Bilski v. Doll: Reconsidering Patentable Subject Matter

Bilski v. Doll (Supreme Court 2009)

The Supreme Court has granted certiorari in an important case challenging the scope of patentable subject matter. [Order]

Questions Presented:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

Prior Coverage of the Case:

• Supreme Court Docket
• Mar 5, 2009: Bilski v. Doll: Round I of Amicus Briefs  
• Mar 1, 2009: Patentable Subject Matter Redux: Bilski 2009
• Jan 30, 2009: BPAI Again Rejects System Claims under Bilski  
• Jan 28, 2009: Bilski Petitions Supreme Court to Decide Issues of Patentable Subject Matter
• Jan 27, 2009: Should Patent Attorneys Support Bilski?
• Nov 18, 2008: Software Method Claims: Bilski in light of Benson  
• Nov 13, 2008: Post-Bilski BPAI Approves of Beauregard Claims
• Nov 10, 2008: Applying Bilski to Metabolite’s Diagnosis Claim   
• Nov 4, 2008: Holman: Applying Bilski to Biotechnology and the Life Sciences
• Nov 2, 2008: Collins: In re Bilski: Tangibility Gone “Meta”
• Oct 30, 2008: In re Bilski: Patentable Process Must Either (1) be Tied to a particular machine or (2) Transform a Particular Article
• May 8, 2008: CAFC Hears En Banc Bilski Case (oral arguments)
• Apr 10, 2008: Ex Parte Bilski: On the Briefs
• Mar 28, 2008: Ex Parte Bilski: Once Again Rethinking the Scope of Patentable Subject Matter   
• Feb 15, 2008: Bilski: Full CAFC to Reexamine the Scope of Subject Matter Patentability

Documents:

• Supreme Court: Bilski Petition for Certiorari
• Supreme Court: Government Opposition to Certiorari, Bilski Government Opposition to Certiorari
• Supreme Court: Bilski Reply in Support of Certiorari, Bilski.reply.pdf
• Supreme Court: Nine Amicus Briefs In Support of Certiorari.
• Federal Circuit: En Banc Decision: 07-1130.pdf
• Federal Circuit: Dozens of Amicus Briefs
• PTO Board of Patent Appeals & Interferences Bilski Decision: BPAI.Bilski.pdf

Amicus Support:

• According to the Supreme Court rule, the petitioner (here Bilski) now has 45 days to file its opening brief on the merits. The respondent's brief is ordinarily due within thirty days of that date. Any amicus brief would be due 7 days after the filing of the brief for the party being supported. This pushes the deadline for the first round of amicus briefs to the week of July 20.

Comments

[JJL]

There go business method and software patents. Nice knowing you.

[Alan McDonald]

Bye, bye business methods

[Kevin R.]

I can't believe they took Bilski!! I was sure they would wait for another case applying Bilski...

[Alan McDonald]

Next to go . . . "But I do it on the INTERNET!"

[dwb]

Why wait for the Fed Cir to apply Bilski, they can see what a mess Bilski is from the BPAI.

[Let the scatalogical references flow ....]

What is the old saying? ... The Supreme Court doesn't take a case to affirm the decision of a lower court.

Moonpie ... calling Moonpie ... your cage is being rattled.

[Congressional Intent? Hello?]

One issue in Bilski is whether the CAFC Bilski test is the right test in terms of promoting innovation, etc. (We hear more than enough about that, especially on this site. Yeah, yeah.)

But another issue (that we don't hear so much about, I think) is whether Bilski contradicts Congress' intent. Congress, after all, has stated that business methods are patentable. And, after all, Bilski offers a test for interpreting 35 U.S.C. 101 (which, btw, was enacted into law by Congress), not Article I, Section 8, Clause 8 of the Constitution.

35 U.S.C. 273 Defense to infringement based on earlier inventor.

(a) DEFINITIONS.- For purposes of this section-

(1) the terms "commercially used" and "commercial use" mean use of a method in the United States, so long as such use is in connection with an internal commercial use or an actual arm's-length sale or other arm's-length commercial transfer of a useful end result,
. . .

(3) the term "method" means a method of doing or conducting business; and . . .

[anon]

Don't be crass, business method haters.

What will happen is that SCOTUS will read 35 USC 273 and say Congress spoke to the matter, said business methods are statutory, so business methods are statutory.

The two prong test will become a test, but not the test, to determine statutory subject matter.

We'll be left with a squishy non-test that ensures lots of "flexibility" for the courts -- and thus uncertainty for business. Settlement is discouraged. Litigation ensues.

[order of the coitus]

"Congress, after all, has stated that business methods are patentable."

Really? Are you a lawyer?

[Bilski Road Kill]

Dang! This means that 6 will just keep cranking out Bilski-based rejections, knowin that inventors will keep filing RCEs till the Supremes tank Bilski.

At least there are no limits on continuations now - it would be a shame to lose an app while Bilski is still good law, only to have the app become allowable down the road.

[justapatentprosecutor]

I think it is way too premature to say that business method or software patents are gone. If the Bilski Fed. Cir. opinion, together with the broad application it has received by the Board and the district courts, has already done much to put the kibosh on such patents, and if the Supremes agree with this result, why would they then grant cert? To deliver an even more devastating coup de grace to such patents? Maybe, but maybe not. What seems more likely is that the Supreme Court will do two things : (1) overturn the machine or transformation test, and (2) replace that standard with a new one that tries to be more workable than the execrable mess it created with the Flook-Diehr-Benson trilogy.

One other factor, a potential wild card in a close decision, is Justice Sotomayor (I am assuming she will be confirmed). I have read (I forgot where) that she has shown sympathy to intellectual property rights. Such sympathy may have been limited to struggling artists in copyright cases, but she might view IP rights as a way for individual inventors even in the software and biz method fields of equalizing the playig field with big corps.

[Kevin R.]

dwb -

I agree with you. I just didn't think the SC would do it.

[Paul Cole]

It is difficult to see why the Supreme Court has taken this appeal.

One of the compelling reasons why an appeal should be taken is that there are serious and compelling reasons for thinking that the decision below was wrong, but it is difficult to conceive on the basis of the materials that have emerged into the public domain that Bilski is an application that ought to have matured into a patent. The strong likelihood is that the CAFC decision will be affirmed, and all that will be achieved is some element of fine tuning of reasons underpinning the result achieved.

The aapparent weakness of the claimed invention and the trend in business method patenting since State Street towards irrational exuberance raises real concerns that the decision that will eventually be handed down will have an anti-patent flavor, to the detriment of more deserving cases.

It is to be hoped that we will see some quality briefs. In patent matters, the Supreme Court, though an institution whose judges command great respect, is non-expert in the sense that it is not involved on a routine basis with patent issues in the way and with the frequency that it was prior to 1952. Under these circumstances, those who write briefs best serve the public interest by making it easy for the judges to evaluate the issues and providing them with a well-defined set of choices from which to decide. That was done in the Festo case, and the outcome in terms of foreseeability is one that is understandable and can command widespread resoect if not universal agreement. In contract, the briefs in KSR were more confused and ways forward were not clearly suggested, and the court wrote a decision of surprisingly good quality and great conservatism (although that fact is insufficiently appreciated by some commentators). As an example of over-reaction, any institution that feels compelled to re-write its rule book following advice from high judicial authority to use common sense in the decisions that it is reaching faces the question: "What have you been doing up to now?" What is needed is to explain the range of possibilities, the legal arguments for or against each possibility and the range of practical outcomes that may follow. If that is done, we may see a decision that is not as damaging as at present may be feared.

[Congressional Intent? Hello?]

Mr. Catlett ("order of the coitus") (or whoever it is that's impersonating Mr. Catlett):

Instead of saying "Really? Are you a lawyer?," why not do this: Explain why 35 U.S.C. 273, which states that patentable methods include "a method of doing or conducting business," weighs against a conclusion that Congress intended patentable subject matter to include business methods.

[Congressional Intent? Hello?]

Also, see the cert brief written by the . . . laywers . . . at Finnegan & Henderson, where they argue on page 24 that "Enacting § 273, Congress further recognized that patents protect pure business methods that produce a useful end result . . ."

http://www.finnegan.com/files/upload/Finnegan_Bilski%20Petition%20for%20Cert.pdf

[patent leather]

I'm worried that the Supremes will make things worse (from a viewpoint of someone who supports the patentability of most things). Under Bilski, some clever claim drafting can make MOST inventions statutory, except for perhaps "pure" business methods. Thus, Bilski has been a non-issue for me this year. While the Supremes could reverse Bilski (unlikely in my opinion) they could also revive some dicta in the first Comiskey implying that only physical structure counts for patentability. Those who didn't think Bilski went far enough may be happy about this.

[Anybody interested in a real conversation?]

Regardless of what one's opinion as to whether or not business methods should be patentable and whether or not software should be patentable (which may or may not get decided), the questions that should be explored is why has SCOTUS granted cert? what does SCOTUS plan to do? and lastly how expansive will the decision be?

Most people will agree that Bilski, regardless of the outcome, was a poorly written decision. It raised far too many issues than it answered. The decisions coming out of the BPAI is evidence of this. Some applications meet the Bilski test whereas other applications do not while the differences between the subject matter being claimed is seemingly insignificant. Although Bilski was applied to a pure method claim, Bilski is being applied to other types of claims with unpredictable results. The biggest problem I have had with Bilski is that it gave little guidance as to what is OK and what is not. The reasons for this is simple, I think there was a lot of disagreement at the Federal Circuit as to what direction to take, so the ultimate decision was muddled.

All this being said, I believe that SCOTUS also sees that the Bilski decision needs to be cleaned up. Whether they will affirm and reverse is another question. Unlike KSR, in which the technical facts were not easy for a layperson (i.e., the average Justice) to understand, there is little question as to the type of subject matter being claimed. It is a process that may (or may not) include a computer, and the process is broad enough to cover solely mental steps.

The question I have is what over arching principles are going to guide a particular Justice's opinion? Will they be derived from the language of the statute and Congressional intend? Will they be derived from prior case law and what cases? Will they be derived from a sense that you cannot patent speech (or action)? Honestly, I don't care what other people's opinions as to what is the correct decision, what I want to know is what do you think SCOTUS will consider important?

Lastly, will this decision be directed solely to business methods, per se, or will the decision be written broadly enough to influence other statutory subject matter with questions attached thereto, such as software and genetic-based testing?

[West Coast Guy]

It will be interesting to see how the Supreme Court reconciles the "intent" of Congress in its acknowledgement business method patents in § 273.

[order of the coitus]

You're right, Congressional Intent. There was no need for me to be so harsh. I just don't know how 273 can be interpreted to mean that Congress unequivocally intended for business methods to be patentable. As an advocate for its client, Bilski's lawyer was correct to throw out as many arguments that it could legitimately throw. But I don't think anybody truly believes that the 273 argument is going to be the one that carries the day. But crazier things have happened, so who knows. The fact that SCOTUS has decided to hear this case shows you how much I know.

[Malcolm Mooney]

"Moonpie ... calling Moonpie ... your cage is being rattled."

I am surprised the Supremes are wasting their time. This isn't going to turn out well for Bilski.

Also, how lame is it that the Supremes used the vague-the-point-of-meaningless term "business methods"?

"Under Bilski, some clever claim drafting can make MOST inventions statutory, except for perhaps "pure" business methods. Thus, Bilski has been a non-issue for me this year."

In part, that is because the USPTO remains in the pocket of the computer tech companies and after slapping the worst offenders of our sensibilities on the wrist, it quickly resumed rubber stamping the same old functionally-claimed crap without missing a beat.

[Paul Cole]

This is in response to Anybody Interested.

The speed with which information has appeared on the blog is commendable, and it has been possible to skim the various briefs.

What is striking is that the petition for certiorari has been allowed i.e. there appears to be at least a preliminary view that the CAFC opinion may be open to question. The supporting briefs from amici also took that view and favoured a generous interpretaion of patent-eligible subject matter. There were indications in earlier decisions that the Supremes thought that patenting in the software and businsess method fields had gone too far. However, if that was the view of the Supremes, why call this decision in: why not simply leave the opinion below to stand and see what develops?

So it may be that the Supremes are looking for a test which permits a broad range of subject matter, but curbs some of the extremes. The initial "gut-rection" of some commentators including myself may have been over-stated.

If they take up the themes in KSR, the Supremes could reject the machine or transformation test as too rigid and mandate a common sense approach to what is or what is not patentable. They may well follow Judge Rader in finding a distinction between a patentable process and an abstract idea. They might well consider whether the "useful arts" in the US constitution is broad enough to cover the kind of abstract method sought to be patented here.

KSR was a conservative carefully drafted decision, as befitted a non-expert court intervening in a specialised field. It seems unlikely that in this case the Supremes will seek to cover methods of testing and they could well be cautious in venturing into the field of computer software.

But whatever the outcome, as previously mentioned, a good decision may follow good briefs to the court, but is less likely to follow a brief that does not put forward a clear alternative or an amicus brief that only serves a sectional interest. So if you feel strongly, find one of the counsel who has submitted a brief already (they are probably the best ones and an undue multiplication of briefs is not necessarily the best way forward) and put forward your positive suggestions and arguments. When dealing with an unfamiliar sepcialist topic, the Supremes need the help of patent professionals, and that is what we should aim to give.

[American Cowboy]

If the definition of business method set forth in 35 U.S.C. 273 and reproduced above does not reflect Congressional intent that business methods are to be patentable, what does it mean?

Congress said it, so the Court has to construe the words to mean something. -- what could it be except that business methods are to be patentable?

[Malcolm Mooney]

Is anyone willing to defend the claim at issue in Bilski as patentable subject matter?

I've yet to hear a coherent argument explaining why it passes even the prior tests under 101.

Bilski's argument seems to be that everything is patentable as long as the claim doesn't include the word "abstract idea" in the preamble.

Does anyone think Bilski ends up with a patent after this?

[JNG]

seems to me by the tone of the questions they are inclined to modify the CAFC's ruling - I think people will be surprised

[Jud]

It's entirely possible that the Supreme Court hates the CAFC machine-or-transformation test enought to jettison it, yet still deny Bilski a patent on whatever new test SCOTUS devises.

[broje]

I remember in 1988 there was a newspaper headline that scientists had achieved cold fusion. That experiment turned out not to be repeatable.

Now, imagine that Congress had immediately passed a law that prevented the performance of cold fusion within 50 feet of a school or hospital. Would Congress's passage of that law mean that Congress intended for cold fusion to exist? Would it express an intent that they wanted no additional restrictions placed on it, if it does exist?

From what I understand so far, the hypothetical above is, in some ways, analogous to the circumstances under which Congress passed 273. In other words, Congress was reacting to the announcement that the Supremes had said business methods are patentable. They reacted by placing a limit on business methods.

So critics of the argument that 273 expresses the intent of Congress that business methods exist will say that 273 only places a limit. They say this limit is on what the Supremes can do regarding the promotion of business method patents, and in no way limits the Supremes' powers to do away with them.

That is my take on the arguments in play. I will sit on the fence and watch.

[Jules]

The briefs should provide modern sample claims from all technologies that have been proven questionable under Bilski, with clear and truthful prosecution histories.

The machine-or-transformation test is not bad at all from my art perspective (EE/comm) as long people are being realistic. It should be upheld because without it there is too much open/ambiguous/broad/imaginary stuff in modern claims. The problem is the USPTO is probably the only one willing to defend rejections under Bilski.

From another perspective, anything and everything is patentable. In the information age there's a lot of publicly available information, which means Bilsi-questionable claims should be handled mostly with 102/103. However, some Bilski-questionable claims are so rediculously absurd that 102/103 becomes difficult to apply. It's as if aliens are writing these types of claims.

[West Coast Guy]

American Cowboy,

"Congress said it, so the Court has to construe the words to mean something. -- what could it be except that business methods are to be patentable?"

They can give words of § 273 little attention and instead rely wholly on stari decisis. I don't agree with that practice, but I've seen it happen many times where the words of Congress have taken a back seat to the Court's previous opinions.

My guess...the Court will craft a test other than the "machine-or-transformation" test. Noetheless, the judgment in Bilksi will be affirmed as unpatentable subject matter under § 101.

The Court did that recently in the Carlsbad Tech matter -- did not even examine for Congressional intent of recently enacted statute which the CAFC discussed in detail.

[West Coast Guy]

American Cowboy,

"Congress said it, so the Court has to construe the words to mean something. -- what could it be except that business methods are to be patentable?"

They can give words of § 273 little attention and instead rely wholly on stari decisis. I don't agree with that practice, but I've seen it happen many times where the words of Congress have taken a back seat to the Court's previous opinions.

The Court did that recently in the Carlsbad Tech matter -- did not even examine for Congressional intent of recently enacted statute which the CAFC discussed in detail.

My guess...the Court will craft a test other than the "machine-or-transformation" test. Noetheless, the judgment in Bilksi will be affirmed as unpatentable subject matter under § 101.

[David Stein]

Of course the Supremes took it. This Court loves patent issues, and Bilski is the last big one in the pipeline. Plus, many patent issues are heavily burdened with murky and sort of dull considerations (damages calculations, injunction prerequisites, etc.); this issue is plain as day: does "method" include software and business methods?

My thoughts on this -

(1) There's no way that the Supremes will accept the CAFC's test. "Physicality" was a shaky premise at best, and the two-prong extension to "tied to a machine" and "data representing a real-world article" was a clumsy hack with no basis in the Patent Act, Supreme Court precedent, the CAFC's own precedent, etc. So regardless of how the Supremes rule, the CAFC's test is toast.

(2) I remember seeing some snippy comments in completely unrelated Court opinions about never having affirmed the patentability of software - and maybe a footnote citing a Stanford University Free-Software-Foundation-type study making the case for patents hurting innovation, etc.

Of course, there's a world of difference between "haven't ruled that software is patentable" and "have ruled that software ISN'T patentable." But these small hints that at least one or two justices are embarking on this journey with a Slashdot mentality is a little disconcerting.

(3) This Court is extraordinarily pragmatic. In at least three cases this year (Arizona v. Gant, Herring v. U.S., and today's decision in Montejo v. Louisiana), the Court ruled primarily based on the predicted effects of its decisions. Of course, today's Court is 75% the same Court that decided Bush v. Gore in '01, the least "legal" opinion in the 200-year history of the Supreme Court.

When hearing Bilski, this same Court will be faced with two arguments:

(a) USPTO doomsayers arguing that pure software patents and business method patents will hurt innovation in the long run, and hand-wringing over its own examination incompetencies ("um, we know we've had a decade to figure out this process, but we're still pretty bad at it"); and

(b) a huge group of software industry giants standing up and saying: "These artificial restraints on patents are hurting our businesses TODAY."

What are the chances that the Court - the 75%-same-as-Bush-v-Gore-Court Court - will say to itself, "Well, gosh, I know that bashing patents yet again might be yet another terrible blow to the economy, but we have to go with the academics on this one?"

- David Stein

[Mark Nowotarski]

One of the fastest growing areas of patents are the new Social Media Patents.

See http://tinyurl.com/lpo5y8 (warning, shameless plug for my TV interview)

Care to speculate on how these will fare?

[Michael L. Slonecker]

In an admittedly feeble attempt at humor, perhaps the Court will use the case to better hone its "under the sun" references in Diamond v. Chakrobarty.

Perhaps a "sliding scale". "Under the sun" is always patentable. "Even with the sun" is problematic. "Over the sun" is verboten.

Quite frankly, I haven't a clue why cert was granted and believe it is an exercise in futility to try and analyze why it did so.

[Actual Inventor]

Mr. Malcom wrote: "Is anyone willing to defend the claim at issue in Bilski as patentable subject matter?"

Well, I would have to reread all the briefs in the cases in the long Bilski saga to do that. But just going by memory I seem to recall Bilski arguing he should get a patent because of the statute not having any machine or transformation limitations. That's very powerful stuff to me. Also I seem to recall the Bilski attorney arguing, and citing Deihr that the method of hedging did not preempt an entire field or cover all types of hedging therefore it could not be ruled an abstract idea.

So if those arguments are correct then Bilski deserves his patent according to the statute and Supreme Court precedent.

[MaxDrei]

From where I stand, in Europe, that SCOTUS has taken Bilski, even while the EPO's Enlarged Board of Appeal (EBA) is addressing "European 101", is fantastic news. Whereas the world's default legal system, civil law, sets the 101 bright line incrementally, free from the constraints of Binding Precedent, a common law country has to do it (and get it right) with just one Supreme Court Decision. We see the difficulty when England tries to do it, from a location inside Europe. Now let's see how SCOTUS does it, with no constraints on it whatsoever, except the Constitution and the Congress.

Paul Cole is of course right. SCOTUS, not being a specialist patents tribunal, lacks the day to day experience of the EBA members, of hundreds of diverse 101 cases. It needs from wise American patent lawyers all the help it can get.

I had thought that the CAFC had tried very hard, in its Bilski Decision, to tee the ball up as thoughtfully and visibly as possible, so that SCOTUS could address the ball at length, and then strike it cleanly. So, it seems to me quite right for SCOTUS to have taken the case. Maybe SCOTUS and the CAFC are not at each other's throats quite as much as some commentators imagine.

[TJ]

David Stein, exactly which group of "software industry giants" are you predicting will support expanding the patent system? In case you didn't notice, Microsoft et al. are busily trying to weaken patents, seeing that they are being sued all over the place.

Count me as one of those "who didn't think Bilski went far enough" and is happy about this. Under Bilski, you could draft a claim on most things that recited a transformation of matter, including nuclear fusion in the sun, photosynthesis in plants, and mitosis in cells.

[Malcolm Mooney]

Jules: "It's as if aliens are writing these types of claims"

Or just incredibly greedy and lazy lawyer-cum-inventors trying to game the system.

[David Stein]

Mark Nowotarski wrote:

"One of the fastest growing areas of patents are the new Social Media Patents.

Care to speculate on how these will fare?"

First - nice interview. I think you presented yourself well.

(Side-note - your interviewer was a bit of a bubblehead, wasn't she? ;) "Wow, it's a totally different world, isn't it?" translates directly to: "All of this is foreign and mysterious to me, but I'm afraid to admit that I don't get it.")

Second - how will these fare? They'll fare just fine if claimed correctly.

In my experience, examiners seem to be disregarding Bilski. They're not really rigorously examining claims for "tying to a 'particular' machine" or "not preempting the algorithm" or any such nonsense.

Rather, the test that most seem to be utilizing is simple: "Are you claiming software running on a computer that can solve a particular problem? Or are you claiming some type of fiddling with totally abstract concepts - 'profiles' and 'relationships' such - and sort of tangentially mentioning that a computer might be involved?"

If your claims are well-grounded in the technical field of software, and if they claim a specific solution to a problem that you've enabled and described well in the spec, the app will probably do OK (when it is eventually examined... circa 2015.)

- David Stein

[ertzog]

the SC wanted something to drop in the lap of their new colleague, sotomayor.

welcome to the club, sonia.

[6]

LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

I think that about sums it up eh?

Also, on another front, I found what may be the best patent related quote evar.

"Before the Internet, young men relied on the Patent Office for their .... needs"

Can you fill in the blank without going to the site?

http://www.cracked.com/article_17186_p2.html

Back on topic, I doubt if they will leave Bilski totally unchanged.

"Dang! This means that 6 will just keep cranking out Bilski-based rejections, knowin that inventors will keep filing RCEs till the Supremes tank Bilski."

This is true. Then again, when they get through with Bilski the claim will still likely be rejected. Just a different rationale. One that probably makes more plain sense.

"Those who didn't think Bilski went far enough may be happy about this."

Mhmmm, I am.

"Congress said it, so the Court has to construe the words to mean something. -- what could it be except that business methods are to be patentable?"

It could mean that congress isn't blind and has seen that they have been currently regarded as patentable by the courts in many instances. It is an issue they are leaving up to them since they likely couldn't get the votes to change the statute either to srictly allow, or disallow them. Furthermore, in the instances where they see the courts allowing them, they felt like the exceptions provided under that statute were important to make.

"That is my take on the arguments in play. I will sit on the fence and watch."

It is rather refreshing to see you catch a subtlety.

"The machine-or-transformation test is not bad at all from my art perspective (EE/comm) as long people are being realistic. It should be upheld because without it there is too much open/ambiguous/broad/imaginary stuff in modern claims. The problem is the USPTO is probably the only one willing to defend rejections under Bilski.

From another perspective, anything and everything is patentable. In the information age there's a lot of publicly available information, which means Bilsi-questionable claims should be handled mostly with 102/103. However, some Bilski-questionable claims are so rediculously absurd that 102/103 becomes difficult to apply. It's as if aliens are writing these types of claims."

One might suspect that Jules was transformed into an examiner.

[Actual Inventor]

Mr. patent leather wrote "While the Supremes could reverse Bilski (unlikely in my opinion) they could also revive some dicta in the first Comiskey implying that only physical structure counts for patentability."

If that happens the mixing of chemicals..i.e. chemical compositions would no longer be patentable subject matter and there is no way big Pharma would stand for that.

[anonymous]

If the definition of business method set forth in 35 U.S.C. 273 and reproduced above does not reflect Congressional intent that business methods are to be patentable, what does it mean?

Congress said it, so the Court has to construe the words to mean something. -- what could it be except that business methods are to be patentable?

It means there were enough Congressman (and the President) to pass this defense. Intent is overrated. You seem to be assuming that Congressmen have the intelligence to realize that by passing this defense they are indirectly stating business methods are patentable.

[Malcolm Mooney]

David Stein: "What are the chances that the Court - the 75%-same-as-Bush-v-Gore-Court Court - will say to itself, "Well, gosh, I know that bashing patents yet again might be yet another terrible blow to the economy, but we have to go with the academics on this one?"

A truly fantastic strawman, David. Congratulations!

Take a look at the claim at issue here and tell me how denying patentability to that claim or any claim remotely similar to it could effect a "blow to our economy."

Also, you forgot to mention KSR in your analysis.

[Malcolm Mooney]

Acual Inventor: "So if those arguments are correct then Bilski deserves his patent"

LOL.

[Malcolm Mooney]

Actual Inventor: "If that happens the mixing of chemicals..i.e. chemical compositions would no longer be patentable subject matter and there is no way big Pharma would stand for that."

I understand that you are completely clueless and probably some sort of unfunny parody troll, but can you at least try to write in comprehensible sentences? Thanks.

[Actual Inventor]

The primary purpose of having a Patent is to prevent someone from going into business against you. So as any "Actual Inventor" will tell you, every patent is essentially a business method!

My question is, will the SCOTUS define business methods as something other than mere industrial processes? Now that would be a neat trick.

[West Coast Guy]

Malcolm.

"Also, you forgot to mention KSR in your analysis."

You're mixing apples with oranges again.

Whether you accept it or not, there is a distinction between §§ 101 and 103. Bilski addresses § 101 (unpatentable subject matter) and KSR addresses § 103 (obviousness). When you mix these two, your arguments lack clarity and make you sound like you don't know what you're talking about.

[Leopold Bloom]

Malcolm is right to the extent that the real issue with Bilski at the Supreme Court is whether the Court can do anything meaningful to clean up the CAFC's mess while still clearly denying patentability for Bilski's specific claims. In my opinion, no way are there 5 justices that will get behind Bilski's claims. That's why I still feel that this is the wrong vehicle for this issue. I wouldn't be surprised to see the Court affirm the result while simultaneously calling out 90% of the CAFC's opinion as dicta having no basis in law.

[Malcolm Mooney]

"You seem to be assuming that Congressmen have the intelligence to realize that by passing this defense they are indirectly stating business methods are patentable."

"Business methods" are not defined and the term is meaningless by itself. But chew on this:

Making money is not manufacturing, nor is it a transformation of matter. It is an abstract idea, regardless of the field in which the money is being made.

Also, a new composition or apparatus for advertising may be patentable, but a method for advertising that utilizes an old composition or apparatus to sell something should not be patentable. Software that is functionally described is either an abstract idea or per se obvious. Take your pick. Claiming the software as new imprinting on an old disk doesn't change the analysis.

[Malcolm Mooney]

""Also, you forgot to mention KSR in your analysis."

You're mixing apples with oranges again."

No, I'm addressing the point raised in David's comment that the same court that ruled in favor of Bush in Bush v. Gore was somehow loathe to issue a ruling that weakens the patents of the world's most powerful patent owners (i.e., big businesses). KSR shows that the opposite is true.

"Whether you accept it or not, there is a distinction between §§ 101 and 103."

I've never said there wasn't a difference.

"When you mix these two, your arguments lack clarity and make you sound like you don't know what you're talking about."

Sorry, but it's you who doesn't know what you're talking about. Stop lashing out, mkay? It's childish.

[David Stein]

Malcolm wrote:

"A truly fantastic strawman, David. Congratulations!"

It's not *my* strawman, Malcolm. These are the arguments that the parties will bring to the table: the USPTO will argue "how it should be" and "how this might affect the future," while the amici will argue "this is hurting us, REAL businesses, NOW, TODAY."

The Court has proven very sensitive to such pragmatic considerations this year. Now it has a chance to cast itself as a hero of the economy - that might be a juicy reward that it can't pass up.

===

"Take a look at the claim at issue here and tell me how denying patentability to that claim or any claim remotely similar to it could effect a 'blow to our economy.'"

Malcolm... :sigh:

OK, let's review: federal court structure, day one.

The Supreme Court does not accept cert in order to resolve a particular controversy. (Bush v. Gore is the exception, and it is universally loathed for that reason.) Rather, the Supreme Court accepts cert in order to resolve a murky area of law. The case in controversy is basically an excuse to rule on a Big Issue. Maybe the Court's opinion will resolve it; maybe not... it's not really the point.

For example, SCOTUS's opinion in Bilski could simply read:

"For the reasons stated below, the CAFC's interpretation of Diamond v. Diehr is incorrect. We are imposing a new test of patentability, to wit: [blah blah blah]. The decision of the CAFC is vacated, and the case at bar is remanded for further proceedings not inconsistent with this opinion."

Of course, this should be entirely familiar: you surely you must have read many opinions of that nature in your Constitutional Law classes... back when you were in law school... right, Mooney?

- David Stein

[Mary Prosecutor]

@ Malcolm "Stop lashing out, mkay? It's childish." Especially because Malcolm never lashes out at anyone but treats everyone professionally and with respect on this blog.

[West Coast Guy]

Maybe the Supreme Court will state that cert was improvidently granted.

[David Stein]

Malcolm wrote:

"I'm addressing the point raised in David's comment that the same court that ruled in favor of Bush in Bush v. Gore was somehow loathe to issue a ruling that weakens the patents of the world's most powerful patent owners (i.e., big businesses). KSR shows that the opposite is true."

(1) KSR v. Teleflex was two companies dueling over competing business interests, each of which could show immediate harm of a different kind.

In Bilski v. Doll, the Supremes will see MANY business amici standing up on one side arguing immediate economic harm, vs. the USPTO (and a couple of business amici) on the other arguing more academic concepts and more prophetic, attenuated consequences.

(2) KSR issued in 2007, when businesses still looked just fine. The justices are likely to be much more sensitive about economic issues today - particularly if a legal issue touches on a large sector of the economy.

===

As for your broader question, Mooney - "does anyone think that Bilski's claims will survive?"...

I really don't care about Bilski's patent. He isn't my client, nor are any of the financial companies he might approach for licensing or accuse of infringement. It is a non-issue to me.

Whether it survives will depend on the test that the Supremes adopt. That's the most that anyone can predict at this stage.

- David Stein

[Anybody interested in a real conversation?]

"What are the chances that the Court - the 75%-same-as-Bush-v-Gore-Court Court - will say to itself, 'Well, gosh, I know that bashing patents yet again might be yet another terrible blow to the economy, but we have to go with the academics on this one?'"

I think there is a big difference between the gut reaction anybody has when looking at an invention, looking at the prior art, and says ... "that's obvious" versus determining whether to foreclose certain subject matter from being patentable.

Paul Cole described KSR as conservative. I would describe KSR as SCOTUS getting the end result they wanted without upsetting any established law. There isn't any ground-breaking jurisprudence in KSR. SCOTUS didn't abolish TSM. All SCOTUS said was TSM isn't the only test, and BTW, we think this is obvious for rationales we've described in all of these past cases.

On the other hand, Bilski address issues that are more legal and philosophical in nature. However, the Supreme Court could affirm but based upon a Radar's reasoning (i.e., it is directed to an abstract idea) and treat the machine/transformation test as but one of many possible tests. If so, and SCOTUS doesn't expound upon their analysis, then we are back to where we began … which is that 101 rejections will continue to be hit and miss.

Difficult to say what they will do, but it is fun to speculate.

[Actual Inventor]

Malcolm Mooney wrote: "Business methods" are not defined and the term is meaningless by itself.

Business methods are industrial processes and have always existed. No one can rebutt this fact. Case closed. Next?

Malcolm Mooney wrote "Making money is not manufacturing, nor is it a transformation of matter. It is an abstract idea, regardless of the field in which the money is being made."

From my understanding of the case Bilski did not ask for a patent on "making money" per se. Making money may have been the underlying principle of his patent but its the application of that principle to which Mr. Bilski seeks his patent. Next?

Malcolm Mooney wrote: "Also, a new composition or apparatus for advertising may be patentable, but a method for advertising that utilizes an old composition or apparatus to sell something should not be patentable."

Umm says who? The above scenario is patentable even under the current CAFC Bilski ruling.

[David Stein]

Anybody wrote:

"SCOTUS didn't abolish TSM. All SCOTUS said was TSM isn't the only test, and BTW, we think this is obvious for rationales we've described in all of these past cases."

Arguing that KSR didn't abolish TSM is like arguing that the CAFC Bilski decision didn't kill business methods.

Sure, the CAFC expressly refused to exempt business methods from patentability... but then it imposed requirements on the entire field of "methods" that are impossible to meet by any "business method." (i.e., if your claim has sufficient limitations to satisfy CAFC's Bilski, then it is a software method, or a manufacturing method, etc. ... it is no longer a business method.)

This is extreme judicial passive-aggressiveness. Put another way: "Our business does not discriminate by race! We only discriminate based on music: we give huge hiring preferences to fans of the symphony and country music, and we refuse to hire fans of rap or R&B."

Same thing with TSM - the Supremes essentially wrote: "Well, we're not going to kill this high standard of proof... we're just going to make it optional. Examiners can go ahead and meet it if they want, or they can use a much easier argument if they prefer."

I'd LOVE to see metrics of reliance by examiners on the TSM test after KSR. I'm guessing it has been almost entirely replaced with "well, *I* think it's obvious to combine these refs" arguments.

- David Stein

[Andrew Dhuey]

Great observation, justapatentprosecutor -- Justice Sotomayor could very well be the decisive vote here if the court can't find some vague new standard on which all justices agree. If we get into the sort of 5-4 fight we had in the old 101 cases, the new justice might make all of the difference.

Justice Souter's eBay concurrence and dissent from the dismissal in LabCorp v. Metabolite established him as firmly in Stevens's camp on narrowing the scope of 101. Justice Sotomayor really couldn't be any more hostile from an inventor's perspective, and she might prove to be friendly (anyone's guess).

[Actual Inventor]

Mr. Malcolm clipped of or omitted from his quote the following .. "according to the statute and Supreme Court precedent." then typed..."LOL"

Malcolm why you do always lash out or simply type LOL when backed into a corner with references to law? You claim to be an Actual Patent attorney right? One would think you could respond with some reference to the law, especially when that is what you asked for.

[Ivory Glower]

TJ writes: "Under Bilski, you could draft a claim on most things that recited a transformation of matter, including nuclear fusion in the sun, photosynthesis in plants, and mitosis in cells."

But under 102 & 103 - you couldn't get a patent with those claims. Why continue to conflate 101 with 102 and 103?

By the way - how are you coming on that paper about each claim amendment resetting the filing date?

[Malcolm Mooney]

David "KSR issued in 2007, when businesses still looked just fine."

I'm sorry, David, but are you suggesting that KSR would have been decidedly differently if it was being heard today? Is that what you are suggesting? And that somehow overturning the Federal Circuit in Bilski is going to help the economy? How does that work? Can you provide some evidence that granting patents on methods such as Bilski's will help the economy?

"I really don't care about Bilski's patent. ...Whether it survives will depend on the test that the Supremes adopt. That's the most that anyone can predict at this stage."

Uh, no. I can predict that Bilski's patent will not survive regardless of what happens here. Breyer is going to be driving this train and the decision is going to include at least 7 justices in the majority. Bilski's claim will fail and the test will be worse than that proposed by the Federal Circuit because the Supreme's will make it clear that the mere inclusion of magic words isn't enough to turn a claim to a pile of unpatentable money-churning or vague result-oriented crap into patentable subject matter.

[Malcolm Mooney]

David Stein: "Arguing that KSR didn't abolish TSM is like arguing that the CAFC Bilski decision didn't kill business methods."

What's a "business method," David?

[Malcolm Mooney]

Note to Actual Inventor: it's not being "backed into corner." It's about engaging commenters with ideas which, whether correct or incorrect, are articulated coherently and defended with some semblance of honesty and credibility. Eventually you might get there, tho probably not this week.

[TJ]

Ivory Glower, say that I file a patent application claiming nuclear fusion in the sun in 1945. What 102 reference are you going to use to reject it? The sun is not "in public use in this country"; and no printed reference is enabling.

[West Coast Guy]

Malcolm Mooney,

"What's a "business method," David?"

Using the vernacular of Congress, it is a method of doing or conducting business.

[Lionel Hutz]

I was going to post what I thought might happen, but David Stein did it more eloquently than I would have in his response to MM at 2:12.

[anon]

TJ,

Any 102/3 reference teaching that nuclear fusion occurs in the sun (e.g., many phyisics textbooks). The reference's subject material does not have to be in this country.

(a) BTW, who/how infringe? Make, use, sell, import the sun?

(b) In your world, could you claim nuclear fusion of a properly disclosed (enabled, wd, etc.) fusion reactor?

(c) How do you differentiate -- i.e., isn't the sun itself a nuclear fusion reactor, and if the spec somehow properly disclosed how to build a star, would the inventor of the star-making invention not be entitled to protection? Or does it matter whether the inventor invents how to make something that occurs in nature? (sticking to claiming the process, not the product).

[Mark Nowotarski]

Just Tweeted @ http://twitter.com/patentbuzz/status/1994283843

“Bilski Schmilski. Time to redesign patents for the 21st century. Article explains how http://bit.ly/7Qjfm Patent on a new type of patent?”

[Lionel Hutz]

Malcolm,

This cert grant has nothing to do with Bilski and the decision will almost certainly be vacated rather than reversed.

The basis for the decision in Bilski contradicts Supreme Court precedent, so I believe the SC will smack down the CAFC again.

[Mark Nowotarski]

David Stein wrote:
“Nice interview”

Thanks. It was fun working with Ms. Surran. Very enthusiastic person.

[Actual Inventor]

Mr. David Stein wrote:

"Sure, the CAFC expressly refused to exempt business methods from patentability... but then it imposed requirements on the entire field of "methods" that are impossible to meet by any "business method." (i.e., if your claim has sufficient limitations to satisfy CAFC's Bilski, then it is a software method, or a manufacturing method, etc. ... it is no longer a business method.)"

Or a baking/cooking method, surgical/medical method, production method, driving method, farming method, sewing method, massage method, and on and on... The point is all the above methods and processes are business methods. So I don't understand what your argument is based on. Sure maybe you can't get a patent on a new way to organize your reps to market computer software, but you can still get meaningful business method patents under Bilski. The CAFC just narrowed the scope they didn't by any means make it impossible. But the SCOTUS, could and that is something all inventors need to be concerned about.

[Just Visiting]

"Ivory Glower, say that I file a patent application claiming nuclear fusion in the sun in 1945"

TJ,

I think the 102 argument is off base, but so is the original observation that claims to laws of nature are allowable under Bilski.

At most Bilksi is silent about claims drawn specifically to laws of nature, but there's plenty of other law out there saying you cannot have such claims.

[6]

"Bilski's claim will fail and the test will be worse than that proposed by the Federal Circuit because the Supreme's will make it clear that the mere inclusion of magic words isn't enough to turn a claim to a pile of unpatentable money-churning or vague result-oriented crap into patentable subject matter."

It is like reading the future before it happens.

"The basis for the decision in Bilski contradicts Supreme Court precedent, so I believe the SC will smack down the CAFC again. "

You are absolutely right, the CAFC didn't go far enough, as MM stated above.

[Malcolm Mooney]

"all inventors need to be concerned"

So sayeth the concern troll.

In reality, all inventors need not be concerned. My claims have not changed in light of Bilski because my clients are not filing on abstract result-oriented computer-implemented crap described in purely functional terms. This is true of many prosecutors, probably the majority of prosecutors, in fact, though maybe not the majority of those prosecutors who spend most of their time whining on blogs about how awful the PTO is or how KSR rendered everything unpatentable.

[6]

And btw, decent work on that article Mark. I agree that such a change would indeed seem to be in the cards of our future except for the fact that there are so many vested interests in the current system. They could concievably prop up the current system (or at least a close approximation thereof) for another 50 years. Even so, I do imagine some rather large changes will take place.

[JJL]

The wording of the questions presented seem to indicate that at least some on the Court find the CAFC test too restrictive and favor a broader view of patentable subject matter. But I don't buy it. Between the 4 judges who dissented to the Lab Corp cert withdrawal, and the well-known attitudes of several of the justices on this topic, Bilski's claims stand no chance.

That said, why grant cert? Because, as many have pointed out, the Supremes don't like anyone propounding tests other than themselves. So they'll have some other test. But I'll have to disagree with many posters who see this as a positive development.

My prediction is that they'll offer up some loosey-goosey, (ironically) abstract standard that is just more words. What is an "abstract idea"? Why, it's a "purely mental construct." Okay, what is a "purely mental construct"? Why, it's a "concept held only in the mind." Okay, what do you mean by "concept" and what does it mean to be "held" in the mind? Etc. You get my point. A "know it when you see it" approach is just unhelpful and useless b/c it'll just be argued around and be inconsistently applied.

This is just a difficult area in which to draw rules. CAFC made one stab at it. SCOTUS will make another. But anyone who expects miraculous clarity from SCOTUS is likely to be disappointed.

[TJ]

Just visiting, Bilski is not silent about laws of nature. It explicitly includes laws of nature in its category of "fundamental principles" subject exclusively to the machine or transformation test.

anon, there would be no physics textbooks in 1945 that described what you say. That is why I specified 1945. Whether modern physics textbooks is enabling depends on the claim, since we can produce uncontrolled fusion but controlled fusion is more complicated.

A claim on fusion that doesn't read on the sun is pretty simple: "nuclear fusion in a man-made reactor."

Moreover, infringement is pretty simple, and very extreme. Say I claim the process of nuclear fusion including in stars. Section 271(g) includes as infringement everything made by a patented process, which is pretty much all matter in the universe. Sure, 271(g)(1) exempts materials that are substantially changed by a subsequent process. But enough to say that a patent on nuclear fusion would have lots of potential infringers.

[Paul F. Morgan]

The trouble with taking Bilski to the Supremes is that Bilkski had disclaimed any requirement for using a computer, i.e., Bilski broadly claims a naked business method that could cover pencil & paper usage, or whatever. Not only is that a less appealing case for the Supremes [even without subjective sub rosa 103 obviousness questions], it means that the far more important issues of software or computer-implimented patenting, which were thus able to be "waffled" by the CAFC in In re Bilski, could also be waffled by the Sup. Ct. That is, the Bilksi claims could be re-rejected on old Sup. Ct. grounds without clairifying any software or computer-implimented patenting issues.
But at least CAFC has set this case up for the Supremes to do a better job of reconciling some of its own prior 101 scope decisions, if they want to.

[curious]

FedCir wrote a TSM test into 103. SupCt did not like that. FedCir wrote a machine or transformation test into 101. I don't think that the SupCt will like that either.

[Actual Inventor]

Mr. Macolm Mooney wrote:

"In reality, all inventors need not be concerned"

Excuse me but are you an "Actual Inventor?" Have you every invented anything? If not then don't presuppose to speak for us "Actual Inventors" This IS a serious case that could limit the rights and extinguish the flame of innovation for inventors everywhere. And send an already fragile economy further down the drain at a time when innovation is desperately needed.

Yes indeed inventors need to be concerned. In fact everyone in the USA better be. Thousands of application hang in the balance and many more that have been granted are in peril. People have worked their entire lives to build a business around a patent and prove a concept. Now it could be rendered invalid causing a collapse of the businesses and risking thousand maybe millions of jobs.

Yes we ALL better be concerned. Our economy, nation, indeed are very lives hang in the balance.

[David Stein]

Actual Inventor wrote:

"Or a baking/cooking method, surgical/medical method, production method, driving method, farming method, sewing method, massage method, and on and on..."

Baking, cooking, driving, farming, and sewing are all methods of manufacturing. And they're patentable under Bilski because they involve a physical article.

"Surgical/medical" and "massaging" methods are therapeutic methods. Bilski might have nixed these, if not for 35 USC 287(c), which tacitly affirms the patentability of "medical activities" (while at the same time knocking out most of the enforcement teeth of such patents.)

However - a method of "driving" is likely not patentable under Bilski. Nor would a method of swinging a club, exercising a cat, or swinging on a swing. these are exactly the types of "business methods" to which the CAFC paid lip service by refusing to withhold patentability. Yet, any method claims to these activities would be found lacking a "physical article," and therefore do not qualify as a "method" under Bilski.

Of course, an applicant might circumvent that problem, e.g., by claiming a computer that is programmed to perform the method of driving. But then it is no longer a business method - it is a software method.

- David Stein

[smashmouth football]

curious:
"FedCir wrote a TSM test into 103. SupCt did not like that. FedCir wrote a machine or transformation test into 101. I don't think that the SupCt will like that either."

Lionel Hutz:
"The basis for the decision in Bilski contradicts Supreme Court precedent, so I believe the SC will smack down the CAFC again."

I think you are probably right for the reasons you stated.

But also I think there's a non-negligible chance the Supremes might dismiss as improvidently granted. (ht West Coast Guy)

The problem with the Supremes deciding this case on the merits is first, they have shown a tendency to pontificate in broad, useless generalities when called on to resolve important patent law issues. (KSR is a prime example. The morass of 101 law up til now is another. Just one person please explain how Diamond v. Diehr is honestly consistent with Parker v. Flook.) Second, Bilski's app should have been rejected on grounds of 103. Let's hope the Supremes don't conflate 101 and 103. The law is confused enough already.

[Just Visiting]

"Just visiting, Bilski is not silent about laws of nature. It explicitly includes laws of nature in its category of "fundamental principles" subject exclusively to the machine or transformation test."

Let me restate things more clearly. If a claim recited only the fundamental principle or an algorithm, I don't believe Bilski makes any change in the patentability of such claims. It's only when more stuff is recited such that the claim appears to be applying a fundamental principle rather than simply claiming the principle that we need to apply Bilski.

Cited in Bilski, "The Court declared that while a claim drawn to a fundamental principle is unpatentable, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."

If your point is that no claim should be patentable if it recites in part, "nuclear fusion in stars" then I agree that Bilksi doesn't get there. But I don't believe the decision in Bilski accomplishes *any* expansion in subject matter patentable under 101.

[Actual Inventor]

David Stein wrote:

However - a method of "driving" is likely not patentable under Bilski. Nor would a method of swinging a club, exercising a cat, or swinging on a swing. these are exactly the types of "business methods" to which the CAFC paid lip service by refusing to withhold patentability. Yet, any method claims to these activities would be found lacking a "physical article," and therefore do not qualify as a "method" under Bilski.

Okay let's do a quick analysis.

1. A method of driving tied to a particular automobile, where the physical article is the automobile.

2. A method of swinging a club tied to a golf club, where the physical article is the golf club.

3. A method of swinging on a swing, tied to a particular swing, where the physical article is the swing.

4. A method of exercising a cat, tied to a laser pointer, where the physical article in the laser pointer.

Unless you can explain to me why the physical articles described above are not physical articles under Bilski It would seem to me these methods are statutory subject matter.

[Actual Inventor]

David Stein wrote:

"Of course, an applicant might circumvent that problem, e.g., by claiming a computer that is programmed to perform the method of driving. But then it is no longer a business method - it is a software method."

Didn't the CAFC make it clear in Bilski that an invention requiring physical acts is not reason to make a process non statutory? If so, then there is no need to substitute a computer for an actual driver to get a patent on a method of driving an automobile.

[Malcolm Mooney]

"Unless you can explain to me why the physical articles described above are not physical articles under Bilski"

AI, is it your position that any claim that recites a "physical object" is safe under Bilski? That seems to be a rather extreme and untenable position. I'm not surprised, therefore, that you'd adopt it.

As written, of course, your claims are unpatentable under 101 pre-Bilski. Do you know why? Show me you've got a working neuron in that brain of yours.

[David Stein]

Actual Inventor wrote:

"Unless you can explain to me why the physical articles described above are not physical articles under Bilski It would seem to me these methods are statutory subject matter."

These are not "physical articles" under Bilski because there is no transformation.

- David Stein

[TJ]

Just visiting, I don't think we disagree much on what the law is after Bilski. For example, I agree that a claim that requires, (1) flying a space shuttle to a star, and (2) initiating nuclear fusion in that star, is perfectly patentable. This was the case before and after Bilski.

But a claim that simply said: "a process comprising converting hydrogen to helium by nuclear fusion" would be unpatentable under 101 prior to Bilski, because it encompassed a natural phenomenon. After Bilski, it is unquestionably a transformation of matter, and the logical conclusion is that this claim is patentable. The problem, of course, is that it runs straight into the Supreme Court cases that you had mentioned earlier saying that such a claim is not, in fact, patentable subject-matter. So this seems a straightforward "expansion" of 101 to me.

[buzz bomb]

The Supremes should ask "where in 101 is there a transformation requirement?"

[Just Visiting]

"a process comprising converting hydrogen to helium by nuclear fusion"

I think the only thing we disaree on is the logical conclusion of Bilski. I don't believe that claims reciting the above are in any danger of passing muster under 101 under the CAFC's interpretation of Bilski. Neither the patent office nor the FC is going to allow them.

I was really trying to probe what kind of things you were getting at when you said Bilski did not go far enough. I still cannot figure out what kinds of things you were referring to. Maybe I should have asked that directly.

[TJ]

Just visiting, I meant it did not got far enough (in narrowing patentable subject matter) that I think the holding of Bilski dictates that "a process comprising converting hydrogen to helium by nuclear fusion" passes 101. Thus, far from going far enough, it went too far in the wrong direction.

I agree that, as a practical matter, if the case ever came up they'd probably find a way to weasel out of saying my claim is patentable. But whatever way they find would be pretty unconvincing. How much more of a "transformation of matter" can you get than explicitly reciting a transformation of hydrogen to helium? If this claim does not recite a transformation, nothing does.

[Anybody interested in a real conversation?]

"Arguing that KSR didn't abolish TSM is like arguing that the CAFC Bilski decision didn't kill business methods."

Not even close to be right. TSM is still alive and well. In fact, it is preferred by many examiners who have being using it for quite some time. KSR stands for the concept that TSM isn't the only test.

On the contrary, the USPTO is using Bilski almost exclusively to kill both methods and devices.

[6]

Yeah I use TSM quite often and I get some guys come back arguing some KSR nonsense about needing a rational and all this that and the other when I use TSM, I simply recite the part about capturing a helpful insight into the obviousness inquiry and call it a day or give them the motivation rewritten as a rationale in the response to arguments. Haven't had to do any second action nonfinals over that so far.

[Actual Inventor]

Actual Inventor wrote:

"Unless you can explain to me why the physical articles described above are not physical articles under Bilski It would seem to me these methods are statutory subject matter."

Mr. David Stein wrote: "These are not "physical articles" under Bilski because there is no transformation."

With all due respect can you please cite from Bilski enbanc the part that says processes/methods tied to a machine or apparatus aka physical article must also be transformations? It is my understanding that the Bilski rule is simply that processes - methods must be tied to a particular machine/apparatus, OR transform a particular article to a different state or thing.

[Actual Inventor]

Mr. Malcolm Mooney "AI, is it your position that any claim that recites a "physical object" is safe under Bilski? "

Umm..No. And what could have possible made you reach that conclusion? Is English a second langauge for you or do you have some type of reading/learning disorder? I am being serious here.

[David Stein]

Anybody wrote: "TSM is still alive and well. In fact, it is preferred by many examiners who have being using it for quite some time. KSR stands for the concept that TSM isn't the only test."

That's entirely possible and fair. (I haven't seen it, though, and the few examiners that I've spoken with about KSR, e.g., at AIPLA meetings), tell me that they don't imagine ever using it again.)

===

Actual Inventor wrote:

"With all due respect can you please cite from Bilski enbanc the part that says processes/methods tied to a machine or apparatus aka physical article must also be transformations?"

(1) An "apparatus" is not "aka physical article." An "apparatus" is "aka a machine," but an "article" is basically any physical object - including compositions of matter.

(2) Clearly, there's a difference between "tying to" and "using."

The CAFC in Bilski discussed Gottschalk v. Benson, and even admitted that the claim was "tied to" a computer - indeed, couldn't be performed without one! And yet: "the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue had no utility other than operating on a digital computer."

An even stronger example: In re Abele. The claims here are tied to TWO "apparatuses" (an X-ray scanner and a display) AND an article (a human bone.) And the method can't be performed without them, right? But that wasn't sufficient; it only passed (re-)review under Bilski because the data generated thereby was "transformed" into a visual depiction. If the raw X-ray data were simply displayed without this "transformation," Abele would not have passed muster, despite its "ties."

How about that golf club? Let's say you have "a method of swinging a golf club," such that you're torquing it in a particular way to get some more power. The claim isn't really *about* the golf club (or the ball), is it? It merely *uses* the club to generate power through a slightly different swing. The same principle could likely be accomplished with a stick, a baseball bat, etc. Same thing with exercising a cat: how about a flashlight, or a light reflector with a focusing element...?

So what constitutes "tying" a method to an apparatus other than a machine? Honestly, I don't know. Almost all discussion of "tying" (in Bilski and after) involves "tying" software to a machine. There is almost no discussion of "tying" a method to a non-machine apparatus (if your definition of "apparatus" stretches this broadly!)

- David Stein

[buzz bomb]

David Stein and Malcolm Mooney, I look forward to your responses to Actual Inventor's questions.

[Malcolm Mooney]

"Mr. Malcolm Mooney "AI, is it your position that any claim that recites a "physical object" is safe under Bilski? "

Umm..No. And what could have possible made you reach that conclusion?"

I think it was your bizarre hypothetical claims, all of which are unpatentable subject matter under 101 as written, with or without Bilski. But I understand that in your universe it might be difficult or impossible to accept such a conclusion. Perhaps you can try to write a better hypothetical claim or -- even better still -- come up with some good examples of important inventions that could not be claimed under Bilski. You know, sort of like how Newman in her dissent in Abbott presented a bunch of important compositions that couldn't be claimed without product-by-process claims. Oh, except she didn't. Never mind.

[Michael R. Thomas www.worldsonlyinventorofsignificancearguably.net]

In a progressive world valuable and in need of protection should be the standard for granting patents.Basing exclusion on antique rulings before the invention of new patenting concepts is retartive.We have the opertunity in granting patents to establish the most potentially perfected society possible.

[pka]

"The claim isn't really *about* the golf club (or the ball), is it? It merely *uses* the club to generate power through a slightly different swing."

So you're saying that method of use claims, any method of use claims, are no longer valid under Bilski???

[Malcolm Mooney]

AI "With all due respect can you please cite from Bilski enbanc the part that says processes/methods tied to a machine or apparatus aka physical article must also be transformations"

What makes you think the requirement would have to be found in Bilski? If a method/process does not result in a non-trivial transformation, then what is its patent-worthy utility under 101? Perhaps swinging the golf club could be used to entertain a cat? Odd, I think, that such a utility would be deemed substantial for patentability when cat food supplements are deemed insubstantial for patentability purposes. Where are the howls of protest from those whose loathing of contradictions was so acute less than two weeks ago?