Dann v. Johnston, 425 U.S. 219 (1976): Invention as the Absolute Prerequisite to Patentability

In the past 50 years, the Supreme Court has decided about 70 patent cases (depending upon how you count).  One of the least cited is the 1976 case of Dann v. Johnston, 425 U.S. 219, 225 (1976). The case was set-up as a showdown on questions of patent eligibility in the “highly esoteric field of computer technology.”  Id. But, in the end, the court focused on the more mundane question of obviousness — a doctrine it continued to refer to as “invention.”

Johnston was seeking to patent a “record-keeping machine system for financial accounts.”  Basically, this was software installed on a bank-owned IBM 1400 that allowed its customers to categorize their income and expenses for better reporting.

The Patent Office rejected the claims, but the CCPA revived them. That 3-to-2 decision included a narrow interpretation of Gottshalk v. Benson, 409 U.S. 63 (1972), concluding that the case only applied to process or method claims.

The issue considered by the Supreme Court in Benson was a narrow one, namely, is a formula for converting binary coded decimal numerals into pure binary numerals by a series of mathematical calculations a patentable process?

In re Johnston, 502 F.2d 765 (C.C.P.A. 1974). Since Johnston was patenting a system, Benson was deemed irrelevant by the CCPA majority.  Judge Rich wrote in dissent, and argued that the invention was barred under Benson. To be clear, Judge Rich was not a fan of Benson, but he took the Court’s decision as law, albeit warty.  He explained:

As the author of the opinion of this court in Benson, which was wholly reversed, I have not been persuaded by anything the Supreme Court said that we made a “wrong” decision and I therefore do not agree with the Supreme Court’s decision. But that is entirely beside the point. Under our judicial system, it is the duty of a judge of a lower court to try to follow in spirit decisions of the Supreme Court— that is to say, their ‘thrust.’

Id. (Judge Rich in dissent).   Still, the big question was what to take-away from Benson and Judge Rich suggested that the focus should not be limited by the Supreme Court’s wording.

I am probably as much – if not more – confused by the wording of the Benson opinion as many others. What the Court did in its decision … contains a message that is loud and clear. If those claims are not to patentable subject matter, neither, in my view, are the claims here, regardless of difference in form.

Id.  Judge Markey also wrote a dissent that foreshadowed the eventual Supreme Court decision. Markey argued that Johnston’s claims were invalid based upon the prior art and that the eligibility questions should be avoided.

After losing before the CCPA, the government then petitioned for Supreme Court review in the name of Marshall Dann, who was President Nixon’s Commissioner of Patents.  The petition includes three questions:

  1. Whether the Supreme Court’s holding in Benson, that a new idea to be implemented by programming an existing computer is unpatentable when claimed as a new “process,” also applies when the programmed computer is claimed as a new “machine system.”
  2. Whether programs for existing general purpose digital computers, however claimed, are patentable under present law.
  3. Whether respondent’s idea of having banks provide an additional bookkeeping service by programming their computers to sort check and deposit data in accordance with category codes was in any event no more than an obvious improvement over the prior art.

Johnston’s attorney Morton Jacobs drafted the patent application and also argued the case all the way to the Supreme Court (eventually losing).  The responsive brief recategorized the questions in an interesting way:

  1. Whether in the absence of specific congressional exclusion, a special purpose computer machine can be excluded from the general class of machines constituting statutory matters under 35 U.S.C. 101 by reason of its construction with software rather than hardware for its programming elements.
  2. Whether the Patent Office denial of patents for “software” emobidments of special-purpose computers while granting patents to “hardware” embodiments is a denial of equal protection of the patent laws.
  3. Whether an automatic record-keeping machine for all types of small-volume users (e.g., merchants, professionals, farmers) that enables each to use an individualistic record-keeping format and bookkeeping procedure, and that employs, inter alia, a general control for directing the processing operations that are common to most users, which control interacts with and is directed by a master control located in the data files for directing the operations that very with each user, is an unobvious improvement over the prior art.

The unanimous Supreme Court decision was authored by Justice Thurgood Marshall and expressly avoided the questions of patentability of software or computer programs.  Rather, the court found the claims obvious.

The opinion began with a recitation of the doctrine:

As a judicial test, “invention” – i.e., “an exercise of the inventive faculty” – has long been regarded as an absolute prerequisite to patentability. However, it was only in 1952 that Congress, in the interest of “uniformity and definiteness,” articulated the requirement in a statute, framing it as a requirement of “nonobviousness.” . . .

This Court treated the scope of § 103 in detail in Graham v. John Deere Co., 383 U.S. 1 (1966). There, we held that § 103 “was not intended by Congress to change the general level of patentable invention,” but was meant “merely as a codification of judicial precedents… with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability.” While recognizing the inevitability of difficulty in making the determination in some cases, we also set out in Graham, the central factors relevant to any inquiry into obviousness: “the scope and content of the prior art,” the “differences between the prior art and the claims at issue,” and “the level of ordinary skill in the pertinent art.”

Dann v. Johnston, 425 U.S. 219, 226 (1976). In analyzing the claims, the court concluded that it need not find a prior art equivalent to each and every claim limitation.  Rather, the focus of the test is the significance of the differences to one of skill in the art.

[I]t must be remembered that the “obviousness” test of Section 103 is not one which turns on whether an invention is equivalent to some element in the prior art but rather whether the difference between the prior art and the subject matter in question “is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. . . .”

Id. (quoting Judge Markey’s dissent in Johnston).  It is not entirely clear what point the court was making in noting that the referenced prior art were “closely analogous” but not “equivalent.”

[T]he mere existence of differences between the prior art and an invention does not establish the invention’s nonobviousness. The gap between the prior art and respondent’s system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.

Reversed.

Of note, the court’s statement here of the foundations for obviousness from Graham did not include includes secondary indicia such as commercial success.  Later in the opinion, Justice Marshall added a footnote recognizing that their potential relevance in an obviousness analysis.  However, the opinion also reiterated the statement from the checkout-counter case – Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950) – that “commercial success without invention will not make patentability.”  Justice Jackson’s concluding statement in that case may be equally applicable to Johnston: [The patentee had] “a good idea, but scores of progressive ideas in business are not patentable, and we conclude on the findings below that this one was not.” Id.

In the end, Dann v. Johnston is something of a dud, a sloppy reverb of Graham. The key takeaways going forward:

  1. Obviousness does not require equivalence in the prior art.
  2. Patentees are charged with awareness of the prior art, even in fast-moving technologies.
  3. “[E]xercise of the inventive faculty [is] an absolute prerequisite to patentability.”
  4. “[C]ommercial success without invention will not make patentability.”

[Read it here]

93 thoughts on “Dann v. Johnston, 425 U.S. 219 (1976): Invention as the Absolute Prerequisite to Patentability

  1. 14

    Prof Crouch,

    Feel free to correct me, but I have two issues/questions with/about your summation:

    “[E]xercise of the inventive faculty [is] an absolute prerequisite to patentability.”

    “[C]ommercial success without invention will not make patentability.”

    This “inventive faculty” is still the non-obviousness standard, correct? “We hold that respondent’s invention was obvious under 35 U.S.C. § 103, and therefore reverse.”

    Also, the Supreme Court never used “invention” per se as the standard of patentability in Dann as a prerequisite, correct?

  2. 13

    OT tho it is tangentially related to patents as they drive some of the corps involved.

    Here is a thesis/hypothesis NWPA and bros will love. This guy thinks that capitalism has, or is in the process of, evolving out of itself and into essentially a form of technofeudalism. I have to say, what he’s saying makes a lot of sense. And as we all know, all forms of gov (or power) tend towards aristocracy over the long term. Obviously right now it’s a sort of technofeudal-minimedifascist corporate-state environment imo tho.

    link to youtube.com

    1. 13.1

      And as we all know, all forms of gov (or power) tend towards aristocracy over the long term.

      6, this is verifiably false.

      1. 13.1.1

        “6, this is verifiably false.”

        Ok big hoss, name your historical exceptions. None. Over the long term.

        1. 13.1.1.1

          Mine is not a matter of “historical exceptions.”

          Mine is a plain fact that level of aristocratic rule has diminished.

          You may be confusing the term with dictatorial rule.

          1. 13.1.1.1.1

            “Mine is a plain fact that level of aristocratic rule has diminished.”

            That’s simply not true, at all, we simply have a different form of aristocracy these days. And it certainly isn’t true over the long term. What you mean is that formal titular aristocratic formally known rule has diminished in the short term. That obviously is true. But irrelevant. Just because Bush Sr/Jr, Obama, and Trump don’t formally have a noble title doesn’t mean they’re not all aristocracy (obama petite aristocracy through his mother’s side). They are. All ivy educated, most super wealthy. It’s the American Aristocracy. They just don’t have formal titles and parade around in crowns.

            1. 13.1.1.1.1.1

              Your attempt at “Broadest Reasonable Interpretation” is not reasonable for these terms (given how they are used in the art).

              formal titular aristocratic formally known rule has diminished… That obviously is true

              Yes – that is my point.

              But saying that your addendum and follow-ons of:

              … in the short term…

              and

              But irrelevant.

              are false.

              1. 13.1.1.1.1.1.1

                Not false at all. The temporary retreat of the titular positions in some countries is but a tiny drop in the bucket long term. Go ahead and give it 200 years post british/french/ german/spanish rule across almost the whole globe then we’ll see and have a chat.

                And furthermore it is irrelevant as aristocracy is still aristocracy even if they don’t have formal titles derp.

                1. Apparently the comment will not make it out…

                  As I recall, it was along the lines that you are simply attempting to redefine terms that have specific meaning.

                  You do not get to do that.

                  You are also attempting to assert a position that cannot be verified — this let’s wait 200 years post thing.

                  You cannot do that either.

                  Your original assertion simply
                  f
                  a
                  i
                  l
                  s
                  NOW – based on the established meanings of the terms and the existing historical record.

                  (put the shovel down, my friend)

            2. 13.1.1.1.1.2

              “All ivy educated, most super wealthy. It’s the American Aristocracy. They just don’t have formal titles and parade around in crowns.”

              I’m not quite convinced that wealth and a Harvard/Yale degree make one royalty as much an expectation to hold the highest office in the land.

              I would also say that I’m not so concerned with the wealth of an individual before they go into politics as the wealth they gain after.

              Further, Reagan was the last president without an Ivy league education before Biden – who was anything but an Ivy League student

              1. 13.1.1.1.1.2.1

                “I’m not quite convinced that wealth and a Harvard/Yale degree”

                Ivy is a precondition for about a gazillion prezs.

                “as much an expectation to hold the highest office in the land.”

                So a tiny bit soft pre-condition? Where the precondition havers make up a class… known as an “aristocracy” (somewhat more loose than in previous ages).

                Even setting that aside, doesn’t matter, that’s just the US, and then we can talk about the West. Which arguably were nearly the only things worth talking about when most of the readers here were young. But then we can talk about the REST, which is going to be the important part going forward due to massive population changes/gainz.

                “I would also say that I’m not so concerned with the wealth of an individual before they go into politics as the wealth they gain after.”

                Of course not, but you should be concerned with the wealth of the class of people that are just so happening to go into politics.

                “Biden – who was anything but an Ivy League student”

                Biden rode Obama’s Ivy coattails. Reagan was lower “hollywood royalty” iirc before gov.

                1. Of course not, but you should be concerned with the wealth of the class of people that are just so happening to go into politics.

                  THIS of course is a very real problem – but it is NOT limited to those holding office.

                  We have record amounts of Dark Money — across both main parties; in addition to the much higher degree of legislature capture by way of lobbying dollars.

                  This though does not back up your misused terms.

                2. “Ivy is a precondition for about a gazillion prezs.”

                  Joe Biden
                  Ronald Reagan
                  Jimmy Carter
                  Gerald Ford
                  Richard Nixon
                  LBJ
                  Eisenhower
                  . . .

                3. “Joe Biden
                  Ronald Reagan
                  Jimmy Carter
                  Gerald Ford
                  Richard Nixon
                  LBJ
                  Eisenhower”

                  Right, obama ridin obama’s ivies.
                  Ronald hollywood miniroyalty
                  Carter and beyond – ANCIENT.

                  Tending towards aristocracy. Burpa derpa.

  3. 12

    Totally off topic, but I thought that this story might be of interest to those who have not yet seen it. I pass it along for whatever little it might be worth.

    link to nytimes.com

  4. 11

    Dennis, the “equivalent” point refers to the (obsolete) substantial novelty standard, which is different form the nonobviousness standard – so your takeaway #1 is correct.

    1. 11.2

      Dear Dr. K,

      I’m a bit mystified by your mention of the “substantial novelty” standard. To my knowledge, it’s never been part of the U.S. patent system.

      Was this the standard pre-Hotchkiss?

  5. 10

    The obvious question is why wasn’t Alice just proclaimed by the Nine as obvious?

  6. 9

    The obvious question is why wasn’t Alice just declared (proclaimed by the mighty and all powerful wankies ) as obvious like this one?

  7. 8

    The Supreme Court: “Patentees are charged with awareness of the prior art, even in fast-moving technologies.”

    Yet another reason that “unconventionality” is an illegal litmus test for anything to do with patentability. When something is taught in the prior art, it’s taught. That’s the end of it unless the teacher applies for a patent application. It doesn’t matter if it’s “unconventional” the day after publication or 10,000 days after. It’s taught and it’s part of the prior are, and that’s all that matters as far as the patent system is concerned.

    1. 8.1

      Perhaps you can be more clear as to the explicit conditions for which you feel this “unconventionality” is being used “illegally” in regards to patent law.

      Chances are you are confusing and conflating different sections of law, but let’s give you the benefit of a doubt and see what you really mean.

    2. 8.2

      Yet another reason that “unconventionality” is an illegal litmus test for anything to do with patentability.

      The Supreme Court has never used conventionality to mean anything other than “not novel” – there is no heightened requirement in any Supreme Court case. The only discussion of conventionality in Alice was to negate an implication that computer implementation advanced the art of computers. Patentee had suggested at oral argument that they had disclosed valuable computer-improving information, while defendant responded that those disclosures were related to other subject matter and not the subject matter of the claims.

      Well-understood, routine and conventional came from Mayo, which was citing Flook. Flook explicitly stated the factual basis as “For the purpose of our analysis, we assume that respondent’s formula is novel and useful and that he discovered it. We also assume, since respondent does not challenge the examiner’s finding, that the formula is the only novel feature of respondent’s method.” All usage of “conventional[ity]” in that decision are simply stand ins for being not novel. In fact, the term appears to have originated not with the Supreme Court but with the rejecting Examiner, since the CCPA’s decision states: “The examiner stated that, while the claimed invention is clearly a method useful within the technological arts, the only part of this claimed invention which is not conventional is the particular algorithm used to adjust the alarm value.” So the notion that there is some specialized legal meaning to the term is entirely off base.

      But if there’s a position that’s entirely off base you can be assured that the FC will hold it. It’s only the federal circuit and the PTO that created a higher standard for conventionality beyond anticipation. The relevant line in Berkheimer (“Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.”) has no citation to it because there was no previous citation for it.

      It’s not like there’s a lot of cases here, it’s not hard to track the usage of the word. Your argument is correct but your complaint is mistargeted.

      1. 8.2.1

        RG, my complaint was about the Fed Circuit’s (and the PTO’s) unsupportable test (which will disappear as soon as it is challenged by a competent attorney). I should have made that more explicit but those were definitely the intended targets.

      2. 8.2.2

        Parse a claim much?

        (Take it as a whole, as at times, it is the combination rather than any parseable element that counts)

        See the “three resistors” example.

  8. 7

    “Can a special purpose computer machine be excluded from the general class of machines constituting statutory matters under 35 U.S.C. 101 by reason of its construction with software rather than hardware“

    Note first that “hardware” which is not structurally distinguished from prior art “hardware” is certainly excluded from patentability (unless the judge wants to invent a special exception for “hardware” out of thin air … which would be the worst thing ever, right?).

    Second, given that software is instructions without any defined structure, excluding a computer comprising instructions would logically follow the same (reasonable) path that is used to exclude “particular” “specific” “special purpose” “new” books that comprise non-obvious instructions. Unless of course the judge wants to create a special exception out of thin air for “instructed” computers.

    Third, just another friendly reminder that data processing and logic are ineligible subject matter on their own terms and pretty much every reasonable normal person is totally happy about that.

    1. 7.1

      “Third, just another friendly reminder that data processing and logic are ineligible subject matter on their own terms and pretty much every reasonable normal person is totally happy about that.”

      I would respectfully say that you’re 100% in error. Even the Bilski and Alice decisions said differently.

      Also, what are Enfish v Microsoft and Berkheimer v. HP if not affirmations that “data processing and logic” are patent eligible

      1. 7.1.1

        B,

        Just in case you were not aware of it, “The Prophet” is Malcolm Mooney, who simply will not listen to any reason outside of his tiny bubble and his aged, decrepit script.

        1. 7.1.1.1

          That explains a lot

          1. 7.1.1.1.1

            It does.

            We were all blessed with a respite from about February of 2020 through somewhere around May-June of 2021 when Malcolm had disappeared completely.

            I was the one that noticed his return (at first, under a variety of s0ckpuppets). But much like I revealed his past s0copuppetry over at Patent Docs (after he had complained about such a tactic as “being the worst thing ever” here), it is very easy to identify Malcolm’s tactics and short script, which he has once more fully embraced with apoplectic vigor.

  9. 6

    “granting patents to “hardware” embodiments is a denial of equal protection of the patent laws.“

    Easily the dumbest thing I will read this week until someone writes an even dumber thing in the comments.

    1. 6.1

      ^^^ (too late)

  10. 5

    Judge Rich was not a fan of Benson, but he took the Court’s decision as law, albeit warty. He explained… [that “u]nder our judicial system, it is the duty of a judge of a lower court to try to follow in spirit decisions of the Supreme Court… [.”]

    Prof. Crouch, are you trying to make both Ben’s & anon’s heads explode? There will be brains scattered all across the screens of computers today.

    1. 5.1

      I was going to post something quoting that same section along the lines of “This is to Rich’s credit”, but got distracted.

      I’m not sure why this would blow my brain, or even increase my blood pressure. I don’t find him an admirable player, but I have no difficulty seeing him as playing by the rules of the game or otherwise being being capable of decent behavior.

      1. 5.1.1

        Fair enough.

        1. 5.1.1.1

          Fair enough

          Fair enough for what?

          For playing Patty-cake?

      2. 5.1.2

        Ben >>> referring to J. Rich “I don’t find him an admirable player, …”

        W a n k i e what is your evidence for this?

        Nothing could be farther from the truth as J. Rich was always a straight shooter and framed modern patent law.

    2. 5.2

      Meh, Greg, all he is doing is pointing out stare decisis.

      This is of course a different duty for those who are sworn attorneys. The offer is still open for me to help you out in understanding that if you want to share what State you took your attorney oath in.

  11. 4

    J. Rich would be saying the same thing about the rationale behind virtually every SCt 101 case, “I am probably as much – if not more – confused by the wording of the [fill in the blank] opinion as many others.”

    1. 4.1

      +1

  12. 3

    Was there any specific algorithm or actual software in the subject rejected application, which was Serial No. 624,741, filed March 21, 1967 [per the CAFC decision below]? As noted by WT below, how difficult and/or unobvious the programming of the desired result is on a general purpose computer could logically be relevant to a 103 decision, as here, [and 112 requirements?] but how is that to be known with no disclosed spec support?

      1. 3.1.1

        Thanks! Wow, more than 80 spec drawing figures of what looks more like a specialized hard-wired computer system, not software or computer programing of any general purpose computer.
        [Maybe another reason this case is rarely cited?]

        1. 3.1.1.1

          … you are aware of course that the choice of wares in the computing arts is met by equivalence (and for the peanuts in the gallery, that is just not the same meaning as “exactly the same”).

          What can be done in hardware can be done in software or firmware and in most all cases vice versa.

          Why are you pretending otherwise, Paul?

          1. 3.1.1.1.1

            Not in 1967.

            1. 3.1.1.1.1.1

              Not correct, BobM.

              Just because something was not being done in 1967 does not mean that it could not be done.

              (Maybe you want to revisit Big Blue’s COLOSSAL error of the timeframe, or the quote of “No one would ever want their own personal computer”)….

  13. 2

    Ah, the 1970’s. What a decade that was, for progress in patent law. It started with the emergence of the PCT, and its subsidiary, the EPC, both requiring for the recognition of patentability an “inventive step” between the state of the art and the claim, both by the way explaining “obvious” as being the antonym of “inventive”.

    But in these 1970’s cases we already see shocking confusion over eligibility. From Great Atlantic, we have this:

    “…scores of progressive ideas in business are not patentable, and we conclude on the findings below that this one was not.”

    even though the subject matter before the court was a clever new supermarket check-out station mechanical conveyor belt arrangement. So, in the world of patent law, nothing new under the sun and what goes around comes around.

    1. 2.1

      Court muckery is certainly not new.

      Quite in fact, it was that very same type of Court muckery (can you say, “The only valid patent is one that has not yet appeared before us“) that prompted Congress to get off their duff way back in 1952.

  14. 1

    Interesting take. I actually think Dann v. Johnston is (or before Bilski/Alice was) one of the most important cases on computer software patentability, as I’ve written in various patentable subject matter articles. The notion that it is obvious to easily implement on a computer something that is already known in paper has a profound effect on how we should think on computer inventions, and takes care of, IMO, at least half of the earliest patents that were rejected under Alice.

      1. 1.2.1

        Reminds me of Knuth’s description of the first time he tried to write a random number generator on a computer. It cycled through 5 numbers.

      2. 1.2.2

        I LOVE that one. And I think of it every time my wife uses her AI bird identifier app (or Google Photos, for that matter)

      3. 1.2.3

        It is interesting to think about the fact that creating software that can identify birds took like five decades of research by many people with IQ over 170 and I think that the AI programs now are not so obvious in how they work nor was it obvious that these types of solutions would ever work.

        Just incredible the ignorance of the judges and most of the academics. It is strange the way they act like 5 year old children who have no appreciation of for the complexity of the technology they use nor of the many 1000s of people that attempted to get these information processing methods working and failed.

        1. 1.2.3.1

          Most of these people are either willfully ignorant or they are simply ignorant and filled with self importance that they think they can judge the merits of these inventions without understanding the inventions beyond very high-level abstractions. I remember listing to Justice Ginsburg talk about computers. It was a f’ing joke. She talked about imaginary worlds in the computers and seemed to chalk it all up to the spirit world. It was just bizarre.

          And yet the professors that post on here are generally in this category.

          1. 1.2.3.1.1

            But whether it is technically difficult to program a bird spotting AI program is largely beside the point when a patent claims “a method for identifying birds in pictures, comprising: taking a picture, using a process to evaluate the picture, and using the processor to determine the presence or absence of birds,” and when the specification fails to disclose any new computer hardware or particularized software. A claim like that is INVALID PER SE.

            1. 1.2.3.1.1.1

              If a patent came up with a real algorithm (or processor) to automatically spot birds, they should easily be able to write claims that pass the threshhold Section 101 test. But when you try to claim a method of doing so using off the shelf computers, without claiming or even describing the secret sauce algorithm, your claims are invalid. A judge doesn’t need to know virtually anything about computer science to come to this conclusion.

              1. 1.2.3.1.1.1.1

                >>Litig8or

                What a long string of strawmen. Having fun?

              2. 1.2.3.1.1.1.2

                Absolutely correct, Litigator.

                Saved for another day: the even more ridiculous idea of patenting “non-obvious” “AI” for “identifying a bird”, where nobody can articulate with specificity what logical operations the computer is doing differently as compared to what was done in the prior art.

            2. 1.2.3.1.1.2

              The Ends do not justify the Means.

              Your statement of “PER SE” is simply false.

              It may
              F
              A
              I
              L
              Under one of more sections of law, but you just don’t get to cry out “PER SE.”

    1. 1.3

      one of the most important cases on computer software patentability
      I’ve been doing this for decades, and I don’t recall its citation anywhere. Doesn’t mean it hasn’t been, but its usage has been exceptionally minor. Not cited = not important.

      The notion that it is obvious to easily implement on a computer something that is already known in paper
      This “notion” (i.e., belief) perhaps may be shared by some justices. However, it should not be a universal belief. Some things are easier than others. Moreover, how something is claimed should matter. Take, for example, the very simple “cut and paste” function familiar to anybody who has every used a computer. Cutting and pasting from paper requires scissors (for the cutting) and paste (for the pasting). At the time when documents were merely strings of text without anything else, how can that desired “result” be implemented?

      How does text get selected on a computer? Mind you, this function preceded the mouse.
      How do you indicate to the computer that this text needs to be cut?
      How does the computer perform the cutting function?
      How do you indicate to the computer that the text needs to be placed in a particular area?
      How does the computer perform the pasting function?
      What happens when you make a mistake? Can you undo it?
      What happens when you decide that you don’t want to paste after you’ve already cut?

      These are all things that we take for granted today, but required inventiveness and a good understanding of how a computer works (under the hood) to implement. Had someone patented the steps that made this function, would this have been obvious? (i.e., “it is obvious to easily implement on a computer something that is already known in paper”). Should this invention be deemed to be patent ineligible? I think not to both questions.

      On the other hand, solving an equation using a computer is trivial (and obvious) when the same equation can be solved by hand.

      As such, I would caution against making sweeping generalist statements (i.e., “it is obvious to easily implement on a computer something that is already known in paper”) that do not necessarily reflect reality.

      has a profound effect on how we should think on computer inventions
      You state that a “notion” has a profound effect on how we should think. Again, a notion is a “belief.” You would be correct is saying that a belief has a profound effect on how we think. However, I think you need to eliminate the “should.” A better statement would be facts/logic have a profound effect on how we should think.

      Better yet, the language of the statute should have a profound effect on how that statute should be interpreted. God forbid — we know that SCOTUS isn’t going down that path.

      1. 1.3.1

        +1

        Now if we can just get you, anon, night writer, Bud Mathis. Paul Morinville, Josh Malone, and Gene Quinn on SCOTUS or the CAFC . . .

        1. 1.3.1.1

          +2

          Plus, I’ve read Benson many times…and still have no idea what it’s saying. For instance, Benson seems like it involves hardware:

          Claim 8 reads:

          “The method of converting signals from binary coded decimal form into binary which comprises the steps of—

          “(1) storing the binary coded decimal signals in a reentrant shift register,

          “(2) shifting the signals to the right by at least three places, until there is a binary ‘1‘ in the second position of said register,

          “(3) masking out said binary ‘1‘ in said second position of said register,

          “(4) adding a binary ‘1‘ to the first position of said register,

          “(5) shifting the signals to the left by two positions,

          “(6) adding a ‘1‘ to said first position, and

          “(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1‘ in the second position of said register.”

          Would this have been helped by being couched in hardware?

          Hard to say, and it doesn’t matter anyway, since all we need now is an “abstract idea”, and the type of claim therefore is meaningless.

          1. 1.3.1.1.1

            The reentrant shift register was gisted away.

            Important historical fact: Douglas was the mentor to Stevens (who was the mentor to Sotomayor).

            Stevens lost his majority position in Bilski when he tried too hard to rewrite the direct words of Congress.

            The anti-patentists posting today are still wanting the Douglas/Stevens rewrite as opposed to the actual words of Congress.

          2. 1.3.1.1.2

            Some of the claims of Benson would get allowed today. They would have been allowed both pre-Alice and post-Alice. The Supreme Court had little idea what was being claimed or what it did. They just saw an equation and threw up their hands. It didn’t help that Douglas, who wrote the decision, was a bit wacky.

            Another interesting thing is that only 6 justices took part in the decision. Regardless, it is a horrible decision from which this entire line of horrible jurisprudence flows.

            1. 1.3.1.1.2.1

              Actually, Wandering, Benson was basically written by the head of the IP department at the DOJ. He went to law school with Douglas and Douglas basically just adopted the brief from the DOJ.

              I’ve spent many hours arguing with said person regarding Benson. My conclusion is that said person knows it was nonsense and the point was an attempt to exclude “software” from eligibility for good. That was what it was all about. J. Rich even said as much as well.

              1. 1.3.1.1.2.1.1

                I do remember your past discussions directly on that point.

      2. 1.3.2

        This “notion” (i.e., belief) perhaps may be shared by some justices. However, it should not be a universal belief. Some things are easier than others. Moreover, how something is claimed should matter. Take, for example, the very simple “cut and paste” function familiar to anybody who has every used a computer. Cutting and pasting from paper requires scissors (for the cutting) and paste (for the pasting). At the time when documents were merely strings of text without anything else, how can that desired “result” be implemented?

        How does text get selected on a computer? Mind you, this function preceded the mouse.
        How do you indicate to the computer that this text needs to be cut?
        How does the computer perform the cutting function?
        How do you indicate to the computer that the text needs to be placed in a particular area?
        How does the computer perform the pasting function?
        What happens when you make a mistake? Can you undo it?
        What happens when you decide that you don’t want to paste after you’ve already cut?

        Good point. I agree—in the main—with all of this. Of course, precisely because the “how” of all these functions are not always obvious, it is important that the “how” be claimed with particularity if it will satisfy §112. “A processor configured to cut and paste text” will not satisfy §112, unless the “how” of cutting and pasting really is obvious.

        1. 1.3.2.1

          ““A processor configured to cut and paste text” will not satisfy §112, unless the “how” of cutting and pasting really is obvious.”

          Are you trying to stir the pot by using 103 words in a 112 context?

          1. 1.3.2.1.1

            Less stirring the pot and more confusing and conflating.

            In other words, Greg being Greg.

            He does like to display his ig n0r ance of the computing arts.

        2. 1.3.2.2

          “A processor configured to cut and paste text” will not satisfy §112, unless the “how” of cutting and pasting really is obvious.
          I prefer the term “enabled” rather than “obvious.”

          A claim to a processor configured to cut and paste text should not be deemed patent ineligible. Instead, I would rather see such a claim invalidated as not being enabled — assuming that this happened sometime in the early 70s and how this function could be performed was not known to those skilled in the art or discussed in the specification.

          The problem with past some of these so-called “eligibility” decisions is that they were addressing enablement more than eligibility. The grand-daddy of them all is O’Reilly v. Morse. It is held out as an eligibility decision (and was subsequently relied upon in Benson), but I see it more as decision touching upon enablement.

          1. 1.3.2.2.1

            Agreed on all points.

      3. 1.3.3

        Those questions would possibly be relevant, if any of it was recited in the claims. For example, if the claims actually specified “How does text get selected on a computer” then they might have been patentable. Instead, the claims are the typical “do it on a computer” generalities that are ineligible. A patentee can try to cover any and all ways of performing a function on a computer, but the penalty for pursuing such broad claim scope is that it probably is ineligible without more specificity.

      4. 1.3.4

        So, Dann v. Johnston was cited 100+ times, almost exclusively before Diamond v. Diehr made it obsolete by quasi-reversing Parker v. Flook.

        As to the rest, you’ll get no quarrel with me, but your argument proves too much. Dann v. Johnston stands for the notion that if you automate a process that was known using known methods, it’s probably obvious. Nothing you’ve argued changes that. All of your examples discuss automation of processes using unknown methods. Indeed, your examples are proving my point – the dividing line on patentability should be exactly this question, and not how it is being done today.

        1. 1.3.4.1

          So, Dann v. Johnston was cited 100+ times, almost exclusively before Diamond v. Diehr made it obsolete by quasi-reversing Parker v. Flook.
          Which means almost no citations over the past 40 years (Diehr was decided in 1981).

          Dann v. Johnston stands for the notion that if you automate a process that was known using known methods, it’s probably obvious.
          I don’t think anybody is going to dispute the idea that the automation of a manual process by known means is obvious.

          the dividing line on patentability should be exactly this question, and not how it is being done today
          I don’t disagree there either. However, it should be based upon a condition for patentability (i.e., 103) — not 101.

          1. 1.3.4.1.1

            Yes, that was my initial point.

      5. 1.3.5

        I don’t disagree with your point that it is not always easy to implement a previously known process.

        But as a rule-of-thumb, I don’t think “implementing known processes on a computer is easy” is wrong. Every specification that doesn’t explain implementation reinforces that heuristic. And at least in the areas I’m familiar with, those that explain implementation are vastly outnumbered by those that don’t.

        1. 1.3.5.1

          Every specification that doesn’t explain implementation reinforces that heuristic.
          We are getting to the point that we have stopped patenting things that have been done manually that are now being done with computers. Rather, the claims I’m seeing involve things that have never been done manually.

          In these instances, the specification typically involves a non-obvious combination of known functions to solve a particular problem. With that in mind, there is no need to describe how to make those functions work. For example, suppose I’m claiming a new automobile engine that happens to have a cooling system with the cooling system not being novel whatsoever, In this instance, I don’t have to, in the patent specification, spend any time discussing how to implement the cooling system. People already know how to implement cooling systems in automobile engines.

          1. 1.3.5.1.1

            “Rather, the claims I’m seeing involve things that have never been done manually.”

            That’s great for you, but people are still claiming automating preexisting processes.

            >I don’t have to, in the patent specification, spend any time discussing how to implement the cooling system.

            I don’t have a problem with this. I agree it makes sense to not waste time describing what is known.

            What’s ridiculous is for applicant to rely on something being known for the purposes of 112, while also relying on it being unknown for the purposes of 102/103.

            1. 1.3.5.1.1.1

              while also relying on it being unknown for the purposes of 102/103.

              I do believe that you are confusing an item and a combination of items….

            2. 1.3.5.1.1.2

              Compare and contrast:

              Two groups of three (known individual) resistors.

              Place the first group of the (known individual) resistors in series.

              Place the second group of (known individual) resistors in parallel.

              Is the collection of the first group the same, or even equivalent, to the collection of the second group?

              Now instead of merely resistors, think of electrical switching gates.

              Now instead of merely two sets of three, think of millions of sets of millions.

              Or, if you are musically inclined, think of the vast multitude of musical score composed of the 12 musical notes out there.

              Or even better yet, consider all of the matter of the universe, and that this is basically composed (in all of its splendid diversity) of three basic fundamental units of the proton, neutron and electron.

              For Biden and Harris, you can even think of having a Big Box of Electrons, Protons, and Neutrons (and ask Malcolm how many times I have used that example in holding his hand and explaining patent law to him).

            3. 1.3.5.1.1.3

              That’s great for you, but people are still claiming automating preexisting processes.
              I don’t see it. Haven’t seen stuff like that for a long time. Even the worse stuff I’ve seen — and I’ve seen some bad stuff transferred to our firm in the hopes that it can be saved — aren’t that bad.

              What’s ridiculous is for applicant to rely on something being known for the purposes of 112, while also relying on it being unknown for the purposes of 102/103.
              No good patent attorney is going to make that argument. Or draft a patent application that puts himself into that position. As always, the actual facts make a difference. Until I actually see something like that, it is always difficult for me to believe it actually exists in the wild — as opposed to some mind experiment.

              1. 1.3.5.1.1.3.1

                “ No good patent attorney is going to make that argument. ”

                Thanks for admitting that there are no good patent attorneys in the softie woftie “arts”.

                But we already knew this.

                1. Are you purposefully so dense to think that your attempted spin does not paint YOU as a disingenuous
                  M
                  O
                  R
                  O
                  N,
                  Malcolm?

                  You don’t have a ‘peak’ of Mount
                  S
                  T
                  U
                  P
                  I
                  D,

                  You have an entire mountain range.

              2. 1.3.5.1.1.3.2

                “ Until I actually see something like that, it is always difficult for me to believe it actually exists in the wild — as opposed to some mind experiment.”

                Translation: “I was born yesterday.”

              3. 1.3.5.1.1.3.3

                How fortunate for you that you live in Lake Wobegon.

                1. WT is really no different than the totally brainless “Pro Say.” It just uses more words to spew the same reality-denying, ultra-whiny, persecution-complex crud on behalf of awful patents that we’ve seen here since forever.

    2. 1.4

      Who is PHOSITA with information inventions is an interesting question. Ordinary skill in computer programming, or ordinary skill in the art being digitized, such as metallurgy or stock trading? Do we assume brokers are also coders? Might the location of the invention vary from the computing arts to the art being digitized? hmmmmm

    3. 1.5

      I’ve been arguing for YEARS about this. Alice Corp. and Bilski should have been addressed under 103

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