Read these Eligibility Guidelines from the USPTO

by Dennis Crouch

The USPTO has released pair of examiner guidance documents for (1) examination of patent eligibility and (2) examination for definiteness of functional claim limitations (with a focus on software patents).

Although these guides do not have the force of law, they are quite important because they direct the bureaucratic process — telling examiners how to examine patent applications for these issues. Examiner performance will be adjudged based upon their ability to comply with the guidance.  In general, I would expect that examiners will be more quickly swayed by citations to the guidelines rather than to citations to particular court decisions.  Examiners will be trained in the upcoming weeks and training materials will be available at the PTO website.

Here, I will focus on the eligibility guidelines and leave definiteness for a separate post.

Prior iterations of eligibility guidelines focused on a listing of post-Alice cases as examples for examiners to follow.  Examiners are typically not attorneys and are not expected to read cases — that makes this case-focused approach problematic in the long-term.  In the new 2019 iteration, the PTO has attempted to synthesize case law in a way that is practical for examiners.  The PTO is also suggesting that this approach will be more reliable and more predictable.  The USPTO does not have the power to shift the legal definition of eligibility.  However, the Agency is given discretionary authority to design a practical administrative mechanism for implementing the law as given.  That is how I see the PTO’s approach here. Now lets look at two of the important changes from prior guidance documents: .

Categories of Abstract Ideas: The inquiry of Alice/Mayo Step 1 is whether the patent claim is “directed to” an “abstract idea” or other excluded area.  The first important guidance change here is to create three of categories or “groupings” of abstract ideas:

  • Mathematical Concepts
  • Methods of Organizing Human Activity
  • Mental Processes

Under the guidance, claims that do not recite matter within one of these three groups “should not [ordinarily] be treated as reciting abstract ideas.”  The guidance does note a “rare circumstance” where an abstract idea might fall outside these categories.  While this approach does not settle the ongoing question of what counts as abstract, it does go a long way toward helping examiners decide when to reject claims.

“Directed To” an Ineligible Concept: The PTO guidance has also focused-in on the Supreme Court’s “directed to” requirement that finds claims problematic only if “directed to” the ineligible concept.  For that element, the PTO asks examiners to consider whether the ineligible concept is “integrated into a practical application.”

A claim is not “directed to” a judicial exception, and thus is patent eligible, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.

The guidance for analyzing this issue focuses on whether keywords of whether the claim uses the ineligible subject matter in a way “that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.”

Although the document is written primarily as examiner guidance, it is also being applied to PTAB judges and is being seen as a statement of PTO policy.

170 thoughts on “Read these Eligibility Guidelines from the USPTO

  1. 17

    As loathe as it may be, should one note that the spin of “directed to” appears to be very close to the EPO spin of “per se” and “as such”…?

    Software and business methods (if you know how to scriven them) have become quite comfortable in the EPO system even as there is a direct prohibition on BOTH (with, of course, the prohibition being critically constrained by the caveats of “per se” and “as such”).

    Take a software innovation, for example.

    It is hardly a step at all to move from the “per se” to the “safe zone” by writing the claim to be an application thereof.

    Interestingly, since the PHOSITA most easily understands what is being claimed by the actions the software induces when the software is applied, the natural consequence of what so often troubles others here in the US (words sounding in function) is the very thing that moves the claim TO BE in the “safe zone” of an application thereof and outside of the “per se” region.

    1. 17.1

      …and MaxDrei can correct me, but the fact of the matter being that software innovation is something that when “in the application thereof,” will involve software being a machine component (a part of — and a distinguishing factor thereof [see The Grand Hall experiment]), the “technical” aspect that the EPO Sovereign has chosen (as is their right as a sovereign), is easily met for most all software innovation.

  2. 16

    >>U.S. applications of foreign origin versus U.S. origin
    1) The statistics aren’t complete and we need more information.
    2) What is the definition of the above? I have consistently referred to applications that are filed for inventions made in the USA. I suspect your statistic is based on foreign priority vs. non-foreign priority. This is different.
    3) What is 2018?

    4) Additionally, what I have said is that it is bothersome that people like Lemley are using a gross measure of the number of patent applications filed to try to support the thesis that the weakening of the patent system from Alice and the AIA has not lessened the innovation engine of the US.

    5) Additionally, I have said that the patent application filings need to be normalized per inflation adjusted billion dollars of GDP that is generated from technology.

    6) Etc. Doesn’t really matter as everyone on this blog that is anti-patent always feels free to mischaracterize what I say.

    1. 16.1

      Plus from what I’ve heard it is important to include 2018.

      1. 16.1.1

        That’s a bit unrealistic given that you are talking about a government operation (quite different than what may happen in a corporate setting in pounding out performance numbers for the next quarterly report).

        1. 16.1.1.1

          Right and some of the corporations have given their numbers and they look down about 3-4 percent.

    2. 16.2

      Answered at 15.5.3.

    3. 16.3

      NW, since you have continued discussion on this other blog, I will assume you are assuming that there are a significant number of applicants for foreign inventions that are filed in the U.S. without claiming any priority to a foreign application? But how often is that likely to occur? There are obvious logical reasons that is not usually done. Including that, just as in the U.S., many foreign countries would require special government approval to first disclose the invention in a foreign patent application.
      Also note that if the recent changes in patent law have made filing patent applications in the U.S. less desirable because patents are less valuable [which is not even in dispute, just the inconsistent filing facts], it would have the same effect on foreign applicant filing decisions as it does U.S. applicants. I.e., both should significantly decline on that basis, not the ratio changing.

      1. 16.3.1

        Paul, this is just an outcome of the “count” filter that has been put in place.

        Notably, this count filter is based on the fact that a certain narrative was NOT being achieved.

        Those largely unaffected with the count filter (the Malcolm types that employ drive-by monologues and do NOT engage on the merits of discussions) clearly benefit from this particular editorial control feature.

  3. 15

    Since at least one commentator here likes to repeat a Trumpian-style “fact” that the percentage of U.S. applications of foreign origin versus U.S. origin has recently greatly decreased recently from its traditional roughly 50-50, due to the subject and other U.S. patent law changes, and thus U.S. based applications were allegedly substantially decreasing. So I finally got inspired to make a written USPTO inquiry to get an official USPTO response for actual facts. The % numbers below are for utility patent applications taken from the official PTO table that they sent me [design and plant applications also remain nearly 50-50] :
    2017 51.6
    2016 51.2
    2015 51.1
    2014 50.7
    2013 49.6
    2012 50.5
    2011 50.8
    2010 50.6
    ***
    2004 46.9

    1. 15.1

      Sorry, I do not quite understand what that table conveys. Is that the percent of US origin apps, or the percentage of ex-US origin apps?

      Not that this actually matters in the least…

      1. 15.1.1

        Yes, thanks Greg, these numbers are the % of U.S. applications that are of foreign origin, by year.

        1. 15.1.1.1

          Thanks for the clarification, Paul.

          So there is a very subtle secular trend toward an increase in ex-US origin apps as a percentage of the total US filings over time. Of course, this is exactly what one should expect to happen in a world in which China is becoming rapidly wealthier and more interested in R&D. In fact, the surprising thing is how slowly that increase is happening, relative to how quickly China’s innovation sector is growing.

          Once again, not that any of this makes a fig’s worth of difference to (pardon the pun) the price of tea in China…

          1. 15.1.1.1.1

            Greg, this very small rate of increase in the % of U.S. applications that are of foreign origin seems surprising smaller the much larger relative increase in foreign R&D and foreign GDP compared to the U.S.

            1. 15.1.1.1.1.1

              All excellent points – but in a larger analysis, the disparity may be viewed as a negative to the promotion of innovation in the US (and protection of same here).

              As can be seen in the historical examples of burgeoning new innovation areas such as early medical diagnostics and early software, innovation (and protection thereof) may MOVE to geographic areas in which such are more readily (or more strongly) protected.

              The fact then that we do NOT see ingress into the US may indicate that those with growing emphasis on innovation are choosing NOT to engage in the US.

              THAT would be even worse than the fears expressed by Night Writer.

              1. 15.1.1.1.1.1.1

                Paul, can you define “of foreign origin”. The biggest BMW factory in the world is in the USA. Are the cars it makes “of foreign origin”. Likewise all the patent applications filed at the USPTO by US-registered subsidiaries of “foreign” Big Pharma?

                And anyway, a domestic:foreign 50:50 split is stable equilibrium, isn’t it? Like it has been at the EPO for donkeys years.

                1. MaxDrei,

                  What does “stable equilibrium” even mean (especially when one considers the facts as provided by Paul that there exists unstable indicia Of growth and innovation from Sovereign to Sovereign?

                  As I noted, the relatively flat indicator here would tend to portend to a worse situation than the one that Night Writer harps upon, which is what drove Paul to dive into the figures in the first place.

                  It is very much as if Paul wanting to disprove the underlying fear that Night Writer warns about by looking into Night Writer’s alleged facts actually proves a worse fear with the actual facts (with those actual facts viewed in a proper comparative context).

                2. …I would further note that your post here in so far as “origin” reflects my observation below already added to the conversation at post 15.5.2.

    2. 15.2

      Despite my dismissive, I do thank you, Paul, for troubling to find real numbers. Perhaps this will put an inane meme to rest, although somehow I doubt that.

      1. 15.2.1

        I doubt it as well, given how easily the meme can be turned (much like Supreme Court authority) into a projective, subjective, conjectural, “what MAY happen” view.

        What’s good for the Court is good for commentators here, eh?

    3. 15.3

      Very nice. Thanks Paul (see some of my noted caveats to other stats used on this blog, for example, the number of small inventors over time).

    4. 15.4

      The commenter goes by the name “Night Writer” and he’s “anon’s” bff. He’s also infamous for comparing critics of software patenting to “terrorists in Iraq”, a comment which was greeted with a favorable response by “anon.”

      No need to p ssyf00t around this stuff. These people are just entitled @ h0les, totally full of sh t, and reliably wrong about pretty much everything.

      1. 15.4.1

        Yay for the “bff” one-bucketing!

        Must make it easier for Malcolm to keep tab of “the band people.”

        1. 15.4.1.1

          …. damm autocorrect:
          “band” => “bad”

      2. 15.4.2

        Any comment I may have made MM pails in comparison to your endless stream of vulgarity and se xual ac cusations.

        1. 15.4.2.1

          Never mind the real blight that he refuses to engage in any meaningful, inte11ectually honest manner on the actual points of law that come up for discussion….

    5. 15.5

      >>U.S. applications of foreign origin versus U.S. origin

      1) The statistics aren’t complete and we need more information.

      2) What is the definition of the above? I have consistently referred to applications that are filed for inventions made in the USA. I suspect your statistic is based on foreign priority vs. non-foreign priority. This is different.

      3) Etc.

      1. 15.5.1

        What is 2018?

      2. 15.5.2

        I have consistently referred to applications that are filed for inventions made in the USA. I suspect your statistic is based on foreign priority vs. non-foreign priority

        Additionally, one should also take into consideration whether ANY filing (generated in any particular location which may drive foreign priority versus non-foreign priority) is from a multi-national entity.

        Such entities, while enjoying the benefit of being a juristic person, are much more likely to NOT owe any allegiance to any actual sovereign and thus would naturally be more apt to play the “move the cheese” game and take advantage of cost factors (among other factors) that dictate where benefits of innovation may actually inure.

        I would also point out here that Greg’s view (as expressed previously) in regards to some “innovation anywhere is good” fails to grasp the reality that Sovereigns DO compete with each other on innovation assets. Anyone doubting this really has not been paying attention to the history of sovereign (and sovereign sponsored) industrial espionage.

      3. 15.5.3

        NW, these statistics are clearly defined as the % of all U.S. applications, not “based on foreign priority vs. non-foreign priority” and their total application numbers check with those provided on this blog and elsewhere. Inventions made in the U.S. are of course almost always filed from within the U.S., not from foreign origins since that would present technology export control legal issues. The 2018 statistics are not yet provided by the PTO, or I would have listed them.

        1. 15.5.3.1

          Inventions made in the U.S. are of course almost always filed from within the U.S., not from foreign origins since that would present technology export control legal issues.

          These are routinely handled and present no impetus as you seem to suggest.

          It has been a while since you were active in prosecution, has it not Paul?

          1. 15.5.3.1.1

            No it is not a problem Paul. And your statistics are not the ones I asked for.

            In fact I have always made it clear that there is a distinction between foreign priority vs. foreign origin.

        2. 15.5.3.2

          And there are signs that in 2018 there is a significant drop in patents granted.

    6. 15.6

      Additionally, what I have said is that it is bothersome that people like Lemley are using a gross measure of the number of patent applications filed to try to support the thesis that the weakening of the patent system from Alice and the AIA has not lessened the innovation engine of the US.

      Additionally, I have said that the patent application filings need to be normalized per inflation adjusted billion dollars of GDP that is generated from technology.

  4. 14

    2A-Prong2 now refers repeatedly to the “additional elements” of the claim. It’s bizarre to me how much of the “practical application” test of 2A-Prong2 is just a reworded version of the “significantly more” of 2B.

    “if an examiner had previously concluded under revised Step 2A that, e.g., an additional element was insignificant extra-solution activity, they should reevaluate that
    conclusion in Step 2B. If such reevaluation indicates that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this
    finding may indicate that an inventive concept is present and that the claim is thus eligible.”

    Apparently unconventional insignificant extra-solution activity can qualify as “significantly more”.

    1. 14.1

      It won’t be “extra-solution” if — upon re-evaluation — there is a tie to it being a practical application.

      Maybe this is just a way of saying “REALLY take the claim as a whole.”

      Or, in the “Berkheimer” sense, that entire claim (as an ordered combination) MUST ALSO be conventional (which as Malcolm grouses, is MORE than merely not novel or obvious) in order for the 101 rejections to stick.

      I think that there is also a “jab” at examiners in requesting that “re-evaluations” are to be done. I can easily see “attorney argument” requesting for evidence of such re-evaluations if the canned responses from examiners follow the line that David Stein put forth.

      1. 14.1.1

        “if an examiner had previously concluded under revised Step 2A that, e.g., an additional element was insignificant extra-solution activity, they should reevaluate that
        conclusion in Step 2B.”

        “Revised step 2A” means under Son of MoT, the examiner determined that there was no practical application as the additional elements were insignificant extra-solution activity. The guidance suggests that when considering the unconventionality of those elements, that insignificant extra solution activity can then become “significantly more”.

        1. 14.1.1.1

          reply still stuck in count limbo…

  5. 13

    Surprisingly, there isn’t much discussion here on what the PTO means by “practical application.” Can someone please tell me how a claim would not have a “practical application”? Further, where is the PTO getting this from? The CAFC has not taken into this Practical application” test in any major way. Has Director Iancu overstepped his role here?

    1. 13.2

      I think the “practical application” test is for the judicial exception rather than the claim. So a claim to “(abstract idea) + (practical elements wholely unrelated to abstract idea)” would fail.

      I’d like to see an explanation of why was Alice not a “practical application” of intermediated settlement?

      1. 13.2.1

        I do not think that your attempted “re-thinking” fits the actual words.

        That being said, you do raise a valid point in relation to how this would play in the Alice case.

        One might consider that any inconsistency with the new marching orders that you have been given and the attempted re-writing of statutory law by a branch of the government lacking authority to re-write the law must fall to you following the un-re-written law.

        To anyone with a critical mind, it really is inevitable that the scrivining of the Court must one day face its own results of a Gordian Knot and overplay of the Court beyond their reach.

      2. 13.2.2

        Ben: “I’d like to see an explanation of why was Alice not a “practical application” of intermediated settlement?”

        Fact is; it was indeed a practical application of intermediated settlement.

        The problem occurred when SCOTUS decided they were part of the Executive Branch for this decision.

        1. 13.2.2.1

          Is an intermediated settlement an apparatus or a composition of matter? How much does it weigh? Does it weigh more or less than an unsettled dispute? Same melting temperature?

          Plainly it’s not an abstraction so it must have some objective physical properties, at least according to one “expert” (LOL) here mumbling about the Supreme Court changin’ everything up. Probably this “expert” (LOL) can show us the transcript where Frederico and Giles Rich are talking about patenting methods of settling disputes in between those wonderful moments where they madly lick each other’s faces while staring into the vacuums behind their shark-like eyeb@ lls.

          1. 13.2.2.1.1

            Floating old canards with an extra helping of snark only highlights your lack of inte11ectual honesty Malcolm.

      3. 13.2.3

        Alice did not claim a practical application of the abstract idea of intermediated settlement (a fundamental economic principle) because the claims did not recite: an improvement to a technological field, a medical treatment, a tie to a specific machine, a transformation of matter, or a meaningful tie to a technological environment that was more than insignificant extra-solution activity.

        Unfortunately, things get a little circular here — if it had any of those things, then the new guidance wouldn’t be in accordance with SCOTUS precedent.

  6. 12

    I would love to see a coherent rebuttal to the statement that the heightened “conventionality” requirement for eligibility is not illegal. Coherent does not include “CAFC said so!” or “Supreme Court dicta says so!”.

    Put another way, I’d like to see anyone defend, from a policy or statutory standpoint, the idea that you can re-patent the prior art by tacking on ineligible subject matter as long as the prior art is not “conventional” or “routine.” In your rebuttal, please address the facts that (1) prior art that is not patented is permanently a part of the public domain (2) you can’t patent logic or information on its face, nor can you patent logic or information by limiting it to a prior art context.

    Let’s hear the argument. This is where the rubber meets the road, people. Step up and be serious.

    1. 12.1

      I would love to see a coherent rebuttal to the statement that the heightened “conventionality” requirement for eligibility is not illegal. Coherent does not include “CAFC said so!” or “Supreme Court dicta says so!”.

      I would love to see a coherent STATEMENT as to why a heightened “conventionality” requirement for eligibility — or ANY type of “let’s compare to state of art statement — “is not illegal” (or at least tied to the actual words of Congress).

      As to your “the idea that you can re-patent the prior art by tacking on ineligible subject matter as long as the prior art is not “conventional” or “routine.”” – that’s a strawman of yours, since you are the only one putting out an argument on “re-patenting” (and your argument is flawed from the “Claim as a whole” standpoint, as well as from the fact that you are confusing and conflating patent eligibility and patentability.

      As to your “ nor can you patent logic or information.” yet again you peddle your canard of what you feel software is, which has been rebutted by asking you how your copyright project on “just logic” is coming along. Not sure why you ask a question over and over and over again when you are inte11ectually dishonest and do not answer the counter points already presented to you.

      Wait, this is Malcolm. I do know why. “Step up and be serious” indeed.

    2. 12.2

      “(2) you can’t patent logic or information on its face, nor can you patent logic or information by limiting it to a prior art context.”

      Can’t you?

      A method, comprising:
      receiving input data representing a field of view of a roadway at or near a traffic intersection, the input data including data collected from a first sensor, and data collected from a second sensor;
      analyzing the input data within a computing environment in one or more data processing modules executed in conjunction with at least one specifically-configured processor, the one or more data processing modules configured to fuse the data from the first sensor with the data from the second sensor, by
      identifying a first object detection zone in the field of view from the data collected from the first sensor, and a second object detection zone in the field of view from the data collected from the second sensor,
      selecting a plurality of boundary points in the first object detection zone, and a plurality of points in the second object detection zone that correspond to the boundary points in the first detection zone,
      estimating a transformation matrix for a planar area comprising the field of view by mapping the plurality of points in a plane of the road roadway as seen by the second sensor, to the plurality of boundary points in a plane of the roadway as seen by the first sensor to correct a perspective distortion between the data collected by the first sensor and the data collected by the second sensor to transpose the first object detection zone onto the second object detection zone to create a combined detection zone, by applying the selected points that correspond to the plurality of boundary points to calibrate arbitrary planar coordinates between the first object detection zone and the second object detection zone, and mapping a plurality of vectors representing common data points to transform the arbitrary planar coordinates to find an equivalent zone location and an equivalent shape between the first object detection zone and the second object detection zone; and
      evaluating one or more attributes of the combined detection zone to detect an object in the field of view of the roadway.

      US 10,140,855B1

      link to patents.google.com

      1. 12.2.1

        10,140,855B1 is eligible in my scheme: its a method, the method results in information, the information is consumed by a non-human actor.

        Very likely obvious to a PHOSITA (or anyone who has done panoramic photography)….

        1. 12.2.1.1

          You are ineligible according to your criteria.

          1. 12.2.1.1.1

            Marty is ineligible under most any criteria.

            Your reply will not help Marty find his way back to a cogent legal path. If anything, he will agree with you and take that agreement as some type of affirmation for his odd views.

            1. 12.2.1.1.1.1

              We will see who has the last laugh fellas.

              A dozen or more (at least) highly qualified lawyers have told me that my concept not only works, is not only better than the status quo, but in fact is they way they are now thinking about it.

              That’s usually the case when a good solution emerges; it becomes difficult to see it any other way.

              I think the CAFC is going to come around to it too, eventually.

              The seeds are already evident in recent rulings (esp. in re: Guldenaar), it’s the logical extension of the printed matter doctrine, and it hits exactly at the core of what abstraction really means.

              You doofi are gonna be on the wrong side of history.

              1. 12.2.1.1.1.1.1

                Let me know when Congress gets involved (that’s the branch actually authorized to write the statutory law that is patent law).

              2. 12.2.1.1.1.1.2

                Also, as to the “doofi” reference, you should know that your view is not in accord with the law (hence, would NEED Congress to get involved) and it is that FACT that earns most of the disdain for you, since you seem unable (unwilling) to recognize what the law IS now.

                IF the law is changed, THEN I will speak of the law as it were to be. There is ZERO “doofi” involved in being correct on the current law, and no amount of passage of time will ever change that correctness and place me “on the wrong side of history.”

                1. Yes, the preferred solution would be to modify Section 100(b) to read: a process which results in information consumed by human beings may not be patented. Processes intended to improve information processing without regard to the content or meaning of the processed information are exempt from this requirement.

                  But your out of touch notion that only Congress influences patent law is just that, as proven by the last 50 years of actual experience.

                  And you never, ever say which law my proposal is out of step with. Process is whatever someone says it is, until Congress or a court says otherwise.

                2. a process which results in information consumed by human beings may not be patented.

                  ALL processes may result in information consumed by human beings.

                  ALL.

                  Marty, you cannot move forward until you move back to the basics — and that includes understanding innovation and utility (especially in the patent sense).

                  You keep wanting an end result wrapped up in a pre-conceived notion. You simply cannot get there from here (and especially when you do not try to understand the terrain within which you want to postulate).

                  As to “But your out of touch notion that only Congress influences patent law is just that, as proven by the last 50 years of actual experience.” – you are NOT following what I am saying as regards to proper legal Means.

                  “Influence” is all fine and good, and impacts the proper legal means NOT AT ALL.

                  And you never, ever say which law my proposal is out of step with.

                  As I told you in the first instance, you had more than 20 critical errors in your abstract alone.

                  Your views are simply not connected with the reality of patent protection under the laws of the US (nor are they connected with underlying innovation theories).

                  Your views ARE a manifestation of your oddities, touched by your own negative experiences, flavored by the Kool-Aid of anti-software propaganda, of which you have shown an unhealthy desire to ingest.

                  Process is whatever someone says it is, until Congress or a court says otherwise.

                  Unsurprisingly, wrong from the start. See 35 USC 100(b). Then realize the history behind the Act of 1952 has been extensively written about explaining how the legal terms of art are to be understood.

                  One of your problems is that you do not (nor do you even attempt to) understand that legal and historical context. You think it perfectly fine to come in from the great blue yonder with your own (unconnected) concoctions and redefine things as you so choose. You do not even realize that you do not know the terrain within which you want to “do battle.”

                3. 100(b) says a process is a process and is a tautology. Everyone knows that.

                  A process to dig a hole results in a hole, which is a void in the dirt. That is not information. Maybe you can whip up some rationale as to why a hole in the ground is actually an item of information. Please do so.

                  You make sandwich after sandwhich after sandwich, but in the end, you write two pieces of bread and refuse to place anything between them, I suspect because your larder is bare. What other reason could there be?

  7. 11

    I appreciate the new guidance, but it won’t change anything.

    Here’s the problem. Let’s say that a particular technique involves the combination: ABCDEFG, and you have an improvement of E that we’ll call Q. You claim it as: ABCDQFG.

    * Pre-Berkheimer rejection: “The claim provides C, which is an abstract idea X. The remainder of the claim (ABDQFG) fails to provide significantly more.”

    * Pre-Berkheimer applicant reply: “Q certainly provides ‘significantly more’ than C. As specification pars. [0025]-[0028] describe in detail the problem that Q addresses (as an improvement to E) and the technical effects.”

    * Pre-Berkheimer examiner reply: “Don’t care. The End.”

    Then along comes Berkheimer: “You can’t just blow off a ton of claim elements and say they’re ‘conventional.’ That conclusion can’t be an examiner ‘smell test’ – we now require extrinsic support.”

    Now we have;

    * Post-Berkheimer rejection: “The claim provides the abstract idea X. The claim elements that provide the abstract idea X are: ABCDQFG, which are ‘similar to’ the idea X that was held abstract in the case of Crouch v. Quinn. All remaining claim elements (really just the preamble) are conventional computing hardware.”

    * Post-Berkheimer applicant reply: “ABCDQFG provide far more than X – they are a specific solution to a specific technical problem, as specification pars. [0025]-[0028] describe in detail.”

    * Post-Berkheimer examiner reply: “Don’t care. The End.”

    The central problem – both pre-Berkheimer and post-Berkheimer – is that examiners are permitted to lasso a bunch of claim limitations and flush them down the drain by characterizing them as something simple. That is true even if the lassoed claim elements include the specific point of novelty. Nothing in the MPEP about § 101 provides that an examiner must consider, and respond to, an applicant’s argument that a PARTICULAR claim element provides an improvement over conventional technology. Not even if that element is well-claimed; not even if it’s integrated in a complete soup-to-nuts embodiment (rather than a disembodied idea); not even if it’s explained in the specification; not even if it’s wholly absent from the art, or even if the art explicitly teaches away from it. By lassoing Q together as part of ABCQFG, the examiner blanket-rejects the whole thing without ever addressing, specifically, the point of novelty.

    The only difference induced by Berkheimer and this new § 101 guidance is… the stock template that the examiner uses. Whether that characterization is rejected under Step 2B as “conventional” or under Step 2A as “collecting, processing, and displaying data.”

    Until we have some court opinion (probably several) requiring § 101 rejections to SPECIFICALLY address an applicant’s argument that a SPECIFIC claim element being (a) non-conventional and (b) not generic “data processing” but a technical improvement – where the penalty for refusing to address any such argument is a failure of the prima-facie rejection and a reversal by the PTAB or a court – we will be stuck where we are today, and where we were on June 20th, 2014 (one day after Alice).

    1. 11.1

      David, assuming that will still be the rejection in spite of the new “101” guidelines, what are the applicants practical options? [In addition to arguing that “ABCDQFG provide far more than X – they are a specific solution to a specific technical problem, as specification pars. [0025]-[0028] describe in detail.”] File an expert declaration that specified claim elements or their functional combinations are NOT well known and conventional? Demand a CFR 1.102(a)(d)(2) examiner affidavit to support the examiner position that all the claim elements and their functional combinations are actually well known and conventional? File a pre-appeal conference request? Appeal? Or something else?

      1. 11.1.1

        David said initially that the improvement was in Q. Odd, then, that he insists on arguing that the “specific solution” (to what?) includes a bunch of prior art elements. But then that’s the software patenting game isn’t it?

        Learn how to write better claims. I know this is hard advice for the softie woftie crowd to accept because the whole farce rests on pretending that software is somehow not being protected (because it’s ineligible).

        1. 11.1.1.1

          the whole farce rests on pretending that software is somehow not being protected (because it’s ineligible).

          Software is eligible.

          Innovations that may be represented in software terms may also be represented in other terms, given that software has equivalent** design choices in firmware and hardware – as has been pointed out to you since the beginning of your curse-ade against a particular form of innovation.

          Heck, I have even provided a rebuttal to you on your (oft repeated) attempts to elevate an optional claim format into somehow not being an option with the counter point that any claim that you happen not to like for being “softie-woftie” COULD be written in “objective physical terms” of any particular media with the software indicia described in its physical terms. That such a claim format option COULD be taken (but that would result in claims being tens or hundreds or even thousands of pages long, and not be recognizable to the human eye — BUT would satisfy your canard — has not been answered by you. Instead, all that we see from you is your drive-by monologue, Internet-style shout down of repeating your lame positions without regard to the counter points presented.

          It is more than just a bit disingenuous of you then to pompously demand “some serious” explanation as to any point in the 101 discussion. Heck, even your “learn to write better claims” is completely misguided, because claims are meant to be written in particular for the Person Having Ordinary Skill IN THE ART, and you apparently have so much disdain for the particular art, that any sense of reason or cogency from you disappears when the subject comes up.

          **equivalent of course is in the patent sense, and certainly avoids the trite “rebuttal” of those who demand an exactness, which is simply not a legal requirement in regards to the term of equivalence.

      2. 11.1.2

        what are the applicants practical options?

        Good question. I’ve had good luck at the PTAB: most often, examiners choose to reopen examination (and give due weight to the point of novelty) rather than file an Examiner’s Answer, but I’ve also won by board decision.

        It is my personal belief that if you have:

        (1) A specification that describes why Q is different than typical solutions and that describes the technical advantage of Q,

        (2) A claim that specifically and unambiguously recites Q (as part of a solution to a legitimate problem, where the other usual steps of the solution are also recited to give Q its proper context), and

        (3) A legitimate argument that the prior art (either the single reference cited under 102 or each of the several references cited under 103),

        …and the examiner is relying on the usual boilerplate (“the claims, including Q, involve collecting, processing, and displaying data; nothing else is in the claim”), and fails and/or refuses to address your (repeatedly presented!) technical arguments…

        …then (a) you should win at the PTAB on appeal (either on the briefs or on decision), and (b) the examiner’s next action will usually be a straight-up allowance rather than doing the hard work of conducting a new search and reopening prosecution.

        What’s more – I believe that if you file continuations with broader claims than those allowed after the appeal, examiners are likely to be more deferential. I think that they just don’t want to lose again, or that their supervisor is telling them not to spend any more time on the case than absolutely necessary.

        This really isn’t how examination is supposed to work, and I blame the PTO’s extraordinarily tolerance for examiners doing whatever they want right up to the point of appeal.

        To put it in the context of the big picture: Bad rejections often lead to bad allowances. When the examiner cites references in ways that are inexcusably wrong, they will respond to losing an appeal by allowing claims that might not have been adequately searched and reviewed.

        So anyone who’s interested in improving “patent quality” must recognize that part of the solution is improving examination quality up front. The PTO must stop tolerating technically incorrect rejections. Examiners who lose appeals because of bad rejections should face more repercussions than simply “you can’t spend any more time on that application.”

        1. 11.1.2.1

          (1) A specification that describes why Q is different than typical solutions

          Most competent grown-ups put that information in the claims.

          But we know that you’re just playing a game, David. Fun! Sure, hide the actual alleged innovation in the specification and bury it in an overly scrivened claim brimming with silly jargon that obscures to the greatest extent possible the relationship of that innovation to the prior art.

          Oh, and then complain when you get slapped in the face.

        2. 11.1.2.2

          The PTO must stop tolerating technically incorrect rejections.

          Impossible when we’re not talking about “technology” and there is no legal framework for patenting (LOL) “improvements” (LOL) in logic or instructions or information.

        3. 11.1.2.3

          The PTO must stop tolerating technically incorrect rejections.

          Absolutely.

          And this is one reason why Greg’s “politeness” to the ramblings of Random are actually a disservice.

          Random likes to employ his own version of reality, with Greg’s “gee, that’s interesting, so thank you for that view” only serves to encourage the type of technically incorrect rejections that examiners employ (and build their private bureaucratic empires with).

          Unless and until Type II errors are treated as (if not more) severely as Type I errors, you will always get the “Don’t care. The End.” mindset.

          1. 11.1.2.3.1

            yawn, I get upheld virtually all of the time and I’d like to remind anon that my scoreboard on the Supremes is almost perfect, while he is constantly wrong.

            He just can’t accept that it is virtually impossible to prove that you possess the entirety of a functional scope, because it requires you to show than you know all the ways of something occurring, which you can’t do in non-deductive cases.

            1. 11.1.2.3.1.1

              remind anon that my scoreboard on the Supremes is almost perfect, while he is constantly wrong.

              That’s a bug for you — not a feature.

              Of course, to realize why, you would need to apply (and in the first instance, appreciate) critical thinking.

    2. 11.2

      You are correct that more “specificity” in an ineligible element will not render it eligible unless that specificity introduces non-abstract subject matter with a non-obvious tangible connection to the rest of the non-abstract claim elements.

      This is as it should be. Learn to write better claims. Also begin dealing with the fact that the end of software patents is an inevitability and there is no “swinging back” of the pendulum.

      1. 11.2.1

        Your feelings are noted.

      2. 11.2.2

        It strikes me that there is a gap between the claimed subject matter, to wit: ” “collecting, processing, and displaying data” and Applicant’s assertion that this subject matter corresponds to the solution of a “technical” problem achieved by a new combination of “technical” features. Could it be, MM, that no matter how hard David tries, to draft his claim “better”, the gap is unbridgeable?

        At least until the specification is drafted, from the very outset, before any patent application is filed, by a practitioner well-versed in patentability law at the EPO, in such a way as to come successfully through prosecution at the EPO.

        Or are you telling us that things have got so bad at the USPTO that claims duly issued by the EPO cannot survive scrutiny by a USPTO Examiner?

        1. 11.2.2.1

          Could it be, MM, that no matter how hard David tries, to draft his claim “better”, the gap is unbridgeable?

          It could be. I have no idea what the improvement to “E” is, and it’s not clear whether the other elements are arranged differently from their arrangements in the prior art.

          But if you’ve got an improvement in E that is valuable, I would suggest simply claiming it. Oh but wait! You can’t do that if the improvement is improvements in software because … software by itself is ineligible for patenting, as is logic, as is “new” data.

          Of course, once you let that cat out of the bag, then everything else is just a silly kabuki performance. David is right that none of these guidelines will change anything. There is only way to change anything without making the situation worse for the patent system and David won’t like it.

          1. 11.2.2.1.1

            There is only [one] way to change anything without making the situation worse for the patent system and David won’t like it.

            Your “worse” for the patent system only reflects your feelings towards a certain type of innovation.

            That dichotomy of yours remains: why are you so against the one form of innovation that is most accessible to the non-wealthy while you continue to parade your liberal left anti-wealth rhetoric?

            The dichotomy does match your cognitive dissonance on supposedly being a patent attorney that helps people obtain this private personal property right (obstinately, to make money), and yet more than 99% of your postings are anti-patent.

            Maybe you should step out in order to be serious. As it is, given your rampant feelings and disconnect with innovation protection, ALL of your rants are simply (and easily) discounted as biased and unfounded in any reasonable or legally cogent basis in the statutory patent laws as written by Congress.

    3. 11.3

      Here’s the problem. Let’s say that a particular technique involves the combination: ABCDEFG, and you have an improvement of E that we’ll call Q. You claim it as: ABCDQFG.

      * Pre-Berkheimer rejection: “The claim provides C, which is an abstract idea X. The remainder of the claim (ABDQFG) fails to provide significantly more.”

      * Pre-Berkheimer applicant reply: “Q certainly provides ‘significantly more’ than C. As specification pars. [0025]-[0028] describe in detail the problem that Q addresses (as an improvement to E) and the technical effects.”

      Either you mistyped or I don’t think that’s a problem. If your improvement is E->Q and the Examiner cites C as what the claim is directed to, the argument is under the first step: Examiner is misreading what the claim is directed to, so you shouldn’t be arguing significantly more under Step 2, you should be arguing Step 1, so the issue is you’re making an incorrect argument (and further, there’s likely a 103 rejection to your improvement E->Q if Q is being called conventional under Berkheimer).

      Otherwise, (assuming you meant that the Examiner correctly identifies Step 1) I think that’s working as intended. When the improvement comes from using ineligible subject matter, the claim is ineligible. It’s not whether the abstraction provides ‘significantly more’ – that’s just repeating the utility test. It’s whether there other limitations render the claim significantly more than the abstract idea.

      The central problem – both pre-Berkheimer and post-Berkheimer – is that examiners are permitted to lasso a bunch of claim limitations and flush them down the drain by characterizing them as something simple.

      But again that’s the feature of the law, not a bug in the examiner guidance. Have you seen the length of the claim in Electric Power Group? Ultramercial? Either the examiner is improperly characterizing the claims at a high level of generality (Enfish) or the examiner is properly characterizing claims that are abstract. The fact that you write them as a plurality of limitations isn’t relevant because eligibility does not depend upon the scrivener’s art. Isn’t your complaint here really with 101 jurisprudence?

      That is true even if the lassoed claim elements include the specific point of novelty.

      Again, that is the point of 101. Alice’s point of novelty was the intermediated settlement functionality. If a computer had already done intermediated settlement, there would have been a 102 rejection. The vast majority of the time when a 101 is necessary is when the improvement is, e.g. a method of organizing human activity or math.

      Nothing in the MPEP about § 101 provides that an examiner must consider, and respond to, an applicant’s argument that a PARTICULAR claim element provides an improvement over conventional technology.

      Berkheimer requires that the conventionality of an element must be shown in evidence. But that evidence likely exists in the same document that forms the basis of a 103 rejection to the claim.

      Whether that characterization is rejected under Step 2B as “conventional” or under Step 2A as “collecting, processing, and displaying data.”

      Well the law is that limiting by the *type* of information is irrelevant, EPG, so if what the claim is doing is commanding a processor to process information, it’s ineligible unless there is an unconventional analysis step. If the analysis step is claimed functionally (i.e.generally, you start the element with “determine” or “analyze” or “generate” and it lacks a particular wherein clause), that claim should be tanked. If it’s limited to a particular unconventional analysis, the argument is that the examiner improperly characterizes the claim at a high level of generality, because this is a particular unconventional analysis. Unconventional analysis appears to be eligible (per EPG) unless the ultimate goal does not improve a computer.

      It’s hard to say anything definitive without looking at a particular situation, but there’s a significant difference between “This computer takes your bank statement and analyzes it to determine where you could save money” which is likely ineligible with “This computer takes cluster resource data and applies this particular equation to determine which device should host a new VM” which is likely eligible.

      1. 11.3.1

        Random,

        You are simply wrong on nigh every single one of your comments.

      2. 11.3.2

        RG: The vast majority of the time when a 101 is necessary is when the improvement is, e.g. a method of organizing human activity or math.

        Or when the “improvement” is the recitation of data content, or when the “improvement” is the recitation of logic applied to data.

        there’s a significant difference between “This computer takes your bank statement and analyzes it to determine where you could save money” which is likely ineligible with “This computer takes cluster resource data and applies this particular equation to determine which device should host a new VM” which is likely eligible.

        Of course, absent the exceptions which have been introduced arbitrarily (by the judiciary) to segregate these two types of data processing, there is no difference whatsoever between these two claims, at least not from an eligibility perspective. They are both ineligible and the analysis should be straightforward. People who desire predictability in eligibility need to understand this because the judicial generation of legal abstractions to sift through non-legal abstractions (i.e., “kinds” of data processing instructions) is necessarily going to incredibly messy and contradictory. When terms being used in claims to describe the invention are not tied to anything concrete in the first instance, it’s impossible (or f00 lish) to be hopeful about the predictability of ad hoc adversarial-driven attempts to distinguish between the relative merits of those vaporous terms.

        1. 11.3.2.1

          Feel free NOT to use any of that innovation that you feel is so “vaporous.”

          Let me know how that works for you (and yes, that would need be outside of electronic communications for you).

      3. 11.3.3

        When the improvement comes from using ineligible subject matter, the claim is ineligible.

        Diamond v. Diehr. That is all.

        1. 11.3.3.1

          Big Box of Protons, Neutrons, and Electrons.

          That is really all.

        2. 11.3.3.2

          Diamond v. Diehr. That is all.

          Ugh, I miss the dear Ned Heller, who understood this case.

          “Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures, because the temperature of the molding press could not be precisely measured,thus making it difficult to do the necessary computations to determine cure time. [Footnote 3] Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. But the shortcoming of this practice is that operating with an uncontrollable variable inevitably led in some instances to overestimating the mold-opening time and overcuring the rubber, and in other instances to underestimating that time and undercuring the product.

          Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold. These temperature measurements are then automatically fed into a computer which repeatedly recalculates the cure time by use of the Arrhenius equation.”

          In Diehr, the prior art used an inferior equation that was necessitated by the inability to constantly measure and control the actual temperature. The improved art used a new process that was capable of generating new inputs – the constant measurements of temperature – and consequently could apply a better equation.

          It is true that Diehr improved the curing, and it is true that the curing was improved, in part, because of the Arrhenius equation. But the argument was not “we invented the Arrhenius equation” or “we applied the Arrhenius equation to this machine.” The argument was “we developed the ability to constantly measure the temperature which allows us to use the previously unusable arrhenius equation to improve the curing process.” But a process that allows one to constantly measure the temperature (i.e. a new means of gathering information) is unquestionably patentable. The claim would have been eligible if it never mentioned arrhenius, because it had utility and was non-obvious even prior to the use of arrhenius.

          Diehr expressly states “The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation” which makes it unlike your proffered hypothetical because you do not raise a Step 1 argument against the rejection. As you’ll notice I said above, if the problem is that the examiner finds the claim is directed to something else than you, then the thing that you should do is argue Step 1, not complain about how Step 2 doesn’t save you.

          Diehr stands for the unsurprising position that a claim is not tanked because it uses or includes ineligible subject matter, just so long as the claim is not DIRECTED to that ineligible subject matter, which is something you knew from the Alice Step 1/2 procedure anyway. Diehr does not, however, suggest that when an improvement comes from ineligible subject matter, the claim is eligible. If that were true Alice would have been decided differently, because it’s unquestionable that it improved a computer, and that the improvement came from the ineligible subject matter.

          If you’re getting an EPG-based rejection (The claims are directed to obtaining, analyzing, and displaying data) Diehr is only going to help you if the purpose of your claim is to claim a new sensor to obtain information that was previously unobtainable. EPG itself alludes to that outcome, as it distinguishes new types of data or new analyses from its holding.

          1. 11.3.3.2.1

            Ugh, I miss the dear Ned Heller, who understood this case.

            The late Ned Heller NEVER understood that case — leastwise, he would not engage on the merits of that particular case when it came to his own attempts to advance a “Point of Novelty” argument.

            The reason for that of course was excessively clear.

            As to: “If you’re getting an EPG-based rejection (The claims are directed to obtaining, analyzing, and displaying data) Diehr is only going to help you if the purpose of your claim is to claim a new sensor to obtain information that was previously unobtainable.,” maybe you need to read the claims and the court decision again – the Point of Novelty in the claims was NOT to a new sensor. Here’s a hint: there was NO new sensors in the Diehr case.

          2. 11.3.3.2.2

            If you’re getting an EPG-based rejection (The claims are directed to obtaining, analyzing, and displaying data) Diehr is only going to help you if the purpose of your claim is to claim a new sensor to obtain information that was previously unobtainable.

            Is that so? Tell me, where is the sensor in this claim? –

            1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

            providing said computer with a data base for said press including at least, natural logarithm conversion data (1n), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,

            initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

            constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

            constantly providing the computer with the temperature (Z),

            repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is where v is the total required cure time,

            repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

            opening the press automatically when a said comparison indicates completion of curing.

            Diehr’s claim does not recite “a new sensor.” Indeed, the claim does not recite “a sensor” at all. Nor does the specification – which uses the phrase “surveillance system” exactly once and in purely functional terms. All Diehr’s claims, and indeed Diehr’s patent, recite is that measurements are (somehow) continuously captured and (somehow) continuously provided to a computer.

            So I find your argument – that Diehr is only helpful if the point of novelty is a new sensor when Diehr’s patent includes no such reference – to be rather unpersuasive.

            Diehr expressly states “The respondents’ claims were not directed to a mathematical algorithm or an improved method of calculation” which makes it unlike your proffered hypothetical because you do not raise a Step 1 argument against the rejection.

            That’s what the Court found, after reviewing the entirety of the specification.

            But this post is not about what courts, including the Court, would hold when given a full review of the specification. As I indicated, I’ve won a lot of appeals because the Board on those kinds of arguments.

            This post is what patent examiners would do, what they are required to do by USPTO administration and the Board according to the MPEP and case law. 80% of examiners would reject Diehr’s claims today because it is “directed to” calculation, because at least one step looks kind of mathy. That’s the examination climate we face today.

            If your improvement is E->Q and the Examiner cites C as what the claim is directed to, the argument is under the first step: Examiner is misreading what the claim is directed to…

            That line of argument is a waste of time before today’s patent examiners.

            Examiners believe that “directed to (x)” means: “one or more elements involve (x).” If there is any one step that involves some type of determination made by a processor, examiners will say that it is “directed to collecting, processing, and outputting data” and therefore patent-ineligible under § 101 based on Electric Power Group and/or Digitech Image.

            I don’t actually fault examiners here, because the courts have been enormously inconsistent. Consider these cases in the Federal Circuit has weighed in on patent-eligible subject matter – and contrasting cases in which the Federal Circuit found similar subject matter, in the same general technical field, to be “directed to” an abstract idea:

            Visual Memory: The Federal Circuit reversed a lower court holding that the claims were directed to “categorical data storage.”

            Amdocs: The Federal Circuit reversed a lower court holding that the claims were directed to “collecting data, recognizing certain data within the collected data set, and storing that recognized data in a memory.” (Contrasting case: BASCOM.)

            Enfish: The Federal Circuit reversed a lower court holding that the claims were directed to “storing, organizing, and retrieving memory in a logical table” or “the concept of organizing information using tabular formats.” (Contrasting case: BSG Tech.)

            Ancora Technologies: The Federal Circuit reversed a lower court holding that the claims were directed to “selecting a program, verifying whether the program is licensed, and acting on the program according to the verification.” (Contrasting case: Affinity Labs.)

            Aatrix Software: The Federal Circuit reversed a lower court holding that the claims were directed to “collecting, organizing, and performing calculations on data to fill out forms.” (Contrasting case: Internet Patents Corp.)

            Data Engine Technologies: The Federal Circuit reversed a lower court holding that the claims were directed to “using notebook-style tabs to label and organize spreadsheets.” (Contrasting case: Apple v. Ameranth.)

            Thales Visionix: The Federal Circuit reversed a lower court holding that the claims were directed to “using laws of nature governing motion to track two objects.” (Contrasting case: Vehicle Intelligence and Safety.)

            The Federal Circuit cannot make up its mind as to what “directed to” means. Nor can the courts, generally. And by extension, neither can the USPTO.

            Everybody is winging it.

            1. 11.3.3.2.2.1

              It is worse than “everyone winging it.”

              Far worse.

              As the CAFC itself labeled the “gift” from the Supreme Court, what you have is Common Law law writing.

              A number of critical faults exist:

              This is precisely (in no small part) what generated the awakening of Congress to react against an anti-patent Supreme Court and pass the Act of 1952.

              This type of Common Law law writing is ultra vires and beyond the authority of the Supreme Court (let alone any other court of the judicial branch).

              This type of Common Law law writing has absolutely no place in the executive branch, let alone with non-lawyer examiners or a “judicial function” of an administrative agency with one of the worst separations from its political side.

              To top all of that off, we have a rampant problem of various groups celebrating the Ends being reached through these illicit Means. Attorneys (supposedly) even – the very type of people who should recognize the danger especially in legal matters of an Ends justify the Means mindset.

            2. 11.3.3.2.2.2

              Diehr’s claim does not recite “a new sensor.” Indeed, the claim does not recite “a sensor” at all. Nor does the specification – which uses the phrase “surveillance system” exactly once and in purely functional terms. All Diehr’s claims, and indeed Diehr’s patent, recite is that measurements are (somehow) continuously captured and (somehow) continuously provided to a computer.

              That wasn’t the issue being decided though. This isn’t a case where the issue was the 112a sufficiency of the disclosure with respect to the claim scope. The lower courts decided based upon the fact that it used the arrhenius equation, and that is (to use Alice parlance) an improper application of Alice Step 1, the court corrected that application. *That* was the issue before it – is merely using or reciting ineligible subject matter improper? No, it is not.

              You are taking “sensor” too literally, which I suppose is due to poor word choice for me. As I quoted from the case – the alleged improvement was in the ability to measure the temperature. Because sensors measure things, I shortened it to “they have a new sensor.” Regardless, that is the feature that rendered the claims eligible, and the inclusion of the equation did not render it ineligible, because the claim was not directed to the equation.

              80% of examiners would reject Diehr’s claims today because it is “directed to” calculation, because at least one step looks kind of mathy. That’s the examination climate we face today.

              Based on your view of the specification, that doesn’t really sound improper, does it? As I allude to above, the fact that the court answered a question in favor of the patentee based on the record below does not mean that the claim is a valid claim.

              But to take your broader point – It is likely that Examiners misapply Alice Step 1 occassionally. But it is also true that when, as you point out, alleged novelty is mentioned in a single sentence and claimed functionally, that may mislead the examiner in their analysis.

              I can understand it’s frustrating. I can tell you it’s frustrating for the examiners too. Most of us aren’t lawyers, and most of us don’t like arguing law, which isn’t really our wheelhouse for most of us. On top of that, this isn’t settled law, and all you need to do is read this board to see there’s major disagreement amongst lawyers as to how things should go.

              There’s no doubt in my mind that if you showed an odd or borderline claim to 10 primaries, you’d get 10 different answers on 101. There’s really nothing that can be done by that, as the only thing that would marginally improve things would be to hire lawyers instead of engineers. That wouldn’t do all that much better anyway.

              Examiners believe that “directed to (x)” means: “one or more elements involve (x).” If there is any one step that involves some type of determination made by a processor, examiners will say that it is “directed to collecting, processing, and outputting data” and therefore patent-ineligible under § 101 based on Electric Power Group and/or Digitech Image.

              Possibly. People rarely claim things unrelated to the end goal. If you’re doing Z because you determined Y based on information X, I think most lawyers would argue that the invention is doing (technical thing) Z. But most of the time the important conclusion is the determination Y.

              If I place a virtual machine on a host because I determined that the host is the least loaded host, the invention is not really “solving the technical problem of where to place a virtual machine”, the invention is “determining the least loaded host” followed by the unsurprising step of assigning a new host to that host. The utility in the invention derives entirely from the greatness of the determination algorithm, and if the determination step is claimed functionally with no particular means other than maybe a few inputs upon which the determination is “based on” then that is, to me, a valid 101 rejection that ought to stand.

              So obviously I agree on principle that the mere fact there is a “determine” step does not mean the claim is directed to that step, but let’s also not pretend that the step is unrelated to the end goal – counsel isn’t shackling the claim with limitations for fun. Certainly if the end goal depends entirely upon the determination the 101 should be made, while if step is minor an argument under Alice Step 1 could be made.

              The Federal Circuit cannot make up its mind as to what “directed to” means. Nor can the courts, generally. And by extension, neither can the USPTO.

              The underlying problem is that the examiner has the burden of going forward and the applicant is not confined to their suggested novelty. I have a case right now where it is clear from the specification what the alleged novelty is, and once that was found suddenly the alleged novelty became something else entirely. Now that’s certainly within the applicant’s power to do that, but given that the examiner has to make the rejection in the first instance, its unsurprising they want to make the rejection to put you on paper about what the claim is directed to.

              Here’s an interesting legal question I have mulled over – suppose the claim as filed is directed to ABCDE. I find an anticipatory reference. Applicant amends to ABCDEF and argues the reference does not have F, so it fails to anticipate. Given that the applicant did not dispute the anticipation of ABCDE, is it accurate to say that the claim is now “directed to” F, regardless of how small or insignificant it is? Is the examiner bound to what the specification suggests the claim is directed to? That seems incorrect, as it would do precisely what the court doesn’t want and allow a competent draftsman to control eligibility.

              1. 11.3.3.2.2.2.1

                You dance so much — and contradict yourself so much, I lost count.

              2. 11.3.3.2.2.2.2

                …your last paragraph in part reveals the Kool-aid stains around your lips. It really does not matter one iota (for proper legal effect) that the Court has this concern with “scriveners.”

                It has been Congress that dictated exactly who controls eligibility (and to be precise, controls as to who gets to decide what an invention is directed to).

                This is what 35 USC 112 contains.

              3. 11.3.3.2.2.2.3

                Your last para is interesting to me, RG, in my role as a European patent attorney, accustomed to the “ABCDE characterized by F” situation you outline.

                Is the EPO Examiner”bound”? Does the EPA, in making the “+F” claim amendment, thereby “control” eligibility? The key importance in Europe, of what technical features and effects are disclosed in the application as filed, renders moot any debate about “directed to” and “control” of eligibility by use of claim amendments.

                But do write more, if you feel that I have missed the point. You write that you have been mulling it all over. Tell us more about your mullings, do.

              4. 11.3.3.2.2.2.4

                Is the examiner bound to what the specification suggests the claim is directed to?

                First question: as you should know, the examiner IS bound by what the applicant in writing the claim shows what the invention is “directed to.” This is the flipside of 35 USC 112 from the requirements OF the applicant. IN exchange for those requirements, it is the applicant that has been granted the authority by Congress to set what is being “directed to.”

                That seems incorrect, as it would do precisely what the court doesn’t want…

                What the Court wants or doesn’t want simply does not provide the Court the proper authority to write (and re-write) patent law.

                You keep glomming onto the policy indicators of a broken score board when you should be realizing that what you are glomming onto are the indicators of just why that score board is broken.

    4. 11.4

      “Conventionality” is already d.o.a. Any attorney who tries to avoid the prior art by arguing unconventionality is, at best, buying time for the non-inventor client. But the patent claims are ga rb age for the reasons I’ve provided (go ahead and rebut if you can — good luck).

      1. 11.4.1

        You are a legend in your own mind.

        Nowhere else, mind you, but in your own mind, WOW.

    5. 11.5

      Well that’s the heart of it in Alice. SCOTUS resurrected the ‘gist’ or heart of the invention, flash of G type tests, of which in all these tests boil down to ignoring claim elements. Heck, Alice might even be worse than the old second circuit law that the ’52 Act specifically rejected with the 101,102,103,112 paradigm. For example, 103 is not part of 101.

      1. 11.5.1

        Hush, iwasthere, that type of critical thinking will get you one-bucketed as a Patent Maximalist.

    6. 11.6

      No, the central problem is the difference between abstract claims, and abstract inventions. If the invention is eligible, the putative abstract claim is a 103 or 112 issue. If the invention is ineligible, there is no invention at all, and the case ends.

      An abstract claim is one where the inventor does not possess the invention, because the difference between the prior art and the invention is an aspiration, or because the difference is a variation, not an innovation.

      This notion that abstraction exists on a singular level cannot stand.

      OK, so what’s an abstract invention? It’s one where a human mind processes the result to obtain the utility, which is automatically 100% abstract, always.

      1. 11.6.1

        Your argument has the obvious problem that all modern patent law relies on a peripheral claiming system in which the invention is defined by the claims. There is no distinction between “the invention” and “the claim” – there is only the invention as claimed. To illustrate: Diehr is held up as to the high-water mark for a patent-eligible claimed invention; yet, that venerable care would have reached a very different result if the claim only read: “…programming a computer to control a rubber-curing apparatus by calculating curing progress according to the Arrhenius equation.”

        Looking past that error – to a limited extent, I agree with you.

        It’s become abundantly clear that Alice is a hydra – a conflation of several legitimate grounds on which a claimed invention is invalidated:

        The field of the disclosure is patent-ineligible. (Bilski v. Kappos) (Here, the problem is not “the invention” vs. “the claim” – it is that any claim reciting the subject matter of the disclosure is ineligible.)

        The claim is set in a not-entirely-patent-ineligible field, but recites a concept that is disembodied from any specific implementation, and hence is overbroad and preemptive. (O’Reilly v. Morse, Metabolite; conversely, McRo and of course Diamond v. Diehr)

        The claim recites a conventional solution to a non-technical problem using non-inventive machinery. (DietGoal, EveryPennyCounts)

        It is problematic that these distinct objections to patent-eligibility have all been conflated into a poorly-fitting, overgeneralized procedural framework. Each type of objection really should have its own custom-formulated analytic framework. Instead, Alice permits examiners and courts to throw a bunch of MPEP boilerplate and cherry-picked quotes from court opinions without ever saying, specifically, what the problem is.

        A recent rejection that I encountered characterized all of the dependent claims – en masse – as patent-ineligible because they recite “one or more” of (laundry list of a dozen “abstract idea” listed in the MPEP), as described in “one or more” of (laundry list of a dozen case names). Do examiners even believe in the concept of a prima-facile rejection requirement these days? We’re one step away from: “Claims 1-20 rejected based on st least part of MPEP pages 1-10,000,000.”

        1. 11.6.1.1

          David I agree with you, likewise to a limited extent, but philosophically, claims are made of words, and inventions are made of something else.

          While they are one in the same in the current legal scheme (and all patents of course are made of words) we can also clearly distinguish the words and the article(s) that they describe.

          That means that all claims are abstractions, but that does not mean that all inventions are abstractions. Some inventions areabstractions, which for policy and philosophical reasons we do not wish to patent, but some claims are too abstract, which strike me as two quite separate issues.

          Which leads me all the way back to which abstract inventions ought to be “inventions patentable” for those same policy and philosophical reasons, and which should not be.

          My answer remains the same. Information used by people is always, 100% abstract, and should be beyond the reach of the patent system. Information used by non-human actors cannot be abstract, because no human mind= no possible abstraction. Abstraction does NOT mean tangibility.

          Abstraction is a measure between one idea and another. When the abstractions describe mechanical, or chemical relationships, we have no problem coming to an identical understanding of the abstraction. When the abstractions involve the use of information, we can never assure that each user gains any similar measure of utility or understanding.

          1. 11.6.1.1.1

            This is not a pipe.

            1. 11.6.1.1.1.1

              Yea, and a hole in the ground is not “information”, so the utility of a shovel is not “information consumed by a person”

              1. 11.6.1.1.1.1.1

                You wildly miss the point of the comment.

                Why don’t you throw a little thinking into the hole of your reasoning, there?

  8. 10

    An interesting footnote 2 in the 112 Guideline;
    “2 As is existing practice, examiners may also issue “Requirements for Information” pursuant to 37 C.F.R. 1.105. This notice does not affect current practice regarding “Requirements for Information,” which remains a tool examiners can use to help resolve, among other things, issues regarding compliance with § 112 during examination.”

    [Will this inspire greater examiner actual use of 37 C.F.R. 1.105? Like “please specifically identify the specific parts of the specification and drawings that enables the functions recited in the following claim language:__________”?

    1. 10.1

      This footnote 2 continues at the bottom of the next page as follows:
      “See, e.g., MPEP 704.10-14. For example, an examiner may request information about written description support, continuation in part support, issues related to 112(f), or enablement issues, among other things. See, e.g., MPEP 704.11(a)(K), (R), (S)(2)-(3).”

    2. 10.2

      My understanding of requirements for information is that they require director approval, which means they are de facto impossible to do.

      We also theoretically have the power to reject claims for want of a necessary limitation, which would allow me to de facto force you to write your claim as I see fit, but that never gets used either.

      I once made a rejection to a feature, which I’ll call B. It was A leads to B which leads to C. In response, Applicant simply deleted limitation B. I was told that there was nothing the office could do about this, as A was enabled, and C was enabled, and nothing was forcing applicant to claim B. Neat trick, applicant.

      1. 10.2.1

        We also theoretically have the power to reject claims for want of a necessary limitation, which would allow me to de facto force you to write your claim as I see fit

        Talk about your bureaucratic, power-hungry, and oh, by the way, absolutely wrong mindset….

        1. 10.2.1.1

          Talk about your bureaucratic, power-hungry, and oh, by the way, absolutely wrong mindset….

          Once again, you forget that I don’t care what happens to your claim, I get paid either way. If they let me, I’d allow everything, finish my biweek production in one day, and take a 13 day break till I do it again.

          Me rewriting your claim simply saves all of the time of me making a series of rejections as you flounder around with indefinite and unsupported scopes.

          Many people have talked about what a “premium” or “gold level” examination would be. I think a premium examination would be 2-3 interviews, followed by me marking up the claims with reasons as to why each change needs to be made, and then argument back and forth as to changes the inventor disagrees with. It really saves time and money compared to you making incremental changes over the course of months that I have to keep rejecting.

          1. 10.2.1.1.1

            You should not be an Examiner with an attitude so reeked in bureaucracy.

            If to you it is all about “what they let you in order to have the easiest path,” you are exactly the wrong type of person to be involved in any aspect of innovation protection.

            Your “my rewriting your claim… series of rejections” sounds all good until one realizes that YOUR version of rejections (as exemplified by your comments on these boards) is most often not in accord with the law, and are exactly the type of rejections that my clients will be glad to pay for me to contest.

            It is not all that helpful** to obtain YOUR versions of allowed claims which depart from the protection my client deserves.

            **of course, this is not universally true, as some clients merely want a padded war chest and would be content with accepting the nonsense that you suggest. So there is worth in you making sugggestions, but please, work to make suggestions in accord with the real law and not your projected fantasy version that we all see in these boards.

            1. 10.2.1.1.1.1

              Always a hoot when “anon” gives career advice to other commenters. Just stick to servicing your clients “anon”. Buy some knee pads maybe.

              1. 10.2.1.1.1.1.1

                Not sure why you think such is a “hoot,” unless of course, one does consider the typical Malcolm most-common meme of “Accuse Others.”

                (or maybe, YOU should stick to tending to your own “clients” and your rampant anti-patent psychological cognitive dissonance… THAT would be a full time job for you.

            2. 10.2.1.1.1.2

              Your “my rewriting your claim… series of rejections” sounds all good until one realizes that YOUR version of rejections (as exemplified by your comments on these boards) is most often not in accord with the law, and are exactly the type of rejections that my clients will be glad to pay for me to contest.

              Right, so if I think a claim needs X limitation to be enabled, me making a rejection saying “You need X to be enabled” is still compacting prosecution from me making “Claim 1 is unenabled” rejections for several actions while you try and hit on X. Either way, you’re capable of arguing/appealing the enablement rejection.

              1. 10.2.1.1.1.2.1

                Read again my reply Random – the problem is (more often than not) your rejection itself is bogus.

                The fact that you MAY want to provide a way around your bogus rejection will — for the most part — be something clients are willing to both reject AND pay me to continue fighting your bogus rejection.

                But note that I DO provide that clients MAY elect to take you up on your “help” around your bogus rejection. Hey, that’s the client’s choice, and if the client wants to pad their war chest with your “help,” it won’t matter much to the client that your rejection (for which you are offering help) is, was, and remains, bogus.

                More likely than not, that “fight” would be saved for a continuation.

      2. 10.2.2

        Re: “My understanding of requirements for information is that they require director approval..” But this Guideline, with that footnote, is signed by this Director. Ask for clarification.

        1. 10.2.2.1

          The “director” Random references refers to technology center directors (second level managers).

          Guidance: This notice does not affect current practice regarding “Requirements for Information,”

          MPEP 704.10: An examiner or other Office employee may make a requirement for information reasonably necessary to the examination or treatment of a matter in accordance with the policies and practices set forth by the Director(s) of the Technology Center.

          Seems crystal clear to me.

          “Reminder! It’s business as usual today!”

      3. 10.2.3

        “My understanding of requirements for information is that they require director approval, which means they are de facto impossible to do.”

        Usually fairly easy if you actually need to do one. Instead of formally requesting information, hold an interview to discuss whatever reference is at hand, or whatever 112 issue you are pondering, and see if you cannot work out an amendment to overcome/avoid such issue to propose or work with the attorney to see if they can draft one if you’re not good enough at drafting.

        “Neat trick, applicant.”

        Neat trick federal circuit you mean.

  9. 9

    Although the document is written primarily as examiner guidance, it is also being applied to PTAB judges…

    Are you sure of that? Where do you see mention of this? I can remember in the wake of the last round of Guidance that the PTAB was (correctly) very emphatic that their job is to apply the law, and the Guidance was not law.

    1. 9.1

      Greg,
      Agency guidance interpreting the law binds the agency – where did the PTAB say they are not bound by it? See Service v. Dulles, 354 U.S. 363, 386–88 (1957) (agency manual was binding; violation of that manual was ground for setting aside agency action); Yale-New Haven Hospital v. Leavitt, 470 F.3d 71, 80 (2nd Cir. 2006) (“An interpretative rule binds an agency’s employees, including its ALJs.”

      1. 9.1.1

        Ron, these are not Rules, and very little of these guidelines are even PTO interpretations of patent statutes. Most of it comprises selected statements from selected Fed. Cir. decisions.

        1. 9.1.1.1

          Paul, read the cases I cited — they both speak of an agency manual — not a regulation. And the subject PTO guidelines are in fact an interpretation of the statute — Section 101. As such Office Actions clearly state, the rejections are made under Section 101 — not under anything else. Note that I was addressing Greg’s comment on whether PTO guidance is binding on the PTAB; it matters not whether the guidance also cites to CAFC decisions — any agency published guidance stating its policy is binding on the agency.

          1. 9.1.1.1.1

            This is an interesting discussion. Comparison with the EPO might help. Practitioners plead their cases there by reference to i) the examination “Guidelines” and ii) the “White Book” of the “established caselaw of the Boards of Appeal” of the EPO.

            If you are at a Hearing before a Division of Examiners, and aim to win, well then you cite the Guidelines. And win. Don’t bother with the White Book, if the case you cite has not yet made it into The Guidelines.

            If you are pleading to a Board of Appeal, NEVER mention the Guidelines. Those are for the lower classes, the punkah-wallahs of the administrative instance. Up at the judicial instance, cite the law, especially the law that has reached the status of “established”.

            1. 9.1.1.1.1.1

              Your eyeglasses are wonderful and I am so happy for you that they improve your vision, but no thank you to your offer for my to wear them to improve my vision.

              Here, one may choose to cite the MPEP and guidance at the “lower” examination stage, but if the law is on your side, and — as does happen, the MPEP misstates the law — one does not use the misstatement.

              Further, depending on the situation (i.e., a procedural matter), one fully may want to cite the aspects of binding guidance at a “higher” level.

          2. 9.1.1.1.2

            Your cited SCOTUS case concerned whether the Secretary had followed the State Department Regulations, which were reproduced in its “Manual of Regulations and Procedures.” The case was thus about compliance with regulations, not about “violation of that manual.”

      2. 9.1.2

        Agency guidance interpreting the law binds the agency – where did the PTAB say they are not bound by it?

        You will want to look at Ex parte Lukyanov, Ron (US 11/607,828, appeal decided 05/25/2017). In responding to an analogy that the appellant had drawn between its claims and one of the eligible example in the 2014 Guidance, the PTAB began “[a]s an initial matter, we are not bound by the Interim Guidance.”

        1. 9.1.2.1

          Great link.

        2. 9.1.2.2

          Dozens, thanks for the cite.
          I am not sure whether the Board said what it said because the guidance was merely “interim.” In any event, see my detailed answer to Paul @ 9.2.1 below. I suspect that the Board will refrain from taking such positions, lest it receive another sobering rebuke by the CAFC as it did in Aqua Products.

    2. 9.2

      Greg, I think Dennis was referring to the page 2 101 Guideline statement that:
      “The 2019 Revised Patent Subject Matter Eligibility Guidance applies to all applications, and to all patents resulting from applications, filed before, on, or after [FR publication]”
      But as “dozens” at 9.2.1 notes, in “Ex parte Lukyanov (US 11/607,828, appeal decided 05/25/2017) the PTAB began with “[a]s an initial matter, we are not bound by the Interim Guidance.” My recollection is that traditionally the Board was not bound by MPEP claim interpretations either. Also, the “to all patents” clearly does not bind any federal courts either. Of course if there was really any conflict between what the Director wants and the Board holds the Director could request an expanded Board decision.

      1. 9.2.1

        Paul,
        Again I would ask where you get the notion that “traditionally the Board was not bound by MPEP claim interpretations either.” I would caution against relying on the Board’s own proclamations as to its authority – the Federal Circuit has already chastised it in Aqua Products for its profound misapprehension of its role under administrative law and for exceeding its authority under the Patent Act and the APA. As the author of the IEEE-USA comments on Motions To Amend, I have also demonstrated this in the context of PTAB’s denial of such motions to amend in IPRs. See Sec. 2.2 at link to uspto.gov .

        The legal reality is that the Board is a collection of PTO employees appointed by and serving at the pleasure of the Director. Courts have recognized that such agency bodies are bound not only by published agency rules but also by unpublished rules (guidance). Gulf States Mfrs, Inc. v. NLRB, 579 F.2d 1298, 1308-09 (5th Cir. 1978) (“it was not necessary for [an agency manual] to be so published in order for it to be binding on the Board.”). Similarly, the MPEP’s interpretation of the statute and the regulations is binding on the PTO: Refac Int’l, Ltd. v. Lotus Development Corp., 81 F.3d 1576, 1584 n.2 (Fed. Cir. 1996) (“The MPEP … is entitled to judicial notice as the agency’s official interpretation of statutes and regulations.”) (Emphasis added); In re Kaghan, 387 F.2d 398, 401 (CCPA 1967) (“[A]n applicant should be entitled to rely not only on the statutes and Rules of Practice but also on the provisions of the MPEP in the prosecution of his patent application.”) (Emphasis added); PerSeptive Biosystems Inc. v. Pharmacia Biotech, Inc., 225 F.3d 1315, 1321 (Fed. Cir. 2000) (“Examiners are required to reject applications under 35 U.S.C. § 102(f) on the basis of improper inventorship” as provided in MPEP § 2137.01. “Accordingly, the [MPEP] details the ‘rules’ of inventorship to be used by examiners.”) (Emphasis added).

        I cannot see any substantive legal distinction between the MPEP and the two 2019 Guidance documents – they all contain the PTO’s “official interpretation” of the statutes and are binding on all PTO employees. I am aware of no statute or regulation that carves-out APJs from that class. The PTAB is not an Article III court. See David Boundy’s articles at link to cambridgetechlaw.com

        1. 9.2.1.1

          of course, if the Board decides in an IPR that they agree with a 3PR’s proposed 101 rejection ignoring both PO’s arguments towards a ‘practical application’ as well as this new added step entirely, saying again that they are not necessarily bound by the new guidelines, and the rejection is otherwise in good concordance with existing case law, and the PO appeals, what would we expect the federal circuit to say?

          i’d expect them to uphold the rejection.

          1. 9.2.1.1.1

            Would it be a fair translation of your post to say that the new USPTO guidance is not in accord with existing case law?

            Otherwise, how do you get to your point of “is otherwise in good concordance with existing case law“?

            As I pointed out to Ben, one very real possibility here is that the Office is subtlety stating that NOT ALL of the existing case law is actually binding law (in accord with the words of Congress).

            Heck, given the natural state (and meaning) of Common Law law writing, it is more than evident that the existing case law CANNOT all be in accord and binding, because the sum total of the existing case law is a Gordian Knot of conflicting opinions.

            Directly on point here is that the impetus of this change is expressed as the “difficulty” in continuing to follow the flow of Common Law law writing that is going on.

            That’s one ENORMOUS elephant in the room.

            1. 9.2.1.1.1.1

              i can think of at least a few patents invalidated as ineligible at the Federal Circuit using the standard Alice/Mayo test that further claim what a reasonable examiner could be convinced is a ‘practical application’.

              the office may say that the Board is bound by these new guidelines, but when push comes to shove they’re going with the courts, not the manual.

              guess it depends on the specific training coming along with this policy, and where exactly the bar is for something being a “practical application”. we’ll have to see.

              1. 9.2.1.1.1.1.1

                i can think of at least a few patents invalidated as ineligible at the Federal Circuit using the standard…

                I have no doubt.

                No doubt at all.

                the office may say that the Board is bound by these new guidelines, but when push comes to shove they’re going with the courts, not the manual.

                What will happen is that they will TRY to go with both.

                You have to remember that the PTAB is not an Article III court and is tied in its structure (under law – admin law) to the administrative agency. In fact, out of ALL the various administrative agencies, it is widely held that the Patent Office has one of the SMALLEST separations between its political side and its “adjudicatory” side.

                Ron K is correct above: the PTAB MUST follow this guidance (as far as the guidance goes).

                The real problem of course is that the guidance embraces the fact that the courts have made an absolute mess of the situation – a Gordian Knot of contradicting Common Law – (and expressly states this) at the same time tries to insert both sides of the contradictions into the guidance.

                You cannot have both sides. You cannot have clear guidance when you are stating that there are contradictions out there, and then try to have both sides of what is contradicting.

                I have to give credit though to Iancu for at least attempting to not partake in the mess that is Common Law law writing. He does not succeed, because in the end, he does not outright repudiate the overreach of the Supreme Court, but there are a few small baby steps in the new protocol.

  10. 8

    The further subdivision of “Step 2A” necessitates new nomenclature.

    What will we use as shorthand for the “practical application” test?

    Step 2A Prong 2?
    Step 2A2?
    Step 2AII?
    Step 2A: First BloodMoT Part II?

    1. 8.1

      Ha!

    2. 8.2

      …Son of MoT
      …Return of MoT
      ….Night of the MoT Zombies

    3. 8.3

      Now that I have let this be contemplated, the new nomenclature for the practical application test should be: “read the whole claim” test.

  11. 7

    Greg,

    Random suggests here why software-arts examiners are not making WD rejections for open ended functional claims: management discourages those rejections through quality reviews. Admittedly, there does seem to be some variation in tolerance for these WD rejections between SPEs, so I am not personally confident whether this is a top-down policy or whether it’s a practice passed from one examiner cohort to the next.

    I’d also note that the Office had mandatory 112(a) training for all examiners in 2015. If the ostensibly anti-patent Lee did not take that opportunity to correct the Office’s interpretation of 112(a), what are the odds that Iancu will?

    1. 7.1

      [E]xaminers are not making WD rejections for open ended functional claims [because] management discourages those rejections through quality reviews.

      I do not doubt that what you say is true, but that is the part that surprises me so. I cannot count how many times I have cited a case to an Examiner, and gotten back a reply something to the effect “my review is not based on conformity to case law. I am judged based on the MPEP, and what you are talking about is not in the MPEP.” I find that frustrating, but understandable. The Examiner Corps’ job is to make the rejections that the MPEP tells them to make, and allow the cases that the MPEP tells them to allow.

      Here, however, we have a case where the MPEP tells the Examiner Corps to make a certain rejection. It says—right there in black letters—that the mere fact that some putative skilled person could write the code is not enough. Nevertheless, instead of encouraging a rejection the grounds of the policy set down in the MPEP, the same policy higher ups who promulgate the MPEP are (I am given to understand) dinging the examiners if they make that rejection.

      I have never heard of such a thing in my end of the world. I have many times heard “look, I would like to allow this, but the MPEP tells me that I have to make this rejection until you amend your claim with [XYZ].” I have never heard “I think that I am supposed to reject this according to the MPEP, but my bosses tell me not to.”

      I do not know what the solution is here, but that is such a strange problem to have. So many problems could be solved by simply implementing the policy that is already there on paper.

      1. 7.1.1

        The mpep also tells examiners that the number of references is irrelevant to an obviousness rejection. Try and find one unit for which that is true.

        There is the MPEP, and then there is how the office actually does things. The MPEP is required to track the law. How the office does things largely tracks the MPEP, with a few notable exceptions.

        Take 101 for example. The “correct” standard for 101 Alice rejections is the minimum number of rejections we can make to make it look like we’re not ignoring 101. And that’s going to be true regardless of what the MPEP or guidance is – they don’t have lawyers, they don’t want to train the corps to be lawyers, they don’t want to increase the time spent on cases – so when a legal issue that would necessarily take more time to consider develops in the law, the goal is to minimize the effect of the law on examination.

        This is true, to some extent, on all other facets of examining. I’ve pointed out how the allowance rate remains stunningly even despite massive changes in both obviousness (KSR) and 101 (Alice).

        1. 7.1.1.1

          The MPEP is required to track the law.

          Notoriously, this does NOT happen quite a bit.

      2. 7.1.2

        I cannot count how many times I have cited a case to an Examiner, and gotten back a reply something to the effect “my review is not based on conformity to case law. I am judged based on the MPEP, and what you are talking about is not in the MPEP.” I find that frustrating, but understandable.

        Not understandable at all, since the executive branch is there to apply the law.

        Once – maybe – per examiner EVER.

        Anything beyond that, the blame is fully on you.

        (The word “coddle“ comes to mind)

      3. 7.1.3

        “It says—right there in black letters—that the mere fact that some putative skilled person could write the code is not enough.”

        It says that the PHOSITA being able to write the code is not alone sufficient to pass WD. But it does not say a failure to provide an algotithm makes a prima facie case for lack of written description.

        It all comes back to whether the applicant has “demonstrated possession”, and the office simply interprets the bar for such demonstration at an absurdly low level in the software arts.

        While I disagree with the bar being located there, I think the Office is following the lead of the CAFC/CCPA:

        “As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed…. Thus, flow charts or source code listings are not a requirement for adequately disclosing the functions of software.” Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805

        1. 7.1.3.1

          This is the software exception. Nothing else in the patent universe is treated this way. Applicants are allowed to broadly protect code in terms of its function without ever disclosing a single example of working code on any contemporary operating system or in any programming language. There are no formal requirements even for describing the logical operations being carried out which is why you get claims reciting “associating dynamic expression operables” and similar g ar bage.

          1. 7.1.3.1.1

            Your feelings are noted.

    2. 7.2

      [T]he Office had mandatory 112(a) training for all examiners in 2015.

      Don’t I know it! I remember well the intensity of WD rejections with which I was hit in 2015. I found it noisome at the time, but in hindsight these rejections made the ultimately granted claims stronger and more defensible. If there are art units where these claims are not being made, those applicants are missing out on a useful dose of pressure testing and improvement.

      1. 7.2.1

        “… where these claims are not being made…”

        Pardon. I meant “… where these rejections are not being made… .”

      2. 7.2.2

        Good rejections are always welcome.

        Always.

        Further, this not only has always been true, “Maximalists” like me have always wanted these as part of true quality examination.**

        But since that does not fit a certain desired ‘narrative, somehow such is never reflected in the “one-bucketing” that goes on here.

        **notably, this will OFTEN exclude the ramblings of the likes of Random and others who want something other than law to be applied.

        1. 7.2.2.1

          Maybe if you’d start acknowledging the incredible sh it tiness of the claims that get discussed here you’d have an ounce of credibility.

          1. 7.2.2.1.1

            Your questioning of my credibility is perhaps the best indicator OF my excellent credibility.

            As I have also told you (more than once), I discuss the larger issues of law and leave any type of “this claim defense” to those that enjoy being in the weeds.

            If YOU ever bothered trying to engage on the merits of my points presented (in anything remotely resembling inte11ectual honesty), you would already be aware of this and your immediate comment would not have been made.

            1. 7.2.2.1.1.1

              You don’t have to take my advice. But nobody should take your request for “better examination” seriously when you are unable or unwilling to opine on specific claims reeking right in front of your hypocritical face as you insult others who do criticize those claims.

              [shrugs]

              1. 7.2.2.1.1.1.1

                Your “advice” as well as your [shrugs] are meaningless.

                Maybe pay attention to what I wrote above, as that fully explains WHY your posts are so meaningless.

                Not taking your meaningless advice…?

                Meh, while smart, tis only natural as well.

                As to “as you insult others who do criticize those claims,” you REALLY do need to pay attention – and this is why the phrase I use that you do not like so very well captures the situation (and uses short and direct, easy to understand plain English while supporting the criticisms). That particular phrase: the Ends do not justify the Means.

                As an attorney (at least, you have claimed to be one), you SHOULD recognize the greater benefit in making sure that any Means to ANY Ends is proper.

                But you are FAR too wrapped up in your feelings for that, eh?

  12. 6

    Well, I just read the new 101 “guidelines.” My initial impression is these “guidelines” are a f in g j0ke and Iancu (unsurprisingly, given the well-documented nature of the greedy s h tbag who appointed him) is a fr@ud who’s main purpose for existing is to pave the way for more ineligible junky logic patents to flow out of the PTO.

    The only entertaining part of this trainwreck will be watching the usual hypocrites who shriek about current 101 jurisprudence being “void for vagueness” (because “abstract” is just too darn hard of a concept to understand) wrap their skinny arms around this scrolled up piece of used t let paper.

    The complete absence of any attempt to understand the underlying issues is especially noteworthy, as is the failure to acknowledge that information processing/dis se mination “on a computer” is different (and ineligible), and intellectualll honest recognition that claims in this area are protected by a mass of incoherent exceptions to subject matter eligibility that were created out of thin air (remember that one of the foundational cases supporting software patenting is the alleged eligibility of a game consisting of a mobius strip with numbers printed on it).

    Also f@ tal to the entire operation is the adoption of the ridiculous concept that somehow a claim that recites an ineligible concept and admitted prior art can somehow become eligible if that admitted prior art is proven to be “unconventional.” If that wasn’t bad enough, the guidelines fail to describe not only what sort of evidence is needed to prove “unconventionality” (a concept that is nowhere in the patent statute, which plainly tells the world that anticipatory prior art will prevent the granting of a patent regardless of how “unconventional” that prior art is) but they fail to provide a detailed (or “cogent” LOL) summary of important, widely relied-upon technology that is definitely not “unconventional” and hasn’t been “unconventional” for decades (e.g., programmable computers, networks, remote servers, parallel processing, self-referential databases, mobile devices, wireless transmission, “cloud-based” storage, so-called “artificial intelligence”, robotics, etc).

    Maybe the Office could start by describing a real-world process or device that is legally obvious but not “conventional” and then explain how limitations describing that obvious (unpatentable, public domain) technology could be used to prop up (and protect) an otherwise ineligible abstraction limited to that obvious but “unconventional” prior art context. Then there might be some reason to believe that Iancu has a c l ue as to what he’s talking about.

    A similar issue exists with the nonsensical and illegal “integrated practical application” “test” that has been introduced with the apparent purpose of providing a lifeline for virtually every otherwise ineligible pile of information-processing junk that will show up on an Examiner’s desk. The “practicality” of a claimed method, composition or apparatus is not determinative of that claims eligibility. The only issue that matters for determining 101 compliance is whether judicially excepted or otherwise non-statutory subject matter is being protected in any prior art context. That’s it. Everything else is procedural or analytic. No s@ ne person looks at a typical g@ rbage “do it on a computer” claim and thinks about “2A” or “2B”, these completely imaginary “steps” that Iancu wants to play pattycake games with.

    The framework is far simpler, provided that the goal isn’t to provide cover for junk claims that should never be granted. The framework is that you identify ineligible abstractions/functionality in the claim. If those exist, then there is a potential 101 problem. If a computer is involved, it’s almost certain that there will be a 101 issue (because computers apply logic to data, which is an abstraction). The only remaining legal question at that point is whether there is somewhere else in the claim an eligible, non-obvious invention recited in objective structural terms (or steps that perform a non-obvious physical transformation) that distinguish that invention from the prior art. That’s all there is. Everything else is noise and vapor and hand-waving and will ultimately collapse into the same set of b0 gus contradictory farcical “exceptions” that have been propping up the worst patent claims ever for decades now.

    Note that I’m not making any assumptions in the above analysis. All that’s taking place is to apply the settled upon principles in a straightforward manner without trying to weave in a bunch of made-up arbitrary exceptions to protect software patenting.

    1. 6.1

      You obviously have not been paying attention.

      But why let that get in the way of your usual rant?

  13. 5

    Well, I just read the new 101 “guidelines.” My initial impression is these “guidelines” are a f c k in g j0ke and Iancu (unsurprisingly, given the well-documented nature of the greedy s h tbag who appointed him) is a fraud who’s main purpose for existing is to pave the way for more ineligible junky logic patents to flow out of the PTO.

    The only entertaining part of this trainwreck will be watching the usual hypocrites who shriek about current 101 jurisprudence being “void for vagueness” (because “abstract” is just too darn hard of a concept to understand) wrap their skinny arms around this scrolled up piece of used t0 I l et paper.

    The complete absence of any attempt to understand the underlying issues is especially noteworthy, as is the failure to acknowledge that information processing/dissemination “on a computer” is different (and ineligible), and that claims in this area are protected by a mass of incoherent exceptions to subject matter eligibility that were created out of thin air (the foundation of software patenting is the alleged eligibility of a game consisting of a mobius strip with numbers printed on it).

    Also fatal to the entire operation is the adoption of the ridiculous concept that somehow a claim that recites an ineligible concept and admitted prior art can somehow become eligible if that admitted prior art is proven to be “unconventional.” If that wasn’t bad enough, the guidelines fail to describe not only what sort of evidence is needed to prove “unconventionality” (a concept that is nowhere in the patent statute, which plainly tells the world that anticipatory prior art will prevent the granting of a patent regardless of how “unconventional” that prior art is) but they fail to provide a detailed (or “cogent” LOL) summary of important, widely relied-upon technology that is definitely not “unconventional” and hasn’t been “unconventional” for decades (e.g., programmable computers, networks, remote servers, parallel processing, self-referential databases, mobile devices, wireless transmission, “cloud-based” storage, so-called “artificial intelligence”, robotics, etc).

    Maybe the Office could start by describing a real-world process or device that is legally obvious but not “conventional” and then explain how limitations describing that obvious (unpatentable technology) could be used to prop up (and protect) an otherwise ineligible abstraction limited to that obvious but “unconventional” prior art context. Then there might be some reason to believe that Iancu has a clue as to what he’s talking about.

    A similar issue exists with the nonsensical and illegal “integrated practical application” “test”that has been introduced with the apparent purpose of providing a lifeline for virtually every otherwise ineligible pile of information-processing junk that will show up on an Examiner’s desk. The “practicality” of a claimed method, composition or apparatus is not determinative of that claims eligibility. The only issue that matters for determining 101 compliance is whether judicially excepted or otherwise non-statutory subject matter is being protected in any prior art context. That’s it. Everything else is procedural or analytic. No s@ ne person looks at a typical g@ rbage “do it on a computer” claim and thinks about “2A” or “2B”, these completely imaginary “steps” that Iancu wants to play pattycake games with.

    The framework is far simpler, provided that the goal isn’t to provide cover for junk claims that should never be granted. The framework is that you identify ineligible abstractions/functionality in the claim. If those exist, then there is a potential 101 problem. If a computer is involved, it’s almost certain that there will be a 101 issue (because computers apply logic to data, which is an abstraction). The only remaining legal question at that point is whether there is somewhere else in the claim an eligible, non-obvious invention recited in objective structural terms (or steps that perform a non-obvious physical transformation) that distinguish that invention from the prior art. That’s all there is. Everything else is noise and vapor and hand-waving and will ultimately collapse into the same set of b0 gus contradictory farcical “exceptions” that have been propping up the worst patent claims ever for decades now.

    Note that I’m not making any assumptions in the above analysis. All that’s taking place is to apply the settled upon principles in a straightforward manner without trying to weave in a bunch of made-up arbitrary exceptions to protect software patenting.

  14. 4

    There is actually a much much deeper problem (at least one) hidden in the “narrative” of:

    Prior iterations of eligibility guidelines focused on a listing of post-Alice cases as examples for examiners to follow. Examiners are typically not attorneys and are not expected to read cases — that makes this case-focused approach problematic in the long-term.

    I have touched on these “items” previously, and it is a subtle nod to those points of mine that I have contributed, that Iancu has sought to change the protocol of examination.

    1) “in the long term” – heck, even in the short term we had quickly run into the fact that decisions by the courts were contradicting each other (and the nature of any decision being very much panel-dependent) generates a Gordian Knot of “jurisprudence”;

    Combined with:

    2) even the judges of the CAFC expressly labeled the Supreme Court “gift” an exercise of Common Law law writing.

    With just a tiny amount of critical thinking, any attorney worth their salt can see that statutory law being re-written (and not even noting the style of Gordian Knot writing) NOT only by the judicial branch (already at least one Constitutional infirmity – separation of powers, [among Void for Vagueness and basing authority on futuristic, projective, conjectural lack of present case or controversy what MAY happen lack of Constitutional authority, even if the separation of powers lack of authority were somehow excused]), that ALL of this infirmity was then being applied by the (typically non-lawyer) examiners of an executive branch agency in the protocol of “examination” could simply NOT continue.

    I still have to digest this offering (and especially combined with the 112 missive), and still need to evaluate the propriety — read that as not treading into the forbidden territory of substantive rule making — before coming to any conclusions on any specific points.

    In the meantime, let us all hope that comments rise above mere feelings (and – gasp – propaganda), and have some cogent legal basis.

    1. 4.1

      Assuming:

      1) this guidance qualifies as substantive rule making.
      2) this guidance results in the ellimination of Alice rejections.

      Is there any mechanism for this guidance being challenged?

      1. 4.1.1

        Given your assumptions, yes, most definitely there are mechanisms to challenge the guidance.

        At least one such mechanism played itself out in the Tafas case.

        Other examples of mechanisms also exist from the same time period (think appeals rules set).

        However, as I note above in a different reply to you, your “2)” concern may lead down a different path that you might expect.

  15. 3

    Re: “In general, I would expect that examiners will be more quickly swayed by citations to the guidelines rather than to citations to particular court decisions.”
    That is an understatement as to examiners, but examination guidelines or case interpretations even presented in the MPEP are not binding on APJs in contested cases. or the Fed. Cir.

    The language quoted by RG from the 112 Guideline should only only be surprising to those who have been ignoring those requirements.

    112 and 101 examination requirements are particularly important, because if they are missed by examiners allowing claims they cannot be challenged in either a reexamination or IPR, or even reviewed by APRs in an ex parte application appeal.

    1. 3.1

      Compare and contrast:

      presented in the MPEP are not binding

      with

      from the 112 Guideline should only only be surprising to those who have been ignoring those requirements

      To those in the know, challenging the non-binding guidelines as described in the MPEP — as opposed to any actual requirements — has been part and parcel of the job of those prosecuting applications since like forever.

      Some who have long ago left prosecution may have forgotten that.

  16. 2

    Need anyone be reminded that “directing the bureaucratic process” can be challenged (and wiped out) if there be substantive law effects?

    (Hint: Tafas)

  17. 1

    In order to satisfy the written description requirement set forth in 35 U.S.C. § 112(a), the specification must describe the claimed invention in sufficient detail such that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. For instance, the specification must provide a sufficient description of an invention, not an indication of a result that one might achieve.

    It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it.

    (Verbal Kint voice) And just like that…half my docket is gone.

    I used to get clear errors for making these rejections (as the law has not substantially changed in years) so, of course, we’ll have to wait and see if it actually changes anything.

    W.r.t. Williamson – it’s a pretty terrible decision. It’s born out of the fact that half the CAFC can’t correctly deal with functional claiming, so there is an attempt to draw things into means-plus where the rules are a little easier to understand. Means plus should only be invoked when “means for” is used, it shouldn’t be post hoc interpreted in that manner in an attempt to save overbroad claims. Regardless, from the office standpoint it rarely is a major issue because the correct scope can be examined within at most two actions.

    1. 1.1

      In other words, you don’t get a patent as a reward for doing no more than announcing a problem to be solved. Rather, you only qualify when with your disclosure to the PTO on your filing date you enable a solution to that problem, and when your claim extends no wider that what is commensurate with the magnitude of your enabled contribution to the art.

      Given the high presumption of validity, and the potency of the rights conferred by issue, the USPTO will be failing in its duty to society and to the public when, especially now, in a First to File environment, it fails to enforce a rigorous WD requirement for patentability.

      No need to change the statute or the caselaw, just enforce what is there already. Where there’s a will there’s a way.

      1. 1.1.1

        Given the high presumption of validity, and the potency of the rights conferred by issue,

        You haven’t been paying attention…

    2. 1.2

      I used to get clear errors for making these rejections (as the law has not substantially changed in years) so, of course, we’ll have to wait and see if it actually changes anything.

      I share your cautious optimism. If this line (quoted verbatim from the existing MPEP) is included in the new Guidelines to encourage the examiners to make this sort of rejection, most of the arguments that we currently have over §101 will disappear into the background. One cannot invent one way of (e.g.) rasterizing pixels and then claim “rasterizing pixels” with a claim that reads on all pixel rasterizing methods. Once people come to understand that, they will stop writing such claims, and the application of §101 to such claims will become a moot issue.

      1. 1.2.1

        One cannot invent one way of (e.g.) rasterizing pixels and then claim “rasterizing pixels” with a claim that reads on all pixel rasterizing methods. Once people come to understand that, they will stop writing such claims, and the application of §101 to such claims will become a moot issue.

        Unfortunately (and to the extent the office is publishing requesting comments, I believe) the language in the guidance as to SCOPE of enablement/description is significantly less black-and-white than the language about at least one embodiment needing to be disclosed.

        While what you say is true and the law, a careful reading of the guidance really says nothing to foreclose one embodiment supporting a claim to the functional result.

        The good news is that, as I said, a significant portion of applications fail to even reach that inadequate bar, and the black and white language on one embodiment needing to be disclosed is good.

        1. 1.2.1.1

          (Pg. 17) “The analysis of whether the specification complies with the written description requirement calls for the examiner to compare the scope of the claim with the scope of the description to determine whether applicant has demonstrated possession of the claimed invention,” (emphases added).

          1. 1.2.1.1.1

            Yeah, the only thing that calls for is a comparison. There’s no outright requirement. The response to that is going to be “From the one example embodiment, one of skill would immediately understand that other ways of achieving the function could be performed, would be enabled to make them, and would believe Applicant possessed them.”

            Let me tell you a first story of an actual case:

            Applicant’s specification disclosed how to take an IPv4 address and convert it into a IPv6 address. For those unaware, an IPv4 address is a series of numbers, and an IPv6 is a longer series of numbers, because we were running out of IPv4 addresses.

            Essentially, what the invention did was take the IPv4 address and cram a prefix onto the front of it, so that a 12 digit IPv4 number gained enough digits to be a IPv6 number.

            The independent claim required generating a prefix, and converting a “first” IP address into a “second” IP address by adding a prefix onto the first IP address.

            A dependent claim said wherein the first IP address is an IPv4 address, and the second IP address is an IPv6 address.

            The case went to appeals, in part, because the examiner argued that the specification only enabled and described the dependent claim, that the independent claim was broader, and that there was absolutely no disclosure whatsoever to support the expanded scope. The independent scope covered any IP version, including IP versions that did not exist and whose structure was not known, when it was clear that the solution claimed by the applicant could only apply to the dependent claim. This argument was highlighted by the fact that if you swapped v4 and v6, the independent claim would not work – there is no way to add a prefix onto an IPv6 to get an IPv4.

            Applicant’s argument was 1) Applicant is entitled to claim future, unknown machines, 2) one of skill would be enabled, based on the disclosure within, to apply it to any IP address and 3) Because the claim requires taking a first version, generating a prefix, and then combining the two, Applicant is claiming an algorithm, not a result.

            Despite the fact that (1) just seems to be a legal admission of invalidity, the board (alleged patent attorneys!) reversed the rejection, stating that they found that the disclosed working example would teach one of ordinary skill to selected IP addresses which would work with the claimed invention. And this was a situation where the board had an actual properly-sized dependent claim in front of them.

            Now let me tell you a second story:

            Applicant seeks to determine what type of posts are likely to go viral in an effort to monetize them. The independent claim requires identifying characteristics of previous viral posts, matching characteristics of a current post, and upon a threshold match level, seeking to monetize the post.

            Obviously, the name of the game is identifying characteristics of the previous viral posts. When you have characteristics that are highly probative, you can determine what will be viral. When your characteristics are not probative, you mind as well randomly guess what will go viral.

            Although no algorithm for the identify step was given, Applicant argued that characteristics like poster identity, time of day, etc were easily determinable. Applicant pointed to the specification stating that the computer can identify characteristics of previous viral posts, and that a requirement for a particular manner of doing so was not what was claimed – the generic act was claimed.

            The rejection was reversed because the language in the specification, as well as the originally filed claimed, evidenced applicant possessed the entire scope.

            The point of the above – If people don’t know what they are doing and you don’t give them a black and white standard, they won’t do anything right. It’s pointless to say “compare these scopes” when they don’t know what the point of the rule is or why they are doing what they do. On the other hand, when you tell them “This new guidance explicitly says you must include an algorithm that says how you achieve this function” (Leaving out, of course, that “the MPEP already said that and you’ve been doing this wrong for a long time”) they really have no choice but to ether find an algorithm or agree with you.

            1. 1.2.1.1.1.1

              Also, Re: First story, this is why I constantly point out that it is the attorneys, not the inventors, who are the problem. There is no way the inventor thought that what he had invented was generically converting IP addresses by adding prefixes. The inventor had a way to convert an IP4 into an IP6, and some attorney decided to get cute, call the invention an “example embodiment” and then just run away with generic-izing, despite the fact that the invention could clearly only work with the particular structures of IP4 and 6, and would not work with other, known structures.

              Re: Second story – The claims got tanked under 101. Finding during the 101 analysis – Board notes that the claims don’t claim an algorithm and the specification does not even disclose an algorithm. So the issue ended up being moot, but this claim adequately represents someone who claims the abstract/functional act of “solving a problem” and then attempts to surround it with enough other limitations to suggest that it is a specific technique. As if there is some way to determine similarity that doesn’t involve identifying characteristics and determining if the characteristics match. This really should be solved by a 112a rejection, but since people don’t seem to understand 112a, 101 occasionally picks up the slack, and that is part of the reason why you need 101.

    3. 1.3

      Williamson [i]s a pretty terrible decision… Means plus should only be invoked when “means for” is used, it shouldn’t be post hoc interpreted in that manner in an attempt to save overbroad claims.

      I would be interested in reading something where you expand on this. I confess that I see it exactly the opposite way. I think that the pre-Williamson “strong” presumption against applying paragraph (f) where the patentee has not used the magic word “means” was (1) not really compelled by the statutory language and (2) poor public policy. To my mind, Williamson was a useful corrective of the status quo ante. I would be interested in reading an intelligent presentation of the opposite point of view.

      1. 1.3.1

        To my mind, Williamson was a useful corrective of the status quo ante. I would be interested in reading an intelligent presentation of the opposite point of view.

        There’s not much to it. Means plus or not means plus is optional. Demanding a particular flag for whether the option is taken presents no problem to the patentee at the drafting/examination stages and avoids a problem in the post-grant phase.

        Functional language that sounds in means-plus is construed to an embodiment in the specification and its equivalents. Functional language outside of means-plus is construed to all manner of achieving the result, which is broader than “an embodiment in the specification and its equivalents.”

        There are four situations:

        1. A claim is claimed in means plus language and later construed as being in means-plus.
        2. A claim is claimed without means-plus language and is later construed as being outside of means-plus.
        3. A claim is claimed in means plus language and is later construed as being outside of means plus.
        4. A claim is claimed without means-plus language and is later construed as being in means-plus.

        It should be apparent that 1 and 2 provide no issues other than general office incompetence, which is at least fair if nothing else. 3 is somewhat of an an issue – Because the scope of non-means-plus is broader than means-plus this claim is going to lack support over the breadth of its scope, but conversely there is a possibly-improper presumption of validity being bandied about (as it was likely examined under a smaller scope and prior art might have been missed). So the “skew” of this post-grant surprise claim construction is 112a in favor of defendant, 103 in favor of patentee.

        Generally, it presents a problem to a defendant, but the problem occurs and is resolved at the same time – during court proceedings. A defendant who sees means-plus language and develops a non-equivalent manner will not be chilled from practicing his invention and ultimately not have any liability attach to them, assuming competent counsel on the 112a issue.

        4 is the real problem situation. In this case, a defendant who develops a non-equivalent manner will be chilled from practicing. Further, an intelligent defendant (one who knows a specification can never really support a claim to a function, regardless of how the function is achieved, i.e. functional claiming outside of means-plus is going to fail 112a) may practice an equivalent invention and be surprised when liability attaches because the claim was construed more tightly. It is a tool for a patent-friendly judge to take a claim which on its face should be invalidated and bend the law to keep some part of the scope valid.

        I disagree that a judge should have that power. The patentee could have drafted with explicit language (and in a bright-line standard world, would) to invoke means plus, which means law that allows him to shrink his scope post-filing can only be used to chill competitive invention.

        Getting patent protection is a two step process – First you have to invent something. Second you have to competently claim what you invented. I feel for the people who meet the first requirement but not the second, and I understand courts who try to “save” claims that should die, but that makes for bad law and muddied waters. If you seek the means-plus option there’s nothing wrong with demanding a flag that explicitly says so, and that’s what the words “means for” are.

        In short – in a bright-line world, the only people who could be inadvertently hurt by poor judicial claim construction are inventors with bad attorneys: They should have claimed in means-plus, but because their agent failed to be diligent, they ended up with nothing. Harsh, but fair, and consistent with every other legal right in the world. In a Williamson world, the general public can be inadvertently hurt by scopes that were never examined properly (Numeral 3) or are post-grant shrunk to be more likely valid (Numeral 4). The public has no basis to interfere with the patent grant process, while the patentee is required to particularly point out and claim the invention. The burden should fall on the patentee. The mechanism by which that is done is to generate a bright-line rule.

        I can understand the opposite view *in light of the CAFC failing to apply 112a well* – in that case the public might enjoy the actual Williamson outcome: A claim was tanked on 112b grounds. Of course, if the claim was not construed as means-plus it would have been tanked under 112a grounds, so the only fear (and it is a real fear) is that the court would misapply 112a. Though at this point its not so much the CAFC as defendants properly raising the issue. If you haven’t noticed, the CAFC has gotten better at 112a recently, right around the time Alice had them thinking about the invalidity of broad, preemptive scopes. Funny how that worked out, huh?

        1. 1.3.1.1

          One little (but very important) thing:

          The option was for PURELY functional claiming.

          What Congress provided (in the actual law) was for a Vast Middle Ground that simply does not meet the spin that you are trying to give.

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