Mayo v. Prometheus Labs., (on petition for writ of certiorari 2009)
The Mayo Clinic has filed a petition asking the Supreme Court to hear its case challenging the patentable subject matter of Prometheus Labs’ patents that cover a method of optimizing the dosing of a drug. U.S. Patents 6,355,623 and 6,680,302.
The invention basically offers an iterative approach to dosing that involves three steps: (1) administer a drug to a subject; (2) then determine the level of drug in the subject; and (3) decide whether the next dose should be the same, higher, or lower. The decision on the next dose is made by comparing the the level of the drug in the subject against predetermined thresholds. Claim 1 of the ‘302 patent adds additional detail including identifying the active ingredient (6-thioguanine), the diagnosis (a GI disorder), and the predetermined thresholds (e.g., 230 pmol of drug per 8108 red blood cells). Claim 46 of the ‘623 is a broad claim in that it does not not require the administration step (step 1 from above).
Broad Functional Language: You’ll note that the claims are written in broad functional language without tying the the claimed methods to any particular technology. Thus, the “administering” step could potentially be accomplished by any effective method (that has or will be invented) of getting the drug into the subject. Likewise, the patent offers potential methods of “determining the level” of drug in the body (e.g., liquid chromatography) but the claim is broadly written to seemingly cover any mechanism that fulfills that method.
Novelty Involves the Mental Step: Of course, the general iterative process is well known, what makes the Prometheus claims novel is that they identify the particular thresholds that are important (e.g., 230 pmol). In practice, the process of comparing the thresholds to the subject’s drug level is done in the mind of a physician. As Mayo explains, this merely involves the physician’s mental recognition of a natural correlation between metabolite levels and patient condition.
With these facts in mind, Mayo presents the following question: Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between patient test results and patient health, so that the claim effectively preempts all uses of these naturally occurring correlations.
The Federal Circuit held the method patentable under its Bilski test by finding that the required administration of the drug transformed an article into a different state or thing — essentially creating a per se rule that a method requiring administration of a drug will be deemed patentable subject matter under Section 101. The court also held that the “determining the level” step was necessarily transformative since “those levels cannot be determined by mere inspection.”
Chances for Supreme Court Review: The fact that Bilski – another Section 101 case – is already pending before the Supreme Court does not mean that the court will reject this case. Rather, the court has often granted certiorari in tandem. The Supreme Court has regularly used case clustering in the past when considering patent issues: Nonobviousness (John Deere (1966), Adams (1966), & Anderson’s-Black Rock (1969)); Patentable subject matter (Flook (1978), Charkabarty (1980), Diehr (1980)); Prosecution history estoppel (Warner-Jenkinson (1995) & Festo (2000)).
The case also represents a growing trend of pitting patient advocates (who want cheaper access to medicine) against innovators (who create better medicine).
Notes & Documents:
- Read Mayo’s Petition for Certiorari: MayoCertPet.pdf.
- Mayo is represented by Fish & Richardson (John Dragseth); Mayer Brown (Stephen Shapiro); and Professor Eugene Volokh (UCLA).
- Professor Collins discusses the Federal Circuit decision
- My initial discussion of the Federal Circuit decision
Claim 1 of the ‘302 patent: A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining a level of 6-thioguanine or 6-methyl-mercaptopurine in said subject having said immune-mediated gastrointestinal disorder,
wherein a level of 6-thioguanine less than about 230 pmol per 8108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein a level of 6-thioguanine greater than about 400 pmol per 8108 red blood cells or a level of 6-methyl-mercaptopurine greater than about 7000 pmol per 8108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
“A claim to:
A bicycle.
Does not preempt all uses of a bicycle.”
Since 35 USC 271 prohibits the use of a patented invention, then yes, a valid claim to “a bicycle” preempts all uses of a bicycle. If you can’t even get this basic stuff right, why should anyone read the rest of your blather?
”
Yes my bad Big. I may have been typing at like 12 in the morning. And actually I thought about going back and correcting it afterwards but was too lazy. As to why anyone should bother to read what I wrote, I didn’t realize I was making you read what I wrote, or even expected anyone but Ned and AI to read it. As to why AI should read it, he should read it to increase his understanding. As to why Ned should read it, meh, giggles really, he already knows what the law is, he just doesn’t like it.
None of that matters, Morse’s 5th claim is not the subject of my work in this thread. And so far as I can see, that claim does not preempt all uses of any “ideas”, “math”, algorithms”, or “laws o nature”. You could argue that such a “system” is non statutory, simply because it doesn’t fall into a stat category so far as I know, but perhaps it is a product. However, if it was upheld as a product I take no issue with that. And neither does the Benson court’s analysis.
“Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.””
“substantially as herein set forth and illustrated”
What does that do to the claim? I really can’t say and I cannot thus have a good opinion on the claim. It has been a long while since I last looked into that claim (I believe we talked about it years ago) and it ended up I sided with the court.
“BCD was the creation of man. ”
I agree with your final word there Ned. And BCD itself would seem to be 101 compatible, just like claim 5 of Morse was held to be. Converting from BCD to binary however is another story, I believe you will also agree with that. I disagree with your final word on Flook, and perhaps I will write a bit more for AI that will also be illuminating to you. The thing is, they used a poor choice of words to explain to people what they were doing. Using words like “new” etc. when really the newness was irrelevant. In other words, some of what they said was held only makes sense in the context of the very very lacking patent application before them. However, the confusion is warranted, I will give you that much.
More later. And some about my day at the USSC.
“A claim to:
A bicycle.
Does not preempt all uses of a bicycle.”
Since 35 USC 271 prohibits the use of a patented invention, then yes, a valid claim to “a bicycle” preempts all uses of a bicycle. If you can’t even get this basic stuff right, why should anyone read the rest of your blather?
6: Morse’s claim to dots, dash’s and spaces: “Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”
Regarding Diehr, the case,IMHO, overruled the nut of the dissection analysis of Flook by stating that if the claim as a whole was directed to [MOT], it was patentable even if the ONLY THING NEW was a mathematical algorithm. Flook had gone overboard in dissecting its claim into old and new and finding it unpatentable because the ONLY THING NEW was the algorithm. Flook also said that its holding in Benson was based on dissection: that Benson’s algorithm was preempted because the computer was old. Benson itself did not go so far. But the WAY Benson decided the issue condemned all software patents that improved the computer via software; leaving patentable only software where the computer was “transforming” an article into a new state.
Now, I have also agreed that if the claim is trying to preempt a law of nature merely by adding in calculation tools, that such a claim should not be patentable. But there is, in my view, a major difference between laws of nature and algorithms created by man which are useful. BCD was the creation of man. The Pythagorean theorem, used as an example in Flook, IIRC, is more like a law of nature.
A proper inquiry should be between the two classes of algorithms. Bilski represents the issue well and is a close case, IMHO.
Es bueno estar de vuelta.
¿Te notó que yo no estaba?
Demasiado trabajo ahora
“6, suppose I invent an algorithm that compresses binary data. Why shouldn’t that be patentable per se? Why do I even have to claim it a part of a machine. The data itself is real. It is physical.”
Ned, suppose I came up with E=mc2. Why shouldn’t that be patentable per se? Why do I even have to claim it as part of a machine? The mass (and maybe even the energy, or “signal” if you ask Broje!) is real. It is physical.
Parody aside Ned, that’s a whole new discussion for another day. This thread is at an end so far as I’m concerned. Feel free to bring it up later.
“Later, O’Reilly was found to infringe even though he used a different code. He still used dots, dashes and spaces. Effectively, Morse had patented all uses of dots, dashes and spaces for communicating.”
I don’t think you are correct about that sir. And even if you are, I question whether or not that would be an “idea”, “law of nature”, “algorithm”, etc in the abstract that was being preempt. But, perhaps O’Reilly just needed a better lawyer to invalidate Morse’s claim. I’d need to see the claim and I am too lazy to look it up.
“Ditto BCD.”
Too my knowledge nobody has ever said that the creator of BCD could not have patented it. The argument could be made that they could not, but I wouldn’t say off hand that they could not. In fact, I would say that there is a good chance they could depending on how the claimed it.
“If that is true, then the patent on BCD also preempts all uses of BCD, including its conversion to binary by whatever algorithm.”
A claim to:
A bicycle.
Does not preempt all uses of a bicycle. Why do you think a claim to BCD would preempt all uses of BCD? You’re going overboard here Ned.
“But, it is effectively contended, that while we can patent the dots, dashes and spaces, we cannot patent a specific way of converting the dots, etc., to numbers because it wholly preempts specific manner of conversion? …—…!”
Ned I think you have Bingo, raise your hand and shout BINGO!!!!!111!!!!!!11
Although you might not get away with patenting the dots and dashes etc. I’m still not too sure about your claim from Morse, from my recollection there was no issue with it, even from my stringent point of view.
“Circling back, converting data from one form to another, for example by compression, has to be patentable else the patent laws would be perverse by denying patentablity to clearly useful inventions. ”
Well Ned, that depends on how you define “inventions” now doesn’t it bud?
“But how would you 6, distinguish one form of data conversion from another?”
I might use words. And if that doesn’t work then I’d think about it really hard and come up with something, or else I wouldn’t distinguish one form of data conversion from another insofar as patent law was concerned.
I’ll give you the last word Ned. I would appreciate it if you would help me briefly in trying to explain to AI what the flaw is in his analysis of Diehr, specifically that since the issue in Diehr did not relate to whether or not there was an algorithm etc. present or to whether or not the algorithm was claimed per se, which is essentially the “first” inquiry, that the court had no need to specify that part of the analysis for simpletons reading the decision. And also you could perhaps help to established that the omission of one step of the analysis which is basically “read the claim and determine what is in the claim” does not mean that you can skip that. All that it means is that it goes without saying and was not at issue in Diehr. You could also perhaps be of assistance in laying to rest him feeling like “read the claim and determine what is recited thereby” is “dissection” and also perhaps help me in laying to rest his notion that “dissection” ever took place in benson and flook. Finally you might assist me in telling him that citing to prior decisions without explicitly overruling part of their long standing analysis (the law lol) is pretty much an endorsement of the prior methodology used in those cases.
I’ll get to you later AI.
See you guys tomorrow at USSC.
Ned wrote: suppose I invent an algorithm that compresses binary data. Why shouldn’t that be patentable per se?
Ned, if you don’t mind I’d like to take a shot at it. And please feel free to correct me where you feel I am mistaken.
So, let’s analyze it.
We know that abstract thoughts are not patentable regardless of scope, so my first question would be, is the invention an algorithm or is it an abstract thought?
If indeed the invention is an algorithm we know it has to be a process as all algorithms are processes.
Processes are one of the four statutory categories so providing the algorithm is useful to at least one person, your invention is statutory subject matter.
Now to your second question.
“Why do I even have to claim it as part of a machine?”
Well, Bilski not withstanding, you may have to claim it as part of a machine to clear the prior art under 102. But for 101 purposes it’s constitutional, and solid statutory subject matter.
6, suppose I invent an algorithm that compresses binary data. Why shouldn’t that be patentable per se? Why do I even have to claim it a part of a machine. The data itself is real. It is physical.
One of Morse’s basic claims was to the dots, spaces and lines (dashes) per se for communicating. He was not limited even to how those dots, spaces and dashes were made.
Later, O’Reilly was found to infringe even though he used a different code. He still used dots, dashes and spaces. Effectively, Morse had patented all uses of dots, dashes and spaces for communicating.
But he invented it. It did not occur in nature. It was useful, tangible and concrete.
Ditto BCD. It is made by man and is symbolic of Arabic numerals, just like Morse’s dots, dashes and spaces. Seemingly, BCD should be patentable. If that is true, then the patent on BCD also preempts all uses of BCD, including its conversion to binary by whatever algorithm.
But, it is effectively contended, that while we can patent the dots, dashes and spaces, we cannot patent a specific way of converting the dots, etc., to numbers because it wholly preempts specific manner of conversion? …—…!
Circling back, converting data from one form to another, for example by compression, has to be patentable else the patent laws would be perverse by denying patentablity to clearly useful inventions. But how would you 6, distinguish one form of data conversion from another?
6 Wrote: “Notice in flook, they were simply “dissecting” the claim, in order to be sure of what the “formula” or “algorithm” was.”
Wrong, I already explained and proved that you do not dissect claims to identify algorithms and mathematical forumulas. And you in effect conceded I was right by being silent and not rebutting the evidence. But in case you did not read it, here it is again:
AI: ” Now I know Benson and Flook, unlike Diehr, did dissect the statutory elements from the mathematical equation. The difference can be attributed to a gross scientific and technological error in reasoning that can be traced back to at least Flook Page 437 U. S. 586. and is referenced in Diehr in [Footnote 14]:
“A mathematical formula, in the “abstract”, [ emphasis added] is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses.”
The misconception here is that a mathematical formula is an abstraction. However, the fact is that a mathematical formula is NEVER in the abstract. This is a scientific and technological error by the courts. A mathematical formula or algorithm is a process. Processes are the opposite of abstract thoughts. Any quantum biologist or cognitive/neuroscientist will tell you that when a thought is reduced to a process it is no longer abstract…….there can be no refutation based on objective testable scientific evidence, that mathematica formulas are processes.
Therefore you do not dissect a mathematica formula, algorithm or law of nature to determine preemption as was purportedly done in Benson and Flook. There is absolutely no need to do so.
For example, If a specification and set of claims is simply 2 x 2 = 4 you will know when it when you see it from reading the claims as a whole as was done in Diehr. A claim on nothing more than 2 x 2 = 4 obviously preempts a mathematical equation and no one would be able to use it. The same effect applies if it’s advanced chemistry or physics equations for laws of nature or natural phenomenon.”
Now since you failed to refute the above and by your silence you conceded the point, what is the excuse for dissecting claims in Flook?
And while you are at it, answer the logical question of why was Stevens so upset in his dissent in Diehr? After all he was perfectly happy in Flook. And if the two cases are in concert as you infer from your rebuttal then Stevens had nothing to complain about.
HINT: If you answer at least the last question you will come face to face with the fallacy in your logic.
AI: “Not only is it improper. It’s illogical. As I have stated previously, Diehr does expressly state claims must be taken as a whole. You can’t take something as a whole while dissecting it into parts. That is a contradiction, a logical fallacy, and complete nonsense.”
6: “Smarter men than you and me disagree with you AI.”
AI: Speak for yourself 6. And since when did illogical thinking become a standard for high IQ?
AI: “Diehr does expressly state claims must be taken as a whole. ”
6: EVERY CASE SAYS THAT. OR IF THEY DON”T “SAY” IT, THEY ALREADY KNEW IT. IT WAS WELL ESTABLISHED BEFORE BENSON AND FLOOK AND WAS APPLIED IN BOTH CASES. Je sus man, now you’re persistant reluctance to acknowledge this is piss in me off.
______________
Its does not matter if was merely stated. What matters is what was done. Diehr clearly made a historic precedent by breaking with the tradition of reading out of the claims non statutory subject matter. And for good reason.
Read Diehr’s [Footnote 12]: “To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.”
6, this is the law and you are duty bound to accept it and follow it. You have no authority to ignore it or overturn it, even if you believe the SCOTUS will in the near future. So do your job, follow the law, and try in the process to act like a decent and civil human being.
6 typed:
“HAHAHAHAHAHAHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHAHA
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6 you can type a million Ha Ha Ha, LOL, and ad hominem attacks all you want but it won’t change the fact that you failed to show one written instance of the justices in Diehr using dissection analysis to dissect claims into statutory and non statutory subject matter.
Your lone attempt at a rebuttal based on current controlling case law is that Diehrs inquiry into into insignificant pre and post solution activity is an example of and indeed a mandate by Diehr for dissection has no merit.
Here is the dictionary definition for the word insignificant:
insignificant: adjective: “unimportant, trivial, trifling, negligible, inconsequential, of no account, inconsiderable; nugatory, paltry, petty, insubstantial, frivolous, pointless, worthless, meaningless, irrelevant, immaterial, peripheral; informal piddling.”
As you can see from the above definition the meaning of insignificant is based on subjective perception not objective analysis.
Since the presence of any mathematical equation in a claim is objective, the presence of extra steps or activities will be apparent. On continued reading of a claim a subjective opinion can be formed about the significance of the additional steps and activities without dissecting the claims into statutory and non statutory elements.
I might add that since the determination of insignificant pre and post solution activity is subjective in nature it requires at the least the citing of an expert authority as the basis of proof. To do anything less is grounds for being traversed and/or appealed.
Your only other rebuttal based on the ad hominem, that I can’t read, carires no legal weight and is irrelevant.
Alright, your laughs cheered me up a bit.
“And yes, if you are a civil servant you do work for me and every citizen of the USA. ”
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Hah hah.
“”6, there is a difference from claiming the calculation of E=MC^2 on a computer and an algorithm that converts BCD to binary efficiently. BCD is something created by man. E=MC^2 is a law of nature.”
Oh, now I get it. As long as the “system” underlying the “algorithm” or “idea” is artificially created, then the “algorithm” or “idea” isn’t a law of nature and so it is exempt from this prohibition. Are you familiar with the proposition that all our language and our numbers are “artificially created”? It doesn’t take much of a jump to realize that all our thoughts on such matters would be “artificially created” according to your train of thought. You may as well say, any ideas relating to anything useful aren’t ideas, because we think about them in artificial terms.
And at least you arrived at your point. Finally. However, me and the USSC are going to disagree with you on that particular issue, the artificiality of “basis” of the idea is irrelevant in determining whether or not it is an idea or not.
Let’s be 100% clear Ned, BCD is simply a symbol system, like numbers or letters. Methods of manipulating that system are the exact same as methods of manipulating the other systems (which were also “made by man” fyi). All of those examples are simply means of portraying something about the world around us. You can use BCD to illustrate rocks lined up on a beach if you like.
“Morse invented his code and was allowed to claim it.”
I will have to review the Morse case. But, who knows? Perhaps they fed up with that particular claim. Although I doubt they did, you’re probably just reading it in some bizzaro way.
“If O’Reilly v. Morse remains good, fundamental law, Benson must be wrong.”
What about if the claim in Morse did not preempt the algorithm itself? What then Ned? Can Benson still be correct?
“The vice in Morse’s 8th claim was that it tried to claim all ways of communicating at a distance using EM. ”
And if he had tried it in his other claim then they would have been invalidated as well. From my recollection of the Morse case (it has been awhile) the patentable claims were clearly statutory and clearly did not run afoul of preempting any idea or algorithm.
“The claims in Benson did not even remotely attempt to claim all ways of converting BCD to binary –> a point I made here many times and with a purpose.”
A moot point. Simply because, as you well know by now, that isn’t the question before the court. The question is whether or not he preempted all uses of his specific algorithm. Not whether he preempted the generic “idea” of converting BCD to binary.
In a way, you’re pretty funny Ned, because it almost seems like you’re trying to turn the 101 question into a 102 question when that is explicitly what the court avoided.
“well well, but but, they didn’t try to preempt a different (well known and old idea)!!!!”
Who cares Ned? We’re not doing 102, and the “idea” at hand is not that one which you randomly picked. They didn’t preempt e=mc2 either. Problem is, they did preempt the specific “idea” or “algorithm” in their app.
But that stuff aside, surely you can see that if they preempt ANY idea or algorithm then they are fed, and rightly so. And it doesn’t matter which idea they preempt, or whether or not it was old (except that all “ideas” are considered “old”), or anything else, if it is an idea that is being preempt then that claim is fed.
“The Benson claims were not directed to any abstract principle, a disembodied mathematical algorithm, but to a computer process. It was and still is in my opinion patentable subject matter.”
And that first sentence is 100% correct. Now tell me Ned, your opinion on whether that is patentable subject matter or not aside, would it be wrong to allow someone to forclose all use of the algorithm by drafting a claim that effectively allowed all use of the algorithm to be patented in one claim? If we allowed that, would that not defeat the purpose of having a prohibition against patenting the algorithm itself?
That’s only two questions. Even easier than the 3.
All that aside, I’m very puzzled why you don’t want to answer 3 simple questions. They are simple enough right? Do you require me to simplify them so that they’re easier and you’re more comfy answering before you’ll answer? I can oblige you.
In any case, I’m out for the night and has partazyin’ tomorrow so I’ll ttyl. ”
“Not only is it improper. It’s illogical. ”
Smarter men than you and me disagree with you AI.
“Diehr does expressly state claims must be taken as a whole. ”
EVERY CASE SAYS THAT. OR IF THEY DON”T “SAY” IT, THEY ALREADY KNEW IT. IT WAS WELL ESTABLISHED BEFORE BENSON AND FLOOK AND WAS APPLIED IN BOTH CASES. Je sus man, now you’re persistant reluctance to acknowledge this is piss in me off.
I’ll get back to you later.
6 wrote: “I don’t think you know what “expressely overruled” means. Nowhere does it say that it was expressely overruling Flook. In fact, it cites Flook as the proper procedure.”
I did not say Diehr “expressly overruled” Flook. Since the premise of your rebuttal is based on a fallacy everything you have written in relation to it is flawed. Diehr upholds the majority of Flook and Benson. However, for you to infer that there is nothing overruled by Diehr in Flook and Benson is quite illogical given the fact that the losers in Diehr were essentially the winners in Flook. What do you think Stevens was so upset about in his dissent in Diehr if indeed there is nothing overruled in Flook?
I have already pointed out what part of Flook was overruled and is no longer good law and backed it up by citing the exact holding in Diehr. So no need to go back into that. I am just curious as to what logical thought process you used to come to the conclusion that Benson, Flook and Diehr are all in perfect concert. Especially when the case history of the divide and dissent between the Diehr and Flook courts is so evident.
You next error is pressuming the word “inquiry” is sanctioning or giving a mandate for dissection. Yes, as you point out the word “inquiry” is used in the discussion about pre and post solution activity analysis. But again no mandate is made for dissection analysis in determining pre and post solution activity. Again, if Diehr wanted to uphold dissection they could have done so quite easily and even explicitly said dissection is the rule. And there would have been no dissent from Stevens and company. Instead, Diehr does the opposite and goes to great length to require reading the claims as a whole.
And yes, if you are a civil servant you do work for me and every citizen of the USA. Consider the “Actual Inventors” to be your ultimate employer and boss.
AI: “6, you have taken the position that dissection is allowed by Benson, Flook and Diehr to identify, algorithms, laws of nature and natural phenomenon for the purpose of determining preemption.”
6: “Good that you at least understand what the proper analysis is even if you don’t accept that it is proper.”
Not only is it improper. It’s illogical. As I have stated previously, Diehr does expressly state claims must be taken as a whole. You can’t take something as a whole while dissecting it into parts. That is a contradiction, a logical fallacy, and complete nonsense. You either take the claims as a whole or you dissect them.
6, there is a difference from claiming the calculation of E=MC^2 on a computer and an algorithm that converts BCD to binary efficiently. BCD is something created by man. E=MC^2 is a law of nature.
Morse invented his code and was allowed to claim it. The code was a conversion from dots and dashes to English letters and symbols. BCD to binary is the same kind of thing. If O’Reilly v. Morse remains good, fundamental law, Benson must be wrong.
The vice in Morse’s 8th claim was that it tried to claim all ways of communicating at a distance using EM. The claims in Benson did not even remotely attempt to claim all ways of converting BCD to binary –> a point I made here many times and with a purpose.
The Benson claims were not directed to any abstract principle, a disembodied mathematical algorithm, but to a computer process. It was and still is in my opinion patentable subject matter.
“6, My position is as follows:
Diehr’s preemption analysis is based on reading the claims as a whole. And Flook’s preemption analysis is based on dissecting the claims into parts of statutory and non statutory subject matter. ”
Your position is wrong.
“You have taken the position that dissection is allowed by Benson, Flook and Diehr to identify, algorithms, laws of nature and natural phenomenon for the purpose of determining preemption.”
Good that you at least understand what the proper analysis is even if you don’t accept that it is proper.
The rest of your post is just facepalm city.
“Your position is wrong for the simple fact that Diehr expressly overruled Flook and in effect overruled Benson where Flook relies on Benson for dissection. On this first point there can be no doubt.”
I don’t think you know what “expressely overruled” means. Nowhere does it say that it was expressely overruling Flook. In fact, it cites Flook as the proper procedure.
“), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U.S. 584 (1978). Similarly, insignificant postsolution activity will not transform [450 U.S. 175, 192] an unpatentable principle into a patentable process. Ibid. 14 ”
^ That is all one big citation to Flook AI.
“Note that Diehr does not say when considered as a whole or parts. And no where in Diehr is dissection ever upheld, sanctioned or given mandate. ”
Except here:
“We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract. A mathematical formula as such is not accorded the protection of our patent laws, Gottschalk v. Benson, 409 U.S. 63 (1972), and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Parker v. Flook, 437 U.S. 584 (1978). Similarly, insignificant postsolution activity will not transform [450 U.S. 175, 192] an unpatentable principle into a patentable process. Ibid. 14 To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection.”
^Citing the “dissection” cases as support for what the “inquiry” that must be made is.
“Therefore you do not dissect a mathematica formula, algorithm or law of nature to determine preemption as was purportedly done in Benson and Flook. There is absolutely no need to do so.”
Except the ones I just pointed to directly above. And the ones in the “dissection” cases cited to within the citation I made.
“6, the second fundamental error you make is assuming that preemption analysis equates to dissection analysis. ”
No actually I don’t. I FIND (not assume) that the “dissection analysis” is part of the preemption analysis. The first part of it if you will. The other part is to read the claim and see if the dissected portion was preempt by the claim as a whole.
“In effect, Diehr simply read the whole claim and did not see a mathematical equation being claimed by itself. ”
No, they simply read the whole claim and did not see a mathematical equation being preempt by the claim.
There is a difference in what you said and what I said. When you see it you’ll sht bricks.
“Diehr further cements that their holding is now controlling case law and overrules Flook’s dissection analysis by forcefully and fully rebutting the Flook dissent. ”
LOL WUT? Fully rebutting the non-holding in a decision is overruling the holding in the decision? Sir, think before you speak.
“That “fact” can’t be denied.”
Except by me, a good portion of the world, the USSC, and anyone else good at reading.
“Now as a practical matter, your role as a patent examiner is to do what you are told and follow current law. ”
Thankfully you aren’t the one telling me what to do.
“you are surely guilty of dereliction of duty.”
You’ll forgive me if I don’t consider your inability to read well dereliction of my duty.
I pointed out for you what was what, and the proper analysis. You understand both. You like neither and don’t accept them. Then you make up some supposed “explicit overruling” in Diehr of Flook or Benson or both. Neither occured. Diehr in fact reinforced both of them, in full. I cited both of the portions back in my large post way above showing you where Diehr cites both, explains both, and then later acknowledges them as being proper. If you have trouble reading that is not my fault. If you want further instruction I charge by the hour.
One minor thing that may assist you though AI is to take a look at the claims in each case and compare how they are different. The Diehr claim involves a long and potentially patent worthy list of steps that do not involve the algorithm at all, and that is why it avoided the fate of the other two.
You might also try clearing your mind completely, not approaching this with any pre-existing bias, and reading, starting from In Re Benson (not Got vs Benson), the entire caseline. Without skipping anything so that you get the context.
And AI, I hope you’ll also forgive me for not every doing you an analysis like this again. You can’t follow it even when I put it right in front of you. Just like I told you that you wouldn’t be able to before I did the analysis for you. Your best hope of “getting it” is likely to improve your reading skills and I can’t teach that.
And Ned,
“What concerns me is that not one single brief (that I read) to the Supreme Court in Bilski ever pointed out that Benson was wrong in its result, therefor it must have been wrong in either its reasoning or its premises. I suggest both.”
That “therefor” is a non-sequitur, and not only is it a non-sequitur, you’ve haven’t got a chance of assailing either its reasoning or its premise without first being able to answer those main questions I posed above.
The questions in simple terms are:
If that claims of this nature (in Benson) were allowed, then would it not effectively allow the patenting of algorithms etc?
And if your answer is “yes”, does that not defeat the entire purpose of having a restriction on patenting algorithms etc?
And if your answer is “yes”, should something defeating the entire purpose of having a restriction on patenting algorithms etc be allowed by courts?
Feel free to answer those questions as well AI. I’d be interested to know where your thought process goes specifically awry.
It is nothing more than 3 easy yes/no qusetions.
6, My position is as follows:
Diehr’s preemption analysis is based on reading the claims as a whole. And Flook’s preemption analysis is based on dissecting the claims into parts of statutory and non statutory subject matter.
You have taken the position that dissection is allowed by Benson, Flook and Diehr to identify, algorithms, laws of nature and natural phenomenon for the purpose of determining preemption.
6 wrote : “It is permissible to “dissect” out what the algorithm is for the purpose of understanding what the algorithm is that you need to apply the benson reasoning to in order to find out if the rest of the claim does not prevent the claim from preempting every possible use of the algorithm. Similar to how I just “dissected” it out for Ned a few posts ago.”
Your position is wrong for the simple fact that Diehr expressly overruled Flook and in effect overruled Benson where Flook relies on Benson for dissection. On this first point there can be no doubt.
Diehr says, “where a claim recites a law of nature or biological principle, a court must look to whether the claim seeks protection for the phenomenon “in the abstract” or instead implements the phenomenon in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect.” Diamond v. Diehr, 450 U.S. 175, 191 (1981).”
Note that Diehr does not say when considered as a whole or parts. And no where in Diehr is dissection ever upheld, sanctioned or given mandate.
Read Diehr’s [Footnote 12]:
“It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877).”
Diehr further cements that their holding is now controlling case law and overrules Flook’s dissection analysis by forcefully and fully rebutting the Flook dissent.
Read Diehr’s [Footnote 15]:
“The dissent’s analysis rises and falls on its characterization of respondents’ claims as presenting nothing more than “an improved method of calculating the time that the mold should remain closed during the curing process.” Post at 450 U. S. 206-207. The dissent states that respondents claim only to have developed “a new method of programming a digital computer in order to calculate — promptly and repeatedly — the correct curing time in a familiar process.” Post at 450 U. S. 213. Respondents’ claims, however, are not limited to the isolated step of “programming a digital computer.” Rather, respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured — a result heretofore unknown in the art. See n 5, supra. The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101. As we explained when discussing machine patents in Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972):
“The patents were warranted not by the novelty of their elements, but by the novelty of the combination they represented. Invention was recognized because Laitram’s assignors combined ordinary elements in an extraordinary way — a novel union of old means was designed to achieve new ends. Thus, for both inventions, ‘the whole in some way exceed[ed] the sum of its parts.’ Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 340 U. S. 152 (1950).”
Id. at 406 U. S. 521-522 (footnote omitted).
In order for the dissent to reach its conclusion, it is necessary for it to read out of respondents’ patent application all the steps in the claimed process which it determined were not novel or “inventive.” That is not the purpose of the § 101 inquiry, and conflicts with the proposition, recited above, that a claimed invention may be entitled to patent protection even though some or all of its elements are not “novel.”
6, the second fundamental error you make is assuming that preemption analysis equates to dissection analysis. However, whereas Flook and Benson read out elements by dissecting, Diehr simply and expressly read the claims as a whole. Again,
Diehr said at 450 U. S. 213.: “ Respondents’ claims, however, are not limited to the isolated step of “programming a digital computer.” Rather, respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured — a result heretofore unknown in the art. See n 5, supra. The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under § 101.”
In effect, Diehr simply read the whole claim and did not see a mathematical equation being claimed by itself. Now I know Benson and Flook, unlike Diehr, did dissect the statutory elements from the mathematical equation. The difference can be attributed to a gross scientific and technological error in reasoning that can be traced back to at least Flook Page 437 U. S. 586. and is referenced in Diehr in [Footnote 14]:
“A mathematical formula, in the “abstract”, [ emphasis added] is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses.”
The misconception here is that a mathematical formula is an abstraction. However, the fact is that a mathematical formula is NEVER in the abstract. This is a scientific and technological error by the courts. A mathematical formula or algorithm is a process. Processes are the opposite of abstract thoughts. Any quantum biologist or cognitive/neuroscientist will tell you that when a thought is reduced to a process it is no longer abstract.
While I am not expressing an opinion here as to whether the decision to legally declare mathematical formulas or algorithms by themselves as non statutory processes is correct, there can be no refutation based on objective testable scientific evidence, that mathematica formulas are processes.
Therefore you do not dissect a mathematica formula, algorithm or law of nature to determine preemption as was purportedly done in Benson and Flook. There is absolutely no need to do so.
For example, If a specification and set of claims is simply 2 x 2 = 4 you will know when it when you see it from reading the claims as a whole as was done in Diehr. A claim on nothing more than 2 x 2 = 4 obviously preempts a mathematical equation and no one would be able to use it. The same effect applies if it’s advanced chemistry or physics equations for laws of nature or natural phenomenon.
So to sum up, where Benson, and Flook dissected claims under 101, for any purpose, they did so in error and have been overruled by Diehr in that regard. Diehr is now controlling case law. That fact can’t be denied.
Now as a practical matter, your role as a patent examiner is to do what you are told and follow current law. And that’s all I pay you for. I appreciate that you aspire to be an attorney and you are learning by testing out your theories and debating the actual attorneys on this blog but I hope that is as far as your legal playtime goes. Because if the scofflaw ideas you express here spill over into your actual patent examination work, you are surely guilty of dereliction of duty.
“The only category from this list it could possibly be is a new and useful process, and you have not claimed that, as your steps do not amount to a process to do anything.”
That would be an interesting way of rejecting a patent. On which statutory grounds are you relying? 101? Is there some caselaw backing up what you say or are we just winging it?
MM, your point is valid regarding the claims in the Prometheus case. Something is very wrong with the MOT test or the way the Feds are applying it.
” Let’s also not forget the limitation “breathing delivers oxygen to the brain to facilitate neuronal firing” is quite useful for staying alive.”
More importantly, it transforms a cloud of oxygen in the air surrounding the practitioner into blood-borne oxygen which allows neurons in the brain of the practitioner to function more efficiently in the determining step. This addresses any Bilski issues which might be lurking out there.
Of course, it’s still not patentable under 101 in my view, but apparently perfectly acceptable to Actual Inventor and Troll Above Law, absent a credible logical argument from either as to why it it’s not patentable subject matter. I wonder why they are so silent about this claim? It’s almost as if admitting that a process wasn’t patentable under 101 was against their religion or something.
MM, you appear to have forgotten to address the “useful” part of the process. However, I think it’s obvious that it is quite useful because with it, you can determine to watch a four hour Pauly Shore movie. Let’s also not forget the limitation “breathing delivers oxygen to the brain to facilitate neuronal firing” is quite useful for staying alive.
Lionel takes a shot at it: “The claim you posted is not patentable because it does not claim a new and useful process”
It’s certainly a process as AI would define a process (and as I would). It’s also new (unless you have some art to prove me wrong).
“your steps do not amount to a process to do anything.”
Since when are a series of related steps not a process?
“No one could use your claimed “process.”
Why not? I certainly can, which is why I filed for a patent. I can breathe, and once I knew what RINGMASTER is (all of the details of its plot are disclosed in the specification and every frame of the film was deposited with USPTO), I can do the determination.
“Anticipated enjoyment” is currently undefined as well.”
You don’t know what “anticipated enjoyment” means? The specification provides a number of different ways to go about ranking the anticipated enjoyment relative to RINGMASTER. Imagine two movies. One stars Brad Pitt as a patent law professor who is seduced by his student, Sienna Miller. The other is a four hour silent movie starring Paulie Shore which features a two hour love scene between Paulie and his goat. Which do you anticipate you will enjoy more?
Oh, before you answer that question, you may want to check the patent office to see if the determination is patented. Or you could just stop breathing.
Yah, right. Switch on a first computer with no operating system installed and what happens? Switch on a second computer that is identical to the first except with Windows installed and what happens? Is there a difference? Of course there is. Is it a “different machine”. Of course it is. What do you think makes the second computer behave differently from the first – pixie dust?
Option 1: the two machines are identical, because none of their physical components are any different.
Option 2: the two machines are physically different, whether powered up or not, because the magnetisation patterns on their hard disks are different by virtue of the Windows installation on the second. When powered-up, the magnetisation patterns on the hard disks determine how millions of transistors in their chips are biased and hence what the machine actually does in response to user input.
Only one of these options has any credibility in the land of the sentient. Hint: it isn’t option 1.
There might be arguably sound reasons why (some? all?) “software” shouldn’t be patentable, but this isn’t one of them.
6, as I said, one cannot interpret Benson differently from the way you do. It literally banned the patenting of mathematical algorithms, or indeed, any program operating on computer per se, regardless if they had anything whatsoever to do with describing laws of nature. Thus, we are left with patenting software in terms of what it does physically, the MOT, rather that just patenting the software as a computer process. That is why so many are worried about this case.
What concerns me is that not one single brief (that I read) to the Supreme Court in Bilski ever pointed out that Benson was wrong in its result, therefor it must have been wrong in either its reasoning or its premises. I suggest both.
Malcolm,
The claim you posted is not patentable because it does not claim a new and useful process, machine, manufacture, or composition of matter. The only category from this list it could possibly be is a new and useful process, and you have not claimed that, as your steps do not amount to a process to do anything. No one could use your claimed “process.” “Anticipated enjoyment” is currently undefined and as well.
The fact that your limitations are completely unrelated also raises 112 issues.
Malcolm, why is anyone who suggests something that you think to be a challenge automatically a troll?
I was trying to help you by making your challenge acceptable and you seem as bad as the people you criticize by labeling me a sock puppet and troll. Is it that hard for you to modify your challenge? Are you that fullof yourself that you think you need no help?
“Circuits change. They get hotter when juiced. ”
And then they cool down when the “juice” goes away. What of it? Are you claiming the heating and cooling of circuits? No.
“Doped semiconductors degrade slowly.”
Good luck convincing a court that your “transformation” or your “invention” is the incidental degradation of an apparatus during its normal use.
“They change when they are electrified. ”
Really? How?
“Does the circuit “change” when the lightbulb burns out?”
Now device failure is what you’re patenting?
“In the patent world, we’re concerned with promotion of the useful arts. Does a circuit’s practical usefulness change according to how it’s gates are temporarily configured?”
Maybe if the later were a “Useful Art” then I would protest less. Maybe you missed our threads discussing that subject.
“6, why don’t you just go through life and use all computers turned off?”
Funny you mention that.
“6, why don’t you just go through life and use all computers turned off? After all, the circuits haven’t changed from when they were turned on. The circuits aren’t any different than when they were turned on and configured to allow you to participate in an online patent blog… When you have an unexplained ailment, you can tell them to leave the MRI machine’s computer turned off, since turning it off doesn’t change it. ”
Using a device has nothing to do with changing the device sir. I like to use devices all the time. I very rarely change devices that I use. If you think you can sneak a “use” patent through, then I recommend that you go ahead and try. Especially if you think that use patent will hold up in court.
“There is no practical reason, in patent law, to treat the circuit with the relays as different, under 101, than the circuit without the relays. ”
We’re not really talking about a relay laden circuit in the case of your desktop computer.
“The scale and ephemeral nature of a circuit should have nothing to do with its patentability.”
I have never stated that circuits should not be patentable. A friend of mine works in such an art and I take no issue with his art other than teasing him regularly that everything in his art was invented 50 years ago. Quite often he has found out that my teasing is actually the truth.
As to an “ephermeral” natured circuit, well, that’s a bit of a problem. You see, we have these tiny little things called statutory classes. And there is this decision called In re Nuijten…
“Close to ”
How about we find a real definition instead of making one up that is “close to” a wiki’s definitnion?
“See, circuit has two meanings (you’ll have to get used to this if you have law school in mind). One meaning is the arrangement of elements, the network of components and conductive connections. Another meaning is the path(s) that electrons take from and back to a power source. When a gate flips, the circuit (per the second meaning) changes because the path of the flowing electrons has changed. You might say under the first meaning a circuit doesn’t change, and under the second, a circuit does change.”
Are you trying to usurp MM’s throne of being the best one to abuse language? Funny how we were using the first definition up until you arbitrarily decided to switch to the one that you think will help your point. Don’t worry though, it will not help your point at all.
I will give you that circuit can mean as you suggest, what of it? The structure never changed. You might have forgotten, but we’re dealing with the structure. Not abstract “pathways”. If you insist upon changing the conversation thus, we will have to reapproach it from the beginning. Which is a dam shame because I’m tired.
Are you that Dale guy? Your arguments are reminiscent of his. They’re “floundering”, but he’s always ready with some new technical term that was entirely outside the discussion previous to him newly introducing it. Somehow he always thinks they will allow him to finally triumph. And they never help him at all. It’s so embarrassing I had to stop going to his little blog.
I like you hierarchy, and I don’t want to be a total arse to someone that’s kind of new and kind of sticks to the sidelines. From what I’ve seen you do a pretty good job keeping your posts sensical here on PO, but you’re on my home turf son. You’re not going to pull any technical wizbangery over on me.
Btw guys, whars mah AI? AI, AI, helloooooooo?
why don’t we define “circuit” ? How about a set of pathways for electrons to flow through. Close to Wikipedia’s: “an interconnection of electrical elements such as resistors, inductors, capacitors, transmission lines, voltage sources, current sources, and switches.
See, circuit has two meanings (you’ll have to get used to this if you have law school in mind). One meaning is the arrangement of elements, the network of components and conductive connections. Another meaning is the path(s) that electrons take from and back to a power source. When a gate flips, the circuit (per the second meaning) changes because the path of the flowing electrons has changed. You might say under the first meaning a circuit doesn’t change, and under the second, a circuit does change.
6, you’re like my 11 year old son. He rarely rarely admits he is wrong, and when he’s in a hole, he doesn’t have the good sense to stop digging.
6: “Because the circuits never change. That’s why.”
Circuits change. They get hotter when juiced. Doped semiconductors degrade slowly. They change when they are electrified. Is an illuminated lightbulb part of a circuit? Does the circuit “change” when the lightbulb burns out?
Your “change” is like Malcom Monolith’s “different”. It is meaningless in the abstract. A circuit both changes and stays the same. In the patent world, we’re concerned with promotion of the useful arts. Does a circuit’s practical usefulness change according to how it’s gates are temporarily configured? Absolutely.
6, why don’t you just go through life and use all computers turned off? After all, the circuits haven’t changed from when they were turned on. The circuits aren’t any different than when they were turned on and configured to allow you to participate in an online patent blog… When you have an unexplained ailment, you can tell them to leave the MRI machine’s computer turned off, since turning it off doesn’t change it.
Take a patentable hardwired circuit. Put a relay between each wire connecting two elements. Provide a control panel to let a person turn the relays on and off. Energize the circuit with the relays switched off. Circuit not operational. Now the user uses the control panel to flip the relays and the circuit is alive and functionally equivalent to the hardwired circuit. There is no practical reason, in patent law, to treat the circuit with the relays as different, under 101, than the circuit without the relays. The scale and ephemeral nature of a circuit should have nothing to do with its patentability.
“Prediction: Mooney responds with a trite one-liner, because Mooney@time1 is no different than Mooney@time2. In fact, he could be fairly referred to as Monolithic Mooney.”
Monolithic Mooney.
I kind of like that.
“Dissection, under Flook, would have found the opposite simply because the only thing new in the claim was the algorithm.”
That is simply not true. Why? Because what you are calling “dissection” never existed except in your own mind. It did not exist in Flook, and not to be entirely glib, it did not exist in a train, a plane, or with green eggs and ham.
“How the computer is used is completely irrelevant and a red herring. ” (<<<<<<<------The ultimate in software patenting proponent irony btw) That is not a red herring in so far as this inquiry is taking place Ned. I'm telling you this. The USSC is telling you this. Why is it not a red herring? Because if we allow claims that preempt all uses of that computer (using the algorithm in Benson) then we effectively allow you to patent the algorithm. If that were allowed, then would it not effectively allow the patenting of algorithms etc NED? Does that not defeat the entire purpose of having a restriction on patenting algorithms etc Ned? Please, I am very interested to hear your opinion on those particular questions, because it is those questions that lay at the very heart of this whole matter. "But simply asking the question in this way dooms the claim. " Exactly the court's point sir. "The computer with the algorithm is a different machine, just as the mold with algorithm is a different machine. They both operate differently." So what Ned? So what? "The claim was to an improved computer process and that is patentable subject matter." It isn't if it precludes every use of the ALGORITHM. Or at least says the USSC. In fact, they explicitly address your argument. You cannot "demonstrate" them to be wrong, because you and the USSC simply have a different opinion on the matter. And guess who's opinion counts for more? "Now had the Benson claim been to a law of nature, E=mc(squared) for example, the recital of the computer would clearly have been incidental. " But since it was an algorithm then that is somehow different than a "law of nature"? Do you even understand that E=mc^2 is simultaneously an algorithm even while it is a description of a natural phenomena? Come on Ned, you can do better. Put your thinking cap on sir. Be sure also Ned that Benson's "algorithm" can be mathematically expressed just as sure as it can be expressed in terms of how a shift register will handle the bits. And the patent he sought would be preempting that mathematical formula just the same as the algorithm. " but it is qualitatively different from the algorithm in Benson." It has differnt qualities? Please Ned, do tell what these qualities are. E=mc^2 is practically a direction to tell someone that if they want to find what energy is mathematically equivalent to a bit of matter in question then one needs to multiply the matter by the speed of light squared. That's an algorithm, pure and simple Ned. Note though Ned that even if it is "qualitatively different" that is still going to be irrelevant but I'm not going to go into it right now because I've been lazy enough today and need to finish some things before I go home. Before I go though, yes, my reasoning is very consistent with Benson. And you can bank on Benson never being overturned, its logic is way too strong for anything but a congressional intervention to budge. It is, what some people would call, "well established" law by now. You may as well try to overturn the requirement that an invention fit into one of the 4 stat categories or the axiomatic truths of the patent system. Good luck to you and yours with that.
6, your reasoning is very consistent with Benson, which is why it has to be overturned. We in the patent bar should stop avoiding the issue.
“In the case of the computer+algorithm, if we choose usefulness or observable output as the criteria, than the computer can be different when it is running a new algorithm. ”
“usefulness or observable output”, precisely the same choices that were historically denied. The later of which finally came into fashion for actual manufacturing processes sometime in the 60’s? iirc. And it was a total shame then.
“The hard-wiring hasn’t logically changed.”
Not only is it not “logically” changed, it isn’t changed at all, save perhaps for the presence of some magnetized portions, or some charged portions which are transitory and do not affect the actual structure (caveat of course is “usually” since some parts of a computer could be made with parts that would be affected, though this doesn’t happen in your desktop pc to my knowledge).
” We could as well say that a gas mixture of two parts H and one part O (not bonded) is no different after a spark has transformed the into water. ”
That is not technically true, a material transformation has occured and the end material was not the same material as the “raw material”.
“If the computer has a solid-state drive, the circuitry is now different.”
That’s a big ol’ fat “if” ain’t it? Perhaps you’d like to limit your claims to such computers?
“In other words, with the hammer, the process and function are not different.”
Actually they are slightly different, the differences are just on a scale so small that you might not be able to easily measure them. Kind of like in a computer, huh?
“Do you not agree that two different electronic circuits are two different machines?”
No, I do not “not agree” with that. I in fact agree with that if the two different circuits are in fact different.
“A computer is a box of circuitry that can reconfigure itself”
The computer does not “reconfigure itself”. Ever. It was instructed to configure, or reconfigure, or put it’s hand on its stomach while doing the hokey pokey. Anything it does it was specifically instructed, at some point in time, to do. Or it was built specifically to do something, depending on what kind of computer we’re talking about.
“reconfigure itself into any electronic circuit you require based on the software you feed into it. ”
The “circuits” in a “computer” never change. At least if we’re talking about your desktop computer. That is why it is still the same machine after you put windows on it as it was before you put windows on it and will be the same machine after you take windows off of it.
” How then is a computer not a different machine when you cause it to execute different software?”
Because the circuits never change. That’s why.
Ned, I’ll get to you later on.
********”The computer with the algorithm is a different machine”
Just like a hammer is a different machine when it’s used to pound a 1.0001 inch nail versus a 1.0002 inch nail.********
Interesting comparison. Now do “electronic circuit.” The electronic circuit is a different machine when it processes a signal one way versus another way, right?
But wait, the hammer does not “process” the 1.0001 inch nail any differently then the 1.0002 inch nail. The nail is analogous to data that is taken in and processed in exactly the same way regardless of differences in the data.
In other words, with the hammer, the process and function are not different. But with computers and electronic circuits, the processes and functions are different when you change the computer program or the circuit components and paths.
Do you not agree that two different electronic circuits are two different machines? A computer is a box of circuitry that can reconfigure itself into any electronic circuit you require based on the software you feed into it. How then is a computer not a different machine when you cause it to execute different software?
“The slipperiest weasels in this business are the ones who subtetly abuse language.”
That would be everyone. This is patent law after all.
Mooney: “”The computer with the algorithm is a different machine”
Just like a hammer is a different machine when it’s used to pound a 1.0001 inch nail versus a 1.0002 inch nail.”
By Mooney’s reasoning, Mooney sleeping is not different than Mooney awake (because the algorithms running in his brain don’t make it different)
The slipperiest weasels in this business are the ones who subtetly abuse language. Here, the abuse is on “different”. Of course any two things, when compared, will be different in some ways, and alike in others. It depends on the nature of the comparison. In the case of the computer+algorithm, if we choose usefulness or observable output as the criteria, than the computer can be different when it is running a new algorithm.
In some ways, the computer+algorithm is not different, and in some ways it is. It is not different in that the presence of certain components has not changed; e.g., chip, memory, power supply, etc. are still there. The hard-wiring hasn’t logically changed. The atomic composition of the device hasn’t substantially changed (perhaps some semi-conductor molecules have permanently degraded, as is usually the case over time). In other ways, the computer is or could be quite different. If the computer has a solid-state drive, the circuitry is now different. Following the lead of the language abuser, the machine is “different” because the quantum state of atoms in the device have changed; the atoms are now “different”. The fact that the machine now observably behaves differently, for example different output on a display, proves that the machine is in some way “different”.
It’s a triteness Mooney specializes in … to argue that a computer is always the same regardless of the algorithms it is executing. We could as well say that a gas mixture of two parts H and one part O (not bonded) is no different after a spark has transformed the into water. After all, the number of atoms hasn’t changed. The electrons, protons, and neutrons, viewed individually, haven’t changed. The total mass hasn’t changed. Etc.
Prediction: Mooney responds with a trite one-liner, because Mooney@time1 is no different than Mooney@time2. In fact, he could be fairly referred to as Monolithic Mooney.
“From one examiner to another”
Yup, just the usual troll.
“The computer with the algorithm is a different machine”
Just like a hammer is a different machine when it’s used to pound a 1.0001 inch nail versus a 1.0002 inch nail.
A. Stab: “Maybe, if you fixed your claims, your opponents would be interested in taking your challenge.”
I don’t see what’s so challenging about stating whether this claim is patentable under 101 or not. What information are you missing that I haven’t provided that prevents you from addressing whether the claim is patentable subject matter? I’ve already stated that the reference to RINGMASTER is a functional limitation and not “merely descriptive.”
And why put on a sockpuppet, A.Stab? Lame.
Malcolm,
From one examiner to another, perhaps why no one is taking your challenge is because your claims are not understandable as they are written. As I posted earlier
====
1. A method for optimizing a selection of movies, comprising:
(1) breathing, wherein said breathing delivers oxygen to the brain to facilitate neuronal firing; and
(2) determining a most preferred movie, wherein said determining involves ranking the anticipated enjoyment from watching a plurality of movies to the anticipated enjoyment from watching RINGMASTER.
The claim appears indefinite, as the optimizing of the selection of movies (plural) is not functionally related to the determining limitation (singular, most).
If the plurality issue is ignored, there is still indefiniteness as “a plurality” does not clearly have as its antecedent “a selection of movies”.
If the antecedent basis issue is ignored, there is still indefiniteness as the ranking phrase is not supported as to how the relative anticipated enjoyment is calculated or compared.
Assuming arguendo, that the anticipated enjoyment is functionally described and is captured in the specification, then the functional relationship of the terms may be related as RINGMASTER does appear to serve as the baseline.
Posted by: A. Stab | Nov 02, 2009 at 12:36 PM
===
Maybe, if you fixed your claims, your opponents would be interested in taking your challenge.
6, et al., Benson and Flook were not overruled. I know that. I simply disagree with those cases because of the way they decided the issues: “point of novelty,” dissection and the like. Diehr at least put the law back on course by stating that if the claim as a whole was directed to patentable subject matter, it eligible subject matter under section 101 even if the only thing new in the claim was a mathematical algorithm and even if that algorithm described a law of nature. Dissection, under Flook, would have found the opposite simply because the only thing new in the claim was the algorithm.
I have also tried to show why Benson was wrong in fact. The claim was to an improved computer process and that is patentable subject matter. How the computer is used is completely irrelevant and a red herring. But simply asking the question in this way dooms the claim. The computer with the algorithm is a different machine, just as the mold with algorithm is a different machine. They both operate differently.
Now had the Benson claim been to a law of nature, E=mc(squared) for example, the recital of the computer would clearly have been incidental. A law of nature is can be mathematically expressed, but it is qualitatively different from the algorithm in Benson.
Hope this helps you understand my reasoning.
Troll: ” you yet again avoid the points of discussion and evade giving a substantive answer where you obviously do not have one”
You yet again lie. I haven’t avoided “the points of the discussion” and I haven’t evaded giving substantive answers to any questions that were asked of me. It’s your beloved AI (and now you) who are doing the evading. So step up, Troll. Afraid of something? What is it about the claim that is so frightening to you? It’s just a claim.
AI: “Second, it’s disingenuous of you to parse my words in order to make them into something you want to say, then demand I explain and or answer for it. Pasted below is my full and complete response to you.”
AI and Troll (AI’s defender and cheerleader ad nauseum), I invite either one of you to answer the question. Here it is again. It’s quite straightforward. You answer “yes” or “no” and then you provide an explanation for your answer based on the Supreme Court cases that you love so much. Are you ready? Take this claim:
1. A method for optimizing a selection of movies, comprising:
(1) breathing, wherein said breathing delivers oxygen to the brain to facilitate neuronal firing; and
(2) determining a most preferred movie, wherein said determining involves ranking the anticipated enjoyment from watching a plurality of movies to the anticipated enjoyment from watching RINGMASTER.
and tell me whether it’s patentable subject matter under 35 USC 101 and why.
I’m very sorry, AI, but “No, because it’s not a patent,” is simply a failing answer. You need to step up to the plate, or your cheerleader Troll Above Law needs to step up to the plate. You can both even wear your beloved “track shoes”. But answer the question, honestly and credibly. I’ve explained upthread why it’s important. Or is your understanding of the case law as shallow and simplistic as it appears?
Troll: “Malcolm, if you want to steal my metaphors”
LOL, coming from you, Troll. Don’t you remember me calling you out on your creepy thieving behavior many months ago? Of course you do: that was shortly before the term “creepy” started showing up in your posts and those of your sockpuppets.
In re Richman is quoted in Diehr:
“Parker v. Flook, supra, presented the Supreme Court with a similar situation. The claims were drawn to a method for updating an alarm limit used in petroleum refining processes. The Court determined that the claims were essentially directed to the use of a new Mathematical formula in the conventional process of updating alarm limits. According to the majority, “Respondent’s application (sic, claimed invention) [**13] simply provides a new and presumably better method for calculating alarm limit values.” 437 U.S. at 594-95, 98 S.Ct. at 2528, 198 USPQ at 199 (emphasis ours). As in Benson, the Court in Flook was simply saying that the claims were an attempt to patent The scientific truth itself, rather than an application of the truth or a structure created by its use. “(I)f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” 437 U.S. at 595, 98 S.Ct. at 2528, 198 USPQ at 199, Quoting In re Richman, 563 F.2d 1026, 1030, 195 USPQ 340, 343 (Cust. & Pat.App.1977).
The Court’s holding in Flook was “very simply” stated: “(O)ur holding today is that a claim for an improved Method of calculation, even when tied to a specific end use, is unpatentable subject matter under § 101.” Id. 437 U.S. 584 n. 18, 98 S.Ct. 2528. (Emphasis ours.) As in Benson, this holding has nothing to do with computers or computer programs per se.”
The focus of the non-patentable claim is NOT the limitation of specific purpose. The focus is that the math is claimed, includes the specific purpose, but is not limited to the specifi purpose, thus pre-empts.
As I am often the first to criticize you 6, let me say that at first blush (by that I mean simply scrolling through to see how long the post is), you actually appear to be applying reason and case law. Bravo.
As it is, I am traveling again and a deeper analysis will have to await this weekend.
AI, thank you for the eloquent defense. Although what you say is true, it is evident that Malcolm is the uber-troll and will viciously attack those whom he thinks are treading on his turf here at the Trainwreck.
Malcolm, if you want to steal my metaphors, you will at least have to get the fact pattern correct. As it is, your use of my “track shoes” only appears as yet another silly smokescreen of yours wherein you yet again avoid the points of discussion and evade giving a substantive answer where you obviously do not have one. The Record clearly speaks thus – your wanting it to speak something else simply fails.
Since I’m going to end up analyzing this whole thing for Ned, then I may as well do a bit for AI while I’m already busy.
Look AI, the big part of your analysis that pops right out and smacks someone familiar with Benson is that your
“CAUTION! Do not mistake this as a pass to dissect claims into unpatentable subject matter. Diehr also says: “Similarly, in Parker v. Flook,supra,we stated, “A process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.” 437 U.S.,at 590, 198 USPQ at 197 .””
part is interpreted by you to also be a CAUTION against dissecting the claims for any purpose, even purposes besides determining what is “unpatentable subject matter” and what isn’t within the claim itself. It is permissible to “dissect” out what the algorithm is for the purpose of understanding what the algorithm is that you need to apply the benson reasoning to in order to find out if the rest of the claim does not prevent the claim from preempting every possible use of the algorithm. Similar to how I just “dissected” it out for Ned a few posts ago. Alternatively, you could just get it from the spec usually.
The problems overall in your tests are not necessarily in what you have written down, they are in how you understand what you have written down and that they are incomplete and/or miss crucial points.
Let’s start off with the basic order. Step 3 may as well go before step 2 and you may as well make it
“Determine if the claims involve a scientific or technological fact, abstract idea, mathematical expression etc. and if so, also determine if the claim is an application thereof or whether the claim is seeking patent protection for that scientific or technological fact, abstract idea, mathematical expression etc. in the abstract.”
This way if you fail “step 3” then there is no need to do “step 2” so you may as well do it first. I should add at this point that if this is re-written thus, then “dissection” is allowed to determine what the fact/abstract idea/math/algorithm is. You do not however care if it is “old” or “new” or if the parts of the claim that are left over are “old” or “new”. You might mention in a decision that they are or are not old or new, but it is irrelevant. Except perhaps in so far as all “math” and “algorithms” etc. are “old”. Even that is pretty much irrelevant, that’s just a tangental truism.
And your step 1 doesn’t really need to exist, we all know we have to read the claims and that any determination as to the claim being patentable subject matter or not must be based, in the end, upon the whole claim. That’s not really a “step” that needs to be put down. Again that’s just a truism. Something that you can keep in the back of your head so it isn’t cluttering up the place.
Now we’re effectively down to a new step 1 and new step 2 that are old step 3 and old step 2 respectively.
If you say yes and then no to new step 1 the claim is unpatentable. If you say yes and yes then you go to new step 2. If you say anything else then this whole analysis is irrelevant to your claim and it “passes” all of 101. That is, if you say no to step 1 in the beginning then you’re in the clear.
Then we get to step 2. Step 2 needs to be something like:
Determine if the claims, even though already determined to be an application of a sci principle or fact, or an abstract idea, math principle, or algorithm etc preempt all possible uses of the sci principle or fact, abstract idea, math principle, or algorithm etc.
Steps 1 and 2:
Determine if the claims involve a scientific or technological fact, abstract idea, mathematical expression etc. and if so, also determine if the claim is an application thereof or whether the claim is seeking patent protection for that scientific or technological fact, abstract idea, mathematical expression etc. in the abstract.
Determine if the claims, even though already determined to be an application of a sci principle or fact, or an abstract idea, math principle, or algorithm etc preempt all possible uses of the sci principle or fact, abstract idea, math principle, or algorithm etc.
That’s all there is, that’s all you need in terms of steps for this case. If you wanna fill these in with caselaw, modify it to be more complete for cases like Bilski, make it include more from its source material, or add in your little nonsense that everyone already knows about “the claim as a whole”, you may feel free to but don’t let it dilute what is there.
The first determination is from the whole line of cases, from Morse culminating in Diehr.
link to caselaw.lp.findlaw.com
Where the justification for step 1 comes from:
“We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract.”
Which also explains, inter alia, precisely what that inquiry is and what happened in Benson for Ned’s review:
“Our recent holdings in Gottschalk v. Benson, supra, and Parker v. Flook, supra, both of which are computer-related, stand for no more than these long-established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a [450 U.S. 175, 186] general purpose digital computer. ”
And what happened in Flook:
“The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application (6: spec+claims etc), however, did not purport to explain how these other variables were to be determined, 10 nor [450 U.S. 175, 187] did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.” 437 U.S., at 586 . ”
Then as an aside the court provides the cop-out for having a novelty requirement result from the language in 101.
“It has been urged that novelty is an appropriate consideration under 101. Presumably, this argument results from the language in 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and 102 covers in detail the conditions relating to novelty. 13 [450 U.S. 175, 190] The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.” In re Bergy, 596 F.2d 952, 961 (CCPA 1979) (emphasis deleted). See also Nickola v. Peterson, 580 F.2d 898 (CA6 1978). The legislative history of the 1952 Patent Act is in accord with this reasoning. The Senate Report stated:
“Section 101 sets forth the subject matter that can be patented, `subject to the conditions and requirements of this title.’ The conditions under which a patent may be obtained follow, and Section 102 covers the conditions relating to novelty.” S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952) (emphasis supplied).
It is later stated in the same Report:
“Section 102, in general, may be said to describe the statutory novelty required for patentability, and includes, [450 U.S. 175, 191] in effect, an amplification and definition of `new’ in section 101.” Id., at 6. ”
The second determination comes from Benson (we can leave out the Flook part for this case imo, but you’re welcome to include it if you want).
link to digital-law-online.info
The Court stated in MacKay Co. v. Radio Corp., 306 U.S. 86, 94, 40 USPQ 199, 202 ,that “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” That statement followed the long-standing rule that “An idea of itself is not patentable.” Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507 . “A principle, in the abstract, is a fundamental truth; an original cause; a motive; and these cannot be patented, as no one can claim in either of them an exclusive right.” LeRoy v. Tatham,14 How. 156, 175 .Phenomena of nature, though just discovered, mental processes, abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, 76 USPQ 280, 281 ,”He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” We dealt there with a “product” claim, while the <409 U.S. 68> present case deals only with a “process” claim. But we think the same principle applies.
“It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula […] were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer ([6 note: this application is what is claimed]), which <409 U.S. 72> means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”
Pay attention to that last sentence AI, and Ned.
Here is Flook just for your convienence:
link to supreme.justia.com
Notice in flook, they were simply “dissecting” the claim, in order to be sure of what the “formula” or “algorithm” was.
“The plain language of § 101 does not answer the question. It is true, as respondent argues, that his method is a “process” in the ordinary sense of the word. [Footnote 9] But that was also true of the algorithm ([6 note: or “formula” in this Flook case”]), which described a method for converting binary-coded decimal numerals into pure binary numerals,
Page 437 U. S. 589
that was involved in Gottschalk v. Benson. The holding that the discovery of that method could not be patented as a “process” forecloses a purely literal reading of § 101. [Footnote 10] Reasoning that an algorithm, or mathematical formula, is like a law of nature, Benson applied the established rule that a law of nature cannot be the subject of a patent. Quoting from earlier cases, we said:
“‘A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.’ @ 55 U. S. 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.””
Then they repeat to you what happened in Benson and why it happened:
” In Benson, we concluded that the process application in fact sought to patent an idea, noting that
“[t]he mathematical formula involved here [6: in Benson] has no substantial practical application except in connection with a digital computer, which means that, if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and, in practical effect, would be a patent on the algorithm itself.”
Then they go on to say that Flook does not fail the “Benson test” in the same manner as Benson did:
“Respondent correctly points out that this language does not apply to his claims. He does not seek to “wholly preempt the mathematical formula,” since there are uses of his
formula outside the petrochemical and oil refining industries that remain in the public domain.”
Then they say, but the reason that is argued, “post-solution” (6: that is, after the formula is worked) is not sufficient to save the claim from the analysis in Benson.
“And he argues that the presence of specific “post-solution” activity — the adjustment of the alarm limit to the figure computed according to the formula — distinguishes this case from Benson and makes his process patentable. We cannot agree.”
Why? Because that’s merely drafting tomtrickery. That is, someone tried to pull something that noise accuses me of trying to pull, but they didn’t do a very good job.
“The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques. [Footnote 11] The concept of patentable subject matter under § 101 is not “like a nose of wax, which may be turned and twisted in any direction. . . .” White v. Dunbar”
However they want to make it clear that claims which merely involve a formula etc are not invalid just because of the presence of the formula:
“Yet it is equally clear that a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm. See Eibel Process Co. v. Minnesota Ontario Paper Co., 261 U. S. 45; Tilghman v. Proctor, supra. [Footnote 12]”
Flook then explicitly rejects “dissecting” the claim in relation to novelty, i.e. being “new” or “old”:
“the process itself, not merely the mathematical algorithm, must be new and useful. Indeed, the novelty of the mathematical algorithm is not a determining factor at all.”
Then the flook court explicitly tells Ned that he is wrong:
“This argument is based on two fundamental misconceptions.
Page 437 U. S. 593
First, respondent incorrectly assumes that, if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case.”
Especially of note is that they tell Ned that, among other things, it is the context of Benson which makes what he believes be wrong.
Why is it wrong?
“It would make the determination of patentable subject matter depend simply on the draftsman’s art, and would ill serve the principles underlying the prohibition against patents for “ideas” or phenomena of nature. ”
Then they throw someting out for AI:
“The rule that the discovery of a law of nature cannot be patented rests NOT on the notion that natural phenomena are not processes, but rather on the more fundamental understanding that they are not the kind of “discoveries” that the statute was enacted to protect. [Footnote 15]”
Which is a very important line for AI to learn and hold close to his breast until his dying day.
Then Flook goes on to talk to Ned about dissection again:
“Second, respondent assumes that the fatal objection to his application is the fact that one of its components — the mathematical
formula — consists of unpatentable subject matter.”
And explicitly tells him that this is not what is going on, even though Ned cannot bring himself to understand why or how:
“Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole. Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component,”
BUT
“because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.”
Keeping in mind that the claim says:
“”1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of”
“Bo + K”
“wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises: “(1) Determining the present value of said process variable, said present value being defined as PVL;”
“(2) Determining a new alarm base B1, using the following equation:”
“B1=Bo(1.0-F) + PVL(F)”
“where F is a predetermined number greater than zero and less than 1.0;”
“(3) Determining an updated alarm limit which is defined as B1 + K; and thereafter”
“(4) Adjusting said alarm limit to said updated alarm limit value.”
”
Or basically:
“1. A method comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of
“Bo + K”
wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises:
(1) Determining the present value of said process variable, said present value being defined as PVL;”
(2) Determining a new alarm base B1, using the following equation:
B1=Bo(1.0-F) + PVL(F)
where F is a predetermined number greater than zero and less than 1.0;
(3) Determining an updated alarm limit which is defined as B1 + K; and thereafter
(4) Adjusting said alarm limit to said updated alarm limit value.”
Or even more basically reads:
“1. A method comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit (6: a number) has a current value of
“Bo + K”
wherein Bo is a variable and K is a variable which comprises:
an algorithm that has a determining step that involves another formula”
[note here that the drafting wasn’t very good insofar as they should have said “and K is a “variable” determined by a process/algorithm which comprises:” but the court just skips over their minor drafting mistakes.]
where you will notice that the “wherein’s” wreck havock with the whole thing such that the whole claim is nothing but an “insignificant post-solution activity” i.e. the “the catalytic chemical conversion of hydrocarbons” and a big ol’ shtfest of formulas.
Then the court simply tells the folks that there simply is no patentable invention in the body of the entire application (spec+claims etc, not “application” as if we’re talking about an “application of the formula”):
“Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.
Here it is absolutely clear that respondent’s application contains no claim of patentable invention.”
Then they explain why:
“Respondent’s application simply provides a new and presumably better method for calculating alarm limit values. If we assume that that method was also known, as we must under the reasoning in Morse, then respondent’s claim is, in effect, comparable to a claim that the formula 2�r can be usefully applied in determining the circumference of a wheel. [Footnote 18] As the Court of Customs and Patent Appeals has explained,
“if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”
In re Richman, 563 F.2d 1026, 1030 (1977).”
All very good and well.
Hans:
The simple fact is, Malcolm, 6 and yourself have never in this thread cited case law, the statute, or the constitution as a basis for over ruling Diehrs preemption analysis based on reading the claims as a whole. Which is what my original challenge was all about.
I am sorry but your Titanic reference did not appear to be from case law, the statute, or the constitution.
Now you ask about about eBay v. MercExchange. Are you claiming that this case expressly over ruled Diehr’s preemption analysis based on reading the claims as a whole? If so can you cite the section from eBay v. MercExchange that expressly say this? I would be intrigued to read it. Thank you.
Noise: “As for AI’s explanation, your habit of parsing responses and then ignoring what you don’t like leads me to believe that you really don’t want a response. ”
Its amazing that Malcolm repeatedly engages in this behavior even when he is called out for it by commenters on his side in debates as has happened in this thread. This and his infamous questions “loaded with false assumptions” in which he demands strict yes or no answers.
I agree he does not want an answer. He does not even want a debate. I personally suspect he just wants to advance his social agenda, even at the expense of truth and integrity.
MM wrote: “Let the record show that Troll Above Law was also unable or unwilling to explain what the helll AI meant by “it’s not patentable subject matter under 101 because it’s not a patent”.”
First of all I think is very low of you to attack Noise as troll and then demand an explanation for something Noise did not write.
Second, it’s disingenuous of you to parse my words in order to make them into something you want to say, then demand I explain and or answer for it. Pasted below is my full and complete response to you. Deal with the it in context if you can but don’t bother dissecting the parts and making my response into something I never said.
I won’t waste time playing your dishonest wordsmithing games. But before you do that, why don’t you take the challenge I posted up thread at Nov 04, 2009 at 09:45 PM. If you are capable that is.
__________________________________
AI: I have no theory of the statute. And the answer is no. It’s not a patent. It’s not an actual invention. And you are not an “Actual Inventor.” It’s just your own thought experiment with no real world basis whatsoever. Apparently this is your only means to try and invalidate process patents by typing up meaningless random thoughts and inferring that is all there is to process inventions, therefore lets ban them all. Seriously, who do you think you are fooling with this tactic?
Okay Malcolm let’s start with a clean slate.
Here is the original challenge I posted to 6 and extended to you. Let’s see if you will or 6 will answer.
____________
6 and now Malcolm:
If you can, how about demonstrating your IQ and legal analysis skills by invalidating the current Supreme Court test for patentable subject matter I have outlined below.
You must cite case law, statute, and/or the constitution as the basis for your arguments.
No “LOL” or third grade humor, or paper tiger bravado. Just show what you can do with your intellect and the law.
______
How the Preemption analysis is applied according to The Supreme Court of the United States.
STEP ONE: Read the claims as a whole.
Diehr says: “In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter.12
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STEP TWO: Ask, if the claims when considered as a whole preempt a scientific principle or phenomenon of nature?
Diehr says: “We recognize, of course, that when a claim recites a mathematical formula (or scientific principle or phenomenon of nature), an inquiry must be made into whether the claim is seeking patent protection for that formula in the abstract.”
CAUTION! Do not mistake this as a pass to dissect claims into unpatentable subject matter. Diehr also says: “Similarly, in Parker v. Flook,supra,we stated, “A process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.” 437 U.S.,at 590, 198 USPQ at 197 .”
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STEP THREE: Ask, if the claims when considered as a whole are an application of scientific or technological facts.
Diehr says: It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).
Originally Posted by: Actual Inventor | Oct 30, 2009 at 10:08 PM
FUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUUU CK
The site didn’t post my post even after several reposts.
6 said: “At present, Ned seems to think that if someone comes up with an algorithm they should be allowed to preempt EVERY use of it that could ever be concieved by skillfully drafting a claim that has embodied the algorithm but is the ONLY embodiment that is useful. The USSC disagreed and developed the preemption doctrine in Benson.”
Actually, the preemption doctrine rose in O’Reilly v. Morse.
As to mathematics, the USSC has indeed ruled long ago that disembodied mathematical equations are not be patentable. But they have also ruled that useful applications of them are. I think the Supremes were worried that mathematics often described natural phenomena, or that, unless tied to something useful, the claims would be on human thought.
In Benson, the claims were not to a disembodied mathematical algorithm or to a law of nature, but to a computer process that made the computer more efficient: a useful application. Whether the improved computer was used to do anything else was completely beside the point. A red herring.
The Benson court, however, employed the dissection analysis, also known as “point of novelty,” to dissect the Benson claims into old and new elements. In the Congressionally overruled Halliburton, this analysis had resulted in the Supremes declaring that the claim wholly preempted all ways of “tuning.” In Benson and in Flook, it resulted in the Supremes declaring that the claim preempted the algorithm. (Flook was particularly egregious because the Supremes essentially held that if the only thing new in the claim was a mathematical algorithm, it was unpatentable.)
A proper analysis of whether the claim was to a law of nature or to a disembodied mathematical algorithm would be to determine whether the claim was actually directed to a law of nature, and if not, whether the claim was directed primarily to human thought, such as when a person uses pen and paper, a slide rule or a calculator, a spreadsheet or a main frame computer if you like, to work out the problem, but where human thinking predominates.
If, on the other hand, the algorithm is performed on a machine (and it is not a law of nature) with the only human input being data gathering, then I would suggest that the claim is to a more efficient machine or process even if the machine or process is otherwise old.
I think this is, in reality, the holding of Diehr. But, since Diehr did not flatly overrule Benson, we have massive confusion.
Troll: “typing up meaningless random thoughts and inferring that is all there is to process inventions”
There was nothing meaningless or random about my hypothetical claim, and your inference exists only in your imagination.
My hypothetical claim was intended to provide some insight into whether AI’s understanding of Diehr (and patent law in general) is as absurdly simplistic as it appeared from AI’s previous comments. I think I’ve got my answer, frankly, but I’m always willing to offer a bit of rope. Those deep in the hole may wish to climb out into the light, or they can hang themselves. Free country.
6: “there is a “special something”, which he cannot enunciate”
I agree. Special “sauce”, maybe?
Look MM, I know it can be hard to put together from the nonsense AI writes and Noises “on the surface” explanation. What AI means is simple. He starts with the assumption that anything that is not a patent (or perhaps an app) is not patentable subject matter. Then he simply looks to that rule, inter alia, to see if something is patentable subject matter.
I know it is nonsensical, but this is AI. It is like NAL says, it is simply an attempt by AI to say “I don’t think your hypothetical claim is a legitimate example of the kinds of things actually being claimed”. That is to say, he believes that you are simply making things up as a hypothetical and that this is not a legitimate way to address the issue at hand. The reason that he believes that this is not legitimate is because there is a “special something”, which he cannot enunciate, in the method claims which he sees actually patented (or applied for presumably) which put them in a class above, or at least different from, your made up example.
Of course, he is wrong on all accounts, but this doesn’t phase him.
Let the record show that Troll Above Law was also unable or unwilling to explain what the helll AI meant by “it’s not patentable subject matter under 101 because it’s not a patent”.
Nice tracks shoes, Troll! Keep running!
Malcolm, you have cornered the market on “hypocritical douchebag”. Honestly and with all due integrity. That title foolly [sic] belongs to you.
In relation to AI, what exactly have I accused others of, that was not in fact true? Let me give you the benefit of the doubt: if I missed any answer to AI’s challenge, please post the time stamp of the answer. Otherwise, your post is merely a gratuitous troll-like, ad homonym post, just like the majority of the crap you put on the boards here at the Trainwreck.
As for AI’s explanation, your habit of parsing responses and then ignoring what you don’t like leads me to believe that you really don’t want a response. You merely want to type away. AI exposes a tactic of yours (typing up meaningless random thoughts and inferring that is all there is to process inventions) for what it is and you label him douche bag and incomprehensible. Mighty nice of you to bandy about pejorative terms when you lack a real legal position. From behind your shield of persistent ignorance, everything you don’t like looks “incomprehensible”. This is a “Malcolm” Problem. I cannot make you put that shield down.
Ned: “The Benson claims did not cover all ways of converting BCD to binary. One could hard wire it. Or one could have a table. One could use other algorithms.”
One could do it on a plane.
AI: “If you “perform a test” you are not merely thinking. At least be honest enough to admit this.”
Sure, AI. I admit it. But you’ve just responded with yet another of your famous non-sequiturs. I said: “Claims such Mayo’s allow the patentee to sue people for thinking or epxressing “new” thoughts/opinions/conclusions about old results”. You said, “Oh really” and then I provided an example of how thinking about old results could be considered infringing. Or do you want to argue that the results are “new” because a test was repeated? Go ahead. Make the argument. I have many more scenarios to present that demonstrate why these claims should be found non-statutory.
Here’s another example of your non-sequiturs:
——————
MM: Do you believe that this means that inserting a single step of patentable subject matter into a claim necessarily renders the claim patentable under 101, regardless of what’s in the other steps in the claim, what the preamble says, or how the invention and prior art is described in the specification?
AI: Malcolm, you do not “insert steps” into a process.
————————
Do you see what you did, AI? I asked a question and you responded with a non-sequitur. Instead of your non-sequitur, how about you just answer the question, AI? Take off your track shoes, as the troll would say, and answer the freaking question.
Here’s a another non-sequitur:
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MM: Please show me an example of a process claim that, in your view, is not patentable under 101.
AI: Any claim of a scientific principle or phenomenon of nature in the abstract is not patentable under 101.
________________________
I asked for an example of a process claim that would not be patentable under 101. You refused to provide one and responded with non-sequitur.
You have issues, AI. Work on them.
“Actually that is a very good question. If we have a rule against patenting algorithms, math, natural laws etc, then what sense does it make to allow someone to have a monopoly over every end to which the algorithm etc. by simply drafting a claim that includes the only useful embodiment of the algorithm etc? That essentially allows an end run around the rule of no patenting of algorithms and math. I’m rather glad they decided Benson thus. ”
Should be:
Actually that is a very good question. If we have a rule against patenting algorithms, math, natural laws etc, then what sense does it make to allow someone to have a monopoly over every end to which the algorithm etc. can be put by simply drafting a claim that includes the only useful embodiment of the algorithm etc? That essentially allows an end run around the rule of no patenting of algorithms and math. I’m rather glad they decided Benson thus.
AI: “1. A method for optimizing a selection of movies, comprising:
(1) breathing, wherein said breathing delivers oxygen to the brain to facilitate neuronal firing; and
(2) determining a most preferred movie, wherein said determining involves ranking the anticipated enjoyment from watching a plurality of movies to the anticipated enjoyment from watching RINGMASTER.”
AI stated that this claim was not patentable subject matter under 101. His bogus and incomprehensible “explanation” for his conclusion was that the claim isn’t patentable subject matter because “it’s not a patent.”
AI is a hypocritical douchebag and so is Troll Above Law for accusing others of doing what AI does best. But perhaps Troll Above Law can tell us what AI meant by his “explanation”?
” To what end use was the algorithm put? Huh? What a completely ridiculous question.”
Actually that is a very good question. If we have a rule against patenting algorithms, math, natural laws etc, then what sense does it make to allow someone to have a monopoly over every end to which the algorithm etc. by simply drafting a claim that includes the only useful embodiment of the algorithm etc? That essentially allows an end run around the rule of no patenting of algorithms and math. I’m rather glad they decided Benson thus.
“what is being “wholly” preempted in patenting the specific method?”
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position,
(3) masking out said binary ‘1’ in said second position,
(4) adding a binary ‘1’ to the first position of,
(5) shifting the signals to the left by two positions
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position.
^That “algorithm” or “formula”.
Notice that what I wrote above is not the body of the claim. Not quite.
The court was concerned that by granting this patent, they effectively gave a patent on the algorithm itself since the patent covered literally every use to which the algorithm could be put.
“The Benson claims did not cover all ways of converting BCD to binary.”
They were not concerned about anyone covering all ways of converting BCD to binary. They did not give one sht about that. They did on the other hand concern themselves about the algorithm at issue.
That is, their concern was that the Benson claims covered all ways of implementing the algorithm that they came up with.
“Why does IBM have to use AT&T’s algorithm to compete and not its own? ”
That question is completely irrelevant to the question in this case. My answer though would be that nobody said that they did have to use ATT’s algorithm so far as I know.
“Is it too much to ask the proponents that want to revert back to Flook to do the same?”
Nobody wants to “revert” to Flook. You don’t understand one iota of what you are talking about. Not one little bit. Never the less, I might address your more limited question later tonight sometime.
Ned, if you didn’t just have a breakthrough, then go back and read what I instructed everyone to re-read. Simply read it ad infinitum. You should pick it up eventually. I’m being serious.
Once you understand everything above you can read this paragraph.
At present, Ned seems to think that if someone comes up with an algorithm they should be allowed to preempt EVERY use of it that could ever be concieved by skillfully drafting a claim that has embodied the algorithm but is the ONLY embodiment that is useful. The USSC disagreed and developed the preemption doctrine in Benson.
Actual Inventor:
It’s pretty clear that you won’t be convinced no matter what anyone says, so why do you keep asking? By the way, what did you think about eBay v. MercExchange? You are aware that there was no literal support in the Constitution, case law, or statutes for the holding in that case, and yet that didn’t stop the Supreme Court. And that was a unanimous decision. Personally I would have preferred Congress to enact a working requirement like many other countries, but I had no problem with the decision. But in the case of Prometheus v. Mayo, there is support for holding that the claim is unpatentable. It exists in Flook and Benson. More importantly, however, it’s just common sense. I don’t know what’s going to happen in this case, but neither do you. I have an opinion about what should happen, and apparently so do you. So please spare us your diatribes about how those of us that think the claims at issue are unpatentable are somehow incapable of backing up our positions with law. We have done so, it’s just that you disagree with our position. Give it up, man.
Not too much to ask AI, just more than what those proponents actually have.
That’s why they belong to the Skirt and Track Shoe Club.
NED HELLER: “That snake still lives in any preemption analysis that relies on dissection. ”
I would like to see the snake proponents in this argument present a sound and robust case as to why Diehr ‘ s ruling that the respondents claims must be taken as whole, can be ignored and dissection allowed to continue under 101.
I have repeatedly asked that the analysis be based on case law, the constitution, or the statute.
So far as I have seen metaphors for the titanic, red herrings of every sort, including evil McDonald’s Stoopit, Crap patent, LSAT reading instructions, and way too much self revealing LOLs. But no argument based on the law.
When Diehrs preemption analysis based on reading the claims as a whole expressly overruled Flook’s preemption analysis based on dissecting the claims into parts, the justices cited case law to back up their reasoning.
Is it too much to ask the proponents that want to revert back to Flook to do the same?
good posts Ned
6, if there are myriad ways of converting BCD to binary in a computer, what is being “wholly” preempted in patenting the specific method? Why does IBM have to use AT&T’s algorithm to compete and not its own?
(BCD was used on “IBM Cards.” They were, for a very long time, the primary way programs and data were entered into mainframe computers.)
broje said: “So if you can just point to the body of the claim and say, “that’s the idea,” then no patent for you. What was the idea in Benson, according to the Court? Do you agree? If not, what was the idea, and what was the application of that idea?”
Yes, I agree. The whole opening paragraph of the Benson opinion was a red herring. As Plato so aptly demonstrated long ago, if you start with a wrong premise you will always end with an absurd result even if every step along the way is entirely logical.
The Benson claims did not cover all ways of converting BCD to binary. One could hard wire it. Or one could have a table. One could use other algorithms. I don’t suppose that AT&T invented BCD. It was probably invented by IBM with their punch cards. One will note that IBM was on the other side in Benson, opposing AT&T’s patent. But long prior to this patent there were other ways of converting BCD to binary.
So the opening paragraph of Benson framed the issued with a red herring. To what end use was the algorithm put? Huh? What a completely ridiculous question.
Now we find in the main argument of this petition another red herring: the claim covers all ways of administering the drug because it specifies no ways of administering the drug. But how the drug is administered is totally irrelevant. It makes no difference how, as that has nothing to do with the invention which is measuring the metabolites and adjusting the dosage accordingly.
The Supreme Court, at least since Halliburton, seemed obsessed with “point of novelty” analysis. This explains the opinion in Halliburton that had the patent bar prostrate with fear and dread — so much so that they persuaded Congress to overrule it. But it was used again in Benson and Flook, but seemingly discarded in Diehr after heavy criticism by Judge Rich, who seem to have the respect of even the Supreme Court.
But where are we today? That snake still lives in any preemption analysis that relies on dissection. At least one brief in Bilski did yeoman’s work on the topic. Judge Newman also did a fine job in dissent in the same case.
All that said, the claims in this case still may still be deficient because they do not actually require adjusting the dosage to treat GI. An essential step in the invention may be missing. The necessity of this step is illustrated by the researcher using the same drug and test, but to determine its efficacy in treating skin diseases, not to treat GI. That the researcher was accused of “infringing” simply by reviewing the test results illustrates that the omitted step is really required.
I can see that Hans hasn’t answered AI’s challenge.
First few secs for you Big:
link to youtube.com
Actual Inventor:
If you were on the Titanic, and you knew it was sinking, would you survive if you did nothing with that information? That’s what the claimed process in this case accomplishes — mere information. Nobody in the history of humankind has accomplished anything simply by knowing something. Do you see why this claim is unpatentable? It seems that you are so focused on the holding in Diehr that you cannot see the bigger picture.
“You are not worried so much about the ends that are being preempted, you are only concerned with them insofar as you are worried about, and going to make a determination based upon the ends about, the MEANS to the end. That is, you are worried about having every single end that the MEANS could ever be used for being preempted.”
Truly remarkable. You’re obviously ready for the LSAT writing section.
MM: Please show me an example of a process claim that, in your view, is not patentable under 101.
AI: Any claim of a scientific principle or phenomenon of nature in the abstract is not patentable under 101.
MM: Do you believe that this means that inserting a single step of patentable subject matter into a claim necessarily renders the claim patentable under 101, regardless of what’s in the other steps in the claim, what the preamble says, or how the invention and prior art is described in the specification?
AI: Malcolm, you do not “insert steps” into a process. Although such a belief would explain your penchant for writing sentence fragments and abstract thought experiments and proclaiming that you have just invented a process invention. There are processes that are merely thoughts and there are applications of processes. The applications are patentable 101 subject matter. The thoughts by themselves are not, and thats the law.
AI: “I have no theory of the statute. And the answer is no. It’s not a patent.”
MM: “I asked you whether you thought the claim was patentable under 101 and I asked you to explain why. You did not answer my question but you responded with a non-sequitur. That’s the second time in this same thread! Wtf. ”
Read it again. I specifically said, “And the answer is no.” I then went on to explain why, beginning with, “It’s not a patent.” If you scroll up you can my entire list of reasons.
Do you need glasses? Seriously.
“MM: “As a practical matter, this is untrue. Claims such as Mayo’s allow the patentee to sue people for thinking or epxressing “new” thoughts/opinions/conclusions about old results.”
“Yes, really. I could test for metabolite levels on day -1. I look at the results. No infringement. Patent issues. I read it. I ask the lab to re-run the same test. I look at the results, which were the same as the previous results. Now I infringe.
If you “perform a test” you are not merely thinking. At least be honest enough to admit this.
“Have anyone been sued for reading, thinking and expressing thoughts about the Prometheus claim?”
Oy. Worst. Argument. Ever.
Why? Because its honest and straight forward. If prometheus is a patent only on thinking, its not statutory. But you have failed to prove that.
MM: “No, that’s what YOU called lieing, AI.”
Oh great, now you want to debate the meaning of the word lie. What are you Bill Clinton’s love child? Sheeesh!
“If the question had been asked in this fashion, I believe the answer would have been different.
”
That is because you still do not understand the preemption doctrine, or why it is applied.
This is very simple guys. Especially in the Benson case. IF the applicants came up with a mathematical formula etc. then you ask yourself, what are all the things that this formula could ever be used to do? In Benson’s case, the only thing that it could ever really be useful for, or so sayeth the court, was to implement the BCD conversion in a shift register.
That inquiry is fundamentally different than the backwards inquiry of asking “are there any other ways to perform BCD conversion?”
With preemption you’re not simply worried about the ends that are being preempted, you’re worried entirely about the MEANS (the mathematical formula etc) to the end having every single end that it could ever be useful for being preempted.
I want to stress this part just written because this is the meat of the matter. Read it again and again until it sinks in.
Now read it again.
And once more.
One more time.
Read it again.
Here let me type it again.
You are not worried so much about the ends that are being preempted, you are only concerned with them insofar as you are worried about, and going to make a determination based upon the ends about, the MEANS to the end. That is, you are worried about having every single end that the MEANS could ever be used for being preempted.
Did you get that?
Read it again.
And again.
One more time.
10+ times now.
Let’s do it once more.
Repeat it to yourself, read it aloud, type it out in your own words.
When you are comfy that you understand it then go ahead and continue.
“What was the idea in Benson, according to the Court”
We can probably never really know if the court really had a firm grasp on, and knew what the idea was in Benson, but we must assume that the lawyers gave them a pretty good briefing and that the court was smart enough to understand it. Especially since the decision reflects this, it is reasonable to assume that.
The idea was their specific method of converting BCD into binary. It was:
(2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position,
(3) masking out said binary ‘1’ in said second position,
(4) adding a binary ‘1’ to the first position of,
(5) shifting the signals to the left by two positions
(6) adding a ‘1’ to said first position, and
(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position.
Which is a mathematical operation, or “algorithm” whatever you want to call it.
“and what was the application of that idea”
The application of the “idea” (algorithm) was to implement it in a shift register (there were some other claims as well). This just so happened to preempt every possible use for the algorithm that anyone could think of. That included, as the court noted: the operation of a train to verification of drivers’ licenses to researching the law books for precedents and [etc].
“So if you can just point to the body of the claim and say, “that’s the idea,” then no patent for you. ”
You can’t do that except where the patent will preempt every possible use of the algorithm or mathematical formula etc.
“Oh really? What are there, like over 100 comments from real people READING and EXPRESSING their thoughts and opinion on the Prometheus claims?”
I think he said “old results” not “the prometheus claims”. “old results” as in “results from the old prior art method”.
You can at least address what the man says if you’re going to respond to him AI.
AI: *****Once an idea is applied it is manifested in a behavior, an act, or series of acts. Process patents and their claims are preemption of actions. And preemption of Acts will never infringe on anyones thought process. *******
broje: Reconcile that view with claim 8 in Benson, which SCOTUS determined was unpatentbale due to preemption of every application of the idea.
broje, my point is as stated above, “preemption of Acts will never infringe on anyones thought process. How does the ruling in Benson prove that conclusion wrong?
Just from reading what you wrote above it appears the ruling is based on an application, and not a thought process.