37 thoughts on “Ongoing use of the Machine-or-Transformation Test?

  1. 12

    MoT and TSM are abandoned. I don’t think I have seen either of those phrases used since the Scotus took a giant dump on them.

  2. 11

    The take-home ftom the survey is that Dennis’ readers have no clue what the MoT is, why it exists, or how it is properly applied. Golly, how did we get to this place. It’s such a huge mystery.

    Look at it this way: how many instances can you recall of a process claim being deemed ineligible where that process recited either a (1) a non-obvious machine, where the machine is described and distinguished from prior art machines in structural terms; or (2) the process includes at least one step wherein a non-obvious transformation of matter is effected?

    The answer is “zero or close to it”. So the test provides some huge “clues” if it’s applied properly.

    1. 11.1

      The take-home ftom the survey is that Dennis’ readers have no clue what the MoT is, why it exists, or how it is properly applied

      Pot, meet kettle – as YOU certainly doe not appreciate the full scope of what that phrase means (and what it cannot legally mean).

      But I have only been correcting you on this explicit matter for over a decade now, so why let your own ig n0r ance get in the way of your rant?

      1. 11.1.1

        “ YOU certainly doe not appreciate the full scope of what that phrase means (and what it cannot legally mean).”

        Dennis, since you are the only one here who has been reading anon’s bilge longer than I, perhaps you can tell everyone here what he is talking about.

        1. 11.1.1.1

          Nice attempt at deflection, Malcolm.

          But the point is that YOU don’t know what you are talking about.

  3. 10

    It certainly makes a difference in the divide between treatments and mere diagnostics.

    1. 10.1

      Mike,

      Can you explicate what innovation protection differences you may be seeing between “treatments” and “mere diagnostics?”

      Are you indicating that innovation along diagnostics should not be protected?

      1. 10.1.1

        That’s the situation we’re already in due to cases like Ariosa and Cleveland Clinic.

        My opinion doesn’t count. 🙂

        1. 10.1.1.1

          All kinds of diagnostic tests that pass the MoT are eligible for parenting.

          Except for a tiny tiny number of self-absorbed patent attorneys and grifters, no reasonable person believes that we should be handing out twenty year monopolies on medically relevant facts, or logical processes leading from data obtained by old methods to treatments using old techniques/chemicals.

          Get yourself off the patent crack.

          1. 10.1.1.1.1

            Everything you said is consistent with what I said.

            If you want to add some pointless toxicity, go to reddit.

            1. 10.1.1.1.1.1

              I didn’t add any pointless toxicity. I just explained the reality of “patenting diagnostics” to you. Grow up.

              1. 10.1.1.1.1.1.1

                Grow up.

                Says the least grown-up person to EVER post on this blog….

                Stultifying.

                (let’s check, yep – still there: link to patentlyo.com )

        2. 10.1.1.2

          The “situation” vis a vis Cleveland Clinic (by the way, also denied after having Continuation claims written PER the USPTO guidelines – before the 2019 Patent Eligibility Guidance) is an example of an abhorrent MESS.

          And true, your opinion doesn’t count, but that does not relieve attorneys of their sworn obligation not to put one branch of the government ahead of the Constitution. We still have an ethical responsibility to voice that opinion (even if it does not “count”).

  4. 9

    I don’t think I got process claims allowed that were not linked to MoT. My experience is that Examiner consider that MoT is necessary, but not sufficient.

    1. 9.1

      That sounds right to me. It jibes with my experience.

    2. 9.2

      “I don’t think I got process claims allowed that were not linked to MoT.”

      Only happens if you have an incompetent examiner.

      And yet most of Dennis’ “followers” are totally clueless about this. Go figure.

  5. 8

    I think it went the way of the Dodo bird and preemption. Unfortunately.

    1. 8.1

      “Preemption” seems to have disappeared, certainly.

      Although it is a bit of a dazzling display of “logic” there by the Court, seeing as that is what ALL claims do: preempt what is claimed.

      1. 8.1.1

        You have done nothing here for years except avoid understanding what “pre-emption” in the 101 context was about, and kick up confusion and dust regarding what pre-emption was about.

        1. 8.1.1.1

          Ah yes, the standby from Malcolm of
          Accuse
          Others
          Of
          That
          Which
          Malcolm
          Does

          z.z.z.z.z.z.z.z.z

        2. 8.1.1.2

          …but by all means, let’s hear you explain what exactly has been meant by preemption, and how the fact that ALL claims (by definition) preempt something ties into that.

          The floor is yours to show that ‘wisdom.’

          The chances of YOU actually explaining something like this in a cogent manner?

          “Zero” would be a high estimate.

  6. 7

    “Bilski said the MoT was not dispositive but not useless.”

    KSR said the same thing about TSM. Overall, how useful has TSM been to patent prosecutors since KSR came down when dealing with Examiners? In my experience, Examiners give it little or no weight, and I would hazard a guess that patent prosecutors have had similar experience with MoT post-Bilski.

    1. 7.1

      “In my experience, Examiners give [teaching, suggestion or motivation to combiner in the prior art] little or no weight”

      Pretty sure this is a lie and my god what a stupid and pointless lie.

      1. 7.1.1

        I think the proper understanding is “in my experience, Examiners give *the absence of an explicit* [teaching, suggestion or motivation to combine in the prior art] little or no weight,” which is certainly true.

  7. 6

    Look at it this way: how many instances can you recall of a process claim being deemed ineligible where that process recited either a (1) a non-obvious machine, where the machine is described and distinguished from prior art machines in structural terms; or (2) the process includes at least one step wherein a non-obvious transformation of matter is effected?

    The answer is “zero or close to it”. So the test provides some huge “clues” if it’s applied properly.

    1. 6.1

      Sounds like you want the item that all nine Justices rejected (In re Bilski at the CAFC level).

      There is an explicit reason why Justice Stevens lost his majority position and wrote a dissent named as a concurrence.

      And it’s not like you haven’t been told this for over a decade now.

    2. 6.2

      As a policy matter, I would gladly accept that (1) a non-obvious machine, where the machine is described and distinguished from prior art machines in structural terms; or (2) the process includes at least one step wherein a non-obvious transformation of matter is effected.

      It’s not going to happen. What untold tsuris remains as a result? Much, for sure.

    3. 6.3

      ” So the test provides some huge “clues” if it’s applied properly.”

      I’m not even sure how people can question this. It’s so blatantly true, the amount of mental gymnastics required to even try to get around it is ridiculous.

      1. 6.3.1

        It is FAR less “get around” and FAR more “understand the difference between a clue and a requirement.”

        The word “test” is unfortunate, as it is taken as a requirement. Congress provided NO such requirement, and any “re-writing” to insert one would be (literally) the Court writing their own version of patent law – legislating from the bench.

        Malcolm is all about “any Means to his desired Ends.”

  8. 5

    “Does MoT still offer a “a useful and important clue” as to whether a claimed invention is patent eligible under Section 101?”
    Supreme Court: Yes
    Federal Circuit: No
    USPTO: Rarely

    1. 5.1

      “USPTO: Rarely”

      That’s not true, most cases still go through the USPTO without any question fo 101, because, derp derp, there was a solid MOT present at the get go.

      1. 5.1.1

        It is trivial to draft a patent *ineligible* claim that nonetheless effects a transformation of matter or involves the use of a particular machine. So “having a solid MOT present” is not enough, on its own.

        For example: A method for transforming a chemical state of a neuron from a first state to a second state, comprising: thinking, using the neuron in the first state, about pink elephants; whereby the chemical state of the neuron is transformed to the second state as a result of the thinking. Transformation of matter? Absolutely, and it’s explicitly in the claim. Ineligible? Certainly.

  9. 4

    To first define what the test was or is, to start a discussion on that here is the opening of the Wikipedia entry for it: “the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if it (1) is implemented by a particular machine in a non-conventional and non-trivial manner or (2) transforms an article from one state to another.[1]”
    {P.S. Later on on that Wikipedia site it is interestingly argued that Alice has essentially replaced it with preemption [step 2 of the abstraction test.}

  10. 3

    “Does MoT still offer a “a useful and important clue” as to whether a claimed invention is patent eligible under Section 101?”

    Sadly for innovation, this is one clue most of the CAFC gives little if any weight to . . . merely pays lip service to . . . or ignores entirely.

    Mr. Magoo would be proud:

    link to en.wikipedia.org

  11. 2

    Perhaps the question could be rephrased to have people understand the difference between something that provides a clue and something that is a test that needs to be met to proceed.

    After all, that is the one point that all nine Justices agreed upon in overturning the CAFC’s In re Bilski’s decision.

  12. 1

    We can assume that each district judge has their own ideas about 101, ranging from never thought about it and don’t care, to the kind of zealotry some of us here share for their views about it. Each patent arrives de novo, ready to be run thru the mill. If the patent finds its utility via some chemical or mechanical change, and the judge intuits that as important, that’s the MoT, regardless of the formality or awareness of applying that test.

    Bilski said the MoT was not dispositive but not useless. IOW, a punt. They didn’t want to go there because the utility of information befuddles the MoT test.

    It need not.

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