Guest Post: Patent Office Shows New Respect for Software

Guest Post from Richard P. Beem.  Beem’s firm handled the Intelligent Medical Objects case discussed below. – DC

Software patents and applications are making a quiet comeback under Director Andrei Iancu’s leadership of the U.S. Patent and Trademark Office. This is a welcome shift, since thousands of applications have been held captive in the Office in the wake of Supreme Court decisions culminating in Alice v. CLS Bank, 134 S.Ct. 2347 (2014).

In the hands of reductionists, the Alice formula for rejection/invalidation was easy to apply. Every invention can be reduced to an abstract idea. Whatever is left can be explained away as “routine” or “conventional.” In the last four years, many software patent applications suffered repeated rejection and the ignoble death of abandonment for lack of will or lack of funds. Even when granted, many software patents were mowed down in inter partes review (IPR) in the Patent Trial and Appeal Board (PTAB).

The Federal Circuit’s February 2018 decision in Berkheimer, 881 F.3d 1360 (citing Alice and other authority), paved the way for recent progress, holding that when there are genuine issues of material fact concerning alleged routineness or conventionality, evidence of the same must be presented before patent claims properly can be invalidated on such grounds.

Berkheimer was an appeal from an inter partes district court litigation. What hope does Berkheimer hold for software patent applicants in ex parte proceedings in the Patent Office?

My firm and I took an appeal from a final rejection to the PTAB, In re Naeymi-Rad et al., Appeal 2016-005478, where the rejection was affirmed in a lengthy opinion, and thence to the Federal Circuit, where the case was renamed for the assignee, In re Intelligent Medical Objects, Appeal 18-1586 [Federal Circuit Order].

Intelligent Medical Objects (IMO) is the world’s leading provider of medical vocabulary that allows doctors to capture and preserve truth (or clinical intent) at the point of care. In the course of its work, IMO invented a method of creating and maintaining a “longitudinal” (over the course of several visits) electronic medical record (LEMR) with software that runs on a general purpose (albeit high powered) computer.

Several patents were granted to IMO, each directed to a different aspect of the LEMR, before one examiner dug in with a final rejection in the case at bar, in which the claims were directed to a method of implementing an LEMR with a controlled medical vocabulary. The final rejection was based solely on alleged abstractness under 35 U.S.C. 101; earlier rejections based on Sections 102 and 103 were overcome.

The examiner in the IMO case turned the claims into clichés of “providing healthcare” and “generating and processing medical records.” Typical of such cases, the examiner restated the claimed method even more generally as “collecting, storing, and organizing data.” This is a formula for finding claims to be abstract. The examiner and the PTAB found IMO’s novel use of pointers and directed graphs, taken out of context, to be merely routine and conventional, without citing any evidence, and they shifted the burden to IMO to prove the contrary.

We filed appellant IMO’s principal brief in the Federal Circuit at the end of May 2018. Within a few days, the Patent Office filed an unopposed motion to vacate the PTAB decision. Shortly thereafter, the Federal Circuit issued its opinion, vacating the PTAB decision and remanding the application to the Office for further proceedings. In re Intelligent Medical Objects, Appeal 18-1586 (slip op. June 27, 2018).

The IMO decision and a similar decision in In re Allscripts Software, LLC, Appeal 2018-1451 (Fed. Cir. slip op., June 27, 2018) were the subject of a blog post “Berkheimer, the Administrative Procedure Act and PTO Motions to Vacate PTAB § 101 Decisions,” in IP Watchdog (July 16, 2018), praising the Patent Office for acknowledging the Berkheimer decision and doing the right thing in the two Federal Circuit appeals.

Meanwhile, in April 2018, the Patent Office issued new guidance for examination of software patent applications. That guidance makes it clear that software patent claims cannot legally be rejected without grounds supported by evidence. There will be more guidance from the Office, and there will be more opinions from the Federal Circuit.

Notwithstanding the substantial and growing body of legal authority, however, there will be further erroneous rejections of software patent claims. Many of those rejections will be maintained, and a few of those will be taken on appeal. It is only a matter of time before the Federal Circuit issues one or more published opinions holding that Berkheimer applies in ex parte patent prosecution.

Published Federal Circuit opinions are the tip of the iceberg. But, ah, the cost to applicants! And for every successful appellant, there are 10, 20 or more applicants who sadly accede to final rejections and abandon worthy applications. This is a not a good outcome from a patent system that is intended to promote the progress of technology by issuing patents for meritorious inventions.

Some of the greatest challenges facing the world today will be solved with new and improved software. The need for better electronic medical records is one example. Another, literally inside the Patent Office, is the need to manage ever-growing terabytes of data without crashing electronic filing and retrieval systems. Hacking and cybercrimes often take advantage of shortcomings in software; better cybersecurity will depend on better software. Many of these issues are technical problems that will be solved with novel, non-obvious, applied technical solutions.

Such software inventions are deserving of patent protection. Director Iancu is to be applauded for his recent acknowledgements of legal errors in final rejections appealed to the Federal Circuit.

As for patent applicants, owners, and attorneys, the patent system is not and never will be perfect. Skillful drafting and prosecution go a long way toward obtaining allowance of claims directed to deserving inventions. In some cases, appeals even to the Federal Circuit may be necessary, and, as in the cases of Intelligent Medical Objects and Allscripts Software, they may win.

By Richard P. Beem

Bio: Richard Beem, a graduate of Iowa State (B.S. in chemical engineering) and the University of Houston (J.D., cum laude), served as Law Clerk to the late Hon. Edward S. Smith, one of the original 12 judges of the Federal Circuit. Richard is the founder and principal of Beem Patent Law Firm in Chicago.

 

53 thoughts on “Guest Post: Patent Office Shows New Respect for Software

  1. 12

    The stench of desperation is powerful indeed!

    The biggest abomination is the PTAB applying EPG to digital image processing claims, taking the “displaying” from EPG and applying it to technology as in Digitech.

    Would you mind being a little more clear about what exactly you’re talking about here and why it’s (LOL) an “abomination”?

    The PTAB is keen on upholding 101 rejections and will “find” “evidence” and twist case law as it sees fit, illogically and contrary to fact. $$$ to appeal and “substantial evidence” make going to the Fed Cir a big gamble.

    You forgot to add the bit where you are the most accurate blog commenter in history and Google is manipulating its search engines intentionally to make it easier to target software patents.

    1. 12.1

      Digitech (Jul 11, 2014): In general, digital image processing involves electronically capturing an image of a scene with a “source device,” such as a digital camera, altering the image in a desired fashion, and transferring the altered image to an “output device,” such as a color printer.

      Digitech – J. Moore: “if your claims were to a formula for digital image processing, namely take the image on the front end, modify it in a device independent way, output it and you’ll have a better quality, that’s a whole different ballpark, that’s like a manufacturing process. Your claims aren’t directed to that at all. Your claims are directed to only the data that’s going to be used within that process.”

      EPG (Aug 1, 2016): We affirm. Though lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field

      PTAB/Examining Corp: Digital image processing is not eligible because EPG held that the collection, analysis and display of information is not eligible

  2. 11

    I wonder if the take-away here is to withdraw the appeal and file a continuation [or try to request consideration or reconsideration] re Berkheimer in any ex parte application appeals still pending at the PTAB in which the examiner below did not comply with the PTO Berkheimer guidance, in order to AVOID having to take that issue to the Fed. Cir.?

    1. 11.1

      Paul,

      Great point. If a PTAB appeal is still pending, it may be desirable to withdraw the appeal from a timing standpoint, as it can sometimes take years to receive a Board decision. A continuation or Request for Continued Examination (RCE) may make sense, especially if an applicant is able to talk with the Examiner and confirm that he or she is inclined to revisit the rejection in view of the guidance.

      If a Board decision has been received, and that decision relies upon a finding of conventionality without any evidentiary support, then it likely makes sense to request rehearing under 37 CFR § 41.52. Notably, there is a strong case that this is possible even if the argument was not previously raised, as § 41.52 provides that an “Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court”.

    2. 11.2

      I don’t think so.

      Winning an appeal on a substantive basis (i.e. that the 101 was wrong because the claims are directed to patentable subject matter) is always better than on a technical basis (i.e. the examiner did not exactly follow 101 procedure). If you win on a technical basis, then the examiner is likely going to reinstate the 101 using the proper procedure. Winning on Berkheimer seems like a technical win unless you think that such evidence is unlikely to be produced (considering the level that examiners care about the sufficiency of the evidence).

      Bringing it back around to the question, unless you think that Berkheimer is going to give you a substantive win or that the examiner will relent entirely on the 101 rejection on that basis, I wouldn’t file an RCE to take it out of appeal. I think you are likely just delaying the inevitable trip to the PTAB.

      1. 11.2.1

        Agree w/Squirrel.

        Hopefully you have numerous other args to traverse the 101 reject. Don’t give up your place in the PTAB que.

        Would this work: file a con on an accelerated basis for similar, yet patentably-distinct claims?

    3. 11.3

      If you review PTAB decisions, I believe Berkheimer has made little impact. Rather, the PTAB is digging in to the record for “evidence” to support examiners’ rejections under 101. The Berkheimer Memo did little. Is that because the Fed Cir has not held the standard applies in ex parte? I don’t think so. At the PTAB, there’s worse. The biggest abomination is the PTAB applying EPG to digital image processing claims, taking the “displaying” from EPG and applying it to technology as in Digitech. The PTAB is keen on upholding 101 rejections and will “find” “evidence” and twist case law as it sees fit, illogically and contrary to fact. $$$ to appeal and “substantial evidence” make going to the Fed Cir a big gamble.

  3. 10

    Nice overview of evolving 101 and software. Practitioners need to stay on top of this and try to predict the refinements that are bound to come. A high examination bar for substantive patentability (obviousness/anticipation) is the right way to cabin software patents. Avoiding 101 rejections is still a mix of luck and black art, but it’s getting better.

  4. 9

    “Software patents” are a paralyzing plague that must be extirpated, because they are the greatest present threat to the “progress of science and useful arts.”

    1. 9.1

      Indeed. Also a waste of legal talent, in addition to being an attractive nuisance for the worst lawyers.

    2. 9.2

      Isn’t your other Christian name David? Wouldn’t that historical character have been a little more cautious in what he said?

    3. 9.4

      How are software components any different than gears and pulleys? The problem isn’t software, it’s the description of the software.

      Think of an adding machine. When first developed, if described as its combination of gears and pulleys (and whatever else mechanical structures), it would have been patentable. But if described as “a machine that receives two inputs, calculates the sum of the inputs, and outputs the sum,” then you would have a problem.

      That is the problem with software. A “program” that magically achieves results cannot be patented, because the quid pro quo has not been met. And that is how much of the software is described.

      Though, again, 102 and 103 seem plenty powerful tools to deal with such. Especially where the “program” just solves a known “problem” by claiming in generic terms that the “program” performs a generic solution to the problem. Seems a straightforward 103 for claims like that – the basic structure is known, and the problem is known, so it would have been obvious to have the basic structure solve the problem, absent any further claimed details.

      1. 9.4.1

        How are software components any different than gears and pulleys?

        ROTFLMAO

        Try to believe it, folks.

        How is “if X > 2 then Y” affected by freezing rain?

      2. 9.4.2

        When first developed, if described as its combination of gears and pulleys (and whatever else mechanical structures), it would have been patentable.

        Early computing devices were patentable and they were distinguished from prior art devices in objective structural terms.

        That’s a completely different situation from instructions that are written to be understood and acted up on by machines which were built to receive such instructions and apply them to data.

        Software is logic that is carried out by a machine designed to apply logical operations to data. Logic is ineligible for patenting. The fact that some ign 0r amus on the CAFC decided that everything should change if logic is carried out by a machine is just a sad quirk of history that the system is struggling to free itself from.

        1. 9.4.2.1

          That’s the House Canard.

          As far as “objective physical structure,” are you (again) trying to elevate an optional claim format to be not optional?

          The real patent doctrine you are looking for is inherency. See the Grand Hall Experiment.

        2. 9.4.2.2

          …as to “software is logic,” how goes that project of yours to obtain copyright on logic?

  5. 8

    There is an interesting EPO opinion in T 2101/12 VASCO/ Authentication binding document with signature. It was held that the starting point prior art need not be in a technical field. In that case, the relevant human activity was well-known and a person skilled in the field of automation would want to automate that activity using commonly available tools for that purpose. The skilled person started from a prior art method with zero technical features, the problem which consists in the automation of that method being solved entirely with known technical means so that a finding of lack of inventive step resulted.

    On the whole, I suspect that there is a distinction on the facts here, especially when the timeline in which the medical records are compiled is taken into account. It seems likely that what is being done according to the patent is more than what was already known, although far more investigation than my time permits would be needed to arrive at any concluded view. Looking at the IMO website, it seems that the technology that they have developed is of considerable value to the medical profession.

    With reference to Berkheimer, any attorney who cannot tell the difference between legal issues and fact issues and does not understand when evidence of fact is needed should not have been allowed to pass through law school.

      1. 8.1.1

        Programmable computers were discovered yesterday and only recently have we learned how to use for them to carry out logic processing tasks on data.

        Nobody has yet solved the problem of using them to keep track of the rate of decay of g@rbage man gloves in low pressure climates because that data is extremely difficult to work with. But as a country, we should be free to dream.

        1. 8.1.1.1

          Talk about your strawman….

          (How long ago did we figure out that did atoms were merely configured out of the (really old and not patent eligible) things of protons, neutrons and electrons?)

          What’s that you say? Configurations of these things?

      2. 8.1.2

        For the avoidance of doubt, this is a very amusing link which others are urged to look at. So thanks, Anon.

        1. 8.1.2.1

          Welcome Paul – always struck me as an immediate answer to the “just automate” line of “reasoning.”

          1. 8.1.2.1.1

            The devil is in the details of the claims. Too many are claimed basically as “just automate.” That is not okay.

            But certainly, if the claims outline concrete steps or structures to achieve the needed solution, and the specification enables one of skill in the art to replicate the invention “without undue experimentation,” then by all means, patent away!

            1. 8.1.2.1.1.1

              Claims are not required to enable.

              That seems to be a critical failure of the view you espouse.

    1. 8.2

      “Value” is irrelevant to the question of subject matter eligibility.

      Don’t be fooled by charlatans. Patents don’t promote “improved medical databases”. Dirk Beem is selling you a service. Nothing else is happening here.

      1. 8.2.1

        To properly investigate this would take between 1 day and a working week, and I simply do not have that time available. So I have to be cautious and express a provisional view only. This is a complex case and does not have 5-minute answers. It seems a borderline case, but on which side of the borderline it should lie is difficult to say. Others are urged to show similar care and not jump to over-hasty conclusions.

      2. 8.2.2

        Malcolm quips: ““Value” is irrelevant to the question of subject matter eligibility

        But in context of how “value” was used by Paul: “Looking at the IMO website, it seems that the technology that they have developed is of considerable value to the medical profession.” – “value” very much is relevant to the 101 eligibility issue – when that 101 eligibility issue is properly recognized as having but two components:
        1) does the innovation have utility within the Useful Arts, and
        2) can the innovation fit into one or more of the statutory categories.

        When evaluated – under law and not “feelings,” it is quite apparent that “value” speaks to utility.

        But Malcolm only sees “software,” and goes on his oh-so-predictable rant…

    2. 8.3

      “I looked at the Tastee Cookie website and indeed it looks like these folks have made some impressively tasty cookies.”

      Very serious stuff.

    3. 8.4

      Worth noting as well that the legal argument vis a vis “inventive step” is decidedly NOT the same as patent eligibility.

      (and be careful Paul, you are coming close to the “logic” of the Big Box of Protons, Neutrons, and Electrons)

  6. 7

    A bit dramatic perhaps?:

    Even when granted, many software patents were mowed down in inter partes review (IPR) in the Patent Trial and Appeal Board (PTAB).

    Not due to subject matter eligibility, so what was the point in making this statement?

    1. 7.1

      Possibly to show that software innovation is under attack from many different angles.

      You are correct in a sense though, the article could be stronger if it also dealt with the non-101 angle that may come up in IPRs.

  7. 5

    “Better cyber security will defend on better software.”

    Lololololololol lololololololol

    Coulda sworn the post was about patents on software. Always hilarious to see this old pony trotted out. Hackers really are thwarted by public disclosures of encryption , security and privacy-maintaining methods, after all. Very scary!

  8. 4

    Medical records data is extremely difficult to work with, of course. Way more prone to oxidation and mold compared to other types of data. Sometimes you need to draw the graph in a cold room just to get the x axis to lie straight, especially if it’s a medical record relating to a child or an obese person in a month with two R’s.

      1. 4.1.1

        Most medical records data will freeze and crack under those conditions, leading to a crash. Oddly enough, other types of data — specifically, data about chain link fence conductability near firehouse driveways — will actually become more pliable. That’s a hot field right now.

  9. 3

    Wowee zowee! Keeping a record of multiple visits over time using a vocabulary! Someone figured out how to do that with … a computer????

    Mind. Blown.

    That should be worth like a zillion patents.

  10. 1

    A counterpoint:

    And for every successful appellant, there are 10, 20 or more applicants who sadly accede to final rejections and abandon worthy applications. This is a not a good outcome from a patent system that is intended to promote the progress of technology by issuing patents for meritorious inventions.

    Well that’s putting the conclusory cart before the horse, isn’t it?

    Typical of such cases, the examiner restated the claimed method even more generally as “collecting, storing, and organizing data.” This is a formula for finding claims to be abstract.

    Alice Step One: How unfair the examiner is to ask what the invention is directed to under the first step of the Alice procedure. And how ridiculous to conclude the invention is directed to collecting, storing and organizing data, when the second sentence of the specification states “The present invention is directed to a system and method for electronic record-keeping, organizing, and managing.” If an examiner goes around applying a formula of using the words of the specification in an effort to reject the invention, pretty soon there will be rejections all over the place.

    The examiner and the PTAB found IMO’s novel use of pointers and directed graphs, taken out of context, to be merely routine and conventional, without citing any evidence, and they shifted the burden to IMO to prove the contrary.

    Alice Step Two: So the specification must have clearly provided a technical teaching as to how to create pointers and directed graphs? Because if one is relying upon previous skill in the art, it can only be that the use is routine and conventional. The only thing that could be unconventional would be a limitation on the TYPE of data it is applied to (medical records data), which does not render something non-abstract per Electric Power Group. But linking data is linking data, and either it was not done before (in which case the specification must provide an enabling teaching) or it was conventionally done.

    One would assume that references were cited in the 102/103 prior to them being overcome that probably touched on the issue, but even if not, the specification is evidence in the case. Fairly enough, however, the Berkheimer memo recognizes that this situation could merely be a failure of enablement rather than an abstract idea.

    In the course of its work, IMO invented a method of creating and maintaining a “longitudinal” (over the course of several visits) electronic medical record (LEMR) with software that runs on a general purpose (albeit high powered) computer.

    So…is the argument that its unconventional for someone to see a doctor more than once? Or is it that it’s unconventional for a doctor to document something in a record beyond the first recording? Or is it that a technological hurdle exists in translating note taking from the analog realm to the computer realm (a la DDR Holdings?) Or that it is unconventional to reference data longitudinally (whither calendars?)? Or is it that it’s unconventional for a computer to link two sets of data? Even a lay person can say all of those are factually untrue.

    It appears, in reading the PTAB’s response to argument, that Applicants argued that the claims have “specific technological features” that included data linking, graphing and other features, but none of which they invented. I suppose linking to data has a benefit over copying it, but that really only helps from an abstraction analysis if one invents data linking, not if one applies someone else’s data linking to medical records, which is simply using a conventional tool to achieve an abstract act in a new field of use.

    Instead, Applicant prevailed because a rejection in a Final Rejection dated March of 2015 may not have held up to the standard of the Berkheimer Memo (which went beyond the holding of the actual Berkheimer case) released June 2018, and a different director was installed in the three year interim.

    Its situations like these which make me turn askance when attorneys exclaim they want a “high quality examination.” This case can be disposed of on its Specification – a Specification which was written before Alice and is exactly the kind of case Alice was designed to take care of – the Specification evidences that there is no technological advancement here, but instead is conventional tools of the art being applied for their usual benefits in a particular field of use. It’s unsurprising this is a TC 3600 case, as its simply a claim using conventional technological acts with a command it be applied to a preexisting business practice. I hope IMO replaced all the words of “medical” and “patient” with “legal” and “client” and filed a corresponding “inventive” legal practice claim, or they missed out on an easy doubling of clientele.

    Instead of a technological advancement, once *someone else* invented linking, tagging and graphing, the inventor suggests applying it to *a particular type of data* for the exact same benefits that it has conventionally achieved with data that means something else to a human. That’s precisely the kind of fundamental act (data organization) applied to a particular field of use (electronic medical records) that the abstract idea analysis sought to combat.

    The claim will issue not because the rejection was incorrect but because the office commands a not-legally-required particular level of evidence (more than a single reference, not using the Specification except for explicit statements of conventionality) while providing examiners no time to actually gather that evidence. Make no mistake – the same rationale (the specification admits the claim is directed to organizing data, and there is no unconventional technological act to achieve the organization) applied to the same evidence (the specification) in a court would get the claim tossed as either a failure of enablement or an abstract idea.

    Don’t get me wrong – I am in favor of the office tossing abstraction, because its less work for me for the same pay. But let’s not pretend its a “pro quality” act, if one views quality as correctly preventing unpatentable claims and correctly allowing patentable claims. It is, to use a term a few posts back, a “pro customer” act, and to a lesser extent a “pro revenue” act, because those maintenance fees don’t pay themselves. Would it have been correct to toss the rejection based on non-compliance with the Berkheimer memo? Sure. Does that mean that the rejection was not based on evidence, or that the claim is ultimately properly seen as eligible? No. It simply means that the office doesn’t want to pay its not-lawyer examiners to consider Alice rejections, which seems to make prosecutors happy, which is confusing to me, because prosecutors are certainly paying examiners to consider all the rejections that could be made.

    The above is an understandable difference of opinion based on differing incentives. I can totally understand the…pointlessness of having non-lawyers argue a legal determination with lawyers when you can simply pay engineers to argue engineering and still achieve the correct conclusion a publicly-acceptable amount of the time. I do, however, truly dislike the insinuation of this post that the examiner was being unreasonable (“Several patents were granted to IMO, each directed to a different aspect of the LEMR, before one examiner dug in with a final rejection in the case at bar…Notwithstanding the substantial and growing body of legal authority, however, there will be further erroneous rejections of software patent claims.”) when previous cases couldn’t have rejected under Alice because Alice didn’t exist yet, and a rejection from 2015 didn’t meet a random standard from 2018.

    It was a good and appropriate rejection at the time, especially given that it was first formulated less than six months after Alice and yet was upheld against subsequent DDR Holdings and Enfish logic. The complaint *at the time* wasn’t that it lacked evidentiary underpinning (that argument seems to have only appeared *years* after the rejection was made, when the examiner couldn’t have done anything about it if he wanted to) but that it was necessarily rooted in computer technology, so it doesn’t appear to me that the examiner was being unreasonable. It would be just as unfair to criticize a rejection for failing to meet the non-existent Berkheimer memo standard as it would be to highlight a drafter for unwittingly admitting something damaging to their client based on a non-existent Alice step one standard.

    Skillful drafting and prosecution go a long way toward obtaining allowance of claims directed to deserving inventions.

    [0001] This application is a continuation of U.S. patent application Ser. No. 11/858,241, filed on Sep. 20, 2007.
    [0003] The present invention is directed to a system and method for electronic record-keeping, organizing, and managing.

    Yet, our reviewing court has repeatedly held that claims directed to collecting, storing and organizing data are patent ineligible.

    1. 1.2

      ” but that really only helps from an abstraction analysis if one invents data linking, not if one applies someone else’s data linking to medical records, which is simply using a conventional tool to achieve an abstract act in a new field of use.”

      Lumber, rope, cloth and pulleys all existed. Nevertheless, PUTING THEM TOGETHER IN A NEW WAY, say to make a flying machine with a warpable wing, is nevertheless an eligible invention.

      1. 1.2.1

        Les,

        Regulars will immediately grasp that the point you present is one in which the “anti’s” never respond to.

        Here, I would point out (because Random gets the Berkheimer memo wrong in his long diatribe) that TOO MANY of the anti’s want to stop at a shallow individual piece part analysis and stop there. The thing is (as your example abundantly show), the analysis cannot stop there and must go on to the “ordered combination” portion.

        It would behoove Random to recognize that the factual predicate to 101 (which has always been there and is NOT some new “unfunded mandate” as he would like to delude himself) applies to the configuration in claims and their ordered combinations.

        1. 1.2.1.1

          the “ordered combination”

          OMG I see what you mean now. The screen *and* the keyboard are hooked up to the processor, and the processor is connected to a network.

          This is huge. HUGE! I finally understand where the sense of entitlement comes from. It’s entirely deserved!

          Running out to be some cables now. This really changes everything.

      2. 1.2.2

        a flying machine

        The zombies keep coming. It’s fascinating.

        Tune in next time when we will hear inspiring words from Abraham Lincoln and Thomas Edison.

      3. 1.2.3

        Lumber, rope, cloth and pulleys all existed. Nevertheless, PUTING THEM TOGETHER IN A NEW WAY, say to make a flying machine with a warpable wing, is nevertheless an eligible invention.

        Computers and intermediated settling all existed. Nevertheless, PUTING THEM TOGETHER IN A NEW WAY, say to make a computer that does intermediated settlement, is nevertheless an ineligible invention.

        I don’t know if your argument is that a) there are eligible inventions or b) novelty is inherently eligible, but the former is beyond doubt and the latter is beyond doubt that its wrong. Either way your sentence is pretty pointless beyond anyone considering that particular invention.

        But I’m not here to argue whether Alice is right. I’m here to refute three things about the original post:

        1) The original post suggests that because other, pre-Alice inventions were not rejected under Alice, and because the office eventually dropped its Alice rejection, that this Alice rejection was bad. Dropping the rejection isn’t indicative of anything beyond the fact that the office didn’t want to go on arguing about it. The rejection was upheld the only time it was tested. The attorney isn’t happy he finally got a quality examination – in fact he’s very happy his invention isn’t being tested in court – the attorney is happy he got his client a patent. I suspect he’s pretty average for attorneys – they all claim to want a quality examination, but when it comes down to it what they want is the appearance of an examination followed by an easy allowance.

        2) Regardless of whether you think they’re right or not, this claim is awfully similar to other cases which have found the claims invalid and awfully distinct from the non-Berkheimer memo arguments made in favor of its patentability. The Berkheimer memo correctly (correctly as in, “correctly follows rather than creates law”) requires evidence, but incorrectly sets a standard as to what can be evidence and what evidence is sufficient. There is sufficient evidence in this case (the specification) to decide the 101 issue, because the specification evidences that the applicant knows he is using conventional tools of the art to engage in an abstract act without significantly more.

        3) In any event, the inflamatory language against the examiner who wrote the rejection is pretty misplaced. The rejection was good at the time and hasn’t been in the examiner’s hands since 2015, so it is unsurprising that the rejection fails to meet the standards pulled out of the air in 2018. On the contrary, the arguments made against the rejection at the time were pretty poor (which is why it’s unsurprising the PTAB upheld the rejection) and the specification makes the same kind of ex post facto mistake that the attorney complains the examiner makes.

        Here, I would point out (because Random gets the Berkheimer memo wrong in his long diatribe) that TOO MANY of the anti’s want to stop at a shallow individual piece part analysis and stop there. The thing is (as your example abundantly show), the analysis cannot stop there and must go on to the “ordered combination” portion.

        Hardly – it’s considering the claim as a whole that makes it clear that their is no eligible invention here. If you consider only elements alone you might be fooled into thinking the applicant was claiming some sort of technical advancement. Its only when you put it together you realize that what the inventor said was “Take this practice that was done in the analog world and use these other people’s inventions to do it in the digital world.” Whether you like Alice’s logic or not, there’s very little room for argument that Alice’s logic pretty squarely applies to this case.

        The pendulum is swinging back…. better duck.

        A single case by an intermediate court saying that the case cannot be disposed of on summary judgement when there is a meritorious fact issue isn’t “swinging back.” That’s how all summary judgement everywhere is done.

        The supreme court has been pretty constant for about a decade now, delivering unanimous decisions. The federal circuit has only recently (as in, the past three years) started to come on board.

        Where’s this pendulum been that it’s swinging back?

Comments are closed.