Novel, Technological, and an Abstract Idea

by Dennis Crouch

Primbas, et al. v. Iancu (Supreme Court 2020)

This new petition for certiorari asks the following question:

Whether recitation in a patent claim of a combination of steps determined to be inventive over an idea is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.”

Petition, quoting Alice.

Christopher Primbas and his co-inventor Philip Stamataky are seeking to patent their method of eliminating coins from cash transactions. [claim 1 is below].  The figures below attempt to highlight the invention — instead of receiving coins from a transaction, you receive a merchant credit.

The examiner actually allowed the claims back in 2014 with a notice of allowance just before the Supreme Court’s decision in Alice. The applicant paid the issue fee, but the PTO withdrew the application from issue.  The examiner then issued a new rejection — finding the claims ineligible as directed to an abstract idea under Alice. That decision was affirmed by the PTAB and by the Federal Circuit (R.36 judgment without opinion).  This setup leads folks to fight hard — they were given real hope via notice of allowance and that was pulled-out from under them.

The basic

 

Here is the claim now on appeal:

1. A method involving a retail cash transaction in which a customer uses physical currency to pay a merchant for goods or services received, in which an amount between 1¢ and 99¢ in coin change is due to the customer and used as payment for credit purchased, the method comprising the steps of:

the customer tendering cash to the merchant as payment for the goods or services and there being an amount of coin change due back to the customer, which amount the customer does not receive in the form of physical coins but rather in the form of a cash purchase of credit equal to the amount of coin change otherwise due;

in a different financial transaction than the cash-tender transaction, debiting, using an electronically readable device physically present at the customer-merchant transaction and in electronic communication with an electronic processor and a financial network, one or more accounts associated with the customer in an amount equal to a tracking fee, which is equal to the entire amount of the cash purchase of credit; and

subsequently crediting to the one or more accounts associated with the customer the sum of both the cash purchase of credit and the tracking fee;

wherein the debiting and crediting steps are performed electronically and the tracking fee reflects both the cash purchase of credit and its transfer into the one or more customer accounts.

See Petition Appendix.  The petition argues that the claim here recites a patent-eligible “technical solution” that the patent office has expressly admitted is a novel solution to a long-considered problem.

The petition particularly point to its claims that require debiting with a e-readable device (credit card) and communication with a financial network.  The petitioner argues that a benefit of the solution here is that it works with existing credit card networks and thus does not need an expensive merchant retrofit. “[T]he ability to use a conventional card reader and an existing credit card network are advantages of this technical solution, as the use of conventional electronic hardware and card networks that are already in use at most point of sale registers allows for use of this solution by retailers without purchasing or installing any new hardware.”

Jeremy Doerre filed the petition in this case and also filed Judge Rader’s recent amicus brief in Chamberlain Group.

 

49 thoughts on “Novel, Technological, and an Abstract Idea

  1. 4

    Mr. Doerre;

    I appreciate your situation. I am an inventor going through many of the same arguments with the USPTO.

    I disagree with the observation that the examiners have a difficult job when the examiner advances unsubstantiated arguments and logic that a 5 year old would even call suspect.

    If the law is really on the side of the rejection, then the examiner should give straightforward rejections and address evidence on the official record. My attorney calls the (second) examiner’s rejections a polite “non-responsive.” The first examiner was replaced mysteriously after agreeing in a phone interview that my application had patentability and implying the higher ups are the issue.

    It seems that an agenda is being advanced, not the law. Want proof: Adding words to s101 and then refusing to define said phantom words. It just gets worse from there.

  2. 3

    Gotta love someone who argues that the existence of conventional subject matter is not a reason to find something ineligible but is instead the reason to find it eligible.

    “Notably, the ability to use a conventional card reader and an existing credit card network are advantages of this technical solution, as the use of conventional electronic hardware and card networks that are already in use at most point of sale registers allows for use of this solution by retailers without purchasing or installing any new hardware.”

    So what was the technical solution that *this* inventor invented? He admits that he didn’t invent the credit card, nor the reader. The rest is financial bookkeeping.

    The answer is nothing but timing – The art knew that it could provide change. The art knew that plastic cards could be read by machines to link to an account. The art knew that accounts could be credited and debited. And the art knew that accounting services could be provided for in exchange for money.

    The claim is a command to deposit money by foregoing physical money (the change) in lieu of an account credit (a conventional act), and to perform it using conventional machinery. The “invention” in this claim is simply a command to perform a deposit at point-of-sale. That may convenient, but it isn’t inventive, especially when the analysis commands that you ignore the “deposit” aspect of it. The analysis reduces to “Is it inventive to use a credit card reader to perform a command at the point of sale.” It clearly is not. It only becomes inventive when you rely upon ineligible subject matter – the machine is being directed to perform a particular conventional financial act at a particular time. Again, getting super-particular about when ineligible subject matter is performed doesn’t make the subject matter eligible. The non-obviousness of the claim is bound-up in the ineligible subject matter, and the whole point of the Alice procedure is to make sure claims don’t issue solely because of ineligible subject matter.

    The applicant repeatedly argues that the office found the claim-as-a-whole non-obvious, but that is why Step 1 and Step 2 of Alice are separated and directed to different subject matter.

    Let’s try maybe a simple little check – If I bought something, received change, took the change to the bank and desposited it (subject to any banking fees), the day before this invention, does anyone think that I would be entitled to a patent for that method? Of course not. So why do you think using conventional technology to improve the speed/location of that process (the EXACT issue in Alice) should make the claim patentable? The claim is a command for the merchant to sell something, step back, have the bank teller step forward, and, using conventional technology, perform a deposit transaction equal to the change value minus a fee at the merchant counter rather than at the bank teller window because the conventional technology already allows for just such a remote accounting action to take place.

    1. 3.1

      You do realize that there is a substantial difference between eligibility and patentability, right?

      Wait, this the examiner Random.

      Silly question – he doesn’t know anything about patent law.

    2. 3.2

      I do not really disagree with anything that you say here, but this all seems like a needlessly long way of arguing that the examiner corps got it wrong when they “found the claim-as-a-whole non-obvious,” without actually saying that. This claim should have gone down on §103 grounds, because there is no real advance over the state of the art here. The §101 rejection is just a category error (or at least it would be in a sane world).

      1. 3.2.1

        The simple message not being grasped by examiner Random is that the Ends do not justify the Means.

        It does matter that the different sections of the law are applied appropriately, no matter the Ends.

        Law (especially) is funny that way.

      2. 3.2.2

        This claim should have gone down on §103 grounds, because there is no real advance over the state of the art here. The §101 rejection is just a category error (or at least it would be in a sane world)

        Perhaps, but you don’t know how many references were used. Legally the number of references is irrelevant, but it commonly matters in the office all the time. As KSR mentioned, rarely do people remark on what is common. I bet the fact that change was given in exchange for overpayment of paper money required its own reference. Then you need a reference for depositing money. Then you need a reference for credit card chargebacks. Then you have to work the fee feature into references B or C somehow.

        The underlying “problem” (To the extent we agree that this should have also been a 103 rejection and it was not) here is that despite the actual obviousness test being flexible according to KSR, the Office procedure is more rigid. The most compelling logic in this case is the admission that no technology needs to change (something which you could tease out with an enablement rejection if the admission wasn’t made). Once you have that fact, you’re just rearranging deck chairs on the titanic to achieve the same accounting result you could conventionally achieve, and simple substitution is obvious. But office procedure, which requires mapping to each limitation from prior art, doesn’t really allow for that logical argument to be made because you can’t assign it to paragraph x of reference a.

        If I was going to give a talk to practitioners this is the subject I would do it on. I know of several techniques where if you reworded claims to make them unquestionably more limited, the more limited claim would be easily rejected while the broader claim was not merely because the ordering of words was more amenable to citation. For example, if your goal was allowance, rather than truly testing patentability, you would never use a “wherein” clause because that clause allows an examiner to more easily bifurcate a quality of the element. But take the same wherein clause and spread the quality throughout the description of the element and the same examiner with the same prior art wouldn’t reject it merely because it requires an unclean dissection of the words to reach the same segregated quality that the wherein clause produced. The non-obviousness arises not because the quality enhances the element in a non-obvious way, but because segregating out the quality doesn’t look pretty and creates the illusion of complication when you are laboring under a requirement to match Ref A to Element 3 rather than the true standard of explaining why the sum of elements is obvious based on any number of references you’d like to cite.

        I know at least some prosecutors understand this, because sometimes I’ll get an amendment that doesn’t really change the scope, it simply peppers already-existing terms to try and overcome my current citation. If I use Ref A to teach a widget, and Ref B to teach functionality caused by the widget, some prosecutors will look at the words that I use Ref B to teach and try and work the word “widget” into those sub-parts as often as possible despite the scope already requiring that the widget was performing these acts. I can only assume that it is done because it occasionally works.

        1. 3.2.2.1

          translation: “wah.”

          Nothing more.

          1. 3.2.2.1.1

            translation: “wah.”

            Yes, clearly *I* am personally upset because…someone who a) is not me, b) merely took the procedural step of appealing, c) a decision they lost, d) when the decision aligns with my view of the law, e) that wouldn’t affect me if the rule was changed anyway?

            Yes, I am indeed heartbroken that the CAFC decided a case correctly and the likely result is that the CAFC decision will stand.

            1. 3.2.2.1.1.1

              Maybe you don’t understand the word “translation.”

              Whatever else you are NOW mumbling has nothing to do with the ‘what’ that I provided the (very helpful) translation for.

    3. 3.3

      RandomGuy,

      My understanding is that your main point is that “[t]he non-obviousness of the claim is bound-up in the ineligible subject matter.”

      The issue I am raising is that this is not what the Office determined. The Office determined that there is non-obvious subject matter that renders the claim inventive over the identified idea. This is clear because the Office indicated that it believes the identified idea to be “‘a fundamental business practice long prevalent in our system of commerce,’” Pet. App. 29a-30a, and thus in the prior art.

      If the recited claim steps have been determined to be inventive over this idea, then how can these steps not be “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself’”? Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).

      1. 3.3.1

        Well you know the proceedings better than I, and it is entirely possible that either the Office or the CAFC said something unintelligent over the course of the proceedings, so I will confine my response to the following:

        1) I take as a given that it is beyond reproach that the end result was achievable and conventional prior to the instant invention, i.e. a customer buys a $9.50 item, pays $10 in cash, receives 50c in change and could have deposited the change in a bank in a second transaction, thus ending with 10 less in physical money and an account value 50c greater, subject to any fees to actually provide the banking services.

        2) I also take it as a given that the hardware being used is admittedly unaltered. This is presented as a feature, not a bug, of the claim. In other words, this application does not purport to have invented credit/debit cards, chargebacks or negative charges. The technological mechanism that the claim utilizes for particularly achieving the physical->account credit transfer preexisted, i.e. The art knew that a merchant could affect the value of a customer’s account, that’s the basics of card usage.

        3) I would submit to you that regardless of what any actual logic used was, the claim is ineligible upon those two facts, because any steps that actually return to the customer the amount they are due (minus fees) that one could perform constitute using math (ineligible subject matter) to achieve a fundamental business practice (either deposit or account settling). In other words, regardless of the ineligibility that is in fact relied upon and being argued over now, (1) demonstrates that an ineligibility exists that is sufficient to surpass Alice Step 1, and (2) is sufficient to surpass Alice Step 2 in light of that ineligibility. I recognize that this may not have actually happened, but on the broader question of whether the claim is eligible/valid, I think there is very little question.

        Were I analyzing this claim I would have drawn the ineligibility as depositing money into a bank account, and the use of conventional technology to do so, although I suppose it would only cause a shift in argument to the statement that “not receiving change for an overpaid purchase is unconventional and therefore inventive.” I simply note it is suspect to suggest that a temporary unconventionality that is ultimately rendered non-critical should form a basis for patentability – the customer, both pre- and post- application, does get their change back subject to banking fees, in one form or another.

        4) The Office determined that there is non-obvious subject matter that renders the claim inventive over the identified idea. This is clear because the Office indicated that it believes the identified idea to be “‘a fundamental business practice long prevalent in our system of commerce,’” Pet. App. 29a-30a, and thus in the prior art.

        I see no such clarity, at least not from the cited two pages. Nor anywhere else in what I’ve (admittedly quickly) checked. On pages 5-6 of the petition the petition refers to what the director and opposing counsel said, but both of those statements are statements that the examiner did not make or withdrew a 103 rejection. The petition logic appears to be that because the claim as a whole is non-obvious and because the office knew that one portion of the claim was old, that therefore it was the other part of the claim that was where the non-obviousness and thus the inventiveness of the claim lies. There is no logical basis for that, and (barring the poorly written and intended-for-a-specific-fact-situation Berkheimer language) there’s no legal basis for the inventiveness result even if that fact were true. Also wasn’t the argument as to why to withdraw the 103 based upon the fact that the prior art didn’t charge a fee or credited a different value (i.e. a numeric or mathematical distinction from the prior art rather than a technological one)? That appears to be part of the ineligible subject matter (or at least it is not referenced under Step Two at pg 14a).

        In other words, for the petition argument to be correct, it would have to be CATEGORICALLY true that the addition of a known thing cannot render the claim-as-a-whole non-obvious. That’s the only way one can leap from whole-claim-non-obvious minus known fundamental act equals remainder-of-claim-is-non-obvious. But (while that would certainly make my job easier) we know even from KSR that merely because a claim contains a series of things that all previously existed in the art does not mean the claim is non-obvious. Beyond that you’d have to make a second leap that because remainder-of-claim-is-non-obvious that inherently means remainder-of-claim-significantly-more, an admittedly easier leap but still one nonetheless.

        Thus, when it is stated that “Notably, there has never been any dispute as to whether the recited combination of steps is unconventional and inventive.” (pg. 5) That is either an improper transmutation of the 103 whole-claim obviousness analysis into the 101 Step 2 unconventional and inventive partial-claim analysis, or it is an intentional misstating of the record, because the board on its face remarked that the examiner met Alice step 2 (“The Examiner also determines that the claims fails to recite additional elements that transform the claim into a patent-eligible application…Based on our review, we agree with the Examiner’s findings and conclusions” (pgs. 14-15a)). As far as I can tell, no part of the record has ever concluded that the subject matter outside of the ineligible subject matter is inventive. Instead the petition ignores the actual Alice Step 2 analysis and generates its own based on supposition related to the 103 withdrawal. If 103 was sufficient to protect against judicial exception concerns, there’d be no judicial exception doctrine.

        The argument the petition makes here could have been made in Alice itself – Bilski had already identified longstanding fundamental economic practices as ineligible, Alice contained a longstanding fundamental economic practice, and yet the claims issued. Because no 103 rejection was made, and because the claims contained a longstanding practice, by petitioners logic we must assume that the remainder of the subject matter was inventive. Ergo, the claims were eligible because the Step Two analysis must result in a conclusion of inventive, significantly more subject matter. Indeed that is exactly what the CAFC thought – they must assume the computer implementation was inventive and saved the claim. Not only was the CAFC overruled, they were overruled without the Alice court sending it back down to reconsider 103 or to apply a 103 analysis to the computer implementation subject matter. All this was done even though it is unquestionable that software that generated this functionality was unanticipated and non-obvious – to the court “generic computer implementation” was sufficient to settle the issue of Step 2.

        Here, in a fact pattern where the economic practice could be effectuated by not only conventional hardware but conventionally prevalent software, Applicant seeks protection for the act of using the software to do what it has always been able to do under a theory that Applicant has an inventive “technical solution” (pg. 4). It’s Alice when the applicant didn’t even code the underlying software. Somehow, petitioner argues, that lack-of-contribution to the art renders the claim *more,* not less, eligible.

        1. 3.3.1.1

          RandomGuy,

          I don’t think there is anything to be gained in discussing the specific case. You have a strong belief that the claim should be ineligible. I suspect you also have a belief that the claim is obvious. That is fine. If you were the examiner, it sounds like the rejection would have been completely different. You didn’t examine the claim, and for that matter I didn’t draft or prosecute the application; I only became involved after the Board decision.

          I also think it is easy, in discussing specific claim language, to conflate or obfuscate legal issues. I think that there is a tendency sometimes to look at a claim, make a determination regarding eligibility, and then work backwards to justify that conclusion using the Mayo / Alice framework. I am not suggesting that this is what you are doing, I am merely indicating why I prefer to focus on specific legal questions.

          The issue presented is whether claim limitations that are inventive over an idea are “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself’”? Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).

          The Petition urges that they are. Do you disagree?

          If you do, that’s fine! That’s the question being asked, and I always enjoy hearing contrary opinions. Even if I don’t ultimately agree with a position, it can often illuminate a new aspect of an issue that I might not otherwise have contemplated.

          (BTW, with respect to your suggestion that “[t]he argument the petition makes here could have been made in Alice itself,” there is a fundamental difference in that Alice involved an allegation of ineligibility by a patent challenger who was not bound by a previous Office determination of nonobviousness, in sharp contrast to a refusal by the Office to consider in its inventive concept analysis claim limitations which the Office itself determined to be inventive over the identified idea.)

          1. 3.3.1.1.1

            The issue presented is whether claim limitations that are inventive over an idea are “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself’”? Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).

            But that is not the factual position this case is in, because your question includes what I believe to be an untrue assumption, an assumption you repeat in your post.

            there is a fundamental difference in that Alice involved an allegation of ineligibility by a patent challenger who was not bound by a previous Office determination of nonobviousness,

            This is irrelevant. Likewise Appendix 37a and footnote 15 conflates non-obviousness and inventiveness. But Alice Step Two makes clear that the search for an inventive concept is applied only to the part of the claim that is not the ineligible subject matter. Thus when Appendix 36a argues that the examiner didn’t find the claim obvious or anticipated, that isn’t really relevant to a 101 analysis and it’s certainly not sufficient on its own to surpass an Alice Step Two analysis. The failure to consider all the claim features in Alice Step Two is not only not error but is required by the Alice procedure.

            First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. Id., at ___ (slip op., at
            8). If so, we then ask, “[w]hat else is there in the claims before us?” Id., at ___ (slip op., at 9). To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.

            The motion for rehearing directly and correctly takes the issue head on – Appellate argues that debiting and crediting are unconventional steps, and the CAFC responds that they are part of the ineligible subject matter, not subject to consideration under step 2 (appendix at 6-7a). The board did the same (“the Board indicated that it was dismissing “[t]he particulars as to how the amounts debited and credited are determined [as] all part of the abstract idea”, petition 7).

            So there wasn’t a finding that there were “claim limitations that are inventive over an idea.” There was a finding of non-obviousness, which is not a finding of an inventive concept in Alice Step Two because they’re different tests to different parts of the claim. Further, even if one found the features inventive, they are features of the ineligible subject matter itself, and thus were not “inventive over the idea.” Do I believe in the tautology that any claims that contain an inventive concept should not be subject to a judicial exception rejection? Of course. Is that the procedural posture in this case? It is not.

            On a tangent, but a related one, I disagree with your above quote. The patent in Alice actually issued, which meant it was entitled to a presumption of non-obviousness vis-a-vis the claim-as-a-whole, which means it stands in the same substantive posture with respect to obviousness that this case does: It is presumptively non-obvious. I fail to see where a “sharp contrast” exists – In the Alice case the final opinion of the Office (and thus the apriori position of the court) was that it was non-obvious and eligible, the procedural pattern in this case cannot be better for you or you wouldn’t be in court right now.

            And, again, the Alice court did not send it back down to determine inventiveness in the computer implementation despite the whole-claim non-obviousness. The fundamental business practice was applied by computer and that fact alone was sufficient to inform the Step Two analysis. Instead the court said:

            Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” Mayo, supra, at ___ (slip op., at 16), that addition cannot impart patent eligibility…wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”

            That’s the relevant statement that must be overcome. If the claim is fairly characterized as applying the fundamental practice on a computer then that cannot impart eligibility, regardless of whether the office considers it “inventive” or not, as the office lacks the jurisdiction to find facts in ignorance of supreme court precedent. That occurs in this case, because the fundamental act is simply performed on a computer using conventional hardware and software. Regardless, that is beside the point. The office isn’t taking the position that one can have an inventive concept and yet fail Alice Step Two, the office is disputing the existence of an inventive concept because features that you want considered under Step Two are actually being considered under Step One.

            If Step Two was a whole claim analysis, then Alice would have been eligible, because inter mediated settlement was not performed by a computer before, and therefore would have imparted non-obviousness to the claim, (indeed the claims were presumptively non-obvious) and (under petition logic) would have imparted inventiveness under an ordered combination analysis under Step Two. Ditto e=mc^2. Ditto Mayo. Ditto Sequenom. The judicial exception test would collapse into the 103 test. If 103 were sufficient to vindicate the judicial exception concerns, there’d be no judicial exceptions.

            1. 3.3.1.1.1.1

              But that is not the factual position this case is in, because your question includes what I believe to be an untrue assumption, an assumption you repeat in your post.

              An accusation, without revealing just what this (mysterious) offending thing is, comes across as more than a bit empty.

              This is irrelevant.

              Actually, it is the point at hand, so, no, Random, the opposite of ‘irrelevant.’

              There was a finding of non-obviousness, which is not a finding of an inventive concept in Alice Step Two because they’re different tests to different parts of the claim.

              One phrase to remember: claim as a whole.

              Further, even if one found the features inventive, they are features of the ineligible subject matter itself,

              Reminds me a of a fallacy and argument defeating that fallacy that I saw recently: treating an entire claim as an abstract idea, thereby not providing any notion that “something more” could even be present.

              This also reminds me of a disturbing trend in which examiners simply parse the claim however they want to and choose which limitations to put into which bucket. What is the legal basis for so doing?

              Do I believe in the tautology that any claims that contain an inventive concept should not be subject to a judicial exception rejection? Of course.

              What does this even mean?

              ALL of the conclusions being rendered from the Alice decision have the same flaw: they conclude that the reasoning in Alice is sound and logical. That just is not so. Alice may be the ‘Rule of Law’ now, but that alone does NOT excuse the actual application of logic and sound critical thinking.

              office lacks the jurisdiction to find facts in ignorance of supreme court precedent.

              And yet, plain facts show the ignorance of the Supreme Court precedent itself, and the Office ‘lacks jurisdiction’ to ignore reality and plain facts.

              My, what a conundrum, eh?

              If Step Two was a whole claim analysis, then Alice would have been eligible

              Wrong on all accounts. The problem you have Random, is that you want to accept the Supreme Court decision (no doubt, because you like the Ends obtained), but you cannot perform the necessary critical thinking which puts you on a collision course with that decision.

              ANY ‘collapse’ into 103 is part and parcel of what the Supreme Court has been doing all along.

              That is the inescapable conclusion that one must come to.

              1. 3.3.1.1.1.1.1

                Actually, it is the point at hand, so, no, Random, the opposite of ‘irrelevant.’

                It’s only the point at hand if you ignore what the court said in Alice. See how I actually quoted Alice to prove my point? Do you ever do that?

                One phrase to remember: claim as a whole.

                Again, as the Alice procedure points out, some features of the claim are treated under a first step and given a first analysis, and other elements are treated under a second step and a second analysis. Everything in the claim is being considered. To the extent that this conflicts with your understanding of “claim as a whole” that has been displaced by supreme court precedent.

                ALL of the conclusions being rendered from the Alice decision have the same flaw: they conclude that the reasoning in Alice is sound and logical.

                And herein lies the rub. You disagree with the logic, so you don’t want to follow it. That’s a poor tack to take when the logic comes from the supreme court.

                And yet, plain facts show the ignorance of the Supreme Court precedent itself, and the Office ‘lacks jurisdiction’ to ignore reality and plain facts.

                That’s correct. It isn’t the executive’s function to overwrite judicial interpretation. There would be no judiciary if the executive could supplant it at will. It doesn’t matter if what the court says is correct or not, it’s the agency’s function to apply the test and/or lobby congress to change the law. In the absence of the latter you want the former to happen.

                1. It is certainly not that I “disagree with the logic” as it is recognizing ILlogic that was attempted.

                  There is a huge difference.

            2. 3.3.1.1.1.2

              The question presented is literally: Whether recitation in a patent claim of a combination of steps determined to be inventive over an idea is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.

              If you do not want to share your answer to that question, then I am not sure there is much to discuss.

              For what it’s worth, I actually find a lot of your opinions and analysis in comment threads insightful and interesting, and I frequently find myself agreeing with you.

              The question presented was designed to illuminate and obviate many of the logically inconsistent approaches to the two step framework which obfuscate the analysis and end up willfully or unconsciously ignoring claim limitations in the analysis. If you are reluctant to provide an answer to the straightforward yes or no question presented, and instead find yourself wanting to dissemble and approach it from another direction, that certainly won’t offend me, but you may want to think about why that is.

              1. 3.3.1.1.1.2.1

                For what it’s worth, I actually find a lot of your opinions and analysis in comment threads insightful and interesting, and I frequently find myself agreeing with you.

                Lesson one in how to detract from your own credibility.

                Even IF true, how in the world is saying this going to advance the point at hand?

                Do you really think that a “hey, I’m a friend” approach is actually going to make someone act in an inte11ectually honest manner?

                1. That was just my own personal opinion, so I mentioned it. As you know better than anyone, it takes a lot of time and effort to post thoughtful comments, and I appreciate anyone who does so. This isn’t really the best forum for trying to advance a point, but it’s a great place for discussion. That isn’t to say that it isn’t laudable to try; it’s more to say that the likelihood of impact is low (albeit on this issue maybe only slightly lower than many other forums).

              2. 3.3.1.1.1.2.2

                Whether recitation in a patent claim of a combination of steps determined to be inventive over an idea is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.

                I feel like I’ve answered this twice already, so apologies if I have been unclear. The answer is “no, it is not”. Now let me rewrite your question for clarity of my answer:

                Whether recitation in a patent claim of a combination of steps, apart from an idea, that is determined to be inventive over [the] idea is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.

                The answer to this question is “yes, it is”.

                The question presented was designed to illuminate and obviate many of the logically inconsistent approaches to the two step framework which obfuscate the analysis and end up willfully or unconsciously ignoring claim limitations in the analysis.

                I understand the purpose of what you’re doing here, because I think I understand your complaint. You view the tracking fee as not being part of a preexisting fundamental economic practice, and therefore should not be considered in Step One. Then you consider it in Step Two and find it is admitted by the office to be non-obvious, so you feel you are entitled to a patent. You feel that it is inappropriate to consider it in Step One and doing so is cheating your client out of a Step Two analysis that should end up in his favor. The question is posed in the manner it is in order to force consideration of the inventiveness under Step Two. My complaint on this is two fold: (1) non-obviousness of the whole claim is not necessarily inventiveness of any part of the claim, and (2) inventiveness that flows from the ineligible subject matter is insufficient to confer eligibility.

                1. “You view the tracking fee as not being part of a preexisting fundamental economic practice, and therefore should not be considered in Step One. … You feel that it is inappropriate to consider it in Step One and doing so is cheating your client out of a Step Two analysis that should end up in his favor.”

                  I would suggest that what can be considered at step two is dependent on what abstract idea a claim is alleged to be directed to at step one. Steps one and two work together as part of a two-step “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 305.

                  An examiner or patent challenger gets to identify the abstract idea that a claim is alleged to be directed to.
                  Although an examiner or challenger can certainly look at a claim and argue that it can in theory be characterized as being directed to an incredibly broad abstract idea, this leaves more subject matter that can possibly be “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.

                  In this regard, I would posit that a combination of steps that is sufficient to render a claim inventive over an idea cannot simply be disregarded as part of that idea in evaluating whether the claim includes an inventive concept “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.

                  Otherwise, all of Morse’s claims could have been held invalid, and any claim could be alleged to be directed to a broad result which is characterized as an abstract idea, with specific implementation details dismissed as part of that idea.

                  My suspicion from reading your comments is that you would likely have formulated the rejection differently and identified a different idea, but a patent applicant can’t be expected to guess at various possible rejections. A different formulation which explicitly identifies the use of a tracking fee as part of an identified idea at step one would present a different question: whether the identified idea falls within the abstract ideas category of the atextual, implicit exception.

                2. An examiner or patent challenger gets to identify the abstract idea that a claim is alleged to be directed to.

                  Why?

                  Is it not ‘directed to’ the applicant to decide what the invention is? How can it be someone else who ‘can decide’ such a thing as you suggest (without citation)?

                  I can see what you say as merely being an (initial) attempt at ‘claim construction,’ but at worst, such can only be an initial attempt.

                  Part of the problem of your (unexplored) view is reflected by Director Iancu’s 2019 Patent Eligibility Guidelines in the extra requirement for examiners to obtain signatory permission to assert that a claim is to an ‘abstract idea’ outside of what a court has already indicated (and this is due — at least in part — to the ‘writing law’ nature of Common Law law writing that the courts engage in when they decide ‘abstract idea’ — which while problematic in and of itself as a bas tur dization of at least Common Law principles [writing/rewriting as opposed to interpreting or gap filling] reflects a governmental power that the Executive Branch simply does not have.

                3. anon,

                  An examiner or patent challenger is the one alleging that a claim is ineligible, and the burden falls to them to identify an abstract idea that a claim is allegedly directed to. That isn’t to say that a patent applicant or patent owner has to agree that the claim is directed to that idea, merely that as a matter of process, the examiner or patent challenger is the one who formulates the ineligibility assertion, and must identify an abstract idea that a claim is allegedly directed to. Cf. Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1369 (Fed. Cir. 2019) (Moore, J., dissenting (“Section 101 is monstrous enough, it cannot be that now you need not even identify the precise natural law which the claims are purportedly directed to.”)

                  An eligibility challenge, whether by an examiner or patent challenger, hinges on identification of a specific idea that a claim is alleged to be directed to, because absent such a specific identification of an idea it is impossible for an applicant or patent owner to explain (i) why that idea does not fall within the abstract ideas category, (ii) why a claim is not directed to that idea, or (iii) what claim limitations represent an inventive concept “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.” Alice, 573 U.S. at 305.

                4. J.,

                  My point was that while anyone may allege (anything), Congress was a bit more explicit as to exactly who gets to say what ‘the invention’ is.

                  As I noted, I can see another party offering ‘a starting point’ or assertion, but to then turn around and abdicate that a patent holder must accept such bald assertions does not seem to have any legal basis.

                5. I would suggest that what can be considered at step two is dependent on what abstract idea a claim is alleged to be directed to at step one.

                  I agree.

                  In this regard, I would posit that a combination of steps that is sufficient to render a claim inventive over an idea cannot simply be disregarded as part of that idea in evaluating whether the claim includes an inventive concept “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.”

                  This argument assumes its result. For example, as Einstein put it, “It followed from the special theory of relativity that mass and energy are both but different manifestations of the same thing — a somewhat unfamiliar conception for the average mind.” If we take that explanation of the relationship as the idea, then clearly a particular definition of the relationship e=mc^2 is non-obvious (which you argue is the standard for inventiveness) over that. i.e. Just as creating a too-detailed Step One threatens curtailing Step Two, so too does creating a too lax Step One give Step Two too much power. E=mc^2 is inventive over the natural law that there is a relationship.

                  and any claim could be alleged to be directed to a broad result which is characterized as an abstract idea, with specific implementation details dismissed as part of that idea

                  Here’s an important concern. I view the caselaw as creating two types of ineligible subject matter. There does exist subject matter that is curable by specific implementation – this generally falls under non-maths abstract ideas. Can’t claim a function? Limit to a particular “concrete” means of that function.

                  However, there also exists subject matter that is ineligible regardless of how specific one gets about it, and that often takes the form of what some analysis calls organizing human activities. Intermediated settlement is ineligible subject matter, and it is ineligible whether it is done by hand, on a computer, by a novel widget or on Mars. A novel, nonobvious widget is patentable. But once patent protection exists for the widget, the

                  A consideration for you – though this is far afield from caselaw – I’d submit to you that if Claim 1 described a novel, nonobvious computer and Claim 2 claimed that computer together with the function of performing intermediated settlement, I’d argue Claim 2 is ineligible while it’s parent is not. Once patent protection is given for the computer *in general* a further limitation toward the ineligible subject matter only seeks to impermissibly burden ineligible subject matter. To wit – it prevents third parties from developing software for performing an intermediated settlement for your new widget.

                  For me the case ends when there is an admission of no new technology, as it shows the goal is to claim a new process for achieving an old result, when the old result is ineligible.

                  My suspicion from reading your comments is that you would likely have formulated the rejection differently and identified a different idea, but a patent applicant can’t be expected to guess at various possible rejections.

                  Certainly true, but just as equally you had a mechanism for appealing what features of the claim were assigned to the Step One analysis. Rather than appeal that determination you want the court to do what? Lay down a rule that the “inventive” ineligible subject matter is eligible? That violates Mayo and Morse. Lay down a rule that if the posited idea is inventive over some other idea it is eligible? That evicerates the doctrine altogether. When a boundary isn’t being enforced isn’t the solution to enforce the boundary rather than modify the analysis?

                6. “You view the tracking fee as not being part of a preexisting fundamental economic practice, and therefore should not be considered in Step One. … You feel that it is inappropriate to consider it in Step One and doing so is cheating your client out of a Step Two analysis that should end up in his favor.”

                  “you had a mechanism for appealing what features of the claim were assigned to the Step One analysis”

                  RandomGuy,

                  My apologies, as I should have been more explicit. The features were not articulated as part of the identified idea at step one, and thus should have been considered at step two.

                  This is why I indicated that: “My suspicion from reading your comments is that you would likely have formulated the rejection differently and identified a different idea, but a patent applicant can’t be expected to guess at various possible rejections. A different formulation which explicitly identifies the use of a tracking fee as part of an identified idea at step one would present a different question: whether the identified idea falls within the abstract ideas category of the atextual, implicit exception.”

                7. J.,

                  My apologies, as I should have been more explicit.

                  You were WELL explicit enough, as I understood your point very well.

                  You keep on wanting Random to be inte11ectually honest, and that is just not going to happen. You will never BE “explicit” enough to make him be so.

    4. 3.4

      RandomGuy: “Let’s try maybe a simple little check – If I bought something, received change, took the change to the bank and desposited it (subject to any banking fees), the day before this invention, does anyone think that I would be entitled to a patent for that method? Of course not. So why do you think using conventional technology to improve the speed/location of that process (the EXACT issue in Alice) should make the claim patentable?”

      The fundamental question you’re asking is whether the claim is inventive, right? Whether the claim satisfies the Hotchkiss condition for patentable invention “that a patentable invention evidence more ingenuity and skill than that possessed by an ordinary [artisan] acquainted with the business, [which] distinguishe[s] between new and useful innovations that [a]re capable of sustaining a patent and those that [a]re not.” Graham v. John Deere Co., 383 U.S. 1, 11 (1966) (referencing Hotchkiss v. Greenwood, 52 U.S. 248 (1851)).

      In this regard, re this “simple little check”. For it to be equivalent, you would need to:

      (a) buy something with cash,
      (b) go to the bank and deposit a tracking fee in the merchant’s account,
      (c) receive money from the merchant equal to the tracking fee plus the change from the cash, and
      (d) deposit that money in the bank.

      Of course you would never do that in the manual version, because there is no advantage. But in the electronic version, the process eliminates the need to receive coin change without having to install new point of sale terminals capable of easily crediting a card account.

      I suspect that you disagree as to whether the computer-implemented version of this is inventive. And that’s okay! But the Office determined that it is. I suspect that the primary point of disagreement is that you disagree with this premise. If you agreed that this was inventive, then I suspect that you would also believe that this represents an inventive concept “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [idea] itself.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).

      1. 3.4.1

        The fundamental question you’re asking is whether the claim is inventive, right?

        Unfortunately the answer is “yes and no”, because “inventive” is a conclusory term with a shifting definition. For example, in the quote you use above, the term is largely used to be coextensive with a distinction from the prior art that is now measured by nonobviousness. That is also the use throughout the petition. But the broader usage, what I believe is Alice’s usage, is a definition along the lines of “a claim to subject matter which, when viewed in light of applicable facts and laws, constitutes subject matter which the law finds protectable.” A sequence of a human genome may be new, novel and nonobvious, but it is not inventive, because the patent laws will not protect it. Similarly, the function of printing at a distance was non-obvious during Morse’s time, but subject matter of a machine limited only by the feature of being able to print at a distance was not inventive. You and I use different definitions of inventive. As to *your* definition of inventive, the answer to this question is no, I actually care very little whether the claim as a whole is non-obvious.

        For it to be equivalent, you would need to:

        (a) buy something with cash,
        (b) go to the bank and deposit a tracking fee in the merchant’s account,
        (c) receive money from the merchant equal to the tracking fee plus the change from the cash, and
        (d) deposit that money in the bank.

        Of course you would never do that in the manual version, because there is no advantage.

        This is largely irrelevant the case at hand, but I note that “you would never do that in the manual version because there is no advantage” is not sufficient to generate non-obviousness. A teaching, suggestion or motivation is one option for supporting a rationale of obvious. Simple substitution for predictable results is another. For example, if I told you to give me half my change and then half my change again there is no motivation for that, but it remains obvious because I know that change can be delivered in any format that I would find of equal value. Similarly, if my change was $650 and I demanded it be paid in nickels there would be no motivation for that. In other words, don’t confuse the Office’s compulsive need to map a limitation to a paragraph from a piece of prior art with the actual standard that obviousness is shown whenever a rationale underpinned by sufficient evidence is put forth. I mention this only as an aside, as my analysis assumes the non-obviousness of the (b)/(c) steps. We do disagree as to whether the claim is “inventive” under your definition of the term.

        But in the electronic version, the process eliminates the need to receive coin change without having to install new point of sale terminals capable of easily crediting a card account.

        And that’s the point. Why do the claimed “debiting” and “subsequently crediting” limitations exist? As you point out, steps (b) and (c) above would never be done because there is no motivation. But what is the motivation for debiting and crediting? They exist to serve an outcome that is known as a fundamental business practice. They exist *because of* the fundamental business practice. Absent that practice, the two steps lack utility. They only gain utility because they are performed as part of a series of steps which are a business practice. The ineligible subject matter supplies the whole thesis for societal or artistic value of the claims. Try reexplaining your utility without making reference to the ineligible subject matter.

        1. 3.4.1.1

          Why don’t you “reexplain” for him?

  3. 2

    Why would the Supreme Court say a novel (inventive) combination alone is necessarily more than an abstract idea, when they have repeatedly held novel combinations to be ineligible?

    1. 2.1

      An excellent question, Ben (which of course brings other questions to mind regarding the propriety if the Judicial Branch rewriting statutory law in the first place).

    2. 2.2

      Ben, my understanding of the argument is that the abstract idea is ancient, thus not novel. The claim as a whole is novel. Therefore, there is a nugget of novelty beside the abstract idea. The presence of this nugget of novelty outside of the abstract idea itself contradicts that the claim is just an abstract idea and conventional steps, or that the claim attempts to preempt all applications of the abstract idea in a given field.

    3. 2.3

      Ben,

      The point isn’t just that the claim has been determined to be novel or inventive, the point is that the claim has been determined to be inventive over the identified idea. More specifically, that the recited combination of steps has been determined by the Office to be inventive over the identified idea.

      In this regard, in Flook the Court evaluated whether a claim involving an abstract idea contains an “inventive concept in its application” based on whether, “once that [idea] is assumed to be within the prior art, the [claim], considered as a whole, contains no patentable invention.” Parker v. Flook, 437 U.S. 584, 594 (1978).

      In accord with this, claim limitations that are sufficient to render a claim inventive over an idea are “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself’”? Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).

      1. 2.3.1

        … and therein the rub: turning what Congress explicitly chose NOT to include in 1952’s 35 USC 101 (and instead, creating — in its place — 35 USC 103) into a rewrite back into 35 USC 101.

        As if Congress never acted in 1952 to remove the blight that the judicial branch had created with ‘Gist of the Invention.’

      2. 2.3.2

        “The point isn’t just that the claim has been determined to be novel or inventive, the point is that the claim has been determined to be inventive over the identified idea.”

        It sounds like you’re saying that PTO officials made statements that suggest your application is eligible under an eligibility test that the officials weren’t aware of at the time of their statements. At best that’s an extremely niche issue that’ll never be relevant again if the Supremes found in your favor. So why would they take the case?

        1. 2.3.2.1

          Ben, are you suggesting that since the application only stands rejected on 101 by the examiner, that if the Sup. Ct. did take cert and reverse that the PTO could then still do a better search and give it a 103? [Whereas the cert petitioner is presumably assuming that the Director would have to automatically allow the application if the Sup. Ct. reversed the 101?]

          1. 2.3.2.1.1

            Not at all. I’m just saying this “gotcha” would never work again because the the Office wouldn’t ever make such admissions once they learned what the implication was. It’s a once-off issue.

            1. 2.3.2.1.1.1

              the Office wouldn’t ever make such admissions once they learned what the implication was

              What on earth would give you that view?

              Are you aware of how often Examiners still botch the Berkheimer and Step Zero memoranda?

  4. 1

    I did not understand the “Question Presented”* and I see the cert petition takes half a page under the “Question Presented” subtitle to try to explain what the “Question Presented” is about before actually presenting this “Question Presented.” Isn’t that rather unusual?

    *So I doubt if the non-patent-attorneys at the Sup. Ct. will either. If the Petition wants to argue that the Fed. Cir. is miss-applying Alice, why not say so?

    1. 1.1

      Paul,

      Fair question! It’s definitely more typical to have a briefer introduction, or no introduction. However, as a random sampling, two of the petitions granted today, Facebook Inc. v. Duguid, no. 19-511 and Uzuegbunam v. Preczewski, no. 19-968 included longer explanation prior to the question presented.

      My thought is that plenty of very experienced Supreme Court advocates have already presented broad questions and been unable to convince the Court to take up review in this area – I am certainly no more likely to succeed.

      The reality is that uncertainty and confusion surrounding the implicit judicial exception warrants the Court’s guidance. However, “appellate courts do not sit as self-directed boards of legal inquiry and research, but essentially as arbiters of legal questions presented and argued by the parties before them,” Carducci v. Regan, 714 F.2d 171, 177 (D.C. Cir. 1983) (Scalia, J.), and the hope here is to present a simple question that can help resolve this uncertainty. I don’t believe that either myself or my clients have the weight to draw the Court’s attention to a broad question that just asks the Court to resolve uncertainty without offering a path for doing so.

      The basic idea is that if claim limitations are inventive over an idea, how is that not “‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 305 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).

      I’m not sure that anyone really wants to take the flip side of the question presented, but maybe I am mistaken. What frequently seems to occur instead is an overlooking or ignoring of some claim limitations during the search for an inventive concept. Generally this is not explicit, but in this case the Office made clear that it was explicitly not considering “particulars
      as to how” the idea is implemented. Pet. App. 7a.

      The government in its amicus brief in Hikma suggested that the Court should potentially move away from use of an atextual exception and the current Mayo / Alice two-step framework and instead utilize an “approach of interpreting Section 101’s terms in light of statutory context, history, and constitutional purpose involv[ing] the application of traditional tools of statutory construction to the language that Congress enacted.” Brief for the United States as Amicus Curiae, Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., No. 18-817 at 21 (Filed Dec. 6, 2019). If the government wishes to cross-petition with such a broader question regarding eligibility, this may be a great case for them to do so. Indeed, the government likely has the best chance of anyone of getting a broad question presented considered, but I do not believe that either myself or my clients would have similar ability to draw the Court’s attention to a broad question.

      1. 1.1.1

        Thank you. We do not that often get a good commentary from the case attorney here.
        [Not that I think that any patent obtained on this could survive an IPR 103 challenge even if the 101 rejection would be overruled.]

        1. 1.1.1.1

          BTW my real concern with cert petitions like this one is that I think that Sup. Ct. justices seeing such simple “keep the small change and give me a credit for it” claims not being rejected by anything other than 101 are going to be even more dubious about the U,S. patent system operation. AKA the old legal maxim that bad fact cases can make for bad law, if cert does get granted.

          1. 1.1.1.1.1

            Paul,

            I would posit that broadly construing an atextual, implicit judicial exception in order to “distinguish[] between new and useful innovations that [a]re capable of sustaining a patent and those that [a]re not,” Graham v. John Deere Co., 383 U.S. 1, 11 (1966), is not the proper approach, and actually makes it harder to substantively examine patent applications. As Director Kappos noted in recent congressional testimony, the “USPTO is expending many thousands of hours per year on the irreconcilable mess of 101 — time that could be much more productively spent on issues that should be the focus of quality patent examination, as they are for our economic competitors.” The State of Patent Eligibility in America, Part I, Before the Subcomm. on Intellectual Property, 116th Cong. (2019) (Testimony of David J. Kappos, former USPTO Director). He suggested that “our national preoccupation with 101 puts us at a quality disadvantage against our economic competitors who deploy their patent examination resources at the real issues affecting patent quality: novelty, non-obviousness, enablement, written description.” Id.

            If examiners are not given enough time and resources to search and examine patent applications in certain technological areas (which seems likely, given the disparity in cost between the filing, search, and exam fees for a new application and the cost of an IPR filing), or if 103 isn’t being applied stringently enough, then these issues should be discussed and investigated. But, so long as 101 can be used as a shortcut to conclude that a claim lacks an inventive concept without the judicial safeguards developed around 103, these conversations are less likely to occur, and “bad” patents remain more likely to issue without sufficient substantive examination.

            In terms of being dubious about the operation of the patent system, I am a firm believer that shining light, and opening discussion, is pretty much always a good thing.

            Patent examination is hard. The Patent Office, and patent examiners, have an impossible job. I actually think that Director Iancu and the Patent Office are in general doing a great job. However, any time a lack of reasoned analysis is allowed, it enables the use of shortcuts, sometimes with the best of intentions, and sometimes without.

            1. 1.1.1.1.1.1

              Re: “I would posit that broadly construing an atextual, implicit judicial exception in order to “distinguish[] between new and useful innovations that [a]re capable of sustaining a patent and those that [a]re not,” Graham v. John Deere Co., 383 U.S. 1, 11 (1966), is not the proper approach, and actually makes it harder to substantively examine patent applications.”
              Yes, most of us can agree with that. But asking the Sup, Ct. to overrule itself on the several Sup. Ct. cases over many years holding certain subjects to be unpatentable [of which Alice is merely the most recent and is on only one of those subjects] is highly unlikely. My 1.1.1.1 point was that it would take a much more appealing, publicly valuable, and clearly novel invention being unfairly denied patentability to even get their attention to that kind of consideration, rather than reinforcing their prior decisions.

              1. 1.1.1.1.1.1.1

                Yes, most of us can agree with that. But asking the Sup, Ct. to overrule itself…

                You would be a joy following the Dred Scott decision.

      2. 1.1.2

        Yes; thanks for the explication Jeremy. Was wondering the same thing Paul was. Your approach makes perfect sense for your client.

        Best wishes. Of course, your clients claims were then . . . and are still eligible.

        Not that SCOTUS is likely to care.

        1. 1.1.2.1

          I agree, that it’s a pleasant surprise to read here a contribution from the case attorney. And, to boot, a contribution that well illuminates the difficulty there with eligibility jurisprudence.

          If one looks, for example, at the Zunshine case presently highlighted in the Patent Docs blog (Link below) in the context of the Jeremy Question, one is struck by the central importance of the words “determined to be inventive over an idea” and is left to wonder whether, on eligibility, the courts are putting the cart before the horse or, to use less delicate language, have got it “Arse about Face”.

          link to patentdocs.org

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