101: Extending Uncertainty to All Fields

by Dennis Crouch

It appears that we have not yet seen the most invasive nature of contemporary patent eligibility doctrine.  Case in point: Yu v. Apple Inc. (Fed. Cir. June 11, 2021) [Yu vs Apple].

Yanbin Yu and Zhongxuan Zhang are the inventors and owners of U.S. Patent No. 6,611,289 (‘Digital cameras using multiple sensors with multiple lenses’).  The pair sued Apple and Samsung for patent infringement, but the district court dismissed the cases for failure-to-state-a-claim.  In particular, the court found the claims directed toward an abstract idea and thus invalid under 35 U.S.C. § 101.  On appeal, the Federal Circuit issued a 2-1 decision affirming with Judge Prost and Taranto in the majority and Judge Newman in dissent.

The asserted claims are directed to a digital camera having multiple analog image sensors with lenses mounted on the image sensors. The claims also include analog-to-digital circuitry to digitize images from each camera so that they can be stored in memory. The claims then require creation of a “resultant digital image” based upon images from the two different cameras.  Note, the patent application was filed back in 1999; issued in 2003; and has now expired.

On appeal, the Federal Circuit affirmed that the claims at issue are merely directed to the following abstract idea:

“claim 1 is directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.”

The problem, according to the majority, is that claims “merely invoke generic processes and machinery.” (Quoting Smart Sys.) In some ways, the patent’s specification also suggests an abstraction — especially the following line: “there is a great need for a generic solution that makes digital cameras capable of producing high resolution images without enormously incurring the cost of photo-sensitive chips with multimillion photocells.”  ‘289 Patent.  But, I would suggest reading the specification for an understanding that this is a technological solution.

The appellate panel suggests that the specification probably does include a patent eligible invention in the form of “a four-lens, four-image-sensor [including] a black-and-white sensor.”  But, the claims at issue do not require four sensors or the B/W sensor.

In dissent, Judge Newman explains:

This camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea.’ . . . [C]laim 1 is for a digital camera having a designated structure and mechanism that perform specified functions; claim 1 is not for the general idea of enhancing camera images. The camera of the ’289 patent may or may not ultimately satisfy all the substantive requirements of patentability, for this is an active field of technology. However, that does not convert a mechanical/electronic device into an abstract idea.

Slip Op.  Newman’s dissent also walks into the bigger picture of Section 101 jurisprudence:

In the current state of Section 101 jurisprudence, inconsistency and unpredictability of adjudication have destabilized technologic development in important fields of commerce. Although today’s Section 101 uncertainties have arisen primarily in the biological and computer-implemented technologies, all fields are affected. The case before us enlarges this instability in all fields, for the court holds that the question of whether the components of a new device are well-known and conventional affects Section 101 eligibility, without reaching the patentability criteria of novelty and nonobviousness.

The digital camera described and claimed in the ’289 patent is a mechanical/electronic device that easily fits the standard subject matter eligibility criteria. Neither the panel majority nor the district court decided patentability under Section 102 or Section 103, having eliminated the claims under Section 101. The ’289 claims warrant review under the substantive criteria of patentability—a review that they have never received.

The fresh uncertainties engendered by the majority’s revision of Section 101 are contrary to the statute and the weight of precedent, and contrary to the public’s interest in a stable and effective patent incentive.

= = = = =

1. An improved digital camera comprising:

a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum;

two lenses, each being mounted in front of one of said two image sensors;

said first image sensor producing a first image and said second image sensor producing a second image;

an analog-to-digital converting circuitry coupled to said first and said second image sensor and digitizing said first and said second intensity images to produce correspondingly a first digital image and a second digital image;

an image memory, coupled to said analog-to-digital converting circuitry, for storing said first digital image and said second digital image; and

a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.

2. The improved digital camera as recited in claim 1, wherein said first image sensor sensitive to said full region of visible color spectrum.

4. The improved digital camera as recited in claim 1, wherein said analog-to-digital converting circuitry comprises two individual analog-to-digital converters, each integrated with one of said first and second image sensors so that said first and second digital images are digitized independently and in parallel to increase signal throughput rate.

 

302 thoughts on “101: Extending Uncertainty to All Fields

  1. 24

    Everyone (well, excepting infringers, of course) want to end the 101 / eligibility uncertainty?

    Well wouldja’ just lookie here: Turns out the solution’s been staring us all in the face since Alice itself:

    Simply define “abstract.”

    There. Problem solved.

    Now back to 102, 103, and 112.

    1. 24.1

      I think this is a solution literally everyone except Justice Thomas can get behind.

      1. 24.1.1

        As long as the proper authority for ANY defining is followed.

        That is, no legislating from the bench.

        1. 24.1.1.1

          At this point, I’d be fine with a clear definition, even from the bench, that Congress is then free to adopt (or more realistically, decline to amend).

          1. 24.1.1.1.1

            No, I am not fine with legislating from the bench in patent law.

            The authority to write patent law was given to only branch.

            As an attorney you should be ethically offended by what the Court is doing.

    2. 24.2

      Have we not learned from politics, not to put our trust in anybody who asserts that, for any given intractable and emotional problem, there is in fact a very simple solution? Why? Because there never is such a simple solution.

      As here. Any definition will be exploited by talented and zealous lawyers. there will inevitably be “creep” and within a year or two the definition will no longer be fit for purpose. Worse, it will lock in deleterious development of the law of eligibility.

      This is precisely why Europe declines to write any lock-in definition of “technical”. One wants a patent law that is “future-proof”, capable of Darwinian evolution, not ossified, with the past locked in.

      What constitutes “abstract” is changing, faster than ever before..

      1. 24.2.1

        As here. Any definition will be exploited by talented and zealous lawyers.

        So your ‘answer’ is to leave the scrivining to those who grasp patent law worse, AND leave it like a nose of wax?
        Have you ever heard of the legal phrase Void for Vagueness?

        Also – you again seek to have your inputs to US law, while showcasing a supreme lack of care for the precepts of our law.

        Why do you insist on being so rude?

  2. 23

    On the image enhancement case, what I’m thinking is that with my left eye shut, I am seeing in front of me with my right eye an image of a screen. But if I now open my left eye, the image is enhanced. How about that, eh? Who knew?

    1. 23.1

      Did you “gist” the claim, or forget to take the claim elements as a whole?

      1. 23.1.1

        What a m o r o n i c comment Max.

        Just disgusting. Humans building machines that can do what people do–probably the hardest thing that humans have every done. And l i t t le w a n k i e s constantly, gee, a person can do it so it must be easy.

        M o r o n i c. Science illiterate stuff right out of a teenage movie. M o r o n i c.

        1. 23.1.1.1

          Opinions may differ, Night, over the precise degree of moronicism in my comment. More important is the degree of relevance it has, to the issue whether enhancing an image digitally is a concept that can ever seriously be seen as “inventive”.

          1. 23.1.1.1.1

            digital is not human.

            One sentence sets you on your arse, MaxDrei.

        2. 23.1.1.2

          … did Malcolm steal Night Writer’s login info?

    2. 23.2

      Please delete your comment Max and rethink your miserable life.

      1. 23.2.1

        Credit to you, Night, for asking nicely but, sorry, I’m disinclined to delete my comment. See, it provoked a fair comment from anon. Not many of my comments achieve that.

        If you truly are “disgusted” why not click on the report button and report me to Dennis?

        1. 23.2.1.1

          So no substantive response from Max.

          1. 23.2.1.1.1

            There was, but the filter snagged it. Perhaps Dennis will release it for publication during the course of the day.

        2. 23.2.1.2

          See, it provoked a fair comment from anon. Not many of my comments achieve that.

          What planet are you on, MaxDrei?

          Nearly all of my comments in response to your inanities (and throwing C R P against the wall to see what sticks) are fair comments.

          The issue is that you never seem to grasp them, and are repeating your inanities over and over and over.

          Do you know how disrespectful it is to ignore the corrections provided to you?

    3. 23.3

      Respectfully Max, this is a surprising — and frankly disappointing — comment from someone with so much experience in the field.

      1. 23.3.1

        Not necessarily… It follows the USPTO’s own analysis guidance and arguably shows that the claim is directed to an abstract mental process. Or, in the PTO’s parlance:
        “The claim recites the limitations of receiving two images and producing a resultant image from one enhanced with the other. The producing limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic hardware components. That is, other than reciting “image sensor(s)”, “lenses”, “analog-to-digital converting circuitry”, “image memory”, and a “processor”, nothing in the claim precludes the producing step from being practically performed in the human mind. For example, but for the generic hardware components, the claim encompasses a human receiving an image from their left eye and right eye (which are “closely positioned with respect to a common plane” and with at least one eye “sensitive to a full region of visible color spectrum”), and combining the images to provide a stereoscopic view with depth information. This limitation is a mental process.”

        See, e.g., USPTO’s Example 37, claim 3 (link to uspto.gov).

        1. 23.3.1.1

          Broadest REASONABLE interpretation requires the claims be read in light of the specification.

          You appear to want to read them in a vacuum.

      2. 23.3.2

        Pro, I see myself as the “King has no clothes” little boy in the crowd, asking the awkward questions. The more provocative I am, the more responses I get, and the more I learn about what patent people in the USA really think.

        As here. See what a range of responses my comment drew out. From where you stand, you say you are “disappointed”. Of course you are. I can understand that. From where i stand, the world looks different.

        1. 23.3.2.1

          Careful now Max; for it may be that it is the little boy who has no clothes. 🙂

        2. 23.3.2.2

          Pro, I see myself as the “King has no clothes” little boy in the crowd, asking the awkward questions.

          I literally guffawed when I read that.

          You sir, are no child calling out the King has no clothes. You sir are a sycophant shill of the EPO Uber Alles.

          For all of your “I learn,” you DO NOT LEARN. You have been led to the well of wisdom countless times. So much so, that the carcasses of horses so led there have created a fetid wall that you would rather bask in that stench than drink from the well.

  3. 22

    If SCOTUS fails to reverse the CAFC in either American Axle or this case, then I do not see how Congress will be able to avoid overruling Alice via legislation much longer.

    The exception is truly swallowing up all of patent law.

    1. 22.1

      I wouldn’t hold my breath for either of these cases. While I think the 101 jurisprudence has gone insane, and 112 would be a much better way to reject these, both American Axle and this case had the same problem – the inventor tried to claim a problem and “solve it”, rather than a way of achieving that solution. You could write either claim without knowing anything about how to solve the problem. Recognizing that a problem exists is not the same as inventing a solution.

      1. 22.1.1

        “It should not be necessary for this court to point out that a patentable invention may lie in the discovery of the source of a problem even though the remedy may be obvious once the source of the problem is identified.” Application of Sponnoble, 405 F. 2d 578 (CCPA 1969).

        1. 22.1.1.1

          The remedy still must be claimed, however. Merely identifying the source of a problem – such as drive shaft vibrations or that images may be noisy – and saying “solve it by any means” does not constitute a patentable invention.

          1. 22.1.1.1.1

            I don’t think “by any means” was actually in the subject claim.

            Sure, the class of two modes may have been broad, but they certainly do not include “any means.” For example, there may well be means of applying pickles and peanut butter….

            1. 22.1.1.1.1.1

              “producing a resultant digital image from said first digital image enhanced with said second digital image”

              That purports to cover every way of enhancing an image with a second image, and I can guarantee that I can think of at least one way of doing so that is not enabled by the specification.

              1. 22.1.1.1.1.1.1

                was comment was directed to the ‘shaft’ case….

                1. I can dig it. 😉

                  But that one was just as bad:
                  “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member”

                  Or in other words, “I identified a problem – vibrations – so I claim ‘reducing vibrations’.”

              2. 22.1.1.1.1.1.2

                Abstract iDan–your comments are typical of the anti-patent judicial activists trying to remove the person of ordinary skill and reality from claim construction.

                Try construing the claims from the viewpoint of a person of ordinary skill in view of the specification and you will get a different result.

                Never ends with these w a n k i e s.

                1. Gosh, thanks, Night! Clearly, you consider my analysis to be from the perspective of a person of extraordinary skill. I’m blushing here.

                2. “Try construing the claims from the viewpoint of a person of ordinary skill in view of the specification and you will get a different result.”
                  If a claim has a term in it that needs such interpreting. But one simply cannot IMPORT LIMITATIONS from the specification into a claim in a District Court or IPR, under long established clear case law, as others have noted several times here before, except under 112(f). Nor would most applicants or plaintiffs want such claim scope limitations. They belong in dependent claims.

              3. 22.1.1.1.1.1.3

                “That purports to cover every way of enhancing an image with a second image, and I can guarantee that I can think of at least one way of doing so that is not enabled by the specification.”

                Why is this a problem with image enhancement, but is not a problem with, say, transmitting or receiving data? Or, to use a mechanical analog, fasteners?

          2. 22.1.1.1.2

            Agreed, Dan. But not so fast there. Was not the Axle claim far more “specific” than “by any means”? I mean, in a flash of inspiration, they invented the concept of “tuning” to solve the driveshaft vibration problem, did they not.

            Come on man, credit where credit’s due (these words typed, by the way, just in case it is not 100% clear already, with my tongue firmly thrust into the side of my mouth).

            1. 22.1.1.1.2.1

              I mean, in a flash of inspiration, they invented the concept of “tuning” to solve the driveshaft vibration problem, did they not.

              Maybe that’s not the side of your mouth where your tongue is.

              It is pretty well understood that it was not the single nature of “tuning,” and the provided cases (Sponnoble, Eibel Process) explicate this.

              1. 22.1.1.1.2.1.1

                “it was not the single nature of “tuning,” ”

                In English, please?

                1. Dan, anon can speak for himself but what I suspect he is alluding to with his “single” is Applicant’s smoke and mirrors riff on the difference between three different modes of driveshaft vibration and his genius in damping of all three.

                  The thing is though, it is as old as the hills and has been well-known since forever, that any driveshaft has exactly these three modes of vibration and failure to damp all three renders the shaft unsaleable. it’s always been that way.

                2. Thanks, Max.
                  Regardless, the claim still identifies the problem, but not the solution: “tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member”

                  How is that tuning accomplished? The claim covers every solution, whether or not now invented. Under the current confusion of 101, that does seem to be directed to the abstract idea of a solution rather than an implementation of one.

                3. why would you describe that as smoke and mirrors?

                  You are showing your lack of appreciation of the underlying technology.

              2. 22.1.1.1.2.1.2

                Dan, Applicant (on the EPO family member file) tells the examiner that there is no need in the specification to teach how to “tune” vibrations out of a driveshaft because that much is well-known and conventional. So, I guess we could say that the claim is not directed to a solution. More yet, it is not even directed to a problem to be solved.

        2. 22.1.1.2

          SCOTUS agrees: Eibel Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45 (1923).

        3. 22.1.1.3

          At the risk of belaboring the painfully obvious, Sponoble and Eibel Process are both obviousness cases. You are quite correct that—if your claims are challenged under §103—you might well prevail by citing Sponoble or Eibel Process and showing evidence that you discovered a non-obvious problem.

          However, §103 is not the only section in Title 35 that your claims must satisfy. Dan was talking about §112 grounds of challenge. Dan is quite correct that to satisfy §112, one must claim the solution, not the problem. If one is facing the sort of §112 challenge that Dan is discussing, you are not going to do yourself any favors by citing Sponoble or Eibel Process.

          1. 22.1.1.3.1

            Greg has an excellent point – but one which changes in focus BETWEEN claims and support in the specification.

            Like it or not, 101 is in view of the claims.

            Thus, the legal concepts amenable to 103 are closer to the mark than those amenable to 112.

          2. 22.1.1.3.2

            Additionally, Greg, they’re misreading Sponoble and Eibel… Those cases didn’t say “patentability only requires identifying a problem”, but rather “a patentable invention may lie in the discovery of the source of a problem even though *the remedy* may be obvious once the source of the problem is identified” (Sponoble) and “The invention… was the discovery of the source not before known, *and the application of the remedy*, for which Eibel was entitled to be rewarded in his patent.” (Eibel).

            Identification of the problem may lead one to the remedy, but it’s the remedy that should be claimed, not the problem.
            For example, Sponoble discovered that moisture vapor transmission between two chambers of a mixing vial was a problem, but claimed:
            “… a one-piece, solid and cylindrical plug of butyl rubber having a coating consisting of silicone, said plug being non-toxic and having an outside diameter slightly larger than the inside diameter of said seat so that said plug is slideably removably positioned snugly within said cylindrical portion of reduced cross-sectional area to isolate said chambers from each other and thereby minimize the moisture vapor transmission between said chambers;”
            While the purpose of it appears in the clause at the end, he claimed a specific implementation of a solution, rather than just “a multi-chamber vial structure having reduced moisture vapor transmission between chambers.”

            Similarly, Eibel’s patent claimed a specific arrangement that utilized a gravity feed, which then solved the problem he discovered. He didn’t claim simply “an improved Fourdrinier machine that doesn’t suffer from rippling”, and in fact, the problem doesn’t appear in his claim 1 at all:
            “1. A Fourdrinier machine having the breast roll end of the papermaking wire maintained at a substantial elevation above the level, whereby the stock is caused to travel by gravity, rapidly in the direction of movement of the wire, and at a speed approximately equal to the speed of the wire, substantially as described.”

            So it’s a misstatement to claim that Sponoble and Eibel stand for the idea that one may simply claim a problem and “solve it”.

            1. 22.1.1.3.2.1

              +1

      2. 22.1.2

        You are absolutely correct. The recognition of a problem is not the same thing as drafting a claim that embodies a solution to that problem. Recognizing a problem exists is a starting point to get to the solution to the problem. The solution is the claim, and the claim is the solution. Just look at the three-pronged test for long-felt need (for a solution to a problem) and the solution is the focus: (1) whether the need for a solution to the need was persistent and recognized by ordinarily skilled artisans; (2) whether the need for a solution had been satisfied by another before the invention by the applicant; and (3) whether the invention satisfied the need for a solution.

        The problem with the way the inventor tried to claim a problem and “solve it” exists:
        (a) because the inventor does not understand how claims work
        (b) because the attorney drafting the claim does not understand the invention
        (c) because the attorney drafting the claim does not understand how to draft a claim embodying the solution to the problem
        (d) at least one of the above.

        1. 22.1.2.1

          “The problem with the way the inventor tried to claim a problem and “solve it” exists:
          (a) because the inventor does not understand how claims work
          (b) because the attorney drafting the claim does not understand the invention
          (c) because the attorney drafting the claim does not understand how to draft a claim embodying the solution to the problem
          (d) at least one of the above.”

          (e) Because the law is vague and the expected value of pushing the boundaries of claim drafting is higher than the expected value of just claiming what one is clearly entitled to.

          1. 22.1.2.1.1

            Anon-noyed and Ben, the way I see it, it is the duty of a drafter to claim as wide as the case will plausibly bear. So claim 1 will often be more or less untenable.

            But there is a yet higher duty, namely to present a set of fall-back positions within the claim set, of increasing specificity.

            Why is this higher duty not recognised or taken seriously, within the USA? Is it down to the vague thought that, if you show a USPTO Examiner a narrower claim, that immediately renders unprosecut-able all claims any wider than that? Like, you know, if you offer the Examiners at the USPTO your little finger they will instantly bite off your entire hand?

            1. 22.1.2.1.1.1

              Why is this higher duty not recognised or taken seriously, within the USA

              It very much is. Leastwise in my practice.

  4. 21

    Newman’s point here – and it is probably understated – is that all of this attempted infusion into the 101 question of any aspects of prior art, conventionality, and the like, is a direct affront to the purpose of the 1952 Act that took a prior paragraph and carved it up to create the sections of 101, 102, 103, and 112.

    We’ve been through this mechanism of the Supreme Court before and Congress explicitly pulled back from that.

    Every attorney should be upset at this.

    1. 21.1

      …oh, and yes – as Judge Newman point out, this path opens every art unit to the Gordian Knot of “re-capture” of that which Congress set into different sections back into a “Gist/Abstract” sword powered by uncontrolled “prior” considerations.

      1. 21.1.1

        Correct Anon. I was just dropping by to post much the same. As naked now for all to see, the “abstract idea” test is just the old 2nd circuit patent killer AKA the “gist” or “heart of the invention” test that was explicitly overturned by the ’52 Act. It’s simply not an objective standard. And like the blob, it swallows up all the other patent law. And as history repeats, no patent survives the ‘gist’ test. This is Judge Breyer-ism writ large – as he favors these subjective tests in the name of empowering judicial discretion – to which Breyer-ism believes allows the judge(s) to determine some optimal societal result – and then back fill the reasoning. Breyer wrote an entire book on the subject. You can see this same reasoning in his eBay concurrence, he’s in the efficient infringer camp sorry to say, because he believes this achieves some optimal result – for the greater good of ‘all.’ Bottom line. It’s hubris. And subjective. KSR and ‘common sense.’ Pffft. What kind of evidentiary record for review are you making when ‘common sense’ is the linchpin? You’re not. And of course peak Breyer-ism is declaring the ‘public rights’ doctrine governs the patent right holding of Oil States, and letting that privy court exist. In his world view, so much the better, because we now we have the King and the Courts finding optimal solutions for the greater good. What he doesn’t get, is the massive astroturfing and lobbying efforts, and favor factory he is enabling. I doubt even a visit from the ghost of Justice Story would shake him out of it. Rehnquist kept a lid on this destruction, now it’s the SCOTUS wrecking ball.

        1. 21.1.1.1

          Yup iwasthere. Exactly what is happening.

          I think too that what I say below is a big part of it as well as this comes from real inventions and real engineers and not judicial “common sense”.

  5. 20

    (1) functional claim language –> a family of solutions

    (2) family of solutions –> pick a particular solution

    (3) particular solution –> implement with a machine

    (4) machine that is an embodiment of the invention.

    The machine requires space, time, and energy.

    1. 20.1

      This is called the ladders of abstraction.

      Information processing requires time, energy, and space to perform.

      The conservation of information is an important physical law of the universe.

      There are theories about how much time, space, and energy it takes to transform information (and represent.)

    2. 20.2

      And be clear little w a n k i e s that (2) is well defined by a person of ordinary skill in the art.

      The set of solutions is something a person that actually works in the field knows distinctly in view of the specification.

      The little w a n k i e s will never give up. Just imagine the filth that must go through a mind like Taranto to generate these twisted cases to lessen the patent right.

      1. 20.2.1

        “(2) is well defined by a person of ordinary skill in the art.”

        The flaw in your reasoning is that, in my experience, no examiner determines the level of skill in the art. Skill level determination at the USPTO is an even bigger fraud on the public than Section 101 rejections.

        1. 20.2.1.1

          That isn’t a flaw in MY argument. And the way that plays out at the PTO is in the search for prior art. The examiners are searching what others in the field have done using as keywords the functional language. And–boy–the functional language that is used is almost always well-known words from the art or it requires a definition in specification, which does not work out well in Markmen hearings.

          So as is typical of your kind on this blog, you have no idea what you are talking about.

          1. 20.2.1.1.1

            So as is typical of your kind (well, you at the very least), you take a criticism of your comment and respond with a personal attack, my pugnacious and thin-skinned colleague.

            “The examiners are searching what others in the field have done using as keywords the functional language.”

            Which is how they are finding the alleged prior art – the very prior art the examiners are using to ‘implicitly’ determine the level of skill in the art.

        2. 20.2.1.2

          I agree with Night Writer – any flaw here (in execution of examination) is NOT a flaw of the legal rubric.

          This TOO speaks that focus on ‘patent quality’ should be a focus on ‘patent examination quality.’

          1. 20.2.1.2.2

            It’s fine as theory, but flawed in practical application. I’m a patent attorney. I don’t care about theory so much since theory doesn’t go very far at the USPTO. In theory, there should be an explicit determination of skill level by examiners. That doesn’t happen in the real world. I care about dealing with examiners in the real world and obtaining a patent for my clients’ applications. Theory is great for appeals but not so much for actual examination where most examiners aren’t attorneys and completely ignore case law.

            1. 20.2.1.2.2.1

              May I suggest that you are not doing it correctly then?

              I also care about my clients – but in my case, I am able to wield ‘theory’ and case law and use that to my clients’ advantage.

              I fully ‘get’ the “examiner is not an attorney” angle – and I make the most of it.

              If you are dismissing case law and ‘theory,’ then you are underserving your clients.

              1. 20.2.1.2.2.1.1

                “May I suggest that you are not doing it correctly then?”

                Only if I may suggest you’re not understanding what I’m actually saying.

                “If you are dismissing case law and ‘theory,’ then you are underserving your clients.”

                Where did I say I was dismissing case law? I respectfully suggest you read what I say and not read things into what I say. Case law is not theory. Case law is practical application (which examiners mostly ignore anyway since they are not generally trained in appreciating case law and usually employ case law as improper per se rules). Now, the practical application of case law can be misapplied by both the USPTO and practitioners. The USPTO, for example, has the MPEP saying that KSR applies to the second prong of the analogous art test. You want effective application of case law? Cite a PTAB case to the examiner where the examiner was reversed by the PTAB for doing in that case what the examiner is doing in the one you’re prosecuting. Practical result: rejections withdrawn, notice of allowance issued.

                As I said, what NW set forth is fine as theory, but flawed in practical application since counting on skill level determination can’t work in the real world with the USPTO’s implicit skill level determination approach.

                1. Your use of the word “theory” appears to be the disjoint.

                  None of what I have been talking about is anything that I would classify as what you seem to want to call theory.

                  Perhaps you can help us both by stating explicitly what this thing is that you are calling theory…

                2. Why don’t we start off with your definition of ‘theory’ upon which you base your claim that my use appears to be the disjoint?

            2. 20.2.1.2.2.2

              Let me rephrase. It’s not that I don’t care about theory but theory rarely, if ever, cuts the mustard with examiners. Examiners do not care about theory. They care about getting counts. It is my job to make sure the path of least resistance for the examiner to take is the one that leads to my clients’ claims getting allowed.

              1. 20.2.1.2.2.2.1

                Your job is MORE than merely getting by the examiners.

                Sometimes that is a ‘least resistance’ path, but critically, sometimes it is not.

                IF all that you are doing is placating examiners, then I would even say that you are part of the problem.

                1. “He’s also very quick to call others “thin-skinned,” but displays his own thin skin when there is push back in his view.”

                  Anon, you like to dish it out but you can’t take it when your own tactics are used against you, Mr. Thin Skin.

                  It seems you are more interested in the sound of your own voice. Why are you carrying Night Writer’s water for him? It’s a red flag you’re just Night Writer or B’s alter ego.

                2. LOL – I have provided NO instance of thin skin here.

                  That you want to accuse me of being two different people just because I point out your deficiencies says more about you than you realize.

                  your skin is shredding.

                3. “your skin is shredding.”

                  LOL! Yours has melted off to reveal your alter ego. You’re so defensive and insecure when people call you on your BS.

                4. “It’s a red flag you’re just Night Writer or B’s alter ego.”

                  I really hope that I’m not the “B” you’re referencing. The thought of my pseudonym being associated with his pseudonym is literally more offensive that any insult ever directed to me in real person.

                  We would all do well to ignore him. “Never wrestle with pigs. You both get dirty and the pig likes it.”

                5. You project too much there ipguy.

                  I have not been “defensive” at all.

                  I certainly have not been insecure at all.

                  Your “I know you are, but what am I” style retorts have gone nowhere.

                  You just don’t like the fact that MULTIPLE (and different, no matter how bruising that is to your ego) have gotten the better of you and I happen to agree with them.

                  This is just not about me. It is about you. You trying to make this about me is merely you deflecting.

                  It’s not working.

              2. 20.2.1.2.2.2.2

                Again, it doesn’t matter if the examiner accesses the level of skill in the art.

                The terms used determine the art search and the terms must be the one that are commonly used by persons skilled in the art or the claim scope will be severely limited.

                Again–get it?

                1. Modern patent law is based on the level of ordinary skill in the art. From what a person of ordinary skill would understand something to mean in view of the specification, whether a particular combination of art would be obvious, the motivation to combine art, etc.

                  How terms are “commonly used” can vary, and applicant’s are allowed to be their own lexicographer. As per the MPEP (which has its flaws), “[t]he only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as their own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. The specification may also include an intentional disclaimer, or disavowal, of claim scope. In both of these cases, “the inventor’s intention, as expressed in the specification, is regarded as dispositive.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc).

                  If you have a flawed skill level determination, you wind up with a flawed claim interpretation, and flawed claim scope.

                  Now please calm down.

                2. ipguy,

                  I covered the case of being your own lexicographer. And, again and again, the functional terms that must be used in the claim determine the search terms.

                  It is true that examination would be better if the level of skill in the art were assessed but this is a secondary issue and goes more to combining elements (TSM) than it does in determining prior art and in understanding what functional language means.

                  And, again and again, your comment has nothing to do with the meaning of the functional terms other than the fact that the current standard pushed by the likes of Taranto and Lemley is to remove a person of ordinary skill and substitute a judge’s view of how they feel about things according equity principles that they don’t need to articulate as–well just ’cause.

                3. It seems that not only ipguy wants to focus on a different aspect, he wants to label the application of a proper foundation of that aspect as nothing more than “theory,” and capitulate to any examiner who plays fast and loose on proper examination ‘because they are not attorneys.’

                  He’s also very quick to call others “thin-skinned,” but displays his own thin skin when there is push back in his view.

                  Makes me wonder if he works for one of those clients who use a volume throw-it-at-the-wall approach and feeds delusions of examiners instead of calling examiners out and challenging bad rejections.

                  Don’t get me wrong — I have some great examiners. I also have some absolutely terrible ones who appear coddled and even offended when I correct their mistakes with ‘theory.’

        3. 20.2.1.3

          Wrong target? If PTO applicants really want to base an argument for allowance [or more importantly, appeal] over a 103 rejection based on proving what “a person of ordinary skill” in THAT art is, they can file an expert declaration on that. But they rarely do.
          I remember Don Dunner, the dean of CCPA appeals, saying failure to file any supporting declarations was a major reason for losing appeals, and quite often counseled filing a continuation to do so before appealing.

          1. 20.2.1.3.1

            Sage advice from Don Dunner.

        4. 20.2.1.4

          It’s a legal frame. Like the ‘reasonable man’ standard. In other words, legal reasoning.

          1. 20.2.1.4.1

            absolutely.

            I think that ipguy is himself being a a bit too thin-skinned (and a bit too full of himself).

            He wants to treat this as having no “real value,” when those of us who wield legal reasoning, KNOW that we can squeeze “real value” out of all kinds of judicial decisions — and not uncoincidentally, we can do this (at times) BECAUSE examiners are not attorneys.

            1. 20.2.1.4.1.1

              You need to read what I actually wrote, as opposed to what you have read into what I wrote through the lens of your own biases.

              1. 20.2.1.4.1.1.1

                What you wrote is not clear enough on its own, and to make sense of it, I need to read “into it.”

                1. You need to work on your reading comprehension abilities, and stop being so thin-skinned.

                2. My reading comprehension is just fine.

                  I do notice though that you want to place onus on me for YOUR use of ‘theory.’

                  You tossed that term about as if the topic did not have meaningful legal impact.

                  It does.

                  It is up to you to validate your own position. That has nothing to do with ‘reading comprehension’ of another.

                  All this is is simply more of you turning to whining then backing up your position.

                  Maybe instead of that, you – you know – actually back up what you are saying, and put the shovel down. Maybe explain what you mean by “but theory rarely, if ever, cuts the mustard with examiners. Examiners do not care about theory. They care about getting counts. It is my job to make sure the path of least resistance for the examiner to take…

                  That certainly appears to be as “my reading comprehension” has summarized.

                3. “My reading comprehension is just fine.”

                  Your posts demonstrate otherwise. The only point of your posts is to engage in personal attacks on others simply for the sake of disagreement. If anything, you’ve convinced me that you’re simply an alter ego for B or Night Writer or whatever other IDs you post under since the nature of your posts is that you jump in to give a show of support your alters. You’re not here for substantive discussion. You’re here to post under one alter and then post in as another alter to proclaim what a genius your first alter is.

                  Grow up.

                4. My posts simply do not say what you want them to say.

                  You state “Grow up,” as you are the one that plays the childish game of make-believe, with your most odd assertion that I am other people (with whom I have also disagreed with).

                  Face it ipguy, you decided to dive into what you thought was a wading pool, and it turned out to be an ocean, and you are in WAY over your head.

                  You seem intent on convincing yourself that you cannot possibly be on the losing end of these exchanges, and the plain fact of the matter is that you are.

                  I happen to enjoy seeing you try to deny that reality. Rather than learn from this, you descend to tinfoil hat land.

                  You mistake my ability to swim in the ocean of snark with NOT contributing to meaningful points of law and discussions thereof.

                  You could not be more wrong.

    3. 20.3

      >(1) functional claim language –> a family of solutions

      The chemical crew probably got the balance right with their genus/species claiming doctrines.

      The problem is not so much with functional language. It’s that one (often paper) embodiment is used to claim a vast number of alternate solutions.

      1. 20.3.1

        OC >>The problem is not so much with functional language. It’s that one (often paper) embodiment is used to claim a vast number of alternate solutions.

        And why is that a problem? That is how people in the EE/CS fields work. That is how we are trained to work and think. It is not a problem. It is how the art is advanced and how inventions are made.

        1. 20.3.1.1

          >That is how we are trained to work and think.

          I agree. I also agree with the practical need for functional language in this area of patent law given how flexible CS technology is.

          My issue is more the idea that people use one, half-baked reduction-to-practice to claim vast areas. Hence, we should steal the concept from the chemical arts idea where you need to enable a range of examples to claim a broad genus.

          1. 20.3.1.1.1

            “how flexible CS technology is”

            Be careful or you will give the game away … as has already happened before on this thread.

            Not that don’t approve of these kinds of admissions. Honesty is the best policy.

          2. 20.3.1.1.2

            “My issue is more the idea that people use one, half-baked reduction-to-practice to claim vast areas.”

            This is an extremely sensible position that optimizes profit for neither side. So it’ll never be adopted.

            1. 20.3.1.1.2.1

              It’s a value judgment, unconnected to the actual mode of innovation (perhaps the epitome of false equivalency).

              It should NOT be accepted.

          3. 20.3.1.1.3

            OC,

            Then you are wrong. The standard is based on the art and the people practicing the art.

            The chemical arts are different because they are less predictable. The EE/CS practitioners know the boundaries of the claims distinctly.

            Sheesh. The nonsense never ends. You have to judge things by the people that practice the art and the underlying art and not how you feel about things.

            1. 20.3.1.1.3.1

              Agree – my prior reply to OC never cleared the filters, but “wishing” based on subjective feelings that any other art should follow one specific art is the epitome of someone not understanding innovation itself.

              Call it “innovation envy.”

        2. 20.3.1.2

          Friendly reminder: tons of practitioners in “computer science” believe correctly that patenting software is a m o r o n i c idea.

          Curmudgeon made a good point. Requiring a working example (e.g., code that achieves a “species” of the stated genetic function, in a relevant OS) requirement before granting any patentee a patent would be a great start for redeeming the system. But oh no! A claim limited to that species would be “worthless” because ….

          1. 20.3.1.2.1

            We’ve been over this many times Malcolm.

            The shortcut version:
            math
            applied math
            MathS

          2. 20.3.1.2.2

            Friendly reminder: tons of lemmings, gorged on the koolaid of propaganda, have zero relevance to the legal protection of innovation.

          3. 20.3.1.2.3

            It delights me out of proportion to have this inimitable voice back. I thought they were dead or incapacitated- or even worse, just bored with beating on the hapless anon.

            Just the potential entertainment has me hoping for en banc then cert on this one…

            1. 20.3.1.2.3.1

              That you think thusly (from ‘enjoyment’ to the view that Malcolm ever had a superior position) tells more about you Marty than you realize.

              And it’s not good for you.

      2. 20.3.2

        The chemical crew probably got the balance right with their genus/species claiming doctrines.

        Utter nonsense.

        This is like trying to pretend that one’s eyeglasses are perfect for everyone else — and is a slap in the face of the actual advances in the Fifth Kondratiev wave.

  6. 19

    Sometimes, in threads such as this one, a comment arrives that is a real eye-opener for me (not a US patent attorney). And that’s what makes the threads, for me, worth trawling through.

    So it is here, with J. Doerre’s 12.2.1.

    I had not appreciated that WD is not available to raise in an IPR. No wonder then, as Doerre observes, that there’s a surfeit of 101 attacks and no wonder then, that there’s a high success rate with such pleadings.

    I suggested to Prophet, the contributor formerly known as MM, that the 101 tool was a short-circuit, to knock down bad claims without going through the hardships and absurd uncertainties of the 102, 103 mill. I hadn’t appreciated that the 101 tool is used, not because 112 is too unwieldy but because it is simply not available. Thank you, J. Doerre.

    1. 19.1

      I hadn’t appreciated that the 101 tool is used, not because 112 is too unwieldy but because it is simply not available.

      Neither §101 nor §112 are available in IPRs. The popularity of §101 has less to do with AIA trials and more to do with the willingness of judges to entertain §101 issues in “failure to state a claim” motions preliminary to litigation.

      1. 19.1.1

        Greg, 101 motions vis a vis IPRs is a timing issue as well as their very different scopes. The former could be filed almost as soon as the complaint is received. The latter takes time to determine which claims need to be addressed, a very thorough patent and publication prior art search [especially in view of the potential estoppel], expert selections and careful preparation of all declaration evidence, etc.. Both may be available, but a fast and favorable 101 decision may eliminate in advance the need for attempting to get an IPR granted.

        1. 19.1.1.1

          As one at home with imperious, EPO-style, civil law jurisdiction fact-finding procedure, it occurs to me that US-style fact-finding is a mixed blessing. It keeps witnesses of fact honest, and that’s good. But it renders the fact-finding process in disputed cases disproportionately slow, complex and expensive. And that’s bad because it forces courts and tribunals, under an over-riding imperative to dispose of cases justly, to reach for the eligibility tool in order to dispose swiftly of as large a proportion of undeserving cases as possible, regardless how apt the 101 tool is, to close out the case.

          1. 19.1.1.1.1

            Do you even realize that you inserted a value judgement (that is in direct conflict with our Sovereign’s [Proper*] legal choice of presence and degree of presumption of validity with your “undeserving” quip…?

            Do you even care that you did this?

        2. 19.1.1.2

          Good point. Thanks for clarifying that, Paul.

      2. 19.1.2

        Thanks.

      3. 19.1.3

        Here is a comment that you should read and then reread and then sleep. And then reread Max. And then tell all the little w a n k i e s to rethink the total nonsense they post on this blog.

        Look, 101 is so expansive to include all the inventions that are currently being invalidated under Alice. That is why there is Alice. It is equity. A judicial exception that is saying, yes it passes 101 but we have this special case, Alice, that we can use to remove it from 101.

        Sheesh. The ignorance is stunning.

        Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

        1. 19.1.3.1

          >A judicial exception that is saying, yes it passes 101 but we have this special case, Alice, that we can use to remove it from 101.

          A judicial exception not tied to any actual statutory or Constitutional language (championed by Thomas, ironically).

          1. 19.1.3.1.1

            OC: they do tie it to the Constitution in Alice. The Scotus ties it to the word “promote” and says that claims that fall under Alice do not or may not “promote”.

            1. 19.1.3.1.1.1

              As we have touched on previously, the manner of the Supreme Court use of “may” yields an improper future subjective conjectural ‘advisory opinion’ – a thin cloak on their legislating from the bench.

              Those who have sworn oaths to uphold the Constitution – and realize that no single branch (even the judicial branch) is above the Constitution, dictates that we have an ethical duty to speak out against such malfeasance.

        2. 19.1.3.2

          “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

          Superb verbiage Night! Now if we can just get Congress to add it to the patent statute . . . oh, wait — it’s already in there!

          Whew! That was close.

      4. 19.1.4

        The popularity of §101 has less to do with AIA trials and more to do with the willingness of judges to entertain §101 issues in “failure to state a claim” motions preliminary to litigation.
        Let’s be perfectly honest — the popularity of 101 is because of the Federal Circuit’s blessing of an approach that is inconsistent with the Supreme Court cases of Iqbal/Twombly, which laid down the standard for these kind of motions.

        In a motion to dismiss for failure to state a claim, the Court must take the alleged facts (in the complaint) as true. How many times have we seen the Federal Circuit disagree with patent holders about facts? ALL THE TIME.

        This is from the ABA and it is as good as any description of the standard:
        “a case can be dismissed, according to Federal Rule of Civil Procedure 12(b)(6), when a plaintiff fails to state a claim upon which relief may be granted. … If a complaint fails to allege sufficient facts to support a cognizable legal claim, i.e., a clearly identifiable claim, a court will likely grant a 12(b)(6) motion to dismiss. It is not required for a complaint to set out detailed facts upon which the plaintiff bases his or her claim. Nevertheless, a short and plain statement must give the defendant notice of the plaintiff’s claim and the grounds upon which it rests.

        If one wants to know how a REAL 12(b)(6) motion should be reviewed in the context of a patent case, then look at Disc Disease v. VGH Solutions 888 F.3d 1256 (Fed. Cir. 2018).

        The Federal Circuit in Apple v. Yu recognized that “[w]e review a district court’s grant of a Rule 12(b)(6) motion under the law of the regional circuit.” However, under 9th Circuit Law, “an affirmative defense [is one in] which a plaintiff need not negative in his complaint.” Nayab v. Capital One Bank (9th Ci. 2019) (BTW: I haven’t investigated them all, but every Circuit I’ve investigated has the same case law). In other words, there is no need for a plaintiff to foresee an affirmative defense and plead facts regarding that affirmative defense. The reason why? Because affirmative defenses aren’t supposed to be addressed in a 12b6 motion to dismiss. The question under 12b6 is whether a plausible claim was alleged. Along these lines, a typical response to a 12b6 motion to dismiss is for the judge to grant a motion for plaintiff to submit a new complaint.

        35 USC 101 has nothing to do with whether a plausible claim of patent infringement was alleged. It goes to patent invalidity, which is a defense. The Federal Circuit has been blatantly ignoring Supreme Court precedent all this time.

        1. 19.1.4.1

          Wandering, you know I predicted the Scotus would come up with a way to invalidate claims in 12(b)(6) motions. And they did.

          You aren’t really right on this point because one can assert that the right being asserted is invalid in a 12(b)(6) motion. Like I could say your suit against me for trespassing should be dismissed because you don’t own the property.

          But the reality is that an Alice inquiry is always or should always be fact based. But, —get—that the Scotus did this on purpose.

          1. 19.1.4.1.1

            Actually Night Writer, you should pause to consider what Wt is putting on the table — regardless of your jump to what the Supremes may have wanted to do (and not changing the veracity of that point).

            Your “You aren’t really right on this point because one can assert that the right being asserted is invalid in a 12(b)(6) motion.” only sets the stage for what a Movant may pursue — it does NOT change the pre-existing conditions that an existence AND level of presumption exists (as a matter of fact), nor does it change the controlling direction that all facts are read in favor of the non-movant.

            I chalk this general knee-jer k reaction up to the widespread propaganda and incessant drum beat that “enforcing one’s patent rights is the bad.”

          2. 19.1.4.1.2

            I predicted the Scotus would come up with a way to invalidate claims in 12(b)(6) motions. And they did.
            SCOTUS said NOTHING about 12(b)(6) motions when it comes to patent cases. The law of the regional circuit is applied to issues not unique to patent law. The law regarding a 12(b)(6) motion is not specialized patent law.

            You aren’t really right on this point because one can assert that the right being asserted is invalid in a 12(b)(6) motion. Like I could say your suit against me for trespassing should be dismissed because you don’t own the property.
            Affirmative defenses don’t get handled under 12(b)(6). Whether or not I own the property (by way of a hypothetical) is a question of fact. I alleged that I owned the property, which is a fact that the Court has to presume to be true. It has nothing to do with me pleading enough facts to state a plausible case of trespass.

            Why don’t you see 102 or 103 or 112 or inequitable conduct as part of a 12b6 defense? When you figure out the answer to that, you’ll figure out why 101 shouldn’t be part of a 12b6 motion to dismiss.

            1. 19.1.4.1.2.1

              Wandering–no.

              Anything can be part of a 12b6 motion (pretty much) as long as it doesn’t involve a disputed question of fact.

              The courts are playing the game that Alice is 100 percent a legal issue (or pretty much so.)

              1. 19.1.4.1.2.1.1

                Anything can be part of a 12b6 motion (pretty much) as long as it doesn’t involve a disputed question of fact.
                I see you haven’t researched the law. Why don’t you see 102/103/112 in 12b6 motions?

                The courts are playing the game that Alice is 100 percent a legal issue (or pretty much so.)
                No — see Berkheimer. Also, 103 is a question of law. Why isn’t that part of 12b6 motions.

                Don’t let your preconceived notions get prevent you from doing a modicum of legal research to understand what constitutes a 12b6 motion to dismiss. There are literally hundreds of resources on the internet you could consult.

                Let me repeat, in one wants to know how a REAL 12(b)(6) motion should be reviewed in the context of a patent case, then look at Disc Disease v. VGH Solutions 888 F.3d 1256 (Fed. Cir. 2018).

                1. >>Don’t let your preconceived notions get prevent you from doing a modicum of legal research to understand what constitutes a 12b6 motion to dismiss.

                  Wandering, don’t let your ideal of what should be taint your knowledge of what is and how it is practiced.

                  You can cite Berkheimer all you want but the CAFC doesn’t seem to care about Berkheimer and the CAFC seems fine with bringing all facts and law into an Alice motion. I get that there are underlying facts and that, in a just world, that practically no 12b6 motion based on Alice would succeed.

                  But just the cases from the CAFC. They constantly make things up and make their own private findings of fact.

                  The Scotus in Oil States made their own findings of fact about the privy court invalidating patents prior to the 1789 based on Lemley’s law journal article despite the dissent saying they disputed the fairy tale laid out in Lemley’s paper.

                2. Good points Night Writer – but this does NOT mean that we need be meek and merely accept what it clearly not correct.

                  Sure, ‘legal pragmatism’ is called for, but we should never go quietly into the good night.

            2. 19.1.4.1.2.2

              101 shouldn’t be part of a 12b6 motion to dismiss.

              “Shouldn’t be”? Sure, I can cheerfully agree that courts should not be any more willing to adjudicate §101 issues than §§ 102, 103, or 112 in a 12(b)(6) motion. However, there is a reason why Justice Breyer was so insistent that Mayo be decided on §101 grounds rather than on §102 grounds (as the Obama administration urged): because Breyer knew that district courts are more willing to tackle §101 at the 12(b)(6) stage than they are to tackle §§ 102/103/112.

              I feel almost embarrassed to postulate such a silly idea, but I think that the number “101” actually makes courts more comfortable adjudicating these issues at the pre-trial stage. It sounds like something that you can dispose of early (all the case law describing subject matter eligibility as a “threshold” issue makes judges feel more comfortable with this line of thinking). This is nonsense, of course, but I really think that many (English major, no patent experience) district judges see §101 this way.

      5. 19.1.5

        Yep, and the ‘abstract idea’ test might be even worse that the ‘gist’ of ‘heart’ test, which if memory serves was on motion for summary judgment and NOT just the pleadings. But in either test, of course, to invoke the test is to dissolve the patent.

    2. 19.2

      Everyone that knows anything about patents knows the limits of IPRs.

  7. 18

    This really shouldn’t be this hard!

    Q: Is the claim directed to an abstract idea?

    A: the claim is directed to a camera, so no.

    That should be the end of it but nope. It is a joke.

  8. 17

    This is endless with people talking about information processing as being “abstract.” Information processing is no more abstract than any other area of where patents are granted.

    Functional language is used to capture the solutions because in information processing as well as many other areas (including bio where functional language is used to capture parts of molecules) there are too many solutions to enumerate them.

    The ladder of abstraction brings us to a single solution that is implemented that is a physical process that takes time, space, and energy.

    1. 17.1

      Functional language is used… in… bio… to capture parts of molecules…

      Well, yes, some do still try to write claims with recitations like “a clathrin-binding domain.” Ever since Amgen v. Sanofi, there are only two ways it can end for a claim with a limitation like this.

      1) If the patentee has disclosed a particular structure in the application text that binds clathrin (and is disclosed to bind clathrin), then the patentee can argue under Williamson v. Citrix that this limitation should be given a §112(f) construction. At that point, the limitation will cover the disclosed embodiments, plus “equivalents” (what qualifies as an “equivalent” is a point to argue).

      2) If no specific structures are disclosed, then claim simply fails on §112(a) grounds.

      This is as it should be (notwithstanding how reluctant some patent attorneys are to acknowledge as much). Judge Rich—who drafted the patent statutes, so he should know—explained that “‘[f]unctional’ language in the claims is not expressly condemned by the patent statutes. On the contrary, the only portion… which… specifically authorizes such use… is… the third paragraph of 35 U.S.C. §112… .” In re Fuetterer, 319 F.2d 259, 262 (C.C.P.A. 1963). Therefore, it is only fitting that if one chooses to draft one’s claims in functional rather than structural terms, one should know that one is availing oneself of §112(f), and should be prepared to have the claims construed accordingly.

      1. 17.1.1

        This is as it should be (notwithstanding how reluctant some patent attorneys are to acknowledge as much). Judge Rich—who drafted the patent statutes, so he should know—explained that “‘[f]unctional’ language in the claims is not expressly condemned by the patent statutes. On the contrary, the only portion… which… specifically authorizes such use… is… the third paragraph of 35 U.S.C. §112… .” In re Fuetterer, 319 F.2d 259, 262 (C.C.P.A. 1963)

        If this were a court, our pal that ‘uses his real name’ would be sanctioned for this false proposition.

        112(f) is NOT ‘the only place’ for terms sounding in function – as even Prof. Crouch coined the term: Vast Middle Ground.

      2. 17.1.2

        I wonder how many opinions the false God of patent law signed onto that held that a claim lacking “means for” falls outside of 112 3rd/6th/f, AFTER he used 112 3rd to bless functional limitations for a claim that didn’t include “means for”.

        I guess it’s just another example of Rich getting “wiser” in a way that benefits patent attorneys.

        1. 17.1.2.1

          lol – “false God”…

          Take your Golden Calf and be gone.

  9. 16

    I never really get excited about cases like these because it makes no difference as to how Examiners will abuse 101 rejections at the USPTO. They will just a abuse regardless of what the Federal Circuit or SCOTUS says.

    1. 16.1

      If an examiner at the PTO wrote a 101 rejection on that claim today it would be an improper rejection given current PTO policy and procedure.

      1. 16.1.1

        Agreed. This is not in line with the 2019 PEG

        1. 16.1.1.1

          In all fairness, the 2019 PEG is not in line* with case law.

          * in all super fairness, nothing could be in line with case law because the Supremes F’ed things up and then the lower courts just kept adding rope to the Gordian Knot.

  10. 15

    With American Axle in mind, maybe some back-robed person at the Supreme Court will actually read Judge Newman’s dissent? In other words, was Judge Newman writing for another audience?

    1. 15.1

      “as Judge Newman writing for another audience?”

      I believe so. I hope so.

      With more Judge Newmans on the bench, we wouldn’t be in near the mess we find ourselves in today. She’s done a materially-better job of correctly cabining as SCOTUS had intended with their (unconstitutional) Mayo and Alice decisions.

  11. 14

    NB: Wall Street Journal article headline today:
    “Germany Shuts Door on Patent Trolls
    New legislation aims to end the country’s status as a haven for patent litigators who have targeted tech companies”

  12. 13

    And I thought things could not possibly get worse. It’s a camera.

    1. 13.1

      The problem is that anything performed at all on a computer is abstract. It has to be abstract in order to have it performed on a computer.

      And “computers” are everywhere, in any device that has electronics: garage door openers; systems to transcode video; automobiles; cellphones; you name it.

      In this case, for instance, the processing is performed by a computer. What it does is therefore — by definition — abstract (has to be, in order to be implemented).

      One can ALWAYS say the concept being implemented on a computer is abstract.

      But the “magic” that comes in to save some patents under Alice but not others is unquantifiable. It doesn’t make sense.

      If I want to counsel clients, say who are overseas, about what they can do to ensure their patents in the US pass muster under Alice, what can I counsel them? I have no idea.

      For any device using a computer, all the court has to say is your idea is “abstract”, and your patent is invalid.

      At one time, there was lip service to providing a technical solution to a technical problem, but that seems to have disappeared.

      1. 13.1.1

        Bob, I’m interested in your assessment that a “technical solution to technical problem” eligibility test has been tried but now abandoned. Just to get this clear: you are, I take it, referring to what is to be found within the claim. I presume we are agreed that mere mention in the specification of a technical solution to a technical problem is not enough to save a claim to abstract subject matter.

        We all know the human tendency, when offered the little finger, to bite off the whole arm, especially amongst zealous lawyers. If your client invents a little finger improvement but you claim on their behalf an entire arm, don’t be surprised if the claim fails, regardless of the quality of the improvement of the performance of that little finger.

      2. 13.1.2

        “ The problem is that anything performed at all on a computer is abstract.”

        Ding ding ding!

        The third rail has been touched yet again.

        1. 13.1.2.1

          “The Prophet” ? What, are you Tecumseh’s brother back from the dead, Malcom?

          1. 13.1.2.1.1

            Maybe he cashed out his stock options that he made through his lobbying efforts, and it’s just auto-correct changing “the Profit”?

            1. 13.1.2.1.1.1

              That would require (heaven forbid) a mercantile mindset.

      3. 13.1.3

        It has to be abstract in order to have it performed on a computer.

        I do not think that you are using the legal term of “abstract” correctly.

      4. 13.1.4

        Bob M, I don’t believe a computer can host an abstraction.

        No human mind= no abstraction. If the utility is consumed by the computer to improve or effect a computer purpose, that information is not abstract- its a tangible system component.

        1. 13.1.4.1

          “Bob M, I don’t believe a computer can host an abstraction”

          Electrons: AM I A JOKE TO YOU?

          1. 13.1.4.1.1

            C’mon Man, electrons…?

            Don’t be so negative.

            1. 13.1.4.1.1.1

              What? Joe Biden “C’mon Man” is on this web site now? Dang!

              1. 13.1.4.1.1.1.1

                Lol – it was a layered comment for my pal 6 – nice to see you picked up on that.

  13. 12

    Can I ask the practicioners why, if 101 is so evil and the claims are so easily defeated under 112a or 112b, this defendant chose to proceed under 101?

    In other words, if it had been you, would you have counseled your client to proceed only under 112?

    1. 12.1

      Your question is confused — infringers and those who obtain protection for innovators are not likely to agree on the type of counsel your question asks.

      1. 12.1.1

        Your question is confused — infringers and those who obtain protection for innovators are not likely to agree on the type of counsel your question asks.

        Are not a significant portion of entities accused of infringement also patent holders themselves? The defendant in this case was Apple. Is Apple not also a patent holder? Why does Apple proceed on 101 grounds if its just creating bad law for future Apple infringement actions?

        This is a legitimate question. I think a lot of people here agree that this could have been tossed on any of 102/103/112a/112b. I understand why 102/103 are so fact intensive there’s monetary issues in going to trial, but why opt for 101 rather than a 112a or 112b attack?

        1. 12.1.1.1

          This is NOT a legitimate question – for the reasons already provided.

          Further, you have not been paying attention to the explications of Efficient Infringers that are coupled with making the entire patent process a Sport of Kings.

          The aim is to hamstring NEW innovators. So while those that are established will also play the patent game (ever seeking to make it more expensive), the real aim is to simply NOT compete on innovation factors, but on those factors that the established enjoy.

          There is a reason why IBM aims for “top filer” but to get there, processes a tremendous amount of worthless applications and bloated claims. They are not doing so to BE innovative. They are doing so just to fill a war chest and for marketing purposes.

          Such Big Corps are only too happy to help create the impression that granted patents are C R P, and eagerly seek to install “horse is out of the barn, with no feedback to the examination process” post grant review mechanisms because these become a volume money game — and not an innovation game.

          Your problem Random is that you are so busy and so intent on feeding your confirmation biases, that you just cannot see the bigger picture.

          You have no clue as to what innovation is about.

        2. 12.1.1.2

          Please pardon potential repeat…

          This is NOT a legitimate question – for the reasons already provided.

          Further, you have not been paying attention to the explications of Efficient Infringers that are coupled with making the entire patent process a Sport of Kings.

          The aim is to hamstring NEW innovators. So while those that are established will also play the patent game (ever seeking to make it more expensive), the real aim is to simply NOT compete on innovation factors, but on those factors that the established enjoy.

          There is a reason why IBM aims for “top filer” but to get there, processes a tremendous amount of worthless applications and bloated claims. They are not doing so to BE innovative. They are doing so just to fill a war chest and for marketing purposes.

          Such Big Corps are only too happy to help create the impression that granted patents are C R P, and eagerly seek to install “horse is out of the barn, with no feedback to the examination process” post grant review mechanisms because these become a volume money game — and not an innovation game.

          Your problem Random is that you are so busy and so intent on feeding your confirmation biases, that you just cannot see the bigger picture.

          You have no clue as to what innovation is about.

        3. 12.1.1.3

          Why does Apple proceed on 101 grounds if its just creating bad law for future Apple infringement actions?
          This is a legitimate question. And Apple is taking positions during litigation that I can all but guarantee are 180 degrees from the positions taken by their patent prosecution attorneys.

          The reason why Apple can get away with this is because the small companies who are suing Apple maybe have one or two or a small handful of patents that they are asserting. Invalidating a handful of patents is not that expensive.

          Apple, on the other hand, has tens of thousands of patents. If Apple wants to come down hard on somebody, they don’t send a demand letter listing a handful of patents, they can list 20 or 50 or 100 (or even much more). Too many patents that only the largest of companies could afford to even attempt to invalidate that many. However, the largest companies rarely litigate against one another. Rather, they do cross-licensing deals. They compare the respective sizes of each other’s portfolios in the relevant technologies and come up with a number. If the number is fairly comparable, no money might not even be exchanged between the two.

          This is the way of modern patent law jurisprudence in the US:

          Big sues Big; result = cross-license
          Big sues small; result = small gets ruined because they cannot afford to fight
          Small sues small; this is the poster child for the anti-patent crowd out there, the result is likely a small settlement
          Small sues Big: result = big grinds small into the ground with IPRs/12b6 motions/101/etc.

          The simple fact is that Big rarely loses and Small rarely wins, and if they do win, it is a small amount. Small only sues Small because they know they cannot win against Big. It takes the same amount of effort to sue Small as it does Big. One would think that it makes more sense to spend that effort against Big because of the likelihood of a bigger settlement. However, Small has little chance against Big so the strategy has shifted and they have gone after Small.

          This leads to the funniest (perhaps saddest) result of the whole anti-patent campaign (supposedly grassroot but funded by Big) that ostensibly is in support of protecting Small. This result is that as patents become harder and harder to assert, Big gets sued less and Small gets sued more.

          but why opt for 101 rather than a 112a or 112b attack?
          Because the Federal Circuit has carved out an exception to the law governing 12b6 motions to dismiss (contrary to both Circuit Court law and Supreme Court law) that allows 101 to be raised prior to discovery. If the 12b6 motion is dismissed, they’ll proceed to attack with 112, 102/103, inequitable conduct, fraud on the patent office, whatever. They start with 101 because they can.

          1. 12.1.1.3.1

            More pearls before swine…

    2. 12.2

      I generally side with you on these subjects, but this doesn’t seem like a fair question to me. It seems like it’d be reckless to advise a defendant to set aside any plausible ground of defense.

      Though I rather suspect that if we could look into the alternate universe where this got past the motion to dimiss, Apple would not even raise the 112(a) issue despite the gaping hole in the specification. To me that doesn’t suggest that 101 is good, but rather that 112 is broken.

      1. 12.2.1

        The Fed. Cir. has held that the written description requirement is a question of fact. Hence, you have a much lower chance of getting claims invalidated based on a written description deficiency without going through a jury trial, as compared to issues of law (such as eligibility).

        If 112 issues could be raised in an IPR, then the written description requirement might be relied on more often and jurisprudence around it might be developed enough to begin to step back a bit from using 101 as a stand-in.

        That being said, I strongly suspect that many of those troubled by the rampant use of 101 would also opposed be opposed to allowing 112 to be raised in IPRs.

        1. 12.2.1.1

          I strongly suspect that many of those troubled by the rampant use of 101 would also opposed be opposed to allowing 112 to be raised in IPRs.

          Agreed. If one can imagine a Venn diagram with two circles—one for folk who disagree with the post-Bilski trend of §101 jurisprudence and the other for people who dislike the post-grant challenge system created by the AIA—almost all the dots fall in the overlap space. There are a very few dots in the non-overlap space for “dislike 101” (I am one). I have never met anyone who falls in the non-overlap space for the other circle.

          1. 12.2.1.1.1

            I have never met anyone who falls in the non-overlap space for the other circle.

            Goodness, how embarrassing. Ned Heller used to occupy the non-overlap portion of that circle. My apologies, Ned, for forgetting you so easily.

          2. 12.2.1.1.2

            There are good reasons not to be able to raise 112 or 101 issues in IPRs, irrespective of the Sup. Ct. refusal to define “abstract” in its list of judicial 101 exceptions. [But note that for new, substituted, claims in IPRs that 112 support can be questioned.] An IPR was supposed to be a much simpler, faster, and cheaper proceeding, normally a simple additional examination comparison of the patent claims to the contents of newly-cited patent and publication only prior art under 102 or the controlling [KSR] 103 test. Not complicated by other issues such as 112 or 101.

            1. 12.2.1.1.2.1

              +

            2. 12.2.1.1.2.2

              101 and 112 are issues that should be properly raised by the USPTO at the time the patent issues. There is nothing a Petitioner (for an IPR) should be able to add that the USPTO shouldn’t have already addressed. The law is what it is, and the USPTO should be lacking nothing at the time of the original examination.

              However, in 102/103 issues, the USPTO may not have been aware of particular prior art. The citation of new prior art is where the Petitioner is actually adding something.

              Consequently, whereas it might be appropriate to give the USPTO another bite at the apple regarding 102/103, there is less justification for them doing so under 101/112.

              1. 12.2.1.1.2.2.1

                +1

              2. 12.2.1.1.2.2.2

                Re: “101 and 112 are issues that should be properly raised by the USPTO at the time the patent issues.” There is a huge difference between “should be”, “properly,” and actual reality in the PTO on those issues. Nor consideration of the appropriateness of non-attorney-examiner legal analysis of confusing case law.
                I have listed at 12.2.1.1.2 above other practical reasons not to add to IPRs any issues other than 102 and 103 that were decided when the AIA was being drafted.

    3. 12.3

      RG, of course if 101, 1o2, 103, and 112 defenses are available they can all be raised. But as various prior blog comments have noted, only 101 can be both raised and decided preliminarily and at low cost with a 12(b)(6) motion in response to the complaint, before the parties have run up large discovery, trial and other large costs needed for those and all other suit issues.
      Another point being missed here is that many patents, apparently including this one, do have many claims that would not likely lose on Alice-101 OR 112 grounds. But those claims are not in suit here, presumably because they are not infringed because the accused product is not using those claimed features.

      1. 12.3.1

        Because Apple cannot afford a trial with evidence and stuff.

    4. 12.4

      The short answer is the defendant doesn’t have to “choose.” They can separately argue invalidity based on 101, 112, 102, and 103. They can also separately argue unenforceability based on inequitable conduct and antitrust grounds. Then, even if they loose, they can argue an injunction shouldn’t be issued. A rich defendant has many bites at the apple.

      So why 101 first? 101 can often be decided on the pleadings i.e., before the expense of discovery.

      1. 12.4.1

        Also, any “findings of facts” or such that must be read in favor of the non-movant can be “oops” ignored.

        So easy to “know it when you see it” without such pesky things.

      2. 12.4.2

        This is the same basic current legal reality [like it or not] answer as 12.3 above, with one exception. It is not just the discovery costs. Almost all those listed and other patent suit issues OTHER than 101 and non-infringement rarely get summary judgements, and thus require a full trial and appeal to get any actual decision on those issues. That typically adds 1-3 million dollars in defense costs and a great deal more work for the judge [unless the claims in suit are removed in an IPR*]. That in turn causes the vast majority of patent suits to settle before trial, often with the urging of the judge, with no validity test but with a cash settlement payment to the patent owner in most cases. The PAE business model depends on that.
        *[The effective prevention of IPRs by the Waco EDTX judge is what defendants are really the most upset about.]

        1. 12.4.2.1

          The IPR cheerleader is busy at work here…

          You are off on what people are upset about.

          Maybe you have been out of the game of actually obtaining protection for innovators far too long there Paul.

  14. 11

    Judge Newman is absolutely correct. 101 is a mess, and this is clearly a mechanical invention.

    I’m not PHOSITA in camera making, but it seems obvious to post-process multiple camera outputs into one image. If putting all the cameras on one chassis is obvious or not is a question of fact.

    This invention under my test: is it a Method? No, its a Machine. Eligible.

    The problem 101 jurisprudence has been grappling with is a problem of information. Information in inventions, and information conveyed by claims. 101 should restrict itself to the nature of the invention. 102/103 and 112 are about the nature of the claims.

    Information in inventions can be abstract or not. Its abstract when people use it. Its not abstract when non human actors use it, because only humans can host abstractions.

    Claims can be too abstract- because they are some combination of not new/obvious or insufficient to describe an invention.

    1. 11.1

      it seems obvious to post-process multiple camera outputs into one image.

      Given that the claim only claims the function of “enhancing” rather than any particular “post processing” steps, why is this distinguishable from thinking? Simply because it’s computer code?

      101 should restrict itself to the nature of the invention.

      Isn’t the nature of the invention simply synthesizing or cross-analyzing information, where that information happens to be information that describes a picture? In other words, aren’t you allowing the applicant to twist eligibility like a nose of wax by taking the only allegedly eligible act (the post-processing analysis) and hide it amongst conventional software.

      Its abstract when people use it. Its not abstract when non human actors use it, because only humans can host abstractions.

      If there is no enablement problem between the two, aren’t they essentially the same thing? If I have a thought in my head it’s not protectable. Should it become protectable if I write it down in a book? Should it become protectable if I write in a language that computers understand when there’s no problem in the art in performing that translation?

      So when a child reaches for an orange crayon to complete a color-by-numbers book, it’s abstract, but when the computer substitutes a identifier for “white” with an identifier for “orange”, it’s not? What if you add the limitation of displaying the resultant image so a human could see it – now the more limited claim is abstract because the human is using the information?

      1. 11.1.1

        Your question here is also confused.

        why is this distinguishable from thinking?

        Did you mean to forget that you have to take the claim as a whole?

        1. 11.1.1.1

          Anon–

          Where does 101 say anything at all about the claims?
          You won’t find the word “claim” in 101. Maybe you are thinking of 103. But not 101.

          101 concerns the invention. Not the claims, nor the claimed invention.

          1. 11.1.1.1.1

            101 concerns the invention. Not the claims, nor the claimed invention.

            YES!!!!!!!

          2. 11.1.1.1.2

            What does 35 USC 100 have to say about those terms?

            Also, the idea of claim as a whole is NOT something I came up with, so if your argument is on that point you are arguing again any someone else.

          3. 11.1.1.1.3

            It is more nuanced than that.

            May I suggest the Cornell website?

            It provides both law and notes.

            35 USC 100 does provide both “invention” (a) and “claimed invention” (j).

            See:

            link to law.cornell.edu

            Note: “subject matter”

            Contrast with the notes on 101 (note “subject matter”):

            link to law.cornell.edu

          4. 11.1.1.1.4

            Just so that I understand, do you mean to say that we do not need to look at the claims when deciding whether a patent complies with §101?

          5. 11.1.1.1.5

            Look, 101 is so expansive to include all the inventions that are currently being invalidated under Alice. That is why there is Alice. It is equity. A judicial exception that is saying, yes it passes 101 but we have this special case, Alice, that we can use to remove it from 101.

            Sheesh. The ignorance is stunning.

            Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

          6. 11.1.1.1.6

            Well DjkDjkDJkDjk,

            Have you picked up the nuance on subject matter?

      2. 11.1.2

        If I have a thought in my head it’s not protectable. Should it become protectable if I write it down in a book?

        Yes, it’s called copyright.

        If your thought is of a better camera, and you then fabricate a better camera, the act and economic value of fabricating the better camera can be protected, with a patent.

        When a computer gains utility by substitution of what we perceive as a color, that utility cannot be abstract. For the computer’s purposes, the utility and “orange” have no relationship.

        If there is no enablement problem between the two, aren’t they essentially the same thing

        Yes, except in one instance infringement and damages may happen, and in the other, they may not. It’s all the difference in the world.

        1. 11.1.2.1

          You confuse a “positive action” NOT a part of what a patent right actually is with your assertion of, “the act and economic value of fabricating the better camera can be protected, with a patent.

          Patents are negative right items.

          Any actual manufacture (or fabricating) is outside of the patent itself.

          Easy example: an improvement patent on an item still under patent protection to someone else.

          You only have a negative right to that (improvement) patent. You have NO actual right to manufacture or fabricate because the underlying item is protected.

        2. 11.1.2.2

          Vis a vis your offered distinction on copyright, did you catch how Judge Newman expressed the purpose and distinction of section 101 of the patent act?

          It paraphrases my own longstanding comment:

          Copyright protects expression.
          Patent protects utility.

          Further remember that all patent utility (as that legal term is understood) is necessarily utility as adjudged (and appreciated) at the end of the day IN the human mind.

          1. 11.1.2.2.1

            yes, tell me again how a sharper knife achieves its utility in a human mind, rather than a cleaner cut.

            1. 11.1.2.2.1.1

              Asked and answered – “knife” has implications associated within the human mind.

              Merely a “sharper edge” is not enough, as some edges that are sharper are a detriment.

              Pay attention son.

        3. 11.1.2.3

          Martin, under your test, would this claim be eligible:
          1. A non-abstract camera, comprising:
          a camera having improved functionality relative to a camera lacking such functionality.

          1. 11.1.2.3.1

            iDan I think we need a legal doctrine akin to claim construction whereby the invention is construed as a matter of law. That construction would include identifying -for a putative PHOSITA- a new, useful machine, process, composition or manufacture.

            Your example may be eligible if something inventive is identified.

            Because nothing appears to be new or useful in the example, there is no subject matter to evaluate for eligibility.

            But a structurally new camera would be eligible, and information results used by the camera in its operation would not be abstract.

            1. 11.1.2.3.1.1

              My claim absolutely includes new and useful subject matter – “improved functionality”. Prior art systems had x functionality, this has at least x+1.
              And it’s a structurally new camera, since the claim is directed to structure – it’s just a structure that enables that improved functionality, claimed functionally. As I understand your test, this should be eligible.
              … but I think we both agree that it should not be eligible.

              Personally, I look at it as directed to a result rather than an implementation. There are no implementation details whatsoever in my claim, though it does claim a new and useful result. As a result, it could be claimed that way without needing to invent anything:
              “Gosh, wouldn’t it be great if cameras were better? I know, I’ll patent ‘a better camera’ and then claim ownership when someone finally gets around to making one.”

              As for a claim construction doctrine, I wouldn’t mind if 112 was revisited with the full scope of the claim being looked at… While enablement may still be a question of fact for the jury, maybe whether the full scope of the claim is enabled can be determined as a matter of law – i.e. is the claim sufficiently closed and definite, or can it be interpreted to apply to any manner of achieving a desired result, regardless of the implementation? If the latter, it’s invalid.

              1. 11.1.2.3.1.1.1

                I think we both agree that it should not be eligible.

                Martin can, of course, speak for himself, but I think that your hypo claim should be eligible. It should probably fail under §112(a) for enablement and certainly under §112(b) for definiteness. I really do not, however, see a subject matter eligibility problem with the claim as you have phrased it.

                I am still intrigued by Djk’s (and Martin’s?) suggestion that we do not even need to consult the claims when assessing subject matter eligibility, because §101 is concerned with the “invention” rather than the “claimed invention.” I would welcome either of them to unpack that idea further and explain how it would work in practice.

                1. Greg it’s not quite that the claims can be ignored to do a 101 analysis correctly- it’s that 101 is not concerned (or should not be) with the externalities of PHOSITA or the state of the art. I interpret “new” in 101 to be an invention new to the mind (s) of the inventor, because sections 102/103 are about the invention being new to the world.

                  Whatever gives an invention the attributes of newness and utility and fit to one of the four categories should intrinsic to the invention- something about the invention itself.

                2. Marty,

                  to your “should intrinsic to the invention- something about the invention itself” – see the text and notes at the Cornell Law website that I provided links to earlier.

    2. 11.2

      I’m not PHOSITA in camera making, but it seems obvious to post-process multiple camera outputs into one image. If putting all the cameras on one chassis is obvious or not is a question of fact.
      I just wrote about this earlier below. Having multiple image sensors (later used to create a resultant image — i.e., an enhanced image) was known in the art. What appears to be novel/non-obvious is that in the past, those multiple image sensors were each directed to different specific range of the visible light spectrum (e.g., the primary colors of blue, red, green). However, in this instance, the claims recite “said second image sensor sensitive to a full region of visible color spectrum.” Again, to repeat what I wrote earlier, from my review of the specification (and not being a camera guy) it appears that having this type of sensor (as part of multiple sensors) allows for improved dynamic range of the resultant image. Actually, as I’m just re-reading the specification, this is reflected in dependent claim 5 (i.e., “wherein said digital image processor increases the dynamic range of said first digital image by incorporating a portion of said second digital image into said first digital image.”)

      Thus, in the past, multiple sensors were used but they were used for individual spectrums of light. This invention uses a second sensor, which because it is sensitive to the full spectrum of light captures a better dynamic range, to improve the dynamic range of the image from the first sensor.

      I just found the District Court order. Here is what they wrote about “dynamic range”:
      Yu suggests that the ’289 patent describes a non-abstract improvement to camera technology and hardware, but the plain text of the patent shows otherwise. The sections Yu points to simply describe the principle that combining images with different dynamic ranges creates an image with a higher dynamic range. Dkt. No. 1-1 at 9:28-40; id. at 9:46-52; see also Dkt. No. 45 at 15. It does not describe a specific asserted improvement in digital photo capabilities.
      This is what happens when a non-technical judge writes something about technology for which they know little about. The invention improved the dynamic range of a digital camera. This is an improvement to technology — plain and simple.

    3. 11.3

      >Claims can be too abstract- because they are some combination of not new/obvious or insufficient to describe an invention.

      The doctrinal problem is that those questions are already covered by other patent sections (102/103 and 112, respectively)

  15. 10

    The district court held that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.”
    How is this in any way, shape, or form an abstract idea? Is taking a picture an abstract idea? How does one take a picture without hardware? Has does one enhance a picture without hardware?

    Chief Judge Moore needs to take up this case en banc and reverse the continued inanity inflicted upon us by Prost et al. While we are at it, let’s see where soon-to-be Judge Cunningham stands — who should be confirmed by that time. American Axle was split 6-6 with Wallach on the wrong side (i.e., the side that chose not to take up American Axle en banc). Since Cunningham is replacing Wallach, she has a chance to flip this the right way.

    To be clear, the inanity being inflicted upon us is the following steps taken by patent minimalists on the Federal Circuit:
    1) conjure up, out of thin air, some ‘abstract idea’ to which the invention is directed
    2) declare the remaining limitations “conventional … components”
    3) declare that the claimed advance is directed to the abstract idea
    4) conclude that the claim “is recited at a high level of generality and merely invokes well-understood, routine, conventional components to apply the abstract idea” and thus patent ineligible.

    I thought American Axle was the epitome of bad jurisprudence at the Federal Circuit, but this decision has clearly jumped to the top. Seriously, I could apply this 4-step process to any mechanical device. Every mechanical device relies upon some physical phenomena that I could use as a basis for conjuring up the abstract idea. After that, everything else is well-understood, routine, conventional components used to apply the abstract idea.

    As an aside, this case came out of the Northern District of California, which is patent infringers preferred venue. There is a reason for that preference as the underlying findings made by the District Court aptly shows.

    One last point, this was on a 12b6 motion to dismiss, and Yu argued that the District Court did not construe the facts in the light most favorable to Yu. The Federal Circuit dismissed this in a couple of paragraphs. In case anybody is wondering, the Berkheimer/Aatrix line of cases are effectively dead at the Federal Circuit — and have been for about 2 years, which means that these cases were ‘good law’ for about 12 months. One could also argue that the Supreme Court’s decisions of Twombly/Iqbal are also dead at the Federal Circuit.

    1. 10.1

      Sir Thomas More called to agree with you.

    2. 10.2

      This one has a better cert chance than most, because its clearly across some kind of boundary in re: what the guts of a machine invention really mean, even more than the axle case, because this one actually teaches how to make the camera but the axle invention said just go tune it, which may not have been enough.

      1. 10.2.1

        “This one has a better cert chance than most”

        Had the same thought Martin. Hope they have the funds and willingness to continue their just and honorable fight.

      2. 10.2.2

        American Axle had some holes — that being said, it was still a great case and terrible jurisprudence by Dyk. However, these facts are better. My understanding is that Prost had no desire to reconcile all the diverse 101 cases (which is why we have seen very, very few en banc decisions during her reign of terror).

        American Axle got really, really close — 6 votes. Just one more is needed.

        “Paging Judge Cunningham, Paging Judge Cunningham … you are wanted at 717 Madison Place for an important decision.”

  16. 9

    When you’ve got a pile of 101 c.r.a.p. at the ready, why bother with 112, 102, or 103?

    So now cameras . . . join garage door openers . . . and car axles in the ineligibility junk yard . . .

    Mark these words . . . unless Congress or SCOTUS immediately steps up to restore full eligibility to all areas of innovation, the junkyard will continue to expand.

    And with the PTO seemingly returning to its use of this same 101 c.r.a.p. to trash innovations . . .

    Dark days just ahead folks.

    Dark days indeed.

  17. 8

    It’s a @#$% camera, like Judge Newman says.

    CAFC needs to make a rule: follow Judge Newman. Always. Especially when it’s Taranto and Prost as the rest of the panel.

  18. 7

    Claim 1 is pretty indefensible, dontcha think?

    The alleged invention here is software which pulls information from one picture to enhance another picture. Its the common prosecution act of adding a bunch of conventional context limitations and then being entirely functional at the point of novelty. That has violated indefiniteness before there was even a 112b. It’s a tarted up single means claim that has violated 112a since Hyatt.

    You don’t need this patent or even the context of pictures to understand that having more information may enhance your ability to analyze first information. (One wonders how his attorneys got through law school.) The only thing that could conceivably been a properly-scoped invention would be further defining what “enhancement” was achieved by performing particular operations on particular data.

    You can sit here with the benefit of hindsight (not that you need hindsight as simple logic would have done) and know 20 years later that we still can’t use one picture to perform any possible enhancement on a second picture just because they were taken from similar positions at the same time. So at a minimum this claim fails because “enhanced with” is incredibly overbroad and indefinite, which might suggest to one that its covering abstract subject matter.

    Sometimes people have a point about the difficulty in drawing a line between the concepts of concrete versus abstract. This is not one of those cases. You can’t dump some Legos on the ground and say you claim every resulting configuration of the Legos someone else might come up with because you posit that Legos can interact with each other.

    Could you imagine standing up as a Respondent and arguing to appellate judges that using second information to enhance the analysis of first information IN SOME NONLIMITED MANNER is eligible subject matter so long as it is claimed in a particular context? The very existence of the tribunal negates the argument. Talk about putting your own foot in your mouth.

    The above being said, I suspect that the outcome would have been better received (and just as capable of being solved without factfinding) under indefiniteness. Whenever you see the hamburger helper of “I’m not saying there’s not something patentable in here, it just wasn’t claimed” its really a statement that the claim is abstract because it fails to reasonably point out and particularly claim the invention that may have been disclosed in the specification. You could just as easily declare it indefinite and the peanut gallery would be placated in a manner where the judicial exception holding would rile them up.

    1. 7.1

      Claim 1 is pretty indefensible, dontcha think?

      Agreed. Ironically, §101 may well be the only statutory section that Claim 1 ought not to fail.

      1. 7.1.1

        Here’s a first vertical image I took with my b/w low-res digital camera of a sun setting over a lake:

        (white pixel)
        (black pixel)

        Here’s a second vertical image I took with my color low-res digital camera of that same sun setting over that same lake:

        (orange pixel)
        (dark blue pixel)

        Okay, I’ve just met all of the limitations of claim 1 except for the last one. Nobody would possibly construe this as being anything other than conventional even in 1999.

        So lets turn to the last limitation and see if we can figure out some manner of “enhancing” the b/w image with the color one. Here’s some ubiquitous conventional prior art performed on paper decades before the instant invention:

        link to crayola.com

        I welcome all comers to explain why this is a protectable improved technological solution to a technological problem rather than a fundamental information associative act understood and solved by kindergartners that just happens to be claimed in a particular technological field of use. It sure seems like a pretty fundamental act that is claimed at a high, abstract level of functionality to me. The minute you replace the color id for “white” with the color id for “orange” you’ve “enhanced” the first image with the second to generate a resultant image. There’s not even a standard or requirement for error correction (unless you can show me a non-subjective definition of “enhanced” that includes it) so even if the resultant image is less “accurate” it would still be infringing.

        Why don’t you just say “I claim the transitive property of mathematics with respect to digital photography” and be done with it.

        1. 7.1.1.1

          Random, I see that your question is about a: “…. technological solution to a technological problem….” and I am wondering how relevant that is, given anon’s incessant chiding of me that there is no technology test in the law of eligibility/patentability in the USA. Why do you persist with such a test then?

          1. 7.1.1.1.1

            Random persists in MANY things that are wrong, MaxDrei.

            Why in the world would you be surprised by this?

      2. 7.1.3

        Greg, uptick from me for your snap expression of irony, that 101 is the only patentability provision that ought not to prejudice the claim. It raised a laugh, from me at least.

  19. 6

    You have to really wonder about sanity of these judges that they think they can insert themselves into a technical problem and decide that something is very easy based on their hindsight reasoning.

    These judges on the CAFC are just the worst of the worst in every sense. Poor character. Poor critical thinking ability. Just no sense of fairness or decency.

    Just reading the words of Prost make me want a shower.

    1. 6.1

      And again and again claiming a result is how ALL technical people think and work to discuss the set of solutions in view of the specification.

      I’ve quote engineering books from MIT numerous times that state exactly this.

      1. 6.1.1

        Pieces of filth at the CAFC cannot change reality. The filth can continue to tell us the that the Sun orbits the Earth but it doesn’t make it so.

        Just filth.

        1. 6.1.1.1

          “pieces of filth”

          Oh my, how uncivil! The legal
          profession should not abide such coarse discussion, especially when it comes to our first judges. Let us look to best places for enlightenment as to how to conduct ourselves, where the standards of breeding and gentility have always been highest. Of course I’m talking about Texas and Kentucky.

          ROTFLMAO

          You can put your tips in this ridiculous cowboy hat, folks. I’ll be here all day.

          1. 6.1.1.1.1

            How odd of you Malcolm, to ploy some false “politeness standard” to Night Writer’s comments.

            Oh wait, this IS the old Malcolm, so for him, not odd at all.

          2. 6.1.1.1.2

            Hypocrisy,

            Standard Malcolm hypocrisy – raise someone else’s posts as violating something he does without batting an eye:

            link to patentlyo.com

            Reminds me of AAA JJ and his Liberal Left mantras.

    2. 6.2

      It’s not the sanity of the judges that I think of, when I read stuff like this from you NW. You are somebody with experience of observing cases being examined at the EPO so you know that there the eligibility hurdle is set very low but, nevertheless, much of what is filed is given short shrift in examination. That’s because i) Stating a problem to be solved is not good enough. You have to claim the solution, not the problem, and ii) What you claim you have to enable. In other words, the scope of protection you shall receive shall be commensurate in scope to your contribution to the art.

      These axioms are beyond dispute, whenever a balance is to be struck between fair protection for inventors and reasonable legal certainty for the public, that particular balance thereby promoting (rather than braking) the progress of technological innovation.

      The judges are not wrong. they are just using the wrong legal tool to achieve the vitally important balance.

      1. 6.2.1

        Max, this sounds more like you wanting to impose EPO law in the USA.

        1. 6.2.1.1

          Impose? Hardly. Rather, I enjoy the intellectual argy-bargy between the courts of England and the established case law of the EPO, both under the same statute, the European Patent Convention, about whether to close out such claims under the eligibility provision or the patentability provisions.

          Believe it or not, I see an echo of the debate in the arguments at SCOTUS/CAFC level within your home jurisdiction. So I seek to provoke it. OK?

          Further, which part of i) solution, not problem, and ii) scope commensurate with contribution, do you take issue with? Are these not universal axioms?

          1. 6.2.1.1.1

            “Wrong legal tool” = different words and with possibly different results in mind but the logic is the same. What is new and what is old? Is the new part abstract (or not “technological” and not not eligible for protection) or not?

            Yawn.

            1. 6.2.1.1.1.1

              That’s the now discredited “contribution approach” that failed at the EPO. With a significant proportion of claims, you cannot fairly divide it into two parts (that which is “old” and that which is “new”) relative to the state of the art. The contribution to the art is often a new combination of features, all in themselves old.

              It’s different when the enquiry into eligibility/patentability finally arrives at the final question, obviousness. Then, as at the EPO, it is often (but not always) legitimate to divide the claim into two parts, but relative to a single prior publication (“D1”) taken alone.

              1. 6.2.1.1.1.1.1

                It s worse than that.

                Malcolm is retreading his old “software is magic” routine because ‘a computer is a computer’ — except for the fact that ‘what he calls magic, we call science’ and it was brought down to a level that even he could understand with the Grand Hall experiment.

                Exceptions to the Written Matter Doctrine…
                Grand Hall experiment…

                Just like old times.

  20. 5

    Martin Snyder should be pleased with this case. The panel majority here were clearly construing “the invention” rather than the claimed invention on the way to reaching this result. One more step toward the implementation of his preferred approach to evaluating §101 compliance.

    1. 5.1

      This approach predates Snyder by many years. See, e.g., Prometheus v. Mayo.

      There is no logical alternative to weeding out crud like this (where the “novel” abstraction is claimed in an old non-abstract context). This fact has been recognized by most of the universe that isn’t high on patent crack.

      My goodness but what is the matter with you people?

      1. 5.1.1

        Hi Malcolm, it’s been awhile. Where’ve you been?

        (that was rhetorical)

      2. 5.1.2

        Ah, the “no Scotsman” retort.

        Maggie Thatcher was famous for her TINA declamation “There is no alternative”. You are more careful, declaring that “there is no alternative”.

        One “alternative” is to be found in the mature, 40 years in the making, established case law of the Boards of Appeal of the EPO. Are you saying that it is devoid of logic?

        anon thinks you are MM. If so, welcome back.

        1. 5.1.2.1

          Mine was not a “no True Scotsman retort.”

          If you allow patentee’s to recite the prior art in their claims, then there is no logical alternative to weed out abstract “inventions” that are claimed in the context of the prior art except to identify the “novel” contribution and characterize it accordingly as abstract or not.

          If you believe there is a logical alternative, then by all means tell everyone what it is and explain clearly why it is (in your opinion) logically distinct. Note that “we use different words” isn’t a terribly compelling argument for you to be making (but go ahead if it makes you feel good).

          Yawn.

          1. 5.1.2.1.1

            Prophet, I do believe there is a logical alternative. It is the EPO’s “technical character” eligibility test, explained here:

            link to en.wikipedia.org

            Your dismissal of it as merely “different words” won’t do.

            Given that the issues of novelty, obviousness, clarity and enablement are the subject of specific and precise paragraphs of the statute, it in inappropriate, in the initial examination as to eligibility, to perform an enquiry into novelty or the presence of an inventive concept. To do that is what is not “logical”. As we all know, you are obliged to do this in the USA to short-circuit what has become a grotesquely inefficient and uncertain enquiry into patentability. Two wrongs don’t make a right.

            How is the EPO’s approach logically “distinct”? Why, because subject matter that is notoriously old nevertheless gets a pass, at the EPO, on eligibility. Distinct enough for you? Claim, for example “A digital computer” or “A computer- controlled garage door opener” or “An computer-implemented image enhancer” or “A method of reducing vibrations in a driveshaft” and at the EPO you will not suffer any eligibility enquiry.

            Logical? Or not?

            1. 5.1.2.1.1.1

              “there is a logical alternative. It is the EPO’s “technical character” eligibility test”

              That needs to be implemented by congress brosefulous, in order for people in the US to be able to use it, otherwise we’re on our own trying to use the legality-tools available.

              1. 5.1.2.1.1.1.1

                6, MaxDrei is already aware of that / and that is why I constantly have to remind him that our Sovereign has instead chosen the Useful Arts (and not any ‘technical arts’).

              2. 5.1.2.1.1.1.2

                6, frankly, I doubt that importation of that test would help. The debate going on in the USA is reminiscent of the debate between two jurisdictions (EPO, UK) under a common statute about how to judge eligibility under Art 52, EPC. The UK clings to the “contribution approach” whereas the EPO has abandoned it as unworkable.

                Under the contribution approach, the English courts dissect the claim, to see if what it contributes to the art exhibits technical character. That’s a bit like the “inventive concept” test which you have.

                Conversely, at the EPO, a claim such as “A digital computer” sails untroubled over the eligibility hurdle (because it is unassailably true that a computer has “technical character”). That’s an eligibility test regime that’s not going to fly in the USA, is it?

          2. 5.1.2.1.2

            Yep, they (The defenstrator formerly known as MM) are definitely back. That’s a good fun & sign this case is a rabble rouser.

      3. 5.1.3

        Donald Trump calling himself “The Chosen One” — not “The Prophet.”

        link to cnbc.com

        1. 5.1.3.2

          Nice try, kiddo. Of course, I was here warning DC and the rest of this miserable crew about Orange Julius and his diseased party (and his sick followers) before you were a comma in a discarded comment.

          Now go back to sleep on your mat. Here’s a cookie.

          1. 5.1.3.2.1

            I liked it better when you left your sock puppets over at Patent Docs, Malcolm.

            Here, this was the place that you reserved for your whining that such sock puppets were “the worst thing ever.”

            1. 5.1.3.2.1.1

              I liked it better when you were muzzled like the glibertarian pile of waste that you are.

              The issue was not “sock puppets are the worst thing ever.” The issue was you using sockpuppets to kick up dust and pretend that there was an army of clueless dooshes out there when there was really just you and a couple other soulless sacks of excrement who couldn’t process the fundamentals or admit to the most basic facts.

              Now go ahead and tell everybody that “software isn’t instructions for a computer” again. That was always good for a laugh.

              1. 5.1.3.2.1.1.1

                Prophet you do sound an awful lot like MM. If you are not that person, you do a pretty fair imitation.

                Google took me to a 2007 thread in this blog, in which it was noted that you were, back then, the most prolific poster, by a large margin. Impressive longevity.

                1. MaxDrei,

                  Now you are just being silly.

                  You are (or should be) well aware that Malcolm’s blight ran for a solid 15 years prior to his taper off and then full stop in about March 2020.

                  That “longevity” was well known – even notorious.

                  As notorious as your EPO Uber Alles shilling.

              2. 5.1.3.2.1.1.2

                Now go ahead and tell everybody that “software isn’t instructions for a computer” again

                Never said that.

                Maybe you meant to say that “Tell everybody that software is not a novel, or a cookbook.”

                I am more that certain that you remember the difference – and how I spelled it out for you on the Hricik side of the blog, invited you to actually address that on its merits, hyperlinked it to this side of the blog nigh countless times and even reproduced it here on this side several times.

                For all of your bluster, you always refused to address those points.

                As to “pretend that there was an army of clueless dooshes out there” – tell me again why YOU were using sock puppets?

                Or are you forgetting how I busted you doing that?

                As to “who couldn’t process the fundamentals or admit to the most basic facts.

                This is clearly a false statement.

                Same old Malcolm.

                Whatever it was that stopped you from posting for just over a year has not improved your posting.

                1. Bets on whether anon ever disagreed with the statement “software is instructions for a computer”?

                2. Try again Malcolm – this time read what I wrote (as opposed to what you may have wanted me to write.

    2. 5.2

      Marty seems less than pleased with the majority position here Greg.

  21. 4

    Unusually, the patent’s Abstract* is considerably narrower than the above claim 1 or the Court’s statement of claim scope. The Abstract says that: “A final color image is obtained by a digital image processing circuitry that performs pixel registration process with reference to the gray intensity image so that a true color image with true resolution is obtained therefrom.”
    [While that is not usual Abstract drafting, it is usually not fatal, and here it did not seem to help against a 101 rejection either?]

    *[and method claims]

    1. 4.1

      I suspect the claims were substantially broadened during prosecution. I don’t have the original claims, but there appears to be no suggestion at all of a two-sensor embodiment in either the specification or the drawings.

      And claim 2, with its dual “full region of visible color spectrum” sensors doesn’t make any sense in conjunction with the technique taught by the specification.

      An unscrupulous Applicant, a deficient Examiner, and Judges using a poorly written law to achieve their desired ends. This case rather perfectly sums up the patent system!

  22. 3

    “producing a resultant digital image from said first digital image enhanced with said second digital image.”

    They claimed a result and some context, and they got what they deserved.

    1. 3.1

      Sure, the end result is correct, but it does not help the cause of justice in a common law system like ours for a precedent-making tribunal to reach the right result for the wrong reason. Even though these patentees got what they deserved, the next patent invalidated under this precedent may well not deserve such a result.

      1. 3.1.1

        Should we take your statement at 1. below to be that you think the only mechanism for invalidating this claim is 102/103? You don’t think the words “enhanced with” are indefinite? You don’t think the claim is overbroad under 112a?

        This is kind of the classic thing of obscuring what could be a valuable disclosure behind claims so broad and vague that they become abstract. Why is 101 not appropriate here? What technical teaching is there in “You can use first photo information to enhance second photo information in some way”? Do you think the art needed that teaching? Are you suggesting that cross-analysis of anything (here the context happens to be photos) is not a fundamental act long prevalent in the minds of people?

        1. 3.1.1.1

          Should we take your statement at 1. below to be that you think the only mechanism for invalidating this claim is 102/103?

          You should not draw that inference. I am with you on the §112(a)/(b) problems here. The only section that I do not see to be problematic here is §101.

        2. 3.1.1.2

          You don’t think the words “enhanced with” are indefinite? You don’t think the claim is overbroad under 112a?
          As a speaker of the English language, I do not find the term “enhanced with” to be indefinite. Is it broad? Absolutely. However, as the title of MPEP 2173.04 states: “Breadth Is Not Indefiniteness.”

          The invention here seems to be not in the enhancing part but by using “a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum.” From reading the specification, it appears that multiple sensors have been used in the past — e.g., “This principle has been used in professional video camera recorders in which a prism is often used to split an incoming reflected light from a scene into three distinct lights, each banded by a distinct region in the visible light spectrum.” However, as indicated therein, in the past, each image sensor were only sensitive to a specific region of the visible color spectrum (e.g., red, green, blue). I’m not a camera guy, but from reading the specification, it appears that by having one of the regions in the full region of visible color spectrum, this will allow for a better dynamic range of the resultant image, which is something you wouldn’t get when you had multiple sensors — each with their own band of light to which they were sensitive.

          This is what happens when non-technical judges write about inventions/specifications/technology to which they have no technical background to understand. If a judge cannot understand the facts, the judge cannot accurate apply the law to the facts. Also, it doesn’t help when the judges have an obvious anti-patent bent. Why bother to understand the technology when you are going to invalidate the patent regardless?

          Also, people (including examiners such as yourself and oftentimes Federal Circuit judges) forget that claims are not intended to enable the invention. Under 112a (or 112, 1st), that role is for the specification. The claims are only required to distinguish the claimed invention over the prior art.

          Are you suggesting that cross-analysis of anything (here the context happens to be photos) is not a fundamental act long prevalent in the minds of people.
          You must be an examiner — only an examiner has the capability of describing an invention in a manner completely divorced from the claim limitations. Let me remind you of what was stated in Enfish: “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.”

          1. 3.1.1.2.1

            As a speaker of the English language, I do not find the term “enhanced with” to be indefinite. Is it broad? Absolutely. However, as the title of MPEP 2173.04 states: “Breadth Is Not Indefiniteness.”

            2173 also says that ambiguous terms are indefinite. As a fellow speaker of the English language, I know the definition of enhanced is to improve the quality or value of. Because different people would disagree when quality or value has been improved, the claim is indefinite.

            The invention here seems to be not in the enhancing part but by using “a first and a second image sensor closely positioned with respect to a common plane, said second image sensor sensitive to a full region of visible color spectrum.”

            Well I hate to break it to you but “closely” is a relative term of degree and is also indefinite. That being said, I find it unlikely that placing two cameras near each other constitutes an invention. There is no special utility or unexpected results from that – nobody would be shocked that two cameras generate two pictures. The invention comes from the enhancement of a picture (i.e. creating the resultant image) using outside data (the data from the second camera).

            I’m not a camera guy, but from reading the specification, it appears that by having one of the regions in the full region of visible color spectrum, this will allow for a better dynamic range of the resultant image, which is something you wouldn’t get when you had multiple sensors — each with their own band of light to which they were sensitive.

            I, too, believe that if have a less than full color spectrum (for example, black and white) and you are told the color of something (e.g., the apple is red and not green) that you could enhance the black and white photograph. I did this with crayons as a child. The rest of your statement is unclaimed limitations not limiting on the claim scope.

            This is what happens when non-technical judges write about inventions/specifications/technology to which they have no technical background to understand.

            You’re making the scope more limited than it is. I certainly agree that if you limited the grant to compliance with the entire specification rather than compliance with the claim scope its much harder to make an argument that this should be bounced on 101. But the 101 analysis operates on the claim, not the specification.

            Also, people (including examiners such as yourself and oftentimes Federal Circuit judges) forget that claims are not intended to enable the invention. Under 112a (or 112, 1st), that role is for the specification. The claims are only required to distinguish the claimed invention over the prior art.

            The full scope of the claim must be enabled. The claim encompasses all enhancements (because enhancement is not limited) of a first image by using a second image. I know that even today we cannot achieve all possible enhancements of a first image simply because a second image (captured in accordance with the claim scope) is available, so I know that this guy didn’t enable that. Just to be clear, this claim is suggesting that there will never again be any advancement in post-processing a first image using a second image (again, captured in accordance with the claim scope) because he has enabled it all. Does that seem like a reasonable conclusion to you?

            You must be an examiner — only an examiner has the capability of describing an invention in a manner completely divorced from the claim limitations.

            What the claim embraces is any (non-limited) enhancement to a first image using the second image. (“a digital image processor, [] producing a resultant digital image from said first digital image enhanced with said second digital image.”) This isn’t unfairly describing narrow claims in an untethered, abstract way, it’s accurately describing broad claims (remember, you said it yourself) with no limitations other than some sort of general feel-good result. The claim does not limit what information is pulled from the second image, how that information is used or processed, how it combines with information from the first image, or even what the resulting enhancement is. That scope embraces everything from using the color pictured to color-by-number the first picture (something a child could do) to using the second picture to generate a 3d wire mesh from the first picture (something that can’t even be done well TODAY). The wide range of applications to generate a wide range of results is what shows that the claim is abstract.

            Now it may be that the specification describes SOME of those things, but that’s not relevant, because the specification is not the claim scope. Its entirely possible that there are eligible particular embodiments hiding within some specification paragraphs. It may also be that one could generate a 101-valid claim scope from the specification, but that also is irrelevant. The question is whether this claim is eligible. This guy is an inventor of THIS claim scope in the same manner that a semi-truck driver dropping off lumber and brick at a work site is an architect, which is to say – he isn’t. You don’t just nominate some starting resources and get to claim anything that can ever be done with the resources. You only get credit for when particular way of using the resources that you thought up works.

            1. 3.1.1.2.1.1

              Because different people would disagree when quality or value has been improved, the claim is indefinite.
              Um, no. An iota of enhancement is an enhancement. You also need to check out MPEP 2173.05(b) — the first line of which states “The use of relative terminology in claim language, including terms of degree, does not automatically render the claim indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”

              Well I hate to break it to you but “closely” is a relative term of degree and is also indefinite.
              See above.

              That being said, I find it unlikely that placing two cameras near each other constitutes an invention.
              The claim didn’t say anything about “placing two cameras near each.” You need to read the claims better.

              There is no special utility or unexpected results from that
              Special utility or unexpected results are not required for patentability.

              I, too, believe that if have a less than full color spectrum (for example, black and white) and you are told the color of something (e.g., the apple is red and not green) that you could enhance the black and white photograph. I did this with crayons as a child.
              Drawing with crayons is not capturing an image with an image sensor. Wow — do you really examine for a living? I feel sorry for applicants that get you.

              The rest of your statement is unclaimed limitations not limiting on the claim scope.
              Still confused about the difference between 112 1st and 2nd?

              The full scope of the claim must be enabled. The claim encompasses all enhancements (because enhancement is not limited) of a first image by using a second image
              By your (il)logic any improvement patent renders the original (i.e., the improved) patent unpatentable.

              Just to be clear, this claim is suggesting that there will never again be any advancement in post-processing a first image using a second image (again, captured in accordance with the claim scope) because he has enabled it all. Does that seem like a reasonable conclusion to you?
              See above. Your unreasonable analysis had led to your unreasonable conclusions.

              What the claim embraces is any (non-limited) enhancement to a first image using the second image.
              The claim also convers any (non-limited) kind of image sensors, lenses, analog-to-digital converting circuitry. So what? I could use your same type of (il)logic regarding about any limitation.

              The claim does not limit what information is pulled from the second image, how that information is used or processed, how it combines with information from the first image, or even what the resulting enhancement is
              The claim is not intended to enable the invention. Again, contemplate the difference between 112 1st and 112 2nd.

              Fortunately for me, most examiners I deal with aren’t nearly as bad as you in understanding the law.

              1. 3.1.1.2.1.1.1

                Oh man, this is a lot of words to say you know nothing about patent prosecution.

                An iota of enhancement is an enhancement.

                That’s not the point. The point is that different people would disagree whether something constitutes an enhancement at all. If you use a second picture to sharpen a picture, but it generates more noise, is that an enhancement or not? It depends upon the subjective valuation of sharpness versus noise. If you take a greyscale picture and colorize it, does that enhance the picture or not? Was Casablanca better as a black and white or a color version? And this ignores that, especially in art, “quality” and “value” (which are both in definition) are not necessarily directly related.

                The claim didn’t say anything about “placing two cameras near each.” You need to read the claims better.

                Is a camera not one embodiment of a sensor? That being said I suppose the most technical term of what I was looking for was apeture.

                Special utility or unexpected results are not required for patentability.

                Unexpected results are a lot closer to being synonymous with non-obviousness than most attorneys seem to think, but the point here was to show indicators of what the inventive concept is. Nobody applied for a patent because they mounted two lenses on the same plane in the 1990s, and you agree with as much.

                Drawing with crayons is not capturing an image with an image sensor. Wow — do you really examine for a living? I feel sorry for applicants that get you.

                Nor is intermediated settlement that occurred hundreds of years ago the same thing as a computer having code stored on its hard drive that allows it to perform intermediated settlement over a computer network. The fact that it was implemented on a computer didn’t save that claim either.

                Still confused about the difference between 112 1st and 2nd?

                Nah you’re confused about claim scope and importing spec limitations. Your argument derive from a level of detail of the specification that the claim is simply not limited to, and you do it multiple times in both this post and others.

                By your (il)logic any improvement patent renders the original (i.e., the improved) patent unpatentable.

                Only if you think the only way to claim is with functional language. Its entirely possible to explain a bow by talking about how the wood is curved and interacts with the string when you pull on it, but if you just say you have a handheld apparatus that achieves the result of firing a projectile then I agree that the later discovery of the crossbow or the gun is going to show that your claim was overbroad and invalid. As it should – you didn’t think of the gun, you didn’t enable the gun, you didn’t disclose the gun, so it’s unsurprising that your specification can’t support a claim that reaches to the gun. If your court upholds the overbroad claim, one wouldn’t have an incentive to disclose the gun. This was all covered in Morse v. O’Reilly.

                See above. Your unreasonable analysis had led to your unreasonable conclusions.

                This isn’t very hard – if the claim claims a functional result, and doesn’t limit how the result is achieved, the only way to read that claim is that is drawn to every way of achieving the result. If it somewhat limits the results, the claim is drawn to every way of achieving the result subject to the limitations. This claim is drawn to every enhancement of a first image based on a second image that produces a resultant image (“a digital image processor, coupled to said image memory and receiving said first digital image and said second digital image, producing a resultant digital image from said first digital image enhanced with said second digital image.”).

                The full scope of a claim must be enabled. The only way to conclude that the full scope of the claim is enabled is that after reading this specification, and with all the other knowledge in the art at the time of filing, one of skill was enabled to make every possible enhancement of a first image using a second image. If this claim meets 112a, as long as you have a second image available, all digital processing that will ever been developed has already been disclosed by this patent. I agree that’s unreasonable, but that’s not MY unreasonableness.

                The claim also convers any (non-limited) kind of image sensors, lenses, analog-to-digital converting circuitry. So what? I could use your same type of (il)logic regarding about any limitation.

                Well I agree that if the genus of image sensors or lenses didn’t make images (which is what the claim requires them to do) you’d have a problem there. But what this guy is claiming is that the prior art couldn’t enhance images, and he can. And not only can he enhance images, but he can do any kind of enhancement (so long as you have the second image of the claims available).

                The claim is not intended to enable the invention. Again, contemplate the difference between 112 1st and 112 2nd.

                No but the full scope of the claim must be enabled by the specification, you get that right? The claim has to be limited, not because the claim must enable the invention, but because absent those limitations the claim will embrace subject matter that is not enabled. Teaching how your invention works with a species does not support a claim to a genus when there’s no reason to think the genus behaves in a manner consistent with the species. In other words, if this guy teaches how to use a second image to achieve noise cancellation in the first image, he still can’t claim all “enhancements” to the first image because that disclosure is a species disclosure that is insufficient to support the genus of “enhancements” – you would not go about processing other enhancements in the way you would go about processing noise cancellation. If the claim was limited to method steps for performing noise cancellation, the specification would enable the full scope of the claim. Remove those steps and claim “enhancements” and the specification no longer supports the enablement of the full scope of the claim. I can think of a dozen scope of enablement/description cases off the top of my head. This is very bad if you don’t understand this.

                1. The point is that different people would disagree whether something constitutes an enhancement at all.
                  The issue isn’t whether you can identify some guy on the street who doesn’t know a lick about cameras and imaging and having him opine that it isn’t an enhancement. The question is whether one skilled in the art would understand it to be an enhancement or not.

                  It depends upon the subjective valuation of sharpness versus noise.
                  You confuse optimal enhancement with enhancement. Your “valuation” goes to some subjective optimum – that is not what is being claimed.

                  Is a camera not one embodiment of a sensor?
                  A camera consists of all the parts – e.g., a lens, aperture, sensor, etc.

                  Unexpected results are a lot closer to being synonymous with non-obviousness than most attorneys seem to think
                  I see you have misread Leapfrog – like some at the PTAB. There is no requirement for unexpected results. If there were few things would be patentable in the predictable arts. While I’m sure that would be your preferred result – that is not the law.

                  Nor is intermediated settlement that occurred hundreds of years ago the same thing as a computer having code stored on its hard drive that allows it to perform intermediated settlement over a computer network.
                  SMH – fortunately for patent applicants, the vast majority of examiners aren’t that ig nor ant.

                  This was all covered in Morse v. O’Reilly
                  Did you even read that case or that claim? Again, fortunately for patent applicants, the vast majority of examiners have a better understanding of the law than you. Now that you’ve reminded me, I’m always amused by examiners who take positions that are inconsistent with the positions taken by 99.99% of other examiners. As if they had law degrees, just came out of the solicitor’s office, and decided to impart the wisdom of the ages upon the rest of us. It really is amusing.

                  This isn’t very hard – if the claim claims a functional result, and doesn’t limit how the result is achieved, the only way to read that claim is that is drawn to every way of achieving the result.
                  This sad, old, trope. You really don’t understand claim language, do you?
                  I claim a method of constructing a bench, comprising:
                  hammering two supports to a seat with fasteners.

                  What is hammering? Am I limited to hammer? Could I hammer it with a rock? Maybe the wrong end of a screw driver? I could think of hundreds/thousands of ways by which the hammering can be performed. What about the language of “supports.” What is a support? Something that supports? Sounds like functional language to me. However, the English language is full of words in which things are described by what they do. A light, a switch, an engine, a screwdriver, a stapler, a distributor – I could list hundreds of these words. Are they “functional limitations”? What is a seat? What is a fastener? Isn’t a fastener just another functional term – i.e., something that fastens. Your obsession with “functional language” fails to appreciate how the English language works.

                  If this claim meets 112a, as long as you have a second image available, all digital processing that will ever been developed has already been disclosed by this patent.
                  Is “hammering two supports to a seat with fasteners” fully enabled? There are literally hundreds of thousands of different permutations of ways that method could be performed. I could get that number by just varying the different types of materials for the two supports, seat, and fasteners.

                  Your (il)logic is unreasonable since the application of your (il)logic could be used to invalidate just about every mechanical device that ever was claimed.

                  But what this guy is claiming is that the prior art couldn’t enhance images, and he can.
                  I see you didn’t read my other post below before writing this. The cited prior art also disclosed enhancing images from multiple image sensors. CONSEQUENTLY, YOU ARE DEAD WRONG.

                2. Wt,

                  I see that you appear to finally be tiring of the swine that you have been throwing your pearls in front of.

                  Try doing this for a decade or more and having the same ones continue their same inte11ectual DIShonesty by trotting out the same tropes, never engaging on the counterpoints put to them.

                  Your own statement here of, “Your obsession with “functional language” fails to appreciate how the English language works.” applies as it has applied countless times before on this very subject.

              2. 3.1.1.2.1.1.2

                By your (il)logic any improvement patent renders the original (i.e., the improved) patent unpatentable.

                This exact point has been put to Random many many many times.

          2. 3.1.1.2.2

            “in the past, each image sensor were only sensitive to a specific region of the visible color spectrum (e.g., red, green, blue).”

            A five second search from another non-camera guy turns up US5,852,502, filed a few years before Yu’s application, which combines a color sensor’s image with a monochrome sensor’s image to produce high resolution color images

            Not that it’s relevant to the 101 issue. I just enjoy seeing “the invention” get carved into smaller and sadder pieces as the prior art comes out. I suspect here we can go “awkshulky, Yu invented doing that old thing with two lens rather than with one lens an a beamsplitter.” What a contribution!

            1. 3.1.1.2.2.1

              A five second search from another non-camera guy turns up US5,852,502, filed a few years before Yu’s application, which combines a color sensor’s image with a monochrome sensor’s image to produce high resolution color images
              You should have examined that application then. Maybe that gets independent claim 1. However, it doesn’t get dependent claim 5.

              Regardless, it says nothing about the 101 issue. And I would wager that some the examiners in that art unit (at that time) probably never wrote a 101 rejection over their entire career.

      2. 3.1.2

        The facts are that 99% of claims tanked under 101 (like this one) are getting exactly what they deserve for totally understandable and defensible reasons and most of the remaining 1% should have been better written.

        No system administered by humans is going to be perfect but 101 is actually more straightforward and more sensibly applied to most of these data processing cases than 103 or 112.

        Of course if the real complaint is “wah wah it shouldn’t be so easy to rank these cruddy claims because rich people need stuff to play with and lawyers need jerbs” well just continue to fill up the river with your crocodile tears.

        1. 3.1.2.1

          because rich people need stuff to play with and lawyers need jerbs

          Yup – those be Malcolm fingerprints.

          1. 3.1.2.1.1

            Thank you for “jerbs”. I had to look it up. What is it that lawyers need so much, I wondered.

            Once I did though, its meaning was of course screamingly obvious. But not until.

            In my opinion, whoever invented it deserves some sort of recognition for their creativity.

            1. 3.1.2.1.1.1

              But never mind the professional slander and acting as if US attorneys have no code of ethics related to those “jerbs”….

      3. 3.1.3

        I absolutely agree with you, Greg. We don’t need more divergence and confusion on 101 jurisprudence. We do need more good case law on 112(a) WD and scope of enablement, to deal with overbroad claims that mumble through the point of novelty and/or that recite a desired result instead of the steps to accomplish that result.

        Unfortunately, the fact remains that 101 gets teed up first in court, and many judges want to quickly get rid of patents that they know will be found invalid eventually. That means that 101 is where all of the case law lands.

    2. 3.2

      Ben—again and again—claims have to be interpreted in view of a person of ordinary skill in the art.

      The set of solutions (structure) of “combining” the images is understood in view of the specification.

      This is the way real technology people work and think.

      Just endless shxt from you f o u l p e o p l e.

      You just don’t care about applying the law or being fair. Just f i l t h.

      1. 3.2.1

        The set of solutions (structure) of “combining” the images is understood in view of the specification.

        No, it’s not. This isn’t means plus and you don’t import limitations from the specification. The claim is using second image information to enhance first image information. If the first picture is a black and white photo and the second information is a color photo, you could enhance the black and white photo by importing a color identifier from the color photo.

        The color image has to include indicators for the color pixel (that’s what makes it a color image), so one embodiment is simply replacing at least one black/white pixel identifier with one color pixel identifier. Anything more complicated than that is improper importation of limitations. You’ve seen a coloring book before right, where sections of the image have numbers – 1 = color this red, 2 = color this blue, etc? Explain how the claim solves a technological problem when both the problem and solution have been expressed in paper for decades before it and the only limitation the claim is using is “enhancement”?

        1. 3.2.1.1

          Explain how the claim solves a technological problem when both the problem and solution have been expressed in paper for decades before it and the only limitation the claim is using is “enhancement”?
          I seriously hope you don’t examine patents for a living. You inability to understand the invention (which admittedly took me about 10 minutes) is astounding. The invention was in using two sensors — one of which was sensitive to the full spectrum of light. The result of this was to improve the dynamic range of the digital camera. Your “enhancement” limitation was old — cameras were previously using multiple sensors (and subsequently combining the images) in the past.

          1. 3.2.1.1.1

            You can improve dynamic range by using more powerful sensors?

            Dang you really do know what you are talking about! Super smart guy alert! I beg you know a lot about the law, too. Especially 101.

            LOL

          2. 3.2.1.1.2

            You inability to understand the invention (which admittedly took me about 10 minutes) is astounding.

            You must be new. I’ve found that people who think others can’t understand the invention often fail to avoid importing unclaimed limitations from the specification or simply lack development of their imaginative muscle.

            The invention was in using two sensors — one of which was sensitive to the full spectrum of light. The result of this was to improve the dynamic range of the digital camera. The result of this was to improve the dynamic range of the digital camera. Your “enhancement” limitation was old — cameras were previously using multiple sensors (and subsequently combining the images) in the past.

            Claim 2 makes clear that both sensors could be sensitive to the full spectrum of light, so maybe slow your roll on thinking you know what the invention is and how it exploits a partial- + full-range dual setup. Regardless, that search took me exactly one google entry: link to en.wikipedia.org . Here’s a tip, when someone keeps saying “the result of which” they are either admitting your invention is abstract (because it can’t get more particular than results – its a claim on the results themselves) or that you don’t know what the invention is, they only know what the utility of its use is. What the invention is and what its utility is are two different things.

            I hate to break it to you, but you’re pretty much admitting the invention is in the processing, because it isn’t “two lenses” that “improves the dynamic range” or even “combines images.” All two lenses will do (whether they’re situated “close” on the same plane or not) is get you two pictures. Instead there is only obliquely claimed processing language that generates the alleged utility. This processing code (you know, the element that “the result of which” improves the picture and generates the utility) is the lynchpin of the invention.

            This isn’t about layering RGB images on top of each other to generate a composite image – though that’s probably one anticipated embodiment depending on how you construe “enhance”. This is about the generic act (ANY MANNER) of taking information from a second image to enhance a first image. The fact that you don’t distinguish that claim language from some preferred embodiment (“improve the dynamic range” “combining the images”) of the specification makes your 101 analysis suspect from the get go and confirms you are letting the specification cloud the proper analysis of the full scope of the claims.

            I (and I’m sure you’ll eat this up with a spoon because you mistakenly think it is some sort of error on my part) actually don’t care what the specification says short of defining “enhance” which it does not. That way I’m not confused into thinking this is anything more detailed than using information from a second source (the second image) to improve upon how I use a first source (the first image, to generate a resultant image). One embodiment of that code is to use color information to color in at least part of a black and white image. The fact that you say the specification includes completely different techniques that result in completely different enhancements that are only applicable to completely different setups supports my conclusion that the claim is abstract rather than concrete.

            The invention is little more than than a claim on the fact that you can cross-analyze a second image to further inform on the disclosure of a first image. The claim doesn’t get any more particular than that. Now I guess using second image data to improve analysis on first image is somewhat less limited than just using second data to improve analysis on first data, but not by much. That’s kind of just a generic field of use limitation, especially in light of the fact that there’s no limitations on how the information is interrogated that are image-specific. You can’t really say this is an image-enhancing technology so much as a data-enhancing “technology” that happens to be applied to images because the claim doesn’t employ any image-specific processing commands. those limitations don’t exist at all. Consequently it’s not so much improving a technology as much as it is a commentary that logic dictates that having more data available generally allows one to get better results on an analysis. More data opens up more avenues for analysis or improves an analysis you could already do. Nobody needed a patent to tell them that, that’s an intrinsic feature of consciousness.

            This guy could have claimed a method that detailed how data was pulled from the second image and processed or modified or combined with the data from the first image, and how doing so would have resulted in some particularly beneficial result. I have no doubt that information from two images allows for, e.g., noise reduction (a technological advance) if one actually claims the method steps that does so. But that’s not this claim. This is a claim that throws two images at the PHOSITA and says “I claim all the benefits (‘enhancements’) from considering both of these together, whatever those benefits may be by what route of analysis one may choose.”

            1. 3.2.1.1.2.1

              “Claim 2 makes clear that both sensors could be sensitive to the full spectrum of light, so maybe slow your roll on thinking you know what the invention is”

              To be fair, Claim 2 is probably new matter. We shouldn’t use their efforts to acquire undeserved claim scope to define our understanding of the invention.

              1. 3.2.1.1.2.1.1

                To be fair, Claim 2 is probably new matter.
                The prosecution history isn’t available on public PAIR. How would you know whether claim 2 wasn’t an originally filed claim. If so, it is unlikely to be new matter.

                1. “The prosecution history isn’t available on public PAIR. How would you know whether claim 2 wasn’t an originally filed claim. If so, it is unlikely to be new matter.”

                  The specification and figures are tightly focused on a 4 sensor embodiment, and there is no discussion of a 2 sensor embodiment (as in claim 1). But a 2 sensor embodiment could at least plausibly work with the disclosed techniques where one sensor is full spectrum and one is not. Nothing in the specification or drawings suggests how to enhance one full spectrum image with another full spectrum image, and the disclosed techniques do not appear to be applicable to such a situation.

                  Of course it is possible that claim 2 is an original claim, but that appears to me to be rather unlikely given the spec and drawings.

                2. Of course it is possible that claim 2 is an original claim, but that appears to me to be rather unlikely given the spec and drawings.
                  I wouldn’t say that. I’ve come across more than a few specifications (that I didn’t write) that included original claims reciting matter that wasn’t explained in the specification. It is frustrating for me to deal with it, but it happens. I suspect is that as the inventors are reading the claims that they sometime say — “hey, what about this embodiment” and proceed to describe an embodiment. While that embodiment makes it into the claims, it doesn’t make it into the specification. Not ideal, but certainly not unheard of.

            2. 3.2.1.1.2.2

              Regardless, that search took me exactly one google entry: link to en.wikipedia.org .
              Ew … you call that a decent reference? This is from the second sentence: “In this camera, in addition to the usual complement of three tubes for the red, green and blue images, a fourth tube was included to provide luminance (black and white) detail of a scene.”

              This processing code (you know, the element that “the result of which” improves the picture and generates the utility) is the lynchpin of the invention.
              That is what you think. From the specification, it is how the images are received that appears to by the “lynchpin” of the invention.

              This is about the generic act (ANY MANNER) of taking information from a second image to enhance a first image
              What you described isn’t the invention. How do I know that? That is because that is described in both USP5414465 and USP5436661, which were two the cited references. This also appears to be disclosed by USP4506294 (another cited reference), which was filed 16 years before this patent.

              The invention is little more than than a claim on the fact that you can cross-analyze a second image to further inform on the disclosure of a first image.
              No. See above.

              Regardless, all of this goes to a 102/103 analysis — not a 101 analysis.

    3. 3.3

      How about no.

    4. 3.4

      >They claimed a result and some context, and they got what they deserved.

      Under 101? Textually speaking, you seem to be describing a 112 problem.

  23. 2

    What happened was that Lee had intended to extend 101 as applied in the 3600 AUs to all AUs. That was a stated goal–at least that is what I was told by more than one SPE.

    Trump stopped that with Iancu. That could all come back now.

    1. 2.1

      Remember when Dennis’ beloved infantile commenter used to whine that patent law isn’t political?

      LOL

      1. 2.1.1

        Malcolm sighting alert…

    2. 2.2

      It already is. I hadn’t seen a 101 in an office action nearly two years. I’ve seen more than a dozen in OA mailed in March or after.

      1. 2.2.1

        That’s not good.

        I’ve seen a minor uptick in it and retrenching in the 3600 AUs where the examiners don’t seem to want to budge an inch.

        The entire patent system is on the verge of collapse as I’ve said many times. Patent applications are down from US inventors.

        I don’t think people realize how fragile the entire system is at this point.

        1. 2.2.1.1

          The “verge” was crossed a few years ago. It has collapsed with respect to actual innovation. What we have today is the crony system repudiated by our founders.

          1. 2.2.1.1.1

            What we have today is the crony system repudiated by our founders.

            The founders literally required that at least two out of three political appointees sign off before an application could grant. The political appointee’s decision to grant or not grant was entirely unreviewable.

            Similarly, those political appointees—if they chose to grant—could award anything between 1 day and 14 years of patent term. That decision about how much term to award was also a matter of unreviewable discretion by those political appointees.

            In other words, the founders wanted a system guided by political cronyism. It was only later that we moved to a system that aims to be neutral and apolitical in awarding and enforcing patents.

            I think that the apolitical ideal is a better goal for us to achieve. This, however, was manifestly was not the founders’ view, as evidenced by the patent act that the founders drafted.

      2. 2.2.2

        From a business methods AU, I have only seen mid-level management (i.e., tech center directors) maintain or intensify their “drop the 101” song.

        Perhaps without a political appointee at the helm, the local fiefdoms are going their own ways?

    3. 2.3

      Trump stopped that with Iancu. That could all come back now.
      LOL. TC3600 is just as bad. EVERY … and I mean EVERY office action I get out of TC3600 includes a 101 rejection. On occasion, I have been able to get around 101 rejections after amendments, but it is more of an exception than a rule.

      I suggest you read the following article, which Dennis posted a couple days ago:
      link to prospect.org

      It seems that progressives are not pleased with the influence as to patents that Chris Coons may have on the current administration.

  24. 1

    As usual, Judge Newman has the better of this dispute. These claims should have failed under §§ 102/103, not § 101. Existing jurisprudence has turned § 101 into a universal acid that can dissolve any claim—or not—as the judges prefer at their own whims. This is no way to run a rule-of-law system of justice.

    1. 1.1

      It’s the relatively recent and widespread practice of “inventing” by the insertion of “novel” (lol) data processing concepts into existing machines and transformative methods that has made the resultant claims easy to dissolve.

      This should not be new to informed and honest patent attorneys.

      1. 1.1.1

        Another whiff of Malcolm and the notion that the Fifth Kondratiev wave should not be protected.

    2. 1.2

      It’s alarmingly easy to think “those claims should be rejected under such-and-such”, and then disconnect from actual outcomes.

      In the recent Hyatt threading, both NWPA and I remarked how it seemed like the claims could be easily handled with 112, only to later find that the DC judge had already sided with Hyatt on some of the PTO’s 112 attacks.

      I’m starting to think that its ability to camouflage itself in the desires of the reader is the great feature of the 1952 act.

      1. 1.2.1

        Ben are you a lawyer?

        What you are talking about is not applying law but equity. And if equity is going to be used, then it should be so stated and the standards for applying equity are different than applying the law.

      2. 1.2.2

        It’s alarmingly easy to think “those claims should be rejected under such-and-such”, and then disconnect from actual outcomes.

        Not sure what is “alarming” here. I grant you that it is easy for me to sit here and say—in effect—“if I had been on this panel, I would have decided XYZ instead of ABC.” This is a fairly harmless line of criticism. No one is likely to confuse the legal effect of my writing on this point and Judge Prost’s writing on the same.

        1. 1.2.2.1

          It’s alarming because it excuses people from looking away from a broken system.

          You say elsewhere in this thread that you agree there are 112 issues with this claim. Do you really think Apple would have won on those issues had their motion to dismiss failed? I suspect not based on how we so rarely hear of successful 112 arguments in software cases.

      3. 1.2.3

        is the great feature of the 1952 act.

        To make the bug of the Courts writing from the bench to be a ‘feature’ of the legislative act — here especially — is to admit profound ignorance of the entire legal situation and just why people SHOULD BE upset with this type of judicial decision.

    3. 1.3

      These claims should have failed under §§ 102/103, not § 101.
      Says someone who practices in the biotech space and doesn’t have the faintest clue as to what was the state of the art in 1999.

      Existing jurisprudence has turned § 101 into a universal acid that can dissolve any claim—or not—as the judges prefer at their own whims. This is no way to run a rule-of-law system of justice.
      At least you got this part right.

      1. 1.3.1

        +1

      2. 1.3.2

        Shame on you Greg for daring to wade into the super deep and complicated field of using one image to enhance another. Stick to your iron atoms and musty old molecules and leave the shiny complicated stuff to the Silly Con Valley Boys.

        LOL

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