44 thoughts on “Impact of Mayo and Alice — Largely Confined to Particular Art Units

  1. 7

    The whole thing is rigged. Large-corporate Advocates get spend as much time as they like glossing up some propaganda while being paid for by large corporations.

    Who has time to fight that? That is why the patent system is being burnt down.

    You are complicit with this Dennis. Demand disclosures and accountability for unethical behavior.

    Who has 10 hours to write something intelligent to illustrate why the Advocates are wrong.

    They probably got paid 10’s of K for this.

    1. 7.1

      Let’s face it. Lemley and his ilk are not academics and the “papers” they write are for the corporations.

      Stop pretending otherwise. Treat them as advocates for large corporations like spokespeople that want to publish one of their commercial propaganda pieces.

  2. 6

    These results do not look at particular art units being decimated by 101 policy (policy being dictated by TQASs contrary to fact and law). We need an up-to-date assessment with interviews and data from practitioners and examiners. In over 20 years of dealing with the USPTO, the situation in art units such as 2850s, 2860s and 2120s is bad, really bad. Why do you think Director Iancu is speaking out? Do the people pushing these results think he’s a propagandist? (or is it the other way around?)

    1. 6.1

      The “ situation is bad” in some art units? Because the quota of grants isnt being maintained or something?

  3. 5

    This is fake news and promotes a false narrative. Next we’ll see the data-supported post on how great efficient infringement is too.

      1. 5.1.1

        Dennis – just call if you want to hear from the trenches. I am waiting desperately for the new 101 guidance and I don’t do business methods. I do science and technology. The USPTO says a sensor is not a device, EPG applies to any type of “data” (cardiac rhythm, X-ray, MRI, seismic, etc.), it’s pure madness (i.e., anti-patent policy absent fact and law). For certain technologies (real technologies), these types of articles are a gross disservice.


            Thanks for taking on the subject. Please be careful with generalizations, hard working inventors are paying the price in the fields of science and technology as the USPTO is applying policy not fact/law. Paying the USPTO to publish scientific/technological trade secrets without IP rights in return is now the status quo. The “bargain” went bust.

            While I have various comments, I think these may be the main ones:

            The term “information” is not as simple as it appears. From work in radiology departments and a supercomputer institute, information is not “abstract”. The statements “Information per se a judicial exception to patent eligibility. Information alone is considered abstract regardless of novelty, utility, or non-obviousness. That notion is true enough” are not true. Sensor “information”, numerical experiment “information”, and other “information” are not abstract. Read again Bilski and digital imaging cases (image data is model data). Model building of real things is not abstract. Please see J. Moore (Fed Cir), J. Birss (UK), and Winsberg:

            UK PATENT APPLICATIONS 0523735.9, 0802299.8 AND 0802300.4 [2011] EWHC 2508 (Pat): J Birss
            Designing drill bits is obviously a highly technical process, capable of being applied industrially. Drill bit designers are, I am sure, highly skilled engineers. The detailed problems to be solved with wear and ability to cut rock and so on are technical problems with technical solutions. Accordingly finding a better way of designing drilling bits in general is itself a technical problem. This invention is a better way of carrying that out. Moreover the detailed way in which this method works – the use of finite element analysis – is also highly technical.
            As a matter of law computer implemented inventions are just as patentable in the UK as in the EPO. The Patents Act is in accordance with the EPC in that both contain an exclusion for computer programs as such. That is a matter of legislation and in my judgment it is not for any court to interpret that exclusion out of existence.

            Digitech: J Moore
            In the oral argument of Digitech, at a time of about 5:50 (available online), Judge Moore states: “if your claims were to a formula for digital image processing, namely take the image on the front end, modify it in a device independent way, output it and you’ll have a better quality, that’s a whole different ballpark, that’s like a manufacturing process. Your claims aren’t directed to that at all. Your claims are directed to only the data that’s going to be used within that process.”

            Winsberg, Philosophy of Science, 70 (January 2003) pp. 105–125, which states at pp. 109 and 120:
            Since these equations [Euler equations for flow of gas] are analytically unmanageable under all but the most symmetric and time-independent conditions, simulation requires computational methods, that, given reasonable computer resources, can accurately trace out the patterns of flow. This is not a matter of simplemindedly taking continuous differential equations and transforming them into discrete algebraic equations. Given limitations on computer speed and memory, these techniques also invariably resort to other approximations, idealizations, and even “falsifications”—that is, model assumptions that directly contradict theory. Making the simulation work, and making it produce results that the simulationist is willing to sanction as reliable, is a skill that has been developed in a lengthy period of trial, error, and comparison with both theory and known results from physical experiments. In sum, by the semiautonomy of a simulation model, one refers to the fact it starts from theory but one modifies it with extensive approximations, idealizations, falsifications, auxiliary information, and the blood, sweat, and tears of much trial and error.
            * * *
            In simulations, errors can arise the as a result of transforming continuous equations into discrete ones and of transforming a mathematical structure into a computational one. All discretization techniques present the possibility of roundoff errors or instabilities creating undetected artifacts in simulation results. At a deeper level, any modeling assumption that goes into the creation of a simulation algorithm can have unintended consequences. Developing an appreciation for what sorts of errors are likely to emerge under what circumstances is as much an important part of the craft of the simulationists as it is of the experimenter.


              I need to clarify some of the key ideas.

              – all information is intangible, but only some information is abstract

              – tangibility is not a synonym of abstraction

              – an abstraction may only occur in a human mind

              – an abstract claim for any kind of invention is a patentability issue

              -an abstract result of a method claim is an eligibility issue

              – if the utility of a result arises from information consumed by persons, the method should be ineligible

              – flow simulation information arising from novel simulation design is not consumable directly by human beings.


                Interesting things to think about. I am reminded of a hygrometer, the old school type that used human hair. The hair contracted and expanded responsive to humidity to move a pen on a rotating chart or to move a needle of a gauge. If that process is digitized by circuitry, we now have “information”? If so, how/why would such information be intangible? In either instance, there is a measurement that is a direct consequence of a physical phenomenon that is not abstract (perhaps a law of nature, but not abstract). Here’s another question, why is old school chemical film processing not abstract and digital image processing abstract? Humans abstracted the “process” through circuitry; humans are wizards indeed.

                1. A novel hygrometer would be completely eligible. The idea of using a computer and a humidity sensor to inform a person of the humidity would not ineligible as an abstraction, but unpatentable for lack of novelty or description.

                  Old school chemical film processing methods were totally independent of the “content” of the film being processed, so there was no abstraction to deal with. If you invent a new way to create images, where the utility is independent of the “content” of the images, I can’t see why that new method would not be eligible. We do allow .MPEG patents, for one example.

                  Along those lines, patents for better knife sharpening methods need not say why sharp knives are better- the utility is implicit, regardless of what you are cutting. Processed images are better, regardless of what you are looking at.

                  The consumed result of the processed information that your novel method would not be abstractions unless the utility of the method arises from people using the information in some particular manner, in which case, the method has an abstract result and should not be eligible- for instance, a conventional processing method using a camera and computer that shows license plates so that tickets can be given. If the utility in in the license plate reading arts, and not the image processing arts, there should be no patent.



          I am always interested in hearing about cases with poor eligibility rejections entered against technical subject matter. Feel free to email me at jdoerre AT ti-law DOT com if you want to discuss.


      2. 5.1.2

        The “fakeness” comes from an attempt to normalize the 101 rejections.

        The fact is that 101 rejections have profoundly changed prosecution. It is a little like saying that ki lling 10 percent of the herd every year isn’t going to affect the herd. We all have to some serious dancing now to get allowances in many art units and have to write applications very differently than before.

        The fact is that is it apparent that the large corporate advocates intent is not to find out what is really happening but to minimize and normalize.

        Plus, the fact that so many patents are invalidated at DC and CAFC also changes prosecution.


          Absolutely correct as to the “desired narrative” of minimization.

          It’s also a bit of a smoke screen from the Void for Vagueness problem that the actual “ping pong” of panel to panel decisions are rendering.

          Both the minimization and the “don’t look at the Void for Vagueness” effects are reminiscent of the one scene in the Wizard of Oz movie: “Pay no attention to that man behind the curtain.” booms the wizard of Oz — and in effect, this is more of the “see, look here at the Ends and never mind about the Means to those Ends” mindset.

          The more that these types of “desired narratives” are offered, the more the alarms should be going off.

      3. 5.1.3

        Frankly Dennis what I think is that it is outrageous that you provide a forum for large-corporate lobbyist that are also professors to present work as if it is objective academic work when it is in fact likely funded by large corporations and when in fact the content is likely tightly controlled by the large corporation.

        I think you would improve your blog if you required disclosures from the “academics” going back years so that they cannot try to claim that for this paper they didn’t receive money when in reality they are people that funded by the large corporations. We need to see the source of all their money (not just I didn’t get money for this one.)

        Moreover, you have to consider that it very difficult for us to fight this type of propaganda. We don’t have the time to read through all these posts and point out the errors or omissions. They are on the hand are being paid to produce this stuff.


          Frankly the complicity of the universities in this is disgusting. I am sure they play along to get donations from the large corporations and protect the “professors.”

          Let’s face it. These people are no longer “professors” as this profession was once known but a hybrid form of advocate/lobbyist for large corporations.


            It’s not as if complicity of universities is an unknown artifact — take a look again at the S&L debacle: note the Ivy League academic complicity deeply involved there.

  4. 4

    Oooh, looks like the wingnerts are gettin uncivil with the mailbombs. But at least they aren’t calling white supremacist (oops, “nationalists”) r@ cists which is totally the rudest thing ever.

    Desperate times for the m0uthbreathers! Soros and I will be collecting your patents and shoe polish this weekend.


    1. 4.2

      Desperate times for the m0uthbreathers!

      Do you realize Malcolm how you come across as anything but intelligent when you use such rhetoric in your rants?

      Bad enough that this has absolutely zero to do with patent law, but to use such plainly Leftist vernacular makes you sound like an absolute t001.

      1. 4.2.1

        link to techdirt.com

        “Mr. Girard is exactly what the founding fathers had in mind when they penned the Patent Clause in the basic Article I of the U.S. Constitution.”


        Eight years ago. How quickly we forget.


          Your reply has nothing at all to do with my post.

          Are you publicizing your “one-bucketing” tendencies for a reason?

  5. 3

    Well, you gotta love it when the truth leaks out even if it’s a really really fu gly truth about a certain class of “innovators” and their “counsel”:

    The two graphs above show a result that may surprise some: the number of applications with a 101 rejection was flat or falling from 2013 to 2015. My interpretation of this is that we simply learned to draft around Mayo and Alice.

    Well, the problem is that there is no “drafting around” those cases. Attempts to “draft around” ineligible subject matter is what those cases were directly addressing.

    You can certainly innovate eligible subject matter. That’s easy, in spite of the chicken little malarkey that the patent maximalists and s0f tie w0f tie types have been peddling for years. That’s what I and many others have been trying to drill through their thick skulls for years and the data here proves just how off base that whimpering simpering pack of whiners has been (and always will be).

    But ultimately you can’t rely on scrivening to turn an innovation that is ineligible for patent protection into a claim that protects that innovation, just as you can’t claim ineligible subject matter by limiting that ineligible subject matter to a prior art context. You need to innovate eligible subject matter, and you need to carefully claim that eligible subject matter. This isn’t hard for most trained patent attorneys, nor is it hard for most innovators in the grown-up arts. It’s apparently very hard for people who write instructions for computers that were designed to carry out instructions, and it’s apparently very hard for attorneys trying to “cash in” on the PTO”s miserable failures.

    I see this as the same old story as pretty much every other major change in patent law over the past decade: (1) The courts issue a decision changing the law (despite claiming it is not a change)

    Right off the bat this is revisionist history. Logic was never eligible for patent protection. Correlations were never eligible for patent protection. Instructions were never eligible for patent protection. Information was never eligible for patent protection. The “change in the law” came about when the CAFC decided — based on nothing but it’s own desires — that stored data was “the essence of electronic structure”. Somehow that magical phrase morphed into the bizarre concept that methods of applying logic to data (i.e., algorithms) were also “structures” that were eligible for patenting. And then there was some unfortunate (and very short-lived) dicta in Diehr that was interpreted by some incredibly greedy and/or short sighted people (or both) to suggest that Examiners and judges were not permitted to consider the relationship of a claim to the prior art when determining eligibility. For straighforwardd irrebuttable reasons that don’t need to be set forth for the billionth time, that proposition was never going to survive a minute’s serious scrutiny. And then there was the CAFC’s ridiculous State Street Bank decision. Those were the changes in the law. Bilski, Mayo and Alice simply turned the train around before it flew into outer space.

    except of course for the applicants that had the bad luck of not possessing a crystal ball when they filed their application before the law changed.

    It’s not about “crystal balls.” All of this was predictable and it was predicted and explained in real time. And guess what? There’s more to come and if you don’t like the trilogy of decisions I referred to above you’re going to like what’s coming even less. Way way way less.

    Even for those unfortunate souls, in many cases cleverly-drafted continuation claims can come to the rescue.

    This statement is simultaneously funny, s@d, and disgusting. It’s nothing more than an admission of what most of us have known for decades: the PTO, by virtue of its incompetence and its corruption (depending on who’s running it) is handing out ineligible junk claims to “clever” scriveners so they can troll with them. The percentage of those claims that would survive scrutiny in litigation up to the Supreme Court when the defense is managed by a competent patent attorney who knows how to pierce through the cloud of silly jarg0n-laden verbiage is close to zero. If IPRs were expanded to include eligibility and 112 considerations — which they should be — the value of the typical “do it on a computer” g@ rbage patent would be reduced to squ@t immediately. And that would be a great thing for pretty much everybody in the country except for the sniveling whiners I mentioned above.

    1. 3.1

      “Well, the problem is that there is no “drafting around” those cases. Attempts to “draft around” ineligible subject matter is what those cases were directly addressing.”

      In truth the whole issue is one of psychological problems in drafter’s minds. They had in their brains that whatever they sh at upon a sheet of paper was “the invention” and they got to dictate that. Mayo etc. just made them bring their abstracting down to earth a bit in the drafting. And the world moved on.

      1. 3.1.1

        They had in their brains that whatever they sh at upon a sheet of paper was “the invention” and they got to dictate that.

        LOL – which branch of the government gave them that idea….?


          Billy: which branch of the government gave them that idea

          The idea that you could scriven around eligibility requirements came from shirty attorneys.

          In Billy’s mind, the government also gave him the idea that he could use his smartphone to peek up little girl’s pants on the train station because, hey, the government didn’t specifically say you couldn’t do it!

          And then when the government says you can’t use a smartphone to do that, Billy will go right back to making his little movies … using two smartphones! He’s a very clever little man. One might say he’s “zealous.”

          The patent maximalists: giving attorneys a bad name since pretty much forever. Get a life, l0 sers.


            The rest of your rant is completely unconnected to any of my patent law views.

            (but is very Trump of you to v0m1t out such mis-aimed ad hominem)

      2. 3.1.2

        6: In truth the whole issue is one of psychological problems in drafter’s minds. They had in their brains that whatever they sh at upon a sheet of paper was “the invention”

        There was definitely a “psychological problem” and it still exists (see, e.g., “anon” for a prime example). There was (and is) a zombie virus that infected the br@ins of the maximalists and they just can’t let go of their bizarre belief that judges and Examiners are somehow not allowed to brush aside recitations of prior art contexts in claims where those contexts are recited only to obscure the fact that the only subject matter in the claim that is possible “inventive” also happens to be ineligible for patent protection.

        Call it zombie thinking, or call it a form of ment@l ret@rdation. It doesn’t really matter. What matters is that these people are incredibly dense and annoying in addition to the usual narcissism and self-entitlement.

        It is fun to watch them dance around tho. Like tapping on a jar of water populated by sea m0nkeys. Whee!


            Just historical facts, “anon”. You’re p@th 0l0 gical ly ing and your projection is also well-documented.


  6. 2

    Good point anon. Also missing is the change in how applications are written and the fact that we don’t file a lot of applications because of 101.

    Also missing is how 101 is used at the DC and CAFC to burn down any patent they feel like burning down.

    I’d like to see more interpretations of the data besides large-corporate Advocate Chien’s narrow paper.

    1. 2.1

      I’d like to see more interpretations of the data besides large-corporate Advocate Chien’s narrow paper.

      That’s exactly the attempted spin with this “separate” thread.

      The problem is, it is the same spin with the same lack of seeing the better narrative and exactly why the “do something about 101 is resounding from so many different places.

      Think about it for a second: if this desired narrative were actually a static (and unchanging) situation, why would anyone “speak up?”

      Nope – the “speaking up” is a clear reaction to something else going on.

      THAT something else is the bigger, better story. But that story is apparently not the one that is desired to be the one in the headlines. A doubling that “remains exceptional” previously, and here a “previously unaffected saw a significant jump” followed by a rather odd excuse – sorry, but the desired narratives are just not holding up.

      1. 2.1.1

        Advocate Chien is a Lemley wannabe. She is getting ahead of something. She is just like Lemley. Smarter than the average bear and no qualms about ste aling the honey from inventors.

      2. 2.1.2

        “Nope – the “speaking up” is a clear reaction to something else going on.

        THAT something else is the bigger, better story. But that story is apparently not the one that is desired to be the one in the headlines.”

        I don’t know if you’re wrong or right. But here’s an alternative theory: given incomplete and inconclusive data, reasonable people may be unwilling to prematurely assert that an event occured, much less the cause of the event. To criticize these authors for not jumping to the same conclusions as you is absurd. Maybe spend that effort making a case for your position instead.

    2. 2.2

      we don’t file a lot of applications because of 101.

      HOORAY! That statute is actually working like it’s supposed to.

      Did you know that many people don’t file applications because of 102 and 103? Yup. It’s true.

  7. 1

    From the link:

    Many art unit groups previously unaffected (relatively speaking) saw a significant jump from 2016 to 2017. Again, I’m not sure if it is incomplete data or Electric Power Group.

    As I proposed on the other thread: the Office starting gettting consistent (and consistently aggressive) outside of “designated art units” and all of a sudden everyone from the patent bars to the new director himself is realizing just what an objective and even handed approach would render (rather the opposite of a certain narrative being peddled).

    Maybe we can blame the scriveners who started aiming to be placed outside of the “designated art units”

      1. 1.1.1

        Some examiner’s told me it was Lee pushing for 3600 type 101 rejections in other AUs. They told me it was rollout.

Comments are closed.