Sole Exceptions to Subject Matter Eligibility

Patent owners and innovators continue to push for statutory reform of the doctrine of subject matter eligibility — with the primary goal of repudiating recent Supreme Court precedent of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).

Several bar associations and groups presented their proposed revisions. That approach, however, was something of a stumbling block for the initiatives. Although there was generalized unity, there has not been unity on the specifics. That is slowly changing with AIPLA, IPO, and NYIPLA all on-board with roughly the same proposal:

35 U.S.C. § 101—Inventions Patentable

(a) Eligible Subject Matter.—Whoever invents or discovers any useful process, machine, manufacture, composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

Here, the term “claimed invention” does not mean what might suggest — an invention that has been claimed in a patent or patent application. Rather, the term “claimed invention” is narrowly defined as “the subject matter defined by a claim in a patent or an application for a patent.” 35 U.S.C. 100(j).  In other words, the “claimed invention” is what is claimed to be the invention.

Of course, the next step will be much more difficult for proponents of the legislation – getting Congress to act.

 

99 thoughts on “Sole Exceptions to Subject Matter Eligibility

  1. 14

    David Stein: What kind of invention does § 101 prohibit that the combination of 102, 103, and 112 does not? 46 years after Gottschalk v. Bendon (1972!), we still have no answer.

    For starters, non-obvious methods of carrying out a logical process on data are prohibited by 101 and nothing in 102, 103 or 112 would prevent them from being patented otherwise.

    That was an easy question to answer. So easy that one wonders whether the person who asked the question has the faintest clue about the subject.

    1. 14.1

      And you giving a wrong answer (see Diehr, See encryption – heck even see Benson [we do not so hold] – only shows that you don’t have the faintest clue about the subject.

      Your Accuse Others meme is showing.

      1. 14.1.1

        Billy, David asked a simple question and I’m giving the simple answer.

        Go ahead and file a claim to “A method of performing logic on data”, where the claim includes only the logic steps and a description of the data.

        It’s an ineligible claim. The PTO will reject it and even if if the PTO s c r ews it up on its own, there is no way such a claim will ever be enforceable.

        Everybody knows this. Or you can just continue to be the poster child for malpractice and glibertarian pants-wetting, you p@ thet ic schlubby hypocrite.

        1. 14.1.1.1

          Your simple answer is simply wrong (for any number of reasons, of which, you have been put on notice repeatedly).

          How is that copyright project “just on logic” coming along?

    2. 14.2

      “non-obvious methods of carrying out a logical process on data” are methods and are eligible under 101 and if we assume non-obvious carries with it not anticipated, they are allowable under 102 and 103 as well.

      1. 14.2.1

        “non-obvious methods of carrying out a logical process on data” are methods and are eligible under 10

        LOL That’s not the analysis. Even David Stein knows that much.

        Geebus crisp0 you guys are unbelievable.

  2. 13

    ” the “claimed invention” is what is claimed to be the invention”

    That … is what patent law in the US has come to.

  3. 12

    Perhaps “as a whole” should be replaced with “in its entirety” or some other language that is more inclusive – at least if part of the objective is to make isolated genes patent eligible.

    The current Supreme court seems to under stand “as a whole” as something amenable to being dissected and then looking at at least some individual parts individually without the rest of the whole. Perhaps “as a whole” could use further definition in the satute.

    1. 12.1

      Change in wording alone will not stop the Supreme Court from mashing the wax nose of patent law.

      Any lasting attempt at improvement may need to include jurisdiction stripping.

  4. 11

    Has anyone had a lot of luck in their legal practice in telling a judge or the PTO that they don’t care what the Sup. Ct. says because they know better?

    1. 11.1

      Why do you ask?

      1. 11.1.1

        Because it seems to be the gist of a high percentage of the comments by some folks on this blog. [The opposite of yours below.]

      2. 11.1.2

        Because he does not want to question (or even bother engaging in questioning) what the Royal Nine pronounce, and this is his way of taking a snide shot from the sidelines as opposed to addressing any position on the merits.

    2. 11.2

      Perhaps that protege of Ray Niro’s who once accused a judge of going “rogue” will pipe up here. That worked out really well for him as I recall.

  5. 10

    Test: What about a new putting stoke? Trivial. Non- trivial, what about a new break thru surgical procedure? These are both steps of a novel method claim.

    1. 10.1

      Why would you think that a new putting stroke is trivial?

      Do you realize the level of effort, amounts of money, value placed on recreational items?

      I am not sure that “trivial” is the classification that you are looking for.

  6. 9

    Malcolm plays the “Look at me! Look at me!” post on top game – while adding nothing new.

    How very trite.

    How about this instead Malcolm – you actually address the points put to you (leave out the ad hominem until you do), and you know – contribute something meaningful for once in the past 13 years.

    And byt he way – that rant of yours right below at 8 – wtflab, dnr.

  7. 8

    Billy just loving himself a great big strawman: Not only does eligibility inure to claims that may contain elements that ARE mental steps, but eligibility may very well inure to claims composed ENTIRELY of items each of which are known.

    Yummy! Of course nobody has ever argued the opposite, at least not intentionally. But that’s not going to stop Billy! Gotta kick up some dust now and then lest the basic truths become too clear for everyone.

    I’m still waiting for a coherent defense of this ridiculous “proposal” with its gaping, glaring flaws. Some guy named Greg DeLassus says he “really likes” the proposal but he can’t be bothered to step up and explain whether he “really likes” the inevitable results that would plainly flow from the adoption of the proposal — results that will definitely not be “really liked” by anybody else except people in a position to game the system for their benefit at the expense of everyone else (e.g., people who are … patent attorneys …. like Greg! Surprise!).

    The absence of any such defense and the presence, instead, of paragraph upon paragraph of vapid smarmy discourse about the bad ol’ Supreme Court and the mean “discriminatory” behavior against The Most Important People Evah y@dda y@dda y@dda remains totally predictable. We’ve been watching the players play their rhetorical games here for well over a decade now.

    So let’s just summarize the fundamental issue again, in a nutshell, so even the shiniest light green newbie can see what’s going on. The fundamental issue is that, as long as we use claims (words) to describe inventions, it is logically impossible to have a working subject matter eligibility “test” (or, more accurately, “collection of tests”) that doesn’t take into account the relationship of the claimed invention to the prior art. That is not to say that every time the subject matter eligibility of a claim is tested that one must necessarily make that comparison (some claims are so “out there” no such comparison is needed). But it does mean that if you attempt to prevent any such comparison across the board in all cases, you are doing the statutory equivalent of shooting yourself in the face (if you are, in fact, seeking to establish a subject matter eligibility screen that functions as such).

    Why is this the case? One of the reasons this is the case is that (as has been recognized) (1) a scrivener can characterize pretty much anything as a “process” or a “composition of matter” and (2) a scrivener can always insert a prior art “context” into a claim which prevents the claim from being characterized as one that is “carried out solely in the mind.” I use the term “context” loosely here; it isn’t limited to a place or a time but rather includes any other non-mental event that could take place before or after the “valuable” mental step whose protection by patent is sought.

    The simplest example which demonstrates this reasoning has always sufficed to kick the maximalist anthill into a zillion pieces so let’s just revisit it again (and await the inevitable dust-kicking by Billy et al.). Let’s say you want to patent a “process” of thinking about a non-obvious correlation. Well, you can’t do that (even under the ridiculous reprehensible statute that Greg DeLassus “really likes”). So what do you do instead? Well, the easiest solution is to draft the claim with a single trivial “limitation” that isn’t inventive and still captures the gold. For instance, put a step of “breathing oxygen” (not purely mental) or “wearing clothes” (not purely mental) or “blinking an eye within one hour” of the mental step. Or maybe get really fancy and put in a prior step of gathering data using old technology where, the practice, that data gathering step is the one most likely to precede the mental step. [Note: if you are a patent attorney, even a first year fresh out of school, and you can’t follow along with this then probably you don’t belong in the biz; lots of other jobs out there, folks!].

    None of this reasoning is controversial or difficult. There are no assumptions being made. There is no patent system on earth (including that enforced by current USPTO) and there has never been a system which actively promotes the sort of “innovation” that is plainly promoted by the proposed statute here (which, I’ll remind everyone, the Very Serious Greg DeLassus “really likes”). On the contrary, what is extremely controversial (to the point of being nullifying) is the idea that you can protect non-obvious information or logic merely be reciting any non-inventive (i.e., prior art) context for that information or logic. That, again, is what is being plainly advanced by this statute.

    I suppose we could ask whether this massive glaring failure was intentional on the part of the statute’s drafters/promoters. But what would be the point of that? They aren’t going to answer the question. All they will do is kick up dust and mutter some smarmy self-serving b.s. about “anti-patent forces” and an imaginary “gate” that is “supposed to be wide” where “wide” means, apparently (and impossibly), everything that a lawyer can scriven into a non-natural process that isn’t “purely” mental. The most likely explanation for the failure, of course, is a combination of abject ig n0rance and extreme arr 0gance/greed. There’s never been any shortage of that when it comes to a certain class of patent attorney’s obsessive love for most of the lowest forms of “innovation” imaginable.*

    *The caveat being that patent maximalists have (unsurprisingly) really weak imaginations.

  8. 7

    Still, I would bet (and try to remember the number of times I’ve predicted the outcome correctly before taking the bet) that the SCOTUS will say that Alice is still good law despite this new 101.

    Alice is based on constraints to patentability that the SCOTUS made up based on the Constitution.

    The holding on Alice is that it is unconstiuttional to grant a claim that fails the test fabricated by the justices in Alice. No new 101 will break that.

    1. 7.1

      And I will take real bets on this.

      1. 7.1.1

        I will bet that why could not do so – properly.

        A single grant is not a “Constitutional” matter. The law under which such a grant may occur is – or is not – Constitutional.

        Any writing that indicates a patent is unconstitutional is not only sloppy writing, it is a legal nullity.

        Of course, what so many refuse to recognize is at play here: absent specific and explicit permission from Congress, the Supreme Court may not write patent law.

        That includes their “exceptions” to patent law, or more precisely, any post-1952 use of common law to further write patent law.

        Further (as we have discussed in a number of prior discussions, the current Alice decision is ITSELF Constitutionally infirm (for example, conjecturing as to what MAY happen in the future is showing a lack of present case or controversy – over and above the separation of powers issue).

        1. 7.1.1.1

          Damm autocorrect:

          “bet why” should read “bet they”

    2. 7.2

      You might get a taker if no one provides a specific citation to where the Sup. Ct. in any of its decisions that reference its standard “exceptions” to patentable subject matter has used the actual words “Constitutional” or “un-Constitutional.” ?

      1. 7.2.1

        II
        Section 101 of the Patent Act defines the subject matter eligible for patent protection. It provides:

        “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
        “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013) (internal quotation marks and brackets omitted). We have interpreted § 101 and its predecessors in light of this exception for more than 150 years. Bilski, supra, at 601-602, 130 S.Ct. 3218; see also O’Reilly v. Morse, 15 How. 62, 112-120, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 174-175, 14 L.Ed. 367 (1853).

        We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611-612, 130 S.Ct. 3218 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”). Laws of nature, natural phenomena, and abstract ideas are “`”the basic tools of scientific and technological work.”‘” Myriad, supra, at ___, 133 S.Ct., at 2116. “[M]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,” thereby thwarting the primary object of the patent laws. Mayo, supra, at ___, 132 S.Ct., at 1923; see U.S. Const., Art. I, § 8, cl. 8 (Congress “shall have Power … To promote the Progress of Science and useful Arts”). We have “repeatedly emphasized this … concern that patent law not inhibit further discovery by improperly tying up the future use of these building blocks of human ingenuity. Mayo, supra, at ___, 132 S.Ct., at 1301 (citing Morse, supra, at 113).

        At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. Mayo, 566 U.S., at ___, 132 S.Ct., at 1293-1294. At some level, “all inventions… embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id., at ___, 132 S.Ct., at 1293. Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. See Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). “[A]pplication[s]” of such concepts “`to a new and useful end,'” we have said, remain eligible for patent protection. Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).

        Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “`buildin[g] block[s]'” of human ingenuity and those that integrate the building blocks into something more, Mayo, 566 U.S., at ___, 132 S.Ct., at 1303, thereby “transform[ing]” them into a patent-eligible invention, id., at ___, 132 S.Ct., at 1294. The former “would risk disproportionately tying up the use of the underlying” ideas, 2355*2355 id., at ___, 132 S.Ct., at 1294, and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.

        1. 7.2.1.1

          might tend

          “might” necessarily includes “might NOT.”

          Thus, this is merely a subjective, projective, advisory opinion on a matter not yet substantial enough to create a CURRENT case or controversy and therefore lacks the force of law (from a Constitutional standpoint); and any attempt at enforcing such is ultra vires.

          1. 7.2.1.1.1

            And yet, anon, we have Alice. I agree with you that it is outrageous, but I don’t see changing the language of 101 changing the outcome of this opinion.

            1. 7.2.1.1.1.1

              We DO have Alice – but that only indicates that the scoreboard is broken.

              You do have a point here though: no matter what Congress does, the hubris of the Supreme Court may shine through anyway and they may simply do as they want (again).

              As I noted to David Stein – the only way Congress can remove the nose-of-wax mashing Supremes is to exercise their own Constitutional right of jurisdiction stripping of an item of non-original jurisdiction away from the Supreme Court.

      2. 7.2.2

        Paul, I think that any attorney with his/her salt that reads the above would say that the holding in Alice is that it is unconstiutional to grant a claim that fails the Alice test.

        Yes, the justices were slick it not explicitly saying that.

        1. 7.2.2.1

          Any attorney worth their salt – and abiding by their actual state attorney oath**, would find it within their DUTY to not put the Supreme Court above the Constitution.

          **the only arguable exception that I have seen is the state oath for the Commonwealth of Massachusetts which may be read to treat the Court as a “most important client.”

          Who knows, some may feel that it is “dangerous” for attorneys to actually hew to their states paths and challenge the Supreme Court, reminding them that they too have strict limits to their powers.

      3. 7.2.3

        And again, I don’t see how any language in a statute for 101 will change those paragraphs.

        I think the result will be that the justices will hold that Alice is still good law.

        1. 7.2.3.1

          Until the Supreme Court is actually held accountable to the limits of their powers, they WILL say whatever they want to say.

          That just does not make it so. We do not have a Rule of Law with one branch above the Constitution. ALL THREE branches are bound by the limits of the Constitution.

          We need to stop pretending otherwise.

          We (attorneys) have an ethical DUTY to not pretend otherwise.

  9. 6

    This is problematic:

    (b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

    The human mind can translate spoken work to text and the process can be said to exist in nature. That should not make ineligible a method that can be performed by a machine that converts spoken word to text, even if the machine includes artificial neural nets and the process mimics the method performed in the mind.

    Moreover, there is no reason for the exception. No one will ever be sued for infringement for performing a method performed solely in their mind. Its just not practical.

    If that is not enough for you, then codify it: Even if a claim reads on activity that could be performed solely in the mind, performing the claimed method solely in the mind is not an act of infringement.

    1. 6.1

      This is problematic… The human mind can translate spoken work to text and the process can be said to exist in nature. That should not make ineligible a method that can be performed by a machine that converts spoken word to text, even if the machine includes artificial neural nets and the process mimics the method performed in the mind.

      Hm, this seems much ado about nothing. If you really claim nothing more than “a method comprising translating spoken word to text,” then your claim is going to be unpatentable under § 102 in any event, quite regardless of whether it also passes or fails § 101. In other words, no one cares about the eligibility of a broad claim to translating spoken words to text.

      To the extent, however, that you have invented a particular algorithm that achieves the outcome of translating spoken words to text on a computer, you can claim that algorithm. It should be possible to draft the claim to that algorithm to avoid reading on human activity, so the AIPLA proposed text would pose no problem to this claim.

      In other words, I do not see a problem with regard to the only sorts of claims that anyone would care about patenting anyway. Claims that read on what already goes on in the human mind are anticipated even if they could survive § 101.

      1. 6.1.1

        You can draft a claim that recites hardware. But method claims are not second class claims and should not require the recitation of hardware to be eligible. Mixing is enough. You should have have to say with a blender or a spoon.

        1. 6.1.1.1

          But method claims are not second class claims and should not require the recitation of hardware to be eligible.

          Absolutely correct.

          Not only that (the “machine” part of MoT), but there need not be a transformation either (the “transformation” part of MoT).

          As one of two 9-0 parts of Bilski, MoT is not a legal requirement and is only a clue.

          But as we have seen, some “sAme ones” here have gone to their grave refusing to admit this.

          1. 6.1.1.1.1

            method claims are not second class claims

            They certainly are “second class claims” (and worse than that) if the methods are purported to be carried out by a “new” black box which is distinguished from prior art black boxes only by the conclusively stated ability of the “configured” box to carry out the method.

            My goodness but you maximalists are a funny bunch. Cling to those vapid aphorisms with all your might! Super convincing and very serious.

            1. 6.1.1.1.1.1

              Isn’t this the point at which you usually try to pretend that some optional claim format is – you know – something other than optional?

              1. 6.1.1.1.1.1.1

                Isn’t this the point at which you usually try to pretend that some optional claim format is – you know – something other than optional?

                Nobody knows what you’re talking about.

                My goodness that is some fantastic flailing.

    2. 6.2

      No one will ever be sued for infringement for performing a method performed solely in their mind.

      But the patent at issue in Classen (6,638,739) is deliberately directed to the thought process of an immunologist. That’s not just an embodiment, it is the only embodiment. Nothing in the entire patent even suggests computerizing that method.

      The human mind can translate spoken work to text and the process can be said to exist in nature. That should not make ineligible a method that can be performed by a machine that converts spoken word to text…

      Consider Planet Bingo: programming computers to play Bingo in precisely the same manner a human would, only faster. The Federal Circuit had a point there that simply reciting a task that a human would perform, and then attaching “but doing it with a computer,” should not constitute a patent-eligible invention. Right?

      I believe (stridently!) that Alice has been abused to trample patent rights for legitimate technology, but the case law isn’t categorically ill-conceived: the outlier cases, like Planet Bingo, are pretty gnarly.

      1. 6.2.1

        Neither of your examples David are on point to what Les emphasized:

        Solelyin the mind

        Your examples here only play to the dissembling so often exhibited by Malcolm as he slides a discussion of one thing to a strawman of something only happening “SOLELY” in the mind.

        The long and short of it is that a claim must be judged as a whole, and singular claim elements that involve mental steps have never been deemed to make that claim – as a whole – ineligible just because a claim HAS mental steps involved.

        This also plays to (or leads to) the showing of the falllacy employed wherein individual claim elements each on their own are all old and known (whether or not that degree of being known raises to the different and distinct level of being conventional). Not only does eligibility inure to claims that may contain elements that ARE mental steps, but eligibility may very well inure to claims composed ENTIRELY of items each of which are known.

        (by the way, this is the ANTI-Big Box of Protons, Neutrons, and Electrons Logic). It is just NOT a matter of whether or not one can parse a claim and then look to the individual parsed items and make the eligibility determination on any one individual parsed claim element.

        Yet, that is exactly what we see the sAme ones here clamoring to do.

        1. 6.2.1.1

          Your examples here only play to the dissembling so often exhibited by Malcolm as he slides a discussion of one thing to a strawman of something only happening “SOLELY” in the mind.

          That seems like a tough test to establish, as computers steadily take over things that were “solely” achievable through the human mind before. A few years ago, somebody posted a video of an adaptive algorithm that beat Super Mario Brothers without any training – just by playing it repeatedly.

          Whatever test of patent-eligibility we suggest as a substitute for § 101 absolutely must have at least one key property: it should be more consistent and predictable than what we have now. The frontier of AI advances daily, so that can’t be the test.

          Besides – if the way to escape the “solely” standard is to describe even one not-entirely-a-brain embodiment that could implement it, then no patent application will ever (non-deliberately) fail that test, right? I have a problem with formal requirements that only cover fantastically unlikely scenarios – it’s a waste of everyone’s time. Better to just make § 101 a non-limiting statement, like an introduction to the rest of 35 USC.

          Not only does eligibility inure to claims that may contain elements that ARE mental steps, but eligibility may very well inure to claims composed ENTIRELY of items each of which are known.

          Sure, as long as the combination presents a useful/novel/non-obvious invention. Just like you can build a new kind of machine with nuts, bolts, etc. Or rather: controllable rubber presses weren’t new, and the Arrhenius equation wasn’t new, but together…

          This is what those section of the IEG Memoranda, and now the MPEP, involving “additional elements must be considered both alone and in combination” were trying to express. I’m fully on board with that.

          At the same time, utility has a meaning that is distinct from novelty. My two-year-old son comes up with some great LEGO combinations that are indisputably novel and even non-obvious… but should not be patent-eligible.

          1. 6.2.1.1.1

            computers steadily take over things that were “solely” achievable through the human mind before.

            You have stumbled – and stumbled badly.

            But it is a stuml that allows me the delight to share one of my favorite words:

            Anthropomorphication.

            These are not claims to what humans do (or did). The claim need be read in light of the specification.

            As to your desire for “consistency” introduces a fallacy/ first, what a Court does with the law – as we have seen – easily defeats consistency as long as we turn a blind eye to the limitations of the court (and yes, even – or perhaps more accurately – especially – the Supreme Court HAS limitations). You introduce a perpetual “chasing your own tail.” Second of course is that even though consistency is desired, I am not sure that I arrive at your “must” (unless you are hinting at another of my pet peeves: Void for Vagueness).

            As to whatever problem you have with “wasting time” – too late. The Supreme Court has ALREADY caused this waste, and this measure fixing that already caused waste need not meet your liking or approval.

            As to your comments on utility – I’m way ahead of you there – see my many posts on utility tied to the Useful Arts (and how that is the second aspect of the purposefully – at least by Congress – low bar that 101 was meant to serve — the other aspect being of at least one (and possibly more than one) statutory category.

            1. 6.2.1.1.1.1

              The claim need be read in light of the specification.

              Of course many (most?) of these ju nky specifications are replete with words like “learn”, “determine”, “calculate”, “compare” — and even terms like “subjectively” — which do nothing to suggest that the claimed processes are not the sorts that take place “in the human mind.”

              Tell everyone: when you instruct someone else about how to process data in a manner that you prefer, is it usually the case that you first need to understand for yourself how you process the data? Or not? Please elucidate.

              1. 6.2.1.1.1.1.1

                which do nothing to suggest that the claimed processes are not the sorts that take place “in the human mind.”

                LOL – let me repeat this for you:

                anthropomorphication.

            2. 6.2.1.1.1.2

              These are not claims to what humans do (or did). The claim need be read in light of the specification.

              I am, anon.

              Here’s what the specification of 6,638,739 has to say about embodiments of the diagnostic methods:

              “The methods above can be utilized by one skilled in the art to determine the degree of protection against an infectious disease and or the risk of developing a chronic immune mediated disease. One skilled in the art as in the non limiting example of a physician may use this data to determine appropriate administration of vaccines.”

              Meanwhile, there isn’t one word about how a computer could be programmed to implement any of the steps.

              The specification uses the word “computer” once: not just for background, but for how someone could find background information. (“There is a large number of ELISA assays that have been published in the scientific literature and these can be found looking through index medicus or a similar computer file referencing autoantibodies and the particular autoantigen or organ system one wants to study.”) Nothing, nothing, in the (very extensive) extensive specification discusses embodimetns that involve software, devices, processors, computers, etc.

              Now, the specification also alludes to “kits and products to perform the above mentioned screening methods.” Yes, absolutely, “products” and “kits” that assist with immunization should be patent-eligible. But of the 113 claims presented, 100% of them are methods of immunizing patients – and I don’t see one word in the claims about the contents of any such “kit” or “product.” There is a single specification paragraph discusses a laundry-list of what might go into a “kit,” but it’s entirely unclaimed subject matter.

              What are you reading in the specification that leads you to a different conclusion?

              As to whatever problem you have with “wasting time” – too late. The Supreme Court has ALREADY caused this waste, and this measure fixing that already caused waste need not meet your liking or approval.

              anon, I’m tired of arguing about § 101, and deeply irritated that this argument – with persistent strains of disingenuous “computers are just calculators” anti-technology bias – has raged for 40 years with no end in sight.

              The heart of my objection to the proposal is that it won’t end the argument. It will move the ball 20 yards, but the ball will stay on the field. Patent-eligibility will continue to be founded on these “angels dancing on a pinhead” philosophical arguments: What can computers do? How closely does that resemble “thinking?” … etc.

              I want an end to it, for the good of my clients and for the entire patent community. This unmitigated uncertainty is toxic to technology.

              As to your comments on utility – I’m way ahead of you there…

              David Kappos nailed it shortly after Alice: virtually every legitimate complaint about patent-eligibility can be resolved more reliably (and fairly) under § 102, 103, and 112. Full Stop.

              Berkheimer and Aatrix are steps in the right direction. Whether examiners will actually follow them – and whether the patent office will require them to, with more than a “bad examiner, no cookie” slap on the wrist for materially awful office actions – remains to be seen.

              1. 6.2.1.1.1.2.1

                If you really want to end the Supreme Court muckery with 101, I have provided a detailed solution: Congress would need to employ its Constitutionally granted power to strip the non-original jurisdiction of patent cases away from the Supreme Court. Of course, they would need to provide a proper Article III court (to preserve Marbury), and the current candidate has been so brow beaten by the Supremes that a new one would be needed.

      2. 6.2.2

        >>The Federal Circuit had a point there that simply reciting a task that a human would perform, and then attaching “but doing it with a computer,” should not constitute a patent-eligible invention. Right?

        This position evinces such ignorance of science and technology that I see red when I read this. First, one of the primary goals of inventions is to do what people do but with a machine. A bulldozer does what a person does, but with a machine. The invention of Deener could be performed by a person.

        Second, when a judge says “just do what a person does” this is absurd. Whether it is easy to impossible to “just do what a person does” depends on the state of the technology. This goes to Stevens writing that the way computers work is you write down what you want and then give it to a boy to program for you and hand him a pizza when he gets it done over the weekend.

        The fact is that many of “just do what a person does” has taken 50 years to figure out how to do that and there are many “just do what a person does” that cannot be done. The EPO scientist said that we knew so little about how the brain works that it was a waste of money to try and simulate it. Yet are non-science trained judges know better.

        Again–like often recently–this goes to what a person skilled in the art can do and should go to obviousness, but the person skilled in the art should be how things are viewed. The judges (I don’t think they should be called this) continuously try to remove the person skilled in the art and substitute their private little judgments made in their chambers with a wet warm cloth handy.

        1. 6.2.2.1

          First, one of the primary goals of inventions is to do what people do but with a machine. A bulldozer does what a person does, but with a machine. The invention of Deener could be performed by a person.

          Okay, but now we’re not talking about the concept of a bulldozer – “a machine with a movable scoop,” let’s say – but a specific machine that functioned as a bulldozer.

          Sure, the invention is broader than the specific machine – the claim should have some breadth, especially for the frontier patent for the first bulldozer – but not a Morse-like claim to “a machine that moves dirt with a movable scoop by any means whatsoever.”

          Knowing your position on past issues, NWPA, I suspect that we’re focused on two different arguments. You assert that if somebody does some technical work to make a computer do what only humans could do before, the fact that a human could do it should not induce patent-eligibility. I agree.

          But let’s say there is no technical work involved, only the identification of a human-performed function and a suggestion to make a computer do it. Let’s just a pick a human game at random – Monopoly, let’s say. Even before we get to § 101, the proposal to program a computer to play Monopoly should not pass the patent-eligibility test, even set at a low threshold.

          Now – where your position and mine meet (harmoniously) is in the amount of technical work that leads to a patent-eligible invention, and our irritation with courts’ dismissiveness. Judges with little apparent training in software are quick to dismiss things that they think are trivial, and that seem trivial in hindsight – even if the technical problem was substantial and long-pending, and the solution is clever. Subtlety is lost on many of these judges, and with it well-deserved patent protection.

          1. 6.2.2.1.2

            where your position and mine meet (harmoniously) is in the amount of technical work that leads to a patent-eligible invention

            Kudos, David, for keeping one foot on the ground here. But what “amount” of typing instructions into a keyboard were you thinking would suffice here?

            1. 6.2.2.1.2.1

              . But what “amount” of typing instructions into a keyboard were you thinking would suffice here?

              Odd question coming from one who has made the bold admission of knowing and understanding the controlling law as to the exceptions to the judicial doctrine of printed matter…

          2. 6.2.2.1.3

            >>But let’s say there is no technical work involved, only the identification of a human-performed function and a suggestion to make a computer do it. Let’s just a pick a human game at random – Monopoly, let’s say. Even before we get to § 101, the proposal to program a computer to play Monopoly should not pass the patent-eligibility test, even set at a low threshold.

            David, usually I agree with your posts. But here I disagree. I think that a machine to play Monopoly is inherently eligible because it is a new machine or an improvement on an old machine. It has new functionality. The problem with putting an eligibility test upfront is that it must include 112/102/103 considerations. Consider what it means to play Monopoly. Does it become eligible if it has AI that makes it the greatest player in the world in Monopoly? Then where is the line between ineligible and eligible? To determine that line one would have to then use the same tools one uses for 102/103/112.

            The 101 tests then becomes the 102/103/112 test.

            1. 6.2.2.1.3.1

              It has new functionality.

              Yes, if the functionality is disclosed. My point is that if it’s not – e.g.: “A machine comprising a memory storing instructions that cause the machine to play Monopoly,” full stop – then this is just a wish-fulfillment patent, right?

              We can agree that this type of application would raise problems under § 112(a).

              The 101 tests then becomes the 102/103/112 test.

              That’s the core dispute: What kind of invention does § 101 prohibit that the combination of 102, 103, and 112 does not? 46 years after Gottschalk v. Bendon (1972!), we still have no answer.

    3. 6.3

      “Moreover, there is no reason for the exception”

      I’d go a step further; the exception is actively harmful. In many fields e.g., personalized medicine, the innovation is in uncovering a non-obvious correlation. The actual testing method is trivial or prior art.

    4. 6.4

      “Moreover, there is no reason for the exception”

      I’d go a step further; the exception is actively harmful. In many fields e.g., personalized medicine, the innovation is in uncovering a non-obvious correlation. The actual testing method is trivial or prior art.

  10. 5

    Paul Morgan: what about “printed matter”

    A claim to a piece of paper with non-obvious information printed on it is eligible and should result in a patent grant under this ridiculous statute. It’s a composition, it’s not a mental activity and it didn’t exist in nature. You can’t take the prior existence of the paper into account.

    So there you go.

    But let’s see what Greg DeLassus says. Allegedly he gets paid (LOL) to do this stuff for his clients. And he thinks this statute is “really nice.” Maybe he has some other ideas or maybe he just believes that patenting information is the best way to promote progress in new information. He’s a very serious person! So is Dennis Crouch, supposedly, but for whatever reason he also can’t be bothered to point out these glaring flaws which I and the other attorneys in my group just point at and laugh.

    1. 5.1

      Funny, that Rader talked about this and said, you know what I notice is that there hasn’t been a lot of innovation in the areas that are excluded from patentability.

  11. 4

    Others have already pointed this out, but if the new § 101 language is to be “subject only to… this title…,” then we will also need to codify ODP. Other than that, I really like this proposed revision. I do not have a lot of hope that Congress might act on it, but I really like it.

    1. 4.1

      Attorney Greg DeLassus (an actual patent attorney — try to believe it) really likes this proposal.

      Now watch what happens when Greg is asked to explain how — under this statute — the PTO or a court is going to deal with a claim such as the following:

      1. A method of evaluating a disease state comprising drinking a cup of coffee and thinking about [insert non-obvious correlation between some gathered information and the disease state].

      Show us the analysis, Greg. You’re a very serious person!

      1. 4.1.1

        The claim is to a method. It doesn’t occur solely in the mind. Its eligible.

        What part did you think would be hard?

        1. 4.1.1.1

          I agree that it’s eligible according to this statute. That’s the point.

          You’ve just admitted that this statute will allow people to sue for me drinking coffee while I think about some particular non-obvious information. That’s a wee problem that I’m pretty sure even a Repu k k ke Congress can recognize in two seconds.

          1. 4.1.1.1.1

            If you agree that it IS eligible according to the statute, but (adding in), NOT eligible per the Court’s actions, then the only logical conclusion is that the Court’s actions are ultra vires.

            The Court simply lacks authority per the Constitution to re-write the statutory law of patent law.

            For all of your “we need a sane system” Ends, the Means to those Ends cannot violate the Constitution itself.

            As you put to Greg:

            Now watch what happens when [Malcolm] is asked to explain how — under this [Constitution] — the [C]ourt is going to deal with [their Means being improper].

            Show us the analysis, [Malcolm], You’re a very serious person!

            1. 4.1.1.1.1.1

              If you agree that it IS eligible according to the statute, but (adding in), NOT eligible per the Court’s actions

              Wheeeeee!! Look at him go, folks! Straight to Ur @nus.

            2. 4.1.1.1.1.2

              the Means to those Ends cannot violate the Constitution itself.

              Given the claims that are plainly permitted by a plain reading of this statute (without any rescue attempt by “the Court”), do you think this statute would be upheld as Constitutional?

              In other words, does the Constitution permit Congress to grant me the right to sue you for thinking about or communicating any non-obvious bit of information that I first publically disclosed to the patent office (and therefore I “own”)? You think that’s consistent with the First Amendment?

              If so, I suggest you stop smoking the Federalist Society crack. And please don’t pretend that I’m talking about a claim to a “pure” mental step. Only you and maybe Les could be that st 0 0 pit to think you could get away with something like that. Sad to have to bring it up every time but that’s just the kind of j erk w@d you are.

              1. 4.1.1.1.1.2.1

                Your ramblings here have nothing to do with answering the point put to you.

                Try again (or, for the first time – in an inte11ectually honest manner).

                And please don’t pretend that I’m talking about a claim to a “pure” mental step.

                LOL – that is exactly the goal post moving game that I have busted you doing countless times over the years.

                There is NO pretending on my part – so Accuse Others of you (as typical).

              2. 4.1.1.1.1.2.2

                How could he sue you for thinking something? How could he prove you were thinking it?

                1. Maybe Malcolm, you address the point of my reply here instead of kicking up dust and then playing your ad hominem game….

                  I am going off of your own admission.

                  That’s a pretty easy breadcrumb to follow – even you should be able to do that.

          2. 4.1.1.1.2

            No, no I didn’t. I just said the claim was eligible under 101.

  12. 3

    A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

    A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

    LOLOLOLOL

    Still waiting for someone to step up and defend this stillborn nonsense. Too funny.

    How d u m b are the people who wrote this? Step up, please. It’s Friday and we can use the laughs.

    Robert Sachs, are you out there? Put on the clown make-up again and those big shoes.

    1. 3.1

      Oops, meant to paste this section:

      (c) Sole Eligibility Standard.—The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

      It’s the combination of the two sections that results in a big sloppy mess that even a st 00 ge like Ned “Black People Voting Twice is A Big Problem” Heller could smell ten miles away.

  13. 2

    “(b) Sole Exceptions to Subject Matter Eligibility.—A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.”

    “Prior to any human activity.” So that means if I want to claim a naturally occurring bacteria, then to reject me you would have to show that the bacteria evolved before humans evolved…. Are we going to get into carbon dating? What a disaster.

    1. 2.1

      Another demonstrated unintended interpretation – what they obviously meant to say was “independent of and prior to any human activity ON THE CLAIMED INVENTION”

  14. 1

    A noble effort, but is some organization compiling a list of what this statutory change to 101 would make patentable or not which would be be likely to be included in Congressional floor remarks for clairification? E.g., what about “printed matter”? Mathematical formulas? Human chimaras? Surgical techniques, human parts and atomic technologies that are all now specifically excluded under exisiting statutes OTHER than 101? etc., etc.
    Major statutory changes need really thorough prior considerations for unconsidered and unintended consequences.

    1. 1.1

      …as opposed to the legislating from the Bench by the Supreme Court, eh Paul?

      Let’s just clench tight our eyes there…

      1. 1.1.1

        Precisely. Since legislation is so hard to change later it is important not to create other unresolved and unintended consequences re the very Sup. Ct. decision such impacts intended to be changed.

    2. 1.2

      Paul, don’t forget that a patent is only a right to exclude others. It does not grant the “right” for a person to create a Human Chimera if such would be illegal for any other reason. A patent in that regard would merely exclude others from doing so, completely independently of whether Human Chimera creation is actually legal or not. Same goes for atomic technologies and human parts.

      Mathematics as such can be performed solely in the mind, and printed matter as such (if not machine readable etc) is simply nonfunctional descriptive material …

      As for surgical techniques, there is nothing wrong with patenting those inventions.

      1. 1.2.1

        Anon2, you are missing the point about those technologies being “now specifically excluded under exisiting statutes OTHER than 101.” That is, whether or not those other statutes are intended to be overruled, or not, by this “sole exception” statutory draft provision needs to be clairified!

        1. 1.2.1.1

          E.g., 35 U.S.C. 287 (c) deprives a patentee of any infringement remedies for a medical practitioner or a related healthcare entity performing a patented medical activity as defined therein, effectively making them unpatentable.
          42 USC 2181 makes atomic weapons unpatentable subject matter.
          AIA “Public Law 112 -29 Sec. 14 TAX STRATEGIES DEEMED WITHIN THE PRIOR ART.”
          AIA “Public Law 112 -20 SEC. SEC. 33 . LIMITATION ON ISSUANCE OF PATENTS.
          (a) Limitation- Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.”

          1. 1.2.1.1.1

            [If folks here do not know about all these existing unpatentable subject matter patents laws, do you really think Congress will?]

          2. 1.2.1.1.2

            Good point. Those AIA sections need to be codified into Title 35, and the Title 42 exception needs to be somehow incorporated into Title 35 if we are to move forward on the basis of this AIPLA draft. Some work still to do, in other words, but a good start.

      2. 1.2.2

        nonfunctional descriptive material

        ROTFLMAO

        1. 1.2.2.1

          You choose the oddest things to laugh about.

          Do I need to (yet again) invite you/link to/retype the simple Set Theory Explication that handles the “nonfunctional” aspect of the part of the quote that cause you such humor?

    3. 1.3

      Major statutory changes need really thorough prior considerations for unconsidered and unintended consequences.

      The people who wrote this cr @p could care less about “unintended consequences”, Paul. They spent literally YEARS and probably a million dollars worth of attorney time jerking themselves off to come up with this br@ inless “proposal”.

    4. 1.4

      [W]hat about… technologies that are all now specifically excluded under exisiting statutes OTHER than 101?

      Are they excluded under other sections of Title 35, just not § 101? If so, no problem. The proposed text says “subject only to… this title…,” not “subject only to this section.”

      1. 1.4.1

        The words “subject only to .. this title” is an ambiguous modifier in that draft sentence. It can be just as well, if not better, read as excluding any unpatentablility statutes in any other section.

      2. 1.4.2

        See 1.2.1.1

    5. 1.5

      Paul –

      Why shouldn’t newly invented mathematical formulas be patent eligible?

      As for surgical techniques, they clearly are eligible:

      1. A laser beam ophthalmological surgery method for ablating a portion of a cornea comprising the steps of:
      generating a laser beam;
      splitting the generated laser beam into a plurality of laser beams;
      focusing each of said plurality of laser beams onto a scanner;
      scanning each of said plurality of laser beams in a predetermined scanning pattern for ablation of the cornea of a patient’s eye;
      directing said plurality of scanning laser beams parallel to each other directly onto the surface of the cornea of an eye of a patient with said plurality of scanning beams scanning a generally superimposed parallel pattern to each other; and
      controlling each said scanner from a central processing unit to thereby surgically reshape the cornea of the eye.

      link to patents.google.com

      13. A method for excision of a sub-cutaneous target tissue mass through a cutaneous incision smaller than maximum transverse dimension of the tissue mass excised, comprising:
      a. advancing tissue piercing means towards a patient to create an incision in the patient’s skin;
      b. slidably advancing cutting means through said incision and into sub-cutaneous tissue until in position to radially expand and cut a conical swath around said target tissue mass larger than said incision;
      c. cutting a conical swath around said target tissue mass thereby separating said target tissue mass from said surrounding tissue;
      d. slidably advancing flexible aseptic containment means over said separated target tissue mass to a position of closure around said target tissue mass;
      e. withdrawing said flexible aseptic containment means with said target tissue mass aseptically contained therewithin through said incision.

      link to patents.google.com

      1. 1.5.1

        See 1.2.1.1, and also note that what is unpatentable subject matter or not is defined by statutes and controlling case law decisons, not what some examiner may have allowed. [Which is why have so many issued patents being shot down. ]

        1. 1.5.1.1

          The point that you appear to be missing Paul is that “controlling case law” portion is ultra vires when it acts – not as an actual interpretation – but as a rewriting of the statutory law written by Congress.

          Patent law is not like other laws wherein the use of common law is given free reign.

          Patent law is explicitly circumscribed such that only one single branch of the government is Constitutionally provided authority to write the law.

          Now that one branch may share its authority, but any such sharing comes with its own legally recognized limitations (clear avowal and limited scope, for example). Such IS present in specific sections of patent law (for example, 35 USC 283).

          35 USC 101 NOT only does NOT have such sharing, its creation (in the Act of 1952), was accompanied by the stripping from the Supreme Court the authority to use common law to “define invention” with the choice by Congress to instead add 35 USC 103.

          Judge Rich – who also happened to be the person who helped Congress write the Act of 1952 – has written on this very point.

          And THIS is why the Supreme Court did NOT challenge Judge Rich after Benson and Flook which brought about the cabinning of those two decisions (explicitly) by Diehr, and (implicitly) by Chakrabarty.

          THIS is the elephant in the room!

          So when you say “controlling case law,” what SHOULD be emphasized is “PROPERLY controlling case law.”

          1. 1.5.1.1.1

            Re “The point that you appear to be missing.” For at least the 100th time, I am not “missing” mere personal opinions as to what someone thinks patent law or contitutional law should be, but is not. They are of no practical, and only dangerous, use or value. Put them in a letter to your Congressperson or PTO examiner to see what happens.

            1. 1.5.1.1.1.1

              You ARE missing it – and I can tell as you are getting things backwards.

              I speak of the law as it is – and not how it should be.

              As to “only dangerous,” you are going to have to explain that…

              1. 1.5.1.1.1.1.1

                I speak of the law as it is – and not how it should be.

                … says the little boy with his pants around his ankles and a full di aper.

                Give us a break already.

        2. 1.5.1.2

          I’m confused. I thought you were worried that the proposed 101 would make surgeries patentable. Now your position seems to be that other sections make any such patents null and void. So, why did you bring us surgery patents?

          1. 1.5.1.2.1

            Not sure who the question was for. I merely noted above that there is already a specific patent statute on the subject of surgeries, 35 U.S.C. 287 (c) [and other statutes on other subject] that cannot simply be forgotten about in changing 101.

      2. 1.5.2

        Les,

        Your question needs a little more refinement.

        Remember, there are substantial differences between the following:

        math;
        applied math (otherwise known as engineered solutions);
        Math(S) (otherwise known as the philosophy of the first two – See, for example, Tegmark)

        Your comment – as is – only too easily invites dissembling as if there were no differences among these three things.

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