Factual Underpinnings of Eligibility: Federal Circuit Denies Rehearing in Berkheimer / Aatrix

By Dennis Crouch

In Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), Judge Moore explained that, although “patent eligibility is ultimately a question of law,” it may require an analysis of “underlying factual questions.” In particular, the court in that case ruled that “[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.”  In its petition for en banc rehearing, HP asked two questions: (1) whether eligibility has factual underpinnings; and (2) the role of the “well-understood” conclusion in the eligibility analysis:

  1. Is the threshold inquiry of patent eligibility under 35 U.S.C. § 101 a
    question of law without underlying factual issues that might prevent summary
    judgment?
  2. Is the appropriate inquiry under Alice’s step 2 whether the claims
    transform an abstract idea into a patent-eligible application, or merely
    “whether the invention describes well-understood, routine, and conventional
    activities”?

Similarly, in the parallel en banc request following Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018), the patent challenger asked the following question:

  1. Is the threshold inquiry of patent-eligibility under 35 U.S.C. § 101 a question
    of law without underlying factual issues based on complaint allegations pled to
    avoid dismissal under Fed. R. Civ. P. 12(b)(6)?

Now, the Federal Circuit has denied both petitions with opinions by Judges Moore, Lourie, and Reyna.  The exact vote was not released, but at least 7 judges voted to deny.

Judge Moore:

Berkheimer and Aatrix stand for the unremarkable proposition that whether a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact.

Judge Lourie:

I believe the law needs clarification by higher authority, perhaps by Congress, to work its way out of what so many in the innovation field consider are § 101 problems.

Judge Reyna:

The court’s vote to deny en banc review of Aatrix and Berkheimer is a declaration that nothing has changed in our precedent on patent subject matter eligibility under 35 U.S.C § 101. We are encouraged to move along; there’s nothing to see here. I disagree. I believe that, at minimum, the two cases present questions of exceptional importance that this court should address and not avoid. [Citing Patently-O’s description of the impact of these decisions]

Clearly Judge Reyna is correct in this aspect of his analysis even if I disagree with his ultimate conclusion that eligibility is purely a question of law.

I would look for Supreme Court petitions in both cases framed along the lines of: pro-patentee Federal Circuit judges seeking to undermine consistent Supreme Court precedent most recently restated in Alice and Mayo.

 

103 thoughts on “Factual Underpinnings of Eligibility: Federal Circuit Denies Rehearing in Berkheimer / Aatrix

  1. 7

    #teampurequestion

  2. 6

    The two Patently-O posts that Reyna explicitly mentions are:

    link to patentlyo.com

    and

    link to patentlyo.com

    Worth paying attention to the substantive comments therein (i.e., comments by B, Ray, and myself – and NOT the usual dust kicking by the likes of Malcolm (MM, for newbies) and the late Ned Heller.

    1. 6.1

      It has been long indicated that the narrative on this blog has been under a steady drum beat in a quest of being attempted to be controlled.

      With the two links that I presented above, it is clear that control of the narrative is important to those that see the court’s referencing this forum.

      It does not take a great jump of imagination then to see why the “don’t have a dialogue” count filter has been modified of late.

      That modification removes entirely any comment that is made that is “above the (non-standard-as-applied) count number.”

      It used to be that when you exceeded this arbitrary number, your comment showed to you with the label of “pending moderation.” This allowed salvaging the content.

      No longer.

      Now those comments simply disappear, and the pleas to release comments are just as selectively heeded.

      All the while (as can be seen on the more current threads), the very same blight – the single largest blight – that of Malcolm’s inanity – continues to run amuck, as it has for 13 years now.

      Nice step backwards.

  3. 5

    I’m not suggesting this should be done, I’m not even suggesting this is the law, but the Office’s Berkheimer memo solves the issue rather simply –

    The Berkheimer memo states that the question of conventionality is the exact same question as to whether something requires detailed disclosure under 112a. Consequently, when an Applicant tries to raise Berkheimer on what are truly conventional limitations, the memo operates as an intrinsic 112a WD rejection because specifications never describe elements they know to be conventional in detail.

    The logic for that equivalence is…dubious at best (and this is coming from someone who knows the Office doesn’t really apply WD, and is in favor of them doing so), but the Berkheimer memo is not nearly the silver bullet for the Applicant that it would appear to the poorly read Applicant and less-than-stellar Examiner. I can think of no case I am currently rejecting under the Alice framework where an Applicant raising Berkheimer wouldn’t immediately result in an alternate-grounds rejection for WD (though that’s because I’m smart enough to only make 101 rejections where the alleged improvement is an abstract idea, which not all Examiners seem to do I’ve noticed). (I should note, btw, for Applicants that like the memo otherwise, the only thing the memo states is that a single reference, standing by itself, does not prove conventionality. The memo provides no guidance on whether one reference + citations to the Specification not providing a detailed teaching suffices to show conventionality.)

    But if the same were applied at the Federal level, it would allow the validity to be resolved using only intrinsic evidence and on summary judgment. If the patentee argues non-conventionality but his specification fails to teach in detail, he admits a 112a violation and the infringement action is dismissed. If the patentee does not argue non-conventionality, there’s no issue of fact and it can be disposed of either way as a matter of law under the Alice framework.

    1. 5.1

      the only thing the memo states is that a single reference, standing by itself, does not prove conventionality.

      The reason I bring this up is because I know that many applicants are very happy that they think Berkheimer memo will result in less 101s. Some Examiners also think this, because it would appear at first blush (and with an un-critical eye) that the Berkheimer memo essentially requires us to “double reject” (i.e. find two references) for each limitation that we wish to show is conventional. And because the Office hasn’t provided any extra time for examining since even before Alice came down, the idea that we would have to double-search and double-map references to each element is something Examiners won’t take the time to do.

      I agree that if the memo actually required that, the number of 101 rejections would go down. (Not that that means the claims are actually eligible, it just means the office would be putting out lower quality work by missing true 101s, which is always the case when you put significantly more demand on examiners with no corresponding increase in examining time)
      But a careful reading of the memo doesn’t actually require double rejection. It allows for double rejection, and points to particular rarely-relevant situations, i.e. when applicant admits conventionality, that establishes conventionality, as if that ever happens, or a rare publication not establishing conventionality, as if rare publications are ever found or cited.

      But the main situation it speaks to is that a single reference, which particularly teaches an element (thus showing that that reference does not consider the act conventional) which happens to be the same element that the current application teaches with particularity because it also does not consider it conventional, does not support a holding that the element is conventional. That really shouldn’t ever be a problem, because usually the thing the current invention doesn’t consider conventional is the directed-to abstract idea, and not the subject of the conventionality inquiry under Step Two. But in that relatively rare situation, a second reference is necessary under the Berkheimer memo. That is not often the case, because rarely does a) a cited reference happen to invent the exact same thing the current invention does, b) in the context of those elements not being the abstraction the claim is directed to.

      1. 5.1.1

        Conventionality is at one time both far more and far less than you think it is.

        It has nothing to do with what an applicant may or may not have written.

        It requires (of you) far more than mere presence, such as an examiner may be accustomed to in regard to 102 or 103.

        That you do not see that the burden is on you as an examiner only reflects how poorly you understand your job.

        1. 5.1.1.1

          Very well said anon.

        2. 5.1.1.2

          It requires (of you) far more than mere presence, such as an examiner may be accustomed to in regard to 102 or 103.

          I agree.

          It has nothing to do with what an applicant may or may not have written.

          This is true, but misleading with respect to the larger point. Under the memo, what the Applicant has written is very relevant with respect to whether the claim is patentable, as it may only be shifting the rejection under which a claim is invalid.

      2. 5.1.2

        I’ll trade a tenuous 112 WD rejection for a 101 rejection any day. I hope you are corrrect. Examiners overplay their hand on 112 WD all the time.

        What you will see soon is that examiners are omitting any language regarding limitations being well-known in their rejections to avoid a challenge under the Berkheimer memo.

        1. 5.1.2.1

          examiners are omitting any language regarding limitations being well-known in their rejections

          How do they do that and comply with the Court [(re-)written] legal analysis for 101?

          You** NEED to show in your rejection that “significantly more” was not obtained, and the basis of that is NOT a 102/103 basis, but rather a basis of conventionality.

          ** this “You” being the examiner, of course, as it is upon them to provide the prima facie case that 101 has not been met. Examiner’s MUST ALSO be aware that “Official Notice” may not be used to attempt to establish ANY “state of the art,” which does include the state (or lack there of) of conventionality, thereby, the Examiner’s WILL NEED TO provide an evidentiary basis when they employ the “you do not meet the significantly more” prong of a PROPER 101 rejection.

          1. 5.1.2.1.1

            How does an examiner reject a claim directed to a block chain or encryption method that secures trasaction data as a “method of organizing human activity”? No one knows but it happens.

            That’s the issue with an “inventiveness” sniff test with no discernible elements.

            Win against the bogus argument by the Exmainer at PTAB? congratulations, have fun rebutting your new and different 101 rejection raised by the panel sua sponte. Any wonder why examiners throw stuff against the wall and don’t care if it actually sticks?

            1. 5.1.2.1.1.1

              What does happen and what should happen under a proper application of the law as written by Congress are clearly two different things.

              As to the issue, that me paraphrase: Void for Vagueness.

              It’s the real elephant in the room: the scoreboard is broken, and THAT is an issue that is not being confronted front and center.

              It’s time for the Emperor(s) to listen to the child’s question. (that question is: why is that man not wearing any clothes?)

          2. 5.1.2.1.2

            the Examiner’s WILL NEED TO provide an evidentiary basis when they employ the “you do not meet the significantly more” prong of a PROPER 101 rejection.

            That was always the case. Point to where in the Berkheimer memo a citation to a single reference in concert with a citation to the specification at issue, combined with reasoning, does not constitute a sufficient evidentiary basis.

            You cannot.

            Given that you cannot, how will an Applicant show that Examiner committed error in using that as a basis for a finding of conventionality.

            1. 5.1.2.1.2.1

              Here again – you misunderstand and misapply some type of burden shift.

              You do not get there until AFTER you provide a proper prima facie case.

        2. 5.1.2.2

          “What you will see soon is that examiners are omitting any language regarding limitations being well-known in their rejections to avoid a challenge under the Berkheimer memo.”

          That does seem to be the direction that some of middle management appears to be going as they attempt to navigate their understanding of Alice and the unfunded Berkheimer memo mandate.

          I expect another memo in 6 months limiting the 2B analysis exclusively to whether an element is “well known, routine, and conventional”. Or extensive middle management reassignments.

          1. 5.1.2.2.1

            That does seem to be the direction that some of middle management appears to be going as they attempt to navigate their understanding of Alice and the unfunded Berkheimer memo mandate.

            What is your understanding of the Berkheimer memo that significantly changes the amount of work an Examiner has to do?

            I’ve heard a lot of Examiners suggest it requires citing two references to each element.

            I’ve heard a lot of Examiners point out the “claim as a whole” and say that it requires them to find an anticipatory reference but-for the abstract idea.

            I would assert neither of those are the case. Given that you’re going to be finding one reference for each limitation for the 103 any way, what do you think the difference is?

            1. 5.1.2.2.1.1

              A 103 reference in no way satisfies your duty to establish a prima facie case of CLAIM (both each element and the claim as a whole) “conventionality.”

              As I have also noted, you are also constrained and may not use “Official Notice” in any way to meet you duty to establish the prima facie case.

              You are F A R too eager to want to read the memo as somehow heightening the burden on the applicant, when the burden is on you. You seem entirely oblivious to the fact that as you have not made a prima facie case [properly – as constrained by rules YOU must follow], there is NO switch of burden.

              I suggest that you spend some of that fact-finding “power” that you are so enamored with to find some understanding of the pertinent facts that I have graced you with.

            2. 5.1.2.2.1.2

              I’ve heard a lot of Examiners suggest it requires citing two references to each element.

              More than just a little bit of fallacy wrapped up in that.

              ANY (typical) 102 or 103 reference simply is not the necessary type of reference to make a prima facie case of conventionality.

              It’s an entirely different type of showing that YOU are incumbent to make in order to even attempt to shift the burden.

        3. 5.1.2.3

          What you will see soon is that examiners are omitting any language regarding limitations being well-known in their rejections to avoid a challenge under the Berkheimer memo.

          No, Examiners will simply eventually figure out that the Berkheimer memo isn’t all that limiting. The Berkheimer CASE is limiting to patent opponents, but that’s because the legal and factual determinations are separate and the gulf is millions of dollars. But at the Office the Examiner is both the source of fact finding (as we do the searching) the fact finder (as we make findings of fact) and the first-tier legal opinion writer.

          What I did before Berkheimer is cited a reference to teach a limitation for obviousness purposes, and then stated that that also showed conventionality under Alice. Now what I will do is cite a reference to teach a limitation for obviousness purposes, and then state that the reference, combined with the specification, shows conventionality under Alice, and that is entirely in keeping with the Berkheimer memo. Further, if Applicant argues the conventionality, under the Berkheimer memo I likely have a 112 as well.

          I’ll trade a tenuous 112 WD rejection for a 101 rejection any day.

          You’re not trading though. I’m not going to remove the 101 rejection on something I think is conventional. I’m still going to make the rejection and you still have no non-evidence argument against it. If you state the record does not evidence conventionality, that is a mere allegation of patentability. If you state that the record does not evidence conventionality and cite the Berkheimer memo, the memo does not provide any guidance or requirement that a single reference + a citation to the Specification is not sufficient evidence to prove conventionality. The only time the Berkheimer memo helps your argument is when the holding of conventionality is based solely upon a single reference, which is easily avoidable.

          There’s still only the one way to overcome a conventionality argument, the same way that there was before: Argument backed up by evidence that something wasn’t conventional. There is no law on what constitutes well-known or conventional beyond the holding that what is well-known need not be described in detail in a specification. Therefore the argument that something is not well-known is best proven by citation to particular detail.

          1. 5.1.2.3.1

            You clearly do not understand your own job.

            I really pity those that are subjected to your examination.

            1. 5.1.2.3.1.1

              You clearly do not understand your own job.

              Nah, you simply fail to respect my position nor recognize that the most likely reason a document doesn’t explain something in detail is because the writer knew that one of skill was already well-acquainted with the act.

              The reason I don’t say “Pick up the remote, press the power button, wait, press 5-0-5 and press enter” and instead say “Put on NBC” is because I know my audience finds the steps for tuning the tv to NBC to be well-known. If I do the same thing in written form for one of skill in the art, which is who a patent application is directed to, it suggests the art found the act well-known. That is sufficient support for my finding that the act is conventional under a preponderance standard, if I so conclude. You have no case that says otherwise, because no court has ever so opined.

              Lacking such a case, Applicants want to turn my fact finding into legal error. If you don’t like that I found something conventional, your recourse is to convince me to change my factual finding.

              I am the fact finder. Attempting to override my fact finding (which is entitled to deference) by trying to create some sort of non-existent legal standard (when both you and I know nobody has ever really made a legal test for conventionality) isn’t me misunderstanding my job, its just you being caught on the wrong side of a fact finding. I sympathize when Applicants don’t like my fact finding, but I find that unless I immediately first action allow something, they always manage to find some sort of complaint with my fact finding. I have yet to receive an amendment that tells me I properly found all my facts in an obviousness rejection (let alone an Alice rejection), and I know of no other Examiner who has. Our complete inability to find facts properly, while conversely every Applicant’s perfect ability to find facts, is a mathematical marvel I have yet to untangle.

              1. 5.1.2.3.1.1.1

                No – you do not understand what it is that is actually your job, what it is that YOU need to do to establish a prima facie case, and what the differences in quantum of evidence are required OF YOU to establish that prima facie case – – conventionality requires FAR MORE than mere existence (102) or even the subset of 103.

                You keep on thinking that you can v0m1t a mere assertion and it is the applicant that must “prove otherwise” and that is simply bass ackwards.

                1. conventionality requires FAR MORE than mere existence (102) or even the subset of 103.

                  This is anon talking, since anon doesn’t have an actual legal authority that says that, which makes it relatively useless in any non-anon-led court. In fact, the most famous conventionality case relied upon no 102 or 103 evidence to establish conventionality.

                  Nobody has ever spoken to what “quantum of evidence is required” to show conventionality. Cite to me a case which draws a line for conventionality that I have to cross before a preponderance is shown.

                  Conventionality is shown in the same manner that non-obviousness despite all of the pieces being in the prior art is shown: When the fact finder says so and has some basis to do so. That is how deference works. Don’t you think it’s a little ironic that you’re sitting here on a thread for a case saying its a fact issue, which you’re happy about, and with the other hand you’re turning around and trying to get it called a law issue?

                  You keep on thinking that you can v0m1t a mere assertion and it is the applicant that must “prove otherwise” and that is simply bass ackwards.

                  Of course not, I need to make an assertion and cite some evidence, and then my determination is entitled to deference, absent a showing of clear error. Clear error is going to be a little hard to show when no court have ever spoken to a standard. You pay for an expert, you get an expert. I told you, you hate it when we actually examine things.

                  I do appreciate you paying me to make fact findings, and then paying me again to tell me I can’t make fact findings when you don’t like the result only to have me be upheld. Cite a case telling me I can’t make the finding I made, or save your money.

                2. Nobody has ever spoken to what “quantum of evidence is required” to show conventionality. Cite to me a case which draws a line for conventionality that I have to cross before a preponderance is shown.

                  Sadly true. The CAFC has worked nearly as hard to avoid answering “what does it mean to be ‘conventional’?” as they have worked to avoid “what does it mean for a claim to be ‘directed to’ a law of nature or abstract idea if ‘directed to’ does not merely mean ‘recite’?”. The law is much the worse for this lack of clarity, although I blame the SCotUS for lighting this particular squib and tossing it into the crowd, more than I blame the individual CAFC panels for picking it up and throwing it away from themselves without extinguishing it.

              2. 5.1.2.3.1.1.2

                Further – as previously explained, you are strictly constrained in your fact finding as to when you can take “Official Notice” (which is your “I just say” notion) and this is expressly one of those times in which such is forbidden to you.

                Pay attention son – I am being generous in explaining your job to you.

                1. Nobody here is talking about official notice besides you. I am talking about finding facts based on prior art references.

                2. Check your Berkheimer memo again – it expressly states that the 102/103 level is not sufficent for the different meaning of conventionality.

                  Your “I found a 103 reference and merely declare conventionality to be met” IS a taking of Official Notice – even if you don’t recognize it – for the “fact” as you wish to use that “fact.”

          2. 5.1.2.3.2

            ”Now what I will do is cite a reference to teach a limitation for obviousness purposes, and then state that the reference, combined with the specification, shows conventionality under Alice.”

            I thought Bahr was the stupidest person in the USPTO.

            FYI, merely because something is disclosed in a patent document doesn’t mean it was ever practiced in industry. Also, as many stupid mistakes that Bahr put in the Berkheimer memo, Bahr did make clear that non-confessions in a specification aren’t evidence re conventionality.

            Here’s a hint: look to old dictionaries, textbooks and encyclopedias for evidence you need to support a 101 rejection.

            1. 5.1.2.3.2.1

              Anyone want to point out to Random that the Berkheimer memo specifically excludes using a single reference as the basis for establishing conventionality?

              Sadly, he thinks he’s found something magical here. The specification can’t be used against itself in this way unless what an examiner is relying upon is AAPA.

              Good luck climbing that mountain, Random.

              1. 5.1.2.3.2.1.1

                Anyone want to point out to Random that the Berkheimer memo specifically excludes using a single reference as the basis for establishing conventionality?

                It expressly does not. It only excludes a finding that something is conventional merely because it appears in a single publication. It expressly allows for a single reference to be the basis for conventionality in some circumstances, and is largely silent in most other circumstances.

                The specification can’t be used against itself in this way unless what an examiner is relying upon is AAPA.

                The specification is always used against the claims in a 112a rejection. In fact, it would be error to not consider the specification in making a 112a rejection. The Berkheimer memo explicitly states that the conventionality test is the same test as under 112a.

                Can you give me the citation for “the specification can’t be used against itself”? I have heard other people use it but I can’t actually find that statement in the MPEP or elsewhere. Certainly you can’t use postdated art or references to one’s own work, but people seem to think that there is a generic protection against non-admissions but I simply can’t find it.

          3. 5.1.2.3.3

            “Therefore the argument that something is not well-known is best proven by citation to particular detail.“

            Who is actually claiming something conventional and arguing it’s not conventional? I have seen exactly zero instances of what you are attempting to argue. What I have seen is case after case where detailed claims are gisted down to essentially nothing other than gerunds and then attacked as if the claims were five word long.

            1. 5.1.2.3.3.1

              Who is actually claiming something conventional and arguing it’s not conventional? I have seen exactly zero instances of what you are attempting to argue.

              Well I guess the Berkheimer memo has no relevance for you then.

              1. 5.1.2.3.3.1.1

                Random,

                YOUR version has no relevance to anyone.

          4. 5.1.2.3.4

            But at the Office the Examiner is both the source of fact finding (as we do the searching) the fact finder (as we make findings of fact) and the first-tier legal opinion writer.

            You seem to want to act as if you are entirely unrestrained as to what you may deem “a fact,” HOW you may deem anything “a fact,” and for what various reasons, the “HOW” you may deem anything to BE “a fact” does not matter.

            You are simply incorrect in each and every one of these things.

            I suggest that you do a little “fact-finding” into your role.
            You can start with some of the restraints that I have shared with you here.

      3. 5.1.3

        “But a careful reading of the memo doesn’t actually require double rejection. It allows for double rejection, and points to particular rarely-relevant situations, i.e. when applicant admits conventionality, that establishes conventionality, as if that ever happens, or a rare publication not establishing conventionality, as if rare publications are ever found or cited.”

        Nonsense. Berkheimer memo III.A: “an additional element … is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:…”.

        That list doesn’t include “An arguement based on a single publication and a relatively thin disclosure in the specification”.

        Give management credit where credit is due. They wanted to substantially decrease the number of 101 rejections, and between the Berkheimer memo and their refusal to pay for the time necessary to comply with their Memo, they will eventually get what they want.

        1. 5.1.3.1

          That list doesn’t include “An arguement based on a single publication and a relatively thin disclosure in the specification”.

          Actually what the list includes is “A citation to a publication that demonstrates the well-understood, routine, conventional
          nature of the additional element(s).”

          It doesn’t state two or more publications. It states *A* publication. Then that section goes on to limit which publications will not do: Publications which are made available but not published (not the case with patent applications)

          It then states “The nature of the publication and the description of the additional elements in the publication would need to demonstrate that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).”

          The easiest way to conclude that the description of the additional elements are well-known that they do not need to be described in detail is that you’re citing to a patent application which actually does not describe them in detail.

          Here is the kicker that most people misinterpet:

          For example, while U.S. patents and published applications are publications, merely finding the additional element in a single patent or published application would not be sufficient to demonstrate that the additional element is well-understood, routine, conventional, unless the patent or published application demonstrates that the additional element are widely prevalent or in common use in the relevant field.

          I don’t think you’re a lawyer so let me give you a free tip – whenever you see the word “mere” that’s an invitation to distinguish by citing additional relevant facts not otherwise discussed. The only thing this sentence says is that a finding that says “I found this element in this patent pub, therefore it is conventional” is wrong. That does not speak to a situation where you found it in a pub and it was described in a perfunctory manner. That does not speak to a situation where the it was found in the reference and the conventionality is further supported by the spec-at-issue also treating it in a similar perfunctory manner. That does not speak to a situation where you found it in a pub and the pub is from five or ten years before your critical date. An Applicant cannot cite the memo to show clear error in any of those situations, because they are not situations where support is based “merely” on it being found in a single publication.

          You’re also forgetting another part of the memo: This memorandum further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification

          That command doesn’t say similar, it says same. It is the same standard. So before you go getting crazy about Berkheimer shifting the standard of examination, do this: Consider the claim limitation in the current invention. Consider the disclosure in the cited reference. Ask yourself if you would make a 112a rejection to the current claim based on the disclosure in the cited reference. If the answer is no, and the disclosure in the cited reference is not “described in detail” then you have concluded that the prior reference evidences conventionality.

          While you’re at it, compare the disclosure in the cited reference to the disclosure in the instant application. If they are not materially different in detail and the element is not described in detail, under compact prosecution you should a) make the 101 rejection and b) make the 112a rejection because (since they are not different in kind) either they both evidence well-known and the 101 is proper, or neither evidences well-known and the instant invention had to teach in detail. Of course, the quicker way to do it (though not strictly in keeping with compact prosecution) is to simply make the 101 rejection, and when they raise conventionality, point out that they would be admitting a 112a rejection. You’d be surprised how quickly “You’re about to admit to a rejection and malpractice” takes the fight out of an argument.

          Either way, there’s nothing that suggests you need to find, for example, two documents referencing a processor to conclude that a processor was conventional. A single publication referencing a processor, without teaching how to make a processor, evidences conventionality under a whole host of rationales, just not under “I found a processor in this one reference, therefore it is conventional” that mere rationale is foreclosed by the memo.

          1. 5.1.3.1.1

            The easiest way to conclude that the description of the additional elements are well-known that they do not need to be described in detail is that you’re citing to a patent application which actually does not describe them in detail.

            That is expressly stated in the memo as NOT a way to do it.

    2. 5.2

      RandomGuy,

      I think it’s worth considering that the relevant analysis is not just with respect to claim elements individually, but in combination as well. If the claim recites a magic black box and the applicant argues that it is unconventional, then yeah, that’s going to be a problem from a § 112 standpoint.

      On the other hand, consider the case where a claim recites two steps that are alleged to be unconventional in combination. If an ordinary artisan would understand how to perform each step, and the combination of steps is described in the specification, it doesn’t seem like there is a § 112 issue.

      That being said, in general I’m inclined to favor more detailed descriptions in patent applications, and more frequent application of Morse-like treatment for overly broad claims.

      (Re your aside: While some cases may turn on the fact that conventionality requires more than just a showing that something is known, I think a lot of practitioners were most frustrated with the cases where something was asserted to be well known without any evidentiary support at all. Compared to this practice, a citation of a single reference would be a welcome change.)

      JCD

      1. 5.2.1

        JCD,

        I wonder if you recognize the Supreme Court’s OWN “patent profanity” fingers in the “mess” of applicants providing LESS in their applications?

        Remember: the Court in their attempt to provide increased power to PHOSITA in the KSR case ALSO made it LESS necessary to include those very details that you would like to see more of.

        1. 5.2.1.1

          I understand where the frustration is coming from, but I think it’s a really complicated issue. I wish I had more time to dive through it.

      2. 5.2.2

        I will add this note, though, JCD:

        You hit upon a critical item NOT evident in the Office memorandum: the claim as a whole is quite different than merely finding “conventionality” of any or even ALL of the piece part elements of a claim.

        After all, for ALL claims in any of the “typical” hard goods categories, elements can be distilled down to the basic elementary (and absolutely conventional) particles of protons, neutrons, and electrons, which would make the application of the “logic” of those wanting a “piecemeal” approach to swallow ALL of patent law.

        1. 5.2.2.1

          anon,

          I was glad to see that the memo explicitly mentioned a combination of elements in noting that “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of …” Memo from Robert W. Bahr re “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” dated April 19, 2018, p. 3.

          JCD

      3. 5.2.3

        If an ordinary artisan would understand how to perform each step, and the combination of steps is described in the specification, it doesn’t seem like there is a § 112 issue.

        That’s a binary, piecemeal analysis. Let me lay down three simple facts:

        The claim as a whole must comply with 112a, which includes that the scope must be fully described.

        Full description requires particular detail, and an applicant is only at liberty to not discuss in detail “that which is well-known” in the art.

        The 112a analysis is the same analysis as the one for conventionality.

        Given those three statements, either the specification discloses in detail acts that interrelate the two elements or it does not. If it does not, then either the applicant has failed 112a, or the specification evidences that the whole is no more than the sum of its parts and the well-known-ness of each piece together is just as supported as the well-known-ness of each piece individually.

        I appreciate what you’re saying, since it certainly seems like when you read the memo with a certain eye, that you can’t maintain a 101 rejection unless you find two references which fully anticipate the claims but-for the abstraction (otherwise how would you prove the conventionality of the other limitations together). But that obviously isn’t the intent, because that would require every applicant to aver themselves of the “A
        specification is directed to those skilled in the art and need not teach or point out in detail that which is well-known in the art.”” Myers holding or get a 112a application. It’s clearly not the intent of the Berkheimer memo to cause such an increase in 112a rejections.

        1. 5.2.3.1

          Consider whether it’s possible to have situations in which it is not necessary that “the specification discloses in detail acts that interrelate the two elements” (quoting 5.2.3).

          If the elements are steps which an ordinary artisan would understand how to perform, and would understand how to combine once suggested to do so, then it seems like a mere indication in the specification that the two steps are to be combined would be sufficient for enablement and written description support.

          However, the combination of the two steps may well still be unconventional.

          1. 5.2.3.1.1

            …keeping in mind that the level (quantum) of proof for conventionality is FAR greater than mere existence (102) or even ability+motivation+whatever-else (103).

            Conventionality equates with widespread adoption and actual use.

            …keeping in mind as well that the onus remains on the Office until they make a prima facie case AND that they cannot merely assert facts in support of any type of “state of the art” (examiners are constrained in HOW they may use any such mere assertions).

            Note then how Random disappears from the conversation here (and yet is more than eager to refer back – only – to his initial post when the topic comes up co-mingled on a more recent thread).

            This is endemic of the drive-by-monologue “ec(h)osystem” that certain editorial controls promote.

    3. 5.3

      Yes, the PTO April Berkheimer memo does state, inter alia, that: “This memorandum further clarifies that the analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. § 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification.2”
      And yes I agree that, reportedly, until recently, 112(a) examiner rejections were relatively rare.
      But, 112(a) does not necessarily mean “written description” rather than “enablement.” Especially as to original claims that were part of the original specification, and not ambiguous claims, overly generic claims with insufficient species, or “means-function” claims?

      1. 5.3.1

        that memo (also lacking the force of law even as it may constrain EXAMINER actions) also states:

        A finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element.

        1. 5.3.1.1

          One more comment, then off of my soapbox for awhile:

          The memorandum by Bahr NOT ONLY does not have the force of law, but also exhibits a critical weakness in regards to other already existing – and binding on examiners – guidance.

          The Berkheimer memo contains this little ditty:

          If the examiner has taken official notice per paragraph ( 4) of section (III)(A) above that an element(s) is well-understood, routine, conventional activity, and the applicant challenges the examiner’s position, specifically stating that such element(s) is not well-understood, routine, conventional activity, the examiner must then provide one of the items discussed in paragraphs (1) through (3) of section (Ill)(A) above, or an affidavit or declaration under 3 7 CFR 1.104( d)(2) setting forth specific factual statements and explanation to support his or her position.

          But as I have previously provided, the Office dictates that “taking Official Notice” is NOT permitted in order to establish any type of “state of the art” condition, which means that any examiner even attempting to use “Official Notice” even if they deny the use or otherwise do not state that they are taking “Official Notice,” have already failed to provide a PROPER prima facie case of a 101 rejection.

          Bahr’s memo would have been more properly written to reflect the FACT that examiners may NOT attempt to use “Official Notice” as part of the factual element of the legal rejection under 35 USC 101.

      2. 5.3.2

        worth remembering as well: breadth is not the same as indefiniteness…

      3. 5.3.3

        But, 112(a) does not necessarily mean “written description” rather than “enablement.” Especially as to original claims that were part of the original specification, and not ambiguous claims, overly generic claims with insufficient species, or “means-function” claims?

        The base rule is that each and every limitation and the claim as a whole must be described in detail, and the variance from that (which applies in every application) is the Myers rule which says that a specification need not describe in detail that which is well-known in the art. It does not distinguish between enablement and WD.

        Every time you utilize the Myers rule you take a conventionality argument off the table. The general usage is that everything but the alleged inventive act utilizes Myers, so when the alleged inventive act is the abstract idea (which it should be under the directed to analysis anyway) there generally will be no change under Berkheimer.

        It simply is not the game changer people think it is, and with due respect, you don’t want it to be. Berkheimer didn’t change the substantive 101 standard, so I don’t know why you’d want the office to massively cut the number of 101 rejections, unless your goal is to get invalid claims allowed.

        1. 5.3.3.1

          “The base rule is that each and every limitation and the claim as a whole must be described in detail”

          Can you please provide us all with the Federal Circuit opinion from which you learned that a claim as a whole “must be described in detail?” What do you mean by “detail?” The relevant standard is “reasonable certainty” that a spec should describe a feature of a claim. I just love when examiners make up their own standards.

          I’ll venture a guess that your definition of “detailed” works on a sliding scale, where the detail required to support any given claim element is directly proportional to how badly you want to reject that claim.

          1. 5.3.3.1.1

            Can you please provide us all with the Federal Circuit opinion from which you learned that a claim as a whole “must be described in detail?”

            Given that I mentioned Myers I don’t know why just didn’t read Myers, but I guess short answer would be: Probably the best overall case to read is Genentech (108 F.3d 1361). Although ATI is also decent (501 F.3d 1274).

            But the longer version begins most simply with 35 USC 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

            112 on its face requires enablement and proof of possession for the entire claim must be within *the specification* itself.

            Then you read how the specification rule is relaxed for non-novel features: Myers (410 F.2d 420). Myers is really the first case that expressly says the specification can omit well known things in the art. Myers is why every software case I see which only claims a processor as an ancillary feature doesn’t have to teach within the document how to make a processor. Every specification makes use of Myers whether it knows it or not.

            Genentech shows the limits of that rule – That skill in the art cannot substitute for the allegedly novel aspects. Genetech prevents an applicant from simultaneously arguing that a feature is not well-known, yet also supported from outside the specification, which is why its the best case to emphasize what 112 commands on its face: *The specification* must describe. Eventually you reach a case like Lizardtech (424 F.3d 1336) which essentially finds the amount of detail necessary to be a sliding scale based upon how well known something is and the difficulty of the art. MPEP 2161.01 is probably your best one-stop shop if you want to read up on it.

            The amount of detail necessary, from a WD standpoint, is sufficient detail that proves to one of ordinary skill that your inventor possesses the scope. That level of detail is inversely proportional to how well-known the feature is, but never reaches the point where a novel feature can be supported entirely by the skill in the art. In short – the less detail a specification gives to a feature, the more sure that either 1) it is well known to the art or 2) there is a 112a violation.

            The relevant standard is “reasonable certainty” that a spec should describe a feature of a claim. I just love when examiners make up their own standards.

            Not to make you look bad here for making up your own standard just as you’re accusing me of doing so, but “reasonable certainty” is the nautilus standard for indefiniteness (the claims in light of the spec must inform of the scope with reasonable certainty) which is not in play here.

            There is some language that the description must prove with “reasonable clarity” (maybe you mean this?) that the inventor is in possession, but the more common terminology is “sufficient detail that one of skill can reasonably conclude” the inventor had possession.

            I’ll venture a guess that your definition of “detailed” works on a sliding scale, where the detail required to support any given claim element is directly proportional to how badly you want to reject that claim.

            It is a sliding scale, but its largely based on how little overlap there is between the specification drafter paying attention to allegedly novel Feature A, while the person prosecuting the case wants to argue over clearly conventional Feature B because of the art I cited against him.

            Examiners generally don’t have any great desire to reject claims. We reject claims because we feel we have to under the law. There is no point during the examination process where it is easier for us to continue rejecting than it is to allow. Here’s how you know your Examiner has it in for you: All of your claims are rejected twice under 103 using entirely different sets of references – something where the Examiner put in a ton of extra free work just to have you amend around it. Suggesting we’d make a 112a because we “badly” want to reject you sorely misunderstands how we prioritize our time.

            1. 5.3.3.1.1.1

              You are continuously confusing and conflating what is and what is not in play here.

              All the while ignoring the very premise of what a prima facie case means, and the very real difference between “existence” ( as may be provided by 102/103 art) and the higher level of proof necessary to establish conventionality.

              The memo reference to 112a is simply not the “magic” that YOU want it to be.

            2. 5.3.3.1.1.2

              It is a sliding scale, but its largely based on how little overlap there is between the specification drafter paying attention to allegedly novel Feature A, while the person prosecuting the case wants to argue over clearly conventional Feature B because of the art I cited against him.

              Naturally I agree with this, but on a more meta point, I am sort of astounded that this is even perceived as a debatable point. Of course the particularity of disclosure necessary is inversely proportional to the conventionality of the thing being described. What else is the quid that the patentee trades pro quo?

    4. 5.4

      You know, Random, I agree with your #5, but to my mind that simply proves how wildly off base most of the post-Alice/Mayo jurisprudence is. Really, when you scratch the surface of these sort of cases, what you find is really a § 112 problem, not properly a § 101 problem (except in the unintelligible sense in which the Court has made § 101 to subsume all other aspects of the patent law).

      I expect that something north of 90% of the time, if you show a given claim to an Alice booster and an Alice detractor, both viewers can agree on the outcome of “valid or invalid?”. The disagreement is rather on the question of “why did you answer ‘valid or invalid?’ as you did?”.

      If Bilski/Mayo/Alice had been decided exactly the same way, but on other grounds than subject matter eligibility, the law would be much clearer in presentation and more sane in application. The written description requirement and the definiteness requiremend—combined with a more forceful application of § 112(f)—should be doing much more work than they currently do, and subject matter eligibility should be doing much less.

      1. 5.4.1

        But even if that is the case, 112 issues cannot be raised in an IPR, and very rarely get S.J., so rarely get decided in patent litigation before trial, and less than about 5% of patent suits go to trial. Whereas, in contrast, 101 issues can be raised at the very beginning of litigation. Which inevitably leads to to far more 101 issues than 112 issues getting to the Fed. Cir.

        1. 5.4.1.1

          You know, there is nothing in either the U.S. Code or the FRCP that says that § 101 can be raised in a 12(b)(6) but § 112 cannot. That is just a sort of custom that has grown up, and a fairly recent one at that (the incidence of 12(b)(6) motions on § 101 grounds more than doubled between 2015 and 2016). Basically, the reason why you can make a plausible 12(b)(6) motion on § 101-grounds today is that the SCotUS through a § 101-wrench into the works back in 2014. If, instead, SCotUS had chosen a different case and decided it on § 112 grounds, we would be seeing a lot of 12(b)(6) motions based on the § 112 impact of that (hypothetical) case, rather than based on the § 101 impact of Alice.

          My point is that this hypothetical alternative universe in which § 112 were doing more of the work would be a better universe, in which the patent law would be more clear and more intuitively fair.

          1. 5.4.1.1.1

            “the SCotUS through a § 101-wrench”

            Er, this should read “the SCotUS threw a § 101-wrench…”

            Mea culpa

          2. 5.4.1.1.2

            “My point is that this hypothetical alternative universe in which § 112 were doing more of the work would be a better universe, in which the patent law would be more clear and more intuitively fair.”

            Greg,

            I 100% agree. I would also add that in your hypothetical alternative universe, the debate about what is sufficient disclosure to meet the requirements of § 112 would probably be more rational and productive than the debate about what the undefined terms “abstract” and “significantly more” mean in the Supreme Court’s Alice-Mayo test.

            1. 5.4.1.1.2.1

              [T]he debate about what is sufficient disclosure to meet the requirements of § 112 would probably be more rational and productive than the debate about what the undefined terms “abstract” and “significantly more” mean in the Supreme Court’s Alice-Mayo test.

              Agreed. That is at least 50% of why I think the law in the alternative universe would be more intuitively fair. “Significantly more” is the kind of vacuous standard is that is almost purpose-made to leave any given disappointed party feeling that they had been robbed.

              1. 5.4.1.1.2.1.1

                …can you say “Void for Vagueness”…?

                Why aren’t you?

                (that last question is rhetorical, as you ARE saying it perhaps without realizing that you are saying it)

      2. 5.4.2

        112(f)…

        A perpetual source of misunderstanding by some (including – especially – the late Ned Heller).

        the option for FULLY functional claiming should not be confused/conflated with the ability to use terms sounding in function (that are NOT governed by 112(f)).

      3. 5.4.3

        Really, when you scratch the surface of these sort of cases, what you find is really a § 112 problem, not properly a § 101 problem (except in the unintelligible sense in which the Court has made § 101 to subsume all other aspects of the patent law).

        As I think we’ve discussed before, true in many cases but not all. There are two kinds of 101 rejections: Those which are overbroad functional statements which really ought to be 112a WD rejections, and those which truly seek to monopolize ineligible matter.

        I work in computers, so most of my rejections are abstract ideas and are of the first kind – claims to functional results rather than to means of achieving the results. My art would benefit from more 112a’s and less 101s. But I can certainly imagine things like Mayo and Biochem where the attempt is to claim the interrelationship of natural phenomena.

        That protection simply is not offered anywhere else in patent law. As I’ve said, absent Alice logic, I could discover a new source of oil and claim drilling it (effectively claiming the oil) so long as I was particular about the location of the oil. That’s not what patent law is for. Discovering that, e.g., some DNA exists in a new area (Sequenom) is at least closer to what should be patent protectable, but I can appreciate it not being protectable either.

        That’s different from “obtaining and analyzing information” as in Electric Power Group, where really the invention is void for lack of a full description over its whole scope. Though I should point out, it’s not like the WD analysis wouldn’t get as unwieldy as the conventional analysis if you started applying WD to everything either. There’s no way to concisely explain a rule that the claims evidence an improper inductive reasoning jump, it’s just too fact specific.

        1. 5.4.3.1

          As I think we’ve discussed before,… absent Alice logic, I could discover a new source of oil and claim drilling it (effectively claiming the oil) so long as I was particular about the location of the oil. That’s not what patent law is for.

          Well, yes, we have discussed this before, so I am probably just making a tedious bore of myself in retreading these points, but this seems to me to merit two responses:

          (1) Who says this is “not what patent law is for”? What authorities (other than Mayo/Alice themselves) can you cite for this contention?

          (2) Assuming that you can cite some authority whose unimpeachable relevance we would both acknowledge, pause and consider why patent law is not intended to serve such a function, or whether perhaps it should serve such a function.

          To my mind, discovery and disclosure of undiscovered petroleum reserves is a good thing. It is scarcely implausible that a sane legislature might wish—as a matter of public policy—to encourage discovery & disclosure of previously unknown petroleum reserves.

          Why should (could?) Congress not choose to grant patents for that sort of discovery and disclosure? The form of your argument looks like you mean to make a reductio ad absurdum, but the proffered absurdum does not look all that absurd to my eyes.

          1. 5.4.3.1.1

            1) From a positive standpoint, it is clear from several cases (see, e.g., Graham) that “to promote the progress” is not mere prefatory language like the second amendment has. It carries actual substantive weight. If it carries weight, it must mean something. I’d submit to you that what it means is that the patent and copyright powers exist to offset the first-mover disadvantage that comes from the creative or research process. If I spend months writing a book and you spend minutes copying it, and we both sell it for the same amount of money, I learn to not write books pretty quickly (and same with patents).

            The reasoning for the patent power struggles in areas where there has never historically been a first mover disadvantage. For example, I suppose finding a new unique cave or something and reporting the location to the world would constitute a non-obvious disclosure that might form the basis of a claim, but discovery of physical land is a first mover advantage and the land itself cannot be replicated, so there is no disadvantage. Similarly, what we call journalism largely trades on being first, and to me its rather self-evident that the disclosure of those kind of facts don’t seem to be the kind of “discoveries” that would be appropriate for patenting.

            2) From the negative standpoint, to use journalism as an example – I find it hard to believe that you could take the same known mechanisms for reporting a fact, couple them with a new, non-obvious fact, and patent that combination. The same people who wrote the patent clause wrote the first amendment and I don’t see any reason that the first amendment was due to a sea change in their way of thinking. I think facts about society, the kind of work “the press” does, were never patentable.

            From that beginning, I can’t differentiate, e.g., oil location. A previously unknown fact about nature is at least if not more unpatentable as a fact about a person, society, or people made things. It seems to me that if “new oil location + old drilling technique” would be viewed as an improvement to drilling and be patentable, then “new societal fact + old dissemination means” would be an improvement to journalism. This should be clear if for no other reason that sometimes journalists report on the location of oil, which completely overlaps the two spheres. I do think it’s a reductio ad absurdum situation – Nobody has ever tried patenting the location of oil or journalistic facts, its not commonly done, and if it were it would stretch “promote the progress” beyond all meaning. Locating a new raw resource promotes the economy, but it doesn’t promote the progress of the art.

            I don’t suggest that “discovery and disclosure of undiscovered petroleum reserves” isn’t a good thing. It’s that there is a motivation to do it absent the patent act, that there is no first mover disadvantage to engaging in the research, that despite a clear benefit nobody has sought such a patent, that the improvement is a commercial improvement and not a promotion of the art movement, and that similar analogous situations are clearly foreclosed from patentability. None of them are dispositive on their own, but taken together it seems to form a pretty clear web for me.

            Why should (could?) Congress not choose to grant patents for that sort of discovery and disclosure?

            Because it’s beyond their power. I realize that sounds tautological, but Congress does not have an unlimited power to promote the dissemination of previously unknown facts, that’s simply not what their power is. If reporting the location of oil were to be an improvement to an art, there is no fact which would not form the basis of patentability.

            And let’s be clear what we’re talking about here: Congress has general tax and spend powers. They could offer a monetary reward for the disclosure of any information they want. They could finance research into any information they want. But the patent power is a specific quo that is attached to particular strings – it offers the ability for a private entity to command their fellow man to stop doing something, which (depending on the patent) Congress would otherwise lack any power to control. To read the patent power as “Congress can give a patent for any information it may be interested in” is a significant expansion of federal power well beyond interstate commerce.

            1. 5.4.3.1.1.1

              interstate commerce…. sounds tautological (try: IS)

              You really have no clue as to what you are talking about Random.

              You have some bits and pieces, and have fabricated this “new cloth” from those bits and pieces, but your new cloth is a whole new cloth and is untethered to our actual law (and history of that law, which provides the context).

              That you (appear to) want to be so sure of yourself does NOT remove the error in your schemes.

              All that does is make it come across that your are irretrievably broken in your thinking, unapproachable in making you understand the reality that is there, as opposed to your fantasy.

            2. 5.4.3.1.1.2

              The same people who wrote the patent clause wrote the first amendment…

              Two brief responses: (1) I am not sure that these two actually were written by “the same people”; (2) another way of saying the same thing that you wrote would be to say that the authors of the copyright clause wrote the first amendment, so clearly their concern for press freedom or freedom of expression has discernible limits.

              [F]acts about society, the kind of work “the press” does, were never patentable.

              I wonder if you are, perhaps, misunderstanding the point that I tried to make, because this response seems wildly inaposite. The sort of claim that I am suggesting could not be infringed merely by a journalist publishing my newly discovered oil location data. My claim would only be infringed by actually drilling in that location.

              In other words, imagine “a method for petroleum extraction, the method comprising drilling at least 500 m into the earth, wherein the drill is located within a radius of 15 m from a point at 5 degrees, 40 min, 3 sec east and 120 degrees, 23 min, 14 sec north.” That claim is 1) with a statutory category (method); 2) not an abstraction, a law of nature, or a natural product; 3) useful; 4) novel, 5) nonobviousness; 6) clear to a reasonable person trying to understand the claim boundaries; 7) and fully described and enabled, assuming a plausible accompanying specification.

              So, where does the claim fail? Or would such a claim, if granted, constitute the basis for an as-applied challenge to the constitutional supportability of the present patent act?

              1. 5.4.3.1.1.2.1

                (2) another way of saying the same thing that you wrote would be to say that the authors of the copyright clause wrote the first amendment, so clearly their concern for press freedom or freedom of expression has discernible limits.

                But copyright does not extend to facts. You can’t have a free press if Congress can ultimately control who gets to state facts.

                My claim would only be infringed by actually drilling in that location.

                I suggest a similar claim. If “1. A method of improving the drilling arts comprising: [particular new location of oil] + old drilling means.” improves the drilling art, then it necessarily follows that “1. A method of improving the journalistic arts comprising: [particular new fact about society] + old reporting means” improves the journalism art.

                So, where does the claim fail? Or would such a claim, if granted, constitute the basis for an as-applied challenge to the constitutional supportability of the present patent act?

                Either it would fail under utility, or it be a judicial exception as a fact of nature, or it would be an as-applied challenge to the patent act, assuming “drilling at least 500 m into the earth” was previously known in the art, which I think we both agree upon.

                I recognize that most of the times “fact of nature” is described as “natural laws” which suggests it would not include this. I don’t intend to get caught up in symantics here – it could fit within a current judicial exception category, or could constitute a new one. I view the judicial exceptions as a statutory interpretation that is necessary to avoid a constitutional problem, so to me whether it is an old JE, or a new JE, or an as-applied challenge to the patent act is largely a matter of how much congress wants to fight over the issue.

            3. 5.4.3.1.1.3

              [F]inding a new unique cave or something and reporting the location to the world would constitute a non-obvious disclosure that might form the basis of a claim, but discovery of physical land is a first mover advantage and the land itself cannot be replicated, so there is no disadvantage.

              Let’s explore this, because I believe that this is an important locus of our disagreement. Discovery of physical land is a first mover advantage if the land is not yet owned. The original discover can claim the hitherto-undiscovered land, and then the now-owner has all of the property rights that a patentee would have, and then some more. But what of the circumstances in which the land itself is already owned by someone else. In that case, the first-mover problem is still in place, just as with your author example above.

              That is to say, if I discover oil on Ted’s land, then Ted gets rich and I get nothing, so I quickly learn not to prospect on land not my own. That is to say, I have a talent for prospecting, but no oil rich land. Ted has oil rich land, but no talent for prospecting. In a state of nature, the first-mover problem means that the oil never gets discovered, so Ted, I, and society at larger are all the poorer. This is exactly the sort of problem that patents (or IP more generally) is meant to solve.

              In a world in which this discovery is patentable, then I have an incentive to put my prospecting talents to use. I discover and disclose the oil, and in return I have a time-limited right to prevent anyone else (Ted included) from extracting the oil. Ted, of course, also has a right as the landowner to prevent me from extracting the oil, but that is scarcely an insuperable problem. In a rational world, we will arrive at some licensing deal that will make us both wealthier.

              In other words, this is exactly the same first mover problem—with exactly the same solution—as your more conventional author example.

              Nobody has ever tried patenting the location of oil or journalistic facts, its not commonly done, and if it were it would stretch “promote the progress” beyond all meaning.

              Nobody (except perhaps yourself) is talking about “patenting facts” here. The claim that I have in mind would leave people free to talk about, think about, etc. the facts themselves.

              I agree that nobody (to the best of my knowledge) has ever tried to patent this sort of discovery. On the other hand, that might be because ownership of the land is a good way of acquiring rights to the oil, without a need for a patent. In other words, the lack of patents on this sort of thing might mostly reflect economic practicalities more than legal necessities.

              As for stretching “promote the progress,” that is the very point in contention. Does this stretch “promote the progress” beyond all meaning? I guess that I do not see it. There is something that cannot be done before my discovery and disclosure than can be done after. The ability to do something that was hitherto impossible is rather what one means by “progress of the art.” How then, has my (hypothetical) disclosure not promoted the progress?

              1. 5.4.3.1.1.3.1

                But what of the circumstances in which the land itself is already owned by someone else. In that case, the first-mover problem is still in place, just as with your author example above.

                I disagree, excluding newly discovered, e.g. caves from patent protection has no first mover problem. In the author example, I expend significant resources which I know I cannot recoup because my opponents can freeload off me. In the land example, the owner of a land already has a maximum incentive to explore his land, as the land owner is the only who can exploit his land.

                It’s certainly true that the non-land-owner is disincentivized (and not only because of the theoretical lack of a patent, but because he’d be a trespasser) from exploring, but there’s no first mover problem because there’s still someone who benefits from moving first – the land owner.

                That is to say, if I discover oil on Ted’s land, then Ted gets rich and I get nothing, so I quickly learn not to prospect on land not my own.

                Right, but if Ted explores his land and you explore yours, all the land gets explored, and both of you are motivated to do so because exploration means you might get rich.

                In contrast, if Ted invents a simple machine that you can easily reverse engineer and there’s no patent protection, Ted knows he won’t recoup his research costs, and you similarly know you won’t recoup your research costs, so neither you nor Ted perform research.

                How is “all the land is explored” versus “none of the research is done” even remotely the same situation?

                That is to say, I have a talent for prospecting, but no oil rich land. Ted has oil rich land, but no talent for prospecting.

                But oil prospecting is curable by a simple two party service contract – you offer to prospect in exchange for some future percentage of profits or a current single value. Is your argument that there is specialization, therefore there is always a first mover disadvantage in everything? Conversely, the reverse engineering problem of a standard patent is not feasibly curable by contract – you would have to contract with everyone in town that they not reverse engineer your invention.

                Besides aren’t your hypothetical problems dismissed by actual experience? There must be thousands of companies who prospect for oil deposits for precious gem deposits, for mineral deposits, and yet I’m not aware of what would necessarily be tens of thousands of patents on discovered deposits. Both prospector and land owners seem to get by just fine (and deposits of all types are found) without the patent protection scheme being involved.

                Nobody (except perhaps yourself) is talking about “patenting facts” here.

                But that is the practical result. If I can claim “new location of oil + old means for drilling the oil” I’m effectively claiming the oil for the life of the patent, since you cant do anything with the oil without first drilling for it. If I can claim “new societal fact + old means for reporting the fact” I’m effectively claiming the fact, because I can monopolize all manners of disseminating the fact except those not previously known. If intermediated settlement + internet is eligible, then likely (new fact) + internet can only be more eligible. And if I can claim new fact + internet, I can claim new fact + radio, or tv, or printed publication, or word of mouth.

                Suppose Fox News learned that some of its on air personalities had been inappropriate toward women. Should Fox be allowed to apply for a patent which, in different embodiments, embraces every known manner for reporting on the fact (“a method for reporting the behavior of fox news on air personalities, comprising…”), and the government decide to insulate them from bad press? Can the government insulate itself from bad press by granting patents to likeminded outfits that will bury the story? If not, what is the line of demarcation that renders that claim invalid but the oil location + drilling claim valid?

    5. 5.5

      “Consequently, when an Applicant tries to raise Berkheimer on what are truly conventional limitations, the memo operates as an intrinsic 112a WD rejection because specifications never describe elements they know to be conventional in detail.”

      There’s no reason for them to comment on the conventionality of their claims. Applicants will not “raise Berkheimer” in this way because examiners must first provide a proper 101, which management refuses to pay for.
      If you’re using anything other than the four options listed under III.A in the memo to call an element well known, they will just attack your rejection.

      1. 5.5.1

        There’s no reason for them to comment on the conventionality of their claims.

        Every specification comments on the conventionality of its claims by the amount of detail placed into describing a feature.

        Let’s take an easy case: Applicant claims the Alice claim. Applicant argues that only a single reference is cited to teach a processor and argues the conventionality of a processor. Applicant’s spec does not teach how to make a processor.

        In response to an argument that the processor is unconventional, you make a 112a WD rejection over the word “processor” in the claims, and cite to the fact that the specification only discloses a processor and not how to make or what it is composed of in detail.

        Given that a 101 is pending and a 112a is pending and the failure of the specification to describe the processor in detail, is the conventionality of the processor material to the patentability of the claim? Construct a response to the 112a rejection that does not admit the inappropriateness of the 101 argument.

        If you’re using anything other than the four options listed under III.A in the memo to call an element well known, they will just attack your rejection.

        As I’ve responded above, I suspect your view of how constraining the memo is to be excessive. It’s entirely possible to find (and be upheld) something is conventional under a single patent pub most of the time.

        1. 5.5.1.1

          “Let’s take an easy case: Applicant claims the Alice claim. Applicant argues that only a single reference is cited to teach a processor and argues the conventionality of a processor. Applicant’s spec does not teach how to make a processor.”

          This is a farcical example. I can’t imagine any claim directed to a computer-related invention falling in to this type of fact pattern.

          The truth is that examiners like you don’t like or agree with functional or methodological claiming. The unconventionality of a claim can rest squarely in a single element in combination with other conventional elements.

          1. 5.5.1.1.1

            This is a farcical example. I can’t imagine any claim directed to a computer-related invention falling in to this type of fact pattern.

            Let’s take a similar example: Applicant claims a code for performing function X. Applicant’s spec does not teach an algorithm for performing function X. Repeat as above.

            The truth is that examiners like you don’t like or agree with functional or methodological claiming.

            Most functional claims are invalid, usually because the run afoul of 101, 103 and 112a. I have no affinity or non-affinity for the claims, as I generally just don’t care if you get a patent or not. My job is to examine your claims, and when I’m done with yours I reach into a stack that is, for all intents and purposes, infinitely large, and I pull out more claims to examine.

            The unconventionality of a claim can rest squarely in a single element in combination with other conventional elements.

            Of course it can. Nobody suggests otherwise.

            1. 5.5.1.1.1.1

              Your bias belies your statement to the contrary.

  4. 4

    Renya is a Google just who admitted he knew nothing about science or patents prior to his appoint to burn the patent system down.

    Lourie is an ossified dingbat that needs to retire or be impeached.

    1. 4.1

      Renya is an Google ju[ri]st who admitted he knew nothing about science or patents prior to his appoint to burn the patent system down expert on international trade, whose expertise constitutes a valuable contribution to the work of a court with exclusive jurisdiction over international trade appeals. [Fixed that for you]

      Lourie is an ossified dingbat that needs to retire or be impeached.

      Maybe, maybe not. He is, however, the voice in this order who is calling for Congressional action on § 101. That does not seem like a very dingbatty position to hold. The patent system would greatly benefit if the Congress were to codify the AIPLA amendments to § 101, for example.

      1. 4.1.1

        That does not seem like a very dingbatty position to hold.

        What is utter “dingbatty” is that no one seems to want to note the elephant in the room:

        The law as (re)written by the Supreme Court is Void for Vagueness.

      2. 4.1.2

        International trade? Seriously? So Renya is qualified to write new laws in patent law through his joke opinions ’cause he know about international trade.

        It takes many years to understand science and patent law. Renya is not qualified to sit on the CAFC.

        Lourie wants Congress to exclude all information processing patents. Lourie’s call to Congress was just another plea from this 19th century-trained mind to narrow patent law.

        1. 4.1.2.1

          Seriously? So Renya is qualified to write new laws in patent law through his joke opinions ’cause he know about international trade.

          I agree that expertise in trade does not leave one well qualified to think about patents, and vice versa. If I had the power to rewrite the CAFC’s authorizing legislation, I would separate out the patent appellate jurisdiction from the trade appellate jurisdiction, and move the two streams of appeals into two separate courts. Come to that, I might also separate out the federal claims stream as well.

          For all that, however, as an actual historical matter the CAFC was created by merging the CCPA with the Court of Federal Claims (appellate division). The CCPA was, in turn, created by transferring jurisdiction over appeals from the PTO out of the CADC and into the old Court of Customs Appeals (CCA) to create the Court of Customs & Patent Appeals (CCPA). As a result, the modern CAFC has a hodge-podge of separate subject-matter-specific appellate jurisdictions: federal claims and patents and international trade cases. One needs some judges with patent expertise, and some with trade expertise, and some with takings expertise.

          Like yourself, I would prefer it if the patent-expert judges were the ones to handle all of the patent cases, and the trade-expert judges were to handle all of the trade cases. For better or worse, however, that is not how the court runs it. In a world where any given CAFC judge can be assigned to any given panel, we will have to live with the idea that there will be people with little background in patents, judging patent cases for the simple reason that they are well qualified to judge some of the other cases that the CAFC handles.

          So, yes, his qualifications as a trade expert will have to be enough to justify his presence on patent appeals.

          Incidentally, it is not clear to me that he deserves much blame for tearing down the patent system. Judge Reyna was, for example, the author of the McRo opinion.

          1. 4.1.2.1.1

            “Incidentally, it is not clear to me that he deserves much blame for tearing down the patent system. Judge Reyna was, for example, the author of the McRo opinion.”

            Sincerely, I doubt Reyna ever read McRo. If he had, he’d realize the McRo decision was based on available evidence and/or the lack thereof. Reyna has either gone totally brain-dead in the last two years, or someone else wrote McRo.

          2. 4.1.2.1.2

            Greg, you do no service to the patent system by not acknowledging that Renya is not qualified to sit on the CAFC and that in all likelihood Google selected Renya for his willingness to burn the patent system and his willingness to be a judicial activist.

            There has been many articles about Google’s undue influence over Obama regarding patent matters.

  5. 3

    I can’t see any logical, legal, historical, or procedural reasons to treat eligibility differently than claim construction. Both are mixed questions of law and fact. Both determinations must be settled before litigation can proceed, because both define what the invention actually is for the purposes of that litigation.

    In the more than six years that I have been engaged with this subject, almost nothing has changed. The run-up to Mayo/Alice (including Bilski) set the key arguments in motion, and they have not been resolved.

    I expect no legislative fix because there is no ideological coherency on a left/right axis, or authority/liberty axis, or even a powerful / powerless axis.

    There is only the experience that almost every eligibility dispute turns on the meaning of some species of information, which is a virtually identical legal analog to the situation when the meaning of the words in a claim are at issue.

    Plain and simple: until the relationship between information and eligibility is defined by law or doctrine, there will be only the random walk of the cases we see.

    I suspect that the linkage of the printed matter doctrine to eligibility my lead to an interesting sideshow- or perhaps even frame up the information problem in a way that attracts the Supreme Court toward something more reliable than Alice.

    1. 3.1

      The question of whether it is a “mixed question of law or fact,” is actually secondary. The question is, who decides the “factual” questions?? Court or jury? That’s the much bigger question behind these petitions.

      In claim construction, claim construction is really a legal question. The district court resolves any subsidiary factual questions; they are not presented to jury.

      If this is the way the 101 issue is handled, I think the impact of these cases is small; the district court can conduct a Markman-style hearing on Alice step 2 and issue its findings as a matter of law.

      But with Alice/Mayo step 2, the two cases cited in the article seem to suggest that JURIES may be deciding Alice Step 2 issues where there’s a real disputed issue of fact. With the clear and convincing standard of proof, which spooks juries away from invalidity findings, you’ll see a lot of patents upheld under 101 where there really is no basis.

      That’s where the rubber meets the road; not the technical question of fact/law, but who decides the subsidiary factual questions.

      1. 3.1.1

        The district court can conduct a Markman-style hearing on Alice step 2 and issue its findings as a matter of law. <————–this is good.

    2. 3.2

      Both [eligibility and claim construction] determinations must be settled before litigation can proceed, because both define what the invention actually is for the purposes of that litigation.

      I have seen you make claims like this before, Martin, but I am not clear on what you mean in the above (please excuse me if you have explained this to me already and I have forgotten). Eligibility is not a determination of what the invention is. That is claim construction. Eligibility is a determination as to whether the thing claimed is §101-eligible.

      What am I missing here?

      1. 3.2.1

        Greg, you are missing the overlap. Is a claim for a stock-trading GUI a computer invention or a stock trading invention? Clearly it depends on the claims, the prior art, the specification, and maybe even the inventor’s frame of mind. What the invention actually is may not be contained merely in the words of the claims- but in the relations of the claims to other elements.

        1. 3.2.1.1

          Two points:

          1) Is a claim for a stock-trading GUI a computer invention or a stock trading invention?

          What does that question have to do with eligibility? That sounds more like an obviousness or enablement question to my ear.

          2) If by “eligibility” you mean “into what art category should we slot it?”, then I am not clear as to why you think that this is a “determination[ that ]must be settled before litigation can proceed… .” By definition, only one part of litigation can go first. The Court (in one of its few wise decisions regarding patents) held that claim construction should be moved up to a very early stage in the proceedings because frequently you can settle every other matter in dispute once the constructions of disputed terms are settled. It is not clear to me, however, that “what art category is this?” is the kind of question that has—by itself—a similar power to resolve a host of other questions once answered. Once again, what am I missing?

          1. 3.2.1.1.1

            1) Is a claim for a stock-trading GUI a computer invention or a stock trading invention?

            What does that question have to do with eligibility? That sounds more like an obviousness or enablement question to my ear.

            If we can’t locate the invention in a particular field of endeavor, how can we define what the subject matter of the claims really is?

            2) If by “eligibility” you mean “into what art category should we slot it?”, then I am not clear as to why you think that this is a “determination[ that ]must be settled before litigation can proceed… .”

            No, I mean “what exactly is the invention here?”

            In the GUI example, who is our PHOSITA? A trader? A coder? A Ux designer? An ordinarily skilled stockbroker who is also an ordinarily skilled interface designer? Is the subject matter stocks, computers, or just an arbitrary book keeping item for the PTO’s art unit assignment?

            This is the crux of “do it on a computer” inventions. Was the actual novelty in the underlying activity, now handled in a new environment (but perhaps non-inventively), or has the underlying activity been improved by some novel elements in the new environment?

            Or is the move to a new environment automatically inventive, because it’s different?

            1. 3.2.1.1.1.1

              What does “move to a new environment” mean?

              (especially in light of XKCD:tasks -> link to xkcd.com ?)

            2. 3.2.1.1.1.2

              If we can’t locate the invention in a particular field of endeavor, how can we define what the subject matter of the claims really is?

              Sure. I am not arguing that this is an unimportant question. I just do not see how this is an eligibility question. There are lots of questions that are essential to reaching the right outcome in a given patent dispute that are not eligibility questions.

              In the GUI example, who is our PHOSITA? A trader? A coder? A Ux designer? An ordinarily skilled stockbroker who is also an ordinarily skilled interface designer? Is the subject matter stocks, computers, or just an arbitrary book keeping item for the PTO’s art unit assignment?

              This is the crux of “do it on a computer” inventions. Was the actual novelty in the underlying activity, now handled in a new environment (but perhaps non-inventively), or has the underlying activity been improved by some novel elements in the new environment?

              This line of explanation makes me to suspect that I am missing something, because you seem to have a very clear idea that you think you are explaining, but I just am not following. Why is the question “who is the PHOSITA?” supposedly relevant to eligibility? That is usually the sort of question that comes in at the obviousness or enablement analyses.

              I suppose it is clear enough why “who is the PHOSITA?” might relate to claim construction (which is supposedly, albeit rarely in practice, achieved relative to a notional skilled person), but that is still not subject matter eligibility. I am still lost as to how eligibility relates to claim construction in your understanding.

              1. 3.2.1.1.1.2.1

                Why is the question “who is the PHOSITA?” supposedly relevant to eligibility?

                Because “who is the PHOSITA” goes a long way to answering the question “what is the subject matter of this invention?”, which is (or should be) a required construction before one can ask “is the subject matter of this invention eligible for patenting?”

                “Move to a new environment” means an analogue. One exists because the utility of computers is that they model, simulate, or process symbols of things that exist in the world.

                An analogue is when a thing is seen as comparable to another- i.e. the thing in the world and the computerized model of the thing.

                1. An analogue is when a thing is seen as comparable to another- i.e. the thing in the world and the computerized model of the thing.

                  You misunderstand the topic, both the patent law and the innovation involved with your desire here to treat this merely as “an analogue.”

                  Under your view, you entirely miss the concept of anthropomorphication. Machines DO NOT think – analogue or otherwise.

                2. Because “who is the PHOSITA” goes a long way to answering the question “what is the subject matter of this invention?”, which is (or should be) a required construction before one can ask “is the subject matter of this invention eligible for patenting?”

                  I begin to suspect that we are merely indulging an equivocation of what each one means by “eligibility.” I think that you are conflating two concepts that I would prefer to distinguish as “construction” and “eligibility” into a single concept that you are terming “eligibility.” That is to say, if you think that “what is the subject matter of this invention?”—which I regard as the paradigmatic construction question—is an eligibility question, then it follows that you and I simply mean different things when we talk about “eligibility.”

                  Fair enough. If that is the case, then naturally I agree that “eligibility” (as you are using it) should be determined up front of the process, for the simple reason that I agree (I think that everyone agrees) that claim construction should be determined early in the process (as the Court directed in Markman). It is still not clear to me that there is a pressing reason—as a general rule—that the rest of the eligibility analysis (the part that I would term “eligibility” proper) needs to occur up front, but maybe that is not an important enough point to pursue any further.

                3. anon you are like a random word generator.

                  Tell us, how does bowling as computer game compare to bowling at the local alley? Is there no relationship whatsoever?

                  Who shall our PHOSITA be? A bowler? A computer game designer? A computer game player generally?

                  How shall we locate invention? Is it in the game of bowling? Is it in the art of computerizing rolling ball games? Any games? Perhaps it relates to Air-Traffic control software in an important way?

                  What shall be the subject matter that is exposed to an eligibility analysis “as a whole”?

              2. 3.2.1.1.1.2.2

                That is to say, if you think that “what is the subject matter of this invention?”—which I regard as the paradigmatic construction question—is an eligibility question

                Greg, are these two questions identical?

                “what is the subject matter of this invention?”

                “what are the meanings of the words in this claim”

                I absolutely agree that both are exercises in construction. I think, however, that they are two different questions. That’s why I think Markman needs to be expanded to include an eligibility construction that must precede an eligibility analysis.

                First, say what the invention’s subject matter IS. Second, say how THAT subject squares with what may or may not be patented as patentable subject matter.

                1. Greg, are these two questions identical?

                  “what is the subject matter of this invention?”

                  “what are the meanings of the words in this claim”

                  Er, yes. Those two questions are identical in substance, or at least they should be. One knows “what is the subject matter of this invention” by interrogating the meaning of the words (and grammar, and syntax, etc.) in the claims. I take your point that we need to think about “who is the PHOSITA” here, because the meaning of those words are meant to be the meaning that the putative PHOSITA would ascribe to them.

  6. 2

    Two quotes that intrigued me:

    (Fn 2 of Judge Moore’s concurrence): “It would be odd to suggest that § 101 is not an invalidity challenge. It falls under Part II, Chapter 10 of the Patent Act entitled Patentability of Inventions. It sits alongside §§ 102, 103 and 112, which likewise articulate validity concerns. Moreover, the single sentence in § 101 actually contains two patentability requirements: eligibility and utility. Both have long been treated by courts as questions of validity.”

    I gather that this is some sort of preemptive strike against Integrated Tech. Sys.’s cert. petition. Considered in this respect, the argument rather misses the point. The question is not whether § 101 challenges are “validity” challenges. The question is merely whether they are the sort of validity challenge that is permitted under § 282 as a defense to infringement allegations.

    (Pgs. 4 & 5 of Judge Lourie’s concurrence): “[Section] 101 requires further authoritative treatment. Thinking further concerning § 101, but beyond these cases, steps that utilize natural processes, as all mechanical, chemical, and biological steps do, should be patent-eligible, provided they meet the other
    tests of the statute, including novelty, nonobviousness, and written description… [F]inding, isolating, and purifying [natural] products are genuine acts of inventiveness, which should be incentivized and rewarded by patents. We are all aware of the need for new antibiotics because bacteria have become resistant to our existing products. Nature, including soil and plants, is a fertile possible source of new antibiotics, but there will be much scientific work to be done to find or discover, isolate, and purify any such products before they can be useful to us. Industry should not be deprived of the incentive to develop such products
    that a patent creates.”

    Yes, yes, and a thousand times yes. Unfortunately, I am not holding my breath that Congress will pay more attention to Judge Lourie’s plea on this point than they have paid to Judge Michel’s pleas, or Judge Linn’s pleas, or Judge Rader’s pleas, etc. Too bad, because Congress’ input is really needed on this area of the law.

    1. 2.1

      The question is merely whether they are the sort of validity challenge that is permitted under § 282 as a defense to infringement allegations.

      Very astute.

      Next question:

      Are ALL defenses to infringement allegations necessarily limited to those under § 282?

  7. 1

    A bad day for TC 3600. Time for a shake-up Director Iancu.

    1. 1.1

      That raises an interesting question, namely, how many applicants that got themselves into TC 3600 for broadly claiming business methods really have claim and/or spec support grounds to argue they do have more than “well-understood, routine, and conventional?” I.e., I would think it would have more impact in more technology-oriented TCs?
      [And a PTO Berkheimer guidance is already out.]

      1. 1.1.1

        I’ve had several applications that were originally in TC 3600 that I’ve moved to other art units in continuations. Predecessor counsel managed to dump in enough details from the disclosure as to how the technology functions, but then claimed the business result.

    2. 1.2

      “A bad day for TC 3600. Time for a shake-up Director Iancu”

      I just had a 3600 examiner issue a 101 rejection while ignoring the USPTO’s Berkheimer memo completely. Little will change in the TC3600 swamp.

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