In re Comiskey (Fed. Cir. 2009) (Revised Panel Opinion)(En Banc Order)
After a request for en banc rehearing, the original Federal Circuit panel has revised its decision in Comsikey – erasing the “misunderstood” phrases of the original opinion linking Sections 101 (subject matter) and 103 (nonobviousness). The original opinion implicitly held that any portion of an invention that would constitute nonstatutory subject matter would be considered de facto obvious. [Link]
The new opinion finds that Comiskey’s method claims do not present patentable subject matter and remanded the case to the PTO to determine the subject matter eligibility of the system claims. The Federal Circuit refused to consider nonobviousness issues – even though nonobviousness was the sole issue presented in the original appeal. Subject matter eligibility had been raised sua sponte by the panel.
Judges Moore and Newman each dissented from the en banc order. Judge Moore argued that the decision violates the court’s “well established precedent that this court will not consider new grounds of rejecting patent claims on appeal.”
How does this ruling square with In re Wheeler (08-1215):?
“APPELLATE PROCEDURE – REVIEW OF BPAI DECISION LIMITED TO GROUNDS RELIED ON BY THE BOARD
The Board rejected the claims based solely on grounds of anticipation. The court noted that it cannot, after reversing the anticipation rejections, substitute other rejections that might be more appropriate because its appellate review is limited to the grounds relied on by the Board:
“Our appellate review is limited to the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194, 196 (1947) (“[A] reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency. If those grounds are inadequate or improper, the court is powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”).”
SF,
Nice job on the Steelers-Cardinals picks.
Who do you see winning the Super Bowl?
At least this increases the chances of Bilski going up if they petition – when is Bilski’s deadline for a cert petition? Not passed yet?
And could we cut down on the miscellaneous ranting? Just a tired professional here, thanks.
Hi Bread. I like to think I have an open mind and that I am capable of listening. Isn’t it legitimate for me (and for you) to hold doggedly to an opinion, until logic powerful enough to displace it comes along. Besides, I continue to aspire to influence opinion, and the dispassionate analytical mind of the thoughtful legislator. Now that would be a coup. Naive? Yes. Hopeless? No.
For someone who has professed that his purpose is to learn, MaxDrei, you sure push the EP system an awful lot on these boards.
Isn’t it easier to listen when you are not talking? How can you truly learn, when it seems that your mind is already made up?
…so how about introducing to the CFR something like the EPO rule that says you get only one shot at amendment after the FAOM. Any more rounds of amendment are admissible only with the “consent” of the Examining Division. The effect of that rule is that patent attorneys need to write in the app as filed a decent set of dependent claim fall back positions. BTW, there are seldom more than 14 step down positions of enhanced patentability, as is revealed time and again by the number of “auxiliary requests” in EPO disputed proceedings. After filing, a quality search then issues, with an annex that exhaustively sets out where the app fails to meet the requirements of the EPC. Note that (contrary to popular wisdom) First to File as implemented in the EPC puts a high premium on drafting “quality” ie attorney activity before the end of the Paris year. I know, I’m on my one string violin again,but on the basis of my daily experience, and on reading this blog, I think it’s still needed, at least by those who will one day write amendments to the US patent statute.
The problem with the two part examination, is that there is no way to determine when it is finished and both examiners and applicants could use it as an excuse to delay further proceedings on the merits by giving rise to a perverse incentive for excessive perfection of the claim language.
The present system at least imposes penalties on the applicant for poor/unclear claim drafting by forcing the examiner to examine the claims “as best understood.”
“Mr.” Mooney
LOL
Careful Max, kissing up to trolls causes warts.
“They say the final is warranted because you amended. ”
Which is true.
“Some of these examiners ought to be criminally prosecuted.”
To be fair, some examiners only just realize that you have a 101 issue after the first amendment. I realize that this should probably make a nonf, but the temptation is just too great. And perhaps your amendment did cause the 101 issue or, more likely, a 112 issue. New matter is the biggest one that arises.
That’s enough “Chicken and Egg” stuff on 101 and Art 52. Mr Mooney mentioned somewhere the concept of pulling oneself up by one’s own bootstraps. I’m thinking there’s something of that here. Circular argument, that sort of thing. So, we’re done here, I would say.
“I have read the statue and the case law, and can hence say that unequivocally there is no statue or case law that states, “a particular method is not statutory because it is not tied to a particular machine that “performs the steps of the method.”
This particular “actual inventor” has read the STATUE and the caselaw. Lol. Keep in mind guys there is not statue that states things because they’re usually made of inanimate objects like stone.
“Therefore methods requiring human operators that are tied to particular machines are statutory.”
Hear that? All you have to do is tie your human operator to a particular machine. Preferably with strong rope.
“Can we say “Invention includes alleged invention”?”
We can, but we’d be wrong.
“you should not be using novelty and non-obviousness as the criterion to get through the “patent-eligible Y/N” 101 gate”
Says you.
“The European 101 test is “technical character” and it shuts out all the stuff I mentioned. Lots of “unpatentable” stuff does get through 101, which distresses the likes of you, but then it does get effectively filtered out by 102 or 103, because we in Europe have absolute novelty teeth that really bite and an obviousness provision that is brutal but fair. You know, this clear step by step approach does actually work.”
Yes but our 101 actually states that they must have invented something first, and that a patent is permitted for that. It does not even grant authority to to grant a patent if there is no invention.
I agree with you that step by step should be in place. If you fail 101 don’t even worry about 102 and 103 you OA will be one page long. At least it’ll make the response faster :)
Crikey. I had not realised that this was the USPTO way to “Manage the Workload”. Things are worse than I imagined. Thank you Babel, for explaining the situation so clearly. If the courts could come up with a bright line test on 101 patent-eligibility, and another bright line for 103, it would allow Applicants and Examiners to be more civilised in their dealings with each other, I would surmise.
I’m with you Max. In fact your 2-stage analysis should be done during examination, too.
There should be a first examination on 101 and 112 issues, with rejections, if necessary, and amendment. If there is anything left of the application at this point, then the art should be searched and rejections entered under 102/03.
MPEP requires examiners to do the search even if they are rejecting on non-art grounds such as 101 or 112. Dumb, dumb, dumb. In fact, in most instances I’ve seen, the examiner ignores this. They reject on 101 or 112 only and when you amend, they enter a final OA in which they reject on 102/03 for the first time. They say the final is warranted because you amended. Therefore, they cut you off from any meaningful chance to respond on the merits to the 102/03 rejections.
BAPI won’t review the premature final; you have to file a petition. So now you have the usual bad 102/03 rejections to appeal on the merits and the premature final for petition. The examiner has doubled the cost of prosecution to the client.
Some of these examiners ought to be criminally prosecuted.
6. I think you have missed my point, which is that “invention” must mean more than “meeting all the requirements of patentability”. Can we say “Invention includes alleged invention”?
Now, if you take 101 before you get to 102 and 103, you should not be using novelty and non-obviousness as the criterion to get through the “patent-eligible Y/N” 101 gate. The European 101 test is “technical character” and it shuts out all the stuff I mentioned. Lots of “unpatentable” stuff does get through 101, which distresses the likes of you, but then it does get effectively filtered out by 102 or 103, because we in Europe have absolute novelty teeth that really bite and an obviousness provision that is brutal but fair. You know, this clear step by step approach does actually work. Knowing that 102 and 103 are savage gives us Europeans a degree of calmness, about letting some old stuff through the 101 gate. It all works out alright in the end. Which comes quickly and painlessly.
Now I’ve read the Decision, I can see both points of view, the majority and the dissent. Reminds me of the stance of the Boards of Appeal of the EPO, namely, no new issues on appeal, except that we have to look at novelty (even if not raised below) before we get to obviousness. Seems to me that also in the US a court ought to address 101 before it gets to 103. If the lower instance found a claim obvious, it’s OK for the appeal instance to find that this claim doesn’t even make it over the first hurdle, before even getting to the obviousness hurdle further downstream.
Posted by: Leopold Bloom wrote:
By the way, is anyone else receiving 101 rejections based on the Love memorandum that state that a particular method is not statutory because it is “not tied to a particular machine that performs the steps of the method”? Perhaps 6 would like to explain to the class why this is not and cannot be the actual law? (It’s not even an accurate quote of the Love memorandum, in fact.)
I have not read this Love memo. However, as an “Actual Inventor” I have read the statue and the case law, and can hence say that unequivocally there is no statue or case law that states, “a particular method is not statutory because it is not tied to a particular machine that “performs the steps of the method.”
Therefore methods requiring human operators that are tied to particular machines are statutory. For example, a process for a Surgeon to perform an appendicectomy is statutory because it requires a particular apparatus or machine. The apparatus or machine cant remove the appendice automatically and therefore requires the human operator.i.e.. Surgeon.
Mr Malcolm wrote:
But here’s another claim for you:
A method for making a cake in an oven, comprising
calculating the optimum temperature for baking the cake, taking into account each of the following key cake factors: temperature of said oven, moisture content of batter for said cake, and the conductivity of a cake pan for holding said batter;
typing each of the key cake factors using a typewriter while whistling the song “If I Knew You Were Coming I Would Have Baked A Cake”;
and making the cake in the oven at the calculated temperature.
Statutory?
As an “Actual Inventor” I would be glad to answer this for you Mr. Malcolm. The claim is patentable yes, because its tied to a particular machine, said machine being an oven.
Also during the baking process a transformation is occuring from one state to another which make the claims statutory by meeting the transformation prong of the Bilski case as well.
I suggest you read the enbanc Bilski case and apply it to the claims and you will no doubt learn this for yourself.
Class Dismissed.
6, I love the irony of your definition for invention. Particularly, definition 6, which describes your version of the Law spot on.
Newman once again get it right. They rally need to get more patent savvy judges on the CAFC.
You know me Max, I’m a dictionary person to the bitter end.
“in⋅ven⋅tion /ɪnˈvɛnʃən/ Show Spelled Pronunciation [in-ven-shuhn] Show IPA Pronunciation
–noun 1. the act of inventing.
2. U.S. Patent Law. a new, useful process, machine, improvement, etc., that did not exist previously and that is recognized as the product of some unique intuition or genius, as distinguished from ordinary mechanical skill or craftsmanship.
3. anything invented or devised.
4. the power or faculty of inventing, devising, or originating.
5. an act or instance of creating or producing by exercise of the imagination, esp. in art, music, etc.
6. something fabricated, as a false statement.
7. Sociology. the creation of a new culture trait, pattern, etc.
8. Music. a short piece, contrapuntal in nature, generally based on one subject.
9. Rhetoric. (traditionally) one of the five steps in speech preparation, the process of choosing ideas appropriate to the subject, audience, and occasion.
10. Archaic. the act of finding. ”
We can use 2 if you like. Random House. The parts I like best about 2 is “that did not exist previously” (notice this does not say anything about the bs terms and conditions in 102) and “as distinguished from ordinary mechanical skill or craftsmanship” (notice this does not say anything about the bs in 103). Indeed this is how the layperson understands it and there is no reason for anyone else to interpret it differently.
It was precisely when the practice of ordinary skill became patentable that the patent system turned inexoriably downhill. Idk, maybe that was the original patent act. Except the effects weren’t really felt for hundreds of years because technical knowledge was so scarce to begin with. This whole hogwash about “disclosure” etc. is precisely that as well. Likewise if one person has already made your invention, and kept it to himself or threw away the idea in disgust it is irrelevant. Your idea is not an invention. End of story. You were not first. Sorry. That same scenario is also indicative that your idea was likely merely the practice of ordinary skill if there are others popping up with the same idea. Ideas like that do not need “spurring”, they’re made, and if they’re worth something then they’ll be discussed amongst people, and likely brought to market.
You can say that I’m too far to the side of people who feel patenting only follows innovation, but let’s get real here. That is precisely what happens in most fields. Some fields, like perhaps pharma, might need something besides a patent system to spur them to make huge investments. But by and large, the patent laws are written on their face to spur the disclosure of ideas that would otherwise never be known about, and are genuinely unique, and this is why the “flash of genius” was born. The SC could see specifically what the intent of the laws was. It was only after seeing that the laws are unworkable in everyday life (because of trivial administrative decisions) that they backed away. Flash of genius was no mistake, it was there for a reason. It was a bad test though, there is a better test needed, but it seems there is no real test to implement the intent of the laws. That’s a problem with reality. It likely can’t be solved.
In the mean time we could at least pretend to implement a test properly. Make sure that the invention is indeed an invention and falls in a category to pass 101. 102 is not redundant with this check because 102 is a last ditch catch that if for some reason 101 does not catch the alleged invention as not being an invention for one reason or another, then it dang sure will not get past 102 if one of those conditions are met. Likewise with 103. 112 should not even ever come into play as a rejection. If you don’t meet 112 for one reason or other you should merely get the application back, no OA on any merits until it does. That goes for 112 1st and 2nd. Why is that? 112 sets forth what must be put forth in the application for it to EVEN BE AN APPLICATION.
“35 U.S.C. 111 Application.
(a) IN GENERAL. —
(1) WRITTEN APPLICATION. —An application for patent shall be made, or
authorized to be made, by the inventor, except as otherwise provided in this title, in
writing to the Director.
(2) CONTENTS. —Such application shall include —
(A) a specification as prescribed by section 112 of this title;”
Do you see that from 111? If you haven’t included section (A) you don’t even have an “application” yet, it is incomplete. But we just gloss over that little requirement like it is not a thing.
I know why the things aren’t done as above. And most reasons are bs. Eventually I imagine that some of those things will be implemented as the system gets older and more mature.
Idk, those are just random musings on what I personally would suggest if starting from scratch and was trying to make a system that made one lick of sense, and could be ciphered through by the avg joe good enough to be of good use to him. There is no need to have laws on the books that cannot be of immediate use to the people who are supposedly supporting the system imposing the laws.
Bottom line for the 101 discussion: If congress wanted to say “Whoever makes or discovers any useful process…” instead of “Whoever invents or discovers any NEW and useful process…” then they would have. But they didn’t and there is not reason to read their words out of the statute. Even prior caselaw and the intention to not substantively change the previous law. If they wrote it then by mo fin surely they meant it.
This is btw actually the same argument people put forward for GSK/Tafas’s position. But, but, congress said that we could use 121 for “any” application and they meant all applications. Hmmm, well that’s funny, the substantive law previous to that was not that way and they expressly did not want to change that. But I guess since congress supposedly said something then by goodness they meant it.
Let that record show that barring software patents was equated with Vietnamese war crimes for the first time ever in this thread.
I think the CAFC is sincerely trying to deliver, step by tortuous step, legal certainty on 101. But come on then, 6. How are YOU going to define “invention”? In Europe, our 1973 definition bars methods of doing business, abstract ideas and computer programs, and yet a lot of CII stuff gets through to issue (specially if a competent drafter does the drafting) to the extent that neither the outrage of the anti-patent brigade nor that of the business method patenters amounts to anything resembling a head of steam. Are you proposing for your country a similar statutory bar, or instead a positive third leg of patent-eligibility, to go with “novel” and “non-obvious”? Then again, maybe you envisage a judicial view of 101 that overlaps, muddles up with, or duplicates “novel and not obvious”? I’m interested.
Malcolm, you are back to talking about food recipes again.
“If so, please explain to me the inherent difference between software and hardware. ”
One is written in language, one is not language. We cool?
“”But, setting 102/3 issues aside when looking at 101 has the consequence that stuff that is notoriously “old” or “well-known” will then fall under the designation “invention”. A whole lot of people, until trained in the necessary mindset, struggle to get their minds around that.””
Except that should never have been, nor should be now, the definition of “invention”. And the “invents” part of 101 should be just as much a bar over prior art as 102. A pity that it isn’t. One day.
“Perhaps 6 would like to explain to the class why this is not and cannot be the actual law? ”
I decline for today, I’m le tired.
/media/docs/2009/03/bilski_guidance_memo.pdf
link to uspto.gov
Idk about all this mess but I sent out my first Bilski the other day. I have a feeling it will be an ok 101, there simply is no transformation, and there is only one product recited and it is general as he ll. More general than an “amp”.
“As long as the objectives are met, who cares?” Malcolm Mooney.
“…it became necessary to destroy the town to save it.” AP Correspondent Peter Arnett, quoting an unnamed Air Force Major during the Vietnam War.
Fyi, another crap patent bites the dust:
link to cafc.uscourts.gov
38. A media playback system coupled to a network, the media playback system comprising:
a user-interface to receive a user-query;
a search module to send a search request based on the user-query to one or more network sites, and to receive from the one or more network sites at least a first search result that references a plurality of media resources, each of the media resources having a corresponding network site; and
a media player configured to access the network sites of at least some of the media resources referenced in the first search result, and to control playback of at least some of the media resources referenced in the first search result, wherein the media player controls playback of the at least some of the media resources to be substantially automatic and sequential.
USPN 6725275 was filed way way back in 2002, before anyone even DREAMED of connecting media playback to information on the internet.
My kudos, by the way, to the district court judge in this case, William Schwarzer
link to en.wikipedia.org
He’s 84 years old but he saw right through this troll’s dust and kicked it in the nads.
Anon – “Not even your robot chef is patentable–it is just general purpose servos, gears, etc and a general purpose processor running non-statutory software.”
Wow, and to think that I can get shxt here for declaring that an invention is obvious after looking at the claims. Here we have Anon declaring a robot chef unpatentable without even seeing the claims!
But you do get some credit for completely avoiding the issues raised in my 1:17 comment.
MM,
“But you can patent a novel machine, certainly.”
No, you can’t — not under current Cornea. Any apparatus you recite is a “general purpose _____”.
Unless, of course, you recite a specific machine, e.g., an Intel 8086 processor. But under KSR, that is just another obvious element.
You don’t think that goes beyond processors? At least two posters have commented on getting ludicrous 101 rejections on other hardware.
Not even your robot chef is patentable–it is just general purpose servos, gears, etc and a general purpose processor running non-statutory software.
“Who Are You Going to Blame for the huge problems our IP industry faces today”
This is not a difficult question. But it assumes that one is capable of rationally assigning measures of blame in other situations, e.g., the “huge problems” the mortgage industry faces today.
Some people can manage this. Other folks with softer brains choose to blame boogie men, e.g., Bill Clinton or “poor minorities.”
Yes, Erez, patents are “one such mechanism” for increasing a return on investment (as I noted in my original comment).
But my point (again) is that granting patents on methods for “increasing returns on investment” is an ineffective means for encouraging the development of innovative methods for increasing returns on investment. It is the patent equivalent of lifting oneself up by one’s bootstraps. Have you tried it lately?
Malcolm, you wrote: “The incentive to innovate is to improve one’s life. The incentive to patent is to maximize personal profit from the innovation.”
If you were to leave the USPTO, you would think differently.
Innovation is a natural result of a person focusing on a field of endeavor. Patents are used by society to entice people to focus on desired fields of endeavor and to convert their wild ideas to practical products.
For example, a scientist can either research some intersting basic science or some boring practical application. The choice is based on where more money/fame is to be had.
Also, an innovative idea is far from being useful. A lot of money must be invested to develop, test and market a product. Without some mechanism that will increase a chance of a return on the investment, there is no chance of any product being developed. Patents are one such mechanism.
“you should be able to write a patent that has a diagram of the full adder in the spec at any appropriate level of abstraction: transistors, NAND gates, etc. You should be able to patent apparatus and method claims that cover what PHOSITA would get out of the spec (i.e., any implementation of a full adder despite various changes in types of transistors, NAND gate implementastions, etc.).”
I doubt you can patent the method claims, as the methods are ultimately unpatentable algorithms.
But you can patent a novel machine, certainly. You just need to describe the arrangement of parts in a specific manner.
Here’s the problem: the folks who make a living on software patents will never, never, ever want to draft those applications. Why, they’d almost start to resemble some of the biotech applications that routinely get filed. You know, they’d have to include all kinds of written description support and then you’d get limited to one very very specific species and everybody cries about how the patent isn’t worth anything because the claim only covers one of the awesome embodiments and not every conceivable embodiment.
“101 is being twisted all out of shape to meet policy objectives.”
As long as the objectives are met, who cares?
Let’s face it: most of the complaints here are with the policy objectives, hence questions like “are you saying that software is inherently unpatentable?”
Yes, I am. Deal with it.
“explain to me the inherent difference between software and hardware.”
It’s the difference between a recipe and robot chef. Again: deal with it. That’s reality. It may not be “technically correct” to Professor Egghead but legally it’s a slam dunk.
Prohibiting the patenting of software is more consistent than allowing it. Yes, that’s true even when 101 is used as the hammer.
“…so I can keep typing while peeling a banana.”
–
“…”
=
existing software (voice recognition)
Leopold said:
“and I’m not aware of any humans that can amplify signals through purely mental.”
Very interesting point. I recently saw an ad (by SONY, I think) for a new game in which the user is fitted with scalp electrodes connected to an amp. The user is able, using just his brain waves, to control some sort of external device. I believe the idea is to pass balls through hoops using just your mental “thoughts” — not a good word choice, as it’s not clear brain waves = thoughts. But the creation of brain waves is the epitome of mental process.
Of course, the invention is not a “pure” mental process since there is the intervening circuitry between the scalp and the actuator that moves the balls. But there is clearly a (presumably) novel mental step, which would, at least under Newman’s analysis, be sufficient to make the process patentable over art.
Anybody seen an application for this invention yet? I will be glad when they have refined to the point the brain waves control a keyboard so I can keep typing while peeling a banana.
Leopold: “I’ve been waiting for the absurd Bilski rejections – it sounds like you’ve already got one.”
Here is a quote in an OA I’m working on right now: “the device as in claims 1-20 disclose software logic; which is non-statutory subject matter.”
The claim is to a digital device comprising a video decoder, and so forth.
I’m starting to receive some 101 rejections, but most Examiners agree to withdraw the 101 rejections if I add “an apparatus” into the claim. The CAFC has muddied the issue and, unfortunately as of right now, each Examiner has his domain over what a 101 rejection is. The PTO needs to clarify 101 rejections to the Examiners asap because dealing with these bogus 101 rejections is a waste of my time, client money, and the Examiner’s time.
It’s hard to imagine that the bpai is going to take its’ role as an appeals court under zurko any more seriously now that its’ appeals court, cafc, is so cavalier with process.
Have not read the opinion, but i bet it starts with de novo claim construction – and then ipsi dixi – [insert desired result].
Nice to see that J Moore takes her position seriously.
Hello Anon. E. Mouse,
Re: “It’s like Alice in Wonderland. The BPAI are hosting a mad tea party.”
Who Are You Going to Blame for the huge problems our IP industry faces today?
Our industry has been hijacked by the Coalition for Patent Fairness conspiracy comprised Cisco and there ilk who would dummy-down the U.S. Patents system.
Isn’t it apparent that the Coalition for Patent Fairness has been Lobbying for many years both openly and covertly so loudly as to be heard by the main stream Media, little tributary Media and by We the American People, as well as the PTO management team including its most impressionable dimwits, gullible dishonest Congressmen on the take, by Judges across the Land and in Washington’s use-to-be patent-friendly patent-savvy Federal Circuit Court of Appeals, and by our Honorable Supreme Court Justices who, as Boston Legal’s Alan Shore’s stunning lambasting thereof put it so well, “You folks aren’t as hot as all get out” — to violate the Constitution mostly unwittingly, but wittingly as well.
It seems our government’s three branches “don’t give adamn for our greenbackin’ dollar” (lyrics by the Kingston Trio) any more than they do for one of the most stunning achievements of our Founding Fathers, The United States Constitution — we went off the gold standard and now are mostly off the Constitutional standard. And our patent system is in shambles. I sympathize with the many professional dedicated Examiners who have to deal with asswhole management day in and day out.
Hello Anon. E. Mouse,
Re: “It’s like Alice in Wonderland. The BPAI are hosting a mad tea party.”
Who Are You Going to Blame for the huge problems our IP industry faces today?
Our industry has been hijacked by the Coalition for Patent Fairness conspiracy comprised Cisco and there ilk who would dummy-down the U.S. Patents system.
Isn’t it apparent that the Coalition for Patent Fairness has been Lobbying for many years both openly and covertly so loudly as to be heard by the main stream Media, little tributary Media and by We the American People, as well as the PTO management team including its most impressionable dimwits, gullible dishonest Congressmen on the take, by Judges across the Land and in Washington’s use-to-be patent-friendly patent-savvy Federal Circuit Court of Appeals, and by our Honorable Supreme Court Justices who, as Boston Legal’s Alan Shore’s stunning lambasting thereof put it so well, “You folks aren’t as hot as all get out” — to violate the Constitution mostly unwittingly, but wittingly as well.
It seems our government’s three branches “don’t give adamn for our greenbackin’ dollar” (lyrics by the Kingston Trio) any more than they do for one of the most stunning achievements of our Founding Fathers, The United States Constitution — we went off the gold standard and now are mostly off the Constitutional standard. And our patent system is in shambles. I sympathize with the many professional dedicated Examiners who have to deal with asswhole management day in and day out.
re: Beauregard claims not statutory at BPAI:
It’s like Alice in Wonderland. The BPAI are hosting a mad tea party.
A floppy disk is patentable subject matter.
A floppy disk with software recorded on it is not patentable subject matter.
wow.
Judith,
“Software” is like a circuit diagram for hardware. It describes an arrangement of transistors/diodes (if burned into a PROM), an arrangement of magnetic particles (if stored on a hard or floppy disk), etc. When connected to another arrangement of transistors (e.g., a general purpose processor), it becomes a single special purpose machine. Rich understood that (e.g., Alappat)
Considering only 101 issues, you shouldn’t be able to patent the circuit diagram for a full adder, nor should you be able to patent “a = b + c;”
But, you should be able to write a patent that has a diagram of the full adder in the spec at any appropriate level of abstraction: transistors, NAND gates, etc. You should be able to patent apparatus and method claims that cover what PHOSITA would get out of the spec (i.e., any implementation of a full adder despite various changes in types of transistors, NAND gate implementastions, etc.).
Similarly, you should be able to write a patent spec that describes software, and you should be able to claim every embodiment that PHOSITA would understand from that spec.
But that isn’t the law anymore.
IMHO, lax enforcement of 102, 103, and 112 (enablement, written description) has confused the issues until it is all doo-doo. 101 is being twisted all out of shape to meet policy objectives.
“So, Mr. Mooney are you saying that software is inherently unpatentable? If so, please explain to me the inherent difference between software and hardware.”
Software is doo-doo. Hardware might not be doo-doo.
That’s as much as you’re going to get on this board, Judith.
Ray: I just noticed he typed “AFC” and not “NFC” — funny.
So, Mr. Mooney are you saying that software is inherently unpatentable? If so, please explain to me the inherent difference between software and hardware. If not, what language would clearly define a software process as patentable?
“6 is correct. I have received a 101 Bilski rejection for a method where the apparatus is a new amplifier and the method recites, e.g., ‘amplifying a signal ….’
Signal is Nuitjen, amplifier is not a particular machine.
I’m pondering how to amend the claim to recite a particular machine — because the method merely transforms signals.”
Anonymous, do what you have to do, but whatever 1/6 and the BPAI say, an amplifier almost certainly is a particular machine. Amplifying a signal is not an “abstract idea,” and I’m not aware of any humans that can amplify signals through purely mental.
Have you considered defining the signal a little more, e.g., a radio-frequency signal? I deal with this type of subject matter occasionally; I’ve been waiting for the absurd Bilski rejections – it sounds like you’ve already got one.
By the way, is anyone else receiving 101 rejections based on the Love memorandum that state that a particular method is not statutory because it is “not tied to a particular machine that performs the steps of the method”? Perhaps 6 would like to explain to the class why this is not and cannot be the actual law? (It’s not even an accurate quote of the Love memorandum, in fact.)
“But, setting 102/3 issues aside when looking at 101 has the consequence that stuff that is notoriously “old” or “well-known” will then fall under the designation “invention”. A whole lot of people, until trained in the necessary mindset, struggle to get their minds around that.”
Like Mooney.
Haven’t read the CAFC utterances yet but Babel makes sense. Separating 101 from 102/3 is what the EPO, after much hand-wringing, decided in the end to do. Thus, 101 patentability is an “absolute” thing, rather than “relative” to the current state of the art. But, setting 102/3 issues aside when looking at 101 has the consequence that stuff that is notoriously “old” or “well-known” will then fall under the designation “invention”. A whole lot of people, until trained in the necessary mindset, struggle to get their minds around that.
Tell me, isn’t this all an elaborate “role play” exercise by the CAFC. Each member acts out a particular legal line on 101, and then the interested circles debate. What emerges from all this competitive activity is the “fittest” legal line. Rather like how the EPO, without the dubious benefit of Stare Decisis, got to where it is now, on Art 52(2) EPC.
BigGuy,
6 is correct. I have received a 101 Bilski rejection for a method where the apparatus is a new amplifier and the method recites, e.g., “amplifying a signal ….”
Signal is Nuitjen, amplifier is not a particular machine.
I’m pondering how to amend the claim to recite a particular machine — because the method merely transforms signals.
The Cardinals with the ancient Kurt Warner at QB would be news. Weren’t they the Chicago (not St. Louis) Cardinals last time they were good?
How can an original team in the league never even have APPEARED in the Super Bowl? Well, poor ownership helps witht hat I guess.
It wasn’t wrong. It wasn’t poorly written. It wasn’t intrinsically confusing.
It was “misunderstood.”
Judith said:
“The CAFC seems to have decided that if they can interpret the steps to be mental, it will be considered a non-statutory process. She’s not advocating patenting mental processes at all.”
I agree with Judith’s observations but I think there are Newman-nuances here that are being overlooked.
Like, it has long been the law that having a mental step included with non-mental steps in a process claim does not invalidate the claim. Every claimed step need not be tied to a machine or done by a machine or transform something. You can include a step such as: “Step (c) — multiplying the mass by the speed of light squared to get the energy”, and that step, alone, does not deep-six the claim.
Individual steps are not evaluated as statutory subject matter, or novel, or obvious. Claims are. It’s when a process claim as a whole is not tied to a machine or does not transform that Bilski blisters your bum.
I believe what Newman’s position is that if the entire process acquires novelty as a result of the mental process step alone, it is still patentable subject matter as per 101. This comes from her strict separation of 101 and 102/103. Patentable subject matter determination is completely independent from novelty/obviousness determination.
And she is right.
But if you have a process claim that is entirely mental steps and therefore not statutory subject matter, it seems to me to be less than helpful from a policy point of view to allow the inventor to somehow package that non-statutory subject matter as a B’gard claim and elevate it to a statutory status.
JAOI
Re
“Socialism – any of various economic and political theories advocating collective or governmental ownership and administration of the means of production and distribution of goods”)”
and
“Globalized Cartels are increasingly in control of our government’s three branches”
Hmmm, interesting… if the capitalist cartels were to own the government AND the means of production, would that be socialism? Not unless the people own the cartels… so if shareholdings in the cartels are sufficiently broadly distributed among the people would we have a kind of capitalist socialism???
“Is they a name for “a Government controlled by Globalized Cartels.””
Try: Capitalist oligarchy/Plutocracy/Corporatocracy
“Mooney knows just a little too much about baking cakes … not that there’s anything wrong with that.”
…and one of his fav cases is Chef America? It’s all coming together…
Mooney knows just a little too much about baking cakes … not that there’s anything wrong with that.
pieces of paper, robots, … next thing you know the robots will be sitting around with Mooney wearing satin panties and sipping white wine, pretending to have relevant commentary on Supreme Court cases.
> Steelers will win the SuperBowl by at least two touchdowns, regardless of who wins the AFC championship.
Even if the Ravens beat the Steelers in the AFC Championship, the Steelers STILL win the Super Bowl? Odd …
“Um, a method for transmitting radio signals with an amplifier is not “tied to a particular machine”?”
Um, I didn’t say that it was, but you can read whatever you like into other people’s comments and act like a big boy all by yourself over in the corner if you like.
Although, he may be right, under the new school bilski test, you may get that process shot down. Time will tell.
And I vote that he hand pick the arsehole flamers on the board and ban them. You’ll be one of the first to go. Right after Cave. Who is probably your alter ego.
” ‘What, you have a new amplifier and method for transmitting radio with more clarity? Sorry, can’t claim the signal, can’t claim the amplifier.’
Um, you can still claim the amp, Bilski is inapplicable to product/apparatus claims.”
Um, a method for transmitting radio signals with an amplifier is not “tied to a particular machine”? You are truly an idi0t. I vote for Dennis putting posting limits on this site as well.
“Steelers will win the SuperBowl by at least two touchdowns, regardless of who wins the AFC championship.”
I’ll agree with that.
You’re right, BPAI ignores/overules B’gard in Cornea. I was looking at Uceda, not Cornea.
I must’ve had something in my eye.
“SF’s picks for the NFC and AFC championship games, which are: Steelers and Cardinals.”
Steelers will win the SuperBowl by at least two touchdowns, regardless of who wins the AFC championship.
“Can we patent old pieces of paper with new recipes written on them?”
So long as the recipes produce a useful, concrete, and tangible result, yes. Particularly if it’s a recipe for crow.
Let me quote myself: “I am suggesting that, if a process does not meet the machine-transformation test, a generic computer-readable medium configured to be used to perform that process is probably not patentable. The caselaw isn’t there yet, but I could easily see it going there.”
link to patentlyo.com
Next up, SF’s picks for the NFC and AFC championship games, which are: Steelers and Cardinals.
“You have to be careful to claim only tangible media.”
Like a piece of paper? Computers can read pieces of paper. Is paper tangible? Robots have computer brains. Robot chefs can read recipes and the recipes change the robot’s functionality. Can we patent old pieces of paper with new recipes written on them?
Why not?
The answer is we can’t, for the same reason that computer-readable media isn’t patentable because an allegedly new “process” is encoded onto its surface.
This is your future talking.
Elfin, “I suppose those who think their methods are insulated from Bilski’s reach merely by conversion to a computer-readable-medium ‘apparatus’ should take pause.”
Bingo! The Board isn’t going to allow applicants to claim abstract ideas by adding token structure. Get a clue people!
By the way, contrary to Yike’s apparent insinuation, the spec in Ex Parte Cornea-Hasegan did *not* define a computer readable medium to include the downloading scenario.
“Is this the same 6?”
It is I, mr egg.
My comments about the CAFC are facetious above.
“6, I must have missed your response to the year end additional lesson of the word ‘an” that the Patent Hawk provided:”
Phawks site keeps cutting me off for posting too many times. It did this a year or two ago too. F his site. I might read it occasionally, but if he’s going to allow a limit on the postings, and thus the conversation, then I’ll just not post. After a review I’ll try to get back to you here later.
“What, you have a new amplifier and method for transmitting radio with more clarity? Sorry, can’t claim the signal, can’t claim the amplifier.”
Um, you can still claim the amp, Bilski is inapplicable to product/apparatus claims.
“You think the incentive for Intel to innovate is to “improve one’s life”? Nope, it’s all about the money. ”
They’re improving their life by making money tho rite? MM is right except he didn’t go all the way. Corporations incentive to innovate is to improve their bottom line through making money. However, they don’t really care how this is achieved so long as it happens and happens to the max. The incentive to patent is indeed seperate from this incentive because it presumes that the bottom line will be assisted by protecting the innovation. If the innovation is such that only the manufacturer can manage it (because they are awesome like that) then they have no incentive to tell you how to make/use from the patent system because the incentive, making money, is, in their opinion, not best served by obtaining a patent. Therefor we see that the motivation of companies is to make money through any means (broadly speaking), and the motivation to patent is to make money by allowing/preventing others from making products. They are two seperate motivations however and MM is right that they are too often confused.
“It’s expensive to innovate, and cheap to copy.
”
Unless we’re talking about biz methods/computer implemented methods. Right?
“The CAFC seems to have decided that if they can interpret the steps to be mental, it will be considered a non-statutory process. She’s not advocating patenting mental processes at all.”
I’m reading it now, but if what you say is taken to be true, then she is arguing something that didn’t even need to be said. If the applicant wishes to nail his process down through claim drafting sufficiently to make it not be able to be construed as a mental process then so be it. But we have to remember, Newman (and iirc her sweet darlin Moore) is all for allowing importation of limitations from the spec. The rest of the judges are not. You need to claim WHAT YOU BELIEVE TO BE YOUR INVENTION. If you do not include limitations limiting the interpretation then the panel is free to interpret it however it dmn well pleases as it did here (maybe in accordance with the spec, as long as this is not too far removed from the rest of the art).
There’s a lesson to be learned here. Don’t be like Newman and allow importation of limitations. I’m seeing this more and more in my responses from attorneys. Makes for an easy final, and as long as I don’t get the Newman/Moore combo on my 3 judge panel then I’m in the clear.
I’m off to Bilski some fools, as well as Miyazaki em for kicks. Throwing in the same art as previously applied for lols, and making applicant aware that I will personally sign an affidavit stating that a certain process was well known in the art a year prior to his FD and/or go find my college notes for epic lulz.
“No, BPAI didn’t overrule B’gard. This is SOP for the PTO.”
Umm… no. Read today’s decision. It’s not the standard problem of overinclusivness of non-physical media. It’s this:
“When broadly construed in a manner consistent with Appellant’s Specification, the claimed “computer readable media” limits the scope of the claimed media to tangible media embodiments…Even so, analysis of a “manufacture” claim and a “process” claim is the same under § 101.” citing AT&T and StateStreet.
And then, “Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim.”
Perhaps it’s case-specific, but certainly sounds like they’ve casted Beauregard aside here.
No, BPAI didn’t overrule B’gard.
This is SOP for the PTO. If your definition of medium can be read to include a signal (i.e., you tried to claim floppy disks *and* downloading software from the internet), it isn’t statutory.
You have to be careful to claim only tangible media. Not sure what magic words that takes these days….especially if the spec says computer program products include downloads.
“It’s expensive to innovate”
LOL. I guess that’s why some folks work full-time as partners in law firms: to support their innovating habit.
link to techdirt.com
Did you know that you can save money by enlisting the help of your co-worker’s wife? ROTFLMAO.
“The thing about Ex Parte Cornea-Hasegan is that it appears to apply Bilski to a Beauregard claim, i.e., not a method.”
Except that Beauregard claims are methods in every respect except for an articicial respect for which no legal justification has ever been provided because (wait for it) NONE EXISTS.
” I suppose those who think their methods are insulated from Bilski’s reach merely by conversion to a computer-readable-medium ‘apparatus’ should take pause.”
I’d do more than “take pause.” Then again, I suppose you could just pretend later on that “nobody anticipated any of these shocking developments.”
Judith: “The CAFC seems to have decided that if they can interpret the steps to be mental, it will be considered a non-statutory process.”
Congrats. You are now up-to-date on the case law as it was understood by most patent attorneys in 2007.
“It seems that in judicial vacuum (created by the frightened CAFC), the thugs are making a power grab.”
LOL. Here, “thugs” equals the overwhelming weight of public opinion, including a substantial fraction of patent attorneys, experts and workers in the fields most affected by the changes.
“It seems that we must come up with a new “term” for something that is inherently a computer implemented process”
How about an old term like “a well-drafted claim of reasonable scope”?
“Exactly, MM.Typewriters and copy machines should not be statutory subject matter, either.”
Typewriters and copy machines aren’t methods, bro’.
But here’s another claim for you:
A method for making a cake in an oven, comprising
calculating the optimum temperature for baking the cake, taking into account each of the following key cake factors: temperature of said oven, moisture content of batter for said cake, and the conductivity of a cake pan for holding said batter;
typing each of the key cake factors using a typewriter while whistling the song “If I Knew You Were Coming I Would Have Baked A Cake”;
and making the cake in the oven at the calculated temperature.
Statutory?
Plenty of innovation going on here, by the way. And yet, I’m not compelled to file an application.
EM, it was only a month or so ago in Ex Parte Li that the BPAI said the following: “It has been the practice for a number of years that a ‘Beauregard Claim’ of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten.”
I guess the Board is now reconsidering that longstanding practice…
Yikes:
The thing about Ex Parte Cornea-Hasegan is that it appears to apply Bilski to a Beauregard claim, i.e., not a method. Although the claim here may be completely abstract manipulations of numbers, I suppose those who think their methods are insulated from Bilski’s reach merely by conversion to a computer-readable-medium ‘apparatus’ should take pause.
EM
So the Patent Office has indeed grabbed the power from the Courts…
Since we now have the BPAI overruling Alappat with the (non-software) Bilski assist, and the BPAI providing the necessary interpretation of an en banc CAFC level court decision (both items as noted by Yikes). Noise runs amuck.
It seems that in judicial vacuum (created by the frightened CAFC), the thugs are making a power grab. I certainly hope these actions are not being lost on the CAFC and the Supremes.
You think the incentive for Intel to innovate is to “improve one’s life”? Nope, it’s all about the money. And part of a fiscal incentive is the ability to keep others from copying your products. It’s expensive to innovate, and cheap to copy.
If you read Newman’s dissent, her point is that just because something CAN be performed mentally (e.g. calculating the forward-value of a commodity) doesn’t necessarily exclude the machine-implemented process for the same calculation from patentability. The CAFC seems to have decided that if they can interpret the steps to be mental, it will be considered a non-statutory process. She’s not advocating patenting mental processes at all.
It seems that we must come up with a new “term” for something that is inherently a computer implemented process, to exclude this bogus 101 path.
Exactly, MM.
Typewriters and copy machines should not be statutory subject matter, either.
it’s all doo-doo.
EM, see also Ex Parte Cornea-Hasegan.
At least we have our certainty back. Nothing electrical or electronic can pass the “particular machine” test.
Alappat has been “overruled” by the BPAI (after the Fed. Cir. gutted it for them).
This is, of course, the correct result given the majority opinion in Bilski.
Next stop: methods that determine anything using analog circuits (e.g., transistors, op-amps, etc.) won’t pass the statutory subject matter test.
Why? A processor is a collection of transistors that may be implemented in several different ways. Same thing for an op-amp or any other amplifiers.
What, you have a new amplifier and method for transmitting radio with more clarity? Sorry, can’t claim the signal, can’t claim the amplifier.
“those terms in the context of an auction claim could be human rather than computer”
That’s true of many claims that recite “servers” and “networks” in the context of bogus methods for transmitting information from point A to point B.
Computers! Networks! They are faster than typewriters and copy machines! Nobody could have predicted this until around 1989 or thereabouts.