Ineligible Subject Matter: 35 USC 101 Finds its Teeth (Biting into Nonobviousness)

In re Comiskey (Fed. Cir. 2007); and
In re Nuijten (Fed. Cir. 2007)

• Comiskey’s patent application claims a method of arbitrating that does not necessarily require the use of any ‘technology.’
• Nuijten’s patent application claims a signal containing a ‘watermark’ without being tied to a specific type of signal or any technology.

Both applications have been denied by the Federal Circuit under 35 U.S.C. Section 101 for their failure to claim patentable subject matter.

The scope of patentable subject matter is defined by Section 101 as any “new and useful process, machine, manufacture, or composition of matter.”  Any patent claim must fall within at least one of these categories.  Further limiting these categories is our precedential history that not every new and useful process constitutes patentable subject matter. See, for example, Flook & Benson.  In particular, the Supreme Court has noted that a process claim reciting an algorithm must either be (1) tied to a machine or (2) transformative of some composition of matter or device. Flook & Diehr.

Under these precedents, a claim that includes a mental process may be patentable — so long as it is otherwise tied to ‘reality.’

Comiskey: The Comiskey method of claim 1 admittedly does not require a machine, but it does require interaction with a ‘document.’  The reference to a document, however, was not enough to allow the “mental process” claim to be treated as legitimate.

“Thus, like the claims that the Supreme Court found unpatentable in Benson and Flook and the claims found unpatentable in our own cases, Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent “a novel way of conducting auctions” which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable.”

Some of Comiskey’s claims arguably require a computer to operate through “modules.”  That claim construction transforms those claims to be patentable subject matter.  This means that software remains patentable subject matter if a computer limitation is a proper part of the claim.

Section 101 is Safe: Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision.  For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope.  Under Comiskey, there is no requirement that the technical link be something novel or non-obvious. 

Section 103 is Lost: Although the question of patentable subject matter does not require a determination of nonobviousness, the reverse is not true.  Nonobviousness may now require an input from the patentable subject matter stage. The most interesting lines of Comiskey are as follows:

“The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.

Nuijten: The Nuijten court bit off a bit more — finding that a signal is not patentable even if tied to a transitory form (such as a radio broadcast or light pulses in a fiber optic cable).  The problem - the court could not fit a ‘signal’ into any of the four categories:

• Process: Process is defined in Section 100 as a “Process, Art, or Method.” The ‘art’ term appears on its face different than a typically process — especially based on the constitutional statement of “useful arts.” However, the CAFC refused to expand the meaning of process to include items that do not require an action. Thus, a signal is not a process.
• Machine: The Supreme Court has defined a machine as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr (1863). Under this definition, a signal is not a machine.
• Manufacture: The court limited a manufacture to an “article” produced by man. According to the court, an ‘article’ is not transient and cannot exist in a vacuum — both qualities of a signal. Thus, a signal is not a manufacture.
• Composition of Matter: A transient electric signal is not a “chemical union, nor a gas, fluid, powder, or solid.” Therefore, a signal is not a composition of matter.

Failing to fit within a predefined category, the only conclusion is that a signal is not a patentable subject matter.

Rules of Practice:

• Gangrene Treatment: In the political world of the courts, this case might be seen as the CAFC’s gangrene treatment — where the Supreme Court is the disease and patent law jurisprudence is the patient.  Several toes have already been lost, and the CAFC is cutting off a foot to prevent the disease from spreading any further.
• Morse Code: One important statutory subject matter case is that of O’Reilly v. Morse (1853) – invoving the patenting of Morse code. In that case, the Supreme Court invalidated some claims as overbroad, but found that Morse’s claim to a “system of signals” to be patentable as an ‘art.’  The CAFC, of course, does not overrule Morse, nor does it adequately explain how Morse’s patent would fit within our modern conception of the four categories.

Comments

[Roger Karp]

And In re Bilski is up for argument on 01 Oct 07. I'm guessing it'll be a Federal Circuit trifecta.

[Malcolm Mooney]

Oh, baby.

[Tufty]

Is the US finally coming to its senses perhaps? [sound of hollow laughter]

[It's a Manufacture]

The Linn dissent in Nuitjen is lengthy and raises (sub-)issues not addressed by the majority. En banc? Or is 101 the new "panel dependent" issue?

[Doomed prosecutor]

Ok, I see KSR, I see the PTO's new rules, I see Leibel, I see the new House Bill, I see McKesson, and I see these cases. Seagate is a lone ray of light, but it's fairly dim and shines only on litigators.

Did someone forget to make the ritual sacrifice to the patent prosecution gods this year?

[SF]

In response to another post, Malcolm Mooney criticized pre-KSR arguments and gave the following examples: "Sure, there were lottery-type contests based on numbers printed on packages in the past. But ours using a computer!!!" and "Sure, people recorded customer information based on their purchases in the past. But our invention uses a computer instead of paper!"

I'm wondering if Malcolm has a mole at the Federal Circuit. In dicta, this panel stated, "Here, claims 17 and 46 at most merely add a modern general purpose computer to an otherwise unpatentable mental process and claims 15, 30, 44, and 48 merely add modern communication devices. The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. … Thus, it may be that these claims are unpatentable as obvious under § 103. However, we do not now decide this issue."

[Malcolm Mooney]

"I'm wondering if Malcolm has a mole at the Federal Circuit. "

You don't need a weatherman to know which way the wind blows.

/dylan off

That "dicta" is in the MPEP too, btw, and is well-grounded case law. It was a combination of misplaced reliance on the strict TSM test, poor searching by the USPTO, and dust-kicking by applicants that impeded proper Examination (and rejection) of thousands of patent claims reciting computer-implemented versions of old "technology."

[Malcolm Mooney]

By the way, if anyone here lives near Greg A., they might want to drop by his place with a six pack or something else of a calming, medicinal nature.

[johng]

Hey, dust to dust - everything is transient (except for that 40 year old car in my backyard).

[Patent Prosecutor]

It is about time! I know prosecutors are supposed to think everything should be patentable, but we have gone off the deep end with the kind of crap we're issuing patents on. I hope this really is a change of direction in US law.

[Mark Nowotarski]

Said the court: “We recognize the wave-particle duality as applied to electromagnetic energy. However, the fact that photons traveling at or near the speed of light behave in some ways like particles does not make them tangible articles.”

"Sigh"

Obviously someone wasn’t paying attention in quantum mechanics class. ALL mater appears to behave as either a wave OR a particle depending upon how it is observed.

[metoo]

So the majority says that the claimed signal is "physical and real" and is "man-made" - but it's not a "manufacture."

Their explanation is that the definition of the verb "manufacture" is to make "articles," and therefore the meaning of the noun "manufacture" is a man-made "article." So then we have to determine the meaning of the word "article" - according to the majority, an "article" is a "particular substance of commodity." (And all these definitions are coming from a dictionary published in 1895!) Then, the majority takes their first leap off the cliff: in view of this string of definitions, an "article of manufacture" is a "tangible article or commodity." Where the "tangible" came from in the string of definitions is anybody's guess. But, even though the majority says that the electromagnetic signal is "physical and real", is made up of particles (yes, they said this), has "tangible causes and effects," and is perceptible - it's still not "tangible."

And the hilarity reaches a peak with this: "All signals within the scope of the claim do not themselves comprise some tangible article or commodity. This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuum — a medium that, by definition, is devoid of matter." Good grief. An electromagnetic wave (which is what they are talking about) consists of photons - which they already agreed are particles. But, according to the majority, if you transmit that electromagnetic wave through a vacuum which is completely devoid of matter (i.e., an absolute vacuum), that electromagnetic wave cannot be tangible since the vacuum is, by definition, "completely devoid of matter." Um....what the hell happened to the photon particles they agreed were there?

Look, we can certainly debate whether or not "signals" should be patentable subject matter. However, the reasoning of the majority in deciding they are not patentable subject matter is downright embarrassing. If a something is "man-made", "physical", "real", "perceptible" and made up of "particles", then clearly it is a "manufacture."

And look out - the majority's use of the word "transitory" and similar language could spell trouble down the road.

[Patent Attorney]

What rot has come back to haunt us. These are twisted opinions with no firm foundation. Benson has been discreded in many academic jornal articles as self contradictory and frankly just bizarre.

"Patenting human intelligence"? What rot. The basic principle of the computer is that it works on represented information. The issue should be that any process that works on this represented information should be eligible for a patent. We should then use the standard of novel, useful, and non-obvious to select which of the processes to grant a patent.

Benson, Flook, etc. this entire line of cases simple misunderstand computers and algorithms. The issue for business processes should be one of one under 112. What is the definition of income? What is the definition of a arbitration or differences? These are enablement issues and not 101 issues.

What this is all about is destroying patents for some big businesses just as anti-trust law has been neutored to suit the interests of big businesses. I will bet that ole Dickie and "W" have been lobbying hard for these changes.

What a shame that as we enter an age when all of human invention will likely be accomplished with a computer,and yet in the interests of a few large corporations we are not going to take the time to understand the information processor.

One might note how absurd it is to bring up the founders of the constitution when I doubt any of them could have comprehended represented information and processors. We grant patents for physical processes that could be carried out by humans.

Well, this is a much larger topic for an article and not a comment.

[Prosecutor]

I like how they addressed Morse's claim 5 in a footnote. Morse's claim 5 recites "I claim as my invention the system of signs consisting of dots, spaces, and horizontal lines for nummerals, letters, words, or sentences substantially as herein setforth and illustrated for telegraph purposes."

If this is a "process," where is the act or series of steps in this claim?

[The Skeptical Patent Lawyer]

I can feel the spittle of rage from Greg A. over at PatNews even from across the continent. And no, dude, this does not mean you can still plan on patenting movies or story lines.

[Thomason]

Loved the Gangrene reference, but when digits fall off is that necessarily gangrene or might it be STD?

[Malcolm Mooney]

"Obviously someone wasn’t paying attention in quantum mechanics class. ALL mater appears to behave as either "

Zzzzzzzzzzzzzzzzzzzz

[Malcolm Mooney]

"Benson, Flook, etc. this entire line of cases simple misunderstand computers and algorithms."

Actually I think it's more like computer geeks being unable to grok judicial realism.

[Malcolm Mooney]

"If a something is "man-made", "physical", "real", "perceptible" and made up of "particles", then clearly it is a "manufacture."

Yeah, like the light waves from your screen right now carrying this novel and non-obvious passage of text I just wrote. BLBLBLLBLBLLB!!!!! I should be able to patent it and shut you all down. Right?

Seriously, though, we've been over all this before. Comiskey is the more interesting case.

[Malcolm Mooney]

"The CAFC, of course, does not overrule Morse, nor does it adequately explain how Morse’s patent would fit within our modern conception of the four categories."

I agree that it would have been nice to see deal with this. But ultimately ... big whup. I don't think any of the Supremes will raise an eyebrow but if this case doesn't get appealed you may be able to hear nine sighs of relief.

By the way, Dennis, thanks for the case links.

[metoo]

Dennis said: "Under Comiskey, there is no requirement that the technical link be something novel or non-obvious. Rather, the question of patentable subject matter is entirely separable from those of novelty and non-obviousness."

I'm not so sure that's what the CAFC said in Comiskey. In Comiskey, the court said that claims 1 and 32 were not patentable subject matter because they "claim the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator." Technically, that's not correct, since these claims did not specifically require the performance of a series of mental processes alone. Rather, they were written so broadly that their scope would encompass a series of mental processes without the use of a computer (or other machine). Let's not nitpick too much when there are far bigger problems in this opinion.

What the court did NOT look at was whether or not claims 1 and 32 were indeed obvious, as determined by the BPAI. The CAFC said: "We do not reach the Board’s obviousness rejection of the independent claims under § 103 because we conclude that Comiskey’s independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. § 101." Again, the CAFC did NOT make ANY determination with respect to the obviousness of claims 1 and 32 - NONE.

For the other independent claims, 17 and 46, the court determined that these claims were written such that they required the use of a machine - i.e., a computer. Because of this, the CAFC determined that these claims were directed to patentable subject matter. BUT, and this is a HUGE BUT, the Comiskey court then drops a BOMBSHELL.

First, the opinion says: "While independent claims 17 and 46 and dependent claims 15, 30, 44, and 58 claim patentable subject matter under § 101, the other requirements for patentability, including non-obviousness, must still be satisfied." That is indeed correct. Here it comes: "Here, claims 17 and 46 at most merely add a modern general purpose computer to an otherwise unpatentable mental process and claims 15, 30, 44, and 48 merely add modern communication devices. The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer." They conclude with: "we remand to the PTO to determine in the first instance whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art."

HOLY SMOKES! The court only determined that the "mental process" was unpatentable on subject matter grounds (35 USC 101), NOT novelty or obviousness. Yet, the court ruled that because the "mental process" was "unpatentable", the obviousness of a claim which simply adds a computer to that "mental process" hinges on whether or not the addition of the computer was unobvious. Remember, the CAFC never even looked at whether or not the "mental process" was obvious. So, when they say "unpatentable mental process", they mean unpatentable on SUBJECT MATTER GROUNDS! Heck, they even go so far as to say that evidence of secondary considerations of non-obviousness must be related to the addition of the computer, NOT the "unpatentable mental process."

Not to repeat myself, but HOLY SMOKES! Better yet, what were these three smoking when they wrote this?

[metoo]

Malcolm, that passage of text you wrote also fails the utility test.

[metoo]

While this gem pales by comparison to what I addressed above, the Comiskey decision includes more hilarity. They first said this:
"The very constitutional provision that authorized Congress to create a patent system, Article I, § 8, also limited the subject matter eligible for patent protection to the “useful arts.” According to the Supreme Court, this constitutional limitation on patentability “was written against the backdrop of the [English] practices—eventually curtailed by the Statute of Monopolies—of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public.” Graham, 383 U.S. at 5. In the 16th and 17th centuries, the English Crown granted monopolies over entire types of business to specific individuals, for example the grant by James I to Darcy in 1600 of the exclusive right to manufacture or sell playing cards or the exclusive right to the printing business held by the London guild of booksellers and printers...The purpose of such monopolies “was to enrich the King . . . as well as the grantee, at the expense of the community.” Meinhardt, supra, at 31." OK, nothing wrong with that passage.

But then they conclude with this: "With this background in mind, the framers consciously acted to bar Congress from granting letters patent in particular types of business."

WHAT? "Particular types of business"? Pray tell, what types were those? No, the framers wanted to prohibit the granting of patents for things which were already known. They wanted patents to promote progress, and therefore required novelty and utility. It had nothing whatsoever to do with barring Congress from granting patents "in particular types of business."

[mmmbeer]

I don't think I see this as earth-shattering as metoo does.

What can be said about this case:
1. That the court isn't going to like the idea of a patent covering a process that can be performed solely in the brain. This looks and sounds a lot like the idea that you can't patent an algorithm per se or a mathematical formula. So yeah, e=mc^2 might not have been obvious, but you still don't get a patent on it.

2. Taking something that's "obvious" and tacking on a computer isn't going to make it nonobvious without something more. Well, "duh."

I say, big deal to all of this.

[metoo]

But they did not determine that anything was obvious! In other words, their decision was not that adding a computer to an obvious method does not result in something patentable.

Check out this claim from a randomly chosen patent owned by Google (7,158,961):
1. A computer-implemented method for generating a compact representation of a first object, comprising: (a) identifying a set of features corresponding to the first object; (b) generating for each feature a hashing vector having n coordinates; (c) summing the hashing vectors to obtain a summed vector; and (d) creating an nx-bit representation of the summed vector by calculating an x-bit value for each coordinate of the summed vector, the nx-bit representation of the summed vector defining the compact representation of the first object.

Now, all of the steps in this claim can be done in your head (perhaps with a pen and paper close by). According to Comiskey, this claim is obvious since the steps are "unpatentable subject matter" and simply adding a computer is an obvious addition.

[Dennis Crouch]

Thanks MeToo. I forgot your e-mail address.

[metoo]

This case calls into question the validity of every claim which begins with "A computer implemented method..." - if all of the steps can be done in someone's head, Comiskey says that claim is invalid (since I'm not sure how you could ever overcome prima facie obviousness given that Comiskey says the only relevant issue is the obviousness of adding the use of a computer)

[metoo]

Thank you for forgetting my e-mail address, Dennis. ;)

[Malcolm Mooney]

"Malcolm, that passage of text you wrote also fails the utility test."

No, it's entertaining and educational. Kind of like a game.

[Malcolm Mooney]

"their decision was not that adding a computer to an obvious method does not result in something patentable."

I agree with the above commenter who fails to see anything terribly earth-shattering about what this decision does not say.

Adding a computer to an obvious method is mostly likely going to be obvious unless there is teaching away from use of a computer or it achieves a surprising result.

(yawn)

That would likely require the claim to also recite some really brilliantly written software, with specificity. How many of these junk patents do that? Answer: very very few.

[Erez Gur]

I don't understand why some are gleeful at the Nuijten decision. There is no objective reason that signals should not be patentable (assuming novelty and non-obviousness).

That aside, without having studied the CAFC decision yet it seems to me that Nuijten could have rephrased his claims as device/method to generate the signals he wanted to patent. Inelegant perhaps (like Swiss style claims), but such claims would neutralize the ill-effects of the CAFC decision.

Unfortunately, I can't seem to find a copy of the original Nuijten application to see why such a method/device was not claimed. I'd appreciate it if someone could post a URL.

[Malcolm Mooney]

"This case calls into question the validity of every claim which begins with "A computer implemented method..." - if all of the steps can be done in someone's head"

Good. If I can do something obvious with my damn brain, then why should I get a patent on it just because a computer is doing that thing? The answer is that I shouldn't. Again, this is in the MPEP. Old news. Old law.

"all of the steps in this claim can be done in your head (perhaps with a pen and paper close by)."

Well, geez, metoo, which is it? Can you do it in your head or not? Can anyone? Does Rain Man count?

Regardless, I believe that the issue should boil down to whether the recited series of mathematical steps being carried out is an *obvious* series of steps or not. If the functions themselves and their arrangements are routine then merely performing them on a computer should not be patentable. OF COURSE THEY SHOULD NOT BE PATENTABLE. The only exception would be if there was tons of teaching away in the art or a surprising result.

We all know what the real problem is so let's just admit it. The real problem is that people didn't start earnestly trying to patent all this computer crap until relatively recently and the PTO has never really managed to assemble a decent database of prior art or a set of Examiners to rigorously apply it. In other words, there was a weak spot in the system and some "clever" opportunists exploited it to the glee of investors everywhere until the tragedy of the anticommons whereupon we all found ourselves ...

[microphone cut off]

[Jeffrey A. Steck]

Dennis notes the court's implicit holding that "any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious."

This has nominally been the law ever since Parker v. Flook, in which the Supreme Court offered this analysis:

"For the purpose of our analysis, we assume that respondent's formula is novel and useful and that he discovered it;" however, "the novelty of the mathematical algorithm is not a determining factor at all." Instead, "the algorithm ... is treated as though it were a familiar part of the prior art." Thus, "Respondent's process is unpatentable under §101 not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."

[SF]

metoo wrote, "Yet, the court ruled that because the 'mental process' was 'unpatentable', the obviousness of a claim which simply adds a computer to that 'mental process' hinges on whether or not the addition of the computer was unobvious."

I think metoo makes an interesting interpretation of this case. The panel may be saying that a claim to a computer-implemented "mental process" may be obvious if it is obvious to add the computer to the non-statutory-eligible "mental process" -- regardless of whether it was novel or non-obvious to perform the non-statutory-eligible "mental process."

However, I don't think that was what the panel was saying -- although the language is ambiguous. I think the panel was saying that a claim to a computer-implemented "mental process" may be obvious if (1) it is obvious to add the computer to the non-statutory-eligible "mental process" and (2) the non-statutory-eligible "mental process" itself was obvious. Remember that the trial court said that the non-statutory-eligible "mental process" was obvious.

I think Malcolm took the latter interpretation (which assumed the non-statutory-eligible mental process itself was obvious), when he wrote, "Good. If I can do something obvious with my damn brain, then why should I get a patent on it just because a computer is doing that thing?"

In any event, this passage of dicta in the opinion is so poorly worded that I hope that the panel issues a clarification or just deletes the passage altogether.

[Malcolm Mooney]

Parker v. Flook (hat tip to Steck)

"Respondent's process is unpatentable under §101 not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention."

Ah yes. Parker v. Flook. Forgot about that one. As SF points out, that case would preclude my strategy for finding patentable claims to computers running software which execute "novel non-obvious" algorithms. Computers are old. Software is old. New algorithms can't make them patentable, just as the point of novelty in a method claim can't be a recited "mental step."

But Comiskey doesn't add anything new to THAT particular question, does it? Rather, it merely affirms Parker v. Flook (and probably contradicts one of those other poorly written Supreme Court cases on Section 101) and begs the question: how did patents like that Google patent referred to above ever get out the door in the first place?

[Malcolm Mooney]

For the record, I note that this is one instance (e.g., my 7:09 pm post) where I believe certain things should be patentable that the Supremes do not.

Just sayin'.

[Patent attorney]

The non-statutory mental step was put in place to prevent a mental step from being added to a method. (need the case cite). It is related to 112.

These opinions are just sad. I wish Judge Rich were still alive.

[George]

I agree with the above person who yawned.

This is just the CAFC saying that the subject matter of a patent must involve an application of technology. That's what patents are all about, folks, advancing the "useful arts".

Business methods which involve an application of technology to solve a business problem are still patentable (so long as they are novel and non-obvious). "Pure business methods" such as methods of arbitrating disputes are not. That's the way it should be.

[George]

Dennis' comment:
Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision. For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope. Under Comiskey, there is no requirement that the technical link be something novel or non-obvious.
<<

I agree.

[metoo]

Malcolm, you continue to amaze me...you act like I said something incorrect and take me to task, yet in the end you agree with me. I never once suggested that an obvious series of mathematical steps should be patentable simply by performing them with a computer

SF, I think the opinion is very carefully worded in that it says "routine addition of modern electronics to an otherwise UNPATENTABLE invention typically creates a prima facie case of obviousnesss." Replace the word "unpatentable" with the word "OBVIOUS" and there's nothing all that unusual here on the question of obviousness. And I'm not so sure it's dicta, since the end of the opinion states: "we remand to the PTO to determine in the first instance whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art."

[Gajarsa et al.: You can't divide by a square root.. Can you?]

RE: "Composition of Matter: A transient electric signal is not a “chemical union, nor a gas, fluid, powder, or solid.” Therefore, a signal is not a composition of matter."

Albert Einstein, 1905:
E = mc², energy and mass are equivalent and transmutable

Judge Gajarsa, on behalf of the CAFC, 2007:
"We recognize the wave-particle duality as applied to electromagnetic energy. However, the fact that photons traveling at or near the speed of light behave in some ways like particles does not make them tangible articles." Nuijten at n8.

Gajarsa is really saying: 'We've heard of Einstein et al. (because we have 5 judges with technical backgrounds), but we can't imagine how anyone could divide by a square root.'

[patent leather]

Dennis writes, "(2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious."

Does this mean that software is no longer patentable??? I may need a new job...

[patent leather]

I have taken a much more careful look at the Comiskey opinion. With all due respect to Dennis, this is the first time I disagree with him.

When the court states, "The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer."

I don't think the court is really implying, "The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious."

When the court said "unpatentable" invention, I think they meant due to 103 (not 101). The PTO and Board had already previously determined that claim 1 was obvious and hence unpatentable. I actually think the Board intentionally wanted to avoid the issue of determining whether a claim to a nonobvious algorithm would be statutory simply by adding a machine, hence the remand. They also felt it only fair to allow the applicant to amend claim 1 to be statutory.

I doubt the CAFC would want to address the statutoriness (hey, we are allowed to make up words!) of software patents unless they were forced to.

[AgentG]

Regarding Nuitjen, note that there is no way that a novel or non-obvious signal could exist *without* the device or apparatus that created the signal (except for telepathic brain waves). Limitations covering the signal features can simply be added to the device claims. I think this is a good decision, for no infringement on the signal could take place without a signal-generating device or process. Perhaps it gets more complicated when we consider signals generated through the combination of other signals that are not novel and are obvious...but this suggests we are dealing with inherent properties of matter/waves that would be non-statutory.
So I agree with Mooney (6:54) that Nuitjen could simply rephrase the claims in terms of a device / method.

Now this opens another can of worms, what about devices that can generate different kinds of signals: infringing and non-infringing (device / method of course) ? Are they barred from operating in infringing mode only? What if the same signal was generated by another algorithm, that could be shown to be novel and non-obvious? What if there were two conflicting devices / methods, each having novel and non-obvious features, which resulted in the same signal? This just simply shows that there may be some practical benefit to having the signal itself be patentable.

Getting off topic (rant ON), all indicators point to a great deal more diligence and skill that will be required of the prosecutor than is currently the norm. As a former prosecutor, I now work as a PCT Search Professional (read: outsourced patent examiner), and I can tell you that a *substantial* majority of patent prosecutors are grossly negligent in their duties and are in *many* cases responsible for the loss of viable IP rights that would have otherwise been awarded their clients. I mean, this is a much bigger problem than 101 or 103 issues. You simply cannot imagine the extent of the negligence in basic practices we see filed on a daily basis. Dennis has attributed this to the erosion of fees paid for preparing a patent, but I respectfully submit that the patent bar has done an extremely poor job of maintaining a standard of quality among its members. In part, this has to do with changes in infringable claim language over the years, but many older attorneys are apparently too stuck in their ways to modernize their claim drafting skills. Many patents are filed without even a cursory review of the claims for the most basic errors. Furthermore, there is still a *substantial* number of members of the patent bar who believe citing prior art in the patent, and incorporating these by reference, protects them from having this prior art cited against them. Another astonishing percentage of attys/agents cannot resist the temptation to characterize the teachings of the prior art, which they invariably fail to correctly do. Finally, at what point are practitioners bound to represent the best interest of the client by refraining from filing claims that are clearly not-inventive to any passing bystander, rather than cleverly renaming terms for obscurity and citing all the prior art they know, except of course the relevant ones they are trying to claim around. I think the IPLA has some serious growing up to do. Rant OFF.

[Malcolm Mooney]

"Malcolm, you continue to amaze me...you act like I said something incorrect and take me to task, yet in the end you agree with me."

Which part is amazing? ;)

[Gobhicks]

Viewing this from the other side of the Atlantic, could it be that we see signs of convergence between the Old World and the New?

The recitation of any statutory subject matter in a claim avoids any holding that the claim as a whole is non-statutory, but claim elements that define non-statutory subject matter are considered de facto obvious? Compare with EPO Board of Appeal decisions: reciting computer hardware avoids any statutory exclusion of computer program or business method elements, but excluded/non-statutory elements are not considered in assessing obviousness/inventive step.

Of course, at the EPO “technical” is king: “[an] invention will be assessed with respect to the requirement of inventive step by taking account of only those features which contribute to a technical character”. Comiskey would be refused by the EPO on basically the same grounds as here. The abstract method claims are non-statutory/excluded subject matter. The claims that add trivial hardware elements are obvious because the non-statutory/excluded elements are omitted from the analysis of obviousness.

In the EPO, a claim to a combination of “standard” hardware and “novel” computer program elements can be allowable if the combination results in a new and non-obvious “technical effect”. The same reasoning would distinguish Comiskey from, say, the Google patent referred to above. Of course the Comiskey ruling doesn’t address that point, but it seems likely that a similar conclusion would be reached by a US court (it would likely be expressed differently).

RE: “if anyone here lives near Greg A., they might want to drop by his place with a six pack or something else of a calming, medicinal nature” – I don’t think beer will be enough, class A opiates are indicated.

RE: “One might note how absurd it is to bring up the founders of the constitution when I doubt any of them could have comprehended represented information and processors.” Two words: Benjamin Franklin.

[Patent Attorney]

Someone above said that something that they can carry out in their head should always be obvious. Consider: Does that mean that you think that every physical process that you could carry out without the aid of a machine should be obvious? Some of the most cited cases on physical methods can be carried out without the aid of a machine. Deener for example. Further, consider that every process on a computer COULD be carried out in your head. You could go through every single fetch-execute cycle in your head.

Chisum wrote a lengthy article criticizing Benson. What is a mathematical algorithm? You see, at the time Benson was written the author of Benson thought of computers as implementing mathematical algorithms to solve problems.
It was the era of Fortran. Is scanning in a x-ray and detecting a tumor a mathematical algorithm? Is the architecture of a web browser and the Internet obvious? Why did it take so long for someone to come up with the idea of a web browser? Why is it so hard to detect objects with a computer? What is a mathematical algorithm? The fact is that we represent information and then perform a process on the representation. Math is an abstraction. In a computer it takes physical space to represent a number and the size of number is limited. A computer is a machine that burns electricity, generates heat, moves representations from one physical location to another physical location. There are not abstractions. The devil is in writing claims that do not clearly state how one is going to represent arbitration. The abstraction is in the human words. We need to dig into what actually is going to be represented and how and then what process is going to be performed on the represented information.

You see the computer is not an abstraction. It is a machine with parts so tiny we can't see them. Consider, that information theory is as rich and important as biology, chemistry, or physics.

The problem with understanding computers is that they are information processors and they challenge us to understand ourselves.

Flook and Benson are medieval in their thinking about computers.

Consider too that the problems that are raised by the computer come up with physical processes to. What if a patent said "separating each oxygen atom from hydrogen atom." We can all imagine doing this, but is there actually a machine to accomplish this or a process to accomplish this?
The problem is very similar to claiming representing arbitration on a computer. The issue is what exactly have you represented and what computation are you actually accomplishing. Digging into these details is where patents should be issued, because actually being able to arbitrate with the aid of a computer would be something.

The devil is in the details. We don't need 101---112, 102, and 103 are all we need. We need to understand information processors and the problems associated with accomplishing tasks with information processors.

Solving some of the issues associated with representing an arbitration is worthy of patent protection. The fact is that getting machines (the information processor) to accomplish tasks previously performed by humans is the big trend. And, there is a lot of work to get that done. The patent in question is a bit like "a motor attached to a frame with wheels." There is not a lot of structure. But, a computer implemented process to actually perform arbitration would be rich in details in what can be represented and how to represent the details and how to process the details.

Finally, consider how strange some of the writing is above and in the opinions of Supreme Court. Is some of this indignation? Some of the writing sounds almost like the Judges/Justices believe that magic goes on in their heads when they think. A computer challenging human intelligence? Also, consider that just because the PTO hasn't gotten their arms around software yet, doesn't mean that they shouldn't be tasked to get their arms around the problem now.

[Alan McDonald]

Regarding computer-based method claims:

"This case calls into question the validity of every claim which begins with "A computer implemented method..." - if all of the steps can be done in someone's head, Comiskey says that claim is invalid (since I'm not sure how you could ever overcome prima facie obviousness given that Comiskey says the only relevant issue is the obviousness of adding the use of a computer)"

I have argued for 15 years that this should be the law and that NO claim should EVER be allowed for an "invention" that could be accomplished by a football field full of people grinding out the numbers just because it is being accomplished by a computer and thus done quicker.

Regarding "signal" claims:

I'm probably talking off the top of my head on this one because I don't practice in the electrical fields but,

Creating a signal is old. Any specific signal is created by a specific algorythm, which, as above, is an unpatentable mental step. Therefore, all signal claims must be unpatentable.

[Dave Brophy]

Erez Gur said:
it seems to me that Nuijten could have rephrased his claims as device/method to generate the signals he wanted to patent. Inelegant perhaps (like Swiss style claims), but such claims would neutralize the ill-effects of the CAFC decision.

Unfortunately, I can't seem to find a copy of the original Nuijten application to see why such a method/device was not claimed.
----

And AgentG said:
Limitations covering the signal features can simply be added to the device claims. I think this is a good decision, for no infringement on the signal could take place without a signal-generating device or process.
----

Nuijten did in fact obtain allowance of claims to the method, to the arrangement (i.e. apparatus) and to the storage medium with the signal stored thereon. Where these claims fall short, however, is where the apparatus and method are outside the US and the signal is all that enters the patented territory. So a provider of streaming audio from abroad, watermarked with Nuijten's method, would not infringe such claims.

[EG]

The Federal Circuit in Comiskey has unfortunately used the term "unpatentable" in a manner that causes confusion as to whether they mean 101 or 103. My view is that they mean 101, not 103, given the context. Also, if Comiskey stands for the proposition that the "nonstatutory" component is to be ignored in the 103 analysis, the Federal Circuit resurrects the unfortunate rhetorical nonsense that the Supreme Court espoused in Flook which treated what even they acknowledged as the "novel and useful" as "though it were a familiar part of the prior art." What Comiskey may suggest and what the Supreme Court said in Flook is in direct conflict with what 103 says. Under 103, the "prior art" must at least be "known" to someone and if it is not, then it should not be treated as the "prior art" whether or not it qualifies as statutory subject matter. This also isn't new as it goes back to the Eibel Process case in the 1800s which recognized that understanding (and applying) the laws of nature that others did not could lead to a patentable invention. (And if you want to see a really screwed up view of how software works, read the Supreme Court majority opinion in Microsoft v AT&T which most software developers would find bizarre; dissenting Judge Stevens is the only one who got it right on how software really works).

With regard to Nuitjen, I side with Judge Linn. The Supreme Court majority in Chakrabarty (admittedly a slim majority) said that 101 subject matter should be construed broadly. In fact, what the majority says is in scientific conflict with what Einstein got the Nobel Prize for, namely the photoelelectric effect. What I sense in the majority opinion is the fear and backlash from the pasting the Federal Circuit has gotten from the Supreme Court recently, and almost got again in the Metabolite case. In fact, I cringe every time the Supreme Court asks the U.S. Solicitor General whether they should review a patent case from the Federal Circuit, and the Solicitor General says yes. With the Supreme Court on the rampage in the patent area, the PTO promulgating multitudes of burdensome, ill-advised, widely opposed, and (and as the Tafas correctly alleges in the case of the limations continuations-claims, in violation of the APA and RFA) Rule packages, and now Congress getting into the act with Patent Law Reform (or as some have accurately said Patent Law Deform), this has been a really bad year for the U.S. Patent System. I just hope and pray the U.S. doesn't completely lose whatever competitive advantage it still has in innovation because of all this adverse reaction to patents. Sure, some of the excesses needed to be curbed (and have, in my opinion, been grossly overexaggerated), but what I see now brings back chilling memories of the late 60's and early to mid-70's (may be we'll see a return of the "Nine Licensing No's No's, God truly help us).

[Lonnie E. Holder]

Erez Gur & those of you pointing to the patenting of Morse code:

I fail to see Morse code being patentable, and I believe the Examiner erred. Semaphore existed more than 100 years before morse code, and created a visual equivalent of dots and dashes. Cuneiform is a more sophisticated set of lines depicting letters and words. All Morse did was adapt cuneiform and semaphore to the modern technology of electromagnetics. Morse may have been the first to see the ramifications of using electromagnetics as a method of communication (patentable), but adapting a previously known technique of communication (language in the form of semaphore or cuneiform) to the new technology seems unpatentable without the underlying technology.

[Lonnie E. Holder]

Alan McDonald:

I should have scrolled a little further before I wrote my previous post. What you said is my point. Languages are known. Creation of languages adapted to previous technologies is known (another one that comes to mind are naval flags on ships). Therefore, there is teaching to adapt human language to new forms of technology. An electromagnetic device that can actuate an electromagnet at a distance is invented. It seems like the next, highly obvious, step is to create a method of adapting that technology to transmit words or letters.

Here is a parallel example that seems appropriate. If I was one of the first people to begin texting and instead of saying "How are you? Have you seen my best friend Katie today? She has a new boyfriend and he is too cool" I said "HRU HV U seen my BFF Katie 2day? She hs a new BF & he is 2kewl." Is the "new" language patentable? Why not? Morse was.

I like the whole "if it ain't broke, don't fix it" argument with respect to the USPTO. The problem is that the system was created broke and we have yet to figure out how to unbreak it. The good news is that we keep trying. The bad news is that not all the fixes lead to repairs.

[metoo]

Alan and Lonnie: Your reasoning implies that NO computer software should be patentable. Is that what you really believe?

[jswinterle]

re: Nuitjen

In this context, if a signal is not a manufacture, then nothing is. A signal is precisely made by man, and as such that is it's truest identity: "made by man". The more precisely made, the greater the information content. The quanta that carry it have mass by virtue of their energy; and their physical interaction by the electroweak force has exactly the same character as the forces that provide form and structure to any object that one (or the Court!) has ever seen or touched.

[Lonnie E. Holder]

metoo:

In regards to your question about the patentability of software:

There is patentable software matter. I could spin out and give lots of examples about what might, and I emphasize might, be patentable, and what might not be patentable. May I provide the briefest of examples:

Software that turns a spreadsheet, previously hand calculated, into a spreadsheet suitable for computer calculation should not be patentable, at least not broadly. On the other hand, if you create a technique to freeze an address, such as by using a $ sign in front of the column or row designation, that could be patentable matter. Freezing a column or a row so that they always appeared as you scrolled about a spreadsheet could be patentable.

Fundamentally, using a computer to do something that has been previously done by some other technology, including humans, is not inherently patentable unless the technology brought new, non-obvious advances over the previous technology. We know computers can have databases, spreadsheets, calculations, decision trees, documents and pictures. Adapting these capabilities to analyze whether a painted picture is possibly a forgery should not be patentable UNLESS the computer method used a non-obvious feature to make that analysis.

Before this explanation gets any more complicated, I better quit.

[Alan McDonald]

Alan and Lonnie: Your reasoning implies that NO computer software should be patentable. Is that what you really believe?

I'll take the simple route - YES!

[AttorneyH]

AgentG writes:

... Limitations covering the signal features can simply be added to the device claims.

And if the infringer doesn't make, use, or sell the device, but instead only uses the signal? The advantage of a signal claim is that you can cover more than one perspective (i.e., infringer) with a single claim. Extremely important in view of the PTO's recent 5/25 rulemaking.

... I think this is a good decision, for no infringement on the signal could take place without a signal-generating device or process....

First, see my point above. Second, justifying a decision that ignores "modern" (i.e., last century) physics theory and that, as an electrical engineer, I find to be quite embarrassing, with the rationale that "they could have claimed it this way or that way instead" missing the entire point of the discussion--whether a signal is patentable subject matter or not--and is unenlightening.

... So I agree with Mooney (6:54) that Nuitjen could simply rephrase the claims in terms of a device / method...

They did. Claim 1 was directed to a method; claim 11 to a system, claim 15 to a CRM. Again, that was not why they also added the signal claim. Think outside the box of patent procurement--think portfolio management, assertion, and licensing. It will make you a better prosecutor--if you ever return from the dark side, that is ;-)

[Alan McDonald]

"Think outside the box of patent procurement--think portfolio management, assertion, and licensing."

Ah, the true mark of a troll, how many people can I sue.

I don't want to have to go after the manufacturer, he may have enough at stake to actually try and defend himself. I need claims that I can use to go after the end user who will not have enough at stake and will gladly accept my offer of a license at an amount less than the cost of litigation.

[mmmbeer]

Let's lay on some irony and analyze a couple scenarios in a series of steps:

1. Assume that A + B = C is formula (the "formula").
2. I do the formula in my head.
3. I file a patent.
4. I should get no patent because of non-statutory subject matter.

Next example:
1. Assume that A + B = C is formula (the "formula").
2. Further assume the formula is known.
3. Now, I'm the first to implement a computer system to do the formula.
4. I file a patent.
5. Without something else, we should have an obvious patent. The formula is non-statutory subject matter. Adding the computer overcomes this issue. However, the computer doesn't overcome the obviousness.

Next example
1. Assume that A + B = C is formula (the "formula").
2. Further assume the no one knows this formula.
3. Now, I'm the first to implement a computer system to do the formula.
4. I file a patent.
5. Patent should issue. The formula is probably non-statutory subject matter. Adding a computer to the process escapes this issue. Since the formula wasn't previously known, I don't have an obviousness issue.

Next example:
1. Assume that A + B = C is formula (the "formula").
2. Further assume the formula is known, however, no one can figure out how to do B. The result C is theoretically shown to happen.
3. Now, I'm the first to implement a computer system to do the formula sucessfully.
4. I file a patent.
5. Patent should issue. The formula is probably non-statutory subject matter. Adding a computer to the process escapes this issue. Further more, even though the formula was known, no one could implement it in anything, I don't have an obviousness issue.

[AttorneyH]

Mr. McDonald:

So you don't think about portfolio management, assertion, and licensing.? You must be a prosecution attorney in a firm, then--get a patent for the client no matter how invaluable it is, bill my hours, and move on. Your choice--I did that for a while too, until it got boring.

Regarding your manufacturer comment--New Flash: the receiver of a signal is not always the end-user. Don't be a monkey--think about what you're claiming.

And lastly, I believe we all recall the days from grade school when the fellow student, depleted of all arguments and intelligence in a matter, resorts to their last pitiful attempt at redemption--name calling. Heck I did it! Fortunately, most of those kids grow up.

[Malcolm Mooney]

mmmbeer, thanks for laying the foundation.
I'd say that 3 and 4 should be patentable and non-obvious ... but in view of Flook/Comiskey they're both arguably per se obvious in view of the prior art (i.e., computers).

[Malcolm Mooney]

"So you don't think about portfolio management, assertion, and licensing.? You must be a prosecution attorney in a firm, then--get a patent for the client no matter how invaluable it is, bill my hours, and move on. Your choice--I did that for a while too, until it got boring. "

But you're missing out on this really exciting moment in the history of patent prosecution where we have to review all of our clients portfolios and report the "related" applications and "distinct" claims to the PTO by February 1, 2008. Maybe I should think about donating a kidney now. By the time I get back to the office, it'll be March at least.

[AttorneyH]

"But you're missing out on this really exciting moment in the history of patent prosecution where we have to review all of our clients portfolios and report the "related" applications and "distinct" claims to the PTO by February 1, 2008"

Unfortunately, I am not missing out on these "exciting" times. I still prep & pros and value my reg. number. But at least I don't have to locate and identify "related" applications that exist across multiple outside firms and then comment on how those applications, written to different standards, are distinct from one another. Good luck with that one!

[Malcolm Mooney]

"Good luck with that one!"

Curse you.

[shakes fist at AttorneyH]

[Alan McDonald]

"You must be a prosecution attorney in a firm, then"

Not so, look up my registration. I was in-house counsel of an end user (not my current employer) who argued with management not to settle with trolls in the past but lost out because "it's cheaper to settle than to defend".

Interestingly, this same company would litigate workman's comp claims of its employees even when legal costs exceeded the claims because if they didn't look tough they were afraid they would get more claims.

[Interested Observer]

After reading Comiskey several times, it appears that in relation to business method patents that this case may be as far reaching as State Street itself, in terms of its impact. One wonders if the recent and unusual beating that the CAFC has been taking at the Supreme Court has had a broad effect on the CAFC's thinking.

Unless I missed it, none of the above commentators made any mention of what may be one of the CAFC's most telling comments in the decision, and a possible indication of how the Court's thinking has evolved. The CAFC stated in Comiskey, "Although it has been suggested that STATE STREET BANK supports the patentability of business methods generally, STATE STREET BANK explicitly held that business methods are subject to the same legal requirements for patentability as applied to any other process or method."--- The decision then goes into the numerous limitations discussed above, The thinking in this case may well invalidate most business process patents.

I am not alone in my belief that most, but not all, patents that tie business processes to computers are primarily a matter of language translation, like translating a book written in French to English. What is really happening when describing the computerized implementation of almost any process, is the translation of the non-computerized version into Cobol, C++, Java, XML, etc. While this may be technically and administratively complex, and might require a microprocessor's capabilities to make the process efficient, Comiskey is formally recognizing that this is not the stuff of innovation.

The Comiskey Court also held, "The patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable."--- This language may be the death knell to all of the business process patents related to financial, investment, tax, insurance and similar planning areas where individuals come up with creative ways of saving taxes, enhancing investment returns, etc.

I'm interested in anyone's thoughts.

[Alan McDonald]

"This language may be the death knell to all of the business process patents related to financial, investment, tax, insurance and similar planning areas where individuals come up with creative ways of saving taxes, enhancing investment returns, etc."

Maybe the CAFC is reading the tea leaves in the Patent Reform Bill that would explictly exclude patents on tax methods and the Supreme's dicta on business methods in a preemptive strike. The last thing they want right now is another SC decision that they have been wrong all along. In the current climate they probably wouldn't get reversed for narrowing subject matter under 101.

[Malcolm Mooney]

"I'm interested in anyone's thoughts."

Two words: good riddance.

[Malcolm Mooney]

Somewhat OT: there is a short but interesting article in the most recent New Yorker describing why/how the fashion industry has benefitted (and continues to benefit) from the availability of cheap knock-offs. The logic is relevant to the music industry as well except that the people who run the music industry are far more corrupt, greedy and uncreative than those in the fashion industry.

[patent leather]

"The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness."

There seems to be some discourse as to whether "unpatentable" in the above quote means due to 101 or 103.

If "unpatentable" refers to 103, then the Comiskey case isn't that significant in my opinion, since all that you need to do is merely add a computer to your claims (something I have always done anyway in case a case like this would come along)

If "unpatentable" refers to 101, then this case basically means that software is no longer patentable and we have now adopted the european standard.

I wish I could simply call Judge Michel and ask him what he meant. Does anyone know of any other articles or authority to clarify this issue?

[Malcolm Mooney]

Here's the quote again:

"The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer."

Here's your answer: the first use of unpatentable refers to either 103 or 101. It doesn't matter which. If a claimed invention is obvious, it will remain *prima facie obvious* after you recite a limitation "wherein a computer."

The second use obviously refers to section 101.

Software is unpatentable if the logic/process of the software is obvious. Period. That was ALWAYS the case. Was the law applied appropriately by the PTO? No, it definitely wasn't. And that sad fact gave birth to an entire industry of software patent abusers.

[Malcolm Mooney]

"Digging into these details is where patents should be issued, because actually being able to arbitrate with the aid of a computer would be something."

Actually being able to arbitrate with a computer REPLACING THE ARBITRATOR would be something. Other than that, big whup. Plenty of arbitrators use computers. Calculators, too.

[patent leather]

Malcom,

But if a claimed algorithm is "non-obvious" and a "computer" is added to the claim, is the result then patentable? THAT is the question...

[Malcolm Mooney]

"But if a claimed algorithm is "non-obvious" and a "computer" is added to the claim, is the result then patentable? THAT is the question..."

If it's just those two limitations in the claim, the answer is that it's prima facie obvious under Flook/Comiskey because the algorithm is unpatentable and the computer is old. The only major issue (to rebut the prima facie case) is whether the combination of the two is taught away from or unpredictable.

[Malcolm Mooney]

Re that previous comment, that is my understanding of the law AS IS, not as it should be (and that's "should be" under a strictly legal/logical argument; there are compelling reasons for denying patentability to software that are unrelated to questions of legal consistency).

[Alun Palmer]

I think mmmbeer is absolutely right, but Comiskey seems to render his 3rd example unpatentable. This does seem to be a real change in the law.

As for Nuitjen, it is simply wrongly decided, for two reasons. Firstly, because a signal is a manufacture, and the court's reasoning otherwise is scientifically garbage. Secondly, O'Reilly v Morse was a Supreme Court case and can't be distinguished by a lower court ruling on the same issue.

[Curious]

I agree with Alun Palmer.

[AgentG]

AttorneyH:
I do think outside of the patent prosecution box, that is why I stated that there is some usefulness in patenting the actual signal in my original post. However, the practicality of licensing and valuation of allowed patent claims have absolutely no bearing on the patent laws, which IMHO need to be fair and equitable to all inventors.

[AgentG]

Dave Brophy:
A very interesting and practical situation have you described, yes.

In such a case, a competent prosecutor would have filed PCT in all possible countries, and also included independent claims on the unique receiver of the signal. A set of means plus function claims on both the receiver and transmitter of the signal are probably well deserved as well. I believe that covers the situation of beaming the signal internationally, at least theoretically.

As for countries where IP infringement is not enforceable, tough luck and good night.

[Malcolm Mooney]

Perhaps over the weekend I'll work on my analysis showing how Nutjen lays the foundation for obliterating product-by-process claims forevah.

[Malcolm Mooney]

" a signal is a manufacture, and the court's reasoning otherwise is scientifically garbage."

No, it's not at all. They recognize that by including signals as "articles of manufacture" then light emissions are "articles of manufacture" and a claim to light emitted from anything novel is therefore patentable and that's a friggin joke.

Denying this elementary fact is "scientific garbage" but I've yet to hear one of you bigwigs who support the patenting of signals address this fundamental problem.

Let's face it: the Supremes have better things to do than to inform y'all that some patent that expired more than a century ago under was junk.

All this business about Einstein blah blah blah. Yeah, let's rewrite every law to take into account the wave/particle theory of matter. Sure. Congress will get right on that.

[AgentG]

AttorneyH:
"Second, justifying a decision that ignores "modern" (i.e., last century) physics theory and that, as an electrical engineer, I find to be quite embarrassing, with the rationale that "they could have claimed it this way or that way instead" missing the entire point of the discussion--whether a signal is patentable subject matter or not--and is unenlightening."

Perhaps it is the discussion that is missing the entire point. That is, with proper claim drafting, that means careful consideration of patentablity, infringement, and enforcement, many of the "challenges" can be overcome. The remaining legal finesse appears to me to blow in the wind from one CAFC decision to the next, so how can you plan that?

If you want to get down into the signal issue, metaphysically, the actual operational state of any solid state circuit is ultimately no different from a transmitted signal. The money in your bank account is nothing more than some electronic energy states in a semiconductor. Even the display showing this message is simply emitting intangible signals. A signal is nothing more than energy states of photons, radar waves, electrons, going through a medium. Scientifically, if signals are unpatentable, then all powered on states of electronic devices should also be unpatentable, because there is nothing tangible in the processing or display hardware. (Not storage though. Some storage means may actually change the physical, optical or magnetic states of matter). Signals are the basis for all electronic information. However, this blows those minds who are still anchored in (yes, last century) value system based on physical objects, devices machines, and now microchips. Therefore, just the signal itself is too abstract an idea for humanity (at least the CAFC, SCOTUS) to consider patentable, at the moment.

What I am saying, is that it probably doesn't matter either way. You can patent the same signal characteristings at the source or the sink, though some infringement situations might get tricky. But if you did patent the signal, you would get folks retrofitting signal converters at various points in the chain to get around your signal claims, which would also make some infringement scenarios difficult. In the end, you want to cover all your bases either way.

[AgentG]

Malcom Mooney:
No, it's not at all. They recognize that by including signals as "articles of manufacture" then light emissions are "articles of manufacture" and a claim to light emitted from anything novel is therefore patentable and that's a friggin joke.

You last statement appears simply ignorant. I bet you there are over 100k patents pertaining to light emission: lasers, UV, spectroscopy, astronomy, optics, etc. So, the current decision if upheld, would scientifically undermine a great deal of patented science. That is why the court's inability to recognize what a signal really is, is the bad joke here. It's not the question of whether the subject matter covers an article of manufacture, it is the question of if it is man-made or not, and perhaps, if it is unfairly infringable in commerce. Actually, they need to reconsider the categories, perhaps include more items under compositions of matter, like...signals, nanostructures, superfluids, electronic states...

[patent leather]

Malcom Mooney said:

'"But if a claimed algorithm is "non-obvious" and a "computer" is added to the claim, is the result then patentable? THAT is the question..."

If it's just those two limitations in the claim, the answer is that it's prima facie obvious under Flook/Comiskey because the algorithm is unpatentable and the computer is old. The only major issue (to rebut the prima facie case) is whether the combination of the two is taught away from or unpredictable.'

If this is true, then all software patents are currently invalid. Did the Comiskey case overrule State Street? I don't think so. Did Comiskey just wipe out billions of dollars worth of software patents?

[AgentG]

Lonnie E. Holder:
...should not be patentable UNLESS the computer method used a non-obvious feature to make that analysis.

What about the inherent capacity for networking and automation that a computer-implemented method can provide?

For example, Ann calls you and takes down your name, address, and phone number by hand. Bill builds a website that allows millions of people to provide the same information electronically in the same time. Bill collects more information than Ann could collect in a lifetime of calling, perhaps more than is possible using any amount of available labor. Bill's system is not simply the same thing Ann is doing, but automated--it includes communication, storage, scalability and speed. Are you telling me Bill's website/database, if covered by claims that are novel and non-obvious, should not be worthy of a patent? Can you explain why not?

[AgentG]

Malcom Mooney:
Somewhat OT:.. benefitted (and continues to benefit) from the availability of cheap knock-offs. The logic is relevant to the music industry as well...

The same logic is relevant to the software industry as well. In fact, by some indications, illegal copies are what helped Microsoft expand their dominant position, by increasing market gray share. Once entrenched, they start to fight back harder against piracy, because they are losing more than they can gain. Music and fashion are a bit different business models, more consumption-driven than dependent on an installed base.

[patent leather]

I disagreed with Dennis above and his characterization of "unpatentable" but after further review, it appears Dennis was right (as always).

"Under these precedents, a claim that includes a mental process may be patentable — so long as it is otherwise tied to ‘reality.’"

So I guess the key here really is, what does "reality" mean? If a computer implements a non-obvious algorithm (and the algorithm only non-obvious feature of a claim) that is "tied to a machine," is that statutory? Perhaps most software patents are still valid now since most claims would be tied to something in "reality."

[patent leather]

Some more food for thought: How does Comiskey reconcile with State Street? Doesn't Comiskey have a practical application? Wasn't State Street a "mental process?"

[metoo]

Food for thought...seems to me that most are in agreement that this case is rather significant if they really meant to say "unpatentable" rather than "obvious". If the panel simply messed up and really meant to say "obvious" instead of "unpatentable," then this case is not such a big deal (although it still would be significant).

But, is there perhaps some shenanigans going on here in that this panel saw an opportunity to get the CAFC to revisit Flook/Diehr en banc, and perhaps ultimately get the issue up to the Supremes? I just find it hard to believe that this particular panel simply screwed up - could they have really been that sloppy??? The facts of this case (i.e., the claimed invention) is about as straightforward as you can get, so they might see it as the perfect vehicle for looking at the issue (Flook/Diehr). Of course if true, it would portend a reinforcement of the old adage that "bad facts can make bad law."

[patent leather]

I also think this case might not be so significant if it is limited to its facts. I doubt there are many claims that are purely "mental processes." The case doesn't go so far as to propose an extraction test, that is, if claim 1=A, B, C, D; A is a non-mental process or apparatus; and B and C are mental processes (formulas or the like) and D=simply a computer, then A must be nonobvious for the claim to survive. If this is what the case stands for, then this would really be a bombshell (this is the European rule) and most software patents would now be invalid. The court instead took the original first claim as a whole and concluded it was a mental process in its entirety. It is true that every element of claim 1 could be performed in your mind.

Thus, let's just hope that this case stays limited to these facts. Some clever claiming (tying in physical materials) may also work around a claim being considered a "mental process."

Of course, some may say that since the computer claim added non-mental steps (the computer) and the court said this claim was likely obvious since the non-computer elements were unpatentable, that the court is really propounding an extraction test. But the opinion didn't quite put it this way. So if I get a 101 rejection during prosecution, I will just have to argue that the underlying method cannot be performed entirely in someone's mind.

[Patentlytrue]

Look at the macro forest instead of the micro trees. Whatever the reasons, Comiskey is the CAFC's way of reacting to State Street's impact. State Street has been interpreted by the PTO as permitting a wide variety of business process patents. Comiskey severely narrows this interpretation. No, it doesn't overturn State Street. However, it does severely restrict the ability of many business processes to be patentable under it. Many patents issued under the inital broad interpretation of State Street will likely be found invalid.

Anybody believing that Comiskey is sloppy drafting is smoking something. The typical judicial response to a case based on 103 is to rule based on 103. Taking the rare step of holding that 103 issues need not be addressed because of 101 applicability is no accident. If the CAFC did not intend to make a very broad statement, they never would have taken this route.

Comiskey will turn out to be a Very Big Deal

[SF]

"I just find it hard to believe that this particular panel simply screwed up - could they have really been that sloppy???"

... It would have to be pretty sloppy -- even for Judge Dyk. The more I think about it, the more I fear that metoo is correct that "unpatentable" referred to Section 101, rather than 102+103.

It looks like Flook was no fluke.

[Mr. T]

Are we entering a new Dark Ages? I mean, this is ....ed up, man. Didn't anyone do a "Flat Earth Society" check on those CAFC judges? "Can't have that quantum mechanical majic hoodoo voodoo in patents!"

Did technology and the hard sciences accelerate too fast for these guys to keep abreast of at least a Reader's Digest understanding? I mean, this stuff was already more than a half a century old when I first encountered it.

What a joke, and this is coming from Mr T. My head is about to explode!

[patent leather]

After reading this case for the tenth time, now I am inclined to think that "unpatentable" refers to 103, not 101. The infamous paragraph follows with footnote 16, which cites three 103 cases. If they were referring to 101, why would the footnote cite these case?

This opinion is sloppy, sloppy, sloppy. If we don't know what it means, how will the USPTO?

[George]

State Street didn't address whether there were any limits on business method patents, just that there was no special exception to patentability. The invention in State Street was an application of technology for a business purpose. Judge Rich rightfully concluded that this is not per se nonstatutory. However, just because an "invention" involves a method of doing business doesn't mean that it is an application of technology (within the technological arts) that warrants patent protection. The requirement that the invention involve technology is of constitutional magnitude. A technique for two people arbitrating a dispute, for instance, is not something that should be patented. It has nothing to do with the purpose of granting a patent which is to reward those who contribute to the advancement of the useful arts (technology) by providing for a limited time the exclusive right to make and sell the invention. It may be some type of contribution to society but not one for which a patent should be granted.

[Michael L. Slonecker]

Not to be argumentative, but there is no constitutional requirement that an invention involve "technology", a term that is amorphous at best. I for one am not prepared to jump on a bandwagon where "technology" is necessarily a constituent part of the term "art".

I would have a difficult time denying him access to the benefits of Title 35 merely because what he has done involves the conduct of arbitration, subject matter that some may feel is not deserving of passing through the Section 101 gate.

Michael,
Well... I do not think that every creation of t