Sleepy decision by the PTAB

In Ex parte Alder (Appeal No. 2017-4809) (PTAB 2019), the PTAB recently found the claimed “snoring detection device” ineligble as directed to the abstract idea of “detecting snoring.”

1. A snoring detection device comprising:

a sensor configured to detect sounds during a breathing cycle; and

a processor configured to: [1] detect a noise level during an inspiration phase of the breathing cycle with said sensor; [2] detect a noise level during an expiration phase of the breathing cycle with said sensor; [3] determine an occurrence of a snore based on a difference in the noise levels detected during inspiration and expiration, the difference comprising a subtraction of the noise level during expiration from the noise level during inspiration.

Alder.  This case followed the other recent PTAB decisions regarding the 2019 Eligibility Guidelines.  In particular, the decision recites elements of the guidelines but then makes no real effort to actually apply the guidelines to the case-at-hand. Rather, the decision follows the usual approach of drawing analogy to the various appellate and Supreme Court cases to find the closest thread.

[Updated to correct typo in name – Alder not Adler]

141 thoughts on “Sleepy decision by the PTAB

  1. 15

    Blocked by the Count Filter, here is an Omnibus rebuttal (to Malcolm):

    at 8.1.1:When you remove the prior art…,

    You mean when you violate the Court’s own prohibition about parsing a claim….?

    Eligibility is NOT a question of “what’s left over.”

    at 6.1.1.2.2.2.1:The CAFC case law (McRo and Enfish in particular) is an incoherent mess. That’s the CAFCs fault, not the Supreme Courts fault.

    No Malcolm, the fault is DIRECTLY the fault of the Supreme Court and their officious intrusion and THEIR p00r scrivining and RE-writing of law that is Void for Vagueness (among MANY other faults).

    The Supreme Court egregiously erred with an attempt to insert their UNDEFINED Common Law law writing and directed the lower Article III court to “fill in the blanks by writing more Common Law. To a certain point, surely that lower court is ALSO to be blamed with Common Law writings that ARE directly contradictory.

    ALL of these points though are points that I have previously presented – and it is to be noted – points that you have NOT supported as I have made them.

    The FACT that an incoherent mess IS present is nothing more than the fact that the Score Board is broken.

    Below 6.1.2.1.1.1.1:I’m still waiting for you to discuss your set theory, Mr Ethics’s. What’s holding you up?

    This is utter balderdash, as you play the Br’er Rabbit game here. I have so many times provided you with hyoper links as well as repeated verbatim the discussion that has been provided to you that you NOW claiming that I am the one “holding things up” is an outright L 1 E.

    There is NO “waiting” for you waiting for me to do anything, as this is ENTIRELY in your court. It is plainly unethical for you to prevaricate and paint such a false picture.

    At 4.3.1.1.1:The Supreme Court has already interpreted the statute to include the exceptions. That ship sailed. The statute as written and interpreted “plainly” is unconstitutional. So go ahead and rewrite the statute to expressly recite the exceptions and send a letter to your Congressperson demanding that the fix it accordingly. That’s your solution. You’re never going to able to enforce the statute as literally written against me or anyone else. The Supremes know that as does every reasonable patent attorney and law professor who has ever thought about the issues raised for more than ten seconds.
    [shrugs]

    Your [shrug] is disingenuous and IGNORES the fact that it is the Supremes that have broken the Score Board.

    The Judicial Branch simply does not have the authority to re-write the law in the first instance by CREATING exceptions and THEN turning around and presuming that THEIR creation can be “interpreted into” the words of Congress.
    Especially as I have provided that the historical context of the Act of 1952 was a REJECTION of the Court’s anti-patent “Gist of the Invention” muckery.

    All that you have done is doubled down on the impropriety of the Court writing statutory law. Not only wrong, but egregiously wrong.

    As to (emphasis added) “The statute as written and interpreted “plainly” is unconstitutional.” – that’s a nice admission against your interests, and notably, it is NOT within the authority of the Court to itself violate the Constitution** in order to “justify” the Ends that you so desire.

    ** I can give you a DETAILED (at least) three prong position as to the Constitutional infirmity of your (wanting to ignore) Means as employed.

    at 4.3.1.1.2:I don’t need to read Mayo again. I know more about 101 and that case in particular than 99.99% of the patent attorneys on the planet. Not bragging. Just a fact. Do some research and you’ll learn quite a bit.

    That is not only NOT “not bragging,” it is an UNFOUNDED bragging. What you “know” is only your feelings, and your lack of actual knowledge of the statutory law and recognition of the improper application of law as rendered by the Court IS your weakness.

    Everyone “gets” that you have a desired Ends here – just as everyone “gets” that you avoid like the plague ANY inte11ectual discussion on the propriety of the actual Means in play to get to that Ends.

    1. 15.1

      I will also note that while “B” and I do not see eye to eye across the board, his rebuttals to Malcolm on this thread deserve an ovation.

      Pressing dialogue such that BOTH sides not only recognize but integrate valid points of conversation is an effective counter to mindless propaganda.

      Some (it should be quite obvious who) simply are not interested in any actual dialogue on the merits of the issues. Others (also quite obvious) are VERY willing to fight through the mindless nonsense and press for points to be recognized and integrated. It is beyond question which “side” presents the more enlightened approach to resolutions of competing views.

  2. 14

    This claim is not directed to a practical application!! What does it do?? Nothing. And it doesn’t improve any existing technology.

    1. 14.1

      “This claim is not directed to a practical application!! What does it do?? Nothing.”

      First, the claim “determine[s] an occurrence of a snore.” That certainly is a practical application. Perhaps you should read the claim you’re criticizing.

      “And it doesn’t improve any existing technology.” Even if you were correct, s101 does not require an improvement in the relevant technology. In fact, requiring an improvement literally writes out some of the language of s101. Perhaps you should read s101 before commenting on the requirements of s101.

      That said, I’m not trying to get on your case. I’m merely trying to address the statutory requirements of patentability

      1. 14.1.1

        First, the claim “determine[s] an occurrence of a snore.” That certainly is a practical application.

        Merely making a determination is not a practical application; you must do something with that determination. Think like an engineer rather than a patent attorney… Determining the occurrence of a snore is just a precursor to doing something useful. This is why Claim 13, which recites adjusting a blower speed based on the snore value, was not included in the 101 rejection.

        1. 14.1.1.1

          The things that are done after the snore is detected are not part of the claimed invention. Why would one have to recite things that are merely post solution activity in the claim?

          1. 14.1.1.1.1

            The things that are done after the snore is detected are not part of the claimed invention. Why would one have to recite things that are merely post solution activity in the claim?

            Because current 101 jurisprudence at least requires that if the invention is directed to a mental process, as it is here, that there be some practical application of that process.

            At least one policy argument for that is that if I told you that I snored last night by inhaling quietly and exhaling at a loud volume, you just infringed the claim by reading this sentence. Your visual sensors detected the noise levels I described, your mental processor subtracted quiet from loud and determined I snored. Now what – the patent owner should get an injunction telling you to stop thinking about that sentence? How exactly is a court to enforce that?
            By requiring some application of the mental steps, there becomes a concrete step that you can avoid doing so as to not infringe.

            1. 14.1.1.1.1.1

              The claim is not directed to a mental process – machines do not have mental processes.

              (this will require you to NOT drink the Kool Aid and realize that the score board is broken)

              1. 14.1.1.1.1.1.1

                In the words of the PTO:
                “This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of
                the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” language, the claim encompasses the user subtracting two volumes. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process.”

                And as I noted below at 11.1, the claim covers a human “machine”.

                1. See my note below about the impropriety of your attempted Unreasonably broad interpretation.

                  ‘Nuff said.

                2. nonsense.

                  The processor and sensors do preclude an assertion of mental steps. The Board is wrong. The board also says there was no improvement to a computer, when clearly there is. Before the computer couldn’t detect snores, now it can. The Board also said there was no transformation of something to a different state or thing, when clearly there is. A snore is clearly transformed from an undetected state to a detected state.

                3. A snore is clearly transformed from an undetected state to a detected state.

                  Where’s that Tommy Lee Jones implied facepalm picture?

                4. AiD,

                  Do not “faceplant” too quickly, as the reality of the actual world does — as I have indicated — place a very real “engineering” aspect to the “mere” action of detection.

                  Don’t go dismissing the science behind the engineering that you have admitted having a bias to, lest your engineering disappear like the grinning Chesire cat.

        2. 14.1.1.2

          Lots of comments here deserve answers, but as the “Count Filter” has been tripped, I will likely be making an “omnibus” response.

          That being said, the point being stressed here by Anstract iDan deserves its own response (at least for the fact that AiD it typically an earnest and inte11ectually honest poster.

          I would posit that the statement itself of “not enough” is simply not correct.

          The admonishment of “think like an engineer and not an attorney” is a give-away, as patents are NOT engineering documents and ARE legal documents.

          Further – even in an engineering sense, the engineered process of detecting — in and of itself — is a practical application.

          And if you want to raise the thought level, recall Schrodinger and concepts such as quantum entanglement that most definitely implicate a “mere detection” as a truly significant physical action.

          So in both legal and engineering senses, AiD is not correct.

          1. 14.1.1.2.1

            Schrodinger was a theorist, not an engineer. The admonishment to think like an engineer was somewhat tongue-in-cheek (and biased, from a former engineer), but has a grain of truth to it: scientists discover things, engineers build things. And the current jurisprudence of 101 protects building things, not discovering things.

            1. 14.1.1.2.1.1

              Alas, you are wrong in more than one way here.

              Legal, not engineering,

              35 USC 100(a).

              The act as I have noted IS an “engineered” act.

              You have not actually responded to my points as much as you have merely attempted to dismiss them without engaging them.

              The work of BOTH engineers and scientists may be patented. If you disagree with this, then you are not doing your clients justice.

  3. 13

    At the end of the day, all these 101 rejections are crxp. They are nothing more than substitutes for 103, but without evidence and because a fact finder just feels they shouldn’t be patented.

    Alice and the way 101 is being used is a form of equity, but without the high standards needed to apply equity. This is not law, but some form of power exertion.

    1. 13.1

      +1

    2. 13.2

      ” They are nothing more than substitutes for 103, but without evidence and because a fact finder just feels they shouldn’t be patented.

      Giles rich wrote EXACTLY THIS nearly sixty years ago. A patent veto

      1. 13.2.1

        B,

        Do you have a cite for this? I would love to add it to my Rich library.

        1. 13.2.1.1

          anon,

          You need to buy a book by John Witherspoon entitled “Nonobviousness – the ultimate condition of patentability,” which contains many of Rich’s writings. The particular cite comes from “The Vague Concept of ‘Invention'” at the very end. (p. 1:416)

          1. 13.2.1.1.1

            Awesome – thank you!

    3. 13.3

      +1 NW

      The. Fundamental. Truth.

  4. 12

    LAW360 this morning is carrying a message shared by Director Iancu in regards to the errant re-animated Zombie mental steps of trying to make a computer into a “proxy” for the human mind by declaring that the Alice decision is being wrongly portrayed as “mere automating” is per se ineligible.

    Random, please take note.

    From that article: “In the wake of the Alice ruling, “some have concluded that ‘doing it on a computer’ is not eligible for patenting, without any reference to what the ‘it’ might,” he said. “But the court did not necessarily go that far.”

    and(tellingly, hint: Malcolm you might want to reflect on the fifth Kondratiev wave of innovation): “But the approach outlined in the guidance takes into account the nature of technological innovation in the 21st century, he said.

    Further, in a unstated reflection of Alappat remaining good law:
    Just because we are no longer automating using large machines that are tangible and easy to see and feel does not mean that today’s machines and processes should be any less eligible.”

    1. 12.1

      Great post, anon.

      Unfortunately, In re Venner (an automation case) is still listed in the MPEP as good law. It’s a 103 case post 1952 based on “invention.” According to In re Venner, any automation, no matter how novel and non-obvious, still fails 103 if the same results are achieved. Soooooo, you make a machine that’s 10,000% more efficient to produce a product – not patent eligible.

      Later Graham v. Deere addressed this stupidity, but apparently no one at the USPTO or CAFC reads case law. Further, judges think they’ve had the right to re-write 101 and 103 since 1953.

      Seriously, the only thing we disagree on is who are more to blame in this s101 nonsense – the CAFC or the SCOTUS. You make really good points I do admit, but the CAFC has made no serious effort to do anything but take Alice and Mayo and amplify the problem a 1,000-fold.

      The CAFC deliberately misrepresents their own case law to come to absurd and inconsistent conclusions in cases that cannot be resolved.

      Not a single CAFC judge has had the honesty to tell the SCOTUS “We’ll hold this claim patent-ineligible as soon as you explain what ‘invention’ is and where it appears in s101.” Yeah, a very few CAFC judges recognize the problem, and they’ve called for pleas from the legislature and the SCOTUS, but what’s the legislature supposed to do that they didn’t do in 1952? Say “This time we mean it?”

      No the CAFC has assumed the position of being the all-knowing masters of “invention.”

  5. 11

    Apologies for the damm count filter interference…

    Upon reflection, I retract my position below that humans do not subtract sound levels.

    Notwithstanding this retraction, the point remains that a machine — even one that IS performing an operation that may be performed in the mind of a human remains a machine, and it is simply improper to a read a claim that is directly to a machine as if the claim were written differently and not have the machine limitation (obstinately by a court imposing its policy concern of “scriveners” somehow merely working around the letter of the law).

    The error of “Gist/Abstract” lies NOT if a particular claim element may be an item capable of being performed by a human – or a parsed “mental step,” but in the officious “I know that the patented is really trying to do here.”

    The law as written by Congress gives this power (and responsibility) to a different entity. See 35 USC 112.

    1. 11.1

      Notwithstanding this retraction, the point remains that a machine — even one that IS performing an operation that may be performed in the mind of a human remains a machine, and it is simply improper to a read a claim that is directly to a machine as if the claim were written differently and not have the machine limitation (obstinately by a court imposing its policy concern of “scriveners” somehow merely working around the letter of the law).

      OTOH, this claim actually does cover a human. We currently understand the term “processor” to imply circuitry (but see virtual processors), but that term used to refer to the hordes of people in data processing rooms with slide rules and mechanical calculators. In fact “data processor”, as with “title processor”, “mortgage processor”, etc., are all terms for jobs held by humans. And similarly, the human ears are sensors, under a broad reading of that term (hearing being one of the five “senses”).

      Given that broad interpretation, the claim recites exactly what humans do when they hear someone snoring: the ears detect noise during the inhalation and exhalation phase, the brain subtracts the two and determines that the exhalation is louder, and concludes that they’ve heard a snore.

      1. 11.1.1

        A quick rejoinder here will suffice:

        The canard of wanting to read a (relatively) ancient meaning into claim terms MOST LIKELY violates the fact that those claim terms are to be read in light of the specification and in accord with a Person Having Ordinary Skill In The Art.

        Your attempt here is easily defeated as being an IMPROPER and unreasonably broad interpretation.

        1. 11.1.1.1

          An even quicker rejoinder will suffice here… From the specification:
          “It is to be understood that while the invention has been described above in conjunction with preferred specific embodiments, the description and examples are intended to illustrate and not limit the scope of the invention, which is defined by the scope of the appended claims.”

          The Applicant explicitly instructs the reader to not interpret the claim terms as limited by the specification, but to take the broadest possible interpretation from the claims. At which point, the brain is a processor, and the ears are sensors.

          1. 11.1.1.1.1

            I chuckle as I concede that you MAY have a point here – of course, such disclaimer may also not carry the weight that you suggest as the entirety of the specification – as well as what “Art” is indicated by the Person Having Ordinary Skill In The Art will dictate whether or not the (ancient) human “interpretation” is to be included.

            Notwithstanding (quite possibly too loose use of) the boilerplate, and since this does indicate disappeared machines, I would bet that your attempt here remains Unreasonable.

            1. 11.1.1.1.1.1

              Damm autocorrect…

              “Disappeared” => “disparate”

  6. 10

    Upon reflection, I retract my position below that humans do not subtract sound levels.

    Notwithstanding this retraction, the point remains that a machine — even one that IS performing an operation that may be performed in the mind of a human remains a machine, and it is simply improper to a read a claim that is directly to a machine as if the claim were written differently and not have the machine limitation (obstinately by a court imposing its policy concern of “scriveners” somehow merely working around the letter of the law).

    The error of “Gist/Abstract” lies NOT if a particular claim element may be an item capable of being performed by a human – or a parsed “mental step,” but in the officious “I know that the patented is really trying to do here.”

    The law as written by Congress gives this power (and responsibility) to a different entity. See 35 USC 112.

  7. 9

    In the next written lobbying effort for the much-needed IPO-AIPLA proposed Section 101 amendment, this thread of comments could be Exhibit 1—or Exhibit 10,749.

  8. 8

    This was a good examiner. They recognized that the specification didn’t explain how to do it’s sole functional claim and they made 101 and 112 rejections. That’s the way it should go, as it creates a better record in 90% of cases than citing prior art does.

    Question for the peanut gallery – Forget 101. If you have a claim that determines two values, subtracts one from the other, and comes to a conclusion based on an undefined threshold, and then an argument that the art already conventionally knew how to determine the two values, can any of you fashion an argument that the claim is non-obvious?

    Once again the facts are:
    1. I claim measuring A and B
    2. I claim subtracting B from A
    3. I claim that when B from A is large enough, I’m not saying how large, conclude X, but don’t do anything with X
    4. The art could conventionally measure A and B.

    I suppose one could make the argument that this is non-obvious to a field whose ordinary skill in the art is incapable of performing subtraction. But one of skill has at least the knowledge of a lay person, so no such fields exist. In other words, I would argue the claim is obvious solely over the admission of the applicant.

    1. 8.1

      “This was a good examiner. They recognized that the specification didn’t explain how to do it’s sole functional claim and they made 101 and 112 rejections”

      Did you actually read the PTAB decision? Obviously not. From the Decision:
      We REVERSE the rejection of claims 7, 18, 20, and 21 under 35 U.S.C. § 112, first paragraph.
      We REVERSE the rejection of claims 7, 8, and 18 under 35 U.S.C. § 112, second paragraph.
      We REVERSE the rejection of claims 1-5 and 9-17 under 35 U.S.C. § 103(a) as unpatentable over Sullivan and Takeuchi.
      We REVERSE the rejection of claims 1-5 and 9-17 under 35 U.S.C. § 103(a) as unpatentable over Sullivan, Zilberg, and Gavish.
      We REVERSE the rejection of claims 7, 8, 18, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Sullivan, Zilberg, Gavish, and Ariav.

      This examiner threw ten pounds of crap not even a biased PTAB could swallow, and the 101 rejection was based on a lack of “inventive concept.” See p. 12.

      Can you tell me what is an “inventive concept?” If you admit that you can’t, don’t interrupt the adults with your nonsense.

      If you claim that you can, it means that you’re ignorant and you shouldn’t interrupt the adults with your nonsense

      1. 8.1.1

        When you remove the prior art from the claim (a machine with sensors and a processor) the “inventive concept” is what’s left over. That’s one way of doing it.

        Was this supposed to be a difficult question?

        1. 8.1.1.1

          “When you remove the prior art from the claim (a machine with sensors and a processor) the “inventive concept” is what’s left over. That’s one way of doing it. . . . Was this supposed to be a difficult question?”

          Actually its a simple question with an impossible answer. No court in nearly 170 years has been able to define “invention” or “inventive concept,” and twice the SCOTUS admitted “invention” is meaningless.

          Second, comparing a claim against the prior art is 102/103. I suggest you actually read those for once in your life.

          Now go find me where in s101 where Congress required “inventive concept” for patent eligibility.

          1. 8.1.1.1.1

            Seriously, you sound like you are new to this stuff and frustrated that your tired script isn’t being taken seriously. Some of us have been thinking about this stuff a lot longer and a lot more carefully than you.

            [shrugs]

            1. 8.1.1.1.1.1

              “Seriously, you sound like you are new to this stuff . . . .”

              I’ve represented clients on 101 issues before the PTAB, the CAFC, and now the SCOTUS.

              “Some of us have been thinking about this stuff a lot longer and a lot more carefully than you.”

              No, you’ve not been thinking at all. You’re too intellectually lazy and inept to address the questions before you.

              Go ahead, define “inventive concept.” Also, show me where in 101 there’s a requirement for inventive concept and improvement. Do it or shut up, because anon is 100% right about your dishonesty

              1. 8.1.1.1.1.1.1

                My posts are hitting a filter…

      2. 8.1.2

        Did you actually read the PTAB decision? Obviously not.

        I did, and I went so far as to read beyond the results too, believe it or not.

        The Examiner finds that Appellants’ Specification “provides no
        instruction on how to select two different ‘time constraints’, or how they are to be/can be ‘adjusted such that the treatment pressure does not cause false snore detection.”‘ Ans. 8. Appellants contend that such filtering time constants were well understood by those of ordinary skill in the art, citing references as evidence thereof, and submit that their Specification sufficiently describes the distinction between the filtering time constants for inspiratory and expiratory noise that one of ordinary skill in the art would understand how to adjust them so as to avoid false snore detection.

        He noted that the specification did not teach how to perform the only possibly novel functionality and made an enablement rejection that forced the applicant to provide references to show that it was already known in the art. That is a hundred times better than making a strong 103 rejection, because applicant can’t argue around his own admission.

        From the concurrence:

        Claim 1 attempts to create the impression that a first noise level is detected “during an inspiration phase” and a second noise level is detected “during an expiration phase” of a breathing cycle. Claims App. However, in truth, the entire invention is devoted to simplifying the process of snore detection so as to eliminate the need to actually detect either inspiration or expiration. See Spec. ,r 11 ( explaining that the invention uses a microphone to detect snore and that pressure or flow sensors, that can actually differentiate between inhalation and exhalation, are optional)…

        The Examiner is correct that claim 1 is nothing more than a generic listening device that subtracts softer sound amplitudes from louder sound amplitudes and then uses a generic processor to perform routine calculations and logic operations. The deduction that a “snore” has occurred is merely a logical deduction derived from a simple subtraction calculation in connection with a host of unclaimed assumptions regarding the environment in which the sound measurements are taken.

        It’s not about whether the rejection gets upheld. There’s always someone else to appeal to. It’s about forcing the creation of a solid record so that future tribunals are capable of coming to proper conclusions. The question is whether the examiner created a good record. The enablement rejection made clear that the processor performing [1] and [2] was just a microphone receiving sound and splitting the input into two buckets in a conventionally-known manner, and it wasn’t the examiner finding that, it was the applicant arguing it. The conventionality of that feature is the only relevant fact the examiner needs to actually nail down. It doesn’t matter whether the office patents the claims or not now, because a district court has the only fact it needs to come to a proper conclusion on patentability.

        Can you tell me what is an “inventive concept?” If you admit that you can’t, don’t interrupt the adults with your nonsense.

        An art-improving disclosure apart from the ineligible subject matter which justifies the use of the patent power. In other words – the ability to point to a piece of information *that didn’t already exist in the world* and say “the art didn’t know this before my disclosure, and now they know it, which justifies congress granting me this patent.”

        If you claim that you can, it means that you’re ignorant and you shouldn’t interrupt the adults with your nonsense

        You sound frustrated, and not in the cute anon or nightwriter-like “this isn’t how the law should be” way but in the much less cute “I allegedly have a license and yet genuinely do not understand how the law works” way. My post wasn’t even about 101 and respond with “inventive concept? Don’t interrupt the adults with your nonsense”? You should revisit your tantrum after you take a nap to make you feel better, and apologize.

        1. 8.1.2.1

          but in the much less cute “I allegedly have a license and yet genuinely do not understand how the law works” way

          Random, you have picked up some bad habits from Malcolm, but the Accuse Others meme is perhaps the worst.

        2. 8.1.2.2

          “I did, and I went so far as to read beyond the results too, believe it or not.”

          No I have a hard time believing it. You cited the s112 rejection as if it meant something when even the PTAB rejected the Examiner’s nonsense.

          The PTAB declared the claim limitations as a whole ordered combination novel and non-obvious under s103, then the PTAB declared the same claim limitations well-understood, routine, and conventional under s101.

          It takes a special sort of stupid to believe that.

          1. 8.1.2.2.1

            Another post – another filter hit.

            Interestingly, it appears that “word-specific” filters are not objectively applied as words that I am cutting and pasting from existing posts are blocking my posts…

          2. 8.1.2.2.2

            B,

            You capture Random’s comment of “I did, and I went so far as to read beyond the results too, believe it or not.,” but you did not translate that comment correctly.

            The correct translation of “I went so far as to read beyond” is that Random OVER-reads the case and is applying his well-known confirmation bias in order to twist the case to be some type of confirmation of his views regardless of what the case actually says.

            Random does this so habitua11y, that he has lost the ability to actually learn anything from these cases.

            Do you remember his very dark mood of a few weeks ago? I conjectured that THAT mood was because Random had been sma cked down internally for his Desired Ends approach NOT aligning with the new directives begin given to him for him to be doing his job. He simply views his job based on his own “locked-in” view of what the law “should be,” and cannot get out of his own way.

            When you say “It takes a special sort of st u p1d to believe that.” you say that to a person that celebrates that specialty.

        3. 8.1.2.3

          An art-improving disclosure apart from the ineligible subject matter which justifies the use of the patent power. In other words – the ability to point to a piece of information *that didn’t already exist in the world* and say “the art didn’t know this before my disclosure, and now they know it, which justifies congress granting me this patent.”

          That would suggest that diagnostic “correlation” patents such as Mayo should be patentable.

    2. 8.2

      Yes I can. If one reads the background of the invention portion of the application, one will see that there has been a long felt need for fast accurate snore detection and that some have gone to great lengths to achieve that goal, with only limited success. So, yes I can fashion an argument that the claim is non-obvious based on paragraphs 3 – 9 of the application:

      link to patents.google.com

  9. 7

    it’s “Alder,” Dennis

  10. 6

    This is a claim to a machine! Should smoke detectors be non-patentable because they are directed to the abstract idea of detecting smoke?

    1. 6.1

      And books are articles of manufacture.

      What’s your argument? “My claim says ‘machine’ so it’s eligible?” That’s not how it works. No practically functioning eligibility screen can ever be so easily scrivened around as that.

      It’s 2019. Catch up to reality.

      1. 6.1.1

        I actually do not understand why this invention should not be eligible as a machine, but clearly fail for being obvious on 103 grounds, or fail on 112 grounds for not describing how to differentiate a snore from some other recurring sound pressure level variation.

        I don’t think a lot of people involved, or not, with the patent system would understand it either.

        1. 6.1.1.1

          +1

        2. 6.1.1.2

          Hi Martin,

          I did my best to analyze this claim based on the alice/mayo flowchart in MPEP 2106 and the current USPTO 101 guidance. I think the PTAB decided this correctly, and my analysis is below.

          Look at the alice/mayo flowchart in MPEP 2106. The claim passes step one because it is directed to a machine. The machine is a device that includes two physical elements: a sensor and a processor.

          Now move to step 2A. The steps of the claim form an “abstract idea” judicially recognized exception, where the abstract idea is “detecting snoring”. For this purpose, the sensor detects sound levels and the processor subtracts one level from another to obtain a difference in the sound levels.

          This is purely a mathematical step and is akin to what my wife does when she hears me “sawing wood” in my sleep: at first she hears a low noise/pause, then a loud sound. The claim does not specify additional elements that do something “significantly more” than the judicially recognized exception (the abstract idea).

          If the claim were amended such that the processor “does something” with this difference value, the claim would likely overcome the 101 rejection. For example, if the processor additionally compares the obtained difference to threshold values/a lookup table, and then the processor executed *something* in response to the threshold detection being met or exceeded (e.g. send an alarm or message to a graphical user interface of a mobile computing device).

          As to obviousness/103, ask 10 different patent attorneys/agents/examiners what obviousness means, and you will likely get 10 different answers.

          Best

          JohnG

          1. 6.1.1.2.1

            Thanks John,

            But isn’t sending an alarm or a message trivial post-solution activity?

            Would a claim to smoke detector really be any different if the detector did not include a beeping function? Or would the smoke detector claim really only be to a novel smoke sensor?

            After all, detecting smoke is something your wife would use her senses for too. I suppose the decision to wake you or not would be something else ;-)

            This is a totally weak invention, but it does seem to be a machine and it does seek to claim some structural novelty as a machine to detect snoring. It just does not explain how it is supposed to do that or why the basic components to do that are not totally obvious to any potential PHOSITA.

            1. 6.1.1.2.1.1

              What “smoke detector” are you talking about, Martin? Show us the claim.

              It makes a huge difference.

              1. 6.1.1.2.1.1.1

                US 9,396,637

                1. A smoke detector comprising: a smoke detection chamber comprising: a light source operable to provide radiation to an interior space of the smoke detection chamber, and a light detector operable to receive radiation scattered by one or more radiation scatting particles in the interior of the smoke detection chamber; an alarm control module, in communication with the smoke detection chamber and a processor, operable to produce an alarm indicating a presence of a predetermined threshold of the one or more radiation scattering particles; the detector configured to perform an alarm compensation threshold method comprising: comparing a calibrated clear air voltage measurement with an average clear air voltage measurement; adjusting an alarm threshold, based at least in part, on the comparison of the calibrated clear air voltage measurement and the average clear air voltage measurement; wherein if the calibrated clear air voltage measurement is less than the average clear air voltage measurement, then an increased amount of dust in the smoke detector is indicated and the alarm threshold is increased; the detector further configured to perform the averaging clear air voltage method comprising: determining if the average clear air voltage measurement is to be updated; obtaining, if the average clear air voltage measurement is determined to be updated, a new clear air voltage measurement from the smoke detection chamber; and updating the average clear air voltage using the new clear air voltage measurement; wherein the average clear air voltage is not updated if one or more of the following conditions are detected: a smoke fault, a fatal fault, standby mode, smoke calibration mode not complete, or any detected abnormal operation or condition prevents CAY averaging.

            2. 6.1.1.2.1.2

              Martin, please identify the “structural novelty” in this machine with a sensor and a processor.

              1. 6.1.1.2.1.2.1

                How would one draft a claim with a controller or processor that performs a novel function? The processor is structure that has millions of logic elements wired within, the totality of which is configured and tied together to perform, let’s say, a completely novel function. How would one draft a claim without having to recite every single logic gate and its interconnections?

                1. TB,

                  I have deconstructed Malcolm’s dissembling as to optional claim formats along the very lines of your post with the fact that a claim COULD be written in tens or hundreds of such detailed recitations of “every single logic gate and its interconnections.”

                  Patent law simple does NOT require that option, as claims are written — expressly — as to be understood by a Person Having Ordinary Skill In The Art; and thus such an option as the micro-detailing that your post presents is simply NOT a legal requirement.

                  The bigger concern here is that Malcolm insists on dissembling on such a point, and would rather obfuscate as to his own desired optional claim format that would involve that level of micro-detailing BE not an option at all.

                  Such prevarication is allowed to run rampant here.

              2. 6.1.1.2.1.2.2

                ‘Martin, please identify the “structural novelty” in this machine with a sensor and a processor.’

                One doesn’t need to do so. One can describe a machine in terms of functionality.

                Are you really a patent attorney?

            3. 6.1.1.2.1.3

              Would a claim to smoke detector really be any different if the detector did not include a beeping function? Or would the smoke detector claim really only be to a novel smoke sensor?

              As always, you can’t take something that exists in the world and say “That’s eligible.” All you can do is analyze a claim. “A machine that detects smoke” is ineligible (even the first one). You simply can’t be eligible by just nominating a function achieved by your machine rather than the means your machine employs to achieve the function. That’s literally one of the holdings in Morse.

              1. 6.1.1.2.1.3.1

                That’s literally one of the holdings in Morse.

                Granted. But what is the logic by which one arrives at the ineluctable conclusion that this Morse holding is to be given effect at the subject matter eligibility condition for patentability, rather than the sufficiency of description condition?

                I do not believe that Martin is arguing that this claim should be regarded as patentable. I know that I am not making that argument, despite the fact that I agree with everything that Martin has said so far.

                Not every failure of a claim must occur, however, at the §101 step. Why—as a matter of either law or policy—does it make sense to sort the failure of this claim (for failure there indubitably is) into the §101 bucket, from among the various buckets of patent claim failures?

                1. Ah, please forgive the failure to close my bold after “description” in “sufficiency of description.”

                2. But what is the logic by which one arrives at the ineluctable conclusion that this Morse holding is to be given effect at the subject matter eligibility condition for patentability, rather than the sufficiency of description condition?…Why—as a matter of either law or policy—does it make sense to sort the failure of this claim (for failure there indubitably is) into the §101 bucket, from among the various buckets of patent claim failures?

                  Well in this particular case, because the examiner made a 112a rejection and the applicant produced convincing evidence that the technological features were conventional.

                  On the broader question, I agree with you that sometimes it may be difficult to distinguish between an unenabled/undescribed technological advancement (a claim that fulfills 101 but fails 112a) and an idea to apply an abstraction in a particular field of use with no technological problem (a claim that fulfills 112a but fails 101), as they are different points on the same continuum.

                  I do, however, somewhat disagree on the bucket sorting complaint. I simply don’t think it matters which bucket you sort it into. When an applicant argues the unconventionality, it admits the enablement issue, and when they argue for enablement, it admits the conventionality and thus causes a 101 issue. The fact that an applicant/patentee can choose *why* their claims fail based on the argument they want to put forward isn’t relevant, the only thing that is relevant is that the claims are cancelled.

                  This isn’t the first time this has happened. Back when 112b had teeth, a claim to a functional result absent particular means became a modern-day 112b when the applicant argued the functional language should be construed as particular means (Gen Electric, Perkin’s Glue) and became a 112a when the applicant argued that particular means in the spec supported the entirety of the functional language (Morse).

                  Why—as a matter of either law or policy—does it make sense to sort the failure of this claim (for failure there indubitably is) into the §101 bucket,

                  Morse discloses a single means of “printing at a distance” to the public, but claims every means of printing at a distance. To whom should the burden be allocated of proving whether the telegraph is 1) a subset or 2) a full set of print-at-a-distance machines?

                  Under current 112a jurisprudence, the burden is on the public to essentially counter-invent (i.e. to present an example embodiment that lies within the claim scope but outside of the enabled disclosed means, e.g., your telegraph does not fit the scope of all machines that print at a distance because here is a cell phone text message)

                  Under 101 jurispruden, the burden is essentially on the inventor to right-size his scope – point to limitations that make the claim more than a drafting effort to claim an abstraction.

                  Now I agree that if courts actually followed the logic in Morse in a 112a context, it wouldn’t matter (i.e. The specification describes a telegraph, but you claimed all machines that print at a distance, and *you didn’t foreclose the existence of other machines that may print at a distance besides the telegraph* which is enough to be a 112a violation) because it puts the burden where it needs to be, but that isn’t the 112a world we live in.

                  But the burden has to be allocated to the applicant/patentee, or otherwise counsels are just going to run around creating and claiming abstract functionality rather than technological advancement in the hopes that they can sneak by overbreadth. In other words – when unsupported inductive reasoning is sprinkled to try and grow a disclosed particular means into a claimed functional genus, the burden of utilizing the inductive language needs to adhere to the person who chooses the language (in our system, the applicant/patentee) and not the person to whom the language acts upon.

                3. “differernt points on the same continuum”…

                  That’s called conflation, Random.

                  Greg’s point is that the law is NOT so conflated.

                  He is correct.
                  You are incorrect.

                  That you are so confident in your error only shows how little that you understand the law.

                  Your “one continuum” is driven by the type of LACK of critical thinking that pervades a “Ends justifies the Means” mindset that corrupts the law and results in the broken score board condition that we currently have.

                  Your over riding tendency of confirmation bias adds to your other faults in making it such that you would prefer to stare at the incorrect score on that broken scoreboard and refuse to fix the broken scoreboard.

                  There is nothing “cute” about that.

                4. I think we are on the same page here Greg. I don’t see the kind of eligibility controversy with machine, composition, or manufacture claims as arise with method claims, and really just the subset of method claims that result only in processed information.

                  Is there a substantial difference in the meaning of eligibility in the vernacular and as a term of art in patent law?

                  el·i·gi·bil·i·tyDictionary result for eligibility
                  /ˌeləjəˈbilədē/

                  noun
                  noun: eligibility
                  the state of having the right to do or obtain something through satisfaction of the appropriate conditions.

                  To me, section 101 lays out those conditions: an invention must be reasonably characterized as one of the four allowed conditions. Accepting the judicial exceptions, we just endlessly circle back to the meaning of abstraction, and much more rarely to what is a natural law or product of nature.

                  Bilski said firmly that mere intangibility cannot mean certain abstraction in the patent law.

                  I say (and by now you KNOW what I say) that the only certain, basic, and impossible to refute meaning of abstraction is that only a human mind can host one.

                  No human mind, no abstraction

                  But an abstract patent claim is not necessarily an abstract invention. They are distinguishable. The former is a 103/112 problem. The latter is the 101 problem.

                  That’s how the bucketing needs to occur.

              2. 6.1.1.2.1.3.2

                “You simply can’t be eligible by just nominating a function achieved by your machine rather than the means your machine employs to achieve the function. That’s literally one of the holdings in Morse”

                You are correct under the patent law of the 1850s.

                However, s101 was expanded to include the word “process,” which wasn’t available to Morse. It may have been possible for Morse to make a broad method claim under s101 that did the same thing.

                I’m not criticizing you, btw. I’m merely trying to raise awareness that the children running the SCOTUS were too lazy to consider the impact of the 1952 patent act – or even recognize it – when they wrote their Alice and Mayo decisions.

          2. 6.1.1.2.2

            “forms” versus “directed to” – under the new protocol, are NOT the same thing John. A human does not “subtract sound levels” – and the claim is NOT “directed to (on a per se basis) the math of subtraction.

            1. 6.1.1.2.2.1

              Humans compare sound levels all the time and have been found so since forever.

              “This is twice as loud as that.” <= ancient

              1. 6.1.1.2.2.1.1

                Great – now read what I actually wrote – humans do not subtract sound levels.

                1. I just subtracted a sound level from another. Some of us have guitars and amplifiers and we make such adjustments routinely. Probably not true of patent attorneys who are more experienced with stuffed animals.

                  Please stop tr olling the blog.

                2. Please see my retraction (and re-focus away from the attempts to parse claims and not apply a claim as a whole view as is necessary for the legal question of eligibility).

            2. 6.1.1.2.2.2

              @ Anon ‘A human does not “subtract sound levels”’

              The decision fits the RecogniCorp decision perfectly. Of course RecogniCorp conflicts with McRo, but there you go.

              Anyway, the bottom line is that the PTAB’s affirmance of idiotic s101 rejections has decreased at best 5%.

              1. 6.1.1.2.2.2.1

                The CAFC case law (McRo and Enfish in particular) is an incoherent mess. That’s the CAFCs fault, not the Supreme Courts fault.

                1. “The CAFC case law (McRo and Enfish in particular) is an incoherent mess. That’s the CAFCs fault, not the Supreme Courts fault.”

                  Interestingly enough both those cases are dependent on the idea that a claim must demonstrate both an improvement and an “inventive concept” or the claim is abstract.

            3. 6.1.1.2.2.3

              A human does not “subtract sound levels”

              Really? Then why do the terms “more softly” or “quieter” exist? Why do we talk about the shattering of silence or distinguish between a murmur and a roar if we’re not capable of gauging a change in magnitude of sound levels? Why do we distinguish a hum and a snore?

              It’s true we don’t have a numeric threshold for such discernments, but then again, neither does the claim.

              1. 6.1.1.2.2.3.1

                Oh man I forgot about the phrase “lowered their voice” which is actually the best example. When someone drops from a conversation into a whisper to tell a secret, the person who hears them determines that they lowered their voice, and did so by subtracting a second measurement from a first measurement.

              2. 6.1.1.2.2.3.2

                None of that is an actual subtraction (of two concurrent levels).

                You are confused by one level and then a different level. Humans only have a single level at any one instant.

          3. 6.1.1.2.3

            This is correct. I’m not sure why people are saying PTAB isn’t applying the 2019 *because of this case.* This is a borderline 2019 guidance case to me. Observing something is one of the listed mental acts, and this is observing a sound followed by math, and there’s an argument that observation parts are conventionally known.

            Someone want to tell me why this should be eligible under the 2019 guidance?

            1. 6.1.1.2.3.1

              “Determining if a sound is a derp derp.snore is practical application derp derp.” — love, Fraud Iancu (R)

            2. 6.1.1.2.3.2

              Some of the brokenness here is the over-amplification and application of the Zombie of the mental steps doctrine.

              Machines simply are not human — not matter the similarity of terms that may be used to describe machine actions.

              The word that should help (if one is willing to unclench one’s eyes) is:

              anthropomorphication

          4. 6.1.1.2.4

            “As to obviousness/103, ask 10 different patent attorneys/agents/examiners what obviousness means, and you will likely get 10 different answers.”

            Respectfully, you’re incorrect. Not every patent attorney agrees with every 103 decision from the CAFC, and not every CAFC decision is consistent with CAFC precedent, but 103 starts with objective evidence and a set of rules.

            What is the basis of an Alice/Mayo decision? Decisions made in an evidentiary vacuum by technically-vacuous judges who follow no rules with the ultimate legal conclusion of patent-eligibility based on a term (“inventive concept”) the courts failed to define in almost 170 years and have admitted is meaningless.

            There is no issue under Alice/Mayo that isn’t better addressed under 103

            1. 6.1.1.2.4.1

              B, I hear you – ALL of this reflects the fact that the Court has simply chosen to IGNORE what happened with the Act of 1952, at which point Congress ripped from the Court the authority to apply Common Law law writing centered on the dozens of terms sounding in “Gist of the Invention” and replaced ALL of that muckery with the split out from the former single paragraph into the multitude of the new (and first actual 101 as well as the separate sections of law of 102 and 103.

              The reason WHY there is so much conflation with attempts to have an Ends justify the Means in the current eligibility mess (Court-induced eligibility mess at that) is precisely BECAUSE the Court has egregiously got core patent law WRONG.

          5. 6.1.1.2.5

            “This is purely a mathematical step and is akin to what my wife does when she hears me “sawing wood” in my sleep: at first she hears a low noise/pause, then a loud sound. ”

            I don’t think so. I would guess your better half performs pattern recognition on the loud sound to differentiate it from a dog barking or car alarm. I do not believe she measures sound levels during portions of the breathing cycle and subtracts one level from the other and compares that difference to a threshold to determine if you are snoring.

      2. 6.1.2

        And books are articles of manufacture.

        Do we really need to rehash your tired and trite arguments Malcolm?

        Shall I invite you (yet again) to discuss the clear and simple Set Theory explication of the exceptions to the judicial doctrine of printed matter that you only so eagerly ignore with your vapid “point” here?

        Or will that just result in you (figuratively) just running away again?

        1. 6.1.2.1

          Discuss your “set theory” yourself. The so called PMD is just another subject matter eligibility test, as everyone knows.

          1. 6.1.2.1.1

            I have put the discussion on the blog and directly asked YOU to discuss it.

            You have refused to do so.

            We both know why that is so.

            (your comment on PMD is thus deficient)

            1. 6.1.2.1.1.1

              I have no idea what you’re talking about but you are proving my point made earlier about your (lol) “ethics”.

              1. 6.1.2.1.1.1.1

                Pure nonsense from you Malcolm (and you are engaging in the Accuse Others that I had hoped that you could stay away from).

                Clearly, given the massive volume of my rubbing your nose in your run-away tactics when it comes to you NOT engaging in an inte11ectually honest manner when it comes to the exceptions to the judicial doctrine of printed matter, your “I have no idea” is nothing more than a banal L 1 E.

                That you want to then turn around and use an occasion for which YOU are acting unethically and attempt to accuse me of being unethical is only one of your most prolific blights on this forum.

                Such f00ls no one.

                1. I’m still waiting for you to discuss your set theory, Mr Ethics’s. What’s holding you up?

      3. 6.1.3

        @MM – Yes – and what is wrong with patenting a book? It is an article of manufacture, and therefore eligible for patenting under section 101.

        Oh, you must have been thinking about a 102 rejection! Books have been around for centuries, so another book is obvious! However, it may be possible that at some point in the future, someone may be able to invent a new form of book which is not obvious in view of any known book. I don’t know what it would look like – if I did, it would probably be obvious as well. However, it shouldn’t be ineligible for patenting as an abstract idea. There is nothing abstract about a book. Or about a machine that detects snoring.

        1. 6.1.3.1

          Sorry, that should have read “..another book is anticipated”

    2. 6.2

      Smoke detectors can still be claimed and still be eligible.

      Of course, it will require some skill in the art beyond knowing what smoke is and how to write the words “sensor does this”.

    3. 6.3

      Why, YES, because the express wording of s101 has been replaced with the “wisdom” of judges who know better

    4. 6.4

      “Should smoke detectors be non-patentable because they are directed to the abstract idea of detecting smoke”

      Best question of the day.

      1. 6.4.1

        It’s definitely the best question that totally obscured the actual issue presented by the claim, which is presumably why you are clapping for it. Yay! Dust clouds!

  11. 5

    Only a few days left to submit comments on the 2019 Guidelines. I just submitted mine last week and they still have not appeared yet on the USPTO webpage, so I gather that they are posting at something of a time lag.

    1. 5.1

      Greg — the comments are posted in batches. No set timing for each batch.

      1. 5.1.1

        Last batch was apparently February 13.

        Perhaps the Office is trying to figure out how to treat the obviously Organization-driven vehicle of mass-produced form letters (that horribly treats tech and legal points) coming from a rather well-known Efficient Infringer that has tainted the “Individual” category with over 85% of the total listed individual posts (or over 93% in the ten day window of February 3-13)…

  12. 4

    The “guidelines” are illegal on their face. There is no “practical application” exception to 101 and there never will be unless the term “practical” is defined to mean something very different from its ordinary meaning, and the loophole is itself limited to a narrow and specific set of circumstances.

    It’s highly amusing (and also a bit disturbing) to find adult patent attorneys cheering these guidelines as if obtaining a junk patent through a collective fraudulent effort is something to be proud of. Of course, the guidelines do keep the lights on for some firms that have been slowly swirling down the tubes. Hooray?

    Collecting data using functionally described sensors and using logic to identify something based on the collected data is quintessential ineligible gar bage.

    1. 4.1

      Fun game: describe something using excess verbiage, then claim a method of “automatically” detecting that thing using “sensors” and logic. Deep serious stuff! Then add a step of reacting to the identification, i.e., “present an appropriate ad” or “take corrective action”. Sooper techno!!!

      Ah, life with the Silicon Valley boys.

    2. 4.2

      unless the term “practical” is defined

      right next to the defining of “Abstract,” and “significantly more”…?

      1. 4.2.1

        “Abstract” is in the dictionary.

        1. 4.2.1.1

          Sadly, Justice Thomas refused to make that connection, and so the legal point here is that the Court did not define that word.

          You keep on wanting to but read the words actually used in the case at point…

          1. 4.2.1.1.1

            The term is in the dictionary and there is no suggestion that it’s usage in 101 has a substantially different meaning.

            1. 4.2.1.1.1.1

              adjective
              /abˈstrakt,ˈabˌstrakt/
              1.
              existing in thought or as an idea but not having a physical or concrete existence.
              “abstract concepts such as love or beauty”
              synonyms: theoretical, conceptual, notional, intellectual, metaphysical, philosophical, academic; More
              2.
              relating to abstract art.
              “abstract pictures that look like commercial color charts”
              synonyms: nonrepresentational, nonrealistic, nonpictorial, symbolic, impressionistic
              “abstract art”
              verb
              /abˈstrakt/Submit
              1.
              consider (something) theoretically or separately from something else.
              “to abstract science and religion from their historical context can lead to anachronism”
              2.
              extract or remove (something).
              “applications to abstract more water from streams”
              synonyms: extract, pump, draw (off), tap, suck, withdraw, remove, take out/away; More
              noun
              /ˈabˌstrakt/Submit
              1.
              a summary of the contents of a book, article, or formal speech.
              “an abstract of his inaugural address”
              synonyms: summary, synopsis, precis, résumé, outline, recapitulation, abridgment, condensation, digest, summation; More
              2.
              an abstract work of art.
              “a big unframed abstract”

              Not sure how this gets anwhere in a patent context. I can say this without reservation: no human mind, no abstraction.

              1. 4.2.1.1.1.1.1

                Again, Martin: the issue is whether the claim protects an allegedly novel “abstract” (and thus ineligible) innovation in a prior art context. The mere recitation of a non-abstract prior art context (e.g. “machine”) in the claim doesn’t resolve the issue created when the “innovation” itself (e.g., “identifying” something using data and logic) is abstract. There has to be more otherwise what is being protected is (again) the ineligible subject matter in a prior art context.

                This isn’t difficult reasoning to follow. The difficulty is understanding how and why the patent system got the place where this reasoning is somehow deemed to be controversial or (lol) dangerous to the careers of a certain class of patent attorney. For the record, I don’t personally find this latter bit of understanding difficult either. But some people are loathe to discuss it.

                1. “The term is in the dictionary and there is no suggestion that it’s usage in 101 has a substantially different meaning.”

                  The SCOTUS changed the word abstract from an idea in of itself to something that lacks an “inventive concept.”

                2. Malcolm,

                  Your “prior art context” is pure B$.

                  The first computer does not forestall innovation throughout computing.

                  All that you are doing here is repeating your debunked House/Morse fallacy.

                  Your fallacy was shattered with the Grand Hall experiment.

                  These are points that you have never treated with any sense if inte11ectual honesty, and all that you do when these points are presented to you is engage in your mindless ad hominem, scream out that you don’t understand, and evade the points.

                  You then show up time and again (in the Internet-style Shoutdown mode) and repeat your position as if no counter points had ever been presented to you.

                  You do not bother to attempt to reason through anything, as you are merely driven by your own feelings and personal views.

                  I do not care at all why you have the views that you have, but I do care that YOUR carelessness and lack of engaging with the points presented damages the legal system that exists to protect innovation.

            2. 4.2.1.1.1.2

              and there is no suggestion

              False. Try reading the case again.

              When Justice Thomas states “we need not define” that means that the Court is NOT defining (and thus, NOT using a common dictionary).

              Come on man – supposedly you are an attorney, right?

              1. 4.2.1.1.1.2.1

                What you wrote makes no sense. And yes I am a successful and busy patent attorney who has no use for gar bage claims like the one properly tanked here. That distinguishes me from blog tr olls like you.

                1. Except for the fact that you refuse to actually apply the actual law and instead rely on your feelings and an Ends-justifies-the-Means broken scoreboard….

                2. ‘The “actual law” is Mayo and you’re stuck with it forever.’

                  Yes, because the SCOTUS decided it had the right to redraft s101. Can you resolve Mayo with the language of s101? Where is the requirement for an “inventive concept?” I don’t see it.

                3. Mayo is about protecting an abstraction (specifically, a correlation) in a prior art context. The ineligibility of abstractions pre-dates Mayo and section 101. Abstractions, whether protected in the context of a machine or a process, are ineligible and there is no suggestion anywhere that Congress was attempting to change this (allowing people to own abstractions outright would be unconstitutional in any event). So the exceptions and the statute (as written) are bound up as one.

                  That’s how your difficulty is “resolved”. Mayo isn’t even a controversial decision in the life sciences, for goodness sake.

                4. Above Malcolm quipped (emphasis added):

                  The term is in the dictionary and there is no suggestion that it’s usage in 101 has a substantially different meaning.

                  Just like “inventive concept” is NOT in the words of Congress in the actual law of 101, neither is “Abstract.”

                  The Court used the word and refused to define it.

                  For some reason ( ), Malcolm does not admit to the plain facts of the case.

                  Sort of like he does not want to admit that the Court inserted the word “conventional,” and that word simply does not mean the same thing as the 102 or 103 standards of anticipated or obvious.

                  But hey, let’s sit back and watch him engage in his usual Accuse Others or other blight from his short list.

                5. @ MM “Mayo is about protecting an abstraction (specifically, a correlation) in a prior art context. The ineligibility of abstractions pre-dates Mayo and section 101.”

                  Obviously, you never read Mayo or a single iota of 101 case law – or even s101 or s103

                  Mayo should have been been decided under 103, rather than the SCOTUS unconstitutionally re-writing 101. Could it be obvious to administer a drug to a point that it provided beneficial effects but didn’t kill as an issue of common sense under KSR?

                  As to exceptions pre-existing s101, the exceptions cited by the SCOTUS are nonsense that s101 and s103 were expressly written to overcome. See any requirement of an “inventive concept” in s101? No you don’t. See any similar requirement in s103?

          2. 4.2.1.1.2

            … damm autocorrect: => keep on wanting NOT to read the words actually used in the case at point…

    3. 4.3

      @ MM “The “guidelines” are illegal on their face. There is no “practical application” exception to 101 and there never will be unless the term “practical” is defined to mean something very different from its ordinary meaning”

      You’re an example of incredible ignorance. There is no “exception” criteria in 101, and Alice/Mayo is an unconstitutional redrafting of the statutory language Congress enacted. The Supreme court added an extra hurdle to s101 based upon “invention,” but no judge can apparently define what the word means.

      1. 4.3.1

        The statute as written allows me to claim a useful, non-obvious mental process and a useful non-obvious process of writing a blog comment.

        You were aware of this fact before you typed your comment? The so called judicial exceptions were in place to rescue the statute because Congress failed to address the issues. The exceptions aren’t going anywhere.

        1. 4.3.1.1

          “The so called judicial exceptions were in place to rescue the statute because Congress failed to address the issues.”

          You really are ignorant.

          First, the SCOTUS has no Constitutional authority to redraft a statute based on policy concerns UNLESS said statute is unconstitutional. See recent Henry Schein case.

          Second, the SCOTUS pulled its “authority” out of pre-1952 case law totally oblivious to the fact that Congress redrafted the patent laws to save the patent process from the courts. I’d recommend a few articles on the issue but you seem adverse to actual knowledge.

          Read Mayo. The SCOTUS claims that their exceptions to 101 go back to 1851 (OReilly v Morse) while oblivious to the fact that 101 was drafted 100 years after Morse, and the Morse holding was based on what we’d refer to as 112(a).

          The SCOTUS reintroduced “invention” as a requirement to patentability. They did this in the 1950s under s103 until they retracted in Graham v. Deere. Later this same body decided to put “invention” in 101.

          1. 4.3.1.1.1

            The Supreme Court has already interpreted the statute to include the exceptions. That ship sailed. The statute as written and interpreted “plainly” is unconstitutional. So go ahead and rewrite the statute to expressly recite the exceptions and send a letter to your Congressperson demanding that the fix it accordingly. That’s your solution. You’re never going to able to enforce the statute as literally written against me or anyone else. The Supremes know that as does every reasonable patent attorney and law professor who has ever thought about the issues raised for more than ten seconds.

            [shrugs]

            1. 4.3.1.1.1.1

              “The Supreme Court has already interpreted the statute to include the exceptions. That ship sailed.”

              They didn’t interpret s101, they rewrote it. At most the SCOTUS can interpret words and phrases based on ordinary, contemporary meanings. Instead the SCOTUS added a requirement of “invention,” which Giles Rich et al. expressly wrote out of the statutory scheme in 1952

              Seriously, you spew garbage with every post

          2. 4.3.1.1.2

            I don’t need to read Mayo again. I know more about 101 and that case in particular than 99.99% of the patent attorneys on the planet. Not bragging. Just a fact. Do some research and you’ll learn quite a bit.

            1. 4.3.1.1.2.1

              @ MM “I don’t need to read Mayo again. I know more about 101 and that case in particular than 99.99% of the patent attorneys on the planet. Not bragging. Just a fact.”

              You live in a fantasy word. I don’t know a single patent attorney as ignorant as you are regarding s101. I don’t know a single attorney as ignorant as you of separation of powers. You spew error after error in every post.

              Show me in s101 where an “inventive concept” and an improvement are required, and when you realize you don’t now what you’re talking about go read Graham v. Deere

        2. 4.3.1.2

          Malcolm quips:

          The statute as written allows me…

          And admits his own undoing in that his statement carries the necessary implication that the Court is not interpreting law but is instead re-writing law.

          He claims that he is an attorney, and yet he cannot see the foundational problem here that is reflected in the broken score board of Separation of Powers transgression.

          On top of that, his “concern” is obscured in his kicking up of dust related to his oh-so-typical goal post moving of a claim PURELY in the mind (and connected to the Zombie of Mental Steps Doctrine) while not giving full credit to the notion of a “claim as a whole.”

          Any actual claim that — as a whole — “protects” or can be performed PURELY in the mind is itself provided for in the other prong of utility belonging to the Useful Arts, as any claim — again, critically, as a whole — that is PURELY in the mind does not possess the proper utility.

          This point has been presented to Malcolm previously and he only runs away from it, seeking to obscure his goal-post moving and re-animated Zombie Mental Steps dissembling with parsing claims and trying to not take a claim as a whole for his dissection (and then turning around and falsely trying to pretend that his parsed view ‘represents’ a ‘whole’ claim).

          He portrays the law as written by Congress in a false light as some type of “it’s OK to violate Separation of Powers here” in his inimical “Ends justifies the Means” mantra.

          Again.

  13. 3

    Mental process plain and simple. The steps that are recited as being performed by the computer, are not steps different from steps already being performed by doctors via mental processes. Automating a human mental process. IF the claim recited steps that are different than what a human would have naturally done then maybe there is a more grey distinction.

    1. 3.1

      Alas, the claim – as a whole – is to a machine.

      Whether or not a human may perform the types of steps does not make a machine into a human.

      The judicial gloss AGAINST “mere automation” does not accord with the actual simple and direct words chosen by Congress.

      (yes, this should be obvious, but bears repeating)

      Would a human performing the steps infringe the claim? The answer of “No” should likewise be obvious.

      Separating out your given answer, it very well may be possible to reject the claim as obvious in view of known human actions coupled with sound sensors. But as we both should be able to gather, a rejection under 101 is just not legally the same as a rejection under 103.

      1. 3.1.1

        Yes, it’s ineligible and obvious, like most “obtain data and identify” claims of this sort.

    2. 3.2

      The claim is complete garbage, and does not deserve the wasting of a mental thought during an inspiration and expiration of a breathing cycle.

  14. 2

    An even bigger problem with the Executive Branch Office not being consistent with its own guidance is that there is no real way to MAKE the Office elements (examiners or the Appeal Board) follow that guidance.

    (and that’s on top of the fact that EVEN following the guidance only gets you so far, and does NOT get your the ability to have whatever patent obtained enforced in an Article III court in which the Office guidance means absolutely nothing)

    1. 2.1

      The “guidelines” are illegal on their face. There is no “practical application” exception to 101 and there never will be unless the term “practical” is defined to mean something very different from its ordinary meaning, and the loophole is itself limited to a narrow and specific set of circumstances.

      It’s highly amusing (and also a bit disturbing) to find adult patent attorneys cheering these guidelines as if obtaining a junk patent through a collective fraudulent effort is something to be proud of. Of course, the guidelines do keep the lights on for some firms that have been slowly swirling down the tubes. Hooray?

      Collecting data using functionally described sensors and using logic to identify something based on the collected data is quintessential ineligible g a rbage.

      1. 2.1.1

        cheering…?

        Maybe you should actually read my post.

  15. 1

    PTAB panels are not uniformly applying the 2019 Guidance. Anyone who has an appeal with a 101 rejection should immediately file an RCE and get it back in front of the Examiner. Even 3600 art unit examiners are now using the guidance and rejections are being dumped.

    1. 1.1

      Re the last paragraph by Dennis above, this is consistent with my earlier prediction that the PTAB will continue to apply controlling Fed. Cir. and Sup. Ct. case law, even though the new PTO 101 Guidance expressly says that Guidance applies to them.
      Although filing an RCE even after an application rejection at the PTAB rather than a Fed. Cir. appeal can be a good idea, especially for adding declarations, it is not typical for examiners to otherwise allow claims on reconsideration which the PTAB did not. I think BB is advising filing the RCE [or continuation] before the PTAB can decide the 101 issues?

      1. 1.1.1

        Yes. Sorry not to make that clear. But even at a post PTAB decision stage, you might still get some sympathy from an examiner if a nominal amendment is made to add a “practical application” to the claim.

        1. 1.1.1.1

          Churn! Churn! Churn!

          Grab the cash and run to the bank before the client figured out the scam that Fraud Iancu and his enabling “customers” are pulling over the public.

          1. 1.1.1.1.1

            Your feelings (as divorced as they are from the actual law as written by Congress) are noted.

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