Director Iancu: If it was Good Enough for Judge Rich

The following excerpt comes from Dir. Iancu’s recent speech in Chicago where he discussed his proposal for expanding Section 101 patent eligibility. – DC 

Remarks delivered at the Intellectual Property Owners Association 46th Annual Meeting by Director of the U.S. Patent and Trademark Office Andrei Iancu, September 24, 2018 (Chicago, Illinois)

As delivered

Good morning everyone, and thank you, Henry [Hadad] for that generous introduction. And thank you for inviting me. . . .

. . . A significant part of the growth in [trademark] applications has come from China. . . . This has presented increased issues with the unauthorized practice of law from individuals outside the U.S. In light of this and other issues, we are considering a possible notice of proposed rulemaking that would require foreign trademark applicants and registrants to be represented by a U.S. licensed attorney to file trademark documents with the USPTO.

. . . Now as to patents: . . . I’ll focus my remarks on a specific proposal for Section 101—patentable subject matter.

As many of you know, we recently issued to our examiners two new guidance memos on Section 101: the first dealing with the “conventionality” step in the Mayo/Alice framework, and the second on “methods of treatment” claims. Our data shows that these two memos have already improved the 101 analysis during examination.

But significantly more work needs to be done, especially on the “abstract idea” exception.

I know that IPO committees have been hard at work on a legislative fix to Section 101. Indeed, IPO and AIPLA have joined forces recently and proposed new statutory language. Should Congress be interested in moving forward with hearings or legislation, the USPTO would be very happy to help. As we all know, however, any legislative effort takes a long time, and the result is uncertain.

In the meantime, the USPTO cannot wait. We have thousands of examiners who struggle with these issues on a daily basis. Our examiners need additional guidance now. And so do patent applicants, patent owners, and the public. Whether through legislation or otherwise, there is a growing consensus that the issue must be promptly addressed.

In fact, several Federal Circuit judges have recently filed concurrences or dissents explaining the uncertain nature of the law and calling for change.

In order to “work its way out of what so many in the innovation field consider are §101 problems,” Judge Lourie—in an opinion joined by Judge Newman—appealed to a higher authority. “Resolution of patent-eligibility issues requires higher intervention, hopefully with ideas reflective of the best thinking that can be brought to bear on the subject.”

Judge Plager, in another case, noted that “the state of the law is such as to give little confidence that the outcome is necessarily correct.” He explained that, given current §101 jurisprudence, it is “near impossible to know with any certainty whether the invention is or is not patent eligible.” And he concluded that we currently have an “incoherent body of doctrine.”

And Judge Linn explained that the abstract idea test is “indeterminate and often leads to arbitrary results.”

I agree with all these sentiments.

Judge Giles Rich, an icon of patent law with an unparalleled understanding of—and impact on—our system, stated, in 1979, the crux of the problem with respect to §101 jurisprudence. He said at the time that problems can arise due to the “unfortunate … though clear commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of invention in §101 which may be patentable, and to the conditions for patentability demanded by the statute…”

This was almost 40 years ago! How perceptive and prescient Judge Rich was.

Let me put this in my own words: How can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an “inventive concept” and therefore fail 101? Or, how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101? How can something concrete be abstract?

These problems confound the most sophisticated practitioners in our patent system. People simply don’t know how to draw these distinctions. If something is not inventive, then invalidate it under 102 or 103. If something is indefinite, or too broad to be fully enabled or described, then invalidate it under 112.

We have decades of case law from the courts and millions of examinations at the PTO which guide us in our 102, 103, and 112 analyses. People know these standards and how to apply these well-defined statutory requirements.

The genius of the 1952 Patent Act, of which Judge Rich is widely viewed as a principal author, was that it categorized the bases for patentability. Our recent §101 case law mushes them all up again. As Judge Rich said, this “may lead to distorted legal conclusions.” And it has. And it must end.

So I propose that we go back and heed Judge Rich’s direction, and keep rejections in their own distinct lanes—as directed, in fact, by the 1952 Act. Let’s stop commingling the categories of invention on one hand, with the conditions for patentability on the other. Section 101 is about subject matter. It is meant to address categories of matter that are not ever eligible on their own, no matter how inventive or well-claimed they are.

Here is a hint: If the claims can be fixed by slightly different claiming, by narrower claiming, or by more definite claiming, this is likely a “conditions” problem—not a subject matter problem. A pure discovery of nature, like gravity for example, is not eligible no matter how new, how brilliant, and how carefully the claims are written. This is an example of a subject matter issue. The category itself is problematic.

Alright, but what are these problematic categories? I ask because I believe that we must define the categories for these exceptions clearly, lest—in Justice Clarence Thomas’s words—we “swallow all of patent law.” Because—again quoting Justice Thomas—“at some level, ‘all inventions…embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.’” Clearly, though, not all inventions are subject to a judicial exception. So what is the specific subject matter that is problematic and we must exclude? We must be clear, lest we perpetuate the current state. People should know up front. If nothing else, for the sake of a predictable ecosystem, let’s be transparent.

And in particular, the issue needing most attention is, what precisely is the meaning of the “abstract idea” exception? Section 101 itself lists four categories: process, machine, manufacture, and composition of matter. The judicial exceptions should likewise be clearly categorized. As Judge Rich explained, when we deal with §101, “the sole question…is whether the invention falls into a named category, not whether it is patentable…”

So at the USPTO we are contemplating revised guidance to help categorize the exceptions—and indeed to name them—and instruct examiners on how to apply them.

More specifically, the contemplated guidance would do two primary things: First, it would categorize the exceptions based on a synthesis of the case law to date. And second, if a claim does recite a categorized exception, we would instruct examiners to decide if it is “directed to” that exception by determining whether such exception is integrated into a practical application. These two clarifications would help drive more predictability back into the analysis while remaining true to the case law that gave rise to these judicial exceptions in the first place.

So first, what exactly should be captured by the judicial exceptions to §101? In essence, and because we no longer want to mush subject matter with the conditions of patentability, the exceptions should capture only those claims that the Supreme Court has said remain outside the categories of patent protection, despite being novel, nonobvious, and well-disclosed. And what are the categories of inventions that the court told us that we should not patent even where the applicant demonstrates full compliance with Sections 102, 103 and 112? The Supreme Court gave us the answer: the “basic tools of scientific and technological work.”

And what are these “basic tools?” I believe that the Supreme Court has also told us that, at least through their examples. For example, they certainly include pure discoveries of nature, such as gravity, electromagnetism, DNA, etc.—all natural and before human intervention. So, no matter how brilliant the discovery of a certain DNA sequence in nature might have been, the court said we should not issue a patent in the absence of more. The Myriad case is a recent example.

Also, fundamental mathematics like calculus, geometry, or arithmetic per se. That is, no matter how novel and well-described Newton’s calculus may have been, it is still not patentable by itself. It can be thought of as abstract no matter what. Perhaps “inherently” ineligible, some might say. The Benson case is an example.

Some basic “methods of organizing human activity,” such as fundamental economic practices like market hedging and escrow transactions, have also been excluded by the Supreme Court in Bilski and Alice.

And the court has also warned against pure mental processes such as forming a judgment or observation. Again, by itself, something performed solely in the human mind can be thought of as abstract no matter how it is claimed.

The Supreme Court has been interpreting this statute for the past 200 years or so, and throughout that time has given only a limited number of examples of these “basic tools of scientific and technological work”—and arguably they can all generally fit into the categories I just mentioned. So let’s turn now and ask in a bit more detail, what do the various exceptions articulated by the Supreme Court really encompass? There is less difficulty with understanding the categories for laws of nature and natural phenomena.

Folks can arguably identify things like gravity or DNA in a claim. Abstract ideas, on the other hand, have proven more challenging to define. But a thorough review of the relevant case law helps us draw more clear lines. At the USPTO we have undertaken just such a review and have studied every relevant case in detail.

And so, the proposed PTO guidance would synthesize “abstract ideas” as falling into the following three categories:

  • Mathematical concepts like mathematical relationships, formulas, and calculations
  • Certain methods of organizing human interactions, such as fundamental economic practices commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities
  • Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.

Under the first step of the proposed guidance, we would first look to see if the claims are within the four statutory categories: process, machine, manufacture, or composition of matter. This is not new—we always do this. If statutory, we would then check to see if the claims recite matter within one of the judicial exceptions, categorized as I just mentioned. This is the new approach.

If the claims at issue do not recite subject matter falling into one of these categories, then the 101 analysis is essentially concluded and the claim is eligible. This alone would resolve a significant number of cases currently confounding our system. If an examiner does not find matter within the disallowed categories, he or she can move on.

Now, on the other hand, if the claims do recite subject matter in one of the excluded categories, the Supreme Court has instructed that we need to do more analysis. Specifically, the court instructed us that in such cases we need to decide whether the claims are “directed to” those categories.

To that end, we must first understand what the line is that the court wants us to draw to decide whether the claim is “directed to” an excluded category or not. The proposed new guidance would explain that Supreme Court jurisprudence taken together effectively allows claims that include otherwise excluded matter as long as that matter is integrated into a practical application. The line, in other words, delineates mere principles, on one hand, from practical applications of such principles, on the other.

For example, in Le Roy v. Tathem, the court said in 1853 that “a new property discovered in matter, when practically applied in the construction of a useful article of commerce or manufacture, is patentable.” Then 128 years later, in Diamond v. Diehr, the court repeated that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” And recently, in Mayo, the court explained that “applications of such concepts to a new and useful end … remain eligible for patent protection.”

And so, if the claim integrates the exception into a practical application, then the claim is not “directed to” the prohibited matter. In such cases, the claim passes 101 and the eligibility analysis would conclude. Otherwise, we would move to step 2 of Alice, for example as explained in the office’s Berkheimer memo from earlier this year.

It is important to note that the first step of our analysis does not include questions about “conventionality,” which are addressed in Alice Step 2. That is, it does not matter if the “integration” steps are arguably “conventional”; as long as the integration is into a practical application, then the 101 analysis is concluded. This helps to ensure that there is a meaningful dividing line between 101 and 102/103 analysis.  A fully “conventional” yet patent-eligible claim may still be unpatentable as obvious. But it is better to address such a claim with obviousness law that has been developed over 65 years of practice.

The analysis also does not deny claims as ineligible merely because they are broad or functionally-stated or result-oriented. I understand the concern with certain types of broad, functionally defined claims that do not have sufficient support in the specification. But for these cases, USPTO examiners know, and will receive further guidance and training on, how to apply well-defined Section 112 principles.

Put another way, the examination does not conclude merely because we overcome Section 101; we must still examine for patentability under sections 102, 103 and 112. And so for claims that pass 101 because they do not articulate matter in a defined category, or that integrate the matter into a practical application, we can rest assured that other sections of the code should still prevent a patent if the claim is not inventive or is merely on a non-enabled or undescribed or indefinite idea.

In sum, the proposed guidance for Section 101, which addresses step 1 of Alice, would explain that eligibility rejections are to be applied only to claims that recite subject matter within the defined categories of judicial exceptions. And even then, a rejection would only be applied if the claim does not integrate the recited exception into a practical application. This provides significantly more clarity for the great bulk of cases.

Sure, there will be a number of cases that would still be difficult to resolve when we ask whether a claim is within one of the excluded categories, or whether it is a practical application of it. But for the vast majority of cases in the big middle, I suspect that the proposed approach would be significantly simpler.

And we are certainly in need for some simplification.

For many claims right now, we have an option to reject or invalidate, for violations of patentability conditions, under either:

  • A patentability condition such as 102, 103 or 112, or
  • Section 101 subject matter.

Judge Rich was again perceptive, when he noted 40 years ago that “To provide the option of making such a rejection under either 101 or [a condition for patentability] is confusing and therefore bad law.” Just as Judge Rich warned, we have gotten ourselves into a rut when it comes to Section 101 analysis. With the proposed new guidance, the USPTO is trying to navigate our examiners out of that rut given the current statute and judicial precedent.

And I hope other authorities will join in helping us get out of the rut, at least by keeping rejections in their lane and by clearly categorizing the subject matter of any exception. Please note that if we are to issue such revised new guidance, it would take some time to finalize. During that time, I welcome your comments and thoughts on this and any other proposal.

In the end, we all have the same goal in mind. Born of our Constitution and steeped in an inspiring history of world-changing innovation, the American patent system is a crown jewel, a gold standard. Working together, we can ensure increased clarity in the patent system, and thus ensure that the United States will continue to lead the world in innovation and technological development.

Thank you again for the opportunity to be with you here today. I would be happy to answer any questions you might have.

116 thoughts on “Director Iancu: If it was Good Enough for Judge Rich

  1. 21

    If you just read the opinions and read the posts below, they all have the common theme of taking elements out of a claim and then contending that these elements are some abstraction that is made-up in the mind of the judge. And then some wa nk test is make-up and then some wa nk judge proclaims the result of the wa nk test.

    Just. A. F’ing. Joke. No better than medieval thinking.

    1. 21.1

      How many abstractions have these judges fabricated? A lot. And each of them is basically saying, I don’t like these claims so here is some pretense for me to invalidate the claims.

      You have to love the ones that attack information processing and at the same time they are paid to do nothing but process information. And the ones that claim everything is so easy and you the wa nkers have never done a thing in their life outside of typing in their la me thoughts.

      You have to love the ones that use their judgement over trained experts in science and technology because, well, they are the smartest little boy or girl . And they know the pharaoh did all of this thousands of years ago.

      The best thing to do is stop appointing judges to the CAFC that have no science or technology background and make the ones retire that were trained with 19th century philosophy.

      You cannot argue with a person that believes that information has an ethereal form and that they have a mind where the processing occurs in the spirit world (or that believe that all human thought and all thinking is just easy and all that is needed is you write down what you want and give it to a boy to make work.)

      Medieval judges.

  2. 20

    Iancu: It’s astounding…
    Licenses are fleeting…
    Alice, takes its toll.
    But listen closely…

    Hirshfeld: Not for very much longer!

    Iancu: I’ve got to, keep control…

    Iancu: I remember, arguing the MoT test!
    Drinking, those moments when,
    The allowances would hit me…

    Iancu and Hirshfeld: And the customers would be paying!

    IPO Chorus: Let’s do the time-warp again!
    Let’s do the time-warp again!

    Iancu: It’s just a jump to Diehr’s precedent…

    IPO Chorus: And then a step to Rich’s intent!

    Iancu: With examiners hands tied…

    IPO Chorus: You bring the grants up nice!

    IPO Chorus: But it’s the functional claims…
    That really drives SCotUS insane!
    Let’s do the time-warp again!
    Let’s do the time-warp again!

    Iancu: With a bit of a mind flip…

    Hirshfeld: You’re into the applied-integration test.

    Iancu: And nothing, will ever be abstract again…

    Hirshfeld: You’re spaced out during prosecution,

    Iancu: Like you’re applying for registration!

    IPO Chorus: Let’s do the time-warp again!
    Let’s do the time-warp again!

    1. 20.1

      As I recall it was under the overall supervision of Drew Hirshfed that the USPTO concluded that gunpowder was a natural product.

  3. 19

    Not everything Trump touches is tainted. Good on Director Iancu for identifying problems and proposing reasonable solutions. The uncertainty is forced upon us but must be managed as best as possible. The focus on practical application is a good start, although there are many decisions disparaging “by a computer” or other “practical application” language.

    FWIW, it seems that what the courts have lost sight of is the notion that a patent is a communication between artisans. Sometimes the language of communication – in the form of patent claims – can appear abstract or obtuse to a judge or layperson, but to the intended audience a claim might be read as a concrete practical application with limited and comprehensible scope. Judges are cutting off the opportunity for claims to be interpreted as they would be by the intended audience.

    1. 19.1

      The focus on practical application is a good start

      Seems like a terrible start in view of the reams of reasonable decisions explaining that “applicability” is not a determinative issue for subject matter eligibility.

      The money quote in Mayo v. Prometheus is that you absolutely CAN’T protect ineligible subject matter by reciting the subject matter and then saying “apply it” in some context. There has to be more than that. Most of us are comfortable with understanding that the “more than that” is more than a context and more than being more specific about the ineligible subject matter. What you need to do is transform matter in some unexpected or previously unknown fashion, or describe a non-obvious structure in structural terms. Everything else is inevitably going to be hand-waving and gobbledygook around abstraction. Basic logic dictates that. And this is not hard to understand. The ramifications are, admittedly, difficult for certain “players” to accept. Here’s my idea: screw those “players.” They’ll find another grift. Get the vapor blowing bros out of the patent system and bring the physical reality-based patent-worthy innovators back into the system. Better for everybody.

      Also, why isn’t the usual crowd of screeching cheerleaders going batshirt over the “conflation” of utility with subject matter eligibility? Somehow “conflation” is not an issue when it makes patenting easier? Golly gee whiz it’s funny how that works. Thank goodness these screechers aren’t the world’s worst hypocrites …

      Not everything Trump touches is tainted.

      That remains to be seen. But congrats for implicitly acknowledging the truth about Mang0 H@irball’s touch.

      1. 19.1.1

        You do realize that what you are preaching (Machine or Transformation) was rejected 9-0 as a legal requirement by the Supreme Court (and that’s even when they operate a broken scoreboard), eh?

      2. 19.1.3

        Also, why isn’t the usual crowd of screeching cheerleaders going batshirt over the “conflation” of utility with subject matter eligibility?

        Utility is part of 101. Where is this conflation that you speak of?

      3. 19.1.4

        The point in Mayo is very simple.

        Two of the four claimed features were administering a thiopurine drug and analysing the patient’s blood for metabolites. These steps were known.

        The remaining two features, on which alleged patentability were based, were the upper and lower thresholds of the therapeutic window. These features lacked eligibility because they were purely information not in themselves involving the hand of man nor of a transformative character. In themselves they were plainly not eligible under any of the four categories of Section 101.

        The claimed process simply did not qualify for positive eligibility. It was unnecessary to invoke judicial exception, and insofar as that was done the decision was much narrower and more cautious than the profession proposed.

        If you read the decision, you will see that the kind of analysis carried out by the EPO where non-qualifying features should be disregarded was rejected by the Supreme Court. Form this alien viewpoint, the disinclination to follow European precedent was unwise and unhelpful.

        1. 19.1.4.1

          >>These features lacked eligibility because they were purely information not in themselves involving the hand of man nor of a transformative character.

          This is nonsense. The fact is that it was a method and the steps were not “purely information” as the affected the other steps of the method.

          Again, what we see is that judges split up the structure of the claim and then claim that some of the structure is some abstraction (here just information).

          You have to love that too. Just information. The judges are paid to provide opinions that are just information.

          Anyway…more nonsense.

          1. 19.1.4.1.1

            With the utmost respect, the two claimed features were not a step anywhere. They were pure items of information. You could use them positively. Or you could disregard them utterly. Or any arbitrary position in between. It mattered not to the scope of the claim.

            If you read the decision, this was the first substantive point seized on. The critical part of the decision reads:

            “Prometheus’ patents set forth laws of nature—namely, relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective or cause harm. Claim 1, for example, states that if the levels of 6–TG in the blood (of a patient who has taken a dose of a thiopurine drug) exceed about 400 pmol per 8×108 red blood cells, then the administered dose is likely to produce toxic side effects. While it takes a human action (the administration of a thiopurine drug) to trigger a manifestation of this relation in a particular person, the relation itself exists in principle apart from any human action. The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes. And so a patent that simply describes that relation a natural law.”

            This language shows that Justice Breyer cut straight to the chase and correctly identified the key shortcoming in the representative claim. If the claim had gone on to recite steps of selecting the dose for a patient and then administering the drug to the patient the outcome might well have been different. But that was NOT what was claimed, hence the outcome.

            1. 19.1.4.1.1.1

              The relation is a consequence of the ways in which thiopurine compounds are metabolized by the body—entirely natural processes.

              Psst Paul: this line of thinking removes ALL PHARMA from patent eligibility.

            2. 19.1.4.1.1.2

              Paul Cole: the two claimed features were not a step anywhere. They were pure items of information. You could use them positively. Or you could disregard them utterly. Or any arbitrary position in between. It mattered not to the scope of the claim.

              Prometheus admitted during trial that in order to infringe the claim, someone needed to at least look at the data and understand the relationship of the data to the correlation (that step had to be present because otherwise the claim would be anticipated; the data gathering steps were also admitted to be old in the art). Prometheus also admitted that nothing further needed to be done beyond that appreciation (i.e., as you recognized above, nobody needed to be treated after the data was analyzed; the data could simply be thrown in the tr@sh and ignored after the analysis and there would still be infringement of the claim).

              This is a key fact about the case that cannot be ignored when discussing what the case was about. There is a huge Constitutional issue staring the patent system and a bunch of whiny entitled ign0r amuses who otherwise never shut their f@t mouths about the Constitution decided to look the other way in hopes they could grab some more $$$$.

              1. 19.1.4.1.1.2.1

                Or some none too bright (or merely greedy) patent attorneys not drafting claims that as a matter of substance fall within the “process” category of Section 101.

                If you follow up the claim with an adjusted dosage regime and the steps of adjusting the dosage to the outcome of the test, not only is the claim then patent eligible but also the patentee (and possibly the testing organization) are prompted towards a potentially fruitful and lucrative collaboration with one of the producers of the thiopurine drugs. So not including a method of treatment claim was a double loss for the patentees.

        2. 19.1.4.2

          “Features” never lack “eligibility” because it is the claim — as a whole — that is or is not eligible.

          Going the path of “features” yields two things:

          Parse (divide and conquer) which does not treat the claim as a whole.

          The Big Box of Protons, Neutrons and Electrons “philosophy” (ALL physical items can be rewritten as configurations of piece part items — that in and of themselves — are not patent eligible.

          Going down that path logically results in nothing (solid) is patent eligible: the exceptions really do swallow the rules.

  4. 18

    Dear Paul Cole,

    You lost Sequenom and the reasons you lost were explained to you before and after the case. Meanwhile, scientific discovery and research continues to move on even as you stand on your rock weeping and pretending not to understand the fundamental considerations underlying the decision and the decision in Prometheus v. Mayo.

    We argued that the Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field.

    This is gibberish. There is no “playing field”. The law recognizes patentable inventions and non-patentable non- inventions. Every advance is “incremental” but that doesn’t mean that every advance is patent worthy.

    We further argued that the panel opinion should have considered whether the claimed method falls as a matter of substance and not mere outward appearance within 35 USC §101 before considering judicial exceptions. Thus, Sequenom’s method claims were eligible as a matter of substance under the “process” category of 35 USC §101

    Nobody was confused about whether Sequenom’s claims were a “process”, Paul. That wasn’t the issue.

    and were neither “directed to” matter that is naturally occurring

    Fetal DNA is naturally occurring. Fetal DNA in maternal serum is naturally occurring. Detecting DNA in everything where detectable DNA exists was conventional technology at the time the application was filed.

    nor lacking in transformative additional features.

    This was your best argument. But you lost the case because (1) you and the other lawyers for Sequenom weren’t as skilled as presenting your arguments as the other side and (2) you told falsehoods that were easily demonstrated to be falsehood (see upthread, where you repeated the same nonsense to everyone here and I highlighted the nonsense for everyone). In other words, the other side won and you lost for legitimate defensible reasons. [shrugs]. Let’s remind everyone (again) why your argument failed to carry the day. First, here’s your argument:

    [1] Deriving a paternally inherited nucleic acid from the maternal serum or plasma of a pregnant female was a transformation or reduction of that nucleic acid to a different state or thing and was neither a well-understood, routine, conventional activity previously engaged in by researchers in the relevant field nor a mere recitation of a law of nature. [2]Amplifying nucleic acid of the specified provenance was also not a well-understood, routine, conventional activity previously engaged in by researchers in the field of non-invasive prenatal detection.

    These two sentences are duplicative so I won’t address them separately. There are two counterpoints which are very problematic for this argument. Everyone was well aware of the counterpoints because I and others presented them here.

    First, your line of reasoning would allow anyone to re-patent a prior art detection method in any naturally occurring (or prior art) context. In other words, Scientist invents a new method for detecting really small amounts of verboglotten. Then Paul Cole and his army of lawyers begin filing methods of detecting verboglotten in everything. Find a new tree frog in the rainforest? Well, file a patent on detecting verboglotten in the new tree frog (by definition, that’s “unconventional” because that tree frog was never known to exist before! — see how that works, Paul? Of course you do).

    This is a “basic tools” problem. This is exactly what the Supreme Court was concerned about in Mayo v. Prometheus, i.e., if you allow people to re-patent prior art research tools merely by appending ineligible subject matter (e.g., descriptions of correlations or newly discovered “targets” for detection tools) to a recitation of the research tools, then the tools become tied up and their use turns into a liability long after the patents (if any) on the tools is expired. Note that this isn’t just a liability for actors in the marketplace but also a liability for scientists conducting basic research. Note again: liability, not progress. Get it?

    What was sorely absent from Sequenom’s claims was any detailed recitation of the specific technical solution to the problem of detecting fetal DNA in maternal serum. Sequenom wanted to monopolize that discovery. They were blocked from doing that. Everybody benefits. Great decision! Oh but wait! Some mediocre patent lawyers found their jobs got a little harder and maybe they lost a client. Boo hoo hoo!

    For the sake of saving space and not embarassing you further, Paul, I’m leaving out a detailed discussion of the obviousness of Sequenom’s claims in view of the prior art. Because those claims were certainly obvious. Fetal cells were known to be floating around in maternal serum. Nobody in their right mind at that time would ever suggest that, given that indisputable fact, it would be impossible to detect fetal DNA in that same serum. Nobody. Of course it would be possible. The commercial problem was whether you could do it accurately and cheaply without drawing gallons of blood from the mother. The solution to that problem was sadly completely absent from the claims, Paul. As you know. As everyone here knows. We discussed this case into the ground.

    1. 18.1

      There is a sad flaw in the reasoning here. The amplified DNA in Ariosa was a synthetic construct, being derived from individual nucleotides by an essentially enzymatic synthesis. The amplified DNA was present in an abundance of 1000 to 1000000 times that of the original as appears on the face of Judge Reyna’s decision. It is uncommon to find a judicial quantifiably wrong, but Judge Reyna’s decision was wrong by precisely that factor.

      There may have been a 103 case (but I doubt it). However, the case was on 101 not 103, and in my considered and settled opinion it was wrong.

      And the claimed subject matter was a process clearly falling within the eligible category of 101. If so, then the doctrine of separation of powers clearly prevents judicial exception from removing it from the scope of eligibility on which Congress has decided. If I made an error in the two briefs that I lead authored, it was in making the point subtly and believing that the clerks in the Supreme Court would have figured it out, it being possibly impolite for a non-US commentator to point out the contradiction. I now appreciate that it should have been pointed out in gross terms for the technically and especially legally illiterate audience for whom I was writing.

      Incidentally, my comments on Ariosa were not a solo effort. Just look at the portfolio of amicus briefs, many written by commentators more distinguished than myself, and most of an extraordinarily high standard, especially the briefs by the law professors. It is remarkable that the Supreme Court decided not to hear the appeal.

      Incidentally, streptomycin is also a natural product, being a bacterial metabolite. Your arguments would invalidate the patent on streptomycin. Good-bye much of the pharmaceutical industry.

      1. 18.1.1

        PC The amplified DNA in Ariosa was a synthetic construct, being derived from individual nucleotides by an essentially enzymatic synthesis. The amplified DNA was present in an abundance of 1000 to 1000000 times that of the original

        Right. That’s how PCR works. PCR was prior art and it’s ability to detect tiny amounts of DNA wherever that DNA happens to exist (e.g., in maternal serum, where detectable fetal CELLS were known to exist) was well-known when the app was filed.

        There is a sad flaw in the reasoning here.

        No flaw in my reasoning. The flaw is in your failure to reason, Paul. As you know.

        the claimed subject matter was a process clearly falling within the eligible category of 101.

        The claim in Prometheus v. Mayo was also a process claim. Nobody is disputing the nature of the claim, and nobody is disputing that 101 says that “processes” are eligible. Additionally, very very few people out there who have thought for more than five seconds about the issue will dispute that if 101 is to have any meaning at all, it can’t be the case that you can recite some useful prior art context and claim any process within that context, regardless of whether the process is a process of thinking about how much you love your m0 mmy or whether some collected data “correlates” with some “meaning” that you identified.

        Just look at the portfolio of amicus briefs, many written by commentators more distinguished than myself, and most of an extraordinarily high standard, especially the briefs by the law professors.

        The key to winning these cases is to (1) acknowledge the fundamental Constitution-driven importance of the judicial exceptions; (2) avoid making assumptions; (3) focus on the claims and not on the actual technology (which is not what is being litigated); (4) don’t attack we ird0 strawman arguments that your opponent isn’t making; and (5) do not kick up silly dust clouds about what won’t get innovated if you don’t get your way — patents are not as important as the judicial exceptions. Not even close.

        streptomycin is also a natural product, being a bacterial metabolite. Your arguments would invalidate the patent on streptomycin.

        The patent on streptomycin is expired. If that patent covered streptomycin as found in nature, it should never have been granted in the first place. But it’s not “my arguments” that lead to that result (at least, no argument that I’ve made in this thread). Heck, I’m very much on the record as having been opposed to using subject matter eligibility to take down Myriad’s junk claims. That said, eliminating claims to isolated naturally occurring chemicals (not just DNA) from the patent system would hardly be the end of the world for pharma patenting. Pharma is doing just fine without, e.g., isolated naturally occuring DNA patents, as I and many other professionals knew that it would be. The last time I checked people were still very busy looking for correlations between gene sequences and disease, too (how shocking!).

  5. 17

    The jurisprudence of 101 has introduced several differences in degree (“sufficiently applied,” “significantly more,” “markedly different,” and even “fundamental”) that do not have commonly accepted standards, and the jurisprudence has not offered guidance for selecting standards. Director Iancu seems to emphasize the “sufficiently applied” test to avoid step 2b and its associated “significantly more” test, but that change looks to me more rhetorical than substantial, and it does not address the lack of standard.

    Also, the faith that Director Iancu has in the ability for the PTO to make sensible 112 rejection is misplaced. I have had to argue rejections based on unclaimed essential feature (presumably stemming from the enabling requirement), and I found the position of the Examiner systematically poorly explained.

    1. 17.2

      Director Iancu… does not address the lack of standard.

      I agree with this. I also think that Director Iancu is more generous than is merited in his discernment of a pattern that differentiates “recites” from “directed to.” If you look at Sequenom, for instance, the court moved rhetorical mountains to characterize those claims as “directed to” the natural DNA, instead of a method that uses the natural DNA as a mere raw material.

      Mind you, it could be that the Director is merely trying to flatter the courts on the way to getting them to adopt his guidelines as law. If so, I am wholly on board with it. I am not holding my breath, however, that the court will agree to go along with this ruse.

      1. 17.2.1

        the court moved rhetorical mountains to characterize those claims as “directed to” the natural DNA, instead of a method that uses the natural DNA as a mere raw material.

        “Raw material”? LOL

        Like Sequenom was mining fetal DNA from maternal serum?

        Do you know how PCR works, Greg?

        I guess sea gulls are “raw material” for my binoculars in the magical world of patent lawls.

    2. 17.3

      PiKi Director Iancu seems to emphasize the “sufficiently applied” test to avoid step 2b and its associated “significantly more” test, but that change looks to me more rhetorical than substantial, and it does not address the lack of standard.

      That’s exactly what he’s doing. It’s the same old game.

      Shorter Iancu: “The term ‘abstract’ is so vague and it’s impossible to comprehend what ‘significantly more’ is supposed to mean because it might mean that logic patents are ineligible which is the third rail. So let’s just create a new standard and crank out more ineligible junk until the Supreme Court tells us to stop. Thank you, everyone! I accept credit cards, cash, checks, gold, jewelry, whatever you got.”

      The rich entitled class gets more. Everyone else gets the shaft. So s u c k it, scientists and everyone who uses a computer. You have to pay the patentistas. They are The Most Important People Ever and those Texas courthouses don’t air condition themselves.

      1. 17.3.1

        The rich entitled class gets more. Everyone else gets the shaft.

        …Malcolm’s STILL unexplained dichotomy of why he is most fervently anti-patent for the type of innovation MOST accessible by NON-wealthy innovators…

        Still odd.

  6. 16

    Is the Rich that Iancu speaks of the State Street Bank Rich, or the Principles of Patentability Rich who felt that inventive Diaper Services and inventive techniques for teaching Russian were not patentable under 101?

    1. 16.1

      Iancu is referring to the Judge Rich whose name, when spoken in an obsequious manner, immediately confers credibility upon the speaker.

      Occasionally some worshipful background music played on a pipe organ helps to seal the deal.

      Principles of Patentability Rich who felt that inventive Diaper Services and inventive techniques for teaching Russian were not patentable under 101?

      Clearly those weren’t integrated practical applications of the otherwise ineligible subject matter. Please don’t confuse people! Iancu has made this very easy and now you’re trying to ruin everything. Why do you h@ te patents???????????

      LOL

      Seriously, I am already enjoying the smell of burning toast coming out of the PTO. A Trumpist PTO Director is going to re-write reality in the hopes that the Supreme Court will crank up the patent machine to 11 and hand out more power to the extremely wealthy and entitled classes?

      Bring. It. On.

      1. 16.1.1

        Extremely wealthy…

        Who cares if Malcolm’s meme’s are contradictory…

        All the matters to Malcolm is that he repeats them often enough, some smch uck might start believing them.

    2. 16.2

      Hopefully the more mature and experienced Rich of State Street Bank

      Judge Rich’s remarks to the Rochester Patent Law Association were good, but his thoughts in State Street Bank were even better and wiser.

  7. 15

    Impressive speech by Iancu. And yes, PTO has a critical role to play when SCOTUS cuts the moorings. Good luck Director! #MAGA. How much of this is the fault of J. Thomas? and/or the lower courts not following the HOLDING of the case but the concurrence ?

    1. 15.1

      I do not think that only following holdings saves you as the Court has scrivined their way into a charley foxtrot Gordian Knot.

      While there is plenty of blame to pass around, the blame MUST start with the scrivining of the Supremes.

      They are the ones that are supposed to be the Watchdogs of the Constitution, as they themselves write statutory law that expressly belongs to another branch (separation of powers violation), do so without defining multiple key words (Void for Vagueness violation), and do so under the guise of what merely MAY happen (lack of present case and controversy authority — ALL of their “authority” is premised on a subjective, conjectural, someday MAY happen [and the word “may” necessarily includes the meaning “may not”]).

      Congress acted once before in direct response to a Court that had become so anti-patent that Justices themselves stated: “the only valid patent is one that has not yet appeared before us.”

      We continue to repeat history because we have not learned the lessons from history.

      1. 15.1.2

        They are the ones that are supposed to be the Watchdogs of the Constitution, as they themselves write statutory law that expressly belongs to another branch (separation of powers violation), do so without defining multiple key words (Void for Vagueness violation), and do so under the guise of what merely MAY happen

        Staw away from drugs, kids.

  8. 14

    The way to think about 101 is very easy. There is structure to the claims. Any test that adds a new abstract word (abstract, etc.) and then applies some made-up test to see if your claims are the abstract word (directed to, the same as, etc.) is nonsense.

    Very simple.

    1. 14.1

      It is simpler than that.

      101 is meant to be a very low hurdle and welcoming gate.

      ALL that it is meant to be is summed up in two — and only two — requirements:

      1) Utility. Is the innovation useful within the Useful Arts (as contrasted with the Fine Arts).

      2) Statutory Category. Can the innovation be portrayed in at least one of the statutory categories.

      It is not an accident that “at least one of” is the operative phrase, as OFTEN an innovation may take the form of multiple statutory categories (and is one of the reasons why multiple independent claims are permitted.

      I do wonder what percentage of granted patents have their multiple independent claims in different statutory categories. 70%? 80%? Over 90%?

      An innovation even reaches multiple statutory categories because of just what innovation m and and how that meaning is captured with the Ladders of Abstraction.

      The sAme ones here (the same anti-patent ones) heap denigration on “scriviners” and want to “celebrate” broken scoreboards of the Judicial Branch scrivining that is far worse than any scrivining by applicant’s representatives.

    1. 13.1

      The problem with the anti-patent movement is that they had all their successes through the courts. So all the destruction other than the AIA occurred by judicial activism, which means that eBay, Alice, KSR, can all be overturned by the court. It is a lot like abortion where rather than a Constitutional amendment for women’s rights, we had the SCOTUS proclaim it which means that other justices can un-proclaim it or proclaim the opposite.

      1. 13.1.2

        The problem with the anti-patent movement is that they had all their successes through the courts.

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

      2. 13.1.3

        “It is a lot like abortion where rather than a Constitutional amendment for women’s rights”

        The ERA failed because literally just one white cis hetero christian capitalist patriarchess decided she didn’t want it.

        Get reckt.

  9. 12

    This is an outstanding, thoughtful and positive work of analysis and wearng my Professorial hat deserves ***** mark and a merit citation.

    Many of the themes are common to a brief for the Chartered Institute of Patent that I lead authored in the Ariosa Diagnostics case, see link to scotusblog.com.

    We argued that the Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field. We further argued that the panel opinion should have considered whether the claimed method falls as a matter of substance and not mere outward appearance within 35 USC §101 before considering judicial exceptions. Thus, Sequenom’s method claims were eligible as a matter of substance under the “process” category of 35 USC §101 and were neither “directed to” matter that is naturally occurring nor lacking in transformative additional features.

    Deriving a paternally inherited nucleic acid from the maternal serum or plasma of a pregnant female was a transformation or reduction of that nucleic acid to a different state or thing and was neither a well-understood, routine, conventional activity previously engaged in by researchers in the relevant field nor a mere recitation of a law of nature. Amplifying nucleic acid of the specified provenance was also not a well-understood, routine, conventional activity previously engaged in by researchers in the field of non-invasive prenatal detection. The panel opinion confused what was conventional in that field with what was conventional in different scientific fields, for example the cancer detection. Its finding that the product of amplification was a mere natural phenomenon was both a legal and a factual misclassification. The detection step which is the third element of the claimed method also makes a hitherto unacknowledged contribution to process-eligibility, and on the Iancu analysis brings the overall process firmly into the real world divorced from the natural product or phenomenon of nature exception.

    We further argued that the panel opinion erred in discounting the new utility of the ordered combination of claimed elements considered as affirmative evidence of eligibility and, instead, erroneously concluded that the claimed method of detecting paternally inherited cffDNA is not new and useful, citing Evans v Eaton, 20 US 356, 399 (1822), Webster Loom Co. v. Higgins, 105 U.S. at 591 and subsequent cases including KSR, where the Supreme Court said of the Adams invention: “The fact that the elements worked together in an unexpected and fruitful manner supported the conclusion that Adams’s design was not obvious to those skilled in the art.” This line of argument parallels Iancu’s direction not to confuse Sections 101, 102 and 103.

    It is to be hoped that in suitable cases we will see amicus briefs from the USPTO to guide the CAFC and the lower courts into more realistic and positive applications of the Mayo/Alice test to the benefit of US applicants and those from other countries. Director Iancu is completely correct that the USPTO has the resources and collectively the knowledge to arrive at the most correct and legally useful interpretion of Supreme Court opinions on Section 101, and his determination to see that through should be welcomed by our entire profession. As also argued in the brief, some regard should also be paid to parallel developments internationally since the USPTO is a member of and in fact instituted the TRIPS agreement.

    1. 12.1

      Don’t completely agree with you Paul, but at least you are on a rational plane and not in the spirit world and fabricating new words with private definitions that depend on whatever the finder of fact decides.

    2. 12.2

      >>We argued that the Mayo/Alice framework needs reconsideration to place pioneering or breakthrough inventions and incremental inventions on a level playing field.

      This, though, is just more crxpola. We don’t need another test for “pioneering breakthrough” (sniff—good patent) vs. an incremental invention (sniff–bad patent).

      We DO NOT need another test where a judge gets to decide based on their private little thinking whether a patent is a good patent or a bad patent.

      The wrong way. This is no different than Alice where any patent can be invalidated where a judge gets a warm towel and goes into their chambers and decides whether the claims meet the Alice test. And then brings the towel out and exhibits their deed.

      We do not need another one of these tests.

  10. 11

    The analysis also does not deny claims as ineligible merely because they are broad or functionally-stated or result-oriented. I understand the concern with certain types of broad, functionally defined claims that do not have sufficient support in the specification. But for these cases, USPTO examiners know, and will receive further guidance and training on, how to apply well-defined Section 112 principles.

    Of course, the fact is that the office does not know how to apply 112 to overbroad functional claims. That is a huge problem in and of itself. It is true that a lot of the same problems 101 acts upon would be defeated if the office correctly applied 112 to, e.g., computer software.

    But I take issue with the first sentence. The Supreme Court has not categorically ruled out functional novelty UNDER 101. But the Supreme Court precedent sets out a 101/112b dichotomy which solved issues in the past and has not solved issues since then, and does not do so now because 112b has been corrupted.

    The underlying issue is this – The system needs to reject Morse-style claims out of hand. In other words, when someone enters a new field and claims to be the last word on the field, the office is not equipped to properly judge the claim, and allowance creates a chilling effect. 103 does not solve the issue because it is a new field/function. 112a does not solve the issue because it places the burden on the office to counter-invent to create a rejection. 112b no longer solves the problem because “point out and particularly claim” has lost all meaning. Thus, 101 is necessary, and applicable.

    Let’s take a concrete situation. Place the patent office long in the past, at the time when someone first invented the bow. (For purposes of this example, a bow will be the first device to fire a projectile). The actual physical description of the bow – the wood and string, will be a low dependent claim. The actual independent claim will be functionally defined – a machine that fires a projectile. 102/103 will not apply, as no other machine fires a projectile. 112a will not apply because the office is incapable of inventing the gun to prove the overbreadth. 112b will not apply because “a machine that fires a projectile” is precisely the scope that the applicant means to claim. Consequently, the independent claim will issue.

    Yet it’s exceedingly clear from all the 101 cases that the outcome the court does not want is that “a machine that fires a projectile” based on the disclosure of a bow can issue. The reason is not because the gun will be later invented, but because the applicant has failed to disprove that the gun could exist. That is the logic of Morse – Morse requires the patent applicant to disprove that the functional scope contains embodiments dissimilar from the bow. 112a requires the office to point to a dissimilar embodiment as evidentiary support to show that the functional scope lacks descriptive support over its entire range.

    The purpose of the judicial exceptions is to put the burden on the patentee. That is what they do. A scope of “a machine that fires a projectile” can only be issued on the disclosure of “a bow” when the patent applicant proves that the only manner of firing a projectile is in manners similar to a bow (e.g. string tension). As a practical matter that can never be done, so as a practical matter the functional scope can never issue. To place the burden upon the office is to allow the patentee to claim the abstract field (ranged weaponry) based upon a disclosure that does not show he invented everything in the field simply because the office lacks the ability to discover controlled chemical explosion (as opposed to string tension) on its own. If the claim issues it impinges upon future innovation. Nobody will invent the gun when the bow patentee controls the ability of the researcher to recoup his money.

    I’ve used this example before and nobody has ever come up with any answer to it, let alone an even mildly satisfactory one. Assume that the function of the judicial exceptions are, just as the court has repeatedly said, an effort to prevent someone from claiming the entire field. Then ask how that practically will be prevented without 101. The only manner would be the engage in the same kind of “speculative” reasoning that applies in 101 analysis – having the patent examiner have an unimpeachable conclusion that what is put forward does not meet one of the standards of the statutory scheme. If you invent the bow, someone would either have to speculate that a gun may exist and reject you under 112a, which is 101 logic, or you would have to change the law under 112b to simply ignore the functional language in the specification and force a person to claim only structure, and if you did that it’s still subject to the examiner’s whim of when enough structure is “good enough” to be sufficiently limited. How is “the claim is directed to the physics of propulsion” somehow less threatening to a hopeful patentee than “the claim fails to prove that the applicant possesses the full breadth of the scope because I am not satisfied you have shown that there is no other manner of achieving the result beyond the manners you have disclosed”?

    1. 11.1

      Your version of 112, Random, is NOT in accord with the law as written by Congress.

      We’ve been over this many times, so your posting of “112b no longer solves the problem because “point out and particularly claim” has lost all meaning. Thus, 101 is necessary, and applicable.” only shows that you understand neither.

      IF you did understand either, you would immediately recognize that you cannot interchange them just to arrive at an Ends that you feel that you want.

    2. 11.2

      Stick to your case cite. Morse basically claimed “means for electromagnetic communication” and enabled the hardwire, dry contact, and symbols (dash and dot) of the telegraph. And then read the claim on AM radio. It could have been resolved under “means” claiming under 112. Which was another concept codified under the ’52 Act. Also under the reverse doctrine of equivalents?

      1. 11.2.1

        The logic of the case was broader than the situation you suggest, and the AM radio logic is the point. The office shouldn’t have to invent AM radio in order to reject telegraph.

    3. 11.3

      The so-called “chilling effect” is actually the opposite:

      Necessity is the mother of invention.

      It is WHEN you are blocked that you then apply the creativity to get around the blocks.

      All of this namby-pamby “but that pre-empts” [psst: ALL claims pre-empt as that is what claims do] is nothing more than a judicial activist finger in the wax nose against patents that some may feel are ‘not worthy.’

      Further, even the notion of “must protect building blocks” is misguided. If one applies even a shred of critical thinking as to why we even have a patent system, one realizes that patents themselves are meant to be the building blocks of tomorrow.

      We want innovation to be built on other innovation.

      That’s how innovation works.

      This “fear” of “stifling building blocks” being realized in NOT allowing patents then is ultimately self-defeating, as by dissuading patents, one dissuades innovation.

      Sure, innovation may happen without a patent system. But we HAVE a patent system in order to have innovation happen faster. In any sane society (and for any of the anti-patentists out there, let me renew an unanswered call for examples of a modern society without a patent system), one WANTS patents. Hiding behind the denigrations of “maximalist” are but two philosophies: “no patents at all” (patents are e v i l) or “no patents for you” (and there is more than one path to this End: there is the path of “Flash of Genius” or patents only for the “really deserving” sniff tested items; and there is the path of “patents for others are not good, but I should have patents for me (for a variety of reasons)).

      Critical thinking.

      When that is employed and the mindless ad hominem is dispelled, when the means to the Ends are thoughtfully reflected upon, the differences between strong patents and what the Court has scrivined the system into is remarkably clear.

      1. 11.3.1

        It is WHEN you are blocked that you then apply the creativity to get around the blocks.

        That’s the point of 101, you can’t get around the block. When you invent the bow and the claim is properly sized to the bow, you can invent the gun. When you invent the bow and then use broad functional language to encompass all ranged weaponry, you can’t invent the gun.

        1. 11.3.1.1

          RG That’s the point of 101, you can’t get around the block.

          I will grant that this arguably one of the points of 101. But it definitely isn’t the only point and the far more insidious problem (relative to the issuance of a few claims with conceptually enormous scope) is the granting of zillions of patents premised on the idea that the recitation of ineligible subject matter (e.g., non-structural content descriptors, or a correlation, or a natural phenomenon) can somehow convert a prior art tech context into a patentable “innovation.”

          That problem is not a 103 problem. It’s a 101 problem precisely because it’s the recitation of the ineligible subject matter that provides the distinction over the prior art.

        2. 11.3.1.2

          Who says what is it is not possible in the future?

          Your “point” about not getting around is merely a projected, conjectural and ungrounded supposition.

          And THAT is part of the “broken scoreboard.”

        3. 11.3.1.3

          Your problem Random (or at least one of your problems) is that you think that all Ladders of Abstraction have at most two rungs.

          Your view of 112 is simply too crabbed for reality.

    4. 11.4

      I am with you Random, section 112 requires “particularly claiming [the invention]” and to me, that language was meant to restrict how far an applicant can generalize the embodiments of the invention in the claims. If the jurisprudence evolves such that section 101 is not used to disqualify claims that are too general, section 112 could be used instead: we just need good cases to show to the courts how it can be done, and the PTO will follow whatever the courts develop.

      1. 11.4.1

        PiKa,

        Ever hear of the Ladders of Abstraction?

        (also, 101 is NOT a simple “gimmie” interchange-with-whatever-law-in-order-to-get-to-a-desired-Ends type of thing. THAT is where the adage of “nose of wax” comes in (and hint: that is not a good thing).

      2. 11.4.2

        we just need good cases to show to the courts how it can be done, and the PTO will follow whatever the courts develop.

        But it actually has been done, that’s what the law was prior to a post-52 case that said that the 52 act changed the law despite the language being virtually identical to previous forms.

    5. 11.5

      Two brief replies:

      (1) Squeezing §101 to do work that you acknowledge should be done by §112 is like squeezing a balloon because you do not like how it is puffed out at one end. You are just going to introduce a new set of distortions elsewhere in the law with this approach.

      (2) I can only take your word for it that the computer art units do not know how to use §112 to deal with the sort of problematic claims that you describe. I can assure you, however, that it is not the case that “the office does not know how to apply 112 to overbroad functional claims.” The 1600s art units routinely make §112 rejections in these circumstances. Talk, for instance, to David Steadman in 1656, and I am sure that he will be able to furnish you with a dozen office actions that reject claims of the sort you describe.

      1. 11.5.1

        (1) Squeezing §101 to do work that you acknowledge should be done by §112 is like squeezing a balloon because you do not like how it is puffed out at one end. You are just going to introduce a new set of distortions elsewhere in the law with this approach.

        Well just so we’re clear, the logical leap that everyone hates about 101 still has to exist, so I don’t know why anyone is upset whether you attach it to 101 or 112. The point is that the burden has to be on the applicant to show that they actually invented the entire field, which they cannot do, which means the scope is invalid. Whether you want to call that a categorical failure of invention under 101 or just a series of (always occurring) individual failures under scope of enablement/description is just handwaving. The complaint – “you’re rejecting me because you don’t like the scope and have absolute freedom to say when I’m ‘good enough’ to be valid or not and I have no mechanism to fight back” is going to be a problem either way.

        (2) I can only take your word for it that the computer art units do not know how to use §112 to deal with the sort of problematic claims that you describe. I can assure you, however, that it is not the case that “the office does not know how to apply 112 to overbroad functional claims.”

        Perhaps this is true. However, you need only look at the number of computer software cases all dealing with the same invalid subject matter (take in information and make a decision on X, without particular limitation as to how the decision is made) that are recently coming out (i.e. not patents from pre-Alice days) to know that the software arts don’t do it.

        1. 11.5.1.1

          you need only look at the number of computer software cases all dealing with the same invalid subject matter (take in information and make a decision on X, without particular limitation as to how the decision is made) that are recently coming out (i.e. not patents from pre-Alice days) to know that the software arts don’t do it.

          Right. These are worthless pieces of paper. They are a blight on the system and they’ve been corroding the system and the credibility of the system for decades. But it’s exactly these types of junk claims that the maximalists want more badly than anything in the whole wide world.

        2. 11.5.1.2

          RG Whether you want to call that a categorical failure of invention under 101 or just a series of (always occurring) individual failures under scope of enablement/description is just handwaving.

          This is a valid point. The caveat, of course, is that the CAFC has spent years coming up with ways to dull the fangs of 112 particularly in the context of “new” logic implemented by programmable computers. They are still struggling with how to convincingly dull the fangs in the 101 context (and they will always be struggling because …. logic is ineligible subject matter).

          That’s why 112 is “better” than 101 in the minds of people who support logic patents. If 112 becomes worse than 101, these same people will be turning around and crying that “101 is the proper way to deal with logic on a computer claims, not 112!” That’s how they roll.

          Take it to the bank.

        3. 11.5.1.3

          You really need to try to understand the concept of the Ladders of Abstraction (and that more than two rungs make up such Ladders)

          It makes me wonder if you have ever allowed any claim whatsoever (as even any picture claim can fall to your “but not all scope is described” ‘mentality’).

        4. 11.5.1.4

          Well just so we’re clear, the logical leap that everyone hates about 101 still has to exist

          That is decidedly UNclear.

          burden has to be on the applicant to show that they actually invented the entire field

          You want too much. Another post is caught in the “do not have a dialogue” count filter, but the essence is that even for painstakingly picture claims, there is always “more” (the analogue to your “entire field”).

          There are more than two rungs to the Ladders of Abstraction — what you want is an unobtainable granularity — while pretending that there ARE only two rungs.

          The problem (for you) is that scope means more than an exacting “mirror” of any claim. I can only imagine how apoplectic you get if you see the word “comprising” in a claim, or (gasp) you are ever faced with a doctrine of equivalents issue.

          And as to your “penchant” with software, you really should venture out to the Slashdot/Techdirt arenas and pick up some the Math(S) philosophy about just how equivalent all of these “disparate” things are. Look up writings by PoIR .

        5. 11.5.1.5

          I don’t know why anyone is upset whether you attach it to 101 or 112.

          Two reasons:

          (1) When a claim that is legitimately not supported by adequate description fails for lack of written description under §112, that is intuitively fair. I am sure that the applicant does not like it, but the rest of us can look at the transaction and intuit the justice of it.

          When, by contrast, the claim fails because of nothing in the statute, but rather because of some unintelligible, extra-statutory distinction between claims that “recite” an abstract idea, and claims that are “directed to” an abstract idea, the intuitive fairness of the transaction is rather less than totally clear.

          It is important to a rule-of-law system that the outcomes be fairly connected to the inputs. It is also important that the logic of justice running through that connection be intuitively clear. Tanking these claims under §112 honors that principle of justice. Tanking them under §101 obscures that principle. The end result is not, in other words, the only thing that matters. It also matters how one gets there.

          (2) I expect that 9 out of 10 of these claims that fail the post-Bilski §101 test we can agree deserve to fail. The one tenth about which we disagree, however, strike me as really important. Sequenom made a really brilliant discovery. Their claim did not deserve to fail §112, and in a sane world it did not deserve to fail §101. When §101 turns, however, around a totally incoherent distinction between claims that “recite” a natural product and claims that are “directed to” a natural product, one is setting oneself up for arbitrary acts of injustice masquerading as “law.”

          1. 11.5.1.5.1

            The end result is not, in other words, the only thing that matters. It also matters how one gets there.

            I have heard that stated on this very topic before.

          2. 11.5.1.5.2

            (1) When a claim that is legitimately not supported by adequate description fails for lack of written description under §112, that is intuitively fair. I am sure that the applicant does not like it, but the rest of us can look at the transaction and intuit the justice of it.

            But isn’t it also just as fair to say that Congress was never empowered to allow for scopes which would fail to promote the progress of the arts, and we have identified some such situations, and here is one? See to put it in the context of 112 suggests that congress could “fix” the issue (from the standpoint of “let’s patent everything” people) when in fact they cannot. That is the “outcome fairly connected to input” that actually applies.

            Sequenom made a really brilliant discovery. Their claim did not deserve to fail §112, and in a sane world it did not deserve to fail §101.

            Indeed we do disagree. Because discovering a previously unknown fact about the human body is not patent-logically distinct from discovering a previously unknown fact about the earth, and I reject the outcome that Congress was granted the power to tie up, e.g., the oil under a persons land just because some other person discovered that oil, paired it with a conventional drilling operation, and petitioned the federal government for a claim. Similarly, I reject the notion that one could engage in what we call journalism, and have the disclosure of previously-unknown-to-the-public fact surpass all the statutory hurdles congress put in place. The same people that prevented congress from being able to restrict the press did not give them the power to fashion any system they want that would control dissemination of journalistic fact. I think there is simply a qualitative difference in how the pro-101 and anti-101 people view the constitution’s grant of power to congress. Virtually all new information is useful in some manner, and I don’t think the intent of the constitution was to allow congress to control the flow of “new” information. To me, the fact that fetal dna exists in the mother (or whatever the teaching was) is simply not the kind of “discovery” that was meant by the constitution’s patent clause.

            It’s not that I don’t think Sequenom’s disclosure is useful, or that it shouldn’t be encouraged. But I will say a similar thing here that I say in interviews – I never tell people they can’t do something, I just tell people they can’t have a patent for it. Similarly, I don’t think Congress is foreclosed from encouraging the research or the disclosure, I simply think that they are foreclosed from doing so by a grant of exclusive use.

            1. 11.5.1.5.2.1

              RG I never tell people they can’t do something, I just tell people they can’t have a patent for it.

              “But … but … but… nobody will ever bother to discover anything if the government doesn’t grant a monopoly on the discovery first!”

              Question: But scientists have been discovering things for centuries without a promise of monopolies or riches.

              “But that was before I and my fellow screeching maximalists voted to shrink the awful government and end support for scientific research! That’s why we need the government to hand out patents.”

              Question: What the heck did your parents do to you to make you this way?

            2. 11.5.1.5.2.2

              But isn’t it also just as fair to say that Congress was never empowered to allow for scopes which would fail to promote the progress of the arts, and we have identified some such situations, and here is one?

              You omitted the word that the Court actually used: “MAY.”

              (Strike one: inserting a future, purely conjectural and subjective “may” as a basis for their action — and “may” necessarily includes the meaning of “may not” — through which future projection violates the Branch’s limited power to present cases and controversies)

              Also, the Court is NOT permitted to rewrite the law actually written by Congress (vis a vis 35 USC 101) to insert their policy choice.

              (Strike two: violation of separation of powers doctrine)

              Also, the manner in which the Court has acted, with their re-writing that rests on undefined terms [and as elsewhere in this thread, terms of relativeness with no indication of how to measure or the limits of any measurement], is fundamentally flawed and exhibits even worse “scrivining” that the Court wants to impugn innovators with.

              (Strike three: Void for Vagueness)

              How any attorney or advocate at law (or teachers of same) can be “OK” with this (just because a desired Ends is reached) is beyond belief and speaks to a breach of ethical duty.

              The larger issue here is that the scoreboard is broken.

              Quibbling about the score shown on the broken scoreboard will never fix the broken scoreboard.

            3. 11.5.1.5.2.3

              Further – the options available to the Court is NOT a piece-part patent by patent review of how the law of 35 USC 101 has been applied. The law itself is either firm or infirm.

              The Court has the option of ruling that the law is Unconstitutional (and then that ruling applies TO ALL patents) or ruling that the law is Constitutional (and then that ruling applies TO ALL patents).

              Instead — and this should be obvious [pun intended] — we have the Court weighing in on individual patent grants and applying their policy-driven view of what is (and is not) a “good patent.”

              In other words, EVEN IF one accepts the premise of your reasoning, the actual result of applying that reasoning is NOT what we see today. Instead, the result (based on that premise) would necessarily be making Congress rewrite 35 USC 101 so that your “may not grant items of certain scope” is reflected in the law itself.

              This flows from the fact that to avoid “Void for Vagueness,” (in addition to not using undefined terms), a law must be able to be prospectively applied. 35 USC 101 — on its face, and as “interpreted” does not meet that requirement (per the Court AND per your view here). Having NOT met that requirement, there is NO option to continue using the law (as written) and DEPEND on a later court decision to decide whether the (other Void infirmities) of “enough” has been met.

              Basic legal theory here is simply not being met by the Supreme Court.

              How this does not have EVERY attorney (and professor of law) up in arms is amazing.

              1. 11.5.1.5.2.3.1

                For all your bluster and handwaving, you never actually engage on the issue: Can Congress do the acts I’ve suggested?

                Let’s say congress really wants to find all of the possible oil out there. Can congress fashion a system that allows someone disclose that they found oil in a particular place, pair it with the act of drilling, and call that a patent claim? The Supreme’s have already ruled that “limited times” can extend to life + 70 or 150 years, so could congress essentially co-opt the natural resources of states for 150 years by granting their minerals and resources to particular people for a steal of a price? If not, what section of the scheme has been violated? It is certainly useful, enabled, described, particular, novel and non-obvious.

                The only conclusions that one can have is either 1) of course it can be done, and the fact that people have not been getting rights to oil for 20 years for a few thousand dollars is just poor thinking by an entire industry of people who are clearly money adverse (hah), or 2) that subject matter, despite otherwise encompassing language in the statute, is not patentable.

                Ditto journalism – Can Trump disclose to, let’s say Ivanka, everything he knows and did with respect to Russia, and then have her apply for a patent on disseminating information about Trumps Russia actions using conventional information distribution means. There’s no question but that it has utility (in fact, it may have the most utility in the entire field right now), is enabled and described (“ladders of abstraction”!) and is unknown to the public. At the end of the day he’s either still going to be president or he’s going to be making a fortune off of infringements.

                1. Can congress fashion a system that allows someone disclose that they found oil in a particular place, pair it with the act of drilling, and call that a patent claim?

                  Yes. Emphatically, yes. The standard for evaluating Congress’ power to authorize a patent grant is “rational basis.” Golan v. Holder, 132 S. Ct. 873, 889 (2012). In other words, the test is “could Congress rationally believe that it would advance the quantity of useful information in circulation if patents were grantable for disclosure of oil locations?” Of course the answer to that question is “yes.”

                  What more, even if one could not sustain this grant under the IP clause, one would still have to ask “would the aggregate effect of granting of patents on drilling locations affect Congress’ regulation of interstate commerce of petroleum?”. Once again, of course the answer that question is “yes.”

                  It simply is not intellectually sustainable to content that such patent grants extend beyond Congress’ constitutional authority.

                  [T]he fact that people have not been getting rights to oil for 20 years for a few thousand dollars is just poor thinking by an entire industry of people who are clearly money adverse… .

                  Not at all. I would submit that the reason why we have not seen claims to this effect is that the entities best able to make these sorts of discoveries (oil companies) do not want patent rights. Patent rights are merely negative rights, and come with a public disclosure requirement. In other words, they both (1) oblige the patentee to tell the world “there is oil here” and (2) do not give the patentee any right to exploit that oil.

                  From an oil company’s perspective, the hypothetical patent you describe is mostly downside (alert the entity whose mineral rights you wish to acquire of the extent of the value) with little upside (no actual acquisition of the mineral rights in the disclosed location). In other words, the reason that one does not see such patents is not clearly because such patents are impossible, but rather because there is so little value proposition in acquiring such a patent.

                2. “… not intellectually sustainable to content…”

                  Er, “not intellectually sustainable to contend…”

                3. Can congress fashion a system that allows someone disclose that they found oil in a particular place, pair it with the act of drilling, and call that a patent claim?

                  Yes. Emphatically, yes. The standard for evaluating Congress’ power to authorize a patent grant is “rational basis.” Golan v. Holder, 132 S. Ct. 873, 889 (2012). In other words, the test is “could Congress rationally believe that it would advance the quantity of useful information in circulation if patents were grantable for disclosure of oil locations?” Of course the answer to that question is “yes.”

                  Two counterpoints here. First, Congress’ power is limited by the rest of the Constitution. Congress could (arguably?) “rationally” believe that patents on talking about oil could promote “advancing the quantity of useful information in circulation” but the First Amendment might be offended.

                  Second, Congress is empowered to “promote progress in the useful arts”. While “oil drilling” may be one of those arts, handing out utility patents which effectively protect and disclose only new drilling locations does not promote progress in oil drilling technology. It promotes something else (litigation over locations).

                4. Thanks Greg, but Random exhibits such a lack of understanding of patent law (even — or especially — if his job is a patent examiner) to place most of his musings directly in the gar bajhe pile.

                5. Yes. Emphatically, yes. The standard for evaluating Congress’ power to authorize a patent grant is “rational basis.” Golan v. Holder, 132 S. Ct. 873, 889 (2012).

                  That’s awfully bold to take a copyright case and claim it sets a patent standard when there’s a whole slew of patent cases which explicitly point out that it is not entirely rational basis.

                  I’m just going to block quote Graham (you know, a patent case,) here and highlight some text:

                  At the outset it must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress “To promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries.” Art. I, § 8, cl. 8.[1] The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the “useful arts.” It was written against the backdrop of the practices—eventually curtailed by the Statute of Monopolies—of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp. 30-35 (London, 1946). The Congress in the 6*6 exercise of the patent power may not overreach the restraints imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available. Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must “promote the Progress of . . . useful Arts.” This is the standard expressed in the Constitution and it may not be ignored. And it is in this light that patent validity “requires reference to a standard written into the Constitution.” A. & P. Tea Co. v. Supermarket Corp., supra, at 154 (concurring opinion).

                  Within the limits of the constitutional grant, the Congress may, of course, implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim. This is but a corollary to the grant to Congress of any Article I power.

                  Graham explicitly conflicts with the holding of Golan, which allowed for recapture of things within the public domain. The holding explicitly states that Congress could not wholesale repeal 112a (“nor may it enlarge the patent monopoly without regard to the innovation gained thereby”) or 102 (“whose effects are to remove existent knowledge from the public domain”) or the utility requirement (“things which add to the sum of useful knowledge are inherent requisites”). Moreover, the “backdrop curtailed by the statute of monopolies” is the exact hypothesis I put forward – the mineral wealth owned by the public or a private person being co-opted by the “crown” and placed into the hands of favored businesses.

                  In other words, the test is “could Congress rationally believe that it would advance the quantity of useful information in circulation if patents were grantable for disclosure of oil locations?” Of course the answer to that question is “yes.”

                  But of course the answer is YES to every question you would answer. Could Congress rationally believe it would advance the quantity of useful information in circulation if patents were grantable for things dedicated to the public? The answer for that has to be yes, since that is the very logic of Golan. Could Congress rationally believe it would advance the arts if overbroad patents were granted? Of course the answer is yes, because if you give an overbroad scope its more valuable, and therefore encourages more research. The rational basis test is always met.

                  This is the fundamental difference I’m talking about. You think Congress can do whatever it wants so long as it says “We’re trying to advance the arts” and had some rational basis for doing so, that’s simply not the case. But the question isn’t whether I believe that or you believe that, it’s that the supremes believe that. That’s why you’re not going to win turning 101 into a 112 problem, it’s not something that congress can fix. Congress has as much power to grant a patent over the mineral resources of land as it does to grant a patent over non-useful subject matter.

                  What more, even if one could not sustain this grant under the IP clause, one would still have to ask “would the aggregate effect of granting of patents on drilling locations affect Congress’ regulation of interstate commerce of petroleum?”. Once again, of course the answer that question is “yes.”

                  Sigh, I can see this being a problem. The land belongs to the states and to their people. Congress can’t assign the rights to the land to someone else. It violates both federalism and the takings clause. Congress can regulate and say nobody can drill, but it can’t give the benefit of the land to someone else without compensating the owner. In other words, they could buy the oil and then decide they’re going to sign away the drilling rights to a third person, but they can’t create a patent and give drilling rights in my oil to some third person. That’s a taking – it’s impinging upon my particular use of my property rather than regulating everyone similarly situated to me evenly.

                  It simply is not intellectually sustainable to content that such patent grants extend beyond Congress’ constitutional authority.

                  Of course it’s sustainable, it’s only not sustainable if you ignore half of the words and the background of the clause. If Congress has the power to grant monopolies to any party they wish over any subject they wish, you wouldn’t need a commerce clause, as they would already be able to regulate every industry whether intra- or inter- state. For example, criminalizing possession of a gun near a school is outside of the commerce clause power, but one could certainly write a method claim that fits the situation, assign it to an entity, and have that entity start suing and seeking criminal prosecutions against any infringer, and look, you’ve regulated gun possession. The grant is a qualified grant. You can’t treat it as if it has no qualifier. The qualifier exists for a purpose. You can’t interpret the clause in a manner to include the very situation it was designed to exclude.

                  You should pass your ideas along to the democratic party. They could have avoided the whole Obamacare question by simply granting Obama on a patent on receiving healthcare without owning insurance on an exchange, since they clearly had a rational basis to do so.

                  In other words, they both (1) oblige the patentee to tell the world “there is oil here” and (2) do not give the patentee any right to exploit that oil.

                  Right, but when it comes time to bid on rights to drill in that oil, I suspect being the only one who won’t have an injunction brought against them would enhance your ability to muscle your competition out of the market.

                  (alert the entity whose mineral rights you wish to acquire of the extent of the value) with little upside (no actual acquisition of the mineral rights in the disclosed location)

                  The number of entities who are unaware of the value of their land but would be made aware of the value by a patent publishing…what? Let’s say 42 months after discovery (file with a non-pub request since you’re not going to file in another country, it’s landlocked, then take a three-year request to stay examination, then assume an instant first action allowance (assuming the examiner picks up your case the first day it comes off of the stay and sends it out instantly) you can wait six months to pay the fee on) – Is exactly zero. Nobody reads the patent publications anyway, they don’t provide any actual notice, and if they did the disclosure would come well after the oil companies made their move.

                  Seriously though – think this through. If I walk out in my back yard and find gold, the very first thing I better do is run to my patent attorney, lest someone else also find it and try and prevent me from exploiting my own land. In a first to file system EVERY land owner should be IMMEDIATELY filing a claim on their own land to keep their rights whole, lest someone else swoop in, also discover the resource, and cheat you out of your own land value. While some people may not be aware of their land value, for other people we know that people know their land contains natural resources, yet we have no patents on those natural resources. No patents on oil. No patents on minerals. No patents on archeological pursuits. I suppose its your argument that no landowner was the first person to discover natural resources on their own land in the entire history of the US? Or that they did, but were confident they could prove first invention prior to the AIA and now post-AIA they what? Just don’t feel like protecting themselves?

                  Do these people not realize that the value of their land is seriously curtailed if someone else gets drilling rights for 20 years? Why are all these landowners walking an unnecessary tightrope? For that matter, why aren’t people just randomly filing – If I assert a claim to drilling for oil on my land, and my land is actually barren, all I have is an unenabled drilling claim (and one which makes my land look quite a bit more valuable than it actually is, btw, so bonus), whereas if I assert the claim and it’s true, I’ve just prevented an oil company from coming in and holding my land hostage.

                  Same thing with journalism – Look I don’t know what’s going to happen with the trump russia thing, but I do know that the public doesn’t know, and I can make educated guesses. I file ten claims claiming a method of reporting news using conventional means wherein the content of the news is that 1) trump authorized his son to attend a meeting to get dirt on Hilary, or 2) trump had nothing to do with anything, or 3) trump specifically called up Putin and collaborated…So nine of those claims are pointless, but the tenth is a goldmine. Did I just randomly guess, and clog up the patent system with nine useless applications? Sure, but patentability will not be negated by the manner in which the invention is made, even if it is dumb luck. I’m going to give you this abstract idea for free. Go forth, and buy me a steak dinner when you’re rich. Use the money you get from Fox News’ infringement, I want to taste their tears.

                6. Thank you for your reply, RG, which is (as usual) well thought out and well supported. There is a lot there to which I would like to response, but I do not have the time to address it now, and may not before this thread goes stale and drops off the board. I would like, therefore, to clarify one point on which the clarification can be made easily.

                  Your post reads as if you take me to be arguing that there are no constitutional constraints on Congress’ patent granting power. I would like to clarify that neither the IP clause (as Graham makes clear) nor the Commerce clause allow Congress to grant patents on anything. At a minimum, the novelty, non-obviousness, and utility requirements are binding constraints on what can be patented.

                  In other words, we do not disagree that there are constraints. We merely disagree in degree, with you taking the position that the constraints are more exacting than I perceive them to be.

                7. “… allow Congress to grant patents on anything.”

                  To avoid misunderstanding, that would have been more clear if I had written “… allow Congress to grant patents on just anything.”

            4. 11.5.1.5.2.4

              All inventions (that are tangible) rely on discovering a previously unknown fact about reality. A ball can apply ink to a substrate; in a metallic alloy, a sufficient amount of nickel improves corrosion resistance, etc…
              All comes down to who decides whether a fact is general enough (judges) and how it gets decided (based on an emotional response stimulated by an attorney). Listen to the sound bite between 7’30 and 8’30 and notice the similarity link to youtube.com

          3. 11.5.1.5.4

            Greg: When §101 turns, however, around a totally incoherent distinction between claims that “recite” a natural product and claims that are “directed to” a natural product

            1. DNA from a newly discovered tree frog.

            2. Detecting DNA from a newly discovered tree frog.

            Claim 1 recites a natural product. Claim 2 is directed to a natural product.

            What’s “incoherent” about this? Is this too hard for an adult attorney with a Ph.D. to understand? Seriously?

  11. 10

    Man o’ man; MM’s dust kicking is so darn thick this time around that I had to take a whisk broom to my keyboard . . .

  12. 9

    “if the claim integrates the exception into a practical application, then the claim is not “directed to” the prohibited matter.”

    Could someone explain how 5,970,479 (one of the Alice patents) failed to “integrate the exception into a practical application”?

    1. 9.1

      Ben, J. Rich explained how 101 is supposed to work. Everything else is nonsense. There is no way to understand it.

    2. 9.2

      Didn’t you read the PTO Director’s speech, Ben?

      That’s your job!

      The job of the PTO Director is to give bizarre speeches where he scrapes together the least defensible patent maximalist comments and strings them together into a “speech.” Because “customers”.

      1. 9.2.1

        That’s your job!

        LOL – but according to the “revered” examiner Random, “the office is not equipped to properly judge the claim,… Thus, 101 is necessary, and applicable.

        (by the way, this is expressly NOT how the rule of law works — this is very much beyond just celebrating a broken scoreboard)

  13. 8

    Iancu’s three categories:

    Mathematical concepts like mathematical relationships, formulas, and calculations
    Certain methods of organizing human interactions, such as fundamental economic practices commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities
    Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.

    How about a method, wherein said method comprises using a pencil and paper to determine whether a patient’s T-cell count falls within a certain non-obvious range determined by an algorithm?

    That’s not a mental process. And it’s not a mathematical concept. And it’s not a method of organizing human activity. So….

    Eligible and (plainly) patentable according to the PTO Director.

    Try to believe it, folks. Maybe Iancu’s just got a bad drug habit. Maybe he’s super stressed because of an extramarital affair or some family tragedy? It would be irresponsible not to speculate. In any event, it’s clearly time for an intervention. Does he have any friends (I mean real friends, not the kind of “friends” who pay him to say ridiculous stuff at meetings — we know he has plenty of those!)? Step up, people.

    1. 8.1

      Your proposed claim transforms a blank piece of paper into one imprinted with a determination of a t-cell count. There’s a guy in this thread who claims that would be patent eligible because, in all of the exclusions, “fundamentally, they don’t transform physical matter from one state to another.”
      Allegedly, this is s00per simple and clear to anyone who breathes oxygen.

      I’ll let you argue with him as to which of you is right.

      1. 8.1.1

        Pretty sure that same guy carefully explained in this thread that you need to take exclude the abstract (non-transformative) subject matter and see what’s left. In this case what’s left after you take out the calculating and the content of the drawing is … a pencil leaving a mark on paper.

        Marking paper with a pencil is in the prior art. Also happens to be conventional. Also happens to be downright ancient.

        So the claim is ineligible.

        I told you this was easy.

        It’s also pretty easy to stick your head in the ground and pretend that it’s “complicated” and “hard.” It’s also easy to understand why some people like to do that. We’ve been watching their strange behavior for literally a decade now. We saw the heads begin to explode before Mayo and we knew what was going to happen afterwards.

        Iancu can puff himself up until he’s as big as a house. But the train is coming and if he doesn’t get off the tracks, well, that will be that. Mayo didn’t even have to try very hard to obliterate Prometheus. And we’re even smarter now because we’ve seen all the maximalist arguments played through a zillion times (and they all s u c k).

          1. 8.1.1.1.1

            The “claim as a whole” language is from 103, not 101.

            As already explained numerous times by attorneys, agents, Examiners, professors, and public observers of the patent system (oh, and also adopted and ambiguously utilized by the Supreme Court in their 101 cases), you can’t have a working subject matter eligibility test without consideration of the relationship of the ineligible subject matter in the claim to the prior art. You can call that “claim dissection” or you can even call it “considering the claim as a whole” if you like. But it’s easier for everyone to just acknowledge what’s taking place, logically.

            By the way: although the language about consideration of “claim as a whole” appears in 103, it’s in the 103 context where “claim dissection” has historically occurred the most often. In what context? Why, in the context of evaluating claims that recite ineligible information content (e.g., kit instructions) in addition to otherwise eligible subject matter (e.g., kits). Even the CAFC recently grew itself an inch taller and was able to recognize that the so-called “printed matter doctrine” (not limited to printed matter, folks!) was a subject matter eligibility doctrine in disguise. Unfortunately, the PMD is at least as hopelessly hand-wavey as the worst straight up CAFC cases dealing with 101 directly. It’s a bit odd that the PMD wasn’t addressed by Iancu … that is until you recognize that addressing the PMD would give the “claims as a whole” game away.

            So it goes with the patent maximalists.

            Pay attention, folks. These guys really don’t know how silly they look and it’s easy to kneecap them.

            1. 8.1.1.1.1.1

              The “claim as a whole” language is from 103, not 101.

              Wrong again.

              Pay attention, folks. These guys really don’t know how silly they look and it’s easy to kneecap them.

              Wow – a double dose of Accuse Others with the “swagger” of the Internet Tough Guy syndrome….

              Oh Joy.

            2. 8.1.1.1.1.2

              …and let me know if you are ready to discuss the exceptions to the judicial doctrine of printed matter. Way back now I provided you a simple set theory explication and invited you to a discussion. You never seem able or willing to get there.

              Not surprising really, as your constant dissembling rests on your prevarications when it comes to the functional relatedness of the important exception to the judicial doctrine (not to mention that the exception does NOT enlargen the “patent pie,” as much as it does merely limit how much pie is taken away with the judicial exception).

  14. 7

    I have been reading this blog (and its comments) for some time now.

    My observation is simple – the angrier Malcolm gets about a post, the more optimistic I get for the future of patent rights in the US.

    As such, this recent speech by the new PTO director has me (and Malcolm) both very excited! :)

    1. 7.1

      Well, peak MM anger was the CAFC’s Mayo v. Prometheus decision.

      And you’re right: the patent system has been improving since then, albeit in two steps forward one step back sort of way.

      So I’m extremely optimistic. Is there a better punching bag out there than Iancu? I mean, Big Jeans was fun but I think Iancu is going to be even more fun.

    2. 7.2

      [T]his recent speech by the new PTO director has me… very excited!

      I am with you in being very cheered by the director’s words here. The problem, however, is that PTO directors lately tend to last ~2 years in office (sometimes a little more, sometimes a little less), while CAFC and SCOTUS jurists last decades. What more, there is very little consistency among PTO directors (Lee was fairly uninspiring, while Iancu is moving from success to success). It is just too easy for whatever good Iancu may do to be undone, while the wreckage worked by the SCOTUS just piles up.

  15. 6

    I’m going to jump now to the portion of the screed where Iancu (and the rest of the PTO? LOL — have fun, peeps!) go completely off the rails:

    we must first understand what the line is that the court wants us to draw to decide whether the claim is “directed to” an excluded category or not.

    That should be easy. The “excluded categories” you mentioned (i.e., “mathematical concepts like mathematical relationships, formulas, and calculations; methods of organizing human interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities; mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion”) all have one thing in common: fundamentally, they don’t transform physical matter from one state to another.

    There. That was pretty easy. That’s where the Supreme Court wants you to draw the line. More accurately, that’s where you must draw the line or else you are not drawing a line at all but instead just turning eligibility into a claim drafting exercise which is not what it’s supposed to be about.

    So, all you need to do now, Iancu, is breathe some oxygen and recognize that you are dealing with patent claims, which are themselves abstractions. Yes, patent claims are comprised of words and, as such, they are very easily manipulated by those who know how to manipulate them (i.e., lawyers). The Supreme Court has given a name to that process in a very important eligibility case. They called the process “scrivening.” The Supreme Court highlighted the issue because it recognized (as just about any intelligent adult will do after a brief lesson like the one I’m about to give you) that a “scrivener” can (and will!) try to impermissibly protect ineligible subject with a patent claim by couching the ineligible subject matter in a prior art context. For example, I can take a new, non-obvious and useful but ineligible process of thinking about a correlation and describe that process in a claim where the claim additionally recites an unpatentable (but eligible) process of drinking a cup of coffee. Any framework for determining eligibility that actually works needs to eliminate these claims from the system. The easiest and most straightforward framework by far is the framework where one identifies the ineligible (i.e., abstract) subject matter (i.e., steps that do not change a physical structure), removes it from the claim, and then looks at what is left. Is what is left after that removal novel and non-obvious under 102/103? Then continue onwards to the rest of the statute because if the answer is “yes” then you have an “inventive concept” that qualifies as the “something more” that the Supreme Court was looking for in Mayo.

    Now let’s look at what Iancu proposes:

    The proposed new guidance would explain that Supreme Court jurisprudence taken together effectively allows claims that include otherwise excluded matter as long as that matter is integrated into a practical application. The line, in other words, delineates mere principles, on one hand, from practical applications of such principles, on the other.

    Oh brother. History will remember this nonsense as the “integrative practical application” test. Does it smell vaguely like the “functionally related” exception to the so-called “printed matter doctrine”? You bet it does. And guess what? It’s just as worthless and filled with h0les you can drive a truck through. Of course Iancu’s silly ttest does achieve the one thing it was meant to achieve: it continues the farce of claiming logic (an ineligible abstraction) in the prior art context of programmable computing. That’s the sole reason for the existence of this silly test and it’s the only reason anybody cares about Iancu’s nonsense today.

    So let’s see the beef, Iancu. Surely we are going to get some guidance on how to determine if an ineligible concept passes the “integrative practical application” test, right? Let’s see what Iancu tells us:

    if the claim integrates the exception into a practical application, then the claim is not “directed to” the prohibited matter. In such cases, the claim passes 101 and the eligibility analysis would conclude.

    LOL – wut? This is a j0 ke, right?

    It is important to note that the first step of our analysis does not include questions about “conventionality,”… That is, it does not matter if the “integration” steps are arguably “conventional”; as long as the integration is into a practical application, then the 101 analysis is concluded.

    LOLOLOLOLOLOLOLOLOOLOLOLOLOLOLOLOLOLOLOLOLOL

    Unless the Supreme Court enjoins you from applying this inane undefined and illegal test which admittedly allows ineligible subject matter to be protected in a prior art context (or an obvious variation of that prior art context). What do you think Mayo v. Prometheus was about, anyway, Iancu? Have you really no clue at all?

    This helps to ensure that there is a meaningful dividing line between 101 and 102/103 analysis.

    As noted above, Iancu, all that this test “ensures” is an endless plague of Scrivener’s Delight. The “meaningful dividing line” between 101 and 102/103 already exists (before your ridiculous IPA test) and we know that because ineligible claims can still be novel and non-obvious, and vice versa. And that’s all we need to know in order to understand that the “dividing line” is “meaningful.”

    As a matter of basic logic, if you forbid consideration of the prior art when evaluating subject matter eligibility you turn subject matter eligibility into a meaningless drafting requirement. YOU IMPLICITLY ACKNOWLEDGED THIS PROBLEM IN YOUR OWN DIPSHIRT SPEECH FOR CRIPESSAKE.

    During that time, I welcome your comments and thoughts on this and any other proposal.

    Because nobody’s been talking about this for the past ten years. Especially not on the most widely read patent blogs. Nope.

    Good grief.

  16. 4

    Iancu seems to have a clear vision of where he wants 101 jurisprudence to go – it will be really interesting to watch if/how judges follow his lead…

    1. 4.1

      Big picture is that the courts have so fouled up patent law and Congress is pretty much frozen by special interests so that perhaps the only person that can straighten this out is a PTO director.

      Pretty sad situation and we are lucky to have Iancu.

      1. 4.1.1

        perhaps the only person that can straighten this out is a PTO director.

        Iancu is going to be out of a job shortly so that’s not going to work either.

        Any other ideas?

  17. 3

    Iancu, w@ nking hard to be the world’s worst ever PTO director:

    As Judge Rich explained, when we deal with §101, “the sole question…is whether the invention falls into a named category, not whether it is patentable…”

    If that’s true, then three other things are necessarily true:

    (1) 101 is a technical drafting requirement and nothing more; and
    (2) new and useful mental processes are eligible according to the 1952 patent act, one of the most radically transformative statutes every enacted by any nation, except that it’s unconstitutional on its face; and
    (3) Judge Rich is an inc0 mpetent t 00l.

    Oh but wait! Iancu needs to kick some dust in our faces:

    what are the categories of inventions that the court told us that we should not patent even where the applicant demonstrates full compliance with Sections 102, 103 and 112? The Supreme Court gave us the answer: the “basic tools of scientific and technological work.” And what are these “basic tools?”

    Well, they surely can’t be anything that could be categorized as a process, composition or manufacture. Right, Iancu? Because S00per Jeenyus Judge Rich wrote that s00per awesome statute which the bad ol’ courts mucked up. Right, Iancu? I mean you just got done telling us that …

    fundamental mathematics like calculus, geometry, or arithmetic per se. That is, no matter how novel and well-described Newton’s calculus may have been, it is still not patentable by itself. It can be thought of as abstract no matter what. Perhaps “inherently” ineligible, some might say.

    Except that you can describe math as a process so then it would be eligible according to Judge Rich. And you (apparently, if we assume that you know what you are saying which you probably don’t). Or you can insert a process of doing math at the end of a claim that otherwise recites a prior art process. That would also be eligible according to Judge Rich. And you, Iancu.

    And this where everybody with more than half a brain can see that you are making no sense. It’s just that easy to point out how vaporous your “logic” is, Inacu. It’s non-existent. You are shoveling pure d0g shirt into the public’s face. The “hard workers” at the AIPLA tried this game and they failed miserably.

    Some basic “methods of organizing human activity,” such as fundamental economic practices like market hedging and escrow transactions, have also been excluded by the Supreme Court in Bilski and Alice.

    All “economic practices” (i.e., monetary manipulations and methods of converting money values or predicting where those values are going to be at any moment in time) are excluded, Iancu. That’s because “money” is an abstraction. I realize that may be a hard concept for an unskilled pr 0stitute like Iancu to swallow.

    pure mental processes such as forming a judgment or observation. Again, by itself, something performed solely in the human mind can be thought of as abstract no matter how it is claimed.

    But the S00per Jeenyus Judge Rich said that processes were eligible, Iancu. So your foot is pretty deep in your throat. Which is it? Did the Supreme Court “muck it up”, Iancu, by excluding useful mental processes? Or did (gulp) S00per Jeenyus Judge Rich write a cr @p statute because (double gulp) he was not really that smart or prescient after all? Which is it? You can’t have it both ways.

  18. 2

    I’m doing my best to keep my lunch down here …

    Judge Giles Rich, an icon of patent law with an unparalleled understanding

    And there she blows! Chunks all over the screen. Dang you, Iancu. Now I’m going to have show everyone what an incredible f 0 0l you are. Of course, it all begins with pointing out the fact that you were nominated by a r@ pey ign 0r amus and p@ th0 l0gical li @r. And you accepted the nomination. That’s just the beginning of your problems, Iancu.

    almost 40 years ago! How perceptive and prescient Judge Rich was.

    In fact, the current state of affairs is the direct result of Judge Rich’s lack of perception and prescience. That’s a problem you share, along with problems very similar to those of the inept ment@lly incapacitated @ h0le who nominated you. As you will prove for me …

    You ask: Let me put this in my own words: How can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an “inventive concept” and therefore fail 101?

    Answer: When the “inventive concept” is ineligible for patenting.

    how can a claim be concrete enough so that one of skill in the art can make it without undue experimentation, and pass 112, yet abstract enough to fail 101?

    “Undue experimentation” has nothing to do with the concept of “concreteness” in the eligibility context. “Undue experimentation” is an enablement issue. “Concreteness” in the eligibility context refers to whether the claim describes novel physical structure as opposed to (for example) novel information content.

    [Aside: it’s rather cheeky for Iancu to be citing to CAFC judges whining about an allegedly “incoherent” test for subject matter eligibility when it’s the same CAFC judges — Newman, for instance — who expect us scientists to believe that ineligible mathematical algorithms are “concrete” for utility patent purposes]

    Here is a hint: If the claims can be fixed by slightly different claiming, by narrower claiming, or by more definite claiming, this is likely a “conditions” problem—not a subject matter problem.

    How do you know if someone is completely clu e less about subject matter eligibility? Here’s a hint: if they say something exactly like what Iancu just said. This guy is a complete f ing idi 0t.

    Time to eat more food and then get back to destroying this cr e e p. What an amazingly inc omp et ent t 0 0l.

    1. 2.1

      I know that IPO committees have been hard at work on a legislative fix to Section 101. Indeed, IPO and AIPLA have joined forces recently and proposed new statutory language.

      The guys on the IPO and AIPLO weren’t “hard at work”. I know some of them personally. The only thing some of those guys are good at is missing the point and reciting scripts about how unfair it is that their schlub client can’t get his patent and sue everyone who uses the Internet. Then they go buy another Rolex for their collection. It’s hard, man! So hard. Iancu knows these people. He’s cut from the same entitled @ h0le cloth.

    2. 2.2

      “Answer: When the “inventive concept” is ineligible for patenting.”

      So then, it doesn’t lack an inventive concept does it. Its just that you don’t like the inventive concept.

      Circular logic much?

      1. 2.2.1

        So then, it doesn’t lack an inventive concept does it.

        It lacks an eligible inventive concept. As I said. That’s why some claims can be new and non-obvious and fail 101. That’s the answer to the silly question that Iancu asked.

        Even Iancu admits that a novel and non-obvious mathematical algorithm is ineligible. He answers his own question in his own miserably screed.

        Iancu is talking to kindergartners here but some of us have Ph.Ds. I am Iancu’s second worst nightmare. He isn’t going to like what I’m going to do to him but it has to be done. Best part: it’ll all be done with words, right here, out in the open. Oh, man, this is going to be fun.

    3. 2.3

      Of course, it all begins with pointing out the fact that you were nominated by a r@ pey ign 0r amus and p@ th0 l0gical li @r.

      W
      T
      F

      It’s not as if Malcolm hasn’t add recent off-the-leash, super p00persc00per moments expunged… (and yes, his expungements are more than all others combined)

      1. 2.3.1

        So what do you object to exactly, “anon”?

        Mentioning that Iancu was nominated by Mang0 H@irball (certainly relevant)?
        Mentioning that Mang0 H@irball is a p@ th0l 0gical li @r (relevant to his choice of nominees)?
        Mentioning that Mang0 H@irball is an ign 0ramus (relevant to his choice of nominees)?
        Mentioning that Mang0 H@irball is r@ pey (relevant to his choice of nominees)?

        I wouldn’t work for a guy who ran around bragging about assaulting women and shagging pr0stitutes while his wife was pregnant.

        But Iancu would.

        And so would you. Please quit your sniveling, snowflake.

        1. 2.3.1.1

          Malcolm, so tell me, why is it do you think that your other recent screed was expunged?

          Tell me, why is it that you have more posts expunged than any other poster?

          Tell me, why is it that you have more posts expunged than all other posters combined?

          Stay
          On
          Topic.

          And yes, that would be the topic of this blog: patent law.
          And no, that is NOT the tangents that you float (but-t-t the president nominated him, so {somehow?} that makes the rant “on topic to patent law” — does NOT cut it).

          Do you really have such little self control?

  19. 1

    Why didn’t Obama pick CAFC judges like this? If he had, then we would still have a patent system. Oh wait…yeah, I forgot. Money. Google bucks.

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