court DOES have is a power to decide whether THE LAW is Constitutional or not – and certainly NOT at the level of a patent-by-patent thumb on the scale. The Court is acting ultra vires when it wants to place its thumb on the scale (or its finger into the nose of wax). What the Court could do – and the only thing the Court could do – would be to declare the law as written as being unconstitutional, and throw out 35 USC 101 in toto. The Supreme Court simply lacks the Constitutional authority to rewrite 35 USC 101 to be a version that they would prefer.

            And the fact that the Court has been “getting away with it” in the past is not – and cannot be – ANY justification for continuing to allow it to happen.

            It’s time – it’s well past time – to take back authority over the statutory law and put that law on solid ground. The Supreme Court has made a Supreme mess of eligibility.

            Again.

            1. 1.4.2.1.1.1

              anon,

              To be honest, I really haven’t spent that much time thinking about my feelings with respect to that argument, as I have primarily been focusing on reviewing existing Supreme Court jurisprudence. I’m always interested in hearing positions and arguments, though.

              Just as an FYI, I thought I would note the argument that:

              (1) The language in Article II, Section 8 of the Constitution providing that Congress shall have power “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” can be argued to only grant power for “securing for limited Times to … Inventors [an] exclusive Right” when it “promote[s] the Progress of Science and useful Arts”.

              (2) The judicial exceptions articulated by the Supreme Court have been indicated to be driven by “the underlying functional concern … [of] how much future innovation is foreclosed relative to the contribution of the inventor.” Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S.Ct. 1289, 1303 (2012).

              (3) “[T]he rule is settled that, as between two possible interpretations of a statute, by one of which it would be unconstitutional and by the other valid, our plain duty is to adopt that which will save the Act” and “[e]ven to avoid a serious doubt, the rule is the same.” Blodgett v. Holden, 275 U.S. 142, 148 (1927).

              (4) Putting this together, the judicial eligibility exceptions can arguably be justified as interpreting 35 U.S.C. §101 in a manner such that the statute will not unconstitutionally allow for the grant of patents which will not “promote the Progress of Science and useful Arts”.*

              * Note that this argument is still potentially undermined by the Court’s seeming acknowledgment that its current jurisprudence may sometimes exclude a patent that would “promote the Progress of Science and useful Arts”.

              I also feel like I should note that this does not really address the additional issue re the appropriate understanding of the terms process, machine, manufacture, and composition of matter. Ned generally is a great resource for this, and Stevens’ concurrence in Bilski is really interesting reading as well.

              1. 1.4.2.1.1.1.1

                I have seen – and deposed – this argument many times previously JCD.

                At each turn that you insert some “wiggle room” with “supposing this” or “supposing that” the room for error increases until you arrive at the condition today in which the errors by the High Court have made a muckery of the plain law.

                You have slippery slope positions all over the place and do not even recognize how far down that slope you have slidden.

                Your (1) has been defused as hortatory and NOT geared to each individual patent (even if the other “sliding factors” were not present).

                Your (2) has been defused as whatever “driving” may have been allowed PRE-1952, when the Court DID HAVE common law power to set the meaning of the word “invention,” THAT power was removed by the Act of 1952.

                Your (3) has been defused as merely one of “savings” – where that savings is appropriate and does NOT excuse turning the judicial power from one of proper interpretation to one of actually rewriting the statutory law.

                Your (4) has been defused as merely your bootstrapping from (1) through (3) to arrive at a Court doing what it is NOT supposed to be doing. You have stepped through with small breaks to the scoreboard until the scoreboard is truly broken and then don’t want to notice the larger picture. THAT is very much part and parcel of the problem.

        2. 1.4.2.2

          Exactly right anon. JCD is entering witch thinking.

          1. 1.4.2.2.1

            I saw an infomercial last night for a WitchFinder3000. It slices and dices claims, all without the pesky Congressional and judicial restrictions on written description and obviousness rejections!

      3. 1.4.3

        Scope of enablement is the way to think about it. The only problem in the Morse case was the use of the word “any”.

        Plus, Flook is not worth thinking about. It is a contrivance to get around Benson.

        The way to think of 101 is that Benson needs to be expressly overturned with legislation along with Alice.

        You are entering the world of witch thinking.

        1. 1.4.3.1

          I meant Diehr.

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