Guest post by Howard Skaist, founder of Berkeley Law & Technology Group, LLC.
In 2014, two months after Alice was decided by the Supreme Court, a post that I wrote appeared on Patently-O proposing an approach to claim drafting in light of the Alice decision using a “thought experiment” as an illustration. A hypothetical in that post suggested trying to claim the original computer spreadsheet VisiCalc before the Alice decision and then after the Alice decision. The conclusion of the post as to Section 101 was summarized at the time, as follows:
“…from a formal perspective, it is necessary that innovative aspects of the invention, as implemented or intended to be implemented, be on the face of the claim …” (emphasis supplied)
One problem, however, as illustrated starkly by the hypothetical is that claims drafted in light of the Alice decision are generally narrower than they would have been otherwise. Today, perhaps, one could write better (e.g., broader) claims to pass muster under the Mayo–Alice Framework than the example claims provided in that 2014 post. However, the point of this post is not to attempt to do that, but rather to consider the pre-Alice claim provided as an illustration and ask the following two questions.
First, how would the pre-Alice claim from that original post fare under the subject matter eligibility guidance recently published in January 2019? Second, how might that claim (or claims) be re-drafted to hopefully significantly improve the chances that the claim (or claims) will pass muster under that same new guidance?
To refresh, the ‘before’ claim of the post was:
- A method comprising: implementing a spreadsheet on a computer.
The primary change under the new subject matter guidance is to so-called step 2A (using the terminology of the US Patent Office) — whether the claim is directed toward a judicial exception such as an abstract idea. The new subject matter guidance adds a first prong and a second prong to Step 2A. Following the first prong, an examiner is to determine whether the claim recites a judicial exception, in this case an abstract idea, by referring to subject matter groupings. The subject matter groupings are specified as: mathematical concepts, certain methods of organizing human behavior, and mental processes.
I note that the guidance is quite specific in saying that the claim must “recite” matter that falls within the enumerated groupings. Thus, here, I would say it does not. Nonetheless, I have to question if an examiner would take that view. While the claim clearly does not recite a mathematical concept, I could imagine an examiner asserting that the claim recites a mental process. While I would not agree with this latter conclusion, I could imagine that an examiner might say, for example, that a spreadsheet can be a mental process and that the language “implementing … on a computer” is nothing more than clever patent drafting.
How, then, might the claim be re-drafted to overcome such a rejection, but still retain some measure of breadth? To challenge ourselves, and perhaps, recite slightly more than necessary, how about this claim?
- A method comprising: implementing a spreadsheet via a computer, including determining contents of one or more cells thereof, based at least in part on one or more user-specified operations to be applied to signals and/or states to be provided as operands for the one or more user-specified operations.
This re-drafted claim at least arguably does not recite a mental process. Rather, the claim language is pretty specific to make it clear that physical processes are taking place. Thus, at least two out of three groupings have been drafted around.
Still, an examiner might say that a spreadsheet is a long-standing, fundamental economic practice or one that is a method of organizing human activities, demonstrating one danger with this particular grouping. It is, by its very nature, a bit vague. Without making any admissions, thus, it would not be not entirely unreasonable for an examiner to suggest that a spreadsheet might fall into this grouping.
Fortunately, all is not lost. Even if one fails to pass muster under the first prong, an opportunity to satisfy section 101 under the second prong remains. Here, the new guidance says that if the recited exception is integrated into a practical application, then the claim is still patent-eligible.
Specifically, the guidance says that to meet the second prong the claim is to integrate the judicial exception into a practical application that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort to monopolize the judicial exception. Being an advocate, my position would be that we have met this already with the claim above.
However, again, to be especially hard on ourselves, perhaps we need to make it clear that some sort of result is generated, so that, as a whole, the claim comprises an improvement over a spreadsheet generated by hand, perhaps, as follows:
- A method comprising: implementing a spreadsheet via a computer, including: determining contents of one or more cells thereof, based at least in part on one or more user-specified operations to be applied to signals and/or states to be provided as operands for the one or more user-specified operations; and generating output signals and/or states based at least in part on the determining, wherein the generating includes generating a report that comprises at least a table portion or a sub-portion of the spreadsheet.
Now, it seems that it would be challenging to assert that a practical application with meaningful limits has not been claimed. Furthermore, if needed, more dependent claims could be used to flush out more application specific features. Thus, it would seem, we have successfully written or could successfully write a claim that is patent-eligible under the new guidance.
Given the length limitations of a post such as this, it is important that I now quickly move to the point of my prior musings. So, I have three general observations to make in light of my “thought experiment” above.
First, that my re-drafted claim would pass the Mayo–Alice Framework under the close scrutiny of a court at best is unclear. Thus, as one conclusion, even if you are able to draft a claim to pass the new subject matter guidance, it seems prudent to include, as dependent claims, features that you believe more clearly pass the patent eligibility test being applied by courts.
As a second conclusion, in an attempt to provide greater certainty, it appears that the new guidance permits one to present broader patent-eligible claims to the US Patent Office than previously. To rephrase this latter point, the Patent Office has provided guidance intended to ferret out the more egregious cases of patent-ineligibility, thereby leaving it to courts to sort out closer question situations, as this example might illustrate.
As a third conclusion, with respect to the new guidance, the “money,” so to speak, resides in meeting the second prong. More specifically, while a patent drafter should certainly attempt to draft claims to comply with the first prong and the second prong; still, given the vagueness at the edges of the first prong groupings, efforts by a patent claim drafter to comply with the second prong appear to me to be more likely to succeed.
Visicalc was eligible under current law as an improvement to a general purpose computer. It provided an visual, human friendly interface for controlling the functions (transform, store, display data) of a general purpose computer.
Some harsh comments on this post. Any attorney dealing with drafting claims post-Alice is struggling with this issue. There is no one answer, but it is interesting to see how one attorney approaches it. How do you formulate a drafting style for a rule of law that is so poorly defined? You do the best you can. That’s how.
How do you formulate a drafting style for a rule of law that is so poorly defined? You do the best you can. That’s how.
“How do you draft a claim to protect subject matter that is categorically ineligible? You do the best you can. That’s how.”
Unfortunately the “best” is never going to be “good enough” when the rubber hits the road. And that’s why we have this ongoing farce where the CAFC pretends that fake structure is real structure and somehow instructions for a data processing machine carry with them some “essence” that suffices to confer eligibility, even when that essence is defined in a wholly functional manner (along with a perfunctory reference to a prior art tangible medium or a prior art tangible computing machine).
These “rules of law” that the CAFC has created are nothing more than activist ad hoc “exceptions” created out of thin air in order to prop up whatever type of data processing logic is deemed “important” on the given day that the particular panel convenes. Of course those rules don’t make sense when they are compared to each other. Of course contradictions abound. The judges are treating logical and philosophical abstractions (e.g., the “meanings” we lay on top of digital bits, or the assigned “associations” between those bits) as if they have some remotely objective and measurable physical structure. And that’s not the case.
These “guidelines” are illegal. And Iancu is a fraud.
Your feelings are noted.
As is the absence of any semblance of understanding the type of innovation that is at once most accessible to the non-wealthy AND the type you want to deny innovation protection to.
But hey, keep on spouting mindless ad hominem, because (to you) it is soooo “grown-up” and all.
None of those hypothetical claims would survive Alice, properly applied. They’ve done nothing more than added technical jargon and pseudo technical terms (“signals and/or states”) to disguise limitations reciting nothing more than conventional input from a user, and display of output on a conventional computer display screen. You’re still just claiming a spreadsheet implemented on a computer. You might get an allowance from an inexperienced or weak examiner, but it wouldn’t last very long in district court. The claim reflects outmoded Bilski-eta thinking; if I somehow recite computer-based concepts, I’m golden. That hasn’t been the law for many years.
The only way to salvage the original claim would be to follow the teachings of Alice; claim something that improves how the spreadsheet program itself operates. Perhaps there was nothing in the written description on this point, but one could imagine an eligible patent that disclosed an improved way of representing the cells in computer memory (similar to EnFish), or even a measurably improved user interface (Core Wireless). If you are making an improved spreadsheet program, rather than just putting a spreadsheet on a computer, you might have something.
But just trying to claim a spreadsheet-on-a-computer in such a transparent disguise, as the authors’ hypothetical claims do, is a recipe for invalidation.
“The only way to salvage the original claim would be to follow the teachings of Alice; claim something that improves how the spreadsheet program itself operates.”
OMG
In the hypothetical, THERE ARE NO SPREADSHEET PROGRAMS. This is the first one. The claimed subject matter improves how the COMPUTER operates. It adds a spreadsheet capability.
Where in that claim is the invention?
From a 102/103 standpoint, I don’t know that there is and invention recited. At a minimum, I think “cell” and its relation to other cells and the spreadsheet as a whole has to be fleshed out.
From a 101 standpoint, the last version at least clearly recites steps of a method.
In the hypothetical, THERE ARE NO SPREADSHEET PROGRAMS.
That’s an incredibly st 0 0 pit hypothetical.
Why? There was a time when there were no spreadsheet programs. Why is it “incredibly st 0 0 pit” to discuss a possible patent claim to the first one?
The answer to your question has been evaded by Malcolm since like forever (and at least as far back as the Grand Hall experiment).
Note how easily in engages in mindless disparagement rather than actually engaging in the merits of the discussion concerning the Grand Hall experiment.
Do you think that he has any real intentions of engaging in a meaningful conversation on the merits? Why would you think so, given his now approaching, what, 14 full years of blight here?
Novelty and 101 are totally separate inquiries, as you must know, and as explained by numerous Supreme Court and Federal Circuit cases. The bottom line, an abstract idea is still an abstract idea, regardless of whether it is “new.” You don’t improve the way the computer functions simply by making it carry out an abstract idea. If all you’re claiming is implementing that abstract idea on a computer, even if you’re the first person in the world to do it, you’ve placed your claims directly in the crosshairs of the Alice decision.
The reason so many practitioners have problems with this concept, as you apparently do, Les, is that most software-based inventions do not really recite any actual technological improvement that could pass muster under 101 under current case law. And even where there is some technological improvement somewhere in the invention’s implementation, a patent-eligible claim directed towards it would likely be incremental and narrow, easy to design-around, and even if infringed, the damages would probably be modest. It also takes too much thought for most patent practitioners to figure out what a valuable technological improvement would be. So most practitioners do the lazy thing, try to claim the underlying concept by dressing it up with technical jargon, as all of the hypothetical claims here attempt to do.
Current case law is the problem Lode_Runner.
Pretending that is not greatly diminishes your credibility.
PS: there is still no “technological arts” test in US patent law (even as you have not volunteered a non-circular definition for what you may deem “technological” anyway).
The “simple” example makes a few critical errors:
a thing such as a spreadsheet is not a “process.”
Software is not the execution of software.
This is compounded because the author is not taking into account the fact that the audience here comprises people only too willing to not take the innovation proposed into its context.
Those who actually support innovation and strive to provide patent protection for innovation may be able to take what is being offered and translate it into a proper legal understanding. Those eager to denigrate have been given “ammunition” TO denigrate.
One would think that Mr. Skaist would be seasoned enough to understand this and provide a better article (especially after his first foray generated much the same type of mockery as this one already has.
From Berkeley Group’s website I learned that :
“Our reputable firm was founded by the former Director of Patents at Intel Corporation, Howard Skaist.”
I looked up “reputable”. M-W tells me it means “held in esteem”.
So what does “esteem” mean”? Answer, the regard in which one is held.
Interesting. I had thought that “reputable” connotes a high reputation. It seems, not necessarily.
Which begs the further question: why include the word “reputable” at all, in this sentence on the website? What does it add?
Most people think it connotes a “high reputation.”
That’s what it adds.
In this post: Advanced drafting efforts to claim abstract ideas (aka lawlyers in rebellion against their supposed belurved courts).
I am sure David Boundy is going to make an important statement about this rogue agency action! He’s very serious!
I would question even the third claim try here re 101 rejection avoidance. Would it not be be somewhat better if at least the claim somehow expressly tied numbers entered into one or more computer software recognized display locations on a spreadsheet to computer software automatically entering a different number calculated therefrom into a different said display location?
expressly tied numbers
Somehow the 1 and the 5 always manage to wriggle away! Particularly when it’s spreadsheet data. Even worse when the data is associated with medical information. Like a wild mustang.
Also, the third proposed virtual VisiCalc spreadsheet claim in this article uses the words “signals,” which would be flapping a red cape in the examination bullring since the Fed. Cir. has held that signals are not patentable subject matter.
The signals in that claim are not being claimed per se (or as such).
This distinguishes from the (awful, albeit binding) In re Nuitjen case.
You have to remember the following about MM:
MM thinks that processing information is not patent eligible.
MM thinks that computers can have new functions without any new structure.
MM thinks that information is all the same. Processed information is the same as unprocessed information that there is no difference between information that identifies a tumor and information that tells the time of day.
MM thinks that … there is no difference between information that identifies a tumor and information that tells the time of day.
My machine just spit out: 23984932
Is that information that identifies a tumor, is it information that tells the time of day? Or something else?
Go ahead and tell everyone. I’m sure you’ve thought very deeply about this. You’re a very serious person, after all.
MM thinks that computers can have new functions without any new structure.
Well, they can but most of those functions would fail 101 (this is above your head, by the way). More importantly, however, I think that the exceptions the CAFC has created which allow logic/instructions “on a computer” to be protected using utility patents and functional claims language are farcical, pointless and damaging to the credibility of the patent system. And lots of people agree with me! Just like lots of people agree that you are not a very intelligent person. But go ahead and tell everyone again about all those bad, bad judges that were appointed by a black not-that-liberal president. And how you can’t wait for Ginsberg to die so she can be replaced by another mis0gynist pr ck. You are so very serious, after all!
MM thinks that processing information is not patent eligible.
That’s because it’s not. Never has been. Go ahead and write a claim that recites “A method of processing information, comprising taking data X, processing it by [insert non-obvious logic step], wherein said data X is transformed into data Y.” and try to assert it all the way to the Supreme Court. You’ll fail. And you’ll fail for all the right reasons. Not everyone is a a mindless patent huffing g0 0fball like you and your cohorts, you know.
With your “logic,” please wipe out the hard drives of all your computing devices and reformat them with your Britney Spears CD.
At the very least, in the short term, this will improve your communication tactics (and yes, zero would be an improvement from you
)
Regarding this claim
A method comprising: implementing a spreadsheet on a computer.
Howie writes:
I note that the guidance is quite specific in saying that the claim must “recite” matter that falls within the enumerated groupings. Thus, here, I would say it does not.
“Spreadsheets” are not eligible subject matter, Howie (they are ineligible abstractions, specifically, ordered collections of information) so either the guidance is a pile of total sh t from the starting point, or you are doing your best to not understand what the guidance says. Which is it?
Does your analysis change if the claim is
A method comprising: implementing an ordered list of information on a piece of paper
See any “abstractions” in there? Golly this is soooooooo hard. And so unfair!
LOL
How much LSD have you done, Howard? I’m curious because, before I buy any, I want to make sure that I get enough to travel to whatever galaxy you are obviously writing from.
Your invention is an improved spreadsheet, right? Tell everyone what the improvement is. That’s your invention. Use your words and tell everyone the improvement. Is the improvement in eligible subject matter? If not, then your claim is ineligible.
Trying to “scriven around” a case like Alice is to completely miss the point of Alice (and Prometheus). You don’t “scriven around” subject matter eligibility. You don’t “guideline yourself” out of subject matter eligibility (which is why Iancu is a fraud).
Back to the LSD, is it orange sunshine or white lightening that makes a person write an absurd claim like this:
A method comprising: … determining contents of one or more cells thereof, based at least in part on one or more user-specified operations to be applied to signals … [worthless prior art contextual g@ rbage deleted]
Let’s set aside for a moment the fact that this claim is older than the hills and there hasn’t been anything remotely inventive about it for centuries. The user specified operation is looking at information (the content of a single “cell” on piece of paper). The signal is reflected light. I determine the content of the cell by looking at the light reflected from it. Okay. Done. Got anything else that’s s00per d00per techno?
the claim language is pretty specific to make it clear that physical processes are taking place
What’s the “physical process” in that claim?
an examiner might say that a spreadsheet is a long-standing, fundamental economic practice
Or the Examiner could say that spreadsheets are in the prior art. That’s enough. The Examiner doesn’t need to say anything more than that. For an applicant to pretend otherwise would be sanctionable.
or that is a method of organizing human activities, demonstrating one danger with this particular grouping. It is, by its very nature, a bit vague.
Gotta love this. “This grouping is ‘vague’ because I can say something really silly about what this grouping covers and then say that it is ‘vague’. ” The grouping is not “vague”. Everybody knows what “organizing human activities” means. It means assigning abstract rules and titles to people and/or their proxies which affect when/how/where they can or could behave. A great example would be a claim that purports to create “networks” of “friends” that are identified by different colored stars on their foreheads, where “friends” have “access” to information that non-friends don’t.
the guidance says that to meet the second prong the claim is to integrate the judicial exception into a practical application that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort to monopolize the judicial exception. Being an advocate, my position would be that we have met this already with the claim above.
Beyond parody. I guess “being an advocate” means that everything is a “practical application.” Mustn’t suggest otherwise! ROTFLMAO Why don’t you “be an advocate”, Howie, and give us an example of a working method that is not “practical”? After all, this is the “escape hatch” for junk claims to sneak through and obtain patent protection. It may be the world’s only “escape hatch” that’s 99.99% as big as the ship itself.
to be especially hard on ourselves, perhaps we need to make it clear that some sort of result is generated
Have I mentioned lately that practitioners in the logic arts tend to be of relatively low intelligence? If not, let me pause here and note that practitioners in the logic arts tend to be of relatively low intelligence. But struggle onwards, boys! Writing method claims that generate “some sort of result” will come naturally to you in just a few years, I’ll bet. So let’s see what Howie has in mind for “some sort of result”:
generating a report that comprises at least … a sub-portion of the spreadsheet.
LOL A “report” comprising a “sub-portion” (totally different from a mere ‘portion’, no doubt!) of the spreadsheet is “generated” after looking at the spreadsheet.
it would be challenging to assert that a practical application with meaningful limits has not been claimed.
Maybe you should try doing so “as an advocate”, Howie. Put yourself on the other side of this junk claim. Is sp ew ing out a bit of non-specified information identified by nothing other than the source of that information a “practical application with meaningful limits”? If not, then what is a “meaningful limit” on a logic claim? Tell everybody.
I have three general observations to make in light of my “thought experiment” above. First, that my re-drafted claim would pass the Mayo–Alice Framework under the close scrutiny of a court at best is unclear
When you come down off your acid trip, rest assured that this g@ rb age claim is about as ineligible as they come.
the Patent Office has provided guidance intended to ferret out the more egregious cases of patent-ineligibility, thereby leaving it to courts to sort out closer question situations
If that’s what they intended then they failed miserably because your claim is nowhere near a “close case.”
given the vagueness at the edges of the first prong groupings, efforts by a patent claim drafter to comply with the second prong appear to me to be more likely to succeed.
Thanks for the admission. Because if that’s the case, what we here is Iancu completely ignoring precedent and creating a substantive legal loophole that turns 101 into a d e @ d letter. But we all knew that Iancu was going to do this because … he’s a fr@ ud and not very intelligent (why is this true of so many patent maximalists;?? golly, it’s such a mystery….)
Many pre- and post-Alice 101 cases have turned on whether the claims recited “how” to achieve the invention, see e.g. Morse, Finjan, Electric Power Group, and I V. I believe the PTO will need to explain the inclusion of “how” into the “practical application” aspect of the 2019 Guidelines Section II or add another criteria. Of course, “how” to achieve the invention can also be a circular logic drafting exercise because what defines the invention, the claims. Nevertheless, determining whether the claims set forth “how” to achieve the invention seems to be a more intuitive, objective, analyzable task than locating “an inventive concept” or “significantly more.”
determining whether the claims set forth “how” to achieve the invention seems to be a more intuitive, objective, analyzable task than locating “an inventive concept”
Comparing claims to the prior art is the most fundamental activity in patent law. If you find it difficult, you probably don’t belong in the profession and you certainly have no business opining on 101 on a patent blog.
Understanding that eligibility is NOT an exercise in comparing claims to the prior art is even MORE a fundamental activity in patent law and certainly a better indicator as whether you have any business opining on 101 on a patent blog.
Understanding that eligibility is NOT an exercise in comparing claims to the prior art is even MORE a fundamental activity for habitual patent huffing w @ nk ers like me
Fixed for accuracy.
Stop tr0 lling, Billy, and get back to your full-time job of oiling Big Jeans’ thighs so they don’t chaff so much.
LOL – more Malcolm Accuse Others…
(and what is it with your obsess10n with Quinn?