Fact or Fiction (i.e. Law): What Parts of the Eligibility Analysis are Questions of Fact?

by Dennis Crouch

A new petition for writ of certiorari focuses attention again on patent eligibility and the law-fact interplay. Real Estate Alliance Ltd. v. Move, Inc., SCT Docket No. 18-252.

The original focus of patent law is to “promote the Progress of . . . useful Arts.”  In that vein, patents have long been awarded for inventions with concrete and practical uses — and barred to invention claims that are merely abstract ideas.

In Mayo and Alice, the Supreme Court defined a two-step process for determining when a claimed invention is patent eligible:

Step 1: Ask whether the patent claims are directed to a patent ineligible concept, such as a law of nature, natural phenomenon, or abstract idea.

Step 2: If so, ask whether the claimed invention includes an “inventive concept” sufficient to transform the ineligible concept into a patent eligible invention.

In Step 2, the Supreme Court also suggested an inquiry into whether the claims present “something more” beyond a combination of “well understood, routine, and conventional” elements.

In this case, Real Estate Alliance Ltd. focuses on this second part of the Alice test and the “proper role of fact-finding.”  The question presented is:

Is whether an ordered combination of elements in a patent claim is “well-understood, routine and conventional” to a skilled artisan in the relevant field under Alice step two a question of fact?

In this particular case, the courts have seen this issue as a question of law and have not really considered any hard evidence.  The patent at issue is directed to a user interface that shows the geographic location of for-sale properties — using a zoomable interface.  Although this idea might seem well understood today — the application claims priority back to 1986 — graphics were not so easy back then. (See Conan – my favorite game back then). U.S. Patent No. 5,032,989.

The difficulty for the patentee – I expect – is that the patent claims just seem so obvious. Consider representative claim 1 below:

1. A method using a computer for locating available real estate properties comprising the steps of:

a) creating a database of the available real estate properties;

b) displaying a map of a desired geographic area;

c) selecting a first area having boundaries within the geographic area;

d) zooming in on the first area of the displayed map to about the boundaries of the first area to display a higher level of detail than the displayed map;

e) displaying the zoomed first area;

f) selecting a second area having boundaries within the zoomed first area;

g) displaying the second area and a plurality of points within the second area, each point representing the appropriate geographic location of an available real estate property; and

h) identifying available real estate properties within the database which are located within the second area.

20180824182113024_PetitionofWrit

229 thoughts on “Fact or Fiction (i.e. Law): What Parts of the Eligibility Analysis are Questions of Fact?

  1. 20

    display a map; zoom in on a selected region; display an overlay with points. Those are all in the prior art, so why go to 101 rather than 102 or 103?

    At least two reasons:

    (1) judicial economy – 101 is easier to apply than 103 in many instances because the Supreme Court created (out of thin air) a bunch of “tests” that must be performed under 103.

    (2) 1o3 is easy to avoid if you de-fang subject matter eligibility principles; all you need to do is recite, e.g., the address of a new house or its new ownership or its new status and voila no more 103 problem. Note that this problem has already been recognized by the courts for eons which is why we have an entire body of case law dedicated to ignoring non-structural (i.e., abstract) limitations when evaluating otherwise structural claims for obviousness.

    1. 20.1

      As the “count” filter appears stuck (for some), let’s try an abbreviated version:

      “Ease” is never a proper “means” to whatever desired “ends.”

      As to the Court pulling things out of thin air, you might take a gander at the Gordian Knot of the 101 mess. And by that, I mean an inte11ectually honest look.

      As to your “already recognized,” are you ready yet for the simple set theory explication?

      Yeah, that’s what I thought.

  2. 19

    Maybe the claims should have been held as obvious. Maybe. But this ineligible stuff is just nonsense.

    Notice too that the companies/people that are pushing this ineligible nonsense are part of a huge international companies (or getting their money from them) that have become near monopolies. MM’s claim to be part of the left and standing up for the little guy is a joke. MM is MAGA man to be sure.

    The fact is that most people in the USA now are paid to process information –not move things about like in the iron age–and to say that processing information should not be eligible for patentability is to say that we should not have patents.

    Plus, Martin, the whole point of innovation is NEW things. The 1952 Patent Act implicitly allowed patent eligibility for patents by not saying they weren’t eligible. New things are meant to be patent eligible. Innovation. Progress.

  3. 18

    I have to mention that all the database operations described in the claim can be found individually and in ordered combinations in Chris Date’s textbooks entitled Introduction to Database Systems Vol 1 & 2 (1981 & 1983).

    I did not have much opportunity to experiment with the Tektronix graphics terminals at Harvard when I was an undergrad from 74-78, but I certainly saw maps drawn on them with zoom-in capability in lectures before I graduated.

    If I had been the examiner, I would certainly have given the claims completely valid obviousness rejections even by the obviousness standards of March 19, 1986.

    1. 18.1

      Industrial rubber-curing presses were first developed in the 1870s.

      The general-purpose computer dates back to the 1940s.

      The Arrhenius equation dates back to 1889.

      Would you believe that somebody had the nerve to file a patent application on the combination of those things in 1975? Some wiseguy tried to patent the use of a general-purpose computer to calculate the Arrhenius equation and to control a rubber-curing press.

      All of the individual components were known. All of them functioned exactly according to their conventional uses:

      * The rubber-curing press cured the rubber just as it always does.

      * The Arrhenius equation was used to model rubber curing times, which was its original use in 1889.

      * The computer computed things, because that’s what computers do.

      But get this: They allowed the patent.

      That examiner really dropped the ball on the obviousness analysis. Somebody should have given that examiner a bunch of treatises from the 1880s to prove that each of those elements was really, really old.

      1. 18.1.1

        David Stein just discovered that the PTO makes mistakes and sometimes those mistakes lead to Supreme Court decisions that are difficult to understand.

        Diehr’s “invention” was always dubious. The Supreme Court’s opinion in Diehr was poorly written.

        But one aspect of the decision (the only aspect) was never in doubt: the mere recitation of ineligible subject matter in a claim does not render that claim ineligible. Somewhere along the line some short-sighted lawyers and judges decided (for themselves, without any clear reasoning) that Diehr stood for the proposition that you can’t look at the individual elements of a claim (for any reason!) when you are determining the claim’s eligibility. That misguided concept was chucked in the trash by the Supreme Court in Prometheus v. Mayo, a decision that will never, ever be overturned.

        1. 18.1.1.1

          Malcolm’s “the mere recitation of ineligible subject matter in a claim does not render that claim ineligible.” needs to be bookended with the late Ned Heller’s “Point of Novelty” (for eligibility) to truly see how BOTH have/had it so very wrong.

          And yes, Malcolm, eligibility is to the claim as a whole – no matter how much you want to employ a parse and ignore protocol.

          Your beloved “Mayo” is the decision that is self-conflicting.

          And by their own ham-fisted writing and NOT throwing out Diehras you screamed for — the Court has left itself in a Gordian Knot of its own scrivining.

          It’s too bad your lack of inte11ectual honesty blinds you to the plain facts here. You continue to celebrate an Ends, purposefully blinding yourself to the fact that the Means to those Ends is a broken scoreboard.

      2. 18.1.2

        In 1973-1974 successful computer control of 50-60 rubber vulcanization molds was certainly non-obvious.

        The system Diehr put together was continuously monitoring and responsible for opening the molds automatically — tasks which were challenges back in 1973-74. This type of industrial electronic control was rare back then. Related industries did not use it because it was perilous to allow computers to control too many devices when a failure might result in a massive economic loss.

        The big developer of electronic control back then was AT&T which wanted to switch from electromechanical switches to fully electronically controlled switching, in which the mechanicals were eliminated.

        Diehr had no way of eliminating the mechanicals, had to deal with temperature extremes, and a fairly high interrupt rate for those days. Also, Diehr did not know it could be done.

        The AT&T engineers that built the 1ESS (1965) knew that a transistor was itself a non-mechanical switch as were the triodes and pentodes before the transistor. It only stood to reason that with sufficient use of transistors, it should be possible to eliminate the mechanical component of telephone switching completely.

        In the 70s successful computer control of industrial processes was still speculative. AT&T only began deploying more 1ESS’s in 1975. Inventors still had to invent much of the basics of digital industrial control.

        1. 18.1.2.1

          “Of 50-60…”

          Rubber is cured once – NOT 50 to 60 times.

            1. 18.1.2.1.1.1

              Rubber remains only cured once.

              If “the claim” is to curing 50-60 pieces together at one time (it is not), then your statement may carry some weight.

              1. 18.1.2.1.1.1.1

                It’s not in the claims.

              2. 18.1.2.1.1.1.2

                Back in the 1973-4 time frame because of cost, it was not obvious to try to achieve this sort of electronic control over the industrial vulcanization process unless 50-60 devices could be controlled from a single controller. The MITS Altair 8800 personal computer (the first) did not appear (as a kit) until 1975, and it used an Intel 8080. I doubt it had the speed or memory capacity to achieve the targeted capacity industrial control. As I remember, neither did this PC have sufficient I/O capacity, nor was it sufficiently rugged for the industrial environment.

                The claims use a/an in the sense of one or more. Independent claim 5 refers to a plurality.

                5. A method of operating a plurality of rubber-molding presses simultaneously curing precision molded compounds in conjunction with a computer, comprising:

                providing said computer with a data base for each said press including at least,

                natural logarithm conversion data (1n),

                the activation energy constant (C) unique to each batch of said compound being molded, and

                a constant (x) dependent upon the geometry of the particular mold of the said press,

                constantly informing the computer of the temperature (Z) of each mold,

                informing the computer of the batch of the compound being molded in each mold,

                constantly informing the computer of the elapsed time that the compound has been in each mold,

                repetitively performing for each said press at frequent periodic intervals during each curve in the computer, integrations to calculate from the series of temperature determinations the Arrhenius equation to determine the total required cure time, which is 1n v=CZ+x, where v is the total required cure time,

                repetitively comparing at frequent periodic intervals in the computer the calculated total required cure time and the elapsed time for each said press, and

                opening each said press automatically when its elapsed time has reached its calculated total required cure time.

                By the obviousness standards of the 70s the claimed invention probably passes 103. Even if we applied the standards of KSR v. Teleflex, the Diehr claims are probably non-obvious. Automobile mechanicals are highly constrained as the KSR decision indicates, and there already had been a good deal of work in positioning sensors on pedals. Diehr seems to have made the very first effort at digital computer control of the vulcanization process, and he seems to have been the first to overcome a lot of problems. He did not have a body of knowledge to increase the likelihood of success. Now he might have found useful knowledge in a related area, but I doubt it. Diehr’s claims are probably okay as written even if I don’t like the punctuation.

                1. Even if we applied the standards of KSR v. Teleflex, the Diehr claims are probably non-obvious. Automobile mechanicals are highly constrained as the KSR decision indicates,

                  Actually KSR stood for the opposite and the “but automobiles are highly constrained” was a losing position.

                2. (but I do appreciate you going that extra mile and showing the plurality aspect in at least a dependent claim)

                3. The constraints of the auto environment and the existence of knowledge base for the placement of sensors was a winning position for the side arguing obviousness in KSR v. Teleflex.

                  Diehr was not nearly so constrained, and there was no existing base of knowledge for the digital control of rubber molding at the time.

                  Guidance from KSR v. Teleflex might have helped Diehr argue for non-obviousness if such guidance had existed.

                4. Further Joachim, while you provide claim 5, the case as decided by the Court was for claim 1 – and there is NO sense of plurality there.

                  I “get” what you want to do with the “plurality” aspect, but that is not the point at law.

        2. 18.1.2.2

          …the bigger takeaway from your comments though is a truism that the anti’s refuse to acknowledge:

          software is patent equivalent to firmware and is patent equivalent to hardware.

          The late Ned Heller used to play that game, always missing the point that in order to “just use,” the machine FIRST had to be changed and configured with the different software.

          Malcolm plays this same game by his refusal to use the actual proper patent doctrine of inherency. He wants to ignore that critical first step and actual change to a machine that happens when software – as a patent manufacture – is ADDED to a pre-existing machine. He (purposefully) mistakes the fact that software has been engineered to be a quick-exchange in place of dedicated hardware and instead wants to treat ALL software as “functionally equivalent.”

          The fallacy of that position is evident to anyone that gives a damm.

        3. 18.1.2.3

          I appreciate the explanation. And you’ve just resoundingly proven my point.

          Your understanding of the significance and merit of Diehr’s combination is informed by your understanding of the background. People who do not have that background can easily wave away your explanation – for any of the following reasons:

          “The background doesn’t matter, because the invention looks simple to me.

          “The solution here involves conventional programming of a computer. A first-year computer science student could implement it in a weekend.”

          “The individual parts are known, and old, and all of them function as originally intended.”

          “It doesn’t matter that a computer can provide better control here, such as by calculating faster or more accurately – because that’s what computers do.

          “The claims merely recite the calculation of an equation by a computer and the use of that equation in a particular field.”

          “The background isn’t in the claims or even the specification, and so is entitled to no weight.”

          “The calculation here is not new. And the invention is merely its application in a particular field of use. Field-of-use limitations do not confer patent-eligibility on a generic idea.”

          Joachim, all of those criticisms could have been leveled at the Diehr patent, even – indeed, especially – when supplemented by your explanation. You object based on your technical understanding of the context.

          Not coincidentally – many of these same arguments are routinely leveled at software inventions. Many of us object for exactly the same reason: based on our technical understanding of the context. By the same token, many of the responses you would present as to why those arguments do not apply to Diehr are the same responses we would present for why those arguments are not valid for many software inventions.

          Below, at 7.2.2.24, I’ve presented a fictitious specification for this invention that places it in the context of circa-1986 software. My explanation, like yours here for Diehr, addresses (a) important technical limitations in both existing software user interfaces in this field, and (b) important technical details in implementing the invention using circa-1986 hardware, and (c) a set of implementation-specific features that could be discussed for several aspects of the UI.

          Just as you can explain why Diehr’s claimed invention was not an obvious combination of known parts – I have explained above, in 7.2.2.24, the possible significance of the database UI in this particular case. That’s my full response to your comment.

          1. 18.1.2.3.1

            our technical understanding

            There is nothing “technical” recited in this claim, David.

            Stop smoking your own crack and step out of the bubble into the real world where lawyers like me routinely make mincemeat out of question-begging know-nothings like you.

            Shorter version: grow up. Computers weren’t new in 1986. Not everyone was born yesterday. Some of us have been programming for a long, long, long time.

            1. 18.1.2.3.1.1

              Malcolm,

              Why do you keep on insisting that “programming” is some single item?

              It’s as if you want to treat one program to be automatically exactly identical to another program, without care as to any different functional relationship.

              That’s simply an inappropriate attempted view. That’s like saying people have been doing chemistry for centuries, so all “doing chemistry” must be the same and there can be no innovation in doing chemistry.

          2. 18.1.2.3.2

            I have both backgrounds because I am trained as Electronics Engineers were back in the 60s and 70s.

            I was building digital electronics systems as a hobby when I was a cub scout. At prep school I got to write programs for the IBM 7090 series computers. As an undergrad I received formal training in engineering. Then I worked on a PET system at MGH and the 4ESS (and a little on the 5ESS) at Bell Labs.

            I understand what you are saying about the real estate database system, but the real estate content looks to me like an issue of printed matter doctrine.

            Computer Aided Design predates my cub scout hobbies, but parts libraries and databases certainly existed when I was a cub scout. The CAD systems used vector graphics terminals and could zoom in on parts. Scaling and orientation are all effectively calculable mathematical operations (pencil and paper calculations).

            Tektronix supplied software libraries for all these operations in the 1974-8 time frame.

            If I were the examiner, I would have certainly considered the arguments, but it would have been a hard sell.

            I know it appears I am harder from the standpoint of obviousness on the Diehr than I am on Tornetta 5,032,989, but Diehr’s implementation problem was simply much harder than Tornetta’s. CAD systems very similar to Tornetta’s real estate system were known to have existed in 1986 and had existed for at least a decade.

            Now it is possible I am being too easy on Diehr because I understand the problems of the PET scanner (1974-8), which also required the building of special probes and a lot of custom mechanicals, but I don’t think I’m too far off.

            If I had a copy of Saucedo and Schiring’s Introduction to Continuous and Digital Control Systems, I would certainly review it, for it has editions if I am not mistaken from 1968 through 1986.

            1. 18.1.2.3.2.1

              I understand what you are saying about the real estate database system, but the real estate content looks to me like an issue of printed matter doctrine.

              The “printed matter” doctrine would cover an attempt to patent any kind of storage medium that encodes real-estate data.

              Please read my fictitious specification again. Nothing in my post below is about the actual numbers. It’s about the challenges with the user interface for a meaningful, user-friendly presentation of data of that type. It’s also about the technical challenges in implementing that type of user interface on circa-1986 hardware.

              The invention is a specific UI that is well-adapted for presenting a certain type of data. “Printed matter” doesn’t apply.

              1. 18.1.2.3.2.1.1

                Today UIs with a well defined structure seem patentable, and I could probably justify that position. The display output in this claim seems to be three maps, which are not really so structured. Maps are usually copyrightable and not patentable. The rest of the method seems to consist of standard effective calculable database operations (pencil and paper calculations). Was this combination patentable back in March 1986? I could be wrong, but I think the patent prosecutors at Bell Labs would not have spent much time on this application even if they would have copyrighted the UI.

                David Stein’s hypothetical application with more structure in the claims would have been closer to the sort of application that was prosecuted by Bell Labs during the middle 80s.

                1. I don’t think it’s fair to judge Bell Labs’ patent efforts as the norm for patenting in the 1980’s. That’s like holding every basketball player to the LeBron James, as if he’s the standard of competency.

                  Bell put forth a singularly strong, concerted, enduring – and most importantly, well-funded! – effort, the kind that elevates the game. Would Bell Labs have drafted claims like this? No, but that’s an awfully demanding yardstick for 1980’s patenting. I suspect that the only patents issued in the 1980’s that meets that standard… are those filed by Bell Labs.

        4. 18.1.2.4

          “In 1973-1974 successful computer control of 50-60 rubber vulcanization molds was certainly non-obvious.”

          What about unsuccessful computer control? Moderately successful?

          1. 18.1.2.4.1

            “What about unsuccessful computer control? Moderately successful?”

            Probably not made public all that much.

      3. 18.1.3

        Your point is way more compelling the way you leave out computer controlled curing processes from the 1960s.

        US3718721:
        “A method for controlling the state of cure of at least a part of a curable article during curing in a mould, in which a temperature sensing probe is inserted into a predetermined site in the article and the temperature of the site is monitored as a function of time. The state of cure of the site is computed from the temperature measurements and heating is discontinued when a predetermined state of cure has been reached, of which the following is a specification.”

        1. 18.1.3.1

          I am having some difficulty with commenting.

          That said, Gould 3,718,721 does not look like a computer-controlled method. It looks more like a better method of determining cure-state.

          For better or worse, automatically opening the mold at the right moment is not an effectively calculable operation, or maybe I should say it this way.

          One cannot open a door with a pencil and paper.

          1. 18.1.3.1.1

            Clearly you haven’t watched enough MacGyver.

          2. 18.1.3.1.2

            The first two results in Gould for “computer”:

            “the local temperature at said site is monitored at set intervals of time and the corresponding increments of cure summated for example by means of a digital computer.”

            “At the end of the cure cycle i.e. after the article has cooled sufficiently the mould is opened either manually or automatically. The latter may be carried out by actuation by the computer of a suitable device operably attached to the mould to open the mould”

            1. 18.1.3.1.2.1

              I read those paragraphs, and I had the impression that Gould was envisioning something like the catalytic cracker of Flook. The computer might output an indication that curing had been achieved at which point the operator could manually open the door or give the computer a command to open the door. I have to admit that I would have liked to have seen the phrase “autonomous digital control” in both Gould’s and also Diehr’s specifications to tell me that the computer was doing the opening. (I always prefer precise and accurate words in a written description.)

              Applying BRI (we are talking about examination) to Diehr’s and to Gould’s respective claim sets in light of the respective written descriptions and respective drawing sets (Gould only has one drawing, which shows probe placement), Diehr’s computer really directly (and autonomously) controls opening (closing is manual) while Gould’s computer provides indications and seems to be under operator control.

              People did not trust computers as much back then as they do today. Sometimes I think they were more correct in that time period than we are today.

              1. 18.1.3.1.2.1.1

                It is remarkable the contortions you’ll go through to defend Diehr as non-obvious while asserting the map-zooming-database patent of the post is obvious.

                Did you notice claim 2? “A method according to claim 1 in which the number of cure units is computed using the Arrhenius equation”.

                “The computer might output an indication that curing had been achieved at which point the operator could manually open the door or give the computer a command to open the door”

                But Gould says “the mould is opened either manually or automatically. The latter may be carried out by actuation by the computer of a suitable device operably attached to the mould to open the mould, when the temperature sensing probe registers a suitable temperature. Please don’t hurt your back.

                1. The applicant is his own lexicographer.

                  When I read Diehr’s written specification and look at the diagrams, automatically seems to mean autonomously (or at least not manually). Look at Diehr’s second drawing.

                  Gould says the automatic opening of the mold “may be carried out by actuation by a computer of a suitable device operably attached to the mould to open the mould, when the temperature sensing probe registers a suitable temperature.”

                  The modality appears to be deontic (possibility).

                  Maybe there could be a button on the consul which activates a motor when it is pressed by the operator. Or maybe the computer has an RS-232 asynchronous terminal (back then) to which the operator types open and the computer actuates the motor.

                  The written description does not say, the automatic opening of the mold “will be carried out by actuation by a computer of a suitable device operably attached to the mould to open the mould, when the temperature sensing probe registers a suitable temperature.”

                  The modality would also be deontic, but this time necessity or requirement would be indicated (and thus maybe no operator involvement).

                  To tell the truth, even “will” is somewhat ambiguous.

                  In this case I’d probably be inclined to look at the prosecution record.

                2. You’re reading a broad disclosure to exclude scope because of its breadth.

                  You’re injecting hypotheticals to distract from the full scope of the plain meaning of “actuation by the computer … to open the mould, when the temperature sensing probe registers a suitable temperature”.

                  I am uninterested in watching further contortions. Your sophistry is wasted in prep/pros.

                3. I reread Gould’s written description. Gould has two computers. A digital computer that does the math and an analogue computer that controls the vulcanization hardware. You are so hot to show that Gould anticipated or rendered Diehr obvious that you missed an important aspect of Gould’s invention.

                  The local temperature of the shoulder region of the tire is monitored as a continuous function of time the change in the total state of cure being integrated continuously by an analogue computer. When a predetermined overall change in the total state of cure has been achieved the computer actuates a valve mechanism which controls the steam supply to shut it off. At such an instant, the computer actuates a mould-opening mechanism and the completed tire is removed.

                  The mould is loaded with another green flat band tire and then closed and the computer again assumes control of the curing cycle.

                  Back in those days one used an analogue computer when one could not get sufficient horse power out of a digital computer.

                  Gould had to use a digital and an analogue computer.

                  Diehr invented a way to use a single digital computer.

                  Diehr solved a problem that Gould could not. In those days Diehr’s invention was almost certainly non-obvious.

        2. 18.1.3.2

          It is funny how little smarty pants people like Ben just think they are so smart. Did little smarty pants Ben ever do anything in his life but criticize others? Probably not.

          Little smarty pants Ben is just so smart that everything to little smarty pants Ben is obvious. Little smarty pants Ben hasn’t figured out what hindsight reasoning means, but we are hopeful that he will before retirement.

          1. 18.1.3.2.1

            Pointing out that there is prior art vastly more relevant than “treatises from the 1880s” isn’t hindsight reasoning. You seem to have given yourself a concussion with that knee-jerk.

            1. 18.1.3.2.1.1

              Except there are gaps in the claim you posted and Diehr claim. And you have a pattern of acting as if every claim you see is just so obvious ’cause little smarty pants Ben is just so smart.

              What. A. Joke. Go out and do real development (like me) and see how hard it is and then come back and talk to us.

              1. 18.1.3.2.1.1.1

                1) By definition every reference used in an obviousness rejection has “gaps”.

                2) I never said that Diehr’s claims were obvious in view of that reference or any other. I was simply pointing out the strawman Stein was thrashing.

        3. 18.1.3.3

          Ben,

          You badly missed the point from David, as the more time from the earlier references speaks more to his point than closer references.

          While your references may be more impactful for a different point (due to both temporal and contextual proximity), THAT was not the point with providing the further timed items.

          In attempting to be a smart-@$$, you left out the smart.

  4. 17

    Why do you bother to post MM and Martin? It is all just information. Why are you paid to process information? Why are the judges paid to process information?

    The fact is that most people in the USA now are paid to process information –not move things about like in the iron age–and to say that processing information should not be eligible for patentability is to say that we should not have patents.

    Plus, Martin, the whole point of innovation is NEW things. The 1952 Patent Act implicitly allowed patent eligibility for patents by not saying they weren’t eligible. New things are meant to be patent eligible. Innovation. Progress.

    1. 17.1

      And I think that both Martin and MM should squarely answer the question of why they bother to post (data is just data according to them) and why should people be paid for information processing.

      The ignorance is just astounding.

      1. 17.1.1

        It is also interesting the game they play which they got from the SCOTUS. And that is to make up a word and then not provide a definition for it, but say that your claims don’t meet the requirement for this new word.

        What. A. Joke. The powerful have decimated the patent system, but don’t ever think that you won the hearts and minds of innovators. We know what you did and how you did it. You are just barbarians–brutal and ignorant.

    2. 17.2

      Night Writer, there’s an aphorism about the internet. It’s as old as the internet. It’s about feeding, or more specifically not feeding, certain… behaviors.

      Noise filters are very handy devices in electrical engineering. As it happens, they’re also very useful mechanisms for internet discussions. And unlike many denigrated software inventions, this type of noise filter you actually can implement completely in your mind.

      Think of PatO as a communication channel that’s contaminated by noise on a certain frequency. Think of a bandstop or notch filter that selectively excludes that frequency. Implement it by looking at the information to the left of each post, and deliberately skip over those that reflect a certain… frequency.

      I’ve been using this technique for years – literally years. It has substantially improved the signal-to-noise ratio of this communication channel.

      1. 17.2.1

        Alas, David, that may work for you but does nothing but increase noise on the channel.

        Look at the likes of the spawn from the inte11ectual DIShonesty of Malcolm. Casual readers (including, unfortunate MANY examiners) come away from unrebutted statements feeling as though ‘they must be true since I read it on Patently-O, and Patently-O says it is the leading source of patent law.”

        As I recall as well, David, it was YOUR interacting with Malcolm that provided that prized admission against his interests of him knowing and understanding the controlling law regarding the important exceptions to the judicial doctrine of printed matter.

        Think: had you had your noise filter on then, we all would have been deprived of some of the best evidence of Malcolm’s explicit inte11ectual dishonesty.

        1. 17.2.1.1

          I get your point, anon – but my capacity (and appetite) for conversation fluctuates. I’m willing to fight those battles when those quantities are, well, at high tide.

          Currently, I’m running about average, which means that I selectively engage users who have a different, interesting viewpoint and who can provide a good conversation about it – people like RandomGuy, Greg DeLassus, Joachim Martillo – and Ned Heller was certainly included. I often don’t get around to responding to people who share my viewpoint, like you and NWPA, just for lack of time.

          1. 17.2.1.1.1

            The point being that the internet aphorism (feeding or not feeding) is not appropriate.

            Yes, I do understand that an appetite for having a conversation (an actual dialogue) may vary.

            But engaging in dialogue is the important aspect. Otherwise what happens is the “Driveby Monologue model which leads to the aphorism of “Internet Shoutdown,” wherein dialogue is avoided and pertinent counter points are simply ignored (by the sAme ones).

            By the way, your “list” includes a spectrum of those willing to engage. Greg will typically NOT engage past his “comfort” of his view not being challenged, Random is not capable of understanding counterpoints and thus typically only engages up to his “viewpoint limit,” and the late Ned Heller was famous for disappearing rather than accept conclusions against his interests (even as he might engage further into dialogue than others). Only Joachim on your list has shown the ability to absorb a counterpoint from dialogues and grow.

            And yes, I do recognize that you and I are in the same choir (we are “cohorts” per Malcolm), so I do not expect you to have to respond to counterpoints in certain dialogues. But that is not the same as those practicing Driveby Monologuing.

            1. 17.2.1.1.1.1

              Well, I have decided that I would like to be admitted to practice law. (I would like to be able to argue my own patent application case before SCOTUS. Because I don’t have an interest in the application any more, I can’t represent myself pro se.)

              That desire means that I have to absorb a lot of material and that I have to find a job in state where I can take the bar exam without attending law school. The job has to be remote because I can’t leave Boston (child-custody issues). For the opportunity to read the law, I would give a very low hourly rate. I do have unique attributes that would make me a valuable asset to any legal team despite my age.

              I am an inventor, an engineer (several fields), and a patent agent.

              I have a good background in history of science, history of engineering, philosophy, and linguistics.

              I seem to be developing increasing hyperthymesia, which is technology focused.

                1. I read faster than most people. The hyperthymesia was less then than it is now, but on the whole undergraduate study was a waste of time. I particularly hated lectures. Such a low information transfer rate! I don’t know how even slow learners tolerate them. I don’t think I have the ability to tolerate them today. Reading the law seems to be a better solution if I did not have to live in Boston.

      2. 17.2.2

        True David.

        1. 17.2.2.1

          If indeed true, Night Writer, can we expect at most one post per thread from you?

          (I certainly hope not)

  5. 16

    It’s been awhile since I posted the whole enchilada, but this looks like a good thread for it.

    First and foremost, this is not a mainly legal problem.

    It’s a political problem, and the political question can be stated like this:

    The 1952 act is silent as to the eligibility of information inventions. Do we want to allow patenting of logic and instructions under the statutory category of processes, or do we not?

    If we don’t want to do that, as MM advocates, we should immediately say so in statue and common law, and just stop doing it.

    If we do want to do that, it leads to a second question.

    It very much appears that we do want to do that, because too many judges, lawyers, and patent-system stakeholders find the purposes of a patent system aligned with patenting certain new, useful, and disclosed information inventions.

    What those certain inventions are remain entirely in the eye of the beholder, and those beholders are usually PTAB or District Court judges. This situation is unsustainable without a new and useful (!) way to handle these kinds of inventions.

    I propose to modify Section 100(b) to read: a process which results in information consumed by human beings may not be patented, excepting processes improving information processing without regard to the particular content or meaning of the processed information.

    It seems simple enough to me. If a human mind processes something, that thing is abstract. That should solve the statutory interpretation of “Process” simply and cleanly. No human mind, no statutory abstraction.

    From link to merriam-webster.com:

    The Crisscrossing Histories of Abstract and Extract

    Abstract is most frequently used as an adjective (“abstract ideas”) and a noun (“an abstract of the article”), but its somewhat less common use as a verb in English helps to clarify its Latin roots. The verb abstract is used to mean “summarize,” as in “abstracting an academic paper.” This meaning is a figurative derivative of the verb’s meanings “to remove” or “to separate.”
    We trace the origins of abstract to the combination of the Latin roots ab-, a prefix meaning “from” or “away,” with the verb trahere, meaning “to pull” or “to draw.” The result was the Latin verb abstrahere, which meant “to remove forcibly” or “to drag away.” Its past participle abstractus had the meanings “removed,” “secluded,” “incorporeal,” and, ultimately, “summarized,” meanings which came to English from Medieval Latin.

    Interestingly, the word passed from Latin into French with competing spellings as both abstract (closer to the Latin) and abstrait (which reflected the French form of abstrahere, abstraire), the spelling retained in modern French.
    The idea of “removing” or “pulling away” connects abstract to extract, which stems from Latin through the combination of trahere with the prefix ex-, meaning “out of” or “away from.” Extract forms a kind of mirror image of abstract: more common as a verb, but also used as a noun and adjective. The adjective, meaning “derived or descended,” is now obsolete, as is a sense of the noun that overlapped with abstract, “summary.” The words intersected and have separated in modern English, but it’s easy to see that abstract applies to something that has been summarized, and summarized means “extracted from a larger work.”

    As to the second critical meaning- as a summary or condensation or outline, abstraction is a patentability issue connected with a 103 or 112 inquiry. If an invention is not claimed as an invention, but rather as an abstraction of an invention or of a concept that itself is not inventive, you can’t haz a patent.

    Eligibility for abstraction relates to each major part of the Patent Act- both separately and in combination depending on the facts. When the claims recite no actual invention because they are aspirational or functional, that can be a 112 problem, or at least require a 112 quasi-analysis. When the claims recite no actual invention because they are beyond obvious (i.e. utterly conventional) it’s a 103 problem, or at least a 103 quasi-analysis.

    Only in the instance where claims recite no actual invention because they lay outside the four statutory categories should a 12(b)6 be the proper method of determining eligibility- i.e. as a pure matter of law.

    The law says the inventor must say what the invention is. Equity demands at some point that the accused have their say as to what the invention is too. An adversarial procedural construction step is required. The invention should be construed in a Markman like process to resolve this non-statutory abstraction.

    Just as the words of claims are matters of law that must be construed when in dispute, what the invention actually is must be a matter of law, construed when in dispute. Like claim construction, this inquiry is a mix of fact and law, and by allowing motions, tutorials, and limited testimony, a fairer, cheaper process is in play that needs to happen if eligibility cannot be contested via IPR.

    So far, nobody has substantially explained why my scheme is not better than what we have, out of step with current law, or unworkable for any other reason.

    Step right up!

    1. 16.1

      Try understanding utility first – ALL utility ends up being the type of thing that you want to constrain. ALL utility is measured by its human effect.

      This is NOT a “political problem.”

    2. 16.2

      Further, you botch the Merriem Webster treatment as to “summary,” when you fail to realize that most all** claims climb at least a rung or two on the ladders of abstraction.

      ** it is rare indeed when an excessively particular picture claim is present – most all claims (to get what you want) would clearly fail as most all claims can easily be made into more exacting picture claims.

      You continue to want to play in an area without a clue as to the domain, Marty.

      You have deluded yourself into thinking that your special “pet theory” has insight into either innovation or the patent realm, when all that it is IS your pet theory.

    3. 16.3

      MS: the political question can be stated like this:

      The 1952 act is silent as to the eligibility of information inventions. Do we want to allow patenting of logic and instructions under the statutory category of processes, or do we not?

      If we don’t want to do that, as MM advocates, we should immediately say so in statue and common law, and just stop doing it.

      This is the best solution to the problem although arguably the First Amendment could get us to the same place (as it nearly already has and might get all the way, eventually).

      nobody has substantially explained why my scheme …unworkable

      Well, it’s not clear exactly what it is that you’re trying to protect (from being declared ineligible) or why. I don’t see why it should matter whether data is “consumed by human beings” or consumed by a proxy for a human being (e.g., a computer). It’s still data. Does your eligible claim become ineligible if it can be shown that a computer can take the non-human-consumable data and turn into data that can be consumed by a human? Just one of many many questions that one might ask if the proposition wasn’t so strange to begin with.

      The way to promote progress in the so-called computer arts is to grant patents on improved programmable computing machines that are distinguished from prior art programmable computing machines on the same basis that new machines have always been distinguished from prior art machines: by reciting objective defined differences in their physical structures.

      Granting patents on the recited “new functionalities” of programmable machines is a farce that does nothing for progress. Instead it craters the patent system by lowering its credibility, makes the rich game players even richer, and turns a useful tool into a liability. Just expunge it all from the system and the system will return to something resembling normal instead of a free-for-all for a certain class of patent attorney who spends all of his/her time scrambling around trying to figure out which are the latest, hottest “magic words” to use in order to get a junky ineligible do-it-on-a-computer claim through the system. Because that’s really all that certain class of attorneys does. And they’re quite open about it.

      1. 16.3.1

        Translation: “Wah.”

      2. 16.3.2

        Consumed by a proxy….

        Anthropomorphication

      3. 16.3.3

        All of my points are made in depth in this paper:

        link to papers.ssrn.com

        I am trying to eliminate all of the mischief engendered by patenting information meaningful to people. Stock trading software. Diagnostic correlations. Genetic instructions. Map displays. Technical diagrams.

        Does your eligible claim become ineligible if it can be shown that a computer can take the non-human-consumable data and turn into data that can be consumed by a human?

        No, what matters is which acts would infringe.

        The analysis is analogous to finding proximate cause. If human consumption is not where the utility of the method arises, then the point of the method must be something else.

        If the method can be used without human consumption of the information, it may be eligible (but still not patentable.)

        For instance, a speedometer is a machine used to tell a person how fast they are going. A new, non-obvious construction of a speedometer should be completely eligible. A piece of software using common sensors configured to tell the speed, and claimed as a method, should not be eligible- and it should not take an Aliceinquiry to make that determination.

        anon your impossible-to-understand point that all utility arises from human consumption has no weight. Consuming a hamburger and consuming a factoid and consuming the benefit of a snow plow are totally different relationships.

        1. 16.3.3.1

          Utility has but one final measurement.

          That you do not understand this does not change this.

          1. 16.3.3.1.1

            Utility has but one final measurement

            Can you run that thru some kind of doofus translator so I can understand it?

            Do you mean that legally utility is a binary yes/no? That no matter the character of some given purported utility, the patent law must ignore it?

            Nonsense- equity would not allow for that, and there is no reason that the nature of an invention’s utility could not be a matter of consideration for eligibility or patentability. Section 287(c) is essentially entirely about the character of utility excluded from infringement damages as a policy preference by the Congress.

            Modifying 100(b) as I suggest is fully in accord with how utility is understood today.

            1. 16.3.3.1.1.1

              Translating for a doofus such as yourself wont help.

              Your statements are nonsense.

              You cannot claim that your idea is in accord with how utility is understood when you evidence such a lack of understanding of the term.

              And you keep on wanting to use the term “equity,” but you don’t appear to understand that either. Equity is not a catch-all “change” or allowance to avoid ‘Law.’ It is not your feeling of “but that’s not fair.”

              You continue to confuse what you feel the law (and equity) should be as somehow being what law (and equity) are.

    4. 16.4

      Martin, I instinctively recoil from your proposal because it has an “except” in it. That tells me that you haven’t got your finger on the exact watershed between eligibility and non-eligibility. Your test, if implemented, would decrease rather than increase the amount of legal certainty as to eligibility, I suspect.

      The definition needs to be robust and future-proof. Who knows where the borderline between human and computer will be, in the future.

      Patents promote the progress of useful arts. Outside the useful arts they impede progress. I want to know what is the flaw you see in the caselaw of the Boards of Appeal of the EPO, established in thousands of cases, during 40 years of civil law evolution, which requires the subject matter claimed to exhibit “technical character” and for the contribution to the art to be a solution in technology to a problem in technology. Clever solutions, indisputably non-obvious, still fail at the EPO when the problem they solve is not one within technology or (to use the words of the Patents Clause as intended) the “useful arts”.

      If SCOTUS were to drop onto that line it would open up potential to solve all the egregious problem of uncertainty in the USA as to the patentability of any particular piece of computer-based innovation. tough though, for a Supreme Court (and its acolytes, officers and servants) to acknowledge that a mere Patent Office has a clearer vision of where to draw the line in the sand.

      1. 16.4.1

        MaxDrei,

        As usual (and clearly intentional), you fail yet again with your attempt to make equal our Sovereign’s “Useful Arts” and the term “technical.”

        Your “not one within technology or (to use the words of the Patents Clause as intended) the “useful arts”.” is false.

        It does not — cannot — become true no matter how many times you repeat it.

        1. 16.4.1.1

          I do not agree. Has my attempt “failed”? The answer to that question remains open, no matter how many times you repeat your bald assertion that I have “failed”.

          I suppose that your certainty that “useful arts” does NOT equal “technical” is based upon that statement (somewhere in the jurisprudence) that there is no “technological arts” filter in the US Statute. Literally, word for word, that is of course 100% correct. But there is a “useful arts” filter, right? So we need a definition of “useful arts”, in the context of 35 USC 101, do we not? And is there one, yet? I think not. I doubt there ever will be.

          But prove me wrong if you can. That would be helpful. Then we can compare the definition you have discovered with “technical” in the EPC’s eligibility/patentability provisions, to see how much (if any) the correspondence/overlap falls short of 100%.

          1. 16.4.1.1.1

            You have just proven yourself wrong with your admission here:

            Literally, word for word, that is of course 100% correct.

            And yes, that IS a fail for you.

            1. 16.4.1.1.1.1

              Like, “two dozen” is not the “same” as “24”;
              or “5 x 12” is not the “same” as “60”; “a quarter” is not the same as “1/4”. or “antonym” is not the same as “the converse of synonym. The words chosen by the writer are different, ergo, the meaning cannot be the same? Really?

              1. 16.4.1.1.1.1.1

                Your examples are false.

                The literally not the same means that the two phrases do not literally have the same meaning.

                That is our Sovereign choice.

                Please respect that choice and do not play your games trying to make the two different phrase to be merely some synonym.

                1. You have decided that the USA has already made a deliberate choice that one thing is sure; what the patents clause names as “useful arts” has an ambit which is NOT co-terminous with what we call today technology.

                  But, to that, I continue to aver that there is no evidence, yet, on which you can safely rest your decision.

                2. Except for the plain facts, reality, history and direct meaning…

                  Other than those, you MAY (just may) have a shadow of an inkling of a point.

                  And by the way, your agreeing or disagreeing is absolutely immaterial to this point. You are of course fully able to choose to continue to delude yourself.

      2. 16.4.2

        Many important statues contain one or more important exceptions, because life often consists of patterns and small sets of exceptions.

        As to technical character, it’s also in the eye of the beholder. “Technical” means different things to different people.

        1. 16.4.2.1

          Technical (emphasis added):

          1
          a : having special and usually practical knowledge especially of a mechanical or scientific subject ·a technical consultant

          b : marked by or characteristic of specialization ·technical language

          2
          a : of or relating to a particular subject
          b : of or relating to a practical subject organized on scientific principles ·a technical school
          c : technological

          3
          a : based on or marked by a strict or legal interpretation
          b : legal

          4 : of or relating to technique

          5 : of, relating to, or produced by ordinary commercial processes without being subjected to special purification ·technical sulfuric acid

          6 : relating to or caused by the functioning of the market as a discrete mechanism not influenced by macroeconomic factors ·a technical rally

          See link to merriam-webster.com

          Let’s see “technology:”
          1
          a : the practical application of knowledge especially in a particular area : engineering 2 ·medical technology

          b : a capability given by the practical application of knowledge ·a car’s fuel-saving technology

          2 : a manner of accomplishing a task especially using technical processes, methods, or knowledge ·new technologies for information storage

          3 : the specialized aspects of a particular field of endeavor ·educational technology

          See link to merriam-webster.com

          IF (and that’s a might big “IF”) MaxDrei is attempting to use the MOST expansive definition, then that MAY being to overlap over the bottom of the meaning of the Useful Arts.

          Of course, Deming et al fully puts business method patents into “technology.”

        2. 16.4.2.2

          ” “Technical” means different things to different people.”

          Luckily, 103 is based on the totally objective standard of what is “obvious”.

          1. 16.4.2.2.1

            At some point, as with Copyright, sometimes the contours of intellectual property cannot be reduced to less than a judgement call by a responsible party, from 101 to 103 to Fair Use etc. Ideally that would not be so. Practically, it will always be so. Get used to it.

            1. 16.4.2.2.1.1

              Get used to it

              A rather ironic phrase coming from someone whose entire “sense of reason” is generated by an inability to “get used to it.”

    5. 16.5

      There are certain specific genetic language disorders that relate to conveyance of specific meaning like tense or plurality. The reading disorder dyslexia also evinces some genetic link. Dyslexia can be specific to writing system. A person that can’t read words written in Roman characters may be able to read them written in Chinese characters.

      The above disorders all relate to very specific and particular content and meaning of information.

      link to britac.ac.uk

      If I develop a pharmacological treatment (both drug and method claims) to treat such disorders, it might not be eligible under MS’ proposal.

      Further I am not sure Gulack 4,416,633 claims or most game claims would be eligible under such a change.

      MS seems to want to correct an educational deficiency with a legal remedy — something that is an almost guaranteed disaster.

      I had to study philosophy for two years before I could graduate high school. I believe such a requirement is common in Europe including Turkey. We had two months of basic epistemology. It only takes a day at most to understand the distinction between opus mechanicum and opus mysticum — the basis of printed matter doctrine.

      If judges, intellectual property lawyers, patent agents, and examiners were compelled to study epistemology in CLE, at the very least they would all have a common language to discuss the issues, and probably practically all confusion about software patents would go away.

      1. 16.5.1

        I provided a super easy to understand Set Theory explication of the Judicial doctrine of printed matter and the important exceptions to that doctrine (as pertains to patent law), and invited the top naysayers to engage in a discussion on the merits of the explication.

        Malcolm refused to do so.

        He still refuses to do so.

        He is only interested in spreading his propaganda. Nothing else.

    6. 16.6

      Put a shirt on.

    7. 16.7

      Would it be fair to summarize (i.e., abstract) your premise as follows? The issue is not whether “logic” is patentable, which is a legal issue, but rather whether “logic” should be patentable, which is a political issue. [I put logic in quotes to signify that you use “logic” in a very specific way.]

      If so, you should realize by now that the feasibility of your proposal to achieve your stated goal will never be seriously considered here as everyone will get bogged down in the advisability of your stated goal.

      So far, nobody has substantially explained why my scheme is not better than what we have, out of step with current law, or unworkable for any other reason.

      Define “better.”

      1. 16.7.1

        Better:

        -Alice motions are not random walks based on district judge draws

        -12(b)6 is no longer stretched beyond recognition without a more fair adversarial construction of the invention

        – Eligibility for the vast majority of unjust and unjusticable claims on human activity would be much more easily determined at prosecution and litigation, saving major resources across the economy

        – Eligibility for methods in areas like robatics, AI, where non-human information consuming actors will play bigger and bigger roles will be more certain.

        – The essence of the political compromise will be understood by all patent system stakeholders: you lose human consumption and gain certainty on machine consumption of new, useful, non-obvious information processed under method claims.

        Like I sez, logic and machine instructions should just be expunged from the system, but if they simply must be allowed, they must be constrained, and the line of human apprehension is a very important and identifiable one.

        1. 16.7.1.1

          By definition, “machine instructions” are consumed by machines.

          Wherefor your feelings/“philosophy”…?

    8. 16.8

      Martin Snyder, under your proposed modification would it be possible to write a claim to a system if the system extracted information from various news sources, generated a market signal, called up a market trader, and told him how to place orders?

  6. 15

    I don’t know if anyone cares, but I tried to track back the sources from which SCOTUS developed the useless idea of an inventive concept. I put the source material and my comment about inventive concept into article format: Inventive Concept and Inventive Step Have No Place in American Patent Law.

  7. 14

    Both “inventive step” and also “inventive concept” belong to a completely theoretical approach to invention per se and are completely disconnected from the actuality and φρόνησῐς (practical technological and non-technological wisdom) of invention. Neither inventive step nor inventive concept have a legitimate place in patent law.

    Once upon a time, there was a Massachusetts corporation named Clearpoint Research Corporation, Inc. To a large extent its business was non-infringing reverse-engineering of extremely pricey products of fat incumbent lazy bloated high-tech companies. The owner-CEO-chief inventor of Clearpoint (Vincent) had the great idea of non-infringing reverse engineering of patented memory boards by replacing critical capacitors and critical inductors by the stray or parasitic capacitance and inductances of precisely engineered PCBs. Not only did the literature of electronic engineering say that such replacement was a bad thing to do, but the literature often said that such replacement was an impossible thing to do.

    Vincent and his engineering team did analysis, research, testing, tool implementation, and mathematical development in order to make such replacement and non-infringing reverse engineered products possible.

    It was certainly possible for Vincent to write (through an agent) for each product a specification, which disclosed:

    1) each novel non-obvious invention clearly,

    2) enabled each said invention completely,

    3) demonstrated full possession of each said invention, and

    4) included claims, each of which

    a) “set forth the subject matter that the inventor or a joint inventor [regarded] as the invention” and

    b) “particularly [pointed] out and distinctly [defined] the metes and bounds of the subject matter to be protected by the patent grant.”

    Yet such a specification need not disclose either the inventive concept or the inventive stop that was the basis of each fully disclosed, enabled, and possessed invention. (Of course, Vincent could have made a separate patent application, which pertained to the foundational invention and whose specification would include a method claim, but he could also decide to use trade secret law to protect the foundational invention, which was never a product and which was characterized by the inventive concept and the inventive step of all the other inventions.)

    1. 14.1

      Remind everyone where you got your law degree, Joachim.

      1. 14.1.1

        I don’t hide that don’t have a law degree, but I do have hyperthymesia, which is arguably more important for ability to piece together the sources for a given SCOTUS holding.

        If you have a problem with the Clearpoint fable, praytell.

        I generally find you legal and technological understanding quite defective. I have probably been consulting at law firms and legal departments for longer than you have practiced law. If Massachusetts allowed one to take the bar exam without attending law school, I would long ago have been admitted to practice law.

        1. 14.1.1.1

          I generally find you[r] legal and technological understanding quite defective.

          Possibly the greatest understatement this blog has ever seen.

        2. 14.1.1.2

          JM I don’t hide that don’t have a law degree

          Right. Because when you write something as objectively silly as this:

          Both “inventive step” and also “inventive concept” belong to a completely theoretical approach to invention per se and are completely disconnected from the actuality and φρόνησῐς (practical technological and non-technological wisdom) of invention.

          there is no possibility of you hiding that fact from anyone.

          Just in case any non-lawyers out there are confused (probably a couple of them out there): the phrase “inventive step” is not “completely disconnected from the actuality … of invention.” How do I know this? Well, for starters we know that patent claims include method claims which include steps and some of the steps may not be inventive. But one of them may be. That’s all it takes, after all, to get a valid patent claim. That step would fairly be called “the inventive step” by a reasonable person with a grasp of the English language. There’s nothing “theoretical” about this.

          Second of all, it’s an important concept in the context of eligibility because — again — patent claims may (and often do) include steps (and other limitations) that are in the prior art. For example, drinking coffee is in the prior art. Although caffeine is a drug and drinking coffee has tangible physical effects on the drinker, I can’t protect a new non-nonobvious method of thinking about a new non-obvious correlation by appending that thinking step to a “drink coffee” step. Why is that the case? Because the inventive step in that claim is ineligible subject matter for protection under our patent system. In fact, as long as you trying to use the patent system, it doesn’t matter how you try to protect that inventive step of thinking about this non-obvious correlation. No matter how you do it, your claim is ineligible. If you can’t follow this line of reasoning — and let’s face it, it’s not that difficult — then you need to confront the fact that you either lack the intellect to have the discussion or you lack the intellectual honesty to have the discussion. The good news is that in either of those two scenarios, you’ll not be alone. Sure, you’ll be in a group that is mostly deplorable for one reason or another. But you won’t be lonely. I hope that’s comforting.

          In anticipation of your next super serious chess move, it does you no good to move the goalpost and try to pretend that we are talking about something else or that we should be talking about something else or that what I’m saying somehow proves that “some other” part of the patent statute would be “better” for eligibility. No, what you need to do instead is admit that you’re wrong, and I’m right. That happens all the time, you know: someone says something incorrect or misleading (“Prometheus was a method of treatment claim”) and I say something correct (“Prometheus doesn’t require that anybody is given a new treatment”). Let’s break it down even more simply: You are wrong. I am right. Very very easy stuff. At this juncture, what you should do is take some time away from the computer and think for a moment about what to do. You can (1) dig your heels in and act like a buff00n like “anon” and his ridiculous cohorts or (2) you can man up and stand corrected. That’s right: (2) is a bona fide option. I’d consider it very deeply if I were you (i.e., if I were a non-professional hack trying to make a splash on a blog filled with professionals). Good luck, JM.

      2. 14.1.2

        and you, yours, Malcolm – your “point” is a misfire.

        But thanks for the attempted distracting ad hominem. Maybe try being on point to the substantive nature being advanced instead…

    2. 14.2

      Joachim, I have taken your Link and read your text. I still do not follow your thinking.

      Let’s first get one preliminary issue straight though. Are you of the view that it is wrong to include the question “Was it obvious?” in the examination of the patentability (or of the post-issue validity) of a patent claim?

      Once upon a time, long ago, the patent statutes failed to prescribe such a question. But then somebody realised that “ob Via” means “lying in the road” and that roadblocks along the way of technical progress tend to impede rather than promote that progress.

      Pending your reply, I will give you the benefit of my doubts. I will suppose it to be your opinion that obviousness objections are OK but that what annoys you is your perception that the PTO (and/or the courts) is these days putting the onus on the Applicant to prove the presence of an “inventive concept”.

      Is that it?

      1. 14.2.1

        Not to put words into Joachim’s mouth, but I think the better differentiation is simply to NOT conflate patentability (by way of ANY determination of obviousness) with patent eligibility (by way of the identified “trouble” of slipping in concepts of “invention.”)

        Any student of US patent law can see this distinction with the writings of Judge Rich (the jurist most in the know about the Act of 1952, due in no small part to his having a hand in writing that Act).

        This also is reflected in my well documented position that Congress in that Act of 1952 stripped away the prior common-law writing authority of the Supreme Court by taking the prior single paragraph and breaking that paragraph up into 101/102/103 and purposefully choosing “obviousness” INSTEAD OF “invention.”

        It also easy to note the correlation of those seeking to deny this history with the (high) likelihood of being against strong patent rights.

        1. 14.2.1.1

          Anon has it exactly correct, and as Judge Plager points out inventive concept or whatever is completely incoherent. The European Patent Office and the European patent system is completely wrong on this subject.

          I guess the Clearpoint fable is not clear.

          I added Judge Plager’s discussion of inventive concept (or whatever) to the end of my Linkedin note.

          link to patents.google.com

          1. 14.2.1.1.1

            Joachim, I must take issue with you when you assert that the EPC is “completely wrong”.

            First, Art 52 EPC. What is so wrong about a total exclusion from the eligibility enquiry of anything relating to novelty or obviousness? That’s how they do eligibility at the EPO.

            After that, we come eventually to the Art 56 EPC enquiry. What is so wrong about asking the question “Is it obvious” as the way to reach a decision whether the claim is directed to subject matter that is inventive.

            The EPO is doing it right, is it not?

            1. 14.2.1.1.1.1

              Reread the Clearpoint fable. From the standpoint of the EPO the inventive concept that united the board inventions was completely external and extrinsic to the inventions as was the inventive step. Important inventions often represent a change in perspective.

              Vincent perceived stray or parasitic impedance as a board component. We built to tools to realize that vision. Clearpoint could reverse engineer practically any patented board in a non-infringing fashion. The US patent system approaches Vincent’s inventions appropriately by addressing each claim as a whole to find novelty and non-obviousness. The EPO would analyze the claims improperly by using incoherent ideas like inventive concept and inventive step.

              Vincent’s invention at Clearpoint was hardly unique. We looked for the change in perspective that enabled non-infringing reverse engineering to create better and cheaper products. I certainly did in my inventions.

              At the end of the article, I added Judge Plager’s comments on inventive nonsense to Inventive Concept and Inventive Step Have No Place in American Patent Law

              1. 14.2.1.1.1.1.1

                Jaoachim, I appreciate your replying but still take issue with your statement:

                The US patent system approaches Vincent’s inventions appropriately by addressing each claim as a whole to find novelty and non-obviousness. The EPO would analyze the claims improperly by using incoherent ideas like inventive concept and inventive step.

                The name of the game is the claim, at least in the EPO. So what you write about the USPTO is equally true of the EPO. I put it to you, that you have no experience of the EPC law or practice and that your second sentence, on what the EPO “would” do, is no more than your imaginings. But that is enough for you, I suppose.

                1. Here is the whole issue as I remember it from Clearpoint.

                  US Patent 4,656,605 James E. Clayton Single in-line memory module claims an invention Clearpoint reverse engineered without infringement by replacing the eight decoupling capacitors with precisely engineering parasitic capacitance.

                  Here is the single Clayton ‘605 claim.

                  1. A memory module for installation on a printed circuit motherboard comprising:

                  eight data memory chips for storing digital data, each having a data input and output, a control input, and an address input, and each being packaged in a plastic leaded chip carrier;

                  a ninth memory chip for storing error detection and correction information associated with the eight data memory chips, said ninth memory chip having a data input and output, a control input and an address input interconnected with those of the eight memory chips, and a control input to provide writing in or reading out of the ninth memory chip at times other than when said bytes of digital information are written into or read out of the eight data memory chips to thereby facilitate said error detection and correction operation;

                  an epoxy-glass printed circuit board substrate having a length and width adequate for mounting thereon only in a single row said nine memory chips and for interconnecting the control inputs and the address inputs of the memory chips so that bytes of digital information may be input to or output from the memory chips one at a time;

                  the substrate including thirty terminals for providing access to the data inputs and outputs, control inputs, and address inputs of the nine memory chips to enable reading and writing of bytes of digital information into and out of the eight memory chips and to enable reading and writing of error detection and correction information into and out of the eight memory chips;

                  support means for supporting the memory module at an angle with respect to the printed circuit motherboard when the memory module is installed thereon; and

                  eight decoupling capacitors, mounted on said substrate and connected between the nine memory chips, for suppressing transient voltage spikes between said memory chips.

                  I prepared a written description that was much more precise with respect to artwork, etchings, and board parameters because the written description would not have provided enablement without such description.

                  I wrote a claim that contained all but the eight decoupling capacitor limitation which I replaced with a parasitic capacitance claim.

                  In the international application, I rewrote my claim to use the two part format in which all but the parasitic capacitance claim was in the first part and the parasitic capacitance claim went into the second part.

                  Now the American requirement of novelty and non-obviousness makes sense because the Clearpoint SIMM was self-evidently and arguably novel and non-obvious.

                  Does the EPO requirement of inventive step make any sense whatsoever? It may look like there was an inventive step in the parasitic capacitance claim, but the parasitic capacitance claim would not give a reader a clue about the key insight and work that made the Clearpoint SIMM invention possible.

                  Such was of course the goal. Clearpoint was not going to give away the invention that made it possible to reverse-engineer non-infringing versions of patented boards.

                  We did not mind that after the patent term expired, competitors could make copies of the Clearpoint board. It was almost certainly obsolete by than time period.

                2. I should not post when I’m tired. I wrote claim where I meant limitation several times in the above discussion of the Clearpoint non-infringing reverse-engineered SIMM. I cleaned that confusion up and added a paragraph on a notorious patent ogre (back in the 90s) as well as more discussion of problematic EPO concepts.

                  You can find this text in Inventive Concept and Inventive Step Have No Place in American Patent Law.

                  Below is some important text without hyperlinks. I put Judge Plager’s discussion of inventive concept and step after the discussion of the Clearpoint Wang controversy.

                  A patent can be necessary for protection against a lawsuit for infringement as much as for gaining revenue from licensing. Wang was neither a patent troll nor an NPE. It was a patent ogre that illegitimately used its completely valid issued patents in attempts to crush smaller competitors even if they were non-infringers.

                  I am not sure that EPO patent law concepts would have helped even with the lack of a formal Doctrine of Equivalents because the confusing and misleading concept of inventive step might lead a court to decide that the Clearpoint EPO patent was invalid for lack of inventive step (simplification of complicated technology) and that the Clearpoint SIMM infringed the Wang EPO patent because the Clearpoint SIMM differed from the Wang SIMM in an immaterial way. See Lilly v Actavis.

                3. Joachim, thanks again, for your thoughts on Sept 5 and 6. I see that you are now immersing yourself in the established caselaw of the boards of appeal of the EPO. Bravo.

                  But I find no WO or EP publication in the patent family of Clayton/Wang US 4656605. Pity.

                  Read Art 56 EPC again. It decrees that the EPO “shall” recognise an inventive step unless it can find that the claim embraces something that is “obvious”. There is nothing different about the EPO. The Convention defines inventive as the antonym of obvious. The task of the EPO is to grant patents. The task of an Examiner is to examine whether a claim fulfills all the patentability requirements in the EPC. If it ain’t obvious, it must be accepted as inventive. Are you still confused?

                4. The Convention defines inventive as the antonym of obvious.

                  Do you see the potential “circular reasoning” trap there, MaxDrei?

                  Examiner: You cannot have a patent because your claims are obvious.

                  Applicant: Why do you say that they are obvious?

                  Examiner: They are obvious because they are not inventive.

                  Applicant: Why do you say that they are not inventive?

                  Examiner: They are not inventive because they are obvious.

                  NOTE: all of this type of circularity appears to be what Joachim is railing against. Note as well, that here in the States, the whole MESS of 101 is directly in line with the Supreme Court mashing the wax nose of law BETWEEN “invention” and “obviousness” in exactly the way that our Congress in the Act of 1952 took away from the Supreme Court.

                  As to Joachim’s “beef” with EPO and its application of “inventive” versus “obvious,” I leave to Joachim – that’s a bit more nuanced than I want to play with (without too much danger of putting words into Joachim’s mouth).

            2. 14.2.1.1.1.2

              I am a little busy today, but I have to ask because non-obviousness and presence of inventive step seem so different to me.

              Would the EPO issue a patent like US Patent no. 4,416,633 (Gulack, Educational and recreational mathematical device in the form of a band, ring or concentric rings)? Is Claim 1 patentable under the European Patent Convention?

              I think that Claim 1 would have to have been written in two-part claim format, but it is not completely clear how that rewrite would have been done.

              I discuss the issue of Gulack ‘633 in relation to the Alice/Mayo two-part test in Alice Meets Gulack the Mad Hatter in a sort of regression analysis. I put the claims and all the necessary links in that article.

              1. 14.2.1.1.1.2.1

                Joachim, the “2-part form” is apt only when it is “appropriate”. See PCT and EPC Rules. It is not compulsory, OK?

                As to the Gulack invention, and its patentability under the EPC, for eligibility see the exclusions in Art 52(2) EPC. But a “band” would be eligible, no question.

                Turn to Art 56 EPC for its obviousness test. This is where it gets interesting. Non-obviousness outside technology has no patentable weight. A game show format or plot for a thriller might be clever but it lacks the sort of non-obviousness that confers patentability under the EPC. The EPO would object to the Gulack band that, technologically, it is all obvious.

                1. Joachim, anon, experience prior to 1973 (when the EPC was written) showed us that it is not wise to include in a patent statute any definition of “invention” because no man-made definition can anticipate what the future will bring. If that is true for “invention” it is even more so for “technical”. We do not yet know what will be the technology of the future.

                  But we can still have something approaching legal certainty, even without a definition. Consider the 40 years of development of the established caselaw of the EPO Boards of Appeal. In the beginning, there was a lot about substantive patentability. Nowadays, the new cases in the book are more about procedural law. Of course, the EPO operates in a civil law environment, without English law concepts such as “Binding Precedent”. The need for a definition is greater, in a jurisdiction in which the law evolves through precedents that are binding.

                2. Ah yes, the “I know it when I see it” answer — that is a non-answer.

                  That makes the “circular trap” mild by comparison.

                  Compounded with the errant view of what binding precedent means…

                  MaxDrei, your reply is entirely nonsensical.

                  Please try again.

                3. MaxDrei,

                  Again hesitantly, as I do not wish to usurp Joachim’s argument — in your comment at 14.2.1.1.1.2.1, you stress the non-compulsory nature of the Jepson-equivalent claim form, but then turn around and effectively (and compulsorily) apply something similar with your (undefined) “outside of technology” parsing obstinately based on “inventiveness.”

                  Let me also point out that the Gulack claim has nothing to do with Fine Art items such as game show format or thriller plots. Yes, the Gulack claim may be applied in such venues as magic tricks or entertainment, but the Gulack claim is much more in line with “technical” creation than a fine art use of the technical creation. For an analogy, think of a method patent encapsulating how to make a Stradivarius violin. Such is very much distinguishable from playing a Stradivarius violin (no matter how defined — or undefined — one wishes to treat “technologically”).

                  Be that as it may, and returning to what I see as Joachim’s arguments, Joachim seems to be wanting to point out that it is in the parsing that the claim as a whole is damaged, and that (in his other example) such parsing “over indulges” the sense of “inventiveness.”

                  I would also point out that here in the States, our Sovereign very much made a distinction between “invention” (and ALL derivatives of that word) AND “obviousness.” I suggest that you read up on the Act of 1952 and the writings of Judge Rich who championed that distinction.

  8. 13

    It is kind of funny that somehow an arrangement of atoms is supposedly patent eligible but a machine configured to perform a method is not.

    Functions without structure is what the anti-patent movement argues.

    Magic, witches, ethereal information, and spirit worlds (where their the thoughts of their minds are processed) are the realms of the anti-patent judicial activists.

    Just unbelievable. I notice the irony in that we have digressed in science and philosophy in patent law just as we have digressed in social norms, and yet the people that decry the rise of rac ism are the ones that invoke spirits world and ethereal information, witches, and magic in the patent world.

  9. 12

    I really have to ask. Did SCOTUS create a fourth judicial exception — without telling anyone — in Mayo v. Prometheus? I don’t find any earlier reference to “well-understood, routine, conventional activity.”

    I discuss in more detail in The Fourth Judicial Exception.

    I help litigators to destroy the opposing party’s legal position.

    [If] I aid a litigator trying to argue against a motion for summary judgment that the claim is invalid because it claims nothing significantly more than an abstract idea, I recommend (post-Berkheimer) that the litigator start from the position that the only true abstract ideas belong to mathematics. Then I would argue that the opposing party mistakenly believes that a substantial limitation is a well-understood, routine, conventional element but calls it an abstract idea in order to escape factual determination.

    1. 12.1

      …the (yet another undefined) “something more”….

    2. 12.2

      Great visuals.

    3. 12.3

      I don’t agree about mathematics.

      I think that when properly framed within the modern cognitive science that mathematics is nothing more than a model or method (heuristic) for an information processor (our brains) to use to.

      Nothing abstract about any mathematics. It all comes down to practical applications and can all be understood as being built from concrete assumptions.

      But again it is all rules for an information processor. Math has no meaning outside our brains.

      Lemley is unethical. Taranto is a very intelligence misguided anti-patent Google selected purple flute.

      1. 12.3.1

        Genuine intelligence is based in bio-organic membrane-based quantum stimulus-response calculators that employ a rich set of qusymbols.

        Solid state binary computers have no similarity to organic intelligence while solid state quantum computers might have certain types of minor operation overlap, there is still almost no similarity, and qubits are tremendously impoverished in comparison to qusyms.

        It is extremely difficult to program solid state computers to simulate the most basic forms of genuine intelligence while humans developed solid state computers precisely because humans don’t do mathematical computations very well.

    4. 12.4

      It’s dicta. The Supreme Court will never allow the prior art — “conventional” or not — to be tied up in a patent claim that recites only the prior art (= public domain, unless it’s patented) along with cr@ p data content description that would otherwise be ineligible.

      Take this to the bank. All you need to do is mess with the wrong defendant. If you’re portfolio is built on cr@ p like I just described, kiss the entire thing goodbye. If you’re attorney hasn’t made you aware of this very real possibility, then get a new one because you’ve just been taken for a ride.

      1. 12.4.1

        You are not even close to being on point, Malcolm.

  10. 11

    There are certain questions which are self-answering, and from my alien viewpoint it is incredible that US attorneys and judges who have gone through law school seem incapable of distinguishing law issues from fact issues.

    One of the problems in past cases has been the “gist” rule which permits a court to disregard “all elements” of a claim and simply rewrite it to support the conclusion of non-eligibility that it is desired to reach.

    It is the combination of gisting and disregard for fact that has led to much difficulty and egregiously wrong decisions such as those in Ariosa and Recognicorp, to name only two.

    I am not sure that this is the best case to go to the Supreme Court, but judicial correction is overdue.

    1. 11.1

      You may use my coined term of the “Gist/Abstract” Sword.

    2. 11.2

      You know, I agree 100% that judicial correction is—in some real sense—overdue. That said, these same judges created the problem in the first place, so it seems unrealistic to expect that the judges will solve the problem. We need to recognize that—as far as these judges are concerned—there is no problem to be corrected.

      I do not know if any solution to the problem is coming, but if there is, it will come from the legislature, not the bench.

      1. 11.2.1

        Greg, its not really true in this case that “these same judges created the problem in the first place” since the Sup. Ct. has been creating judicial exceptions to literal 101 as to what is patentable subject matter, including abstractions, for many years, while many members of the Fed. Cir. have only been reluctantly applying them because they have to. Furthermore it is Fed. Cir. panel decisions that have created the subject limitation of requiring factual evidence for part of the abstraction test.
        Patent legislation further narrowing those Sup. Ct. judicial exceptions faces two major problems. The difficulty of passage of any legislation that would be strongly opposed by major interested parties, and the related great difficulty in drafting an amendment of 101 that would not inadvertently allow patenting of technology or concepts already controlled or prohibited by several existing statutes, or not normally intended by many observers.

    3. 11.3

      PC: One of the problems in past cases has been the “gist” rule which permits a court to disregard “all elements” of a claim and simply rewrite it to support the conclusion of non-eligibility that it is desired to reach.

      There is no “gist rule” that permits a court to do what you are saying.

      There is also no rule against boiling down a bunch of scrivened g@rbage into some text that resembles what a normal person would write if they weren’t trying to skirt around existing well-founded patent laws.

      It is the combination of gisting and disregard for fact that has led to much difficulty

      Disregard for fact is a problem, for sure. “Gisting” not so much.

      Recognicorp’s claims were pure cr@ p.

      Ariosa is concerned with a particular kind of subject matter ineligibility that has very little to do with the case that is the subject of this post.

      1. 11.3.1

        You contradict yourself Malcolm.

        First, you admit (as you must) that no law permits the Court to “Gist.”

        But then you turn around and want to allow “boiling down” based on the Court’s fallacy of “damm scriviners”

        Your wanting to boil down IS Gisting.

  11. 10

    In this particular case, the courts have seen this issue as a question of law and have not really considered any hard evidence.

    Can we talk about this statement for a minute, because I’ve seen this sentiment come up several times now. The Specification is evidence. It’s not only just evidence, it’s the best and most important evidence in the case. The amount of time and detail that is spent on various elements in the specification is significantly important to determining what an invention is all about.

    In a computer application, the specification will spend one sentence on the processor, and that sentence will mention that the computer uses a processor to process data. That’s because, at the time of filing, the processor preexisted and had such a known usage that the inventor did feel the need to explain how to make or use a processor. Once the *evidence* of the specification is considered on that issue, one can only conclude that either one of two things are true:

    1) A processor and its making and usage was conventional or
    2) A processor and its makings and usage was not conventional, and therefore are a novelty of the claim requiring them to be taught in detail in order to meet the enablement and written description requirements of 112a.

    There’s also the assertion by the patentee that claim is valid. Because the claim is asserted and assumed to be valid, and because there is no independent enabling teaching within the specification (which, again, is evidence) one can only conclude that the processor is conventional.

    Now I suppose nobody came in and testified on the amount of prior sales of processors. There’s no expert testimony on making the processor. The processor was not the subject of technological field study. But there is evidence about the processor, pretty sufficient evidence, and it all came from the source who is arguing against a finding of conventionality, which makes inherently trustworthy as a possible declaration against interest.

    A specification could teach someone how to make and use a processor, and then the attorney could go into court and say that he’s got a valid claim that includes an unconventional processor, and AT THAT POINT there would be a fact issue over processor conventionality (albeit a one-sided and stupid one). But that’s not the evidence that comes out of the specification. Instead, you have a patentee that is opportunistically talking out of both sides of their mouth – arguing the state of the art was conventional for enablement but unconventional for Alice.

    The patent at issue is directed to a user interface that shows the geographic location of for-sale properties — using a zoomable interface.

    So “in this particular case” there’s a specification that doesn’t teach how to make a zoomable interface and an assertion that the claim is valid. There’s also a legal assumption that the claim is enabled. Then you look at the evidence and you see that there no technical teaching as to how to make a zoomable interface. Now you have a legal rationale underpinned by evidence that the zoomable interface was conventional – the office found it enabled, the patentee is asserting it’s enabled, and the enablement didn’t come from the specification itself, so the art must have known how to do it.

    1. 10.1

      Now you have a legal rationale underpinned by evidence that the zoomable interface was conventional – the office found it enabled, the patentee is asserting it’s enabled, and the enablement didn’t come from the specification itself, so the art must have known how to do it.

      “B-b-b-but …. real estate!”

      This is considered a compelling rebuttal in some dark corners of the universe.

    2. 10.2

      “Processor”

      Just like:

      Proton.

      Just like:

      Neutron

      Just like:

      Electron

      1. 10.2.1

        “Processor”

        Just like:

        Proton.

        Stay away from hard drugs, kids.

        1. 10.2.1.1

          For all of your ad hominem, the Big Box reflects your “Logic.”

          As you are well aware of.

    3. 10.3

      …plus, you keep on forgetting this notion of “without undue experimentation” which is a H U G E distance away from conventionality (i.e., in widespread use) [and yes, that would be conventionality of the ordered combination]

      1. 10.3.1

        conventionality (i.e., in widespread use)

        LOL

        “Widespread use”? What about “in three of the top five universities in Boston and California”? Would that count? Or is your opinion that someone should be able to take technology developed at those places and tie it up with patents reciting descriptions of data content that could be displayed using that technology? Serious question. Because you’re a very serious person and I’m sure you’ve thought about this very deeply.

        “without undue experimentation” which is a H U G E distance away from conventionality

        Like how many inches would you say?

        Also, in 1986, how much “experimentation” did it take to “zoom in” on a computer-rendered 2D image of a boxtop? Maybe I just got lucky. Oh wait … that wasn’t 1986 when I was programming zoomable interfaces. That was 1981.

        Question: is the entire field of software patenting filled to the top with know-nothings who will do any say literally anything, or is it just the ones who post here?

      2. 10.3.2

        Anon seems to have a point here.

        Each computer implemented step a) through h) above was conventional at the time of invention.

        The ordered combination of computer implemented steps a) through h) was novel at the time of invention (or we assume for purposes of this post that there was no prior art for this ordered combination of computer implemented steps).

        Further, for purposes of this post, we assume that a programed computer is just like any other machine which accomplishes a task. e.g. you could have invented a different machine which accomplished the same task in the 1950’s with a microfilm machine, a keyboard and some conventional gears. It seems to me that I have seen one in old spy movies but let us also assume that it is irrelevant because the computer implemented steps are substantially different from the microfiche and gear implemented steps. No boxes of atoms here!

        We end up with a machine which does something new, specific and useful and which is fully enabled.

        From a policy view though, does such a patent actually promote the useful arts? Once you have the idea of ‘it would be great if I could zoom in and out on real estate maps with my computer’ the patent practically writes itself. The patent seems to be 100% spark of invention and 0% inventive work.

        Anyone can sit at home on a labor day weekend and think of new things for a computer to do. All you need to find is some kind of data which is brand new and think of something useful to do with it.

        1. 10.3.2.1

          For example, today (Aug 31) on the Federal Register we find
          “Amendment 20 proposes to separate the longfin squid/butterfish moratorium permit into two moratorium permits, one for each species”

          Eureka! New data which has never existed before, specifically the standalone ‘butterfish moratorium permit’.

          I propose the following claim:

          A method using a computer for displaying butterfish moratorium permits comprising the steps of:

          a) creating a database of the butterfish moratorium permits and their owners and expiration dates

          b) displaying a list by name of owners of butterfish moratorium permits;

          c) selecting a owner from the list;

          d) displaying the list of butterfish moratorium permit associated to that owner;

          e) determining which butterfish moratorium permits are expiring within 30 days

          f) displaying an indicator associated with each expiring permit.

          Presumably a few years from now I would sue the government for compensation for ‘taking’ my invention. While the government may well have an existing system for displaying permits and owners, it is unlikely that it is published anywhere and it certainly has never displayed a ‘standalone butterfish moratorium permit’ (I should file quickly though :-) ).

        2. 10.3.2.2

          It is not up to the Court to decide “policy” through its “interpretations.”

          That’s called “legislating from the Bench,” and in the particular area of Patent Law is a violation of the Separation of Powers.

          1. 10.3.2.2.1

            Can we really call the nonsense that SCOTUS generated from Mayo v. Prometheus to Alice v. CLS Bank legislating from the Bench?

            “Legislating from the Bench” implies at least minimal logical consistency.

            If one applies the Alice/Mayo two-part test to the Prometheus claims, they are self-evidently patent-eligible despite SCOTUS’ holding in Mayo v. Prometheus.

            SCOTUS is not legislating from the bench. SCOTUS is legislating from the Twilight Zone.

            If you want the (only) slightly longer argument, check out:

            Did SCOTUS Botch Its Own Test in Mayo v. Prometheus and Break the US Patent System? and
            Encyclopedia Galactica: The Alice/Mayo Two-Part Test is Mostly Harmless.

            1. 10.3.2.2.1.1

              Yes, we can call it legislating from the Bench, because that is what it is.

              That is not to say that the legislation that is the result of the action is in any way “good” legislation.

              Clearly, it is not (no matter how much spend the anti’s want to throw at it to defend the Ends reached).

              The larger issue here (as you may well recognize) is that the scoreboard is broken.

          2. 10.3.2.2.2

            I think you are changing the subject since I did not mention the court in my post. My question was:

            From a policy view, does such a patent actually promote the useful arts? Should we give a monopoly on real estate map zooming to the first person to think of the idea?

            Or in general, if you are the first person to think of transforming a particular kind of data in a particular way with a computer, should you be able to get a patent monopoly for it? I particularly point to my ‘butterfish moratorium permit’ invention.

            1. 10.3.2.2.2.1

              More clearly, do you think it would be sensible to change patent law to eliminate such inventions from protection?

              1. 10.3.2.2.2.1.1

                SL, if you are actually suggesting legislation to codify the unpatentability of abstract bare “abstract” concepts or “premption”claims, it would just generate even more commentator apoplexy here.

              2. 10.3.2.2.2.1.2

                SR : do you think it would be sensible to change patent law to eliminate such inventions from protection?

                Of course that would make sense.

                But get ready because the same people who hem and haw about “reliability” and “predictability” will go apeshirt when you try to take their data content/context patents away by statute. They’d have to find some other grift which might require actual work. [shudders]

                The bigger issue that you have stumbled upon, SR, is that, for some “mysterious reasons”, in the so-called world of the “computer arts” the idea that some people might engage in the behavior you are describing is not internalized within the US patent system. In other words, the types of patent attorneys who draft and prosecute junk claims of the kind that you describe are treated very seriously when they pretend to be born yesterday. That doesn’t happen in other art units. In the chem arts for example, nobody would sacrifice all their self-respect and force the Examiner to prove that chlorine ions are well known negative ions. But not so in the “computer arts”! In the computer arts, computers were invented yesterday and nobody even knows what the point of having them around is.

                “Computer graphics were hard in 1986.” <— try to believe this sort of nonsense

                But this sort of behavior is to be expected when you invite “new logic” and “new data content” into a system that was designed to promote innovation in the world of objective physical structures and transformations. The meltdown over 101 is totally predictable because these b0 t t0m-feeders got used to playing scrivener’s games and making cash off those games. Now they want to be treated with respect and they haven’t earned it (and they never will because most of them are incredibly cr@ ppy lawyers).

            2. 10.3.2.2.2.2

              No change on subject as the ONLY “policy driver” changes ARE coming from the Courts.

              In fact, in case you had not noticed, the yanswer ideas being floated – in the legislature – are ones directed to UNDOing what was the Court has wrought.

              1. 10.3.2.2.2.2.1

                Weird auto correct…

                “the yanswer ideas” ==> “the change ideas”

              2. 10.3.2.2.2.2.2

                Yes, current draft 101 legislation proposals are for greatly broadening patentable subject matter, which was why SL suggestion is refreshingly entertaining.

                1. …and “broaden” is a misnomer – more like “restore.” (Which is the counter point that you glossed over: these current ideas in front of the legislature are ONLY there because of the meddling of the Court).

        3. 10.3.2.3

          “We end up with a machine that does something new, …, and useful.”

          That does not answer the right question.

          One right question could be whether a claim recites a new and useful machine (not claim 1 obviously). Another right question is whether the sequence of steps of claim 1 is a method eligible for patent protection.
          A court will hold that the claim is nothing more that an otherwise ineligible method “done on a computer.”

          I don’t agree with the artificial distinction of “law of nature” for anything that is tangible, or the artificial distinction of “mathematical formula” for any process that is reproducible, which the courts use to frame the problem of eligibility. But here, claim 1 is a drafting attempt to claim an ineligible method by disguising it in a method for using a machine (a computer). I don’t see any question of fact that could cast doubt on that conclusion.

          1. 10.3.2.3.1

            The “right question” angle is the wrong spin.

            Two things for the wide open front gate of 101 – and two things only:

            1) can the innovation be put into at least one of the statutory classes

            2) is the utility of the Useful Arts

            That
            Is
            It

        4. 10.3.2.4

          That’s not “anons” point. That’s my point and it’s the driving principle behind most eligibility issues in the computer logic context.

          The difficulty most people have with the principle is where it leads, like a knife through butter. Or more accurately like a knife through a humongous mound of junky “use a computer for its intended purpose” patents.

          1. 10.3.2.4.1

            translation: use a Big Box of Protons, Neutrons, and Electrons for its intended purpose…

    4. 10.4

      “one can only conclude that either one of two things are true:

      1) A processor and its making and usage was conventional or
      2) A processor and its makings and usage was not conventional, and therefore are a novelty of the claim requiring them to be taught in detail in order to meet the enablement and written description requirements of 112a.”

      Or 3) The mere disclosure of the concept of a processor is sufficient to enable the processor.

      1. 10.4.1

        The little adage of the tale of the two sets of three resistors comes to mind.

        For the invention of the three resistors in parallel (if for example such comes after the three resistors in series), the “enablement” is simply NOT the “trap” that Random has deluded himself into thinking that such may be.

      2. 10.4.2

        The enablement requirement for a method performed with a computer is not met by merely reciting the existence of any processor, it requires a description of software [or a specific readily programmable algorithm] for specifically claimed operations of the processor, in particular if that claimed operation is alleged to be unobvious. If 112 was enforced we would not have nearly as many unnecessary 101 judicial disputes.

        1. 10.4.2.1

          …and thank you for yet another “Ends justify the Means” sojourn…

        2. 10.4.2.2

          I have to wonder whether Paul Morgan has much experience with software development. For decades software engineers and their standards committees have been specifying standard software components like:

          the IEEE MAC bridges specification,
          the CCITT X.25 protocol specification,
          the IETF Router Requirements,
          the ISO Design Rule for Camera Format (DCF) used in almost all digital cameras since 1998, and
          many other standards.

          Software components created in accord with such specifications constitute substantial limitations that need not be described in detail in a written description.

          The USPTO and the Courts have genuine difficulty in understanding that using standard software components is like using a standard mechanical component.

          Such standard software components cannot be considered “well-understood, routine, conventional [praxis]” discounted in determining patent-eligibility.

          There is a big difference between standard techne (craftsmanship) and well-understood, routine, conventional [praxis] in every technological art. Unfortunately English has some difficulty is describing the distinction, which is obvious in classical philosophic Greek.

          Absence of standard software details hardly fails to provide enablement in the case of standard software components any more than failing to provide all the details of a standard gear, ratchet, or pawl would fail in enabling a mechanical invention.

          A module for speech recognition would require clear detailed disclosure of the software because speech recognition is not standardized.

          A non-standard mechanical component disclosed in a written description of a mechanical invention would also require detailed disclosure to describe the invention, to provide enablement, and to demonstrate possession.

          1. 10.4.2.2.1

            non-standard mechanical component disclosed in a written description of a mechanical invention would also require detailed disclosure to describe the invention, to provide enablement, and to demonstrate possession.

            The difference is driven by PHOSITA, and for the computing arts is simply not as rigorous as the anti-software “cohorts” feel it should be.

            A further step in your analogy to mechanical innovation is to recognize at what level the components being configured need to be enabled. No one need take a mechanical innovation down to the level of “enabling” any of the “basic machines” of classical engineering. So too, the analogy of the Big Box of Protons, Neutrons, and Electrons comes into play for any claim to an innovation cast into the statutory category of composition.

          2. 10.4.2.2.2

            ML, the requirements for 112 specification enablement of claim elements, the level of POSITA knowledge of prior art for 103, and the “well known” elements for the 101 exception to the unpatentable subject matter “abstraction” test are all different, and all 3 are directly controlled by what specifically is being claimed.
            You must have miss-read my comment, because even you suggest that a claim element to speech recognition could require some 112 specification disclosure. [But unless the alleged novelty or unobviousness relates to that specific claim feature of speech recognition even that could be represented with a “black box” drawing element by now.]

        3. 10.4.2.3

          Yes, yes, and a thousand times yes. Nine tenths of the absurdities in 101 law recently arise because we are using 101 to do 112 work and using 112 to do almost nothing. This is a 112 problem. We should go back to 101 being a “coarse filter,” which only gets invoked in really egregious cases.

        4. 10.4.2.4

          Why? It sounds like you’re saying that enablement necessarily requires more than the disclosure of processor + function. But enablement just requires that the disclosure provides sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention. For simple computer funcrions which are readily implementable by the level of ordinary skill, why isn’t processor+function enough?

          (I agree that 112(a) could resolve most 101 issues in the software arts, but simple enablement wouldn’t do much due to the high skill and low difficulty in this field. Stricter application of the written description requirement or a true full-scope enablement requirement would eliminate most of the problem cases. But that’s not the world we live in either.)

          1. 10.4.2.4.1

            The same folks complaining about 101 today would and will go apeshirt as soon as the disclosure of working code at the time of filing is required to prove possession.

            Not that it matters tho because 101 is the perfect tool to eliminate patents that protect information and/or logic, both of which are ineligible subject matter.

            1. 10.4.2.4.1.1

              MM truly doesn’t understand the technology. What is commonly called logic when burning or synthesizing a programmable device is as much a circuit description as a circuit diagram.

            2. 10.4.2.4.1.2

              You absolutely miss the point with your “view” here Malcolm – the Ends do not justify the Means.

              You also miss with the notion of “possession of working code” – nowhere is such an item for PHOSITA.

              It’s like you are trying really really hard to get this stuff really really wrong.

              Here’s a hint: spend more time trying to come up with a cogent legal position (based on actual facts of the art) and less time nursing your hurt feelings and attempting to come up with ad hominem.

              1. 10.4.2.4.1.2.1

                “You also miss with the notion of “possession of working code” – nowhere is such an item for PHOSITA.”

                This is incoherent.

  12. 9

    (1) Conan was much better on the Commodore 64 – both colorized and 8-bit MIDI soundtrack.

    (2) I maintain a persnickety irritation over the discrepancy between the USPTO / MPEP Alice 101 test (where Step 1 is strictly about the statutory class, and Step 2 is divided into Step 2A “abstractness” and Step 2B “significantly more”) and the growing tendency, by courts and applicants, to refer to “abstractness” as Step 1 and “significantly more” as Step 2. We can’t have an in-depth conversation about 101 if we can’t agree on terminology.

    (3) Let’s marvel at the fact that a patent filed in 1989 and issued in 1991 is the subject of a Supreme Court writ of certiorari in 2018. Looking at the procedural history – this appeal stems from litigation commenced in 2007 and has bounced between a district court and the Federal Circuit. I don’t want to guess at the attorneys’ fees for 11 years of litigation. Let’s just go with “a lot.”

    (4) Regarding “the difficulty for the patentee – I expect – is that the patent claims just seem so obvious” – do you mean with or without the benefit of 32 years of hindsight?

    My gripe about the claims is with the last step: “identifying available real estate properties within the database which are located within the second area.” Such “identifying” is useless if it’s not used in any further step. This is the rare case where LabCorp fairly applies.

    However, even disregarding that step – the rest of the claim seems okay in the context of 1989 technology. There’s a legitimate question as to whether it merely raises a field-of-use limitation to a zoomable UI, but the UI elements should be sufficient.

    (5) Regarding the critical issue, questions of fact vs. law: I’m 100% on board with the PTO’s characterization of 101 “well-understood, routine and conventional” as a variant of Official Notice. Anything that’s not just non-novel but conventional should be readily demonstrable by evidence. Conversely – if it’s not readily demonstrable, then it’s arguably not “conventional.”

    I don’t see why this is a problem. And I do see enormous problems with the opposite proposition – under which examiners cherry-pick two or three words out of the claim as reciting an “abstract idea,” and then flush the remainder of the claim – 100 words, 200 words, whatever – as “conventional,” full stop. Examiners are abdicating their responsibilities to present a prima facie case for rejection.

    1. 9.1

      A quick note on your item (5) – you are aware that the USPTO Official Notice may NOT be used as the determinant of the state of the art, right?

      That makes for a HUGE hole in attempts to use that device as the proper evidentiary support for any factual underpinnings in the overall legal determination of 35 USC 101.

      (my turn with the ‘persnickety’)

      1. 9.1.1

        Oh, I’m well-aware. Official Notice is a convenience for points that the examiner believes to be incontestable. Data can (usually) be compressed; arrays can be sorted; user interfaces are often designed as controls backed by an event model, etc. If challenged, the examiner needs to *not* take the shortcut and instead produce some evidence – which, if the examiner is correct that the feature is “routine” and/or “conventional,” souls be trivially easy to do.

        The same goes for “conventional” technology in a 101 context.

        1. 9.1.1.1

          If challenged, the examiner needs to *not* take the shortcut and instead produce some evidence

          The “evidence” in nearly every case will be the specification where the applicant implicitly admits the conventionality of computer logic (because complete fabrication and chicanery is still not a winning strategy when it comes to prosecuting a valid patent — but that might change! And what a wonderful world that will be when the entire history of technology needs to be explained by the PTO to every applicant lest some evidentiary “hole” create a Supreme Court case out of the prosecution).

          Given the implicit admissions, what you’re seeing is not an Examiner “shortcut” but rather a recognition that the patent applicant wasn’t born yesterday and need not be insulted with the obvious. If you insist on these pattycake games I would suggest a system where, if the Applicant “challenges” the Examiner on the conventionality of computer technology and loses, that the Applicant pay a substantial penalty, e.g., $1000.00 per lost challenge. And certainly this rule should only be applied in the so-called computing “arts” because it’s only in that field where this practice of asserting that gravity might not apply to everything on earth (PROVE IT BUDDY) is widespread.

          Is it because the typical s0ftie w0ftie patent applicant is historically illiterate and unable to process basic facts about the world? Or maybe there is some other reason for their embarassing behavior. It’s a real mystery.

          1. 9.1.1.1.1

            …and yet again with your “implicit admission” without reference to the proper patent doctrine of inherency?

            Why the hiding Malcolm?

        2. 9.1.1.2

          The same goes for “conventional” technology in a 101 context.

          Slight disagreement (and again, persnickety), but such is not the same as one must remember that the level of proper evidentiary basis is much higher for “conventional” (widespread use) — that basis is beyond merely showing something to be “not novel,” or even “obvious,” so the “usual” examiner showings do not suffice.

          1. 9.1.1.2.1

            “conventional” (widespread use)

            There you go again. There is no geographic requirement for “conventionality.” Nor is there a requirement for numbers (e.g., a minimum number of people).

            All that is required for “conventionality” is that the subject matter was in the prior art and, having read it, one of skill in the art would have known that it could be used for X. That’s it.

            Anything more than would be pure judicial activism created out of nothing. The fact that Prometheus’ claim recited nothing more than conventional technology (in addition to the ineligible step of thinking about a correlation) does not mean that “conventionality” is the minimum requirement before a claim can be found ineligible. That would be absurd. And, yes, the CAFC is absurd and they are going to get smacked down hard on this issue if they don’t disabuse themselves of it quickly.

    2. 9.2

      Stein: (4) Regarding “the difficulty for the patentee – I expect – is that the patent claims just seem so obvious” – do you mean with or without the benefit of 32 years of hindsight?

      Why is hindsight needed, David?

      Were you alive in 1986? I was. Were you programming computers in 1986? I was. Could you program computers to make it seem as if you were moving in closer to rendered images? Yes you could. Was it really really hard? No, it wasn’t.

      So what’s left, David? You must know. You seem like a big expert on this topic. What was the “unexpected result”, David, of programming a computer to do what you tell it to do? Enlighten everyone.

      There’s a legitimate question as to whether it merely raises a field-of-use limitation to a zoomable UI,

      Actually there’s no question about that. None. Unless of course you’re the type of person who treats every question as “legitimate”, no matter how in@ne or offensive, as long as the question raises the possibility of you getting the result you want. But you’re a very serious person who would never behave like that. Sure you are.

      the UI elements should be sufficient

      Because the recitation of “user interface elements” render a claim eligible no matter what? Seriously? What other magical “elements” are out there which have this remarkable effect on the eligibility of a claim? “Wheels”, maybe?

      Anything that’s not just non-novel but conventional should be readily demonstrable by evidence.

      There’s no structure or combination of structures recited in this claim that is remotely non-conventional so it’s bizarre to even belabor the point in this context.

      The use of programmable computers to process data and display processed information on a computer monitor was conventional at least 20 years before this application was filed. If you need “evidence” of that, then you’re either a hopeless ign 0r amus or you’re a whiny little tr 0ll who needs his diapers changed by a PTO Examiner. Take your pick.

      examiners cherry-pick two or three words out of the claim as reciting an “abstract idea,” and then flush the remainder of the claim

      Which is totally different from an applicant taking conventional computer tech and “flushing the remainder” of the claim with ineligible descriptions of data content.

      Patent maximalists = the j0 ke that never ends.

      1. 9.2.1

        Try rephrasing your feelings (minus the ad hominem) in terms of the patent law doctrine of inherency.

        Then feel free to actually engage in the Grand Hall experiment.

        Use your “vaunted” intellect and inte11ectual honesty while engaging in the merits of these points — do not run and hide or merely cast about more of your feelings and ad hominem.

  13. 8

    Am I dreaming or did someone below actually suggest that the way to avoid a 101 rejection based on the conventionality of programmable computers connected to each other, and databases, and monitors, is to avoid making a statement in the specification that those things are conventional?

    You guys are truly HILARIOUS. Open a window up, for cripesake and let some oxygen in.

    1. 8.1

      Are you really that thick?

      The suggestion is one merely reflecting the existence of patent profanity, and avoiding the unnecessary “admission” that was being suggested as being made.

      Funny though, you yourself [shrugged] at the notion that patent profanity causes sections of the specification to hollow out, and here you seem incredulous at the exact same phenomena.

      Maybe spend more time understanding how the dots are connected and less time with the mindless ad hominem….

  14. 7

    Properly viewed from the context of computing in the mid-1980s, (1) there were no digital mapping services or pre-existing mapping datasets that could be zoomed to display a higher level of detail.

    Either the argument here is that this guy invented zoom-in-for-more-detail, in which case he pretty much admitted non-enablement, or he is distinguishing based on the TYPE of information being displayed (geographic rather than other images), in which case he’s distinguishing based on the abstraction, so that’s not a step two inquiry no matter what.

    (2) There were no databases of available properties containing the mathematical representation of the geographic locations.

    A mathematical representation of geographic locations includes a street address or latitude and longitude, so it’s highly unlikely there were no such databases. But assuming there weren’t, it isn’t an inventive concept to do something on a computer. There’s no enabling teaching for this in the spec either.

    (3) There was no geographic graphical user interface to
    enable a user to interact with such databases.

    Arguing the abstraction again – there were GUIs, just not GUIs for a particular type of abstract data.

    (4) There was only primitive software that could manipulate graphical and geographic information.

    Arguing an unclaimed feature? What’s the non-primitive advancement you claim?

    In short, one of ordinary skill in the art would (and the United States Patent and Trademark Office did) conclude that the invention went far beyond that which was, at the time, well-understood, routine and conventional.

    It seems from this argument and the specification that one of two things is true: 1) The inventor claimed a novel technical advancement in zoom-for-more-detail, but failed to enable it in the specification, or

    2) zoom-for-more-detail was previously invented and this person sought to do housing lookups “on a computer” by using the zoom-for-more-detail invention to reference a particular kind of abstract data (housing and geographic data)

    Either way, the question under Alice step two is “is there an inventive concept”? Regardless of whether you consider the elements separately, together or as an ordered combination there is no inventive concept, because the concept of the claim is that known technical functions can be applied to a different specific type of data than they have previously been applied to for the unsurprising results that the functions operate on the newly specified data. If the art knows how to zoom-for-more-detail in a set of images, there’s nothing inventive in applying that to, e.g., geographic housing images as opposed to any other kind of image.

    Is conventionality a fact question? Sure. But that argument (like all others) is subject to estoppel, and even if not, is not determinative of the ultimate legal issue. This case can be disposed of by summary judgement, because either applicant failed to enable his claim or applicant was claiming an abstraction. The ruling ought to be that the patentee is estopped from arguing the unconventionality of the zoom-for-detail feature because applicant asserts the claim is valid, which is asserting the claim is enabled, which is asserting the ability to zoom-for-detail was conventional in the art because the specification does not attempt to provide a technical teaching.

    1. 7.1

      Btw – consider the opposite. Alice states the following:

      Mayo itself is instructive…methods for determining metabolite levels were already “well known in the art,” and the process at issue amounted to “nothing significantly more than an instruction to doctors to apply the applicable laws when treating their patients.” Id., at ___, 132 S.Ct., at 1298. “Simply appending conventional steps, specified at a high level of generality,” was not “enough” to supply an “`inventive concept.'”

      In Benson, for example, we considered a patent that claimed an algorithm implemented on “a general-purpose digital computer.”…But the computer implementation did not supply the necessary inventive concept; the process could be “carried out in existing computers long in use.”

      Flook is to the same effect…Once again, the formula itself was an abstract idea, see supra, at 2355, and the computer implementation was purely conventional. 437 U.S., at 594, 98 S.Ct. 2522 (noting that the “use of computers for `automatic monitoring-alarming'” was “well known”).

      There was no fact finding of conventionality in any of those cases, so either a) conventionality is not a fact determination or b) estoppel or admission lead to the conclusion that there was no fact issue. The estoppel theory is far more lenient to patentees than the conclusion that conventionality is a matter of law.

      1. 7.1.1

        Benson and Flook cabined by Diehr, see Bilski – even if Mayo is self-conflicting on Diehr/

        Yes, the scoreboard is still broken.

      2. 7.1.2

        conclusion that conventionality is a matter of law.

        That is expressly NOT how “a matter of law” works.

      3. 7.1.3

        It is clearly the case 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.” Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018) (Moore, J. concurring).

        With respect to the case references you noted, for example, the Supreme Court in Flook made clear that it was able to “assume, since respondent does not challenge the examiner’s finding, that the formula is the only novel feature of respondent’s method”. Parker v. Flook, 437 U.S. 584, 588 (1978).

        Similarly, in Benson there was no factual dispute regarding whether “[t]he mathematical procedures c[ould] be carried out in existing computers long in use”. Gottscalk v. Benson, 409 U.S. 63, 67 (1972).

        1. 7.1.3.1

          And that occurs in every case as well, as it’s always a catch-22 when there’s no teaching disclosure. For example, I can just as easily say about this case that the court could assume, since the patentee does not challenge it (and in fact asserts), that the claim is enabled. I can then go into the specification and note there’s no technical teaching (an undisputable fact requiring no inferences be drawn). Then I can conclude that there is no factual dispute regarding whether interfaces were zoomable at the time of filing – the claim is legally enabled, the non-movant doesn’t argue it wasn’t legally enabled, and it could not have been legally enabled by the specification, therefore the evidence must be that the art found the functionality so routine and conventional that the mere mention of the functionality in the specification met the enablement requirement. I can bring this up in oral argument, and the patentee will be stuck between the hammer of enablement and the anvil of alice step two. It’s true that with respect to either one of them individually there might be a fact issue – if patentee simply asserts unconventionality and his assertion is not interrogated in any way there might be a fact issue – but validity requires both to be met simultaneously.

          As I said, I agree that conventionality is a fact issue. I disagree that you need a fact determination in order to dispose of the case when the specification does not have a technical teaching of the feature being argued over. If your attorney decides post-hoc that he is going to take an application that was about using a computer to do an analog task and recast it as an improvement to computer functionality via allegedly inventing zooming interfaces in order to improve the odds of surviving ex post facto Alice logic, then it is unsurprising that your case should survive summary judgement based upon whether there is any technical teaching whatsoever on zoomable interfaces.

          I understand he’s doing it because that’s what he has to do – the spec was written in 86 and the alice requirement happened in 14 – but the fact that he has an understandable and even laudible motivation for bs’ing doesn’t make his argument not bs. Summary judgement requires all inferences to be drawn in the non-movant’s favor and questions if there is a material fact, it does not require a judge to suspect all disbelief and allow an internally inconsistent line of argument to proceed.

          1. 7.1.3.1.1

            Your view is notoriously OFF as to the supposed “catch 22.”

            1. 7.1.3.1.1.1

              (in no small part due to the “ordered combination” versus “items on an individual basis” distinction.

              This is nothing more than the Big Box of Protons, Neutrons, and Electrons” “Logic” being exposed. Once you realize the difference between the piece parts – which in and of themselves may be FULLY conventional – and the ordered combination – which may need no more “teaching” (remembering that the standard is undue experimentation) than the provision of the ordered combination – and your “theory” starts falling apart.

              I think that you have some latent Flash of Genius desire hiding in your “theory.” Congress was pretty explicit in disabusing that notion.

              1. 7.1.3.1.1.1.1

                (in no small part due to the “ordered combination” versus “items on an individual basis” distinction.

                Is your argument that the claim is patentable based on the combination, but that the spec must only enable each item individually?

                I mean, if you claim A and B together, and then argue it is not conventional to use A and B together, but the specification provides no technical teaching as to how to do A and B together, then I guess it’s one of three options:

                1) Claim is unenabled
                2) It is well understood how to make and use A and B together and therefore A and B together need not be taught by the spec
                3) A and B individually were each enabled to the art, and that is enough to make and use the combination of A and B under the law.

                Pretty sure 3 ain’t the law. The fact that few specifications provide teachings to enable the combination of A and B simply means that knowing how to get A and B together was well understood, because people generally don’t write (and once patented, we assume did not write) a non-enabling specification. Either way, I know of no case that says that if A is individually enabled and B is individually enabled that AB is enabled without any further teaching as to how to combine A and B. I may be a poor, country examiner, but seems to me when a fella don’t have any words teaching as to how to combine two things together, his only reponse to an enablement rejection would be that the combination was well-understood enough by the art to be made without undue experimentation.

                MPEP 2161:
                The specification need not teach what is well known in the art. However, applicant cannot rely on the knowledge of one skilled in the art to supply information that is required to enable the novel aspect of the claimed invention when the enabling knowledge is in fact not known in the art. ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 941, 94 USPQ2d 1823, 1827 (Fed. Cir. 2010) (“ALZA was required to provide an adequate enabling disclosure in the specification; it cannot simply rely on the knowledge of a person of ordinary skill to serve as a substitute for the missing information in the specification.”); Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283, 84 USPQ2d 1108, 1114-15 (Fed. Cir. 2007) (“Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.”). The Federal Circuit has stated that “‘[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.’” Auto. Technologies, 501 F.3d at 1283, 84 USPQ2d at 1115 (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997)).

        2. 7.1.3.2

          in Benson there was no factual dispute regarding whether “[t]he mathematical procedures c[ould] be carried out in existing computers long in use”. Gottscalk v. Benson, 409 U.S. 63, 67 (1972).

          Perhaps worth pausing a moment to let that citation sink in slowly. Something happened to the profession of patent law between now and 1972. Something that smells like an unwashed beard, cheetohs and a greasy collection of Ayn Rand paperbacks.

    2. 7.2

      Either the argument here is that this guy invented zoom-in-for-more-detail, in which case he pretty much admitted non-enablement, or he is distinguishing based on the TYPE of information being displayed (geographic rather than other images), in which case he’s distinguishing based on the abstraction, so that’s not a step two inquiry no matter what.

      Ah, the old dissect-and-destroy approach.

      By that rationale – the patentee in DDR Holdings claimed to have invented:

      (1) Hyperlink navigation (circa 1987, see Macintosh HyperCard) and/or CSS (circa 1996), or

      (2) The use of CSS with hyperlinked content to present content from e-commerce websites, which is merely a field-of-use limitation.

      We can do this all day. Show me a patent or application where the courts have identified patent-eligible subject matter, and I’ll show you a dissection into “conventional” vs. “field of use” that renders it invalid by your logic.

      1. 7.2.1

        That game of “ping-pong-ping-pong” that depends MORE on who makes up the panel and than any discernible and repeatable law ONLY highlights that fundamental FLAW of the Supreme Court scrivining – otherwise known as Void for Vagueness.

      2. 7.2.2

        Ah, the old dissect-and-destroy approach.

        Merely complaining about dissection is the last refuge of a person that can’t make a coherent argument for the whole being more than the expected sum of its parts. Frame me a hypothesis as to why it’s more than the sum of its parts and we’ll rediscuss when your work is no longer incomplete.

        Btw, that’s true about 103 too. If Congress wanted novelty to be sufficient for patentability, there would be no 103 section. Given that there is 103, and the claim is considered as a whole, every obviousness prior art rejection dissects the claim in some manner – if there was no dissection it would be an anticipation rejection. Yet I don’t hear you arguing that every 103 rejection is invalid. Perhaps it’s because some dissections are qualitatively different than others. You’re like anon saying that every invention is a combination of protons, neutrons and electrons, as if known ties in the art and the level of granularity you’re using have no bearing on the outcome of the question.

        The claim has an image, the image can be zoomed in for more detail, the image can be selected to show data that was stored in a database. The art knew that this could be done regardless of the data that was conveyed in the image or in the database. Recompiling it with an eye toward the analog act of house selling by making the image a map and the database house information doesn’t suddenly mean you’ve solved a technical issue for the software developer as he already knew any data could be thrown in to the functionality.

        We can do this all day. Show me a patent or application where the courts have identified patent-eligible subject matter, and I’ll show you a dissection into “conventional” vs. “field of use” that renders it invalid by your logic.

        You could do the reverse all day as well, as every distinction from the anticipated could be heightened. It doesn’t change the fact that sometimes people disclose particular technical teachings to improve computers (a la Enfish) and sometimes people point out that known computer processing features that work on any data (zooming, data recall, data transfer over an interface) work on very particularly defined subsets of data (zooming of maps, recall of housing data, network transfer of account settlement).

        Hey maybe the image could be a collage of photos of banks, and you could engage in intermediated settlement by zooming in on selected pictures of banks, and modifying the data that is brought up. As a whole, I’ve never heard of banking be performed so graphically, so it must be unconventional.

        1. 7.2.2.1

          sometimes people disclose particular technical teachings to improve computers (a la Enfish)

          Bad example. Enfish’s claim was not inventive.

        2. 7.2.2.2

          RG, tongue in cheek:

          Hey maybe the image could be a collage of photos of banks, and you could engage in intermediated settlement by zooming in on selected pictures of banks, and modifying the data that is brought up. As a whole, I’ve never heard of banking be performed so graphically, so it must be unconventional.

          “Hey this argument worked on the new security guard so it must have something going for it.” <– typical maximalist, completely without irony

        3. 7.2.2.3

          You are off in almost every conceivable way.

        4. 7.2.2.4

          Merely complaining about dissection is the last refuge of a person that can’t make a coherent argument for the whole being more than the expected sum of its parts. Frame me a hypothesis as to why it’s more than the sum of its parts and we’ll rediscuss when your work is no longer incomplete.

          Before you hold this invention to that standard, I’ll ask the obvious question: are all fields of art held to that standard?

          If I present to you a combination of purely conventional parts – a housing, some bolts, some gears – and assert that it’s a new type of can opener, would it face a § 101 rejection? Must I prove that it’s “more than the sum of its parts,” or is simply asserting that it’s a machine with some ostensible utility enough?

          Software inventions are subject to exactly the same standard of patent-eligibility than any other type of technology. Not one word of 35 USC or 37 CFR proposes anything to the contrary. So whatever “more than the sum of its parts” test you propose for software must also be applicable to mechanical inventions.

          Now, that aside: If we were to graft today’s patent law onto the state of the art of 1986 (when this application was filed), I suppose I’d draft the specification as follows:

          Contemporary real-estate databases may be queried to provide information about prices, and optionally other parameters such as size, configuration, and availability, for properties that meet a defined set of search criteria. For example, a query for properties within a defined area such as “Washington, DC” or “zip code 20812” may produce a list of results from the database that is typically presented in tabular form, as is customary for database search results.

          Some real-estate programs are also capable of presenting a map of search results. For example, selecting “zip code 20812” may produce a map showing the entire area of Glen Echo, Maryland, and the search results of the area may be overlaid on the map as icons, optionally with indicators that visually distinguish properties such as price and availability. The map may permit a user to select an individual search result on the map, such as using a joystick or mouse, and may display more information about the selected result.

          However, map-based interfaces for a real estate database may present a problem related to the density of search results. If a large number of search results are available in response to a search query, the map overlaid with the search results may be too dense to select, or identify, individual search results. The application may avoid such density by limiting the number of search results presented on the map, such as only showing the first ten search results and allowing the user to toggle between pages of search results. However, this interface may be unwieldy; e.g., the user is interested in only a subset of search results, such as in a particular portion of the displayed area, but finding the desired subset of search results may require traversing the entire search result set.

          Some real estate applications may present a map that is more selective for the search results of the user, such as showing a map only of a selected subset of search results that meet a set of user criteria. However, a selective map of this type may present a level of detail that does not fully meet the user’s needs. For example, a user may search for search results on a particular street, and the application may present a map only of the selected street with indicators of the search results. However, this presentation may fail to inform the user of the area of the neighborhood or city in which the street is presented, and the user may be unable to ascertain the location of the street in the geographic region. The presentation may also fail to inform the user of contextually related information, such as real estate prices and availability on other streets and neighborhoods. The user may access such information by executing follow-up searches targeting other areas. However, such applications require the user to execute multiple searches with search criteria targeting different areas. Moreover, the user may not know the names of neighboring streets or neighborhoods, and may therefore have to consult external sources of information to execute such supplemental searches. These disadvantages may result in a unwieldy user interface that provides a disjointed user experience.

          I would then discuss some implementation details and interesting variations:

          * What’s the UI for zooming in/out? Just a “Zoom In” and “Zoom Out,” or a selected set of steps (Region / City / Neighborhood / Street), is it a slider? Maybe a lasso-like tool? Maybe no UI, but based on hardware device input, such as joysticks? Or is the zoom function activated by choosing a search result, or by selecting a set of search results? Does the zoom level have a step size? Can it be adjusted? Is the step size shown on the display? Is there a “Back” or “Undo” button to return to a previous or initial zoom level?

          * How does lateral scrolling figure into the UI? Can the user scroll laterally without zooming?

          * What is the map, exactly? Just the boundaries of a region, or just a line-drawing of streets, or a more sophisticated graphical depiction? How is the data to render the map stored? Compressed? (Noting very limited storage space of circa-1986 devices, and the tradeoffs of compression vs. speed.)

          * Does the device redraw the map from scratch? Does it rescale the portion that’s already been drawn? Maybe keep the first map in a buffer or cache, and then adjust it based on the zoom level? For zoom-out, can you downscale the map you’ve already rendered and just fill in the edges?

          * Does the zoom jump right from the initial zoom level to the selected zoom level, or does it go through a series of steps? At what detail are the intermediate steps drawn? Any rendering improvements for the intermediate steps – maybe render the final map, and then redraw it at successive scale levels? (Noting the very limited rendering capabilities of circa-1986 computers.) Are those incremental renderings centered on the selected location, or does it incrementally migrate from the center of the display? (Subtle but neat visual difference there.) Do you include the search results in each incremental zoom level, or only render them into the final presentation at the new zoom level?

          * How do you render the search results into the map? Different icons for different building types? Size the icons according to price? Color the icons by time on the market (red = new/hot listings, gray = old listings?)

          * How do the search results change for different zoom levels? Do you insert more search results on zooming in? If the zoomed-out map was arbitrarily filtered to a limited set to avoid crowding, do you keep the search results that were near the user’s selection when you zoomed in?

          * How is the zoom level shown on the display? Is there an inset map to show the context of the full presentation? Is the inset map interactive?

          …etc.

          Note that many of these details are specific to implementations of real-estate-based maps. Note that many of these problems only arise in the specific context of zoomable real-estate map data, and require solutions that are tailored for that use. The details also reflect a much more involved development process than the contemporary solutions: “Render a map with icons.”

          That’s how I draft a typical application today. And I submit to you that it is not fair to judge an application from 1986 based on today’s legal standards.

        5. 7.2.2.5

          The claim has an image, the image can be zoomed in for more detail, the image can be selected to show data that was stored in a database. The art knew that this could be done regardless of the data that was conveyed in the image or in the database.

          There’s another word for “the art knew that this could be done.” That word is: hindsight. The legal test of obviousness deliberately excludes “obvious in hindsight.”

          There are two circumstances in which a combination is obvious:

          (1) When the combination has no synergy. Reference A is a toaster; Reference B is an automobile. A car with a built-in toaster is obvious over A + B.

          (2) Designer’s choice. Reference C teaches that toasters have heating elements. Reference D teaches a battery-powered heating element for use in portable cooking devices such as griddles, stoves, and ovens. A toaster with a battery-powered heating element is obvious over C + D, because there is no particular reason or value in choosing to use that heating element with that toaster (except to make it “portable,” which is a motivation that D teaches).

          By contrast – obviousness does not exist where there is a significant, heretofore-unappreciated reason to use a combination of prior art elements.

          Diamond v. Diehr is a good example. Prior to Diehr’s application, rubber presses existed; computers existed; and algorithmic implementations of the Arrhenius equation existed. The combination was non-obvious, in addition to being patent-eligible subject matter. Certainly “the art knew it could be done” to combine these elements to produce an automated rubber press – but that is not the proper inquiry.

          1. 7.2.2.5.1

            The combination [in Diehr] was non-obvious

            Was it? At best, that was a dubious finding.

            1. 7.2.2.5.1.1

              Your feelings are noted.

              As is the fact that you are on record as saying that the Diehr case was wrongfully decided.

              Minor details, right?

      3. 7.2.3

        DDR Holdings

        LOL Your bringing this cr @p patent up as an example of what?

        the old dissect-and-destroy approach.

        It’s a great approach, completely legally approved, logically necessary and a good attorney will win with this approach pretty much every time he attacks a “do it on a computer” claim.

        What’s your problem, exactly?

  15. 6

    Dude those graphics were epic! 8 bit rocks!

  16. 5

    you never provided a cogent basis for it

    Try to believe it folks. In fact, a “cogent basis” was provided before Prometheus v. Mayo, about two hundred times. And probably a thousand times since then.

    The cogent basis is that ineligible subject matter doesn’t become eligible merely because you place it in some prior art context where it (allegedly) hasn’t been before. That would turn subject matter eligiblity into a scrivening exercise. Is that clear enough for your little walnert brain to process?

    If not, I can give you some simple examples, as I have done many many hundreds of times before.

    Note that my intention here is not to help you (that’s a lost cause) but merely to remind people that you’re a p@ th0 l0gical l i ar with some deep psychological problems that are not unrelated to your glibertarian religion. Although that, too, is transparent enough it’s still fun to remind everyone.

    LOL

    1. 5.1

      Oops, meant as a response to 4, of course. Apologies for the sloppy formatting.

    2. 5.2

      You calling it cogent does not make it so.

      No matter how many times you do so.

      That would turn subject matter eligiblity into a scrivening exercise.

      LOL – the “great” (more like ‘grate’) Supreme Court warning against “dam scriviners” as they themselves go about scrivening patent law into one giant mess.

      All else from you is – as usual – mindless ad hominem.

    3. 5.3

      “The cogent basis is that ineligible subject matter doesn’t become eligible merely because you place it in some prior art context where it (allegedly) hasn’t been before. That would turn subject matter eligiblity into a scrivening exercise.”

      Why wouldn’t that simply receive an obviousness rejection? Should subject matter eligibility rejections simply be scrivening exercises by Examiners that should be more appropriately addressed under 103?

      1. 5.3.1

        “Why wouldn’t that simply receive an obviousness rejection?”

        Supposedly because of the Graham factual findin’s and supposedly because that is da will of the congress (you know back in 1952).

        “Should subject matter eligibility rejections simply be scrivening exercises by Examiners that should be more appropriately addressed under 103?”

        Arguable whether they should be addressed under 103 or not, and congress isn’t going to change 103 to help us out it doesn’t seem. All this hubbub really is because of the silence of the lawmaking body congress for the last 50 years. They’re the ones that are supposed to be making the laws and should clarify what they want to be within the purview of their entitlement program and what is outside thereof.

        But they’re worthless as I’m sure you know.

      2. 5.3.2

        subject matter doesn’t become eligible merely because you place it in some prior art context where it (allegedly) hasn’t been before.

        Why wouldn’t that simply receive an obviousness rejection?

        Two reasons – First, obviousness is considered for the claim-as-a-whole, and conventionality is only considered for the non-abstract/ineligible features. Consider someone who discovers, e.g. e=mc^2 and then claims a calculator calculating that. The system is non-obvious because there’s no teaching for the e=mc2 limitation, but the claim is ineligible because under step two the analysis is concerned with whether the calculator is conventional or significant.

        This was most prevalent in the fetal DNA being located outside the baby case (I forget the name). That claim as a whole was obvious because the discovery of the natural law made made it non-obvious, but the natural law, placed into a conventional context, was nothing little more than the natural law.

        The second reason is because obviousness does not solve the issue of re-patenting the context that should be dedicated to the public. Let’s assume you invent a new, non-obvious toaster that uses one tenth the electricity to produce the same toast as conventional toasters. A claim to that toaster is non-obvious.

        Now you write a second claim – this claim is directed to using a camera to take a picture of your non-obvious toaster. Claim 2 is non-obvious for the same reason Claim 1 was non-obvious, the system has non-obvious limitations for the toaster. But Claim 2 isn’t eligible because that claim is directed to the camera functionality and the toaster limitations are not significant (or even operative, one would assume) with respect to the functioning of a camera. What this claim is trying to do is really capture functionality that this person didn’t invent – the camera. The person who invents the toaster should be rewarded with proceeds from the toaster. He shouldn’t be rewarded for proceeds related the entire field of camera usage, and he shouldn’t have his own proceeds reduced when someone else comes along with a new, break-resistant plate and claims placing toast from a toaster onto the plate.

        Consider what happens if you don’t have the rule – everyone who invents device D claims unrelated devices X Y Z as “context” performing their usual operations with respect to (or even without respect to) it. I could have a 20 year old public use tv, but not be allowed to have light from a patented lamp shine on it, nor have it be in the same room-system as a new video game device, etc. Pretty soon the use of any of your devices becomes dependent upon whether there is one infringing device of any type anywhere around despite that device not really interacting with all of your properly-acquired devices.

        There’s nothing surprising about this, in fact, prior to the CCPA screwing up 112, 2nd after 1952, this was ALWAYS the case, because “point out and particularly claim” was limited to the actual novelty invented. In other words, if you invented a new car battery that stored energy more efficiently but hooked up to a car the same way, you couldn’t write a system claim that included battery + car because it failed to point out and particularly claim the invention and garnered a 112, 2nd rejection, so the conventional context features were always stripped out of the claim. After the CCPA declared non-relevant context didn’t harm 112, 2nd (which they did despite very little language change in the statute, and really bad reasoning, btw) people started writing all sorts of non-relevant context for purposes of increasing infringement awards (selling an infringing battery off the shelf is a $200 claim, selling a car with an infringing battery is a $200 infringement on the battery claim and a $20k infringement on the system claim, so recitation of non-novel context is a huge increase in value).

        1. 5.3.2.1

          Why wouldn’t that simply receive an obviousness rejection?

          Two reasons – First, obviousness is considered for the claim-as-a-whole, and conventionality is only considered for the non-abstract/ineligible features. Consider someone who discovers, e.g. e=mc^2 and then claims a calculator calculating that.

          The earlier question was simply taking known art and reframing it in a new context. Rather than a novel formula, but, as in the case here, saying “use conventional mapping and zooming features, but with real estate data.” That should receive an obviousness rejection – mapping is known, zooming is known, real estate data is known, and they’re trivial to combine.

          The second reason is because obviousness does not solve the issue of re-patenting the context that should be dedicated to the public. Let’s assume you invent a new, non-obvious toaster that uses one tenth the electricity to produce the same toast as conventional toasters. A claim to that toaster is non-obvious.

          Not if that’s all it claims – specifically, if the claim is:
          “A toaster;
          wherein the toaster uses 1/10th the electricity of a conventional toaster,”
          I’d say that such a claim is obvious: again, toasters are known; using an amount of electricity is known; and it’s trivial to combine them. There’s likely some inventive technology involved, but that technology has to be in the claim, not merely the result of the inventive technology. Otherwise, you’re merely claiming the problem to be solved, not the solution.

          1. 5.3.2.1.1

            The earlier question was simply taking known art and reframing it in a new context. Rather than a novel formula, but, as in the case here, saying “use conventional mapping and zooming features, but with real estate data.” That should receive an obviousness rejection – mapping is known, zooming is known, real estate data is known, and they’re trivial to combine.

            He said ineligible subject matter does not become eligible because you put it in a conventional context. You said why not just make an obviousness rejection? The answer is because sometimes the ineligible subject matter is non-obvious. The fact that THIS claim should have gotten an obviousness rejection (and, had KSR happened earlier, probably would have) doesn’t change the fact that non-obvious ineligible subject matter is a reason to have Alice rejections.

            I’d say that such a claim is obvious: again, toasters are known; using an amount of electricity is known; and it’s trivial to combine them.

            Well I intended the claim to be a series of novel structural limitations whose result would be a toaster that was more efficient, but even under your formulation of the claim, it’s not obvious. There’s no motivation to use a tenth of the electricity if it doesn’t toast the bread, the simple combination rationale requires predictable results in order to be used. There’s other problems and rejections to be made with a claim that simply is “old machine that generates a new result”, but obviousness is not one of them.

            Otherwise, you’re merely claiming the problem to be solved, not the solution.

            Welcome to the world of computer software.

            1. 5.3.2.1.1.1

              That should receive an obviousness rejection – mapping is known, zooming is known, real estate data is known, and they’re trivial to combine.

              Indeed. It’s also ineligible.

              Junky claims failing under multiple prongs is not unusual. On the contrary.

            2. 5.3.2.1.1.2

              Well I intended the claim to be a series of novel structural limitations whose result would be a toaster that was more efficient, but even under your formulation of the claim, it’s not obvious. There’s no motivation to use a tenth of the electricity if it doesn’t toast the bread, the simple combination rationale requires predictable results in order to be used.

              There’s certainly a motivation to use less electricity, and plugging in a toaster certainly gives predictable results. The novel structural features you didn’t mention would be a different matter.

              Otherwise, you’re merely claiming the problem to be solved, not the solution.

              Welcome to the world of computer software.

              Maybe the way you write claims, but not the way I do. Maybe that’s why mine are valid under 101 and likely to remain that way regardless of how SCOTUS twists around the law in the future.

              1. 5.3.2.1.1.2.1

                You are not as safe as you think you are (no matter how you write your claims).

                Your view here is incorrect on more than one way, not the least of which is that it presumes that any claim axed under the current “rubric” was deservedly axed.

                Just ain’t so.

          2. 5.3.2.1.2

            By the way, the fact that you can identify “that technology has to be in the claim, not merely the result of the inventive technology” as a problem of claiming automatically makes you better than half of the prosecution attorneys and many regular posters of this board.

  17. 4

    Let’s be perfectly clear: this “patent claim” (and I’m trying not to laugh here) describes a database and a display connected to that database, where the display shows you “stuff” related to the database. The “stuff” (information content) is what is allegedly “inventive” because there is no new “technology” described in the claim. None whatsoever.

    Are there really people out there in the patent field who are so incredibly ign0rant about the history of the world or so p@theticall desperate that they are willing to defend this cr@p on any terms? I’ll give the sle@zebag lawyers a pass here because, hey, they are being paid to pretend they were born yesterday.

    Dennis writes:

    In this particular case, the courts have seen this issue as a question of law and have not really considered any hard evidence.

    LOL What on earth is the “hard evidence” you’re looking for? Have you looked at the specification where it’s certainly admitted (implicitly if not explicitly) that computer databases hooked up to displays are old in the art? What other “hard evidence” do you need? Serious question.

    The patent at issue is directed to a user interface that shows the geographic location of for-sale properties — using a zoomable interface.

    News flash: put two dots on a screen (like I did when I was thirteen, before this application was filed). Hit a button and cause those two dots to become two pairs of two dots that are separated a bit more than they were previously (like I did when I was thirteen). Lo and behold: you just got “zoomed in.”

    News flash number 2: I didn’t invent the “zoomable interface” and neither did these guys (probably they would have tried to claim that instead of this incredibly narrow application … don’t ya think?)

    And then there’s this:

    Although this idea might seem well understood today — the application claims priority back to 1986 — graphics were not so easy back then.

    First of all, the claim here doesn’t require any fancy graphics. There are no limitations about how quickly the images are rendered or the level of detail in the images. Second of all, basic graphics were plenty “easy” in 1986 for people whose job it was to cause a computer to display … graphics. Third and most importantly of all, the ease of displaying the recited information content is utterly irrelevant to the eligibility of this claim.

    Three questions to help put the issues into perspective for that tiny tiny fraction of people who still find all this eligibility business completely baffling.

    1. Does reciting a computer make a claim eligible? Answer: no. This is probably the easiest of all three questions but they are all easy. If you get stuck on this one, please find another occupation because the law is not for you. It’s too nuanced. Maybe go work for ICE or some place where the most important skill is figuring out whether a person’s skin is dark enough to justify harassing them.

    2. Can I re-patent an existing computerized display merely by describing an image produced on the display? Answer: no. Of course you can’t do this because images are ineligible subject matter. It doesn’t matter if it’s a street map with houses on it, or a painting with smiles on it, or a photograph with b00bies on it, or a menu with sandwiches on it. We don’t let people protect information content like that just because “computerized display” because doing so defeats the purpose of having a computerized display in the first place.

    3. Can I patent a “method of using a map, a magnifying glass and a list of available real estate to look at the location of the available real estate”? Of course not. And — shocking!!!! — nobody even tried to patent such a ridiculous thing. Why is that? Were humans just different before computers and less clever about using the patent system? Or did something else happen? These last questions are certainly the easiest of all for grown ups who have been paying attention. Let’s see if the peanut gallery can come up with some answers.

  18. 3

    Whether something is “well understood” by me or you, or some other real individual person, that’s a question of fact, isn’t it?

    But whether the same thing is “well understood” by that legal construct, that imaginary concept, the PHOSITA? That is different, and a question of law, isn’t it?

    Of course the court needs help to decide. But x-exam of technical experts fielded by the opposing sides is what provides (in a patent trial in England) the basis of fact for the court to decide the eligibility/patentability question of law. Typically, such x-exam consumes the middle 60% of the 5 days of a typical patent trial in England.

    How could it be anything else?

    1. 3.1

      How could it be anything else

      1. Does our legal system require an expert to tell the court that human beings have eyeballs? Or can that be determined fairly some other way?

      2. It’s called an admission. Like the admissions that are in most specifications, explicitly or implicitly.

      But maybe we’ve reached a point in human “evolution” where there is no such thing as reality and if I said “displays connected to databases are old in the art” in my specification that doesn’t mean that I meant it then, nor does it mean that it’s true now. Just like I could say the opposite today and tomorrow if it serves my purposes I will flip flop back to what I said originally. What are you going to do about it anyway? What makes you so smart? What do you have against computers?

      Etc etc etc.

      We live in the world’s st00 pitest timeline. Seriously, I got into patent law thinking that I could get some relief from the idi 0t attorneys in othe aspects of the law. But no. It’s a cess p00l of whining entitled m 0 r0ns.

      1. 3.1.1

        Yeah, but that cesspool is smaller than the cesspool that engulfs every other endeavor you could have entered.

        And many patent prosecutors are now being trained today to remove “admissions” from their specifications to make 101 determinations harder to get, so you’re going to see less and less of statements like “as is known in the art,” “as is conventional,” etc. I predict that in a couple of years, the “Background” sections of specifications will entirely disappear.

        1. 3.1.1.1

          I predict that in a couple of years, the “Background” sections of specifications will entirely disappear.

          They’re already disappearing.

          [shrugs]

          But that doesn’t mean that implicit admissions of what’s ancient in the prior art (e.g., programmable computers connected to databases, to each other, and to monitors) is going to disappear from patent specifications.

          Man, the maximalists never cease to amuse. Get out of the bubble every once in a while.

          1. 3.1.1.1.1

            Your “implicit admission” is known by a different (and proper) legal term:

            The patent law doctrine of inherency.

            I suggest that you move your “feelings” and use the proper terminology. Why would you NOT do so?

  19. 2

    How this patent litigation on technology with a 1986 filing date could still be pending like Jarndice v. Jarndice is explained in the cert Petition by: “eleven years of litigation, numerous motions for summary judgment, and four appeals to the Federal Circuit.” [I.e., judicial docket priority control and supervision failures.]

  20. 1

    The difficulty for the patentee – I expect – is that the patent claims just seem so obvious.

    What was that court case that stated that whether or not a claim (element) was obvious had zero to do with the eligibility determination…?

    1. 1.1

      What was that court case that stated that whether or not a claim (element) was obvious had zero to do with the eligibility determination…?

      Whatever “case” it was, it was certainly wrong.

      The eligibility analysis will almost always require an understanding of the relationship of the claim to the prior art.

      Dennis knows this. Everybody knows this.

      If you don’t know this by now, you should get out of the business because we can smell the malpractice from here. Oh wait! It’s not malpractice. It’s just you and your cohorts taking money from people who are miraculously less intelligent than you. Don’t forget to cash the checks right away.

      1. 1.1.1

        The eligibility analysis will almost always require an understanding of the relationship of the claim to the prior art.

        You keep on saying this, even though you have never provided a cogent legal basis FOR saying it.

        Plus, I notice the qualifier of “almost” – and I am curious as to the legal basis for this qualifier (as well as what provides legal criteria for determining how that “almost” is determined).

        Will you reply in a substantive manner, or will you do your usual bleating?

        1. 1.1.1.1

          You keep on saying this, even though you have never provided a cogent legal basis FOR saying it.

          You mean besides the fact that all of the eligibility decisions emphasize what was well known in the art and the words routine, well-known and conventional are all relative terms?

          1. 1.1.1.1.1

            Not even close.

    2. 1.2

      Not zero, anon, just mostly zero. From Affinity Labs, quoting Ultramercial: “the addition of merely novel or nonroutine components to the claimed idea [does not] necessarily turn[] an abstraction into something concrete… any novelty in implementation of the idea is a factor to be considered only in the second step of the Alice analysis.”

      1. 1.2.1

        Thanks Abstract iDan – that’s a cogent reply, even if it is not to the case that I was thinking of.

      2. 1.2.2

        This is a completely different issue from the issue that “anon” is struggling with. Either that or “anon” is even st0 0 piter than I thought, which is really saying something.

        This quote is concerned with the fundamental and correct proposition that the novelty of the ineligible subject matter is irrelevant to the eligibility question. In other words, my ineligible claim to “A method of drinking a cup of coffee and thinking about X” doesn’t become eligible simply because X was the furthest thing from anybody’s mind, nor does it become eligible because X is a correlation that wipes out all future cases of childhood leukemia.

        This is as it should be, of course. And it’s the way it always was.

        Oh but look at that shiny computer! It’s so shiny and computery.

        1. 1.2.2.1

          Good thing no one writes a claim like that then, Mal. The claim at issue in this petition certainly doesn’t have such limitations.

          That said, I think it’s likely invalid, but my analysis would go a bit farther than your “it uses a computer, therefore is ineligible” construction.

          1. 1.2.2.1.1

            Good thing no one writes a claim like that then, Mal.

            Prometheus v. Mayo was a “claim like that”, iDan.

            I used a simple context (“drinking coffee”) because the recitation of actual prior art “technology” tends to confuse people (even if the prior art tech is really really simple, like a monitor connected to a computer).

            The claim at issue in this petition certainly doesn’t have such limitations.

            The ineligible subject matter in this claim is actually even more shallow than the X matter I described. People looked at real estate on maps before computers. I know: shocking. But of course computers weren’t invented until 1986 and the idea of using them to make graphics was brand new. <– that's a j0ke but maybe some people out there aren't sure because … not born yet? who knows

            my analysis would go a bit farther than your “it uses a computer, therefore is ineligible” construction.

            No idea how or why you’re coming up with this “construction”. I never said anything of the sort and I never will. I have said — many many times — something close to the opposite and I’ll say it again: The mere recitation of a computer in a patent claim does not render a patent claim ineligible. Likewise, the mere recitation of what would otherwise be ineligible subject matter in a claim does not render that claim ineligible.

            The analysis more complicated than that. But not much more complicated. It’s something an intelligent 10th grader could handle with ease. That’s why a lot of today’s patent attorneys have a hard time with it. LOL Just kidding. The problem a lot of today’s patent attorneys have is that they want software to be eligible because otherwise they’ll have to write applications on new pencil erasers.

            1. 1.2.2.1.1.1

              Prometheus v. Mayo was a “claim like that”, iDan.

              Fair enough. That was a terrible claim. You could almost have infringed it merely by reading the specification and thinking about its examples.

              The ineligible subject matter in this claim is actually even more shallow than the X matter I described. People looked at real estate on maps before computers. I know: shocking.

              OTOH, paper maps don’t let you zoom in to increase detail. But that functionality did exist in computer GIS systems predating this by a decade… which again raises the question about why this wasn’t a simple 103 rejection, rather than shoehorning in a 101.

              my analysis would go a bit farther than your “it uses a computer, therefore is ineligible” construction.

              No idea how or why you’re coming up with this “construction”. I never said anything of the sort and I never will. I have said — many many times — something close to the opposite and I’ll say it again: The mere recitation of a computer in a patent claim does not render a patent claim ineligible.

              … provided it’s a claim to new hardware, right? You have previously said that a method claim that can be performed by a general purpose computer is ineligible.

              Likewise, the mere recitation of what would otherwise be ineligible subject matter in a claim does not render that claim ineligible.

              Sure – but again, this suggests that an easier way to deal with the claim is to ignore all of the nonfunctional descriptive matter elements like what the GIS data is, and look at just the remaining functional bits: display a map; zoom in on a selected region; display an overlay with points. Those are all in the prior art, so why go to 101 rather than 102 or 103?

              The analysis more complicated than that. But not much more complicated. It’s something an intelligent 10th grader could handle with ease. That’s why a lot of today’s patent attorneys have a hard time with it. LOL Just kidding. The problem a lot of today’s patent attorneys have is that they want software to be eligible because otherwise they’ll have to write applications on new pencil erasers.

              Software is eligible (well, not software per se, before you jump down my throat), provided it’s claimed properly. No, I think the problem with a lot of today’s patent attorneys writing software claims is that they don’t actually understand the software they’re writing about, so they just claim the high level results, rather than the functionality. And claiming “A method, comprising solving problem X” that never actually recites the solution is abstract.

              Here, for example, the background of the patent noted that searches in an MLS real estate database required “intricate knowledge of the local area, its political subdivisions, and informal housing tract designations,” and that prior systems didn’t allow searches with multiple criteria. That’s all likely true… but the claims don’t even begin to get at how it’s solved.

              1. 1.2.2.1.1.1.1

                the problem with a lot of today’s patent attorneys writing software claims is that they don’t actually understand the software they’re writing about

                That’s probably true but most claims that protect “inventive software” are perfectly understandable by people who’ve never programmed a computer in their life.

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