I recently posted a short statement on the new USPTO Eligibility Guidance. I want to make sure that readers spend some time delving into Appendix 1 of the report that includes four very-well written examples of how the guidance should be applied by PTO examiners.
- 43. Treating Kidney Disease
- 44. Denveric Acid
- 45. Controller For Injection Mold
- 46. Livestock Management
Note – these are numbered from 43 as a continuation of prior sets of examples released by the PTO. Each example provides a broadly written claim 1 that is deemed ineligible followed by a set of narrower eligible claims. The examples provide straightforward analysis of how to get from the claims (and specification) to those answers.
Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality. What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow. Rather than asking examiners to put on their boots and wade through the swamp, the guidance builds a nice straight bridge right over top. This is the right approach — examiner expertise is prior art and claim definiteness, not whether an invention would be unduly preemptive of freedoms held by all humanity. Now, we can debate on whether the bridge should be veering right vs left — this one certainly favors patentees. But, there is a lot to be said for a clear-pathway even if it leads a bit off center.
Speaking of swamp-walking. I do want examiners to get dirty with their work — but expertise is the swamp known as finding and analyzing the best prior art, not answering amorphous questions of law.
I do have to give kudos to someone at the office actually understanding Diehr (whoever wrote Example 45, Claim 3). Even if its likely the same person who got Example 45, Claim 2 wrong. Or maybe they didn’t get it wrong so much as implemented policy.
Reminder for Diehr: “Nonetheless, according to the respondents, the industry has not been able to obtain uniformly accurate cures because the temperature of the molding press could not be precisely measured, thus making it difficult to do the necessary computations to determine cure time. Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading. [In footnote:] …The respondents claim to have overcome this problem by continuously measuring the actual temperature in the closed press through the use of a thermocouple. [Back in main:] …Respondents characterize their contribution to the art to reside in the process of constantly measuring the actual temperature inside the mold.”
The Diehr claim was eligible because use of a themocouple to continuously measure the temperature (so that Arrhenius could be applied) was unconventional, not because a natural law was “practically applied” to time a signal to open the press. The press was conventionally signaled to open based on a timer (“Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading.”) and we know that setting a timer is not an eligible act, or Flook would have been eligible. Arrhenius was a known superior natural law that set the timer more accurately. Arrhenius was ineligible on its own, and was not conventionally used because continuously measuring the temperature (a necessary Arrhenius input) was not conventionally done. The act which imparted eligibility was including the unconventional thermocouple – controlling for a previously uncontrolled-for variable.
People who read Diehr as Example 45, Claim 2 does – that the claim is eligible because it signals a physical-type act (“opening a mold”) misread Diehr. Similarly, Arrhenius was used in the claim for its conventional benefit, and performed the same function as Flook did. Any “practical application” that came from using Arrhenius was derivative of the unconventionality of the thermocouple-feeding-data-to-a-computer in the context of mold presses.
Diehr cabined Flook — see Bilski.
Diehr cabined Flook — see Bilski.
Right, because Flook by itself suggests that the ineligibility determination only has one step. (In today’s parlance, just Alice Step 1) And Diehr made clear that Step 1 is not sufficient, but requires further analysis about the conventionality of the claim elements and as a whole (i.e. Alice Step 2).
Because the Office did not challenge unconventionality and instead argued that the claim was similar to Flook and was ineligible purely under what we today would call Alice Step 1, the office lost, because they had conceded that Alice Step 2 would award eligibility.
You seem unwilling (or unable) to recognize the obvious: the Supreme Court has written itself into a Gordian Knot of self-conflicting Common Law law writing.
The Diehr claim was eligible because use of a themocouple to continuously measure the temperature (so that Arrhenius could be applied) was unconventional, not because a natural law was “practically applied” to time a signal to open the press. The press was conventionally signaled to open based on a timer (“Because the temperature inside the press has heretofore been viewed as an uncontrollable variable, the conventional industry practice has been to calculate the cure time as the shortest time in which all parts of the product will definitely be cured, assuming a reasonable amount of mold-opening time during loading and unloading.”) and we know that setting a timer is not an eligible act, or Flook would have been eligible… The act which imparted eligibility was including the unconventional thermocouple – controlling for a previously uncontrolled-for variable.
People who read Diehr as Example 45, Claim 2 does – that the claim is eligible because it signals a physical-type act (“opening a mold”) misread Diehr.
I don’t agree, and believe you’re misreading Diehr. Yes, the thermocouple had not been used, but if the claim stopped as Flook’s claim did with “continuously measuring the temperature inside the mold via a thermocouple, and determining, via the Arrhenius equation, when to open the mold,” I believe it would have been (and more importantly, would be now) ineligible.
Specifically, SCOTUS doesn’t hinge the decision merely on the data gathering steps, but rather that the claim as a whole is directed to a process for transforming an article from one state to another:
“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing.”
“Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”
“That respondents’ claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. The respondents’ claims describe in detail a step-by-step method for accomplishing such, beginning with the loading of a mold with raw, uncured rubber and ending with the eventual opening of the press at the conclusion of the cure. Industrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws.”
“In contrast [to Flook], the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time..”
All of their conclusions appear to be based on the fact that the claim as a whole is directed to the industrial process of curing rubber, not because there’s an additional unconventional data gathering step. Consider what they say about Flook:
“Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number, and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport… “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.”
And in the analysis of Example 45, claim 3, note the following:
“Limitation (a) obtains the temperature measurements that are performed by the ARCXY thermocouple (and equivalents thereof). This additional element represents mere data gathering (obtaining and measuring the temperature values) that is necessary for use of the recited judicial exception (the temperature values are used in limitation (b)’s mental calculation of the extent of curing completion).”
And under step 2B:
“Here, the recited activity of repeatedly measuring the temperature of the mold is still mere data gathering that is recited at a high level of generality.”
What saves the claim was the recitation of particular hardware, rather than measuring temperature:
“But the BRI here does not encompass using just any thermocouple or thermometer. Instead, because the means for temperature measuring limitation invokes 112(f), limitation (a) only encompasses repeatedly measuring the mold temperature using an ARCXY thermocouple (or its equivalents). And using an ARCXY thermocouple to measure mold temperatures is not well-known.”
A claim identical to claim 3 with a specification that didn’t mention ARCXY thermocouples but instead said “any suitable thermocouple” would likely be ineligible.
I don’t agree, and believe you’re misreading Diehr. Yes, the thermocouple had not been used, but if the claim stopped as Flook’s claim did with “continuously measuring the temperature inside the mold via a thermocouple, and determining, via the Arrhenius equation, when to open the mold,” I believe it would have been (and more importantly, would be now) ineligible.
Why? Perform the analysis. Under Step 1, Arrhenius is ineligible. Under Step 2, you have a non-conventional act that is significant: It is a sensor in an unconventional locale that provides the data that allows you to perform the equation. This isn’t like most computer claims that use a conventional sensor for its conventional purpose and then essentially perform a mental step analysis on it (which is what the claim superficially looks like), which I agree would be ineligible. Those claims are ineligible because the conventional sensor for conventional data gathering is insignificant pre-solution activity. But here it’s not an insignificant data gathering step – it’s unconventional data gathering.
Specifically, SCOTUS doesn’t hinge the decision merely on the data gathering steps, but rather that the claim as a whole is directed to a process for transforming an article from one state to another:
Sure, but it was conventional to transform the article in the prior art. So perform the analysis again – If Arrhenius didn’t require the thermocouple to feed it data, or if a thermocouple had conventionally been used (assume, for example, that the inventors were the ones who discovered the Arrhenius equation and were using that as the basis for non-obviousness) and the claim was thermocouple + arrhenius + mold transformation (or simply “new equation + transformation”), the Step 1 analysis would be that arrhenius is an ineligible law, and under Step 2 the (conventional) thermocouple usage was mere pre-solution data gathering, and the proper-timed molding timer would be conventional insignificant post-solution activity.
In other words, if you take out or render the thermocouple conventional, you have Mayo – conventional data gathering + ineligible law + a conventional “transformative” act.
I obviously agree with all your quotes, but that language is a function of the fact that the office took the position that because a computer was timing a signal to open the press (analogous to the alarm signal in Flook) the claim contained ineligible subject matter, and *solely because there was ineligible subject matter within the claim* the claim could not be allowed. The office did not dispute the applicant’s assertions that the thermocouple into arrhenius into more accurate timing was novel/non-obvious. The court was making the point that this is generally eligible subject matter (i.e. it passes statutory 101) and simply because ineligible subject matter is recited, the claim does not fail. In today’s parlance, the court would be saying that you cannot stop after Alice Step 1, but must proceed into Step 2. All of the language you quote can (and should, especially given later case law) be read as “If a claim would be statutory but contains ineligible subject matter, Step 1 is not enough, also do Step 2.”
If transforming a physical thing was sufficient to render a claim eligible, there would be no ineligible bio/chem cases. Mayo had administering a drug to a person, that is a physically transformative act.
And in the analysis of Example 45, claim 3, note the following:…What saves the claim was the recitation of particular hardware, rather than measuring temperature:
No. Recitation of particular conventional hardware never saves a claim, that’s clear from Alice. Something doesn’t become eligible simply because you nominate an Intel Celeron 8 as a particular processor. It is not the particularness of the hardware, but its unconventionality. You quote the right sentence:
And using an ARCXY thermocouple to measure mold temperatures is not well-known
The feature hinges on (as Step 2 must) conventionality – what saves the claim was the recitation of *unconventional* hardware. The fact pattern is that it is conventional to use thermocouples generally to measure mold temperatures, but not conventional to use the ARCXY thermocouple in particular, because the ARCXY thermocouple, while known, was only being used by NASA. By limiting to a particular thermocouple, the applicant was able to achieve unconventionality in the step, because the particular thermocouple selected was unconventional for mold temperature measurement. If the claim had recited a particular-but-well-known thermocouple, the claim would have been ineligible.
The ARCXY feature is brought in for the example for two purposes that I can see – First, as a reminder that you must properly construe the claims before performing the analysis; and Second, that you must consider the conventionality of what is claimed and not overgeneralize the claim and consider the conventionality of the genus of the thing claimed.
“Under Step 2, you have a non-conventional act that is significant: It is a sensor in an unconventional locale that provides the data that allows you to perform the equation”
LOL – I was a practitioner in these arts in my early engineering days. Your view is factually incorrect.
“and consider the conventionality of the genus of the thing claimed.”
..and there we have the lead-in to Random’s total inability to recognize the concept of Ladders of Abstraction (and that Ladders always have more than two rungs to them).
Classic — and classic unwillingness of Random to understand his limitations.
Where does the parsing of claims (clearly not taking them as a whole) into “PRE” and “POST”
Have any legal foundation?
How does such not violate the “Claim as a whole requirement?” Who is the party that gets to decide what the invention actually is and this gets to decide what (if anything) is “pre” or “post” solution?
The solution it the entirety of the claim (a la the all elements rule).
Would courts consider expanding infringement if claims could be parsed and “selected” items only were brought to bear to show infringement?
What would be the reaction from those that do not like patent protection of innovation if one could parse claims to capture all kinds of “subsets” of the claim itself?
The Court in Diehr assumed the non-obviousness of the physical components of the device and held (only) that the mere presence of an ineligible abstraction (eg, the Arrhenius equation) was insufficient in that context to render the claim ineligible.
That’s the only holding that makes any sense. The Court was sloppy with its writing, unfortunately, but that slop was cleaned up in Mayo.
“That’s the only holding that makes any sense.”
How very Trump of you.
The Court in Diehr assumed the non-obviousness of the physical components of the device and held (only) that the mere presence of an ineligible abstraction (eg, the Arrhenius equation) was insufficient in that context to render the claim ineligible.
That’s the only holding that makes any sense.
The court didn’t have to assume. The office did not challenge the thermocouple unconventionality. The office took the position that 1) the arrhenius equation sending a signal to open the mold was essentially the same thing as the computer in Flook calculating an alarm time and 2) Because the claim contained ineligible subject matter, the claim was ineligible.
In other words, because Flook was 100% ineligible, it gave the impression that there was only (to use current parlance) Alice Step 1, full stop. There was no additional subject matter in Flook, so there was no need to engage in a Step 2 analysis. Here the court is simply stating that Step 2 exists and is necessary. You do not ask if there is ineligible subject matter and, if so, toss the claim. You can only toss the claim after performing a Step 2 analysis.
I think we’re essentially in agreeement here. The continuing importance of Diehr — and its only continuing importance — is that it is not enough to identify the presence of some ineligible subject matter in a claim and then jump to a conclusion of ineligibility.
Mayo was the inevitable corollary: you can’t identify some eligible subject matter and then jump to the conclusion that the claim is eligible.
Both decisions are the inevitable, logical results in a system where applicants are permitted, for better or worse, to draft claims which include as much prior art subject matter as they like. This is one of the reasons why these silly attempts to ban that logic will ultimately fail: there’s no rational basis for disallowing basic reasoning when the pertinent question is “what kind of subject matter is protected by a patent claim”. Either you have a justifiable limit on subject matter or you don’t. But you can’t say “here’s a limit” and then say “no fair to use logic to determine if the limit has been crossed.”
“ not enough to identify the presence of some ineligible subject matter in a claim and then jump to a conclusion of ineligibility”
And yet, this is EXACTLY what Malcolm does — day in and day out — here on this blog.
Go figure.
“permitted, for better or worse, to draft claims which include as much prior art subject matter as they like”
LOL – this sounds like the late Ned Heller’s call to make the Jepson claim format to be something that is NOT optional (how funny, that you and he BOTH like to pretend that somehow optional claim formats must be NON-OPTIONAL.
“Either you have a justifiable limit on subject matter or you don’t.”
We BOTH know that it is CONGRESS (not the Court) that gets to set that limit – and your own comments vis a vis Judge Rich show that you understand what that Congress-set limit actually is.
ALL else from you is nothing but your Ends justify the Means desire to have something other than the law as actually written by Congress to be “the Means” (without actually providing a cogent and inte11ectually honest Means).
Bravo PTO leadership.
As Dennis notes, examiners shouldn’t have to deal with the eligibility swamp.
It’s just too bad that while the Patent Office is doing their level best to bridge the unconstitutional swamp . . . we can be sure that the CAFC will likely (continue to) do their level best to swamp the bridge.
The January/October guidance deserves no praise. They’ve simply taken a vague test guided by a lot of examples and replaced it with another vague test guided by many fewer examples.
Ben,
As you are an examiner, I am not sure that “praise” is an operative word.
I think that the better question to pursue is HOW are you going to implement these marching orders of yours?
The practical application standard is anything but vague, and makes 101 analysis vastly simpler for an examiner.
“Anything but vague”? Were you as keen on the definiteness of those considerstions before they were recycled from Step 2B?
Or are you yet another attorney who thinks because a claim is “useful” that it must be a “practical application”?
Tell me Ben, what is an example of something that IS “useful” but is NOT a “practical application”?
This appears to be the classic point one finger at attorneys while four fingers are pointing back at you.
(Your anti-patent animus is showing)
The ineligible claims in Alice.
You do realize of course that I was asking for a NON broken scoreboard example….
(further, you state without support that those items were not a practical application. The Court did NOT state such now did they?
“Derp derp I like to dance around in derp circles and complain that easy to understand concepts are derp sooooo confusing but definitely derp ‘practical application’ is a super meaningful limitation that has nothing to do with utility DERP.”
You just gotta love the cheekiness of the maximalists. Very serious people! Totally not hypocritical hacks who will do and say literally anything to get the result they want.
Yay! – Malcolm and his mindless Derp Dance.
The ineligible claims in Alice.
Or any other ineligible claims. I’ve never seen anyone pay to submit a claim that warrants a utility rejection.
In the cow-sorting example, the guidance states the following:
Step (d) specifies that the processor automatically operates the sorting gate to route the animals in the herd based on the behavior of the animals. As explained previously, the BRI of this limitation encompasses three embodiments: a first embodiment in which step (d) routes animals exhibiting aberrant behavioral patterns into a holding pen; a second embodiment in which step (d) permits animals that are exhibiting normal behavior to freely pass through the gate; and a third embodiment in which step (d) requires that both actions take place (some animals are routed to the holding pen, and other animals are permitted to freely pass through the gate). In all of these embodiments, step (d) does not merely link the judicial exception to a technical field, but instead adds a meaningful limitation in that it employs the information provided by the judicial exception (the mental analysis of whether the animal is exhibiting an aberrant behavioral pattern) to operate the gate control mechanism and route the animals, thus avoiding the need for the farmer to visually evaluate the behavior of each animal in the herd on a continual basis.
In other words – “Do not make ineligibility rejections.” Because ALL computer action is “operating a gate” based upon “employed information” in order to “avoid the need for the [human] to [do the act themselves].” i.e. Because processors employ IF-THEN, and are used to automate things that humans do, the claim is eligible. The two ineligible examples are mere data processing followed by either a) nothing (Example 45, Claim 1) or b) display of the result (Example 46, Claim 1). The examples suggest that any other act taken by the computer (i.e. any useful “THEN” following a given “IF”) is eligible practical application.
One could just as easily state that Alice “employed information provided by the judicial exception…to operate a crediting system…thus avoiding the need for the teller to visually evaluate the value of the account.” Is banking any less an industry than farming?
The “practical application” standard as articulated by the office is so large that it is synonymous with “utilty” and the test is a technical utility test. Which is a perfectly fine test to have, it’s just not the actual law.
So while it’s great for *me* that I need not do a 101 analysis (since I now have an example I can always analogize to as a quality error “out”), it’s probably not great for applicants that are going to have their claims invalidated. But hey, it’s Halloween, and sometimes you have to let the kids get sick on too much candy.
I am not quite sure where your whining ends and your analysis starts.
“ The “practical application” standard as articulated by the office is so large that it is synonymous with “utilty””
You mean just like “abstract” swallowed up obvious? Shoe suc ks when it’s on the other foot.
You mean just like “abstract” swallowed up obvious? Shoe suc ks when it’s on the other foot.
You recognize my feet have nothing to do with this, right? I don’t care whether the law or office procedure is favorable or disfavorable to you or not, nor whether you end up being awarded a patent or not. I process your application according to our procedure and then I reach into a stack that, for all intents and purposes, is infinitely large and pull out another application to do. The examining corp has never gotten extra time to do Alice ever since Alice was decided, so guidance that makes Alice rejections less likely to be written is not a suc ks situation for me.
Your client (and therefore, by extension, you) does care about whether the office procedure tracks the law though.
Ransom,
You
L
I
E
You state “I don’t care… I process your application according to our procedure” and yet you CONSTANTLY post against that procedure and spin your views that show that you very much DO care.
You ALSO still miss the Broken Scoreboard issue with your statement of:
“Your client (and therefore, by extension, you) does care about whether the office procedure tracks the law though.”
The law here that should be tracked is NOT the Common Law law written by the Supreme Court. This should be evident not just to you, but to ANYONE who paid attention this past summer to the Tillis congressional hearings.
You have an “amazing” willingness to ONLY absorb that which you think supports your desires (feeding a massive confirmation bias problem for you).
To say “I don’t really care” is just NOT believable.
“The “practical application” standard as articulated by the office is so large that it is synonymous with “utilty””
Maybe if you only look at the name of the Prong 2 test, but the actual considerations of the test that the office provides are disconnected from either a utility test or the plain meaning of “practical application”. If you understand the test to be essentially a utility test, or if you understand the name to be meaningful, why isn’t a generic computer implementing an abstract idea useful/a practical application?
If you understand the test to be essentially a utility test, or if you understand the name to be meaningful, why isn’t a generic computer implementing an abstract idea useful/a practical application?
I think it’s pretty clear the office’s intent is to say that a generic computer implementing an abstract idea is eligible in every case where the office will not be ridiculed for saying so. That’s why the considerations are so broad and undefined – it allows for exceptions so large that there is essentially no rule to implement.
Just compare the example to, you know, actual law – A conventional router performing conventional routing is obviously insufficient to confer eligibility under Alice Step 2, and yet in the example if you replace the word “cow” with the word “packet” the function of a router routing packets to different locations based on information associated with them is defined as eligible subject matter in the example.
“I think it’s pretty clear the office’s intent is to say that a generic computer implementing an abstract idea is eligible in every case where the office will not be ridiculed for saying so.”
This is a bit more cynical than my reading of Iancu’s test, but I can’t say you’re wrong.
In other words – “Do not make ineligibility rejections.” Because ALL computer action is “operating a gate” based upon “employed information” in order to “avoid the need for the [human] to [do the act themselves].”
A gate is a physical thing, and as you note, mere display of data without opening the gate in claim 1 is ineligible.
One could just as easily state that Alice “employed information provided by the judicial exception…to operate a crediting system…thus avoiding the need for the teller to visually evaluate the value of the account.” Is banking any less an industry than farming?
No, but Alice didn’t, for example, cause an ATM to spit out money or cause a teller’s register to unlock.
So Iancu’s ‘practical application’ requires that practicing the claim results in a physical transformation?
Really? Can this test be satisfied if all the transformative steps in the claim be in the prior art, as ordered?
If not, what exactly is required?
Why are you attempting to insert “transformation” as a physical change?
Further, you are AGAIN confusing and conflating different parts of the statute (patent eligibility and patentability) with your droning of: “be satisfied if all the transformative steps in the claim be in the prior art, as ordered?“
A gate is a physical thing, and as you note, mere display of data without opening the gate in claim 1 is ineligible.
The state of a circuit as open or closed is also a physical thing. Flip your light switch and see if you can tell the difference.
Regardless the point is that all but the worst specifications actually do something besides displaying data, and because that display has some advantage over the prior art there is always an IF-THEN case applicable.
No, but Alice didn’t, for example, cause an ATM to spit out money or cause a teller’s register to unlock.
No but it did make a change to the account ledger. Is that not physical enough for you? Are you saying Alice would have been eligible if, after performing the economic act, it also added a limitation where money was dispensed from an ATM due, in part, to the account accreditation?
RandomGuy writes: “I’ve never seen anyone pay to submit a claim that warrants a utility rejection.”
Maybe you personally haven’t seen it. But it happens.
Not an attorney. I have no issues figuring out what constitutes a practical application during examination.
Maybe ypu should get a job in OPLA and explain it to the rest of the PTO. Don’t let your insight go to waste!
Maybe the Examiners (like you and Random) should simply open their eyes – plenty of “explanation” has ALREADY been given.
“What you get here from Dir. Iancu, Comm. Hirshfeld, and their team is guidance that PTO examiners can actually follow”
NOT to place too much of a damper on any “upside” from this comment, but NONE of this matters when it comes to the courts continuing to build their Gordian Knot.
ALL that we need to do is simply look back at recent history of the Cleveland Clinic case, in which the patentee took an application (continuation still alive in prosecution) and modeled a claim directly on an example from the USPTO that was clearly set to BE “patent eligible.”
The court did not care and found the claim to be NOT eligible.
There is NOTHING HERE from the Executive Branch that changes what the Judicial Branch can (and most likely WILL) do.
“Anyone deep in the case-law will understand that the PTO’s approach does not match tightly with all of the cases. That would be a philosophical endeavor without much attachment to reality.”
Unstated — but clearly should be stated — the Courts themselves have re-written statutory law into common law that IS self-conflicting.
Thank you Supreme Court for a Gordian Knot that NO amount of additional Common Law law writing will unravel.
Alternatively, eliminate judicial exceptions and update the MPEP:
Step 1 – is it useful?
Step 2 – is it new?
Step 3 – is it not obvious?
Step 4 – is it enabled?
(minor) changes that actually realign any Common Law law writing with the pre-existing statutory law:
Step 1A and 1B (intended to be very low hurdles):
1A: Can the innovation be put into a claim that falls into at least one of the statutory categories? (here, realizing that the statutory category of ‘process’ was greatly expanded in the Act of 1952 – see 35 USC 100(b))
1B: Does the utility of the innovation as claimed fall to the Useful Arts (that is, is the utility anything outside of the Fine Arts)?
Step 2 (combining ‘new’ and not obvious’ since these may be termed “patentably new”):
Compare and contrast the claimed innovation (as a whole) with the world of prior art, recognizing that the world of prior art is different for the comparison based on anticipation (ALL attributes in a single source) versus a comparison based on ‘putting together sources’ for obviousness.
Step 3 (relabel this as sufficiency of Quo): does the single description provide the various aspects of Quo sufficiency in that the legal fiction known as Person Having Ordinary Skill in The Art can recognize the patentee possessed that which is being claimed, that the item being claimed follows from the provided description without undue experimentation, and that the scope of the claim is in line with the scope of the description.
The meaning of the term “exception” itself should be a flag that the judicial branch is over-extending its authority into the (Constitutionally directed) separation of powers as to which branch has authority to write the patent laws. It is simply not within the purview of the Judicial branch to say “I see the law that you have written, but want a carve-out for this particular type of thing.” That is NOT the power of the Judicial branch when it comes to the type of law that is patent law. Other types of law ARE amenable to Common Law law writing.
Along that last thought, let’s be perfectly clear that Common Law law writing may be divided into two distinct versions. In one version, (actual) interpretation may be at play. In the other version, interstitial aspects are such that ‘interpretation’ is NOT an appropriate description, but rather, the appropriate description is bench-made written law that makes the statutory law complete. This latter aspect IS legislating from the bench, and it should be clear that there ARE areas of law to which such legislating from the bench does NOT offend the separation of powers. Patent law happens to be one such area that legislating from the bench IS offensive — precisely because of Article I Section 8.
Why can’t McDonald’s serve a square hamburger? Wendy’s does it.
Just a couple of additions:
Step 1 – is it useful?
… in other than its aesthetic qualities.
… Step 4 – is it enabled?
… in its full scope as claimed.
For the latter, I think we can all agree that Morse’s “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification as claimed” should have led to an immediate rejection as lacking sufficient written description and enablement.
A frequent poster recently accused me of having some agenda due to my acknowledgement of the “full scope” aspect to enablement. It’s remarkable how little shared understanding there actually is.
“Full scope” is a trigger phrase for the maximalists.
“maximalist” is a trigger phrase for the anti-patentists.
“Full scope” is another term that is not in the patent laws and means whatever the judge feels like making it mean.
Reality.
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