Patent Patent Patent

For these numbers, I aggregated all opinions filed with each decision.  The leading decision appears to be Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) with several hundred “patent” repeats across the four opinions in that en banc decision.

80 thoughts on “Patent Patent Patent

  1. 8

    Yesterday, Greg gave us this contention:

    “My contention is that if we really are talking about a non-obvious solution to a prior art problem, and if the claim to this solution really is enabled across its whole scope, then we are necessarily discussing a technical solution. One cannot “enable” the full scope of a “non-obvious” solution to an aesthetic problem.”

    That it is possible by disclosure in a utility patent application to “enable” a solution to a technical problem is something we can all accept. But what I struggle with is the idea that if the problem is not a technical one, well then by definition we can’t in our patent application enable its solution. What about, say, methods of selling, tax-saving, or telling a joke?

    Are all design patent applications non-enabling? Or is Greg saying that design patents are not required to solve a problem but that utility patents (to deliver utility) must necessarily solve a problem?

    Anybody care to comment further on Greg’s contention?

    1. 8.1

      Translation:

      MaxDrei is only interested in confirmation bias and is looking for hearing from those who agree with the views of Greg and himself.

      Rather dull, and still rather rude to those who have provided counter points already.

  2. 7

    With respect, Dennis, a lot of practitioners would sell their soul to get free access to Westlaw, as it is remarkably expensive to practitioners even in the day of ample Internet-based alternatives. Those who have access to it find themselves having to work rapidly when signed on, to avoid incurring excessive charges which are ultimately borne by clients.

    All of that expense ends up subsidizing academics and others, who basically get Westlaw for free, and — umm — you’re using that resource to count “how often the Federal Circuit uses the term ‘patent’ in its patent-focused decisions”?!?!

    1. 7.1

      Academics are often disassociated from reality (hence the term, Ivory Tower).

      Academics in the intellectual property space are no different (with a few rare exceptions).

  3. 6

    The line graph took me a minute to figure out. Would perhaps a bar graph be a better representation of this data set?

  4. 5

    Interestingly, while [ignoring rude behavior] is one of the most successful techniques for managing other people’s rudeness, it is also one of the least satisfying. Rude people often get a kick out of the fact that they are bothering others. They like the attention and fuss that their behavior stirs up. So ignoring them is far more likely to extinguish or stop the undesirable activity behavior than engaging in a battle with them., no matter how appealing it might seem to put them in their place.

    link to psychologytoday.com

    1. 5.1

      Not unrelated, I would think, is that old caution “Don’t Feed the Troll”. But far more useful, Dozens, that you show us the benefits of refraining from any such feeding.

    2. 5.2

      The lady doth protest too much, methinks.

    3. 5.3

      Please pardon potential rePeat (count filter)

      So ignoring them is far more likely to extinguish or stop the undesirable activity behavior than engaging in a battle with them…

      Do tell me how that has worked for you there Greg.

      Alas, your sidewise attempt TO “engage” is a
      F
      A
      I
      L
      as I do not only post with (your mischaracterization) of “get[ting] a kick out of the fact that they are bothering others” and the BIGGER “kick” is showing that your advocacy is misplaced.

      So you doubly err in your fallacious view of “the rudeness of others.”

      Try some different John Maynard Keynes (recognizing that YOU are the unthinking, leastwise, unthinking outside your desired narrative).

    4. 5.4

      +100

  5. 4

    The entire ridiculous thread below at 3 is a prime example of how far out in the weeds the patent huffers have wandered.

    Seriously, folks, take a breath and look in the mirror and ask yourself what you are advocating for and why.

    Is there some shortage of patents? Is progress being impeded because not enough patents (?!?!) are being granted on (lol!) improving the “look and feel” of a website (news flash: using computers to automate the processing of data using otherwise unpatentable logic is older than the hills).

    I literally read this blog only for the laughs and so that current and future historians of the law can see how the legal profession was melted into sludge by glibertarian nut cases and even worse actors and their supporters in academia.

    1. 4.1

      Malcolm, I understand the thread somewhat more charitably than you. The law on eligibility seems to be in a bit of a mess, and that’s a real problem. It’s only human, and simply a bit of fun, to interject with ideas how to solve the problem. I dare say though, that some of the commentators here favour solutions that will best safeguard their personal financial future.

      1. 4.1.1

        As what either Malcolm or MaxDrei “understand” has (repeatedly) been shown to be divorced from reality, one can enjoy the perpetual ‘smack down’ afforded by their choices of posting in inanities.

  6. 3

    Can you do the same thing with the word “problem” and then see if there are more occurrences of this word recently than, say, 20 years ago? Then again, if you go back far enough, say to the 1970’s and cases like Sakraida, you might find even more mentions of inventions solving problems than there are today.

    Perhaps it is wishful thinking on my part but I sense that the bench today does take an interest in whether the claimed subject matter can be understood as a solution to a problem in technology.

    1. 3.1

      Perhaps it is wishful thinking…

      … in technology.

      That’s not wishful thinking. That’s mere rudeness given how many times you have been appraised of the US Sovereign’s choice as to Useful Arts (as opposed to technology).

      Your posts once again smack of the EPO Uber Alles and repeat a falsehood often enough as you (yet again) seek to paint the US Sovereign as limited to “claimed subject matter… technology.”

    2. 3.2

      if you go back far enough, say to the 1970’s and cases like Sakraida, you might find even more mentions of inventions solving problems than there are today
      Nearly all inventions were/are intended to solve problems. The problem with the (current) Federal Circuit is that like to recast the problem the invention intended to solve in an unfavorable light.

      Look at it this way. Nearly all technical problems are derived from business problems. Let’s say you have a website and you want to be more responsive to your customer’s requests (sounds like a business problem, does it not?), there are a vast number of technical solutions to make websites more responsive. If you are a Federal Circuit judge and you don’t like the invention, you describe the invention as solving a business problem. On the other hand, if you like the invention, you characterize the invention as solving a technical problem.

      Let’s revisit the claims of DDR Holdings:
      13. An e-commerce outsourcing system comprising:
      a) a data store including a look and feel description associated with a host web page having a link correlated with a commerce object; and
      b) a computer processor coupled to the data store and in communication through the Internet with the host web page and programmed, upon receiving an indication that the link has been activated by a visitor computer in Internet communication with the host web page, to serve a composite web page to the visitor computer wit[h] a look and feel based on the look and feel description in the data store and with content based on the commerce object associated wit[h] the link.

      The important language is “serve a composite web page to the visitor computer wit[h] a look and feel based on the look and feel description in the data store.” Chen wrote that the “claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”

      However, when you read the specification, this is the very paragraph in the “Summary of the Invention”:
      The affiliate commerce system and method of the present invention represents a new paradigm of co-marketing on the Internet. Not only does the present invention provide its Hosts with the added value and incremental revenues of traditional affiliate programs, but the company also enables Hosts to control the customer experience before, during, and after the purchase transaction. At the same time, Merchants receive the same benefits as with older affiliate programs, i.e., increased marketing potential, incremental sales, and new customer relationships, but without the restrictive limitations of affiliate programs–the loss of hard-won visitor traffic.
      The invention is all about marketing. This is how the Federal Circuit characterized the invention:
      Thus, the host website can display a third-party merchant’s products, but retain its visitor traffic by displaying this product information from within a generated web page that “gives the viewer of the page the impression that she is viewing pages served by the host” website.
      Again, this is addressing a business problem.

      Most inventions involve doing something (or providing a product that is) better, faster, cheaper, more efficient, more responsive, etc. These are all business concerns. As such, the distinction between a technical problem and non-technical problem is contrived. Moreover, there is no requirement whatsoever in US statutory law that an invention has to solve a technical problem — or any kind of problem for that matter.

      1. 3.2.1

        [T]he distinction between a technical problem and non-technical problem is contrived.

        This is certainly true, but it is a trivial truth. All distinctions are contrived. Words are a contrivance. We fashion them along arbitrary patterns of our own contrivance that we impose upon the universe to suit our own purposes. We distinguish, for example among a “wolf,” and a “coyote,” and a “dog,” but these animals do not distinguish amongst themselves. If left to it, each will freely (and fertilely) breed with the other, hunt with the other, etc.

        Nevertheless, it suits our purposes to designate one group of these canids as “wolves” and another group as “dogs.” So too, it suited the Athenians to distinguish between τέχνη and ἐπιστήμη, or the drafters of the Constitution (borrowing from the Athenian philosophers with almost slavish devotion) to distinguish between “science” and “the useful arts.”

        On the basis of both Constitution and statute, patents were intended for τέχνη. It continues to be necessary, therefore, for the courts to police the boundary between τέχν and ἐπιστήμη. Max is not at all wrong in continuing to draw our attention to this (admittedly contrived) boundary.

        I do not mean to imply that the courts are doing a particularly good job of policing that boundary. I think that we actually have a pretty good test for the boundary just in the words of §101, and the courts would do a darn sight better just to confine themselves to applying those words in a fairly wooden and unimaginative sense, instead of inventing ever more elaborate emanations of penumbrae from the statutory text. Still and all, it is pointless to ask them to ignore the “contrived” difference between “technical” and “non-technical,” as this is the very distinction that both Constitution and statute have charged them to police.

        1. 3.2.1.1

          What a prevaricating, dissembling,
          Dishonest P.O.S. Greg is.

          Neither the Constitution nor the Congressional statutes are written in Greek, and the term is NOT the single word but the compound phase “Useful Arts.”

          You should be ashamed for such deception.

          1. 3.2.1.1.1

            I have never been in a partnership with my son or anyone else. This illegal so called partnership must be why I am being blocked from having counsel.

            1. 3.2.1.1.1.1

              Don’t worry Dennis I took a picture of my post for when I finally do get my day in court, as you know blocking my due process with hidden evidence, obstruction, conspiracy, forgery and coercion let alone setting up to give my IP to a family member so he can share it with his family to keep them quiet with my assets.
              i know now that someone hired Cushing Doaln claiming to be me . and that to is just another crime. this is why they sent me all those letters. The only problem was the PO BOX that Burroughs told me was all i could have was used to steal my assets, evidence, and anything else that blocked me from knowing who I really was and how far as double teaming could take you as a unit to protect each team.

              1. 3.2.1.1.1.1.1

                Who are you protecting Doll, Dudas, Tamai, Schaeffer, Berkenstock,Robin Steward, or the USPS and the USPTO, or all of the above?

            2. 3.2.1.1.1.2

              Does anyone understand what is going on with this sarah mcpherson poster?

              1. 3.2.1.1.1.2.1

                . . . er . . . um . . . the season of the Halloween?

                Or some such?

              2. 3.2.1.1.1.2.2

                I am not sure if sarah ever has had a comment that was on point.

        2. 3.2.1.2

          Further, there is NO such “charge” to the Court to ‘police’ any such distinction.

          Shame, Greg, shame for such dishonesty.

        3. 3.2.1.3

          On the basis of both Constitution and statute, patents were intended for τέχνη. It continues to be necessary, therefore, for the courts to police the boundary between τέχν and ἐπιστήμη.
          Except neither the Constitution nor the statute distinguishes between τέχν and ἐπιστήμη. It is an artificial contrivance created by the Federal Circuit.

          Remember this language?
          In holding to the contrary, the Federal Circuit violated two principles of statutory interpretation: Courts “ ‘should not read into the patent laws limitations and conditions which the legislature has not expressed,’ ” Diamond v. Diehr, 450 U. S. 175, 182, and, “[u]nless otherwise defined, ‘words will be interpreted as taking their ordinary, contemporary, common meaning,’ ”
          Not only are the statutes silent about requiring a particular type of problem be solved, the statutes do not require any type of problem be solved. Novel and non-obvious — those are the standards.

          Still and all, it is pointless to ask them to ignore the “contrived” difference between “technical” and “non-technical,” as this is the very distinction that both Constitution and statute have charged them to police.
          You still don’t get it. First, the Constitution and statutes make no mention of technical versus non-technical. Second, as I noted above, there is substantial overlap between the two that any attempt to draw a line between the two is an artificial contrivance.

          1. 3.2.1.3.1

            Greg is “ok” with artificial contrivances that rewrite the laws to reach his desired narrative.

            He is just inte11ectually dishonest that way.

            Legal ethics must also be “just words” and an arbitrary contrivance for Greg and his advocacy.

            1. 3.2.1.3.1.1

              Legal ethics

              Just days ago the guy who wrote this was telling everyone how Biden is worse than the relentlessly lying treasonous fascist sociopath who preceded him and who still runs the R party.

              What the heck does “legal ethics” mean to Dennis Crouch?

              1. 3.2.1.3.1.1.1

                Biden IS worse.

                But don’t let facts get in the way of your feelings.

              2. 3.2.1.3.1.1.2

                What the heck does “legal ethics” mean to Malcolm Mooney Dennis Crouch ?

              3. 3.2.1.3.1.1.3

                Get a life Malcom Mooney, you dumbo doofus.

          2. 3.2.1.3.2

            Except neither the Constitution nor the statute distinguishes between τέχν and ἐπιστήμη.

            Eπιστήμη = Science
            Tέχνη = the Useful Arts

            It is true that the Constitution does not use the Greek words “τέχνη” and “ἐπιστήμη,” because the Constitution is written in English, not Greek. So, therefore the Constitution uses the English translation of “τέχνη και ἐπιστήμη,” viz. “Science and the Useful Arts.” It is, however, exactly the same distinction, whether rendered in Greek or English.

            [T]here is substantial overlap between [technical and non-technical] that any attempt to draw a line between the two is an artificial contrivance.

            I agree, but what can one do? All line drawing between “distinct” categories is subject to the criticism of being arbitrary because all distinctions are arbitrary.

            In any event, even in light of the observation that all distinctions are arbitrary, the courts (including the CAFC, to be sure, but certainly not only the CAFC) do a terrible job policing the boundary of “technical,” as you rightly note. It seems to me that quite a lot of mercantile or commercial know-how would easily come under the antique Athenian heading of “τέχνη,” so it makes no sense to say “this is ‘commercial,’ not ‘technical.’” as if this were a meaningful difference.

            1. 3.2.1.3.2.1

              I agree, but what can one do?
              Step back for a moment and ask: why are we drawing this distinction? The patent statutes do not call for this distinction.

              Remember, Article 1, Section 8, Clause 8 of the US Constitution is a grant of power to the Congress of the US. It does not set forth what is or should not be patentable. There are good arguments (not just made by me) that the Commerce Clause (Article 1, Section 8, Clause 3) also grants the power to Congress to create a patent system. In other words, the Congress could have still created the patent system in the absence of the patent clause. It takes a very strained reading to argue that the US Constitution limits patentable subject matter. Moreover, when one looks at 35 USC 101 as compared to 102, 103 in concert to the defenses of infringement in 35 USC 282, it is quite clear that 35 USC 101 is not intended as a condition for patentability.

              The Supreme Court created the exceptions to statutory subject matter out of thin air. This wasn’t a problem when those exceptions were very narrowly applied. Today, however, we have inventions involving tuning propeller shafts, multi-lens cameras, and garage doors being declared non-statutory subject matter because of activist judges who want to supplant the role of Congress in creating the patent laws.

              Ultimately, the current ambiguous application of patent laws such that no one really knows what is patentable subject matter or not prior to reaching the doors of the Federal Circuit does not serve to promote the Progress of Science and useful Arts.

              To get back to my first point, if we are so bad at drawing lines, perhaps we should rethink whether or not we should be drawing lines in the first place.

              BTW, if you want a good read on how the Patent Clause made it into the US Constitution, I suggest you read “TO PROMOTE THE PROGRESS OF SCIENCEAND USEFUL ARTS: THE BACKGROUNDAND ORIGIN OF THE INTELLECTUAL PROPERTY CLAUSE OF THE UNITED STATES CONSTITUTION” by Edward Walterscheid. It is an article dated October of 1994.

              1. 3.2.1.3.2.1.1

                There are good arguments… that the Commerce Clause… also grants the power to Congress to create a patent system.

                For whatever little this is worth, I agree on this point (at least in the post-Wickard era).

          3. 3.2.1.3.3

            WT, I’m not yet wholly convinced that i) novel ii) not obvious and iii) fully enabled, are sufficient for eligibility/patentability. I’m thinking of the realm where copyright protects the material forms of creative thinking but into which patent law is creeping. One has the feeling that the courts are striving to halt the creep and are doing it very badly.

            A new and inventive plot line for a thriller or a TV game show, for example, certainly solves a commercial problem (how to attract more readers/viewers). But what if we allow it to be patented? There are huge practical problems for the PTO in searching patentability or for a would-be publisher to procure an FTO opinion. Then there’s the deeper issue, whether there will be any morte promotion of progress if we allow patents that don’t solve a technical problem but do solve a commercial problem. Might such patents hinder rather than promote progress? Who knows? Precautionary principle, anybody, given that a patent is intrinsically a restraint on free trade.

            Banks are into commercial progress, less so into technical progress. Patents for improved methods of banking? I say: Yes when they solve a technical problem but no when they don’t.

            1. 3.2.1.3.3.1

              A new and inventive plot line for a thriller or a TV game show
              Liberal arts are not useful arts. You failed today’s class.

              I say: Yes when they solve a technical problem but no when they don’t.
              I don’t care what you say or think. You are not Congress. It is up to Congress (not the Courts and not the EPO) to decide what is patentable subject matter in the US and what is not.

              1. 3.2.1.3.3.1.1

                WT, prompted by your pithy reply, I Googled two issues.

                First, it is not just what I “say”. Here a quote:

                “As long as the claimed invention reflects specific aspects
                of the technological endeavor (specifics that reflect the programmer’s art and not, for example, the accountant’s art), then the invention should be considered within the realm of the “useful arts” and, hence, patentable subject matter.”

                And below a Link to the BYU 1999 Paper “Useful Arts in the Information Age” from which it came.

                link to core.ac.uk

                As ever, the name of the game is the claim. Following Bilski, and depending on what the claim recites, a claim directed to a computer-implemented method of doing business will or will not be eligible/patentable under the patents clause (and GATT-TRIPS, and the EPC). Is the subject matter recited in the claim in view the invention of the accountant or of the programmer? Asking that question can focus the issue.

                Second, given that there is no bright line between the liberal and the useful arts, it brings us no further forward simply to define “useful arts” as “all arts except the liberal arts”. But are you really suggesting that it is futile to attempt to draw any such line whereby all arts should be eligible?

                1. … from the guy who has refused to define “technical,” the notion of confusing liberal arts and useful arts is simply inte11ectual dishonesty.

                2. For some odd reason, there seems to persist a notion that an item cannot have more than one aspect, and that some type of MUST HAVE EITHER OR exists.

                  Where this notion comes from, and why it persists are mysteries.

          4. 3.2.1.3.4

            Mapping that thinking on to the DDR case, we can see that, on the way to solving the problem in commerce, the named inventor solved a problem in technology. It was the solution to the technical problem that gave Chen the room to recognise eligibility.

            An enquiry into who to name as inventor can be illuminating. Who dod DDR name? Was it a marketing whizz or was it somebody writing code for that person?

            1. 3.2.1.3.4.1

              MD “An enquiry into who to name as inventor can be illuminating. Who dod DDR name? Was it a marketing whizz or was it somebody writing code for that person?”

              There is no code recited in the claim as any six year old could tell you so why would even ask the question?

              1. 3.2.1.3.4.1.1

                Max Drei is really Maryland Airex. The foam the Karl Tamai claimed filled my boat fender. But I filled mine with PPE. PPE is solid strong as an ox, and floats. This is why they are filling the cavity next to the hulls on ships with PPE. So even if damage is a huge gash, m maybe even a direct hit will still be okay,and the boat will still float. Are you kidding, or do you not know this story they used to rob me of my patent(s)?.

              2. 3.2.1.3.4.1.2

                You are well aware that claims need not include code, eh Malcolm.

                But go on and regurge your fallacies yet again.

                So exciting.

          5. 3.2.1.3.5

            [T]he statutes do not require any type of problem be solved.

            Section 101 requires that the invention be “useful.” A useful invention solves a problem.

            You are correct, of course, that the statute does not explicitly address what sort of problem the invention must solve in order to be “useful.” Nevertheless, the fact that copyright is in Title 17 while patents are in Title 35 indicates that Congress intended to keep a certain measure of separation between the two. This distinction is also implicit in the Constitution, when it speaks of “Science” as different from “the Useful Arts” or “Authors” as different from “Inventors.”

            It follows, therefore, that if the “problem” that you are solving is more aesthetic than technical, then Congress means for you to protect your solution via copyright rather than patent. Congress having expressed this intent, courts are obliged to police the boundary between those (admittedly arbitrary) categories.

            1. 3.2.1.3.5.1

              Section 101 requires that the invention be “useful.” A useful invention solves a problem.
              The utility “requirement” of 101 is so easily met that it really isn’t a requirement.

            2. 3.2.1.3.5.2

              A useful invention solves a problem.

              Only if you define “utility” so.

              But doing so simply does not help you at point (Useful Arts is not “technical” only).

              Even if you try to obscure things with needlessly going to the Greek.

        4. 3.2.1.4

          Greg, I’m astonished to read that the patents clause envisages patents in science but NOT in the useful arts. I thought it was, if anything, the other way around. I had supposed that “useful arts” in the Constitution means what it meant in 18th century England ie the application of science and that patents are for contributions (new, inventive and enabled) to the useful arts.

          I had supposed that the useful arts do not include, for example, mathematics and logic, as such, but only when they applied in a new method or device. I had supposed that inventors get the patents of the clause, and that its “authors” get copyright.

          Seems I’m in need of more tuition on the Constitution of the USA. Help me, anybody?

          1. 3.2.1.4.1

            I’m astonished to read that the patents clause envisages patents in science but NOT in the useful arts.

            Other way around, Max. Patents for “Useful Arts,” but not for “Science.” Evidently my presentation of the issue confused more than it clarified, for which I apologize.

            1. 3.2.1.4.1.1

              Greg, no apology expected. What threw me was this:

              “τέχνη και ἐπιστήμη,” viz. “Science and the Useful Arts.”

              in your 32132, from which I took it that the E word meant the useful arts. I should have paid more attention to your Definitions Section of your 32132. Mea culpa.

            2. 3.2.1.4.1.2

              Under your “evaluation,” then, ONLY items of science would be allowed copyright, as that is the portion of the Constitutional Clause that permits copyright.

              Are you really advocating so?

          2. 3.2.1.4.2

            If you look back up-thread, you will see that I explain that “patents were intended for τέχνη,” (3.2.1) and that “[τ]έχνη = the Useful Arts” (3.2.1.3.2).

            Naturally, as you will have already noted, “τέχνη” (“techne,” transliterated into Latin characters) is the etymological root of our modern “technical” and “technology.” Tέχνη was translated “Useful Arts” in XVIII century English, but as Judge Rich observed “[t]he term ‘technological arts’… ha[s] a connotation in these times roughly equivalent to that which ‘useful arts’ had in the eighteenth century.” In re Waldbaum,
            457 F.2d 997, 1003 (C.C.P.A. 1972).

            1. 3.2.1.4.2.1

              Judge Rich, eh. CCPA. 1972. Waldbaum. Interesting. Wonder what the eminent judge would have thought about the patentability of inventions in sales or marketing, implemented as an app, downloadable to a smartphone. Would the have thought that they deliver any progress in “the useful arts”?

              1. 3.2.1.4.2.1.1

                “ Wonder what the eminent judge would have thought about the patentability of inventions in sales or marketing, implemented as an app, downloadable to a smartphone.”

                The “eminent judge”?

                ROTFLMAO

                What a collective joke you all are. Rich was a hack with the foresight of an acorn. In 2021, after seeing all the chaos caused by his lack of attention and consideration, who cares what he thought about anything?

                “Apps” is software. Putting an app on an old mobile device that was designed for that very purpose doesn’t make the app or the device new. The content/meaning of the data entered into or outputted by the app is an irrelevant consideration because it’s already well known that computers don’t care about the content (whether it’s for “marketing” or anything else).

                What’s left is the unpatentable logic and now you can attempt to pull out a magical shoehorn to make the obvious legal issue “disappear”, at least in your own mind, which is exactly what the “eminent” (lol) hack Giles Rich did.

              2. 3.2.1.4.2.1.2

                Judge Rich died in 1999, so he never had occasion to consider smart phone apps. He gave a speech to the NYIPLA shortly after the 1952 act came into effect, however, (later published in 28 Geo. Wash. L. Rev. 393, 394) in which he observed that “[o]f course, not every kind of invention can be patented,” and gave as an example “one of the greatest inventions of our time, the diaper service.”

                1. … and he later amended his views on that – but leave it to Greg and his arbitrary ethics to spin the narrative to how he wants, regardless of reality.

                2. I find this whole thread perplexing because, if I recall correctly, you have previously expressed appreciation for the later Rich’s expansive 101 interpretation.

                3. [I]f I recall correctly, you have previously expressed appreciation for the later Rich’s expansive 101 interpretation.

                  You recall correctly. When I started 3.2.1.4.2.1.2, I had meant to begin with the diaper service quote, and then trace his evolution of thought. I mean to still when I find a convenient moment. Today, however, has been a lovely autumn day here in L.A., so family obligations called me from my composition. In other words, 3.2.1.4.2.1.2 is still a work in progress.

                4. You recall correctly…

                  … In other words, 3.2.1.4.2.1.2 is still a work in progress.

                  Sure. Let’s go with that and just pretend that you were not being duplicitous, and got busted.
                  Again.

                  (maybe in your self-administration of psychology you can find something to describe your affliction of not being able to handle any reality that might ‘offend your sensibilities’)

                5. Well Ben, what do you think the chances are that Greg will “complete his thoughts.”… ?

                  Or perhaps apply his Greek to Design patents, or “science” to copyright (I am sure that Big Entertainment – read that as movies and music – are simply waiting for Greg’s reasoning to destroy their copyright empires).

                  Maybe if you ask him politely….

                6. Later in Judge Rich’s career, he had occasion to consider the patentability of software applications that facilitate commercial transactions in State Street Bank v. Signature Financial Group, 149 F.3d 1368, 1373 (Fed. Cir. 1998). There he applied the “useful, tangible, & concrete” test from In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc)—for which Judge Rich also wrote the majority opinion—to conclude that “business methods” are not categorically excluded from patent protection.

                  This might seem like a repudiation of his 1953 remarks, and maybe it was (I am not aware if he was ever asked to square his 1953 remarks with his later jurisprudence), but if so, it was because he was not willing to be lead astray by the “hobgoblin of little minds.” Subject matter eligibility is simply a very poor filter to separate “ἐπιστήμη” from “τέχνη.” If you have enabled a non-obvious utility across the entire scope of your claim, that is a better and more accurate indicator of patentable τέχνη than any amount of blather about “abstract ideas” or “methods of organizing human activity.”

                7. Greg, I see your November 1st post about Judge Rich in 1998 eschewing a blanket dismissal of business methods from eligibility. What else would one expect, given that the EPO by then was busy granting claims to various computer-implemented “business” methods even though the EPC expressly excludes from patent eligibility “methods of doing business, as such”.

                  Bit like “architecture” in my earlier posting. The term, as such, encompasses all of the useful arts, liberal arts and fine arts. Everything depends on what one claims, eh?

                  One thing though: you envisage as sufficient for eligibility/patentability subject matter that is new and useful, not obvious and enabled over the scope of the claim. Would that include, say, claims directed to subliminal methods of advertising legal services? Are such methods to be seen as fine arts or useful arts, neither or both?

                8. talk about willful ig n0r ance,… MaxDrei gleefully engages in his EPO Uber Alles and asserts that Judge Rich based his view on what was happening in EPO land…



                9. Would that include, say, claims directed to subliminal methods of advertising legal services?

                  Ex hypothesi, we are imagining that the inventors disclose in their application a non-obvious solution to a problem with subliminal advertising of legal services that existed in the prior art (such that the invention might be acknowledged “useful”), and have drafted their claim such that it extends no farther than this non-obvious solution (such that enablement can be acknowledged across the full claim scope). Assuming further that the claim is phrased as a series of steps (such that it fits into the statutory “process” category), then yes, this is the sort of τέχνη that the patent laws exist to promote. I do not think that it serves any socially useful purpose to extend the patentability inquiry further than those above considerations.

                10. Good, Greg, a problem in advertising, you write. If I see it right then, the difference between us is that to be patentable for me it needs to be a problem within the field of advertising which is a problem in technology whereas for you any sort of problem suffices.

                  How about architecture? A field in which we find useful arts, liberal arts and fine arts all mixed up. Do you see as patentable the (new, not obvious and enabled) solution to any sort of problem? Is it your view that if the claim is clear and enabled over its full scope then, ergo, its subject matter must be within the ambit of the “useful arts” (so that we don’t ned to bother our heads whether it is technical or not)?

                11. My contention is that if we really are talking about a non-obvious solution to a prior art problem, and if the claim to this solution really is enabled across its whole scope, then we are necessarily discussing a technical solution. One cannot “enable” the full scope of a “non-obvious” solution to an aesthetic problem.

                12. Excellent argument, Greg. You envisage using the enablement filter to weed out unpatentable matter. It makes a change from the EPO’s approach, to use the obviousness filter. Nice one. Bravo!

                13. “‘Judge Rich died in 1999, so he never had occasion to consider smart phone apps”

                  I know right? MM talking about Judge Rich as if he didn’t literally live through the invention of the transistor.

                  Bros, I should just let you guys know, if you like old tech at all, you gotta go see two things if you can. First, the Museum of America Technology display, it’s huge and it’s amazing history of tech, electronic, electronic gear, engines of all types including old school power generators, cars, etc. etc. (literally all EE and Mech E should be required to go in their first year as a field trip it would make their whole education much easier). Second, the battleship North Carolina (now a museum ship but in great condition) in Wilmington NC. Esp if you love battleships, the North Carolina is 1000000% worth the drive. It is absolutely amazing to see it in person, much better than the ga rba ge “preservation” in Houston. What will you see? You will see the engine room (w beast engine), the deck guns, the turrets/turret control area inside the huge turret guns (which I didnt even know existed), deck guns, the armor and where it was armored, Fire Control (how to calculate where to fire the main guns, it’s an OLD SCHOOL analog/outright mechanical computer that is as large as 2x rooms and takes like 8 people to operate, how to drop a shell 25 miles away), the communications room (telephone and radio etc, all old school), all the old school wiring, the bunks, the CONN, the cafeteria/post office/general store/icecream outlet, the food storage/freezer (using literal iceblocks as a “Freezer” but also have a new fangled freshly invented freezer), the magazine (complete with defused shells lifesized), the mezzanine (backup magazine for more shells to drop on Iwo etc lol), the powderroom (see how much they had to store of powder and the kegs/containers), marine’s quarters, the barbershop, the laundry, a lot of other stuff belowdecks, and other stuff up towards the command deck/captains quarters that I never made it to. All of this stuff nearly all in condition as if it practically just shut down yesterday. You will also learn practically the only ways to destroy such a beast. Great stuff both locations for a glimpse into the glory days of judge Rich, in which he no doubt continued to live for the rest of his days just like the rest of us tend to.

                  Trust me, if you like old tech as your jam, you will thank me.

                  Pics related

                  link to tripadvisor.com

  7. 2

    I have a test for you, Prof. Crouch — please update the trend of use of the Jepson claim format.

    Seeing as it is being touted as the number one plank for fixing Examination quality, an updated use trend should provide some compelling validation.

  8. 1

    Speaking of Federal Circuit opinions, I just received a post-Surgisil Office Action from an Examiner. In my response to the Non-Final, I had cited Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334 (Fed. Cir. 2019), and pointed out that the Examiner failed to address the language of the preamble of the claim, and that the prior art cited by the Examiner was not directed to the article of manufacture cited in the preamble of the claimed. The Examiner’s Final failed to respond to the preamble issue, and they sent out a Final three weeks after the Surgisil decision came down.
    I left a message for the Examiner asking them if they were aware of Surgisil, and to reconsider the Final in view of Surgisil. I also left a message for their SPE.
    I got a voicemail from the Examiner that ducked the question and referred me to their SPRE. No response from the SPE.
    Anyone want to bet that the Office is going to try to ignore Surgisil?

    1. 1.1

      Sounds like an excellent time to have a discussion with your client about the advantages of appeal.

    2. 1.2

      Let’s see the claim.

      1. 1.2.1

        Lol — let’s see you address the points on the table without “seeing the claim.”

    3. 1.3

      Do you do a lot of design patent work? I think that I have only ever handled two in my whole career so far.

      Best of luck. Rarely do I ever get anywhere by citing case law to an examiner. Those case cites will likely cut more ice in front of the PTAB.

      1. 1.3.1

        I’ve done a large number of them in relatively recent years. This Office Action was only the second one where I’d received a prior art rejection. 99% were 112 rejections that I overcame or drawing/spec objections.
        Anticipation rejections by the Examiners in design art unit are completely based on case law.

        1. 1.3.1.1

          That is, 99% of the rejections I’ve received have been 112 rejections, and I seldom receive a 112 rejection.

          1. 1.3.1.1.1

            Neither of the two I handled received a single rejection, if you do not count the restriction requirements. Naturally, I will take your word for what is ordinary, as I have scarcely any experience against which to compare.

            1. 1.3.1.1.1.1

              Not having experience by and large does not stop you from commenting there, Greg. Witness your anti-computing arts posts galore.

              By the by, how does design patenting fit into your Greek?

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