In re Morinville: Biz.Orgs. Not Patent Eligible

In re Paul Morinville (Fed. Cir. 2019)

Morinville is an independent inventor and inventor-advocate.  In the photo to the right, see Morinville burning one of his patent documents. He is also a regular contributor to Gene Quinn’s IPWatchdog site.

In this case, Morinville is attempting to patent a method of reorganizing a business hierarchy into a more centralized functional hierarchy.  Example: Move from Fig. 1 to Fig. 2.

Operationally, the claims require association of “roles” with each position, including a “major function” and then identifying positions in the hierarchy that have functional commonality between the roles.  Those associations are then used to generate a new hierarchy. And, “each of the steps is automatically implemented in the computer.”

The application was filed back in 2004.  In its first office action (2008), the examiner rejected the claims as directed to an abstract idea (applying a machine-or-transformation test) and also anticipated and obvious.  That rejection was followed by a second non-final rejection in 2009 and a final rejection in 2009.  During that time, Morinville added an “implement it on a computer” requirement, which satisfied the PTO on 101 grounds.  Morinville appealed the other rejections and filed his appeal brief in 2010.  Later that year, the examiner reopened prosecution with new obviousness rejections that were made final in 2011.  Morinville appealed again and won — with a 2012 PTAB decision finding the claims non-obvious (or at least that they have not been shown to be obvious).  However, rather than allowing the case, the examiner issued a new set of rejections on post-Alice eligibility as well as a new anticipation rejection. That rejection was then made final.  On appeal, the PTAB affirmed the examiner’s eligibility rejection — finding that the claims were effectively directed to an unpatentable abstract idea.  The PTAB explained:

The subject matter of claim 1, as reasonably broadly construed, is drawn to a business administration concept for management of a business; that is, claim 1 is focused on a methodology of creating a functional organizational structure from a hierarchical operational structure and controlling access to business processes based on the created functional structure. . .

We find the concept of organizational structure, in which an organization can be structured in different ways, and managing access to  business processes based on an organizational structure, is a well-established business practice, and an idea with no particular concrete or tangible form. Furthermore, we find the “computer” of claim 1 is invoked merely as a tool and does not provide any specific improvement in computer capabilities.

Now on appeal, the Federal Circuit has affirmed.  Writing for the court, Judge Newman explained that organizing a hierarchy is “a building block, a basic conceptual framework for organizing information” and thus abstract.  The court also agreed with the PTO that Mr. Morinville’s “computer” elements were claimed at such a “high level of generality” so as to have no grounding effect sufficient to transform the abstract idea into a patent eligible invention.

Read it here.

120 thoughts on “In re Morinville: Biz.Orgs. Not Patent Eligible

  1. 19

    Unsure why the need to mention his political affiliations here as they are completely irrelevant to the particular case at issue. But then it seems this site has been becoming more political and less patent based for some time.

    1. 19.1

      With Malcolm, that “some time” passed the 14 year mark in February.

      Based on an objective factual recollection made on one of Prof. Crouch’s periodic “can we have a nice blog?” campaigns.

  2. 18

    In response to Greg,

    I think that a machine that is processing an organization chart is technical.
    How can you argue that something that a machine is doing is not technical? It seems absurd on its face.
    Now if it could just as easily be done with paper and pencil and the machine isn’t really adding anything, then I think that the method can be analyzed outside the scope of machine implemented.

    1. 18.1

      But you know, what you see in reality, is that these methods are adapted to the computer and there things that are done that would not be done but for the computer.

      Etc.

      This is technical. It is bizarre to try to add this condition that not only must a machine perform the method, but that also the subject matter of the method be something that people consider technical. This is the most backwards ridiculous line of reasoning I’ve ever heard. It is right up there with the flat Earthers.

      The very nature of innovation is using technology to solve problems that may not be thought of as technical on their face. That is the very nature of innovation.

      (I know the Scotus just Ginsburg who should have retired in the 1800’s says differently. Ginsburg also talks about technology like a five-year old girl where she speaks of universes in her computer. )

    2. 18.2

      Think too about Deener. Why in the world would processing grain be technical? The only reason it is technical is because machines have been devised to process the grain. Think hard about that.

      1. 18.2.1

        Why in the world would processing grain be technical?

        Well, in order to try to answer that, we need a (non-circular) definition of “technical.”

        For all of the typical “anti” bluster (from others, NW, not you), I have yet to see anyone advance such a definition for discussion purposes.

  3. 17

    Business organizational structures are not patentable under 101?! There is a big “duh” factor to this opinion, as they wouldn’t even have been patentable under the old Bikski line of cases. Seems like this outcome didn’t warrant a 12 pages opinion, and even Dennis might have been okay with a Rule 36 affirmance.

  4. 16

    The concept of Void for Vagueness is surprisingly absent from the academic reviews in light of the fact that this case (yet again – see Cleveland Clinic) stands for the fact that meeting the executive branch level of scrutiny to earn a patent grant simply cannot account for the Common Law law writing evolution (past, present and into the future) of how the judicial branch will change the law.

    Given the level of importance of key terms simply not defined (in a proper legal sense), the level of Vagueness and “we know it when we see it” as a function of the particular “we” yielding vastly different results, the parameters of the second shear of the Kavanaugh Scissors (from the oral arguments of California Franchise Tax Board v Hyatt) can be seen to be readily met.

    Combine that shear with the shear of the holding from the Schein case, and you have a way to cut the Gordian Knot and eliminate the broken score board that now wreaks havoc with a simple foundation of patent law (simple, if one takes the words as directly written by Congress).

  5. 15

    At first I thought this was the worst claim to bring, but now I think Morinville may have a plan to ask SCOTUS (or Congress) to address/roll back judicially created exceptions to 101.
    I don’t think anyone believes this claim is likely eligible under the current law.
    But this claim probably only looks like “abstract idea + computer” because 2008’s 101 law required amendment to add the machine. It was likely a pure business method before.
    A decent patent attorney could probably write a version with a “practical application” or a “technical improvement” (albeit 15 years later) that might pass eligibility muster.
    So if Morinville likely knows it’s abstract under current Alice standard, he probably wants to change the law, pro se, maybe at SCOTUS level.
    He probably wants to roll back the clock to before Bilski.
    He likely wants to know why the judges created exceptions that have arguably swallowed all business method inventions. E.g., if the business method is novel and non-obvious, why not give him a patent?
    What makes a business method an inferior invention?
    Is the idea to disincentive disclosure of business methods and increase trade secrets?
    If the judges/justices essentially asked inventors to add a machine to their business method in 2008 and then said “but it can’t be merely a method + a computer” in 2014, then the analysis should probably be more focused on whether the method was known/disclosed beforehand than the nebulous “abstract” exception hinging on a “technical” improvement that wasn’t required 15 years ago.

    1. 15.1

      Re: “I think Morinville may have a plan to ask SCOTUS (or Congress) to address/roll back judicially created exceptions to 101.”
      It would be difficult to find a fact pattern more likely to have the opposite effect.

      1. 15.1.1

        +1

        1. 15.1.1.1

          +1

      2. 15.1.2

        Sure, Paul “has a plan.” He’s very smart! A very serious guy.

        1. 15.1.2.1

          You are gone for days and that is what you came back with?

          Beyond lame.

  6. 14

    GregDeL: when the courts say “… because your claimed computer is really an abstract idea, and abstract ideas are not patentable,” the result to the interested community is exactly the opposite. Instead of saying to themselves “well, that is fair because the statute requires a written description,” they will say to themselves “what is this about abstract ideas? That is not in the statute.”

    It’s true that abstract ideas are not listed among the categories of eligible subject matter. Why this is difficult for some attorneys to grasp is a total mystery! How can that difficulty possibly be explained by anybody? It would be so irresponsible to speculate.

    1. 14.1

      It’s true that abstract ideas are not listed among the categories of eligible subject matter.

      Great.

      Pull your head out.

  7. 13

    People are defending this garbage? Today might be the day that Patently-O jumped the shark.

  8. 12

    Read Chief Judge Archer’s dissent in In re Alappat, 33 F.3d 1526, 1553-58, 1566-68 (Fed. Cir. 1994). It’s illuminating on these issues, including the music thought experiment.

    1. 12.1

      then compare and contrast the losing dissent with the winning holding…

  9. 11

    Good point, Greg. It seems to me unarguable, that in fields like musical composition, patents would impede rathat than promote progress. About 20 years ago, the UK Government commissioned a large survey to find out whether patents on programs for computers would promote progress in the programming arts. Meanwhile, the EPO’s eligibility/patentability/technicity case law rumbles on, delivering ever more legal certainty as to what is patentable.

    Perhaps this quiet and steady (under the radar) but remorseless progress in Europe is what motivated Randall Rader’s mischievous, provocative and (I like to think) disingenuous utterance.

    1. 11.1

      Sorry. That was intended to reply to Greg’s 2.2 comment.

    2. 11.2

      >>Randall Rader’s mischievous, provocative and (I like to think) disingenuous utterance.

      It was a genuine remark. And, Greg is mixing up different types of protection. Radar was talking about technical areas, which this obviously is as it is about automating the reorganization of corporations.

      Music has copyright a different type of protection.

      Google was started with patents along with many other software companies in the USA. Europe has 1/10 the software industry as the USA. So it seems that Europe definitely made the wrong decision.

      And the EPO’s caselaw on eligibility is abysmal. It is a minefield where positive decisions are based on large corporations with lots of political sway pushing for eligibility in certain areas.

      Geez, Max.

      1. 11.2.1

        All of the same types are chiming in here, with a “mischievous, provocative and disingenuous” LACK of appreciation of the context of innovation along the lines of utility versus expression.

        I have to wonder if any type of “balance” is called for in responding to these examples of disingenuousness.

        1. 11.2.1.1

          >>I have to wonder if any type of “balance” is called for in responding to these examples of disingenuousness.

          anon, what I think is that less balance is called for in accordance with the unreasonableness and the motive of the argument. Here what we have are objectively unreasonable arguments that have a clear motive to not provide patents for an area of technology. The arguments are crafted for a purpose and as such are not fair arguments.

          These are the times when your persistence and intolerance is called for.

        2. 11.2.1.2

          If you don’t think music is useful, then you’re even less of a human being than I imagined.

          1. 11.2.1.2.1

            Obtuse. Is it deliberate?

            Did I say “not useful,” or can you pull your head out and understand the context of utility within the Useful Arts?

      2. 11.2.2

        Google was started with patents along with many other software companies in the USA. Europe has 1/10 the software industry as the USA. So it seems that Europe definitely made the wrong decision.

        California has tougher pollution emission standards than Iowa, and the weather is warmer in California than Iowa, so clearly Iowa could make it weather nicer by toughening its air pollution emission standards, no?

        Correlation is not causation. There are myriad other differences between Europe and the U.S. beyond their patent laws, so ascribing all industry differences between the two to the patent law differences is a fallacy. At a first order guess, I would say that German and French tax law have much more to do with the relative paucity of software startups in those countries compared to the US than does patent law in the various jurisdictions.

        1. 11.2.2.1

          While certainly correlation is not causation and that there are myriad other differences between Europe and the US beyond patent laws, the converse position that you attempt is not supported that patent law differences have had no effect.

          One more macro aspect is the way that patent law reflects a larger cultural aspect of “follow the guild” versus “pioneering individualism.”

          Seeing as Greg is deep within a “Big Pharma” mindset, his lack of grasping the different (and PRO-US, strong patent “maximalist”) position may be noted.

        2. 11.2.2.2

          Google? Patents? How about the founding algorithms that delivered the early astounding search success? Have they played any role at all in making Google the success it is? Which Google patents disclose them then?

          I should have thought that Google’s success is as much to do with patents as Coca-Cola’s secret formula for making a cola drink. More an example of success without help from patents than an example of success thanks to patents.

          1. 11.2.2.2.1

            +1

          2. 11.2.2.2.2

            I have sat on speaking panels with Google engineers and spoken with many of their in-house lawyers, and they will consistently tell you that patents had nothing to do with the company’s success, and that the patent system as a whole is largely an impediment to advancement. They have tens of thousands of patents now, obtained and acquired mostly for defensive purposes.

            There are definitely industries that succeed on the back of patented inventions, but for companies in Google’s space, not so much. Most technology companies in their space became established and dominant players in their respective markets before they even had a single patent. For example, Google got its first patent in 2004, six years after the company was founded and at least three years after it had utterly vanquished its competition in web search. It went on to have a massive IPO that same year, having only one issued patent that has never been asserted against anyone.

            1. 11.2.2.2.2.1

              The Efficient Infringement position of Big Tech (like Google) is of the “and water is wet” variety of “news.”

      3. 11.2.3

        Greg is mixing up different types of protection. Radar was talking about technical areas…

        From #2: I don’t see why [Morinville’s invention] shouldn’t be eligible… This is clearly technical.

        Now you are just begging the question. Is the org chart “technical”? What does “technical” even mean in this context? It seems to me that if we grant that Judge Rader’s quote is implicitly limited only to “technical” matters (a fair reading of Judge Rader, I will grant), then your citation to Rader’s authority here is wholly specious, because the Morinville invention’s qualification as “technical” is dubious at best. The only way that Rader’s quote works in your defense of Morinville’s invention is if one reads Rader’s assertion as extending beyond the “technical,” which is the over-broad sense in why my response was intended as refutation.

        If you think that Rader should be fairly read as only speaking of “technical” arts, then I withdraw my critique of his statement. On the other hand, at that point Rader’s comment does you no good in your defense of Morinville.

        1. 11.2.3.1

          As far as I remember, no one has ever bothered giving a non-circular definition of “technical.”

        2. 11.2.3.2

          ” the over-broad sense in why my response”

          Er, ” the over-broad sense in which my response…” Mea culpa.

          1. 11.2.3.2.1

            I think that a machine that is processing an organization chart is technical.

            How can you argue that something that a machine is doing is not technical? It seems absurd on its face.

            Now if it could just as easily be done with paper and pencil and the machine isn’t really adding anything, then I think that the method can be analyzed outside the scope of machine implemented.

            1. 11.2.3.2.1.1

              There may well BE the “unstated” position that the machine is merely some “proxy.”

              Of course, what that unstated argument is really all about is merely the Mental Steps Doctrine (or rather, the attempted Zombie reanimation thereof).

              This is one of the reasons why you will occasionally see me ask that an academic (who won’t be accused of bias or otherwise improvidently dismissed) actually paint the historical picture of that patent doctrine — doing so would greatly clarify (and dispel the nuevo attempts to use that doctrine).

              Otherwise, the more direct, simple, and effect adage of:
              Machines do not think may be used (even if some have qualms about the “Slogan” nature that such an adage presents).

      4. 11.2.4

        Eligibility at the EPO depends on drafting around the statutory exceptions to eligibility. Big corporations have the resources to procure and deploy prior to filing for patent protection the necessary international drafting skills.

        So, in that sense, I agree with you, that eligibility law is a “minefield”, but only for those who draft under domestic US eligibility law under the misapprehension that it will work just as well under the EPC. But I certainly disagree with you about whether the established case law of the EPO is “abysmal”.

        If you think there is a minefield at the EPO, what is your opinion of the “contribution” eligibility case law at the UK national Patent Office?

        1. 11.2.4.1

          OK. MaxDrei. But what you are saying is that eligibility under the EPO is a case by case basis. There are no real rules, but rather different areas that the EPO has decided are or are not eligible.

          That is very European. That is not very American. We like rules and then running with the rules.

        2. 11.2.4.2

          The UK seemed to me to be more rule based. Tough rules.

          You know, MaxDrei, we have a magazine for patents that the ABA puts out and they had an article about how to get around the EPO eligibility barrier. Basically, it was about drafting your application to focus on the improvements that would result from the invention based on the computer architecture.

          And I’ve cases like that from the EPO. It is just ridiculous to have to twist things like that to get eligibility.

          1. 11.2.4.2.1

            As I have pointed out to MaxDrei – it is very easy to sidestep the “per se” and “as such” caveats that MaxDrei sometimes forgets to note in his “EP Uber Alles” spiels.

            I am surprised though that MaxDrei has NOT noted how the current Director of the USPTO has drawn some direct comparisons (in the new eligibility protocol and comments made concerning the same), as to how the new protocol’s emphasis on “practical application” can be very much equated to seeing that claims simply pass a “per se” or “as such” basis.

            This point would mirror MaxDrie’s advocated position.

            It would also mirror other posts by me, notably those posts that I put out when certain types of people are trying to obfuscate what software actually is.

            To wit:

            Distinguish between:
            math
            applied math (e.g., engineering); and
            MathS (philosophy).

  10. 10

    Heh, no grant for automatically streamlining an org chart. Maybe if he’d tied it into some sort of succession planning scheme it would have fared better.

    The whole thing screams CBM, obvious, abstract, and cocktail napkin sketch.

  11. 9

    An org chart, like any other technical diagram, is intrinsically abstract.

    The only way it’s not abstract is if its used by a non-human actor (no human, no abstraction) to achieve some purpose.

    Even then, it would still have to be non-obvious and a not-abstract claim (i.e. show the inventor was in full possession of the invention, or that the claims are not merely aspirations)

    1. 9.1

      While I agree that the claimed invention is unpatentable, the claims do point to a non-human actor achieving a purpose (and, no, not the token recitation in the last step). Specifically, the “invention” is directed to an access control system that dynamically updates an access hierarchy based on organizational roles. One could analogize it to chown and chmod Linux commands that have variables pulled from an org chart. Data security is an improvement in a computing system, performed by a non-human actor.
      Now, invalid under 102, 103, and 112? Surely. But depending on how access is defined, it may be eligible or ineligible under 102.

      1. 9.1.1

        /s/102/101 obviously.

  12. 8

    The highly disruptive reorganization of organization charts for all kinds of alleged reasons is a favorite and frequent activity of corporate staff and outside consultants in many large companies, and not surprisingly the kind of thing hard to find prior art for in a normal examiner search.

    1. 8.1

      p.7 of the opinion states: “Mr. Morinville argues that his method is not an abstract idea, for it “ensures that access rules between organizations are matched automatically when any organization changes its structure,” Appellant’s Br. 12 (emphasis added), whereas in the prior art if an organization changes its structure “the access rules associated with the [prior] organization” structure must be manually changed to match the new organization structure, Appellant’s Br. 11”
      Wasn’t that an admission that what is being claimed is doing on a computer what had been done manually? Without any claim to any specific or novel software?

  13. 7

    Mostly off topic, but there is a new Trading Tech opinion out today. At the very end of the opinion—in just one paragraph—the CAFC disposes of a constitutional attack on the CBM system. There is no much detail in the opinion about the nature of that attack (the CAFC considers the challenge to have been waived for insufficient briefing in front of either the Board or the court). If you listen to the oral arguments, however, it is clear that the patentee was trying to make the takings argument that anon champions around here (the application of a more-likely-than-not standard to a §101 challenge in a pre-AIA patent constitutes a “taking” of the patentee’s right to a clear-&-convincing standard for post-grant §101 challenges). In other words, this sort of argument is little-by-little working its way up the line, awaiting a resolution. Eventually, this argument is going to be presented correctly, at which point it will be interesting to see the answer it receives.

    Regrettably, in this instance the PTO neglected to make the right response to this takings argument (i.e., no such right has been “taken” from anyone, because the challenger still must prove invalidity by clear-&-convincing evidence in court under the AIA, and no patentee ever had a right to clear-&-convincing proof in front of a PTO tribunal even before the AIA). Mercifully, the failure of the PTO to make its best argument in Trading Tech did not matter, because the challenge was waived by the patentee.

    1. 7.1

      no much detail in the opinion about the nature of that attack (the CAFC considers the challenge to have been waived for insufficient briefing

      They clearly were NOT paying attention to what I have said, as what I have said would not have ended up with this “insufficiency” issue.

    2. 7.2

      Incidentally, I highly recommend the oral arguments. The government attorney gets hammered by Judge Moore for failing to give a direct answer to a yes/no question. For all that, however, the government dances and stalls and hems and haws long enough that she eventually sits down without ever answering the question. I found it kind of cringe-worthy, but it was a master class in how an agent can evade a judge’s direct question when to do so would exceed her principal’s authorization.

      1. 7.2.1

        Even Judge Moore grudgingly acknowledges at the end of the exchange that the government attorney’s sandbagging had overcome Judge Moore’s own determined insistence on a yes/no answer.

      2. 7.2.2

        The government attorney gets hammered by Judge Moore

        Ah, sounds like another one of those “too much coffee” days.

      3. 7.2.3

        Greg, re “the government [attorney] dances and stalls and hems and haws.” What do you expect on any major issue from from a civil servant who now may not know what position his or her top management is going to take or be told to take from one day to another with the present government? I understand there are now more than 300 pending civil suits against agency conduct or policy changes absent normal rulemaking procedures?

        1. 7.2.3.1

          What do you expect on any major issue from from a civil servant who now may not know what position his or her top management is going to take or be told to take from one day to another with the present government?

          I think your question is both over and under inclusive.

          What I expect from any civil servant that has an appearance in court is to be prepared for the questions that likely to (or even merely may) come up IN court that touch on the matter at hand.

          While indeed the argument on Constitutionality was exceedingly weak (and basically a throw-away), the fact of the matter is that THAT question was there and thus was fair game.

          The “I’m only a lackey and thus not prepared when I should be prepared” gambit does not sit favorably with me, nor should it sit favorably with anyone.

        2. 7.2.3.2

          What do you expect on any major issue from from a civil servant who now may not know what position his or her top management is going to take or be told to take from one day to another with the present government?

          I find this a rather unconvincing excuse in this case, Paul. This is the fifth case where this particular attorney has had to defend the constitutionality of CBM proceedings, and she has been asked this question (and has successfully evaded answering) in the previous four.

          There is no way that she did not know she would be asked again. The judges of the CAFC have a right to expect the PTO to answer this question, so the attorney should have insisted on receiving instructions from her principals on the answer that she is to give.

          That said, it was an impressive spectacle to listen to her manage (successfully) to evade giving an answer for a fifth time. This is no way to run a justice system (the judge really is entitled to a policy answer from the agency), but simply as a feat of lawyering, I tip my hat to the deputy SG who pulled off the evasive maneuver (sort of the same way that you can think that a given Luftwaffe pilot flies the bomber well, even as you acknowledge the evilness of the mission).

    3. 7.3

      In other words, this sort of argument is little-by-little working its way up the line, awaiting a resolution.

      ROTFLMAO

      Gosh, it’s just impossible to predict how this is going to end.

    4. 7.4

      Greg,

      You also miss the fact that a Taking occurs for a granted patent at the institution decision point (the transition back into the Federal Agency, for which your comment of “in front of a PTO tribunal even before the AIA” may apply.

  14. 6

    I am reluctant to criticise Judge Newman, but wonder whether the claimed subject-matter is sufficiently transformative to fall as a matter of substance within the eligible “process” category of Section 101.

    And I sympathise personally with Paul but do not consider that burning your patent represents the best way forward.

    1. 6.1

      I am reluctant to criticise Judge Newman, but wonder whether the claimed subject-matter is sufficiently transformative to fall as a matter of substance within the eligible “process” category of Section 101.

      Perhaps I am just not on the ball today, but I am having a hard time connecting the first clause of your sentence (before the “but”) to the second clause. If, as you suggest, the claim does not recite a “process” within the statutory definition because it is not “sufficiently transformative,” then Judge Newman got it right, in which case you have no occasion to criticize her.

      For my part, I will criticize her (or at least part ways with her) here, but only very mildly. I agree with the panel’s conclusion to affirm the PTO’s rejection. I would have preferred if she had pulled an In re Comisky move and affirmed on a §112 basis rather than a §101 basis. Even then, however, this is a very mild disagreement. Given the absolute hash that the SCotUS has made of §101, however, I cannot say that her §101 reasoning is “wrong” (as in, inconsistent with controlling precedent).

    2. 6.2

      The Pandora’s Box lid of “a matter of substance”….

  15. 5

    I’ve read Morinville’s stuff at the other place and I had no idea that he’d be associated with claims like these. Good to know.

  16. 4

    I can agree with Mr. Morinville that this claim should pass §101, but this is the poster child for the sort of claim that deserves to fail under §112, even though long years of neglect from the PTO and CAFC have lead people to think of this sort of thing as a legitimate patent claim. Nearly every step simply screams “written description and scope-of-enablement problems.”

    1. A method implemented in a computer for dynamically generating a hierarchical functional structure from a hierarchical operational structure, comprising the steps:

    providing a hierarchical operational structure of unique positions within an organization;

    associating one of a plurality of roles with each of the positions, wherein each of the roles has a corresponding major function, and wherein at least a subset of the roles is non-unique;

    identifying a first one of the positions;

    identifying positions in the hierarchical operational structure that are subordinate to the first one of the positions and that have roles which have
    at least one functional level in common with the role of the first one of the positions; and

    generating a hierarchical functional structure of the identified positions; and

    controlling user access to business processes based on the hierarchical functional structure;

    wherein each of the steps is automatically implemented in the computer.

    NB, the final wherein clause tells you that each of those steps must be done on a computer. So every step in that method, the reader should ask “how is this done?” How is hierarchical organization structure provided? How are the plurality of roles associated with their respective positions? How is the first position identified? Etc and so forth.

    Is there more than one way to do each of these steps? Yes, the answer is “yes.” Has the patent taught us how to perform every possible way of performing each of those steps? No, not even close. Has the specification described every way of performing these steps, such that the reader can recognize that the putative inventor has possession of the full scope of the putatively claimed invention? No, not by a long shot.

    I can agree with Mr. Morinville that he did not deserve to lose under §101. That said, there is no injustice in denying him these claims. The PTO was quite right to refuse grant here, because the claims do not comply with the statutory requirements that Congress laid down in §112.

    1. 4.1

      Any attorney worth their salt would immediately recognize the appropriateness of the adage: The Ends do not justify the Means.

      1. 4.1.1

        The Ends do not justify the Means.

        Except when they do, which is quite often. Bildo the Hypocrite knows this but he can’t help but recite that vapid aphorism out of one side of his mouth, day in and day out.

        Most of us can understand that the various requirements of the patent statute overlap with and complement each other, for the plain reason that those aspects exist to serve the same purpose: keep junk claims out of the system. A claim to “The earth and everything on it” fails multiple aspects of the statute. You can dance around and cry that the claim fails for “overbreadth” or “vaguenss” and not because it covers ineligible abstractions but at the end of the day, it’s just you dancing in a puddle of your own tears. Boo hoo hoo.

        The more interesting question is: what kind of person spends a decade arguing with the PTO and the Federal Courts about cr ap that is so objectively st 00 pit? Get a life already.

        1. 4.1.1.1

          They do NOT.

          Not in law — which is why I put in there the “worth their salt” phrase.

    2. 4.2

      You can’t tell if it has 112 issues without looking at the specification.

      My comment on the claim would be that I think it would fail under 103. It sounds like the type of process that goes on by business consultants. Seems like something that is an implementation of a known business process. So 103.

      1. 4.2.1

        You can’t tell if it has 112 issues without looking at the specification.

        Agreed. But it does not take long in looking at the spec to see the §112 (written description and scope-of-enablement) problems.

      2. 4.2.2

        Seems like something that is an implementation of a known business process. So 103.

        I wish I could show obviousness by saying that the claim seems like something that is an implementation of a known thing.

        It sounds to me like the examiner tried 3-4 times to reject something as obvious and failed.

        It’s funny how 103 becomes a really easy standard when someone else has to do it and you’d prefer that rejection instead of a 112a/101 one, and a really really hard standard when it’s the only rejection remaining.

        1. 4.2.2.1

          It’s funny how 103 becomes a really easy standard when someone else has to do it and you’d prefer that rejection instead of a 112a/101 one, and a really really hard standard when it’s the only rejection remaining.

          LOL

          No doubt.

        2. 4.2.2.2

          It’s funny how 103 becomes a really easy standard when someone else has to do it and you’d prefer that rejection instead of a 112a/101 one, and a really really hard standard when it’s the only rejection remaining.

          This is true in the main, and a real shame. I realize that there will be a lot of resistance to this idea, but it seems to me that this problem can be fairly easily solved (and work a considerable improvement to the quality of examination and claims ultimately granted) if the PTO were to promulgate a regulation requiring/i> that claims be presented in Jepson format.

          The applicant knows what s/he thinks that s/he has invented. S/he should not hide the ball as to what the putative advance over the art is, but should rather put the putative advance right out front there in the claim. This would greatly simplify the matter of establishing whether the putative advance is a real advance relative to the whole state of the art, or only an advance relative to the inventor’s own limited knowledge of the state of the art.

          1. 4.2.2.2.1

            promulgate a regulation requiring that claims be presented in Jepson format.

            Have you seen the latest trend line on how little the OPTIONAL claim format of the Jepson claim is actually used?

            Your post comes across as untethered to the real world.

    3. 4.3

      As the PTO discourages examiners from those sorts of rections, the PTO does not neglect 112 but rather undermines it.

      1. 4.3.1

        ^

        You could have a team of programmers working for years and spending millions trying to do something and I could simply mention the result, and there isn’t an examiner in the world that would 112a me.

      2. 4.3.2

        Ben, you are certainly not the only examiner to note the long history of actual active PTO discouragement of giving 112, even enablement, rejections, even in applications clearly lacking in that respect. But wasn’t there some recent guidance improvement in that respect?

        Also, why does not the Board raise obvious 112 issues [as new grounds] even if the examiner did not?

        1. 4.3.2.1

          “But wasn’t there some recent guidance improvement in that respect?”

          The recent guidance is only a restatement of the existing guidance.

          And there’s no chance that the political appointees are valiantly struggling to get examiners to take the existing guidance seriously. The “training” for the restatement of existing guidance was a slideshow with a voice over reading slides. That is not the training mode sincere people would select to implement changes.

        2. 4.3.2.2

          “Also, why does not the Board raise obvious 112 issues [as new grounds] even if the examiner did not?”

          As the PTO and the CAFC implicitly sanction ignoring 112, why would they? Would that help their prosecution careers when they leave the PTO?

    4. 4.4

      So every step in that method, the reader should ask “how is this done?” How is hierarchical organization structure provided? How are the plurality of roles associated with their respective positions? How is the first position identified? Etc and so forth.

      Is there more than one way to do each of these steps? Yes, the answer is “yes.” Has the patent taught us how to perform every possible way of performing each of those steps? No, not even close. Has the specification described every way of performing these steps, such that the reader can recognize that the putative inventor has possession of the full scope of the putatively claimed invention? No, not by a long shot.

      I went searching for the Tormund clapping for Brienne gif, but this was so good I’ll just give you them all:

      link to giphy.com

      Oh here he is: link to gph.is

      I can agree with Mr. Morinville that he did not deserve to lose under §101.

      You might want to consider that a claim to a functional result absent a limitation to a concrete manner of getting there could clearly be an abstraction. The Supreme Court has never endorsed the Written Description test, and it is entirely possible that the exact same logic you use above – How is this done? Is the claim limited to a particular manner? – is in fact a 101 line of reasoning. i.e. The claim may simply be “directed to” associating a plurality of roles with respective positions with insignificant pre-solution data gathering, insignificant post-solution outputting, and a lack of significant limitations on the abstractions.

      Given that the outer bounds of a 101 rejection have not been defined, that the Supreme Court has never endorsed the Written Description test, and that the distinctions between Written Description and 101 Alice seem to be precisely the kind of burden shifting the court originally found appropriate in Morse (In other words, you’ll notice that it’s the *THREAT* of *future* ways of achieving the same result that drove the 101 invalidation of Morse, while 112a would require *evidence* that the full scope is *not* enabled/possessed *at the time of filing* – important differentiation in when burden shifting applies) I would ixnay a bit on saying this is clearly a WD violation and clearly not a 101 violation.

      1. 4.4.1

        The Supreme Court has never endorsed the Written Description test, and it is entirely possible that the exact same logic you use above – How is this done? Is the claim limited to a particular manner? – is in fact a 101 line of reasoning.

        Hm, I suppose that if I thought that title 35 means whatever the SCotUS says that it means, and that the only purpose of the CAFC is to arrive at the same conclusion at which the SCotUS would arrive if the SCotUS were hearing the case, then I could see the sense of what you write here. As it happens, however, I disagree with this line of argument.

        The Congress did not enact Title 35 for the benefit of the SCotUS. Rather, Title 35 was enacted to promote innovation. In order for it to achieve that end, it must not only be administered in a fair and impartial manner, but it must also be perceived to be administered in a fair and impartial manner.

        That is, if inventors have the sense that they will receive a patent if they act in a manner conforming to the statute, then they have an incentive to act in a manner conforming to the statute. If, however, they have the sense that they can act in a manner conforming to the statute, but still not receive a patent because the courts whimsically lard extra-statutory requirements into the list, then inventors will learn to distrust the patent system, and its value as an incentive will be correspondingly diminished.

        Now §112 unambiguously contains a requirement for a “a written description of the invention… in such… exact terms as to enable any person skilled in the art to which it pertains… to make and use the same.” Therefore, if Dr. X applies for a “computer configured to assign access to confidential information,” and the courts say to Dr. X “you may not have your patent…” or “the patent that you received was granted in error and has no legal force, because your specification does not described the invention in sufficient detail to enable the skilled artisan to practice the full scope of the claimed invention…,” then that is intuitively fair. When other inventors in the field look at Dr. X, they can say to themselves “well, that is only fair, because the statute requires a written description with a certain level of detail, and Dr. X did not give it.

        By contrast, when the courts say “… because your claimed computer is really an abstract idea, and abstract ideas are not patentable,” the result to the interested community is exactly the opposite. Instead of saying to themselves “well, that is fair because the statute requires a written description,” they will say to themselves “what is this about abstract ideas? That is not in the statute.” Moreover, they will say “what can the court possibly mean? There is nothing ‘abstract’ about a computer, which is what Dr. X claimed!”

        In short, by deciding this sort of case on the §112 grounds, a court engenders respect for the law and makes the law to serve its purpose in incentivizing innovation. When the court decides this sort of case on §101—even though the end result to the disappointed patentee/applicant is exactly the same—the court diminishes respect for the law in the interested community, and makes the less less effective for its intended end of promoting innovation. That is why it is better to ground this outcome in §112 rather than §101, even if the two rationales might be sort of “six of one, half dozen of the other” from the point of view of the examiner corps or the patent defendant’s bar.

        1. 4.4.1.1

          The Rule of Law is precisely why the Ends do not justify the Means.

          There is only one single person that has voiced opposition to that adage.

          Consider that source.

        2. 4.4.1.2

          The Congress did not enact Title 35 for the benefit of the SCotUS. Rather, Title 35 was enacted to promote innovation. In order for it to achieve that end, it must not only be administered in a fair and impartial manner, but it must also be perceived to be administered in a fair and impartial manner.

          You misunderstand my complaint. Although you and I disagree on some applications of 101, I think we are in agreement with the line of thinking that unsupported inductive reasoning leads to invalidity. My complaint was that in such cases the actual test that has been made by the CAFC is insufficient. I don’t have a problem with the concept of using 112a WD as the test (most of the time), I agree with you there. I have a problem with what that test ACTUALLY IS.

          Under the current 112a test, any one can expand their invention to the abstraction and it will be presumptively valid: If I invent the structure of the bow, I’m a fool to claim that is my invention. Instead, the structure of the bow becomes “an embodiment” that “can/may include” structural elements, and the invention is the function or utility achieved by the structure. Instead of “my invention is the bow” instead the smart statement is “my invention is a machine that fires projectiles, one embodiment of which is the bow.” This unsupported inductive leap cannot be challenged at the office stage – the examiner lacks the resources to counter invent, and post-dating references are (inexplicably) improper evidence. The examiner is saddled with a burden with no mechanism to prove it – If you show me a bow and claim all projectile-firers, I can reject under 103 if there is a pre-dating gun, but I can’t invent the gun myself, nor can I cite a post-dating gun. If I try to posit a gun may exist, the counter-argument is “Sure, you say that now, after reading my disclosure, which only proves that the full scope is enabled/described. i.e. It must be that my bow disclosure is enough to support 112a over the full scope of the function.” I cannot call an expert to say how ridiculous that statement may be. It’s a he said she said and the office bears the burden.

          Thus the claim will issue, and when someone comes along and invents the gun (which they’ve already been chilled from doing) the fact that the office may expressly consider the bow patent and still conclude that the gun is a non-obvious means over that disclosure is also irrelevant. In fact, a claim to the firing mechanism of the gun, if found to be non-obvious over the bow disclosure, ought to inherently defeat the functional bow claim – as the only way it could be non-obvious is for the bow’s firing mechanism to not anticipate. That is the whole point of the preemption concern – That the functional bow claim is so abstract that it will impede future innovation. Instead, under current Federal Circuit law that is not only insufficient to carry the day, but is irrelevant and inadmissible.

          Nobody created the rule against postdating references for 112a purposes except the Federal Circuit, and they only did so during a time when they were misapplying 101 and 112b. Nobody created a standard that prevented the threat of future invention as sufficient to carry the burden except the federal circuit, and they did it after Morse was expressly concerned about it. The Federal Circuit could rule tomorrow, or the Supreme Court could say, that the clear and convincing burden is met by showing 1) that the specification discloses some amount of species in detail, 2) that those species lie within a claimed genus and 3) that the specification fails to provide a reason as to why disparate, undisclosed species could not also fall within the genus. That test would comport with the statute and would be an acceptable 112a test, not the terrible test they have right now.

          Notably, right now the use of an inductive leap under 101 is properly a sword against the claims – the claims become abstractions and the lack of structural limitations means there is less chance it will be found to be significantly more than the abstraction. 101 makes inductive leaps less patentable, 112a as tested simply makes them more encompassing.

          The best evidence that the disclosure of the structure of the bow fails to support the full scope of a machine that fires a projectile is to show a gun, regardless of when it was invented. But an even more appropriate standard is to not reward people for intentionally describing their invention vaguely or abstractly by making a rule that using inductive reasoning is sufficient for burden shifting, and failure to disprove disparate means lying within the scope constitutes a failure to prove possession of the full scope of the claim.

          I don’t complain that SCOTUS never endorsed WD because I want them to reject under a less-textually-supported 101, I complain they never endorsed WD because you cite WD as the proper standard for invalidity when invalidity should be much easier to come by. The person who invents the bow gets the bow. The person who invents the gun gets the gun. The person who invents the bow only gets the functionality the bow produces when he proves that a gun cannot exist and a bow fills the scope of the functionality. (This, by the way, is the only way to maximize the patent incentive) Placing the burden on the public to reject the inductive leap rather than the patentee to prove the validity of the inductive leap leads to a lot of overbreadth. If the Federal Circuit had made the right test, then a statement that this should be solved via 112a would carry more weight.

          1. 4.4.1.2.1

            Nobody created the rule against postdating references for 112a purposes except the Federal Circuit…

            Er, nobody created such a rule at all, because there is no such rule. Amgen v. Sanofi, 872 F.3d 1367, 1373 (Fed. Cir. 2017). What are you talking about?

            As I so often end up saying to you, I trust you when you tell me that this is how it works in your art unit, but that is nothing like how it works in the 1600s. If I write a genus claim, I need to be able to cite chapter & verse in the spec where I support that claim with tangible examples of enablement across the whole scope of the genus or the examiner will hit me with a written description rejection and that rejection will be sustained by the PTAB. Take a look at some of the office actions mailed by your colleague David Steadman if you do not believe me.

            1. 4.4.1.2.1.1

              Er, nobody created such a rule at all, because there is no such rule. Amgen v. Sanofi, 872 F.3d 1367, 1373 (Fed. Cir. 2017). What are you talking about?

              Ah, I was unaware of this case. Regardless the MPEP still cites approvingly In re Hogan (which this case mentions and seems to overrule or at least sidestep) for 112a post-dating. See 559 F.2d 595 the latter half of Section I and all of Section II:

              This court has approved use of later publications as evidence of the state of art existing on the filing date of an application. That approval does not extend, however, to the use of a later (1967, Edwards) publication disclosing a later (1962) existing state of the art in testing an earlier (1953) application for compliance with § 112, first paragraph. The difference may be described as that between the permissible application of later knowledge about art-related facts existing on the filing date and the impermissible application of later knowledge about later art-related facts (here, amorphous polymers) which did not exist on the filing date. Thus, if appellants’ 1953 application provided sufficient enablement, considering all available evidence (whenever that evidence became available) of the 1953 state of the art, i.e., of the condition of knowledge about all art-related facts existing in 1953, then the fact of that enablement was established for all time and a later change in the state of the art cannot change it.

              A reference showing a pre-dating gun can make a 103, and a reference saying that a gun was not possible on the filing date is a good 112a (though not very persuasive unless the reference specifically mentions it considered the publication of the instant invention), but a post-dated gun can’t make a 112a, as if the universe was capable of reconfiguring itself in the interim as to what functions were and were not possible.

              As I so often end up saying to you, I trust you when you tell me that this is how it works in your art unit, but that is nothing like how it works in the 1600s.

              True. Although I would also see Ben’s commentary above. They’re simply completely different fields. If someone provides a described but terrible algorithm for achieving a result, it’s hard to place a demarcation as to how far the teaching goes.

              If a disclosure calculates an estimated driving time based on simply triangulating distance (i.e. using “as the crow flies” rather than streets) and assuming a constant 15mph driving speed, that’s a pretty inaccurate algorithm for estimating driving time. Does it support a scope of only that algorithm? Or an algorithm of any constant mph value? Or any algorithm that uses crow flies? Or any algorithm that estimates? Assuming the specification states that the algorithm can be modified by any appropriate variables, what evidence or argument could possibly be presented that would render it undescribed?

              Either one takes the position that the only algorithm that is described is the disclosed one (crow flies at 15mph) or one ends with an argument where the examiner states that other non-specifically-considered-means are distinct and needed to be disclosed while the applicant says “It’s clear I intended to posit all algorithms.” The office is not particularly equipped to deal with the boundary drawing, and the office leadership obviously doesn’t want to limit validity to the actual algorithm (you know, the only thing particularly posited…) because it is easily designed around and therefore there would be no patents.

              In other words, what evidence would you be comfortable with to show that Applicant has not posited all manners of thinking of a solution to a problem?

              1. 4.4.1.2.1.1.1

                You really should understand that the ladders of abstraction have MORE than two rungs to them.

                1. If it proved your point, you could map Federico’s discussion of 112 3rd (now 112f) functional claiming to the assertion “he remarked that Congress has opened wide the use of terms of function OUTSIDE OF the option of “FULLY” functional claims that the §112(f) option provided.”

                  It does not.

                  And you will continue to fail to provide any explanation for how you think it does.

                2. The comments of Frederico are NOT limited to the current 112(f) and instead reflect BOTH 112(f) and general “combination” claiming.

                  This is in part due to the prohibition discussion on what is generally known as “single-means claiming.

                  I can see why you are confused with the presence of “means” but the “single” is the driver of the “single means” phrase, as opposed to the “means.”

              2. 4.4.1.2.1.1.2

                It seems acceptable for claim scope to cover things that the inventor did not know about. See for example the infringement under the doctrine of equivalents of means plus function limitations, which covers after arising technology. I wonder how this claim scope can be reconciled with the requirement of 112a.

                1. PiKa,

                  Is there a distinction being lost in your comment?

                  Is the set of items in your “not known” being confused with that

                  1) not known by the inventor BUT known by the legal fiction known as Person Having Ordinary Skill In The Art, and

                  2) not known by EITHER the inventor or by that legal fiction?

                  Do you understand the difference?

                  Do you recognize the court-induced “patent profanity” reverse effect that necessarily occurs when Courts make PHOSITA stronger (thereby making the Doctrine of Equivalents stronger and further reaching)?

                  As the Court makes PHOSITA stronger (and thus distinguishes amongst “after arising” and separates items within that category to be “after arising but not ‘inventive’ and to be “after arising and inventive over”), the double edge sword makes earlier patents stronger and lowers the necessary inclusion of material. This is the opposite of Random’s oft stated (and confused) attempt to ploy 103/112 into a “damned if you do, damned if you don’t” double edge sword.

                2. Your point is well taken, dear PiKa, that the doctrine of equivalents sits uneasily beside the requirements of §112. My solution to this problem is just to ditch the (pre-1952, extra-statutory) doctrine of equivalents, except for the part that was codified in 1952 (i.e., §112(f)). As usual, I think that the CAFC got this one right (Festo v. Shoketsu Kinzoku Kogyo Kabushiki, 344 F.3d 1359 (Fed. Cir. 2003) (en banc)) and the SCotUS got it wrong (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)). For better or worse, however, in a disagreement between the CAFC and SCotUS, the SCotUS always wins.

                  In any event, I would say the place where the d-of-e for after-invented components comes in is where the after-invented aspect lies on a non-novel aspect of the claimed invention. That is to say, imagine I invent a machine where the improvement over the prior art is a better sort of welding composition to hold two plates of the machine together. I claim a “machine comprising a two trapezoidal zinc-aluminum sheets, each between 10 mm and 18 mm in thickness, conjoined along at least one edge with a fastening means, and each bearing a plurality of cutting means along a non-conjoined edge.” In support of the “fastening means” I disclose my new welding compound, and in support of “cutting means” I disclose scissors, knives, and lasers.

                  If someone later invents a new welding composition and uses it to build my machine, there is no way that I am going to get that as part of my claim under d-of-e. The welding composition is the very point of novelty of my claim, so to the extent that the “new” welding composition really is new relative to my disclosure, I cannot in good faith argue that the new one satisfies the triple identity test.

                  By contrast, if someone invents a new knife and appends it to my machine, I might well be able to cover that machine. The knife was never really the part of the machine that that I invented, so it is possible to argue that this new knife still works substantially the same way as the previous knife to achieve substantially the same end as the previous knife.

                  In other words, the doctrine of equivalents for after-invented elements still pays tribute to the requirement for a written description of the invention. It is just that one is permitted to be more hazy and abstract about the parts of the invention that do not advance the art. It is only the aspect that advances the art about which the law needs to be insistent and exacting.

                3. that the doctrine of equivalents sits uneasily beside the requirements of §112.

                  Actually, it does not sit “uneasily” besides a proper understanding of the requirements of §112.

                  Now if you want to have some unrealistic super-hyper version that precludes ANY type of patent claim (including most all picture claims), then the problem is in the person having such a §112 view – NOT in the doctrine of equivalents.

                4. Another improper view of the Act of 1952:

                  except for the part that was codified in 1952 (i.e., §112(f)).

                  Even as Frederico expressed his own personal concerns, he remarked that Congress has opened wide the use of terms of function OUTSIDE OF the option of “FULLY” functional claims that the §112(f) option provided.

                  This is not a new point.

                  There is even a term coined for this: Vast Midle Ground.

                5. “Even as Frederico expressed his own personal concerns, he remarked that Congress has opened wide the use of terms of function OUTSIDE OF the option of “FULLY” functional claims that the §112(f) option provided.”

                  He did not.

                  Provide a quote.

                  link to ipmall.info

                  Keep in mind that “It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined” plainly addresses 112 3rd functional claiming.

                6. Ben,

                  You ask for a quote and then provide one that proves my point.

                  To that, the appropriate response from me is:

                  Thank you.

                7. [Fe]derico… remarked that Congress has opened wide the use of terms of function OUTSIDE OF… §112(f)… .

                  I am not following you here, Ben. You accurately quote Federico in your post, but the quote that you present does not conform in any way to the characterization that you present at the start of your post.

                  Far from saying that Congress authorizes functional claiming apart from §112(f), Federico says that “the exact limits of” how much Congress has authorized beyond what was permitted in Haliburton “remain to be determined. That is scarcely an assertion that Congress has permitted more than §112(f)’s “what is in your spec + equivalents.” At most it is a cautious acknowledgement that more might be permitted.

                  I am hard pressed to see how you are making the leap from the Federico quote to the much bolder assertion of permitted functional claiming.

                8. I am also lost as to what you could mean by “the option of ‘FULLY’ functional claims that the §112(f) option provided.” Federico makes clear that §112(f) expressly excludes a fully functional claim (“The [statutory] language does not go so far as to permit a… claim which recites merely one means plus a statement of function and nothing else”).

                9. Sorry greg. The first quote was anon’s. I was responding to his repeatedly asserted but never supported statement that Federico said something about non-112,3rd functional claiming.

                10. Ah, thanks. I did not realize that you were quoting anon, but now that you explain that, it all makes sense. The idea that anon should completely misunderstand both: (1) §112(f); and (2) Federico’s commentary on the same is much less surprising than the idea that you completely misunderstand them.

                11. LOL – ah yes, the “polite” agreement and the incorrect presumption that “anon” misunderstands the Act of 1952.

                  Neither of you get a passing grade on content, but Miss Manners does smile upon you.

  17. 3

    Morinville appears to be some kind of glibertarian bhole and, as I recall, that gathering of petulant entitled rich white boys burning their “worthless” patents included a Trumpkin.

    Surely just a coincidence, though.

    1. 3.1

      I posit that you cannot be a libertarian and a supporter of the patent system.

      1. 3.1.1

        I posit that you are wrong.

      2. 3.1.2

        Whatever. Libertarians are a notoriously fractious bunch, and every last one of them believes that his view (they are mostly “he”s, despite the reverence of many of them for Ayn Rand) represents the real libertarian perspective. There is no such thing as a position that one can hold that definitively disqualifies the speaker from classifying himself or herself as a libertarian. Any position statement advanced by a soi disant libertarian will draw an “anathema” from some other soi disant libertarian, but there is no libertarian pope to make that excommunication actually effective.

        1. 3.1.2.1

          In other words, “one bucketing” is extremely hazardous in this area.

        2. 3.1.2.2

          I hereby nominate Greg DeLassus as the Libertarian Pope.

          1. 3.1.2.2.1

            In the same way that it is important that the pope be Catholic, it is probably also important that the Libertarian Pope actually be a libertarian. That would seem to disqualify me.

            On the other hand, if the libertarians want to make me their leader, who am I to insist against. I will be happy to issue them a variety of encyclicals explaining why US patent policy is (or at least used to be) mostly good, and why Elizabeth Warren’s view of anti-trust policy is as close to perfect as one can hope to achieve in this fallen world. I might even elevate Prof. Richard Epstein to the rank of “libertarian patriarch of Alexandria,” as I believe that he partially agrees with me on those two points.

  18. 2

    Wow. Interesting to see this given how many comments I’ve read of Paul’s.

    Well, I don’t see why it shouldn’t be eligible. I remember retired CJ Radar saying that the test of whether you want a subject patent eligible is whether you want innovation in that area.

    This is clearly technical. So why would we not want innovation in areas like this?

    Newman has said before that she has to follow SCOTUS precedent.

    1. 2.1

      Judge Rader resigned in disgrace.

      1. 2.1.1

        I would not characterize it as “disgrace”, and it was unrelated.

        Also, if this is junk then why do you care if it is patented? Why would anyone want to infringe junk?

        1. 2.1.1.1

          It’s not junk because it’s without utility. It’s junk because “corporate structure” is not a “physical structure” and using a computer to do math is ineligible for the same reason that using a pencil and paper to do math is ineligible.

          Also, ineligibility isn’t about “this claim isn’t so bad.” It’s about not opening the gates to junk in order to prevent bottom feeding attorneys from sitting around and scrivening c r a p that promotes nothing except litigation.

        2. 2.1.1.2

          Chief Judge Rader was already at the end of his rope and losing control of the CAFC. See some of his en banc commentary (e.g., Alice).

    2. 2.2

      [T]he test of whether you want a subject patent eligible is whether you want innovation in that area.

      With respect, this cannot be correct. We want innovation in musical dynamics and meter, but I think that we all agree that copyright—not patent—is the right legal schema to encourage that innovation. Moreover, it would be a bad idea to award patents for innovative musical compositions. The system would choke on it (how to determine “infringement” of a patent on an innovative musical style), and it would choke off more innovation than it would encourage, because by the time the patent expired, musical tastes would have moved on.

      In any event, I point out this counterexample not because music is a uniquely interesting subject, but because it is an easy example to illustrate the falsity of the asserted Rader aphorism. There are many instances where innovation will proceed just fine without IP, and in those instances we should not have IP.

      I take no position at present on whether Mr. Morinville’s invention above lies in such a better-off-without-patents field. I just want to make clear that many such fields do exist.

      1. 2.2.1

        it would choke off more innovation than it would encourage, because by the time the patent expired, musical tastes would have moved on.

        Which is totally different from patents on correlating observations about a person with the likelihood of some past, present or future event happening to that person. Riiiiiiiight.

      2. 2.2.2

        There are many instances where innovation will proceed just fine without IP, and in those instances we should not have IP.

        With all due respect, THAT cannot be right.

        Greg falls victim to his own art unit myopia again and the elevation of one of the reasons to have IP (but for development cost) as some type of required element of having IP.

        Innovation and innovation promotion goes well beyond that.

    3. 2.3

      Innovation? Morinville declared to the court that:

      “the inventive concept is automatically
      generating a dynamic functional organization from an operating organization”.

      From time immemorial, the very essence of management, what managers are paid to do is:

      “generating a dynamic functional organization from an operating organization”

      So Morinville’s “contribution” to the arts of management is the invocation to do it “automatically”.

      But readers, do you not agree, based on your experience of managers, especially those of them that are too busy to think, that too is as old as the hills.

      Technical, you say, Night. I disagree. A computer has technical chracter, but a business method, even one for implementation on a computer, does not.

      1. 2.3.1

        I think you need some application of Deming there MaxDrei – as technical as any other “applied math” (read that as engineering) as any other ‘technical’ thing.

        Or does your (non)definition of “technical” include an express “anti-business method” clause?

        1. 2.3.1.1

          Business methods, as such, lack “technical character” and under Art 52 EPC are ineligible for patenting.

          Automation, as such, is not inventive. But there is plenty of scope for patenting new, useful, enabled and non-obvious methods that get invented during automation and do exhibit technical character. They just can’t be the business method, as such.

          1. 2.3.1.1.1

            Automation, as such, is not inventive.

            Wrong. Your statement attempts too much.

            Further, our Sovereign has chosen differently and my comment is geared to our Sovereign.

            Further still, I am sure just how easy it is to step past the “per se” and “as such” limitations (any decent scrivener at all can do that).

            1. 2.3.1.1.1.1

              The invocation “Automate it!” is no more an inventive concept than the invocation to “Apply it”. When a claim recites a number of old technical features, and its “point of novelty” is “automated” then it is not a patentable invention.

              Yes of course a scrivener can get past the EPO’s eligibility filter. That’s the whole point. But it doesn’t get you very far. Only as far as its 103 filter. Where it crashes under the “problem-solution approach” enquiry into the presence of an objective technical problem solved by a combination of technical features ie an inventive step. Because no amount of scrivening will transform an unpatentable invention into one that is patentable over the art.

              1. 2.3.1.1.1.1.1

                When I say “step past” I mean all the way past nd NOT as you insert this “being stopped at” the “103 filter.”

  19. 1

    Hilarious and immensely satisfying. The icing on the cake is that it was The Great and Wise Judge Newman who pounded the stake in.

    But how we will ever stop corporate bloat without more patents like this? I recommend that companies create expansive new legal departments to explore the issue.

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