Eligibility: Commercial Success is Irrelevant to Inventive Concept Analysis

In re Greenstein (Fed. Cir. 2019) (nonprecedential decision)

Mark Greenstein is trying to patent an automated investment system to “automatically adjust the amount [a] person saves” in order to achieve a projected income amount. A key element of the claims, according to Greenstein, is to “utilize a projected amount of income at a future date for at least one person.”  The Examiner and PTAB found the claims unpatentable as both lacking eligibility and as either anticipated or obvious.

On appeal, the Federal Circuit has affirmed the eligibility rejection — finding:

  1. Alice Step 1: Representative claim 1 recites receiving investment data, adjusting an individual’s savings, and investing the adjusted savings to achieve a projected retirement income. This describes no more than the automation of the longstanding fundamental economic concept of personal financial planning. We have routinely held that such claims are directed to abstract ideas.
  2. Alice Step 2: The claims merely recite an abstract idea with instructions to implement it “using one or more computers with associated software.” And as the Board correctly stated, these are “generic, purely conventional elements.”

On appeal, Greenstein argued that the claimed utilization of projected income was an inventive concept and noted that it “was the basis for the successful commercial launch of a new product, demonstrating its material advantages to persons in the relevant market.” On appeal, the Federal Circuit found that argument failed to connect the dots.

Even if Mr. Greenstein is correct that the claimed utilization of a projected future income was the basis for a commercially successful product, this is insufficient to transform the claims into a patent-eligible application. It is well-settled that a claimed invention’s “use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”

Slip opinion, Quoting BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018).

Greenstein filed this application back in 2014 (provisional in 2013). He was represented by Bacon Thomas before the PTO, but took it on pro-se before the Federal Circuit.

 

54 thoughts on “Eligibility: Commercial Success is Irrelevant to Inventive Concept Analysis

  1. 8

    Dennis, please correct the incorrect and misleading title.

  2. 7

    Allowing a showing of commercial success in the 101 “analysis” would undermine the ability of judges to impose an “I know it when I see it” standard and thus undermine their ability to randomly invalidate patents on good inventions. Just as actually analyzing the claims – you know, a Markman hearing – before conducting the “analysis”, and reading the whole claim instead of stripping out the “conventional and routine” parts would undermine that goal.

    1. 7.1

      Exactly.

    2. 7.2

      “Derp derp it’s all so confusing derp derp!”

      “Derp double derp I agree I’m confused too derp!”

      The wayward children of so-called “educator” Dennis Crouch.

      1. 7.2.1

        As opposed to the “wayward children” of obfuscator Malcolm (and his own special Derp Dance)…?

        1. 7.2.1.1

          “Derp derp nyah derp nyah!”

          1. 7.2.1.1.1

            YAY – more Malcolm Derp Dance

  3. 6

    False information still present in title of post. We’ll keep checking for updates.

    1. 6.1

      Let us all know when YOU will stop posting false information.

      Maybe in that “book” that you will be publishing…

  4. 5

    Will someone point out to me the statutory basis for the eligibility item of “inventive concept” (and DO please put this in terms of what happened in 1952 and how that Congress explicitly opted for crafting the NEW 103 using obviousness INSTEAD OF “inventiveness”).

    1. 5.1

      What is the statutory basis for printed matter exclusion under 103?

      1. 5.1.1

        See the Simple Set Theory on the Hricik side of the blog (easier to find there, although I have reprinted it in full on this side of the blog as well).

        1. 5.1.1.1

          I’d click a link, but I won’t go hunting for what will almost certainly fail to address the point.

          I hope someone responds to your question at #5 with an equiavent copout.

          1. 5.1.1.1.1

            The point Ben is that your understanding is deficient, and thus what you may merely think to be a “zinging” question only reflects your dullard intellect.

            That “exclusion” for printed matter starts off as a judge-made limitation, to which the critical exceptions reflecting the utilitarian nature for which patents apply are understood (leastwise by those willing to be inte11ectually honest).

            1. 5.1.1.1.1.1

              It was a perfectly sincere question even if I wasn’t optimistic about getting a coherent response from you.

              I understand that the printed matter doctrine started off as a judicial exception. Why does it continue post 1952? How does the statute support the PMD?

              1. 5.1.1.1.1.1.1

                As I noted, the simple and direct English language explication more than suffices to elucidate you — had you the wherewithal to understand the context that you do flippantly claim to understand.

                That YOU lack the actual ability to do so, does NOT mean that what I say is to be lacking “coherence.”

                1. If you were half the intellect you think you are, you would be able to communicate effectively with your inferiors. That you spend your time mocking rather than trying to communicate tells me nothing of your abilities but plenty about your character.

                2. If you were a quarter aware of your own lack, you would not venture such an asinine presumption that a superior intellect must be able to inform a lower one — when that lower one has been led to the well waters of wisdom, and has refused to drink.

              2. 5.1.1.1.1.1.2

                That you spend your time mocking rather than trying to communicate tells me nothing of your abilities but plenty about your character.

                Come now, that is not true. It tells you something both about ability and about character.

                The unwillingness to elucidate (and the transparently bad-faith effort to turn the question back on the one asking for elucidation) was the conclusive evidence of total bad-faith that finally motivated me to block that particular participant. The scoundrel does not answer the question because such a scoundrel has no answer to the question, and thus the only possible answer is to imply that if the scoundrel’s critic were just more clever and/or attentive, the critic would have your answer already.

                This is bad-faith through and through. This is why it is never worth one’s while engaging with that particular interlocutor.

                1. The scoundrel does not answer the question because such a scoundrel has no answer…

                  In other words—in case I was not sufficiently clear above—the problem is not only that the interlocutor in question operates in bad faith. The problem is also that he does not know what is talking about, even if he were to choose not to operate in bad faith. As I said, no point in engaging with that one. We each have only 86,400 seconds per day, and some people are not worth even one of those precious seconds.

                2. Says the guy unwilling to directly engage and who only snipes from the sidelines (while NOT recognizing that substantive comments ARE on the boards…)

                3. unwillingness to elucidate (and the transparently bad-faith effort to turn the question back on the one asking for elucidation) was the conclusive evidence of total bad-faith that finally motivated me to block that particular participant.

                  Total B$, Greg.

                  You just don’t like that I was “mean to you” AND had the better position.

                  Your p00r widdle feelings are what drove you to the convenient notion of not responding.

                  You suffer f00ls gladly (witness the kid gloves with Random) as you place a premium on the PC notion of politeness over the rough and tumble of actual veracity and critical expose.

                  You my friend are an inte11ectual coward for which, no matter how resplendent the robes of civility may be, those robes cannot hide the real reason you do not engage.

              3. 5.1.1.1.1.1.3

                I understand that the printed matter doctrine started off as a judicial exception. Why does it continue post 1952? How does the statute support the PMD?

                I have a few thoughts on this subject, and they are still somewhat half-baked, so I would welcome the chance to discuss this point. First, let me set out a few premises. I will not give citations to authority for this part of the discussion at this time, but if you think that I am taking liberties with the law in any of these postulates, I can go back and fill in citations to authority as you find necessary.

                (1) The purpose of a court engaging in statutory construction is to give effect to the will of the legislature. That is to say, while it is obviously necessary to take into account the words of the statute itself, the words are never sufficient by themselves. Rather, one must always begin by asking “what end was the legislature hoping to accomplish with this legislation,” and then come at the task of interpreting the words with this purpose in mind. A statutory construction—no matter how grammatically or syntactically perfect in its parsing of the legislative text—that works to frustrate the ostensible purpose intended by the legislature is always perverse and to be avoided.

                (2) When approaching the task of discerning “what end was the legislature hoping to accomplish with this legislation,” one should begin with the presumption that the legislature as a whole has a benevolent purpose toward the commonweal in mind.

                (3) It is the legislature as a whole whose intent counts. The expressions of this or that legislator (even the individual sponsors of the legislation) tell one very little about the legislature‘s intent. Neither is the drafter’s intent particularly informative as to discerning the legislature’s intent.

                (4) The intent of the legislature in enacting any given piece of legislation should always be understood in the context of the rest of the U.S. Code. For example, if Title 3 says that it is a crime to tamper with the mail, but Title 4 requires the postmaster to cull from the mail envelopes addressed in blood, we should understand that “tamper with the mail” does not run so far as to encompass “culling envelopes addressed in blood.”

                (5) Ours is a common-law justice system, and individual pieces of legislation are drafted against that background assumption. Where the courts (most importantly the Supreme Court, but where the Supremes have not yet spoken, the intermediate courts of appeals and district courts matter as well) have interpreted a given piece of legislative text, the next iteration of that same text should be presumed to carry over the same meaning as before, unless the language is meaningfully changed in such a way as to preclude that previous interpretation.

              4. 5.1.1.1.1.1.4

                So, what is the difference then between the PMD and the so-called “judicial exceptions” to §101, such that we should regard one of these as problematic and the other not?

                With regard to the “judicial exceptions,” I think that the first thing to understand is that much of what comes under the heading of “judicial exception” is not judge-made at all. The way that the Congress drafted the statute clearly conveys that much of this category is explicitly intended to be excluded from patentability. That is to say, if we consider the three broad categories of “judicial exception”—abstract ideas (a tricky category, which actually subsumes at least two meaningfully distinct concepts in an unhelpful manner), laws of nature, and natural products—they are each excluded by one or more words of the §101 text.

                That is to say, laws of nature and natural products are not “new,” and thus fail the first prong of the “new and useful” requirement of the §101 text. Meanwhile, abstract ideas (or at least what I would like to call “h-abstractions,” as distinct from “u-abstractions”) are not “useful,” and thus fail the second prong of that text. Therefore, it is not—for the most part—a case of layering on an extrajudicial requirement when these exclusions are applied at the §101 step of the patentability analysis. Rather, to enforce these exclusions is to give effect to the statutory text, just as Congress plainly intended.

              5. 5.1.1.1.1.1.5

                Turning back to the PMD, the thing to notice about this doctrine is that it was created as a mechanism to police the boundaries between copyright and patent. That is to say, Congress created patent law with a 20 year term of enforcement and no exceptions to liability. Congress created the copyright law with a 70+ year term and many exceptions (fair use, first sale, etc). Therefore, it is important for the courts—further to their duty to give effect to the whole U.S. code (axiom #4 in my 5.1.1.1.1.1.3 above)—to police the boundaries between copyright and patent law. Otherwise, one ends up with a situation in which one writes a clever story, and then patents a book with that story written in it, thus doing an end run around the fair use and first sale exceptions that Congress intended to be available in IP disputes over creative, new, and nonobvious stories.

                Although one cannot point to any specific line of text in either Title 35 or Title 17 that sets out the printed matter doctrine, the statutory necessity of a printed matter doctrine arises from the very fact that Congress enacted both Title 35 and Title 17. The courts do not defy the statute or even enlarge the statute, but rather give effect to the statutes as a whole by enforcing the printed matter doctrine.

                Meanwhile, it is important to think clearly about exactly what §103 really says. Contrary to a popular sentiment that one sees sloppily bandied about, §103 nowhere says that one must consider the “claim as a whole.” Rather, the exact text of §103 provides (when one includes all of the definition text from §100) that:

                A patent for subject matter defined by a claim in a patent or an application for a patent may not be obtained, notwithstanding that the subject matter defined by the claim is not identically disclosed as set forth in section 102, if the differences between the subject matter defined by the claim and the prior art are such that the subject matter as a whole would have been obvious before he filing date of the earliest application for which the patent or application is entitled, as to such invention or discovery, to a right of priority… or to the benefit of an earlier filing date of the the subject matter defined by the claim to a person having ordinary skill in the art to which the subject matter defined by the claim pertains. Patentability shall not be negated by the manner in which the invention or discovery was made.

                N.B., the text of §103 never actually uses the phrase “claim as a whole.” Rather, the actual phrase in the statutory text is “claimed invention as a whole,” which actually means “subject matter as a whole” when §103 is construed in view of the §100 glossary.

                So, what does “subject matter” mean? I have two thoughts to offer on that question.

                First, clearly whatever “subject matter defined by a claim” means, it cannot mean just “the words in the claim.” If that is all that were meant by “subject matter,” it would be much more to-the-point for §100(j) simply to say “the words in the claim” rather than “the subject matter defined by a claim.”

                Second, the best way to know what a term means in a statute is to consider how the term is used in the rest of the Title. To wit, 35 U.S.C. §8 provides that “[t]he Director may revise and maintain the classification by subject matter of United States letters patent, and such other patents and printed publications as may be necessary or practicable, for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed,” (emphasis added).

                It is clear that search classification scheme is not organized merely by words (one does not search prior art for a claim to a “computer” in the “C” section of the index, merely because “computer” starts with “C”). Rather, the classification scheme is ordered by technical content. A search to a claim for a new computer would begin in an index devoted to electronics, because computers are electronic apparatuses. That suggests that “subject matter” really means “technical content,” as distinguished from literary content, or ornamental content.

                In other words, when put totally into context in view of Title 35 as a whole, the words of §103 tell us that we must consider the technical content as a whole that is defined by the claim. That is to say, the literal words of §103 do not actually prohibit—even in their literal reading, when considered as an organic part of the whole Title 35—discounting the literary or ornamental when assessing obviousness.

                1. I find you copyright/patent basis for the non-statutory nature of printed matter unsatisfying (it seems possible to me that congress could have intended for new books to have different terms of different degrees protection, and it seems all too easy for congress to have clearly prohibited overlapping protection explicitly if it wished to do so), but I do not think it is implausible or unreasonable.

                  However you get there, I can accept that printed matter itself is non-statutory. That justifies rejecting/invalidating claims for printed matter itself under 101.

                  I think your “subject matter as a whole” argument for the PMD under 102/103 is correct (incidentally, this was especially where I was hoping anon might have an alternative argument). So we can now justify excising PM from the 102/103 considerstion.

                  The above seems to justify an alternative universe’s Alice where the claims are invalidated under 102 instead of 101. Non-statutory matter falls outside the “subject matter” of the invention. So just like we excise printed matter from the claim, we could excise all non-statutory matter (i.e. ‘judicial exceptions’) from the claim before considering 102/103. This alternative universe’s Alice goes something like: ‘Your claim to a computer that performs steps of intermediated settlement? Well, all the limitations describing intermediated settlement are given no patentable weight, and the remaining computer is anticipated by so-and-so. Invalid under 102.’

                  I know you’re no fan of our universe’s Alice. How would you view that alternative universe’s Alice?

                2. I think your “subject matter as a whole” argument for the PMD under 102/103 is correct (incidentally, this was especially where I was hoping anon might have an alternative argument).

                  It is entirely UNclear that such was something that you were looking for.

                  Further, this appears to be the absolute weakest link in the “fairy tale” of Greg’s half-baked (mind you, NOT fully baked, as Greg does appear to grasp some concepts) musings.

                  The “claim as a whole” is simply a different way of saying the exact same thing as “claimed invention as a whole.” Greg appears to be kicking up dust with some type of unclear strawman.

                3. [J]ust like we excise printed matter from the claim, we could excise all non-statutory matter (i.e. ‘judicial exceptions’) from the claim before considering 102/103. This alternative universe’s Alice goes something like: ‘Your claim to a computer that performs steps of intermediated settlement? Well, all the limitations describing intermediated settlement are given no patentable weight, and the remaining computer is anticipated by so-and-so. Invalid under 102.’

                  I am not sure that I am following, Ben. Alice was litigated on the basis of claim 33 of the ‘479 patent as being the representative claim. Alice Corp. v. CLS Bank, 134 S. Ct. 2347, 2352 n.2 (2014). Claim 33 recites:

                  A method of exchanging obligations as between parties, each party holding a credit record and a debit record with an exchange institution, the credit records and debit records for exchange of predetermined obligations, the method comprising the steps of:

                  (a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions;

                  (b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record;

                  (c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only these transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order, and

                  (d) at the end-of-day, the supervisory institution instructing on[e] of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions.

                  In other words, this is not just a claim to a computer configured to do [X]. This is a method claim, with a bunch of steps. I suppose one could say that the “start-of-day balance” and suchlike are just printed matter, to be accorded no weight in the §103 analysis. I am less clear how we can simply wave this whole series of steps away as “non-statutory”. That rather begs the question, no?

                4. Incidentally, if we interpret the PMD as being an outgrowth of careful parsing of §103 in view of the §100 definitions and the rest of Title 35, then that means that we disregard those words in the claim that do not relate to the technical content of the claimed invention. Where, however, the printed matter does relate to the technical content, one does not disregard the printed matter (see, e.g., In re Miller, 418 F.2d 1392 (C.C.P.A. 1969)). In other words, even if the claims at stake in Alice had been as simple as “a computer configured to [X],” I am not sure that this would invoke PMD-type thinking. The “printed matter” (so to speak) in that case would be 1s and 0s on the magnetic substrate (or optical substrate, or whatnot), and those 1s and 0s actually contribute to the technical effect, so they should be accorded patentable weight.

                  It seems clear to me that the right grounds on which to have decided Alice (and Mayo) is §112, rather than §101. I suppose that there might also be a §§102/103 problem with the Alice claims, but I would need to know more than I do about the prior art as of the Alice filing date(s) to opine properly on that point.

                5. I suppose one could say that the “start-of-day balance” and suchlike are just printed matter, to be accorded no weight in the §103 analysis. I am less clear how we can simply wave this whole series of steps away as “non-statutory”. That rather begs the question, no?

                  I think what Ben is saying (and if not I’ll certainly say it) is that the printed matter doctrine *IS* the judicial exception analysis. They’re the same thing, designed to achieve the same ends. In both cases the claims ignore (“don’t give patentable weight to”) ineligible subject matter. The purpose of not giving weight to that subject matter is to 1) make sure that the claim does not issue *because* of that subject matter but 2) not toss out an otherwise-worthy claim simply because it *includes* that subject matter.

                  Consequently a claim to a conventional book with a novel story in it fails 103 because the novel story is ignored and the book can be overcome by prior art. In the same manner, a computer that performs intermediated settlement is directed to a fundamental economic practice (i.e. the “printed matter” is “not given patentable weight”) and the remainder of the claim is not significantly more because it does not include an inventive concept (i.e. the “book” does not survive a 102/103 analysis). It’s the same cut-out-the-bad-and-weigh-the-remainder test in both cases.

                  Just as the federal circuit screwed up 112b and 101 and consequently had to conjure up written description out of nowhere to fix the obvious flaw that appeared when their logic was applied, so too them screwing up the judicial exceptions forced them to conjure the printed matter doctrine to fix their flawed patentable subject matter understanding.

                  The federal circuit calls printed matter a 103 test but that’s only because nobody has put it to them since Alice. The correct way to think about non-functional printed matter is that it is a judicial exception because it is protected by copyright, not patent, and therefore is ineligible under 101, and judicial exception logic applies – If the claim is only non-obvious because of the ineligible subject matter, the claim is in fact ineligible because it is a scrivening attempt to claim what is beyond the purview of 101.


                6. … cue Malcolm script reply that most ALL written word is “functional” in some manner (even as he purposefully obfuscates as to the driver of patents being utility, while the driver of copyrights being expression and the multi-party closed-eye understanding that an item may have more than one aspect with each aspect receiving its own portion of protection under the various IP regimes for either of utility or expression).

                7. “I am less clear how we can simply wave this whole series of steps away as “non-statutory”.”

                  You already agree that structural limitations can be waved away when they describe one type of non-statutory matter (‘wherein the substrate comprises a set of lines of black ink including: [dimensions specifying the letters of an expressive text]’). Presumably you wouldn’t give full patentable weight to method steps of writing out a specific expressive text. What makes excluding non-statutory judicial exceptions any different? I agree that it’d be nice to have better instructions on what constitutes a judicial exception, but that seems like a problem of implementation rather than statutory propriety.

                  And Alice is already waving away limitations as judicial exceptions. It’s just doing so under 101, and applying “significantly more” to the remaining limitations. If Alice was brought into 102/103 like the modern PMD, at least Step 2B would be crystal clear: just apply 102/103 to everything beyond the judicial exception.

                8. Random,

                  Pure printed matter is ineligible under 101. Mixes of printed matter and eligible subject matter is treated under 103. Do you disagree?

                  Assuming you don’t, why on earth did SCOTUS put Alice under 101? Alice is plainly a claim of mixed matter? It seems to me that Alice would be (1) easier to understand, (2) easiest to implement, and (3) more effective if it excluded ineligible subject matter under 102/103 rather than cobble together new standards of “significantly more” under 101.

                9. Ben,

                  What is “pure printed matter” (in view of several of the printed matter cases such as the measuring cup case or the magic hatband vase)?

                  Are you using a “shorthand” in which “pure” is merely indicative of total lack of functional relationship?

                10. Pure printed matter is ineligible under 101. Mixes of printed matter and eligible subject matter is treated under 103. Do you disagree?

                  I agree that that is the law that is on the books. What I am saying is that the Federal Circuit (years ahead of time) created essentially the same rule the Supreme Court did in Alice for essentially the same reason – to prevent particular “bad” subject matter from being the cause that a claim issues. I definitely agree PMD is a 103 doctrine. But what am I saying is that if the federal circuit considered the same issue for the first time TODAY, it actually fits perfectly under the 101 Alice rubric. I anticipate that in the future that non-functional printed matter will simply be an abstract idea and treated under the Alice 101 analysis.

                  Assuming you don’t, why on earth did SCOTUS put Alice under 101? Alice is plainly a claim of mixed matter? It seems to me that Alice would be (1) easier to understand, (2) easiest to implement, and (3) more effective if it excluded ineligible subject matter under 102/103 rather than cobble together new standards of “significantly more” under 101.

                  Alice is a 101 case because the issue was presented to them under 101, and because their prior caselaw held it under 101. You have the cart before the horse – the federal circuit’s pre-existing (and wrongly categorized) PMD does not force the supreme court to make Alice a 103 doctrine, the supreme court drives the federal circuit to turn the PMD into a 101 analysis.

                  Alice does “exclude ineligible subject matter under 103” that is what Step Two of the Alice procedure is – it performs a 103 analysis with the ineligible subject matter cut out.

                  So I don’t understand what the issue is – Are you saying it’s confusing that there is a Step One to Alice that wouldn’t be there in a 103 analysis? There has to be a step one because they have to create a mechanism for new ineligibilities that are found to be tested. Step One allows for review where the court says “You found X to be ineligible, we rule that is not ineligible subject matter” without getting into the fact-finding of obviousness that occurs in Step Two.

                  Or perhaps you are saying that it simply should have been a 103 doctrine all along. That again ignores history. The judicial exception jurisprudence pre-dates obviousness. They could not have located it in Section 103 because there was no Section 103 when they first came up with the judicial exceptions.

                  Again, I don’t know what is so difficult (or so wrong) with the Supreme Court pointing out that 101 is not all-encompassing, and that a patent cannot issue because of the ineligible subject matter. That is all the Alice Step 1 and Step 2 say: Step 1 is “Despite it’s facial breadth, 101 does not embrace all subject matter under the sun made by man” and Step 2 is “Confirm that the claim only issued because of the ineligible subject matter – if so, strike claim.” It is only more difficult that PMD because PMD has already done the Step 1 work for you – it only applies to one particular type of ineligible subject matter: non-functional printed matter. Otherwise it is the same test.

                  PMD is 1) determine non-functional printed matter; 2) ignore non-functional printed matter; 3) see if rest of claim is non-obvious.

                  Mayo is 1) determine law of nature; 2) ignore law of nature; 3) see if rest of claim is non-obvious.

                  Alice is 1) determine fundamental economic practice; 2) ignore fundamental economic practice; 3) see if rest of claim is non-obvious.

                  Seeing a pattern?

                11. PMD is 1) determine non-functional printed matter;… See the pattern?

                  I am seeing a pattern of people being overly polite and trying to NOT see the elephant in the room as to printed matter that IS functional.

                  Gee, I wonder why (not).

                  [No, no I am not wondering why these ‘oh so polite people want to not even notice ‘functional’ — at all]

                12. You already agree that structural limitations can be waved away when they describe one type of non-statutory matter… What makes excluding non-statutory judicial exceptions any different?

                  Can you give a specific example of what you mean (outside the printed-matter context? I am really not following what you mean to say.

                  I am also a little uncomfortable with talk of “waving away” claim limitations because of their being “non-statutory.” As I parse §103 (in view of the §100 definitions and the rest of Title 35), it seems to me that one is not supposed to take into account limitations that do not relate to the technical realization of the disclosed utility when considering obviousness. One is not permitted, however, to discount such limitations when considering novelty or subject matter eligibility, because that is not what the statutory text says.

                  In other words, I am saying that the PMD is grounded in the statutory text of current §103. This sort of thinking cannot and should not be extended outside of the §103 analysis.

                13. … another pattern here is in NOT recognizing precisely what Congress choose to do in the Act of 1952 — and WHY we even have 35 USC 103.

                14. Ben, the fact that you were game to respond to my 5.1.1.1.1.1.5 but not my 5.1.1.1.1.1.2 goes to prove that you are a better human being than am I. I tip my hat to your superior decency. Perhaps I will yet—inspired by your example—learn when to exercise “the better part of valor,” as they call it.

                15. Random,

                  I’m not saying that it should have been under 103 all along, but given the landscape in 2014, it would have been much more elegant for the supremes to craft Alice as a 102/103 doctrine explicitly formulated as a sister to the printed matter doctrine. Maybe you’re right that they couldn’t because it was in front of them as a 101 matter.

                  Greg,

                  I don’t mean to say that you’re already waving away limitations beyond (non-functional) printed matter, but that once one has waved away printed matter, one is someone who accepts waving away some structural limitations. At that point it is a matter of degree. At that point, the waving away of limitations due to a relationship with other eligibility boundaries is no longer catagorically absurd or wrong.

                  Also, while before I sincerely appreciated your reading of 103 to suggest the PMD, I now wonder about the accuracy of that interpretation. If the suggestion of the PMD in 103 doesn’t extend to 102, I think it’s a problem. In re Gulack appears to broadly exclude non-functional PM from “prior art” determinations and In re Ngai explicitly affirms a 102 rejection based on PM exclusion.

                16. If the suggestion of the PMD in 103 doesn’t extend to 102, I think it’s a problem. In re Gulack appears to broadly exclude non-functional PM from “prior art” determinations and In re Ngai explicitly affirms a 102 rejection based on PM exclusion.

                  It is kind-of a problem, but not really. I agree that the case law certainly allows for PMD in novelty cases, ostensibly decided under §102. My hypothesis advanced in 5.1.1.1.1.1.5 and refined at 1:43 pm today says that this is wrong. Does this make my hypothesis unsupportable?

                  Not really. The case law observes that, “lack of novelty… is the… epitome of obviousness.” In re Pearson, 494 F.2d 1399, 1402 (C.C.P.A. 1974). In other words, it is fair enough to say that when a PMD case is decided on “novelty” grounds, it is (in a sense) really being decided on §103 grounds, so all is well. In other words, even applying my PMD-is-really-statutory hypothesis, it is still perfectly fair to use PMD along the way to a (pseudo)§102 invalidation.

                17. I see that Greg and company continue to employ politeness over critical thinking…

                  Still waiting for the “polite” engagement on the functional aspect…

  5. 4

    Yeah as MM correctly (but obliquely) states below – the title of this post is incorrect, which evidences a misanalysis by Prof Crouch. The holding is not that commercial success is irrelevant to the inventive concept analysis. The applicant argued the commercial success that (notably) flows from the abstract idea (as opposed to a commercial success that flows from the non-judicial-exception features of the claim). The *abstract idea* is irrelevant to the inventive concept analysis, so consequently “facts tending to show how inventive the abstract idea is” is irrelevant to Step 2 of the analysis. The headline should read “The Non-Obviousness of an Abstract Idea is irrelevant to Alice Step 2 Analysis,” which everyone should know anyway. (For that matter, the non-obviousness of abstract ideas is also irrelevant to Step 1 of the analysis.)

    i.e. Applicant did not argue “I enjoyed commercial success because of my conventional hard disk or cd-rom” instead he argued “I enjoyed commercial success because of how I perform this abstract idea.” The former is (likely) a type of cognizable argument (even if not colorable on these facts) – in direct contrast to what the header of this post states – while the latter is not. The latter is what was argued.

    If Alice Step 2 considered the entirety of the subject matter (including the judicial exception) it would be no different than the obviousness analysis.

    1. 4.1

      Lets see how long it takes for Dennis — an education professional — to correct the title of the post.

  6. 3

    Can we all just take a moment to marvel at this figure.

    1. 3.1

      “I guess derp China will be taking the derpity derp lead in the personal finance strategy arts derp thanks Obama derrrrrp.”

  7. 2

    “utilize a projected amount of income at a future date for at least one person;
    automatically adjust the amount such person saves incorporating the projected income amount so that achieving such projected in-
    come amount is more likely; and invest the saved amounts saved in one or more investment vehicles.”

    Shame on Greenstein, his representatives, and anyone who defends them.

    In a perfect patent system we wouldn’t have Alice. But a perfect patent system also doesn’t have Greenstein or anyone willing to represent these claims.

    1. 2.1

      Ben, no attorney took this case for this Fed. Cir. appeal.

      Does the PTO Solicitors office never file motions for sanctions against any pro se appellants?

      1. 2.1.1

        Yes, but I would be embarrassed to sign my name to the office action response. It is truly marvelous in how terrible it is.

  8. 1

    Dennis, the title is incorrect for a simple reason (that will sail over the heads of many readers, regardless). The reason is that the “inventiveness” (i.e., the non-obviousness) of the otherwise eligible steps in the claim can rescue a claim that otherwise recites ineligible subject matter. And, for the moment at least, “commercial success” remains a part of the (“activist”, judge-created) obviousness inquiry.

    Of course, in this case commercial success is irrelevant because the only non-abstract subject matter in the claim is anticipated (which is the usual case).

    1. 1.1

      Reminder again: the “inventive concept” that rescues a claim can not lie in the ineligible subject matter or 101 would be toothless.

      And the term “inventive” means what it has always meant.

      1. 1.1.1

        MM the ra cist tran sphobe, did you hear the good news? “Think Progress” the le ftist media outlet is closing down. Ironically this comes just as you present evid ence of tran sphobia in yourself, in your previous comment from the other day, thus showing that there might have actually been some truth to the sw ill they were peddling all those years. Ironically it turns out it was lefti sts that were the tra nsphobes all along.

        1. 1.1.1.1

          So…. this was cognitive dissonance from yet another source…?

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