Eligibility Fails: Improving the Physical Realm vs. Improving an Abstract Idea

by Dennis Crouch

In SAP America v. InvestPic (Fed. Cir. 2018), the court repeated a number of well known maxims regarding patent eligibility:

  • Even if the underlying invention is “‘[g]roundbreaking, innovative, or even brilliant,’ . . . that is not enough for eligibility.”  Quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
  • Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”)

InvestPic sued SAP for infringing its patented method of analyzing investment information. U.S. Patent No. 6,349,291. Claim 1 reads as follows:

1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample space, wherein the sample space includes at least one investment data sample; (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and, (c) generating a plot of the distribution function.

After considering the claims, the district court granted SAP’s motion for judgment on the pleadings — finding that the claimed process of “performing statistical analysis” is an ineligible abstract idea.  In particular, the district court saw core of the claim as being directed toward an ineligible mathematical calculation.  The field limitation (investment data) and generically claimed usable output (“a plot”) were insufficient to transmute the idea into a golden claim.  On appeal, the Federal Circuit has affirmed:

The focus of the claims, as is plain from their terms, quoted above, is on selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis. That is all abstract.

Distinguishing this case from McRO, the court appears to have recast that case as focusing on the “physicality” of lip-syncing:

The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in a mathematical technique with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here. And those claims also avoided being “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.

The court goes on:

Here, in contrast, the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results.

75 thoughts on “Eligibility Fails: Improving the Physical Realm vs. Improving an Abstract Idea

  1. 10

    Where in the words as actually used by Congress in the Act of 1952 (for 35 USC 101) do we find this “search for inventive concept” thing…?

    Why is it that no one wants to see the elephant in the room that this very “search” is the thing that Congress REMOVED from the Supreme Court when Congress opted INSTEAD to break up the prior single paragraph that contained the words of 101 into the separate sections of 101/102/103 – with the deliberate choice of going to the path of obviousness INSTEAD of “search for inventive concept” or “gist of the invention” or simply “gist” or the dozens of other terms that the Court has used prior to 1952 when it had the (borrowed) authority of Congress to mold patent law with the power of common law development.

    Funny how “academia” does not want to touch this critical aspect….

  2. 9

    I like this opinion, and the fact that it is precedential.

    I like the way that it articulates so directly the basic truth that mathematical concepts and entities belong to a category of abstract ideas that, unlike the “various databases and processors” mentioned on page 12 of the opinion, are not to be found “in the physical realm of things”.

    And it may be worth noting that Judge Taranto would presumably be more qualified academically than most in the patent community to opine on the nature of mathematics, given that he was enrolled in Ph.D. programs in mathematics before transferring to law school, and presumably majored in mathematics. In any event, a Google search brings up a page related to a 138 page publication called “Mathematical Truth” authored by him, published by Pomona College in 1977, which presumably would have been an undergraduate thesis of some sort.

    What is a probability density function? In many instances a function from the set of real numbers (or some interval thereof) to the set of non-negative real numbers.

    And what is the real number system?

    An introductory textbook on real analysis will often begin with a characterization of the system of real numbers as a Dedekind-complete ordered field. Thus it is a set of entities provided with binary operations of addition and multiplication and an ordering for which the ordered field axioms are satisfied. And the requirement that it be Dedekind-complete requires that every non-empty set of real numbers that is bounded above necessarily has a least upper bound.

    I take it as given that there are only a finite number of elementary particles (such as electrons and photons) in the physical universe. It then follows that the real number system cannot be instantiated as a structure in the “physical realm of things”. After all a Dedekind-complete ordered field must have infinitely many elements, and no finite set (with any additional structure) can have the essential properties, such as the “Least Upper Bound Property” stated above, that characterize Dedekind-complete ordered fields. And even if one were to look for an instantiation of something resembling the real numbers in the geometry of space time, I also take it as given that, on a length scale significantly less than the Planck length, the nature of “spacetime foam” is highly unlike that of a segment of the real line of mathematics.

    Then, given that the real number system, as understood by qualified mathematicians, having the properties of a Dedekind-complete ordered field, must lie in some category of abstract ideas that lies apart from “the physical realm of things”. Therefore a mathematical function from the set of real numbers to itself must similarly lie in a category of abstract ideas comprising mathematical entities. And what about the exponential of -4. Maybe a string of symbols, such as “exp(-4)” may convey to the mind of a qualified mathematician a particular mathematical entity that exists as an element of the Dedekind-complete ordered field that is the field of real numbers. There is nothing in “the physical realm of things” identical to exp(-4).

    And a plot of a probability density function, such as that of the normal distribution, is nothing other than printed matter conveying information to the human mind about properties of an abstract idea. The fact that some of that information is apparent in the way the graph goes up and down does not take one outside the abstract realm. An analogous example that springs to mind is ancient Egyptian hieroglyphs, which can be pictorial in characters. And presumably, is someone ignorant of the English language is told that certain words represent farm animals, that person might have a reasonable chance of identifying the particular animals associated with the phonemes “Baa”, “Moo”, “Oink” and “Woof”.

    Thus there seems to me to be substance in the distinction made between a plot or “report” conveying properties of a “probability density function” on the one hand, and the subject-matter of McRO on the other (though I would regard McRO as having been wrongly-decided).

    I also note with approval the fact that the opinion recognizes that there is more than one category of “abstract ideas”. Thus “investment data” falls within another category of abstract ideas. Thus I would view it unreasonable, on the part of some in the patent community, to expect some dictionary-like definition that delimits the various categories of abstract ideas that implicate section 101 “subject-matter” considerations.

    ===

    And to my way of thinking, if one specifies a process “in the physical realm of things” consisting of an algorithmic set of rules for processing data in electronic form, it seems unreasonable to suppose that the process infringes if that data can be construed to be “investment data”, but does not infringe if the data happens to be “toxicity data”. When the infringement analysis is dependent on such taxonomy classification of species of “data”, then that is evidence that the claim is “directed to” a patent-ineligible abstract idea.

    1. 9.1

      Where pray tell are those mathematical algorithms if not physical? They are performed by spirits no doubt. Sweetie, mathematical algorithms take time, space, and energy to perform. A mathematical algorithm needs a physical representation to be performed.

      Witch talk.

    2. 9.2

      Thanks DP,

      Let me just add:

      Math,
      Applied Math,
      MathS.

      The distinctions between these may be critical here.

  3. 8

    The only interesting part of this entirely predictable decision is that the CAFC moved away from a strict “Alice step 1 / Alice step 2” approach. There is no reference to the steps of Alice. Which I think is a move in the right direction, given that it has become increasingly clear that step 1 and step 2 are essentially the same thing.

    1. 8.1

      ? How in the world do you think that the two are essentially the same thing?

      That’s some other-dimensional “Gisting” that you have got going on there…

    2. 8.2

      I can certainly agree that—as the CAFC applies it—the two prongs of the Mayo test are collapsed into one and the same thing. If you think that the court never even mentioned the two-prong nature of the test in this opinion, however, then you might want to read it again (slip op. at 11, “Because the claims are directed to an abstract idea, we must proceed to the second stage of the Alice inquiry”).

      1. 8.2.1

        They did apply both steps separately. They even broke it up into sections. See section II(a) vs II(B)

  4. 7

    1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample space, wherein the sample space includes at least one investment data sample;

    I can’t select an investment data sample entirely in my head. Neither can I display investment data in my head.

    You can’t close your eyes and envision a number?

    1. 7.1

      Ooops, meant to be a response to Les at 1.1.3, below.

    2. 7.2

      There is a difference between a random number and an investment data sample.

      Also, while I can close my eyes, when I do so, I do not see numbers, neither can I conjure up a number.

      It may be because I get bogged down in font selection.

      1. 7.2.1

        aka, “investment data sample” is NOT “just a number.”

        But Malcolm should already know this – he is merely dissembling (as usual).

      2. 7.2.2

        There is a difference between a random number and an investment data sample.

        If there is, it’s not apparent in the claim:

        “1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample space, wherein the sample space includes at least one investment data sample;”

        The sample space is stock in Abstract iDan Corp – ADC, currently going for $2 per share. Yesterday it was only $1 per share, so I’m doing great.

        “(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process;”

        I could be snarky and say that the bias parameter can equal 0, with no randomness, so the re-sampled statistical distribution function is merely an average of yesterday’s value ($1) and today’s value ($2), or $1.50. But let’s use a more realistic example, since we’re likely trying to predict the future stock value: let’s say our function is today’s value plus (the difference between yesterday and today’s value, times a bias parameter of 0.1). So, now we’re predicting that tomorrow we should be at $2.10 ($2+(2-1)*0.1).

        That bias number determines a degree of randomness, since it’s making the estimation based off values it does not control – namely yesterday and today’s values.

        “and, (c) generating a plot of the distribution function.”

        Yesterday, we were at 1. Today we’re at 2. Tomorrow we’re at 2.1. Imagine a graph with those numbers. You’ve generated a plot.

        I think this case came out exactly right… There may well be an invention here having to do with what that distribution function is and how they calculate it, but the claim is at such a high level that it both covers generically forecasting stock values with even the above simple calculation, and can be easily performed in one’s mind.

        And I think the court was correct on McRO, as well as their distinction here. McRO’s claims actually recited how the computer performed the lip syncing, not just the result to be achieved. Many of these other cases the courts have found to be ineligible similarly focused on the what, and not the how (Electric Power being one of the best examples). McRO wasn’t achieving a new result, but had a new way of getting there that wouldn’t be done by humans.

        1. 7.2.2.1

          I think the court was correct on McRO, as well as their distinction here. McRO’s claims actually recited how the computer performed the lip syncing, not just the result to be achieved.

          Use the same methodology you used here to attack McRO’s claims and you’ll come to the same result that you came to here. McRO’s claims aren’t limited to hour long animated features. Last time I checked they cover a disembodied “mouth” that hums.

  5. 6

    Random Guy: Suppose I have an old camera and I use it to take a picture of a new widget. That system (or method) is non-obvious because the prior art lacks knowledge of the widget. But the camera itself is functioning the same – the camera doesn’t care what it’s pointed at. The function of 101 is to protect the dedication to the public of the camera, and not subject the camera’s functionality to continual re-monopolization.

    This is absolutely correct for what it says (although there is more behind 101 than this).

    But let’s not leave the other shoe hanging in the air. Instead of a camera, let’s take existing display technology that is connected (as it has been in the prior art for eons) to existing computing (i.e., logic-executing) technology. Why are we subjecting these devices to “continual re-monopolization” based on what is being displayed? Why would we want to do that? What evidence is there that handing out patents on this junk “promotes”, e.g., the “innovation” of, e.g., “improved” look-up tables or better logic? It should go without saying that there are no “new” displayed images or series of displayed images that can’t be scrivened as a “concrete” (using this panel’s nomenclature) method of “achieving a result” (e.g., a method for displaying a “new” image or series of images). In these cases the computer and display are “functioning the same”, regardless of the alleged new-ness of the underlying logic, in the exact same manner that the camera is “functioning the same” when it “takes a picture”. Neither the computer nor the camera “cares” about the information being displayed or preserved, respectively. Nor does the object being photographed or displayed, for that matter.

    The key fundamental distinction — which the panel recognizes but chooses to dance around and kick dust upon — is novel non-obvious physical transformations of matter versus vaporous (abstract) transformations of matter (e.g., pixels on a screen conveying meaning). Eventually a decent attorney is going to take the CAFC by the hand and walk them home. Until then, the farce will continue.

    1. 6.1

      Instead of a camera, let’s take existing display technology that is connected (as it has been in the prior art for eons) to existing computing (i.e., logic-executing) technology. Why are we subjecting these devices to “continual re-monopolization” based on what is being displayed?

      Calling it existing display technology begs the issue. Prior to McRO (which I assume is what you’re talking about) a computer could not draw a mouth on its own, it could only display pictures that a human had pre-drawn for it. McRO introduced the ability for the computer to draw a mouth forming certain sounds on its own.

      When all that is being asked of a programmer is to utilize ordinary skill to translate an act to the computer realm, the argument for giving patent protection is very weak. People know how to tell a computer to, e.g., perform statistical computations, so implementing statistics on a computer is not much more than a claim to the statistics themselves. But people did not know how to order a computer to draw aesthetically pleasing on its own, and it is not something that translates from the artist to the computer very well. Whether the shape of a mouth looks accurate for the sound the mouth is making is largely an aesthetic judgment call, what the opinion called a gut instinct, which a computer simply doesn’t have.

      The act is just different in kind from conventional programming. Just as in DDR – the way in which computers generate and access files creates problems unique to the computer realm, and solving those problems is a technological advancement which is more than just applying the act in a different field of use.

      You and anon have the same problem on different sides of the coin: anon always thinks that merely having a computer do something, without considering if you required any new technical teaching to get it to work, is inherently eligible. If you go to an a computer programmer and tell him “I have an idea for new functionality” and he immediately says “Oh yeah that’s easy to code” you’re running the risk of ineligibility, because you may simply be implementing an abstract idea in a particular field of use. You, on the other hand, ignore that computer programming is an art that needs to be advanced as well, so when you go to that programmer with the idea and he has no idea how to implement it and it takes him significant, inventive effort in order to come up with a solution, that effort is protectable (only to the extent of the solution you came up with, not to anything which achieves the same functionality, which is what bites a lot of patentees). The question is whether you’re attempting to advance the art of computer programming, such as in Enfish, DDR, or McRO’s rules (perhaps as opposed to his claims) versus whether you’re running a novel but ineligible idea through a computer programming translation (something like EPG or Alice), which doesn’t advance the art of computer programming at all.

      Contrary to your argument, the display was not re-monopolized, nor was the previous way of doing it – an artist drawing different mouths and just using those – re-monopolized. The only thing that was monopolized was something that didn’t exist beforehand: particular rules which were conveyed to the public which were beyond the skill of one of ordinary skill to come up with on their own. What got monopolized was the teaching on how to translate.

      McRO is simply Alice if people didn’t have the skill to code intermediated settlement. That’s the only major distinction. When you essentially write a new chapter in a computer coding textbook, you get a patent. When all you do is apply already-existing textbook chapters to allow a computer to do processing for you, you don’t. There is nothing surprising about the result that improving the art should be protected, that’s the point of patent law.

      1. 6.1.1

        You could not be more wrong, Random.

        You continue to confuse and conflate 101 and 103 (neglecting, of course, the last line of 103).

        Your “thinking” is most definitely pre-1952, pre-Flash Of Genius.

    2. 6.2

      Why are we subjecting reconfigurations of protons, neutrons and electrons to “continual re-monopolization”….?

  6. 5

    DC: Distinguishing this case from McRO, the court appears to have recast that case as focusing on the “physicality” of lip-syncing

    Indeed they did, which is absurd. But of course McRO has to be “recast” (and no doubt will be “recast” again before it’s tossed in the trash bin of history) because McRO is an internally contradictory pile of self-serving horse manure.

    If “displaying” an image of a moving mouth on existing display technology turns an abstract logic exercise into a “physical” act outside the scope of 101, then — as Les points out below — displaying a plot of investment whatevers should also suffice to carry the claim outside of the scope of 101. There is no distinction to be made there … but this panel knows that it has to say something about McRO, just as it has to give lip service to Enfish and other equally wrong-headed claims that carved exceptions in 101 out of thin air so that “special” kinds of (otherwise ineligible) logic could be crammed through the gates.

    What this panel should be saying, of course, is that McRO is an internally contradictory pile of self-serving horse manure that needs to be tossed into the trash bin of history before it does further damage to the patent system.

    In general, all claims in the form “new logic” + old display tech should be ineligible for very basic and easy-to-understand reasons. But we can’t have nice things. Instead we have to endure this neverending farce.

    This passage is even more bizarre:

    [McRO’s] claims also avoided being “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.

    Say what?? “Concrete” is now somehow the opposite of “generic”? And the concept of “use a look-up table to determine an output” is somehow “specific” enough for an otherwise ineligible abstraction (i.e., “look it up in a table”) to turn a worthless claim into a claim that is “concrete” and eligible? This makes no sense whatsoever.

    1. 5.1

      I agree with what MM is saying about Mcro needing to be tossed, and having needed to be found ineligible previously. However, I have to disagree with you that there is no distinction to be made. There is a distinction to be made, IF, and only if, you adopt the world-view of old people on the court. Under their old-style view, you’ve “improved” the display itself (or the whole computer+display system if you prefer) when you make it be able to simulate lips better. Here, no improvement of that “sort” was made, they just changed the data manipulations and displayed it in the same manner.

      Though what is hidden from the CAFC is that likely in the Mcro case the only thing that really changed factually was the data manipulations anyway (though I might be wrong about that, they may have had to make hardware changes and all in Mcro as well).

      Again though, this only makes sense from an old timer’s perspective.

    2. 5.2

      Say what?? “Concrete” is now somehow the opposite of “generic”? And the concept of “use a look-up table to determine an output” is somehow “specific” enough for an otherwise ineligible abstraction (i.e., “look it up in a table”) to turn a worthless claim into a claim that is “concrete” and eligible? This makes no sense whatsoever.

      Yes – “concrete” not as in “existing in a material or physical form”, but rather “concrete” as in “specific” as opposed to “vague”.

      Had McRO’s claim been merely “A method for animation, comprising:
      provide audio comprising speech;
      provide, via a display, an animated figure; and
      modify, via a computer, the animated figure such that the figure’s mouth movement corresponds to the speech,”
      … then that would be vague. It claims the result, but leaves the “how” as an exercise for the reader. It also lacks novelty for 90 years, but that’s a separate point.

      Instead, McRO’s claims required generation of intermediate and final streams of morph weights via sub-sequences and transitions between sub-sequences. That’s not something an animator does when they sit down at their table and draw. It was a new way of achieving an older result, and a way that enabled automation of a previously tedious manual task.

      Specifically, the improvement wasn’t just saying “do what people did previously, but automate it,” because the computer couldn’t do that. It doesn’t have a priori knowledge of what lips are and how they move for words. Instead, the inventors came up with with a series of calculations that would approximate that subjective knowledge.

      Mal, in your comment below, you said:
      I’ve been drawing for years. I use my brain to decide what to draw, not my “gut instinct” (whatever the frack that’s supposed to mean).

      And yet, I can guarantee that when you’re drawing a mouth of a speaking person, you don’t calculate intermediate and final morph weights. You probably move your mouth into the same position and then draw it by feel. A computer can’t do that.

      But again, going back to the concreteness or specificity, simply saying “using calculations, by a computer, to draw proper lips” would still be abstract, because it doesn’t get into what those calculations are.

      As an aside, I think a lot of these cases are due to drafting attorneys who don’t understand the invention and can’t/won’t spend the time to understand it. So instead, they paraphrase and draft claims that recite it at a high level they do understand… but naturally, paraphrasing means excising any complicated or new part of something and describing it terms of simple, known parts. It’s very easy to recite a result, particularly if it’s a result that’s been achieved before by other means. It’s more difficult to recite how that result is achieved, if you don’t understand it.

      1. 5.2.1

        “As an aside, I think a lot of these cases are due to drafting attorneys who don’t understand the invention and can’t/won’t spend the time to understand it. So instead, they paraphrase and draft claims that recite it at a high level they do understand… but naturally, paraphrasing means excising any complicated or new part of something and describing it terms of simple, known parts. It’s very easy to recite a result, particularly if it’s a result that’s been achieved before by other means. It’s more difficult to recite how that result is achieved, if you don’t understand it.”

        I think it’s a lot more likely the attorneys are drafting to what their clients want. Why claim your actual invention when our broken system allows you to claim the result?

        1. 5.2.1.1

          Tell us, Ben, how that relates to enablement.

  7. 4

    The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in a mathematical technique with no improved display mechanism.

    Too bad “improved display” was the alleged improvement in Electric Power Group – allegedly providing better quality data disclosure.

    As I said at the time, McRO was of dubious standing when you read the actual claims and significantly better if you limited the claims to the particular embodiment in the Spec, and the opinion tried to do the latter without outright breaking the rules against importing limitations into the claim.

    McRO and DDR Holdings are not bad logic for their proposition – that sometimes the act of importing a previously achievable act to a new field requires an inventive solution that patent law is designed to protect, and therefore constitutes an exception to the Alice “mere field of use” logic – but they are bad cases in that their claims don’t do a great job of actually manifesting that proposition. The fail more on a factual level than a propositional one.

    The act of generating new rules to simulate the otherwise gut instinct of drawing is nothing like the act of using a computer as a calculator to run statistical computations. The distinguishing is correct, and this case is well decided.

    1. 4.1

      RG: the otherwise gut instinct of drawing

      What in the holy heck?

      1. 4.1.1

        McRO was found eligible because even though drawing mouths was conventionally done, it was done based on the gut instinct of the artist. A computer does not have a gut instinct. Even though this was simply performing an act in a different field of use, it was inventive because (unsurprisingly) computers don’t have guts.

        The invention was a series of rules designed to simulate the gut instinct. Those particular means of simulation are inventive and eligible. The idea of using rules, in general, is not inventive, as all computers always function based on rules. The tension in the McRO decision is that the specification disclosed the particular rules, and the claims claimed functionally, not limiting themselves to particular rules. The McRO claims truly ought to be ineligible, but the McRO disclosure actually discloses an eligible invention, so I can understand why they tried to bend the rules to save the claims.

        1. 4.1.1.1

          RG: even though drawing mouths was conventionally done, it was done based on the gut instinct of the artist.

          I’ve been drawing for years. I use my brain to decide what to draw, not my “gut instinct” (whatever the frack that’s supposed to mean).

          1. 4.1.1.1.1

            I use my brain to decide what to draw,

            But you don’t use your brain to do the drawing. When you draw a mouth and the mouth doesn’t look right, it’s not because you have a logical rule as to what constitutes a right-looking-mouth and you can objectively identify that this violates the rule. You simply have a feeling that it simply isn’t a good looking mouth. It’s not like math, where you’re flipping to an eraser because you know 2+2 doesn’t equal 5. You’re flipping to an eraser because of some unquantifiable feeling that you can draw a better looking mouth.

            1. 4.1.1.1.1.1

              You do realize that “gut feelings” do not actually come from your gut, right?

  8. 3

    This is like Calvin Ball, the game Calvin and Hobbes used to make up as they went along.

    The Alice case arose because someone was basically trying to claim the computerization of an existing process, and no one could do basic 103 analysis where the infringer finds a description of the existing process, and then a handbook on how to draft a specification of a problem into code. It was an EASY 103 issue, with certain details considered a design issue.

    The fact is, very few litigators have the patience for searching. It’s a creative process and they just want it all figured out for them, and when that proved to be impossible for their uncreative minds, we opened this pandora’s box of “abstract ideas” as judges saw cases lost one after the other when litigators couldn’t produce. Because the original Alice claims weren’t actually ‘abstract’, that meant the definition of ‘abstract’ was now whatever a judge wanted it to be. So here we are.

    What do you tell a client who actually invented something and wants a patent on it? “It depends on the humidity” is not a very satisfying assessment of the odds. And after spending tens of thousands on an application, only to have it never issue, makes the attorney look pretty bad, and you end up loosing a lot of clients because you didn’t tell them not to go forward.

    1. 3.1

      Alice allows any competent fact finder to invalidate any claim.

    2. 3.2

      The Alice case arose because someone was basically trying to claim the computerization of an existing process, and no one could do basic 103 analysis where the infringer finds a description of the existing process, and then a handbook on how to draft a specification of a problem into code. It was an EASY 103 issue, with certain details considered a design issue.

      The fact that 101 and 103 overlap in your example doesn’t mean 101 and 103 are designed to achieve the same thing. Suppose I have an old camera and I use it to take a picture of a new widget. That system (or method) is non-obvious because the prior art lacks knowledge of the widget. But the camera itself is functioning the same – the camera doesn’t care what it’s pointed at. The function of 101 is to protect the dedication to the public of the camera, and not subject the camera’s functionality to continual re-monopolization.

      Alice evidenced an economic act, and the point of Alice is that as long as the effort of the claim is to re-capture that act, the claim will fail. The point is not that it was obvious to apply it on a computer, the point is that application on a computer did not significantly impact the economic act which had been dedicated to the public.

      What do you tell a client who actually invented something and wants a patent on it?

      Nobody knows if someone actually invented something, and that’s not how our system is set up. You have no real knowledge at all, and to the extent the office knows something, it only knows that it has not been able to maintain a violation of the statutory scheme. No claim ever gets declared valid, it only fails to be declared invalid. What you tell a client is the same thing the office tells a client – here are some things to consider, and I see no reason why it would not be allowable.

      And after spending tens of thousands on an application, only to have it never issue, makes the attorney look pretty bad, and you end up loosing a lot of clients because you didn’t tell them not to go forward.

      Some of the abstract idea cases fail because they actually assert subject matter that, no matter how particular, would never be eligible. Most abstract idea cases fail because they claim functional results as opposed to particular means for achieving results, which have always been invalid claims, they were simply invalid under 112b prior to 1952 and arguably would be under written description today. They could have been cured by properly sized disclosures/claims. The claims above violate 112b and probably 112a in addition to 101, so it’s not like the attorney couldn’t have given proper advice as to the validity of the claimset.

      1. 3.2.1

        This is witch talk gibberish.

    3. 3.3

      “It was an EASY 103 issue, with certain details considered a design issue.”

      Do practicioners really bend over and take it when examiners wave their hands regarding computer process limitations being “design choices”? That seems like it would be a surefire reversal at the board.

  9. 2

    It is not possible to have a functioning patent system with judges like this.

    Note too that Taranto is saying that “abstract ideas” are “ineligible subject matter.” But, that is not really right. The abstract idea exception is supposed to apply to any subject matter where the claims are abstract. There is not a separate “subject matter” that is abstract ideas.

    The other thing is that Taranto is basically holding that heuristic methods that are capable of doing the work of people are not eligible for patentability.

    This is legislation and this is why the Google Judge Taranto needs to resign, be impeached, or the CAFC needs to be disbanded.

  10. 1

    So, McRo is NOT abstract because it displayed something and SAP IS abstract because it displayed something.

    Got it.

    1. 1.1

      That does not really seem a fair summary of the holding. As the opinion explains (slip op. at 9) “[t]he claims in McRO… also avoided being
      “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.”

      I think that this is the real take-away from this case, and as far as that goes, this is a good and useful rule. I regret that the system claims also failed here, because those seemed meaningfully closer to specifying a “how” rather than a mere “what” than did the method claims. The method claims, however, deserved to fail, because there was nothing in those claims that could not be done entirely in one’s head. It does not get much more “abstract” than a claim that one can infringe by merely thinking certain thoughts.

      1. 1.1.1

        >>The method claims, however, deserved to fail, because there was nothing in those claims that could not be done entirely in one’s head.

        Please. Stop. This whole line of reasoning is so bad. In Deener, the method of refining grain could be performed by a human body. So what?

        The point is that a machine is being used to perform the method.

        1. 1.1.1.1

          The point is that a machine is being used to perform the method.

          No, that is not the point. As Judge Rich famously said, the name of the game is the claims. If you invented a method for a computer to do something, but then you write a claim that reads on the human doing that something, then your problem is entirely self-inflicted. When claims read on humans thinking thoughts, then those claims deserve to fail. Patent protection should (in a sane world) still be available for the invention properly claimed, but not for just any claim, no matter how egregious, that happens to read on the invention.

          1. 1.1.1.1.1

            No person skilled in the art would read this claim to read on a brain performing the method.

      2. 1.1.2

        “[t]he claims in McRO… also avoided being
        “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.”

        Did they though? I mean look at McROs actual claims. The more accurate statement is that the specification had specificity and the McRO holding was incorrect because the claims lacked the specificity of the spec embodiments.

        1. 1.1.2.1

          The more correct result would be for Taranto to acknowledge that he is witch hunter.

          Plus, I am waiting for someone to tell me how something being old and well-known was ever related to the word abstract in any context before Alice.

          1. 1.1.2.1.1

            Plus, I am waiting for someone to tell me how something being old and well-known was ever related to the word abstract in any context before Alice.

            That’s because it’s not related to the word Abstract in Alice. Alice step 1 is to determine if the claims are directed to an ineligible act, one example of which may be an abstract idea, but it may also be a law of nature. Alice step 2 is to ask if there is significantly more to the claim beyond the ineligible act, one of example of which it is not is for the claim to merely claim a conventional feature or field of use.

            The fact that many computer cases are simply abstract ideas with only conventional implementation speaks to the fact that the processor processes information just as a human would. Statistics doesn’t become something other than statistics just because I do it with a calculator instead of a pen and paper, nor does the fact that the numbers represent investment portfolios make the statistics non-statistical.

            1. 1.1.2.1.1.1

              Step 1 of Alice is to determine if the claims are directed to an abstract idea.

              Please. Stop.

              1. 1.1.2.1.1.1.1

                In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012), we set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. Id., at ___, 132 S.Ct., at 1296-1297. If so, we then ask, “[w]hat else is there in the claims before us?” Id., at ___, 132 S.Ct., at 1297.

                …We must first determine whether the claims at issue are directed to a patent-ineligible concept…

                Even the non-lawyer examiners know the correct answer to this one.

                Please. Stop.

                1. So you are basically saying I am right.

                  The reason the well-known and abstract idea are related according to the SCOTUS in Alice is because they are saying that the claims are an abstract idea.

                  Step 2 says that the claims are well-known, so they are only an abstract idea.

                  So, again, how is an abstract idea related to well-known?

                2. So you are basically saying I am right.

                  No, you’re not.

                  Step 1 of Alice is to determine if the claims are directed to an abstract idea.

                  False.

                  Plus, I am waiting for someone to tell me how something being old and well-known was ever related to the word abstract in any context before Alice.

                  They were not related in Alice.

                  The reason the well-known and abstract idea are related according to the SCOTUS in Alice is because they are saying that the claims are an abstract idea.

                  No, they said the claim is ineligible subject matter because it is directed to an abstract idea, and did not contain significantly more than the abstract idea because the other elements were a conventional field of use.

                  Step 2 says that the claims are well-known, so they are only an abstract idea.

                  No, step 2 of Alice said the other elements (the computer elements) of the claim were conventional field of use (which I assume you’re interpreting as well-known when what the court said was well-understood, routine and conventional). It did not say the other elements are only an abstract idea. Nor did it say that conventionality is necessary to be insignificant. It said that the additional features of the claim must be considered, and when they are insignificant (one manner of which they are insignificant is conventionality) the claim is ineligible.

                  Your thinking is unfocused and evidences how muddled you are on the subject. Alice’s holding is that a claim that is directed to an ineligible concept does not become eligible simply because it includes a conventional field of use.

                  A computer is not an abstract idea. A computer, when it is used as an ancillary limitation, does not impart eligibility to an otherwise ineligible concept. A fundamental economic process is one type of abstract idea, and therefore is ineligible. The federal circuit plurality held that the computer limitations were tangible and thus imparted eligibility. The Supreme Court disagreed and held that they did not impart eligibility. The court did not say the computer was abstract. The court said the claim was ineligible because it was directed to an ineligible abstract idea (the economics) without significantly more (the computer is insufficient). This is the fourth time I have explained this to you – ostensibly a lawyer – in a single thread. It does not suggest your other comments, like “This is witch talk gibberish” should be given any weight when you don’t understand the basics of the most important ineligibility decision.

                  So, again, how is an abstract idea related to well-known?

                  Intermediated settlement is an abstract idea because it is a fundamental building block of the modern economy. An idea of itself is not patentable. This has nothing to do with well-known. A similar ineligible act is discovering a natural fact. That also has absolutely no relationship to being well-known. Sequenom is a case where the fact of nature was entirely unknown prior to the patent application, and it was still ineligible. How well-known something is has no bearing on whether something is eligible. The reason most 101 cases exist is precisely because the ineligible act is the act which defeats 102/103.

                  Well-understood, routine and conventional functionality does not render an otherwise ineligible subject matter eligible. That is true whether the original infirmity is based in abstract ideas, laws of nature, or any other ineligible concept.

                  There is no relationship between abstract ideas and well-known. There is a relationship between fundamental building blocks, whether known or not, and ineligibility under Step 1, and there is a relationship between conventional activity and being not significantly more under Step 2.

                3. >>Intermediated settlement is an abstract idea because it is a fundamental building block of the modern economy.

                  >> Here is the key Alice quote:

                  “Like the risk hedging in Bilski, the concept of intermediated settlement is “ ‘a fundamental economic practice long prevalent in our system of commerce,’ ” ibid., and the use of a third-party intermediary (or “clearing house”) is a building block of the modern economy. Thus, intermediated settlement, like hedging, is an “abstract idea” beyond §101’s scope. Pp. 7–
                  10. ”

                  What is pretty clear from that is that “long prevalent” is a synonym for “well known.”

                  I think it is pretty clear from that key quote about that the SCOTUS is equating whether something is well known with whether it is abstract. Well known is also used three times in the opinion.

                  Your thoughts on this are interesting to read. You think I am unfocused because I am not buying into the witch language. The way to think about the claims in Alice or any other claim is with structure. You have to look at what structure is present and analyze the claim from there. You don’t abstract away to a gist and then fabricate an abstract idea and they push it all into the abstract idea to invalidate the claim. The Alice two step process is absurd to any thinking person. The structure floats in and out of the gist created by the fabricated abstract idea.

                  Again, think in terms of structure. And, again, well known should have nothing to do with abstract and didn’t before Alice. Now abstract means was it well-known and fundamental? Yes, then abstract idea.

                  Anyway, I appreciate your engagement in this and I hope you will think about what I said. Think in terms of the structure. I try to go back to information theory and imagine the number of bits of information it would take to represent the claims. Why Alice is absurd is that it pulls bits of the representation into the directed abstract idea with no rules.

                4. RG This is the fourth time I have explained this to you – ostensibly a lawyer – in a single thread.

                  I gave up after the five hundredth time, over scores of threads.

                  You have long way to go, RG. ;)

                5. What is pretty clear from that is that “long prevalent” is a synonym for “well known.”

                  Square that interpretation with Morse, where they explicitly said he invented a new thing that advanced the art, or with Sequenom.

                  Long prevalent is being used to support the conclusion that intermediated settlement is a “building block” of current economics. The purpose of the judicial exceptions are to prevent claims to basic actions and functions, such as abstract ideas, mathematical functions and laws of nature. If long prevalent meant well known then the Supremes would have reversed Sequenom. How can you square that with the explicit statement that Einstein could not have patented his e=mc^2 when it’s unquestionable that e=mc^2 was not well known prior to Einstein?

                  You think I am unfocused because I am not buying into the witch language.

                  No I think you’re unfocused because you are characterizing their argument in a manner that is simply not factually accurate. I don’t care whether you agree with their argument.

                  Morse put forward an argument that he invented printing at a distance, and therefore he was entitled to any machine that printed at a distance, no matter how it achieved it. That’s the underlying thing that the judicial exceptions prevent – a monopolization of an entire avenue of research, a fundamental motivation. Morse didn’t lose his claim because his invention was well-known, he lost because he tried to monopolize something fundamental.

                  You don’t abstract away to a gist and then fabricate an abstract idea and they push it all into the abstract idea to invalidate the claim.

                  You can only make this argument if 1) you fail to understand the Alice procedure or 2) you are intentionally being reductionist of your opponent’s argument.

                  The Alice procedure does not ignore limitations, nor does it “gist” away anything. The Alice procedure simply recognizes that some limitations are not to be considered with the same gravity that other limitations are. When you don’t claim that you invented the processor, or that you’re improving a processor, that processor does not evoke the same eligibility considerations as when you do suggest you’re improving a processor.

                  If you invent a new door lock, you may have the freedom to claim a system that includes your door lock, the door, the frame, the wall, the building, and even the city street. That does not mean that the limitations beyond the door lock or possibly the door and frame have any bearing on the claim surpassing any patentability tests.

                6. So depressing for someone like me to see this witch talk being pushed by examiners.

                  Examiners used to be so much better than they are now.

                  Randomguy: you said they didn’t say it was well-known. They did.

                  >>Long prevalent is being used to support the conclusion >>that intermediated settlement is a “building block” of >>current economics.

                  A building block? There is no test for something like that. And a building block is not an abstraction.

                  As to Morris the best way to understand using modern patent law is to say that Morris was entitled to the scope of enablement. The “any” in the claim of Morris made it go beyond the scope of enablement. That simple.

                  What has happened is that the SCOTUS has fabricated a method for invalidating claims and they attached it to the term “abstract idea.” It is simply shocking to any trained patent attorney.

              2. 1.1.2.1.1.1.2

                Abstract ideas are a sub-group of ineligible subject matter. Conventional field of use is a sub-group of failing to contain significantly more. They are only related inasmuch as most people in the computer realm often try to patent abstract ideas in a conventional field of use.

                1. Among the patent eligible a new use of a known process, machine, manufacture, composition of matter, or material.

                  So, why is it exactly that a new field of use is not significantly more?

                  Moreover, if the issue is everything is conventional, why not just reject under 102?

                  There’s a memo out now, by the way, that says you have to provide evidence that the additional elements are well-understood, routine and conventional (not merely known, but well-understood, routine and conventional)…

                2. Les,

                  And let’s not forget that that the Office “Official Notice” (even if not stated as such) is improper as “evidence” and let’s also not forget that the quantum of proof is not mere existence, as “conventional” means much more than that.

                3. So, why is it exactly that a new field of use is not significantly more?

                  “Given the ubiquity of computers, see 717 F.3d, at 1286 (Lourie, J., concurring), wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.””

                  Moreover, if the issue is everything is conventional, why not just reject under 102?

                  Again, you are mistaken about how the alice procedure works. The question of conventionality only applies to the not-ineligible features. If Einstein discovers (post computers) that e=mc^2 and claims a computer computing the equation, that claim is a natural law + conventional computer implementation (as computers conventionally calculate equations). The requirement is not that e=mc^2 be found conventional (as it clearly was not), nor that the claim as a whole be conventional (as it was not, and this is why you won’t have a 102 rejection) the requirement is only that the computer implementation be conventional.

                  There’s a memo out now, by the way, that says you have to provide evidence that the additional elements are well-understood, routine and conventional (not merely known, but well-understood, routine and conventional)…

                  In most cases there’s also a 103 rejection, which is evidence of conventionality, as is the specification not attempting to provide a technical teaching as to how to make something.

                  When a specification claims a processor, but does not teach how to make a processor, that is intrinsic evidence of the conventionality of processors, which is further confirmed by a patent publication citing a processor in the 103 section.

                4. wholly generic computer implementation

                  An oxymoron if there ever was one.

                  There simply is no such thing. This is the height of laziness from the judicial branch.

                  IF indeed there was such a thing as a (pre-exisiting) “generic” computer that had the capability of what is claimed (note – this is starkly different than having the capability of being changed to have the capability being claimed), THEN the proper patent law argument to use would be the doctrine of inherency.

                  Ubiquity? Do you seriously want to know what represents ubiquity?

                  Protons, neutrons and electrons.

                  Try applying that “ubiquity” line of reasoning there – and do so consistently. Let me know where reason leaves you.

                5. Random –

                  Re: “In most cases there’s also a 103 rejection, which is evidence of conventionality, as is the specification not attempting to provide a technical teaching as to how to make something.”

                  From the memo, page 3, second paragraph:

                  The question of whether additional elements represent well-understood, routine , conventional activity is distinct from patentablility over the prior art under 35 U.S.C. 102 and 103. This is because a showing that additional elements are obvious under 35 U.S.C. 103, or even that they lack novelty under 35 U.S.C. 103, is not by itself sufficient to establish that the additional elements are well-understood, routine, conventional activities or elements to those in the relevant field.

                  So…. you know…

            2. 1.1.2.1.1.2

              A processor as proxy for a human…

              Anthropomorphication.

              Computers are NOT humans.

              That is a critical point.

              101 has TWO (and only two) elements:

              Can you fit the innovation into at least one statutory category?

              Is the utility one recognized as belonging to the Useful Arts (contrasted with the Fine Arts).

              That
              Is
              It

              (ALL else is muckery)

              1. 1.1.2.1.1.2.1

                (btw, a standard garden shovel is every bit as mug a proxy for a human)

          2. 1.1.2.1.2

            “The more correct result would be for Taranto to acknowledge that he is witch hunter.”

            I don’t know if Taranto is as cool as Geralt of Rivia aka the Witcher.

        2. 1.1.2.2

          The more accurate statement is that the specification had specificity and the McRO holding was incorrect because the claims lacked the specificity of the spec embodiments.

          That is “more correct” but it would still be the wrong holding.

      3. 1.1.3

        Greg:

        1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample space, wherein the sample space includes at least one investment data sample;

        I can’t select an investment data sample entirely in my head. Neither can I display investment data in my head.

        (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process;

        I can’t do that in my head either.

        and, (c) generating a plot of the distribution function.

        Still further, I can’t generate a plot in my head.

        Moreover, why do you say the claim doesn’t recite how? It seems to say how to me. A big part of the how is: generating a distribution function using a re-sampled statistical method and a bias parameter.

        I think what the Court (and perhaps you) mean is, we don’t understand the claimed method, therefore we don’t see the “how,” therefore its abstract.

        Otherwise how is : ” generating a distribution function using a re-sampled statistical method and a bias parameter.” any more abstract than using “predetermined rules” as in McRO?

        Add in : “wherein the bias parameter determines a degree of randomness in a resampling process” and you have even more how…

        1. 1.1.3.1

          I can’t generate a plot in my head.

          LOL

          Really?

          1. 1.1.3.1.1

            Clearly, he means a plot on some physical device – so unless you are telekinetic, you would not be able to provide what he is saying.

        2. 1.1.3.2

          I can’t select an investment data sample entirely in my head. Neither can I display investment data in my head.

          Naturally, it is not for me to tell you what your head can do, so I will defer to your say-so about the limitations of your head. My (by no means exceptional) head can perform the specified operations. The long and short of it, then, is that the claim still reads on operations that can be conducted entirely in a human head.

          1. 1.1.3.2.1

            You did not respond to my analogy with Deener.

            Why does it matter if a brain could perform the method? A brain could not practically perform the method and no one skilled in the art would read the claim as being performed by a brain.

            Why do you buy into this nonsense?

            1. 1.1.3.2.1.1

              [N]o one skilled in the art would read the claim as being performed by a brain.

              So you say. I do not share your confidence on this point. If it is to come to a matter of unsupported assertions about what the skilled reader understands from these claims, I trust Judge Taranto’s read over yours.

              1. 1.1.3.2.1.1.1

                That’s a huge mistake.

          2. 1.1.3.2.2

            Greg –

            For arguments sake, I will accept your assertion.
            Back in the 50’s office assistants transcribed audio information into written symbols. While pencil and paper were used to record the transcription, the transcription itself was performed entirely in the assistant’s head.
            That doesn’t mean a machine that converts audio information into written symbols is not an eligible invention.
            I think you will find that a great may patent have issued covering machines that do things that used to be done by head and hand.

            What has the ability to do something in ones head have to do with anything? That is an absurd test for abstractness or eligibility.

            Oh, by the way, our printers are down. Would you plot x= sin(cos (tan (y/pi))yy in your head for me?

            Thanks

            1. 1.1.3.2.2.1

              While pencil and paper were used to record the transcription, the transcription itself was performed entirely in the assistant’s head.

              That doesn’t mean a machine that converts audio information into written symbols is not an eligible invention.

              Right, no argument there. I agree that the claim to the machine should be patentable. That is why I said above that the system claims here are meaningfully distinct from the method claims. If you invent a machine, however, and then claim a method that you intend to be performed by the machine, but which could—for all that—be done in one’s head, then you have no one to blame but yourself when that method claim fails. You wrote a bad claim.

              1. 1.1.3.2.2.1.1

                Well, contrary to your assertion, the present method cannot be done in ones head. For instance, you haven’t made the plot for which I asked, have you?

                And again, I respectfully submit, there is no sane reason why the fact that a method could be done in ones head should disqualify the method.

                1. And again, I respectfully submit, there is no sane reason why the fact that a method could be done in ones head should disqualify the method.

                  Well for starters, you cannot enforce such.

                  Further, you now HAVE traveled into the (typical) movement of goal posts of Malcolm and into the “Totally in the Mind” realm.

                  Any such thing totally in the mind lacks BOTH the type of utility of the Useful Arts and does not fit any of the statutory categories (thinking about something is NOT within the “process” statutory category – leastwise if that is all that you are doing).

                2. Right. Any patent that reads on something done solely in ones head can’t be enforced. So, there is no harm to thinkers in granting a patent wherein the inadequacies of language and the scrivener’s art limit one to using language that could arguably be said to read on thinking.

                  If “done in ones head” is considered a problem, just make a policy, rule or law that says no claim shall be interpreted as encompassing methods performed soley in ones head.

                3. the inadequacies of language and the scrivener’s art limit one to using language that could arguably be said to read on** thinking.

                  I hear you Les, and understand the pragmatic and very easy to understand (and apply) rule that you would advance.

                  Quite in fact, I advanced a similar thought several years ago.

                  Of course, the typical anti-patentists threw a gasket at such a solution.

                  ** Of course, if anyone wanted to be reasonable, we already have the notion that claims are to be read from the standpoint of a person having ordinary skill in the art as informed by the specification….

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