By Jason Rantanen
There are three articulated exceptions to the scope of patentable subject matter under 35 U.S.C. § 101: laws of nature, physical phenomena, and abstract ideas. Research Corp. v. Microsoft places a high hurdle in front of challengers who seek to invalidate process patents on the third ground.
Research Corp. Technologies v. Microsoft Corp. (Fed. Cir. 2010)
Panel: Rader (author), Newman, and Plager
Research Corporation ("RCT") owns several patents relating to digital image halftoning, which is the process of generating electronic display and print images using only a small number of pixel colors (ex.: red, blue and green in the case of color displays) while appearing to present many more colors and shades than were actually used. Four related patents are relevant to this summary: Nos. 5,111,310, 5,341,228, 5,477,305, and 5,726,772. The applications for the '310 and '228 patents (a continuation-in-part of the '310 patent) were filed before December 4, 1991; the remaining patents are continuations of the '228 patent and claim priority to the earlier filing dates.
RCT brought an infringement action against Microsoft based on these patents; in response, Microsoft asserted, and the district court initially concluded, that the patents were unenforceable due to inequitable conduct, invalid and not infringed. The Federal Circuit reversed that determination in 2008. Microsoft subsequently sought summary judgment against the '310 and '228 patents on Section 101 patentable subject matter grounds, and asserted that the claims of the '772 patent were not entitled to the earlier priority date, thus rendering them anticipated. The district court granted Microsoft's motions, and subsequently held that the only remaining claim, claim 29 of the '305 patent, also lacked entitlement to the earlier priority date. Based on these ruling, the parties stipulated to a dismissal of the suit and RCT appealed.
Section 101 and Process Claims
In reversing the district court's ruling that the '310 and '228 patents failed to satisfy Section 101, the Federal Circuit identified a set of considerations that can be applied when assessing the question of abstractness. Drawing upon the Supreme Court's precedent in this area, including its recent decision In re Bilski, the opinion first reiterates that there are only three articulated exceptions to subject matter eligibility: "laws of nature, physical phenomena, and abstract ideas."
Focusing on the category of abstract ideas, the court noted the Supreme Court's admonition in Bilski not to provide a rigid formula or definition for abstractness. Rather, "the Supreme Court invited this court to develop 'other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.'" Slip Op. at 14. With that guidance, the panel concluded that it perceived nothing abstract in the subject matter of the processes claimed in the '310 and '228 patents. Specifically, the court observed that:
- "The invention presents functional and palpable applications in the field of computer technology";
- Some claims in the patents require physical components;
- "[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act"; and
- The incorporation of algorithms and formulas does not prevent patent eligibility.
Nevertheless, while finding these factors met in the instant case, the panel further noted that its analysis was limited to the context of Section 101, which provides only a coarse filter. Abstractness challenges can also be brought against specific claims under Section 112 even if the requirements of Section 101 are met.
Comment: The court's discussion of Section 101 suggests that the issue of patentable subject matter should be analyzed with respect to the patent as a whole; in contrast, Section 112 challenges are analyzed on a per-claim basis.
Burden of Proof for Establishing Priority
In addressing the district court's ruling that the asserted claims of the '772 and '305 patents were not entitled to claim priority to the '310 and '228 filing dates, the opinion reinforced the court's prior ruling that the patent holder bears the burden of establishing priority. As the court held, although a patent challenger has the burden of going forward with invalidating prior art, once it has done so the burden shifts to the patent holder. Thus, in an instance where the patent holder attempts to defeat the assertion of invalidity by claiming priority to an earlier application, the patent holder bears the burden of proving the entitlement to priority – including that the claims of the earlier patent are supported by the written description of the earlier specification.
Note: The '772 and '305 patents shared the same specification as the earlier '305 and '228 patents. If the relevant claims had been contained in the '305 or '228 patents, Microsoft would have had the burden of proving lack of written description, as opposed to the burden resting with RCT. Thus, the fact that the claims were part of a continuation was highly significant with respect to the allocation of the burden.
Comment: A related issue is who bears the burden of proof in the context of claims to a pre-filing conception or reduction to practice date. Although not mandated by the text of the opinion, which specifically refers to the burden to establish "an earlier filing date," the court's analysis could be read to support the conclusion that the patent holder bears the burden of proof in this situation as well.
After dispensing with RCT's challenge to the district court's allocation of burden, the panel proceeded to address the priority claims on the merits. With respect to the '772 claims, the panel agreed with the district court, concluding that they were unsupported by the prior disclosure. The panel did reverse on the '305 claim, however, ruling that to satisfy the written description requirement for apparatus claims, the patent need not disclose every method of making the apparatus.
Lulz AI. So clueless.
Posted by: 6 | Dec 13, 2010 at 04:28 PM
________
Okay 6, let me see if I understand this.
When an applicant demonstrates that when the claims are read in light of the specification the process is an application of real word technology to a specific industrial process, and cites case law and quotes the exact words of the Supreme Court and the CAFC as a legal basis for the process being statutory under 101, your response is simply …..
“Lulz AI. So clueless”?
When an applicant demonstrates that when the claims are read in light of the specification the process is tied to a particular machine, even though something you can drop on your foot is not specifically stated in the claims, and cites the Supreme Courts 150 year old, time honored, legal definition of a machine as a legal basis, and the Mechanical Engineers scientific and technological definition as further scientific and technological proof, your response is simply ….
“Lulz AI. So clueless”?
Is the above “Lulz So clueless”strategy going to be the basis for you enforcing/resurrecting the MOT test as the sole test for 101 when it’s exclusivity has been struck down by the SCOTUS and not even the CAFC that created it is pushing it anymore?
And when all of this is respectfully and factually pointed out by the applicant to your SPE, is his/her reaction also going to be
“Lulz So clueless”?
Seriously, I would like to know.
6: “Seriously, we’re looking to promote the progress, not hamper it by assigning everyone to their own little thought realms, natural phenomena realms or their own little natural law realms.”
All inventions stem from thought, natural phenomena and natural law. And while I concur with the Courts that a persons speech representing their thoughts should not be restricted by patents, Its the new, novel and non obvious application of these thoughts, natural phenomena and natural law that promotes the progress and for which Actual Inventors deserve to earn their temporary monopolies.
I looked up definition of a machine in the Mechanical Engineers Dictionary. Its is as follows:
1. (Engineering / Mechanical Engineering) an assembly of interconnected components arranged to transmit or modify force in order to perform useful work.
I then looked up the legal definition of a machine as recognized by the Supreme Court in patent cases, it is as follows:
2. ” a machine is a concrete thing, consisting of parts or of certain devices and combinations of devices,BURR V. DURYEE, 68 U. S. 531 (1863).
This effectively covers all process inventions and so called business methods and every software program ever designed and manufactured.
In fact I would challenge anyone to post one process invention that did not meet the above definitions from science, technology and the Supreme Court.
I knows ya want me to capture fairies, cause ya want me ta capture you 6, but I don’t swing that way.
Geesh, no wonder what old-what’s-his-name has the recurring homosexual thoughts – must be that secret language of hand gestures and eye contacts invented by Thomas Edison.
Sort of, except I think technically you could capture a fairy and still have a statutory claim. So long as one of the embodiments is made clear to be, or to encompass ping.
>>The issue at hand is whether your functional >>recitation captures an abstract idea
Is that like capturing fairies?
“However, in patenting, function does not define a structure”
Cepts where it do.
Damm that little law.
And as for you “hitting tee balls”, these chuckles of you swinging and missing are priceless. Svcks to be you though, as this probably brings back up the futile images of you as a chubby kid trying to play ball and bein laughed at.
Jus so you know that I aint a heartless bsstard, Iza hold my laughter until ya go back to work.
“In information processing, the function defines a structure.”
And in Wonderland all thoughts are concrete! And cats vanish into thin air leaving only their smiles behind! Then that vanishes too!
However, in patenting, function does not define a structure, it defines a function. That’s why we call it a function instead of a structure. And no Posita can ever change that by magicking up his own thinking about his own art. Or, for that matter, having a lawlyer like yourself tell him what to think.
In any event, that is neither here nor there, you are caught up in the wrong battle in this particular thread. The issue at hand is whether your functional recitation captures an abstract idea (which it may or may not), not whether or not it is supposedly a structure to an ordinary artisan. This is why I say that Bilski is a decent decision, it may, and I emphasis may, leave us functional recitations for machines controlling rubber curing, and machining workpieces but it sure as he ck will rid of us functional recitations discussing everyday nonsense that consumer items perform which is really the worst of the smear on patent law. And that’s a step up from before Bilski where people could just claim away and pass 101 every time, although the law itself forbid it since BFD, if not since just B.
“One skilled in the art would have no problem listing the ways the function could be implemented. ”
One skilled in the art has no fin’ clue what structure it takes to implement those functions in the case of software. And they’ve admitted as much to my face, many times. Expert testimony is not hard to come by. In the case of some kinds of hardware you may very well be correct. Not only did I never say that enablement was relevant to our current topic, 101, but I also did not say that describing a machine by its function automatically hits you into a 101 wall.
“What if I’m picturing a Rube Goldberg machine that operates as a random number generator utilizing Schroedinger’s cat?”
Then you’re visualizing a non-abstract machine with many abstract processes going on/could be going on? I don’t see what is so hard here. When you go to claim the machine you could probably do so concretely, in terms of its structure, or you could try to capture the abstract ideas within the processes that are occuring or by claiming the machine functionally. If you take the former route then you have patent eligibility, if you take the later routes you probably do not. Why is that hard for you to understand or figure out on your own? And if it was easy, why did you bother me with it? I mean seriously, if you’re going to bother me, throw me a fast ball or a change up, don’t just put the ball on a tee just to watch me knock it out of the park.
Seriously guys, I have a count to finish up before the end of the quarter. I simply can’t spend all day hitting tee balls. If you’re going to say something, make it worth reading and/or answering.
An honest mind? We don’t need no stinken honest mind!
>>based upon function etc., rather than it’s new >>structure
In information processing, the function defines a structure. Saying something performs a function merely means that it can be implemented in a number of ways that is wasteful (and by statue) not supposed to be listed.
One skilled in the art would have no problem listing the ways the function could be implemented.
Rader would eat you alive. Your arguments are quite lame and would not stand up to an honest mind for a second.
There is a fundamental difference here however that you are choosing to ignore, probably willfully, rather than accidentally. One of them is simply something you (and possibly along with the rest of society) are completely making up, divorced from the world around you, like a legal relationship, some math, or a prediction. Whereas the other is merely you holding an image in your mind of something physical or done in the world around you.
Once you divorce the one from the other you are all set to evaluate whether any of the former category of things is caught up in your claim. And that is done regardless of whether or not the claim itself belongs to the later.
It seems like you are defining non-abstract to include a mentally constructed (not actual) observation of something that is or can be objectively observable. Meanwhile, you seem to define abstract along the lines of purely subjectively observable. Is that about right? What if I’m picturing a Rube Goldberg machine that operates as a random number generator utilizing Schroedinger’s cat?
“That is where you’re mistaken. All of what is grey to you is in fact abstract (black or whatever). The greyness is merely introduced as a strawman.”
You’d make a fine Fed. Cir. judge. You’re well qualified to make pronouncements without any analyis. You and Rader would get along just fine I would imagine.
You’d make a horrible advocate.
You make an even worse examiner.
Lulz
They are quite old you know, we can’t expect them to do all the work.
“We know “abstract” when we see it.”
That’s true, they will, but only if it is pointed out for them in some situations.
“6, if there is a machine sitting there determining whether a woman has a lump that needs a biopsy, is that abstract?”
Doesn’t matter, you mixed statutory classes, you therefore fail 101 as a matter of course. Drop your claim into a stat class and try again. Either recite the machine, or the method.
“A machine doing something people can do. And, let’s say that it is built all in hardware with special purpose chips.”
A machine is not abstract regardless of whether it is doing something people do or not. If it is all built in special hardware with special purpose chips then all the better, you might even distinguish over the prior art when time comes to apply it.
“Your argument is that, gee, I could take a general purpose computer and write software to do what you did, so what you did is abstract.”
I did not make that argument. However, you may make that argument if you like. That said, a manner of operating the machine, or method steps carried out thereby may very well be abstract. That is, if you get into distinguishing your machine based upon function etc., rather than it’s new structure (i.e. that special hardware you were talking about) you may very well end up catching an abstract idea in your claim.
“Rader and the SCOTUS refers to the information age because they get (at least 4 1/2) of them that information is being processed.”
So what? Nothing, oh wait, that’s what.
“Rader would not tolerate you for a second. In fact, I would love to see Rader rip you to shreds in one of his classes, which he would gladly do. ”
Lulz, with his astounding knowledge of Diehr? I like the guy, and he’s halfway knowledgable, but his tearing me to shreds is lolable.
“there’s a rather large grey area. ”
That is where you’re mistaken. All of what is grey to you is in fact abstract (black or whatever). The greyness is merely introduced as a strawman.
“Because this is a term of art that is not referring to the abstractness of thinking itself, but rather to the abstractness of the subject matter being thought about. That’s why ‘abstract idea’ is not simply repeating that ideas are abstract in and of themselves occuring.”
He is correct on this point. Thinking about a method of manufacturing a integrated circuit is not an “abstract idea.” Thinking about a method of facilitating forming friendships is probably an “abstract idea.”
Of course, that doesn’t really help us because whereas there are areas of black and white, i.e. some “ideas” are clearly not abstract and some “ideas” clearly are abstract (e.g. purely mathematical equations/formulas), there’s a rather large grey area.
Rader’s opinion in this case is no better than Kennedy’s in Bilski: We know “abstract” when we see it.
Anybody hoping for any court to provide a test or bright line rule for determining abstractness is going to be waiting for a very long time.
Move on.
“You have a huge mental barrier which you’ve errected to deny patents in certain fields.
Fixed.
Your “answer” crossed in the stream. Unfortunately, it still appeared here (unfortunately, as it is gobblygook). “but rather to the abstractness of the subject matter being thought about” Doncha mean: “rather to the abstractness of the nature of the subject matter being thought about“?
Iza see ya got lost in the layers of abstraction.
6,
Ya spinnin your wheels Sunshine.
In fact, you have moved one abstraction layer down in goin to the “nature of the subject” from “the subject.”
But Iza waitin for ya to actually answer the question – loads of chuckles forthcoming.
“the result that has been mandated by law…
It’s no “pet peeve”. It’s da lawl. Sorry you don’t like it.”
Letz see a cite for this lawl on the instructions for a computer.
6; “Oh, um, it’s right here, no wait, here, no, um, it was a here a minute ago, here, um no that’s Allapat, I don’t want to see that, um here, no….”
6, if there is a machine sitting there determining whether a woman has a lump that needs a biopsy, is that abstract?
A machine doing something people can do. And, let’s say that it is built all in hardware with special purpose chips.
Your argument is that, gee, I could take a general purpose computer and write software to do what you did, so what you did is abstract.
Rader and the SCOTUS refers to the information age because they get (at least 4 1/2) of them that information is being processed.
Rader would not tolerate you for a second. In fact, I would love to see Rader rip you to shreds in one of his classes, which he would gladly do.
“The idea itself is still an abstraction. It is that very nature that you are “choosing to ignore, probably willfully, rather than accidentally.””
No, it is that part of the nature of the idea that is irrelevant. This term of the art “abstract idea” is drawing a line amongst the nature of the subject of the idea, not that the idea itself is abstract.
That’s one way of explaining it in terms that you’d understand anyway. You have a huge mental barrier which you’ve errected to protect patents in certain fields. Let it go. And consider the subject with an open mind. Start from the beginning with a clean slate.
“So you still have not answered my question:
How is it that ANY “idea of” or thinking about anything…
is anything but abstract?””
Because this is a term of art that is not referring to the abstractness of thinking itself, but rather to the abstractness of the subject matter being thought about. That’s why “abstract idea” is not simply repeating that ideas are abstract in and of themselves occuring.
This is something which I try to impress upon people every time I discuss the issue. The use of the term “abstract idea” is one fraught with symantic twists and turns that are too easy to get caught up in. You must realize that there are two ways of using the term. One, your way, makes no sense and renders the whole analysis nonsense as you and NWPA etc. would have us believe. Since we’ve now had some very intelligent and powerful people tell us that it is not nonsense, consider for a moment that there might be a second interpretation, perhaps the one offered by myself above. One which, magically, makes all the precedent make perfect sense, and make a useful tool in applying 101.
Gee, I wonder which one could possibly be the correct interpretation?
“That does not matter. Not in an instant. You are merely pointing out the subject of the abstraction.”
No actually I’m not just pointing out the subject. I’m pointing out the nature of the subject. There is a difference. And once you grasp that you’ll have a better understanding of what is going on in your lawl.
“So, 6, you are a wonderful example of how judicial activism may be used to achieve whatever result is desired. Your little black list of subject areas that you deem abstract is cute. I am glad we have Rader and Newman to keep you and the other crazies at bay. G*d help us when Moore takes over or if Obama gets another one in the SCOTUS.”
Desired result has nothing to do with it. The result is what it is, and it has been that way for a long time. The only “desire” I have is to see the result that has been mandated by law for a long, long, long, long time come about. I admit, you tards have been taking your sweet time getting it done.
And my blacklist (and whitelist for that matter) was just some highlights from amongst a practically infinitely long list.
Don’t worry, Rader is on my side as well. All I have to do is hold his hand through the parts he has trouble understanding.
“I realize that this is a pet peeve of yours, but “instructions for a computer are every bit “done in the world around you.””
Sure money exists too, but those kinds of ideas have a fundamental abstract idea behind each of them that is preempt necessarily anytime you’re thinking of those things.
It’s no “pet peeve”. It’s da lawl. Sorry you don’t like it.
So that is what that smell is.
And here I thought 6 had been walking through the stables again.
Know … Knows>>6, … You need to understand the facts here.
Good luck with that. The boy revels in swirling abstracts churning through his brain.
6,
I realize that this is a pet peeve of yours, but “instructions for a computer are every bit “done in the world around you.”
They are an element of a computer system. It has been proven that they are interchangeable with hardware. Like it or not, they are deserving of patent protection like everything else on your first list.
You need to understand the facts here. You need to understand the law here.
So, 6, you are a wonderful example of how judicial activism may be used to achieve whatever result is desired. Your little black list of subject areas that you deem abstract is cute. I am glad we have Rader and Newman to keep you and the other crazies at bay. G*d help us when Moore takes over or if Obama gets another one in the SCOTUS.
“One of them is”
That does not matter. Not in an instant. You are merely pointing out the subject of the abstraction.
The idea itself is still an abstraction. It is that very nature that you are “choosing to ignore, probably willfully, rather than accidentally.”
So you still have not answered my question:
How is it that ANY “idea of” or thinking about anything…
is anything but abstract?
“That’s what ideas are – abstractions.
Anything you hold in you mind, in your imagination is an abstraction.”
There is a fundamental difference here however that you are choosing to ignore, probably willfully, rather than accidentally. One of them is simply something you (and possibly along with the rest of society) are completely making up, divorced from the world around you, like a legal relationship, some math, or a prediction. Whereas the other is merely you holding an image in your mind of something physical or done in the world around you.
Once you divorce the one from the other you are all set to evaluate whether any of the former category of things is caught up in your claim. And that is done regardless of whether or not the claim itself belongs to the later.
“Non-abstract:
the “idea of”/you thinking about…”
How is it that ANY “idea of” or thinking about anything…
is anything but abstract?
That’s what ideas are – abstractions.
Anything you hold in you mind, in your imagination is an abstraction.
lulz I wish.
“I swear to go d we’re going to end up having to take care of our son until the time he is 40 if we don’t get him off his lazy arse now.”
FIXED
lulz. Broje. Twisted is what the lawl is right now. That’s most certainly not any misunderstanding on my part. Read the cases again. From the beginning, after having read what I wrote. Try to lay off of your myopic focus on what you already think is there (especially anything having to do with “oldness” of subject matter) and simply read what the words on the page tell you.
Start at Benson line 1 and read through the last line of Bilski.
Every single thing that I’ve said will become very clear to you.
If you don’t want to put in the effort then that’s fine with me. It’s all a very complicated mess at this point.
Lawlschool is on the backburner for now, I’ve got nothing going on in my life but problems and ridiculousness. I swear to go d I’m going to end up having to take care of my parents by the time I’m 40 if I don’t get them off their lazy arses now.
6, you have some twisted misunderstandings there. Maybe law school will teach you how to read a line of cases, instead of jumping to these wild conclusions. How’s that going BTW?
“I’m really confused. First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.
But then you go on and basically restate and agree with everything I said. Will you please make up your mind?
Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.
Thanks in advance.”
I don’t see how you can be that confused. I’ve told you this several times now and I even put it into words that you should easily understand as they are almost your own, save with very large caveats.
“First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.”
Lets take this one thing at a time. I do think there are “abstract” and “non-abstract” ideas insofar as you want to use those terms. But preemption does apply if the claim covers the entire non-abstract idea IF it also covers the entire abstract idea AS WELL as covering the entire non-abstract idea. Preemption would not apply if the claim is ONLY covering the entire non-abstract idea and no abstract ideas are caught up in there with it.
As to your believing that I was stating that I substantially agree with you, well, not really. I included many very important caveats in the piece I wrote. If you read it and pay attention you might notice them.
“Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.”
Sure thing.
Non-abstract:
the “idea of”/you thinking about…
blowing glass
curing rubber
shaping metal/wood (or other materials)
chemically treating a workpiece
a pencil
a stack of paper
a filing cabinet
a computer
a bicycle
a car
a gas tank
a tv
a monitor
Abstract:
the “idea of”/you thinking about…
moving some numbers around in a certain way and/or changing them into other numbers (i.e. doing math)
hedging some risk
a plan for your daily activities unrelated to making or changing physical objects
a plan for writing instructions for a computer
written instructions for a computer
instructions for a computer
instructions for a human
monitoring something (especially where it can be done by eye)
comparing something like a number to another number(especially where it is just doing math or can be done in your head)
that a prediction can be made based upon certain criteria
changing a “relationship” such as a legal relationship (including indebtedness), romantic relationship, friendly relationship, relationship between two numbers, etc.
Oh and NWPA, what specifically do you want to know?
“That post-solution activity is insiginificant, in Steven’s view, if the process or device is entirely old, but significant if it has some new steps or hardware.”
Close, but no cigar broje. You got the part before this correct, and you’re also correct that IANAE has a slightly different view, and also that he is implicitly mistaken on this sub-point.
It is insignificant, in Stevens view, if it is insignificant. It is a situation of “you’ll know it when you see it” like obscenity is to certain justices iirc. One thing which must be true however, in order for it to be insignificant, is that it must be old. One thing, amongst some others, that would likely preclude it being called insignificant, would be that there is some new step or hardware. You might be tempted to ask, well 6, what other things would make one consider it not insignificant? Well, perhaps you have laid out in the spec or claims that it took some special way to implement the solution (or algorithm or whatever) to the computer environment rather than just plain ol’ everyday know how, where it wouldn’t work otherwise. In that event, your putting the solution (or algorithm or whatever) in the computer environment would likely be significant.
And just fyi, that is the current law today, it isn’t only what Stevens believed or what the law was pre-bilski or pre-diehr.
“And that is why Stevens went on and on about the recited equipment and process steps in Diehr being old.”
Nah, if you bother to read the decision it is quite clear he goes on about that because he is performing a claim construction in an old-school manner. Looking to the spec to see what, blatantly, the inventor is presenting as his contribution to the art. I just pointed that out to you above.
“The application of the alarm update lagorithm in Flook to a catalytic conversion process surely results in a new and improved catalytic conversion process as well. ”
You say that, but there is no evidence of that from the Flook disclosure. But you’re right that there is a good chance that this is the case “irl” and that Diehr is merely a triumph of claim form over invention substance. That is to say, Flook could have simply put in more disclosure about the intended implementation of his process and then added some traditional process steps to his claim and got himself a patent. However, Flook did not do that, for whatever reason, and thus we’re left merely conjecturing about what he could have done, and whether or not any such claim that he could have made would have been worth $$$ or not (perhaps Flook was really after potential infringers outside the chemical art, who knows?).
As you no doubt are becoming aware, according to Diehr you simply put more in the claim than you otherwise would have to in order to pass 101 and then you skate on by. Fact is, if the law cared about substance then it would mandate claim construction to be performed as Stevens did in his dissent insofar as the 101 inquiry is concerned (not for 102, 103 etc. though obviously), and you’d have to look to the spec to see what the actual improvement, contribution to the art, or “invention” was, regardless of what extraneous verbiage the inventor decided to add in the claims, and then you decide the 101 inquiry based upon that rather than upon the fully modern-construed claims.
Alas, substance never was much of a concern to the lawl post-1952 and only rarely do we see it triumph over form in modern times. In fact, you will note that this is generally historically true in many fields of lawl, not just patent law and does in fact come part and parcel with the decline of america’s greatness. The last five decades of relative bad judicial discretion at the end of the 20th century has really taken a toll on the country. And there are precious few signs of this trend turning around anytime soon.
“but that the limitation should be ignored as insignificant post-solution activity purely because it’s not new.”
Now broje, not “purely” because it wasn’t new. It was “purely” because it was insignificant in so far as its impact on what was being preempt, the fact that it was old was ancilliary to this judgement. There is no “pretending” required to notice this. Did you manage to read all that he said instead of focusing myopically on the “old” part?
Look at this claim broje:
“”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: ”
Page 437 U. S. 597
“(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.””
Look at it. The only thing in the claim other than the formula is:
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
May as well call it the preamble. Clearly, “the catalytic chemical conversion of hydrocarbons” is nothing more than a draftsman playing a silly game. The draftsman there imported form, but he didn’t bring even a remote semblance of substance like they would later try in Diehr.
TINLA: So Flook would pull out the algorithm, then discount anything that’s old as insignificant post solution activity.
IANAE: Technically pre-solution activity, though they didn’t say as much. The only thing non-abstract about Flook is where you get the numbers for the calculation. You could easily infringe without doing anything petrochemical or catalytic at all, simply by running some software on numbers you got on the internet.
Diehr’s activity wasn’t post-solution, it was solution. The solution is an improved process for curing rubber. Maybe Diehr’s machine-or-transformation (which Flook also lacked) was post-novelty, but it wasn’t post-solution.
I don’t think you and I understand “post-solution activity” to mean the same thing. Stevens coined the phrase to refer to the situation in which the algorithm is the only new part, and it is the “solution” to the problem that the invention solves. Then, applying it to a process or device is simply post-solution activity. That post-solution activity is insiginificant, in Steven’s view, if the process or device is entirely old, but significant if it has some new steps or hardware.
In other words, post-solution precisely means post-novelty, as Stevens coined it.
And that is why Stevens went on and on about the recited equipment and process steps in Diehr being old. The application of the alarm update lagorithm in Flook to a catalytic conversion process surely results in a new and improved catalytic conversion process as well. The differnce is that the Diehr majority most likely would have found the Flook claim to be patentable had the parameter of the process been specified, and Stevens would not (unless it was a new parameter or a parameter to which an alarm had never before been applied.)
You can repeat all you like that Flook did not dissect out the algorithm from the claim, and then ignore all remaining elements that were old. It’s all there in black and white. And you can pretend that Flook’s claim had nothing left if the algorithm were removed if you want, but the Flook Court obviously didn’t think so. Stevens opined at length in writing the Flook opinion that the claim avoided preemption by being limited to the field of use (i.e., the petrochemical and oil-refining industries), but that the limitation should be ignored as insignificant post-solution activity purely because it’s not new.
6, I notice that you didn’t tell us what your qualifications are in science/engineering.
“I’m really confused. First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.
But then you go on and basically restate and agree with everything I said. Will you please make up your mind?
Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.
Thanks in advance.
”
Sorry broje, I missed you posting that. I’ll get back to you sometime tonight I’ve got some work that needs doing atm.
“6, you spout off about engineering. What degrees do you have?”
Better ones than you do 🙂 In all srsness though, I’m not just “spouting off” about engineering and you know it. I know very well what I’m talking about and you’re well aware of that, as are the rest of the attorneys who practice before me.
And btw, “abstract” rejections/invalidations will never go out of style 🙂
“Um, that’s kinda the point of the posts above, aint it?”
Nope, but you’re too retar ded to realize that ping. Sorry.
“Sorta like what the majority said flat out in Bilski ”
That BFD is all good law? Kind of like that?
If you’re trying to make a point pingerdoodle I suggest you do so rather than just blabber on about nothing of substance all day. I’m not going to bother reading your stuff otherwise. I’ve already cut off AI.
You can blather all you like to someone who cares. I can read clearly what the law said, what was clearly stated to be the law in Bilski, and was furthermore explicitly confirmed to be the law in this very instant decision (though it was probably horribly misapplied here). I have no need to listen to you guys calling the law nonsense, or blathering about one judge making a different claim construction and coming to a different decision than the majority did somehow changing what the law in fact is.
I took the time to help broje because I believe she actually tries to understand the law but simply fails because she’s partly incompetent. That is excusable as she does at least try to remedy the situation and is quite willing to try to understand the remedy. But I’m way past caring what tards like yourself think. You’re unconvincible not because you believe yourself to be right, or even because of your beliefs in general. You believe yourself to be right only because you’d have to admit you’ve been illegally fuc king people over, not to mention doing your job poorly, for a significant portion of your life. As well the small issue of you simply not being able to comprehend how to apply the law as it currently stands and your being terribly troubled by that. All of that is on you, not me, and I’m tired of listening to your rationalizations.
The same somewhat goes for NWPA, although his issue is likely more just him having a different world-view from most people. He’s incompetent, sure, but the thing that compounds that in this particular area is that he is incapable of taking an objective view of what is, in essence, “his baby”. He is entirely too attached to things such as computing etc. to be able to take a step back and say: “You know what, you’re right, what we’re doing is applying abstract ideas to computing and the claims we’d like to have violate fundamental patenting principles” Or to say: “You know, the SC is right that natural laws, phenomena of nature, and abstract ideas should not be patented in and of themselves as they are plainly not meant to be covered by 101” Or to say: “You know what, what we’re doing with computer science is terribly good stuff, and is very important, but the fact is patent law was never meant for this type of advances and was not and is not setup therefore even in the slightest. Perhaps we should seek a different way to help software authors.” It is, in his case, literally a case of what you could call “mama bird syndrome”. His baby is special therefore it deserves special treatment. Except that it is only special in the same way that every other “child” is, and it doesn’t deserve special treatment.
In any event, say something of substance or don’t expect a lot of replies.
Let me ask you this. If Flook’s claim came before the Supreme Court today, would it be statutory? I’m pretty sure it wouldn’t (but Actual Inventors would still “win”, somehow). If you have a better test for whether a case has been overruled, I’d love to hear it.
IANAE your logic has more holes than a vegas hotel. I have a question that is actually relevant.
If Bilski had drafted his application and claims so that his invention could not be practiced by mere thought or verbal communication would the Supreme Court have granted his patent? The answer based on the current case law is yes.
You can rationalize all you want with your revisionist history but it won’t change the fact that Actual Inventors win in 2010!
SCORE CARD
Diehr upheld and limits Flook and Benson!
MOT as sole 101 test struck down!
Concept and Application analysis test affirmed by SCOTUS and now being used by CAFC!
Business Methods allowed!
Software still Patentable Subject Matter!
Actual Inventors and all their high priced smarter than INANE, 6, and MM Attorneys throw a capitalism party!!!
TINLA: And yet, this latest decision would seem to let some claims through 101 on the basis of the contents of the specification, and/or other claims.
And yet, that’s just as obviously wrong, and I’ve said as much in the threads about such decisions. Surely you agree with that, at least.
While we’re at it, let’s consider all the claims of a patent novel when there’s novelty recited somewhere in the spec, or in some of the other claims.
TINLA: So Flook would pull out the algorithm, then discount anything that’s old as insignificant post solution activity.
Technically pre-solution activity, though they didn’t say as much. The only thing non-abstract about Flook is where you get the numbers for the calculation. You could easily infringe without doing anything petrochemical or catalytic at all, simply by running some software on numbers you got on the internet.
Diehr’s activity wasn’t post-solution, it was solution. The solution is an improved process for curing rubber. Maybe Diehr’s machine-or-transformation (which Flook also lacked) was post-novelty, but it wasn’t post-solution.
TINLA: In other words, Stevens was looking for new, and therefore, significant post solution activity. His dissent in Diehr is the nail in the coffin of your argument.
If we’re going by Stevens dissents, have I got a story for you!
Let me ask you this. If Flook’s claim came before the Supreme Court today, would it be statutory? I’m pretty sure it wouldn’t (but Actual Inventors would still “win”, somehow). If you have a better test for whether a case has been overruled, I’d love to hear it.
New Light: It would do all of us better if we had less snark and more substance from you.
I apologize for my mildly hyperbolic snark, but I maintain it’s less objectionable than your breaking the bold tag to point it out.
“Try watching a National League game sometime.”
“Which is why IANAE said that if your average is .250, you better be a pitcher.”
Lulz
Two nitwits who don’t understand baseball.
One in four for a pitcher is phenomenal.
Uh, yes, but not great (although not horrible) for all the other positions. (Actually, there were 6 pitchers in 2010 with over 25 at-bats and aversges over .250, so “phenomenal” is perhaps a bit hyperbolic.) Which is why IANAE said that if your average is .250, you better be a pitcher. A great command of statistics, in your post, New, but perhaps a little deficient in logic?
6, you spout off about engineering. What degrees do you have?
6, you are just a dopey id$ot.
Sorry, boy, go and learn some engineering and learn that this abstract nonsense and this law of nature and mathematical what junk is ridiculous with no basis in science or engineering. I am sorry, boy, but that stuff is from centuries long since past.
OK, the kids have broken the internetz again.
6,
“That’s the only things that lead him to a different conclusion than what the majority entered.”
LOLz 6 – ya be displaying your reading comprehensionlol again.
“And to be sure, if you accept his claim construction then you’re no doubt well aware that Benson/Flook would take the claim out in a heartbeat.”
Um, that’s kinda the point of the posts above, aint it? Stevens was where in Diehr? Stevens in Diehr was the same Stevens in Benson/Flook. I knows logic aint your bag 6, but when the opinion-man goes from majority to dissent, ya probably gonna have that later decision controllin the earlier decisions. Sorta like what the majority said flat out in Bilski (which evidently still rocks the horsemen’s senses silly – some things are harder to re-write in hindsight than others, but no doubt my main man will continue the spin attempts – but dude, when Dim Light schools ya… ouch).
They teach that in law school, ya know. Oh wait,… ya don’t. Oh well, svcks to be you.
6: “You simply must remember that back in the ancient days there was a lot of looking to the entire app to figure out what the invention was, rather than limiting what you were looking for only to the claims. Claim construction was not so refined as it is today.”
_________
Wait…whatever happened to patentee, acting as his own lexicographer ? This is why claims must be read in light of the application.
“His dissent in Diehr is the nail in the coffin of your argument. ”
You wish broje dearest.
The only thing “wrong” about Steven’s dissent is that he falls prey to the “invention as a whole as disclosed in the entire application” way of construing claims trap just as the court likely now at the Fed. Circ. some decades later. He also makes too liberal of a claim construction.
That’s the only things that lead him to a different conclusion than what the majority entered.
Note that part of the first issue with his dissent is that he also would like to have not put up with the nonsense of letting the applicant define the “invention” but rather examining the application as a whole, rather than confining the inquiry to the claims only. Tbh, patent lawl probably should be this way, but that is not how to construe claims according to modern ways.
Note him making the same review “concept as a whole as disclosed in the entire application” to determine what the invention is, and the claims should be construed around, mistake:
In the first sentence of its opinion, the Court states the question presented as “whether a process for curing synthetic rubber . . . is patentable subject matter.” Ante, at 177. Of course, that question was effectively answered many years ago when Charles Goodyear obtained his patent on the vulcanization process. 25 The patent application filed by Diehr [450 U.S. 175, 206] and Lutton, however, teaches nothing about the chemistry of the synthetic rubber-curing process, nothing about the raw materials to be used in curing synthetic rubber, nothing about the equipment to be used in the process, and nothing about the significance or effect of any process variable such as temperature, curing time, particular compositions of material, or mold configurations. In short, Diehr and Lutton do not claim to have discovered anything new about the process for curing synthetic rubber.
And then observe his diverging claim construction:
As the Court reads the claims in the Diehr and Lutton patent application, the inventors’ discovery is a method of constantly measuring the actual temperature inside a rubber molding press. 26 As I read the claims, their discovery is an [450 U.S. 175, 207] improved method of calculating the time that the mold should remain closed during the curing process. 27 If the Court’s reading of the claims were correct, I would agree that they disclose patentable subject matter. On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.
And of course claim construction is nothing more than a matter of lawl, and here is a good example of why. Even the best of legal minds can misconstrue a claim. And then the Fed. Circ. does so again… decades later in the instant case. Although in their case at least it was likely simple technical incompetence.
But at the very least Stevens gives good reasons for his claim construction:
There are three reasons why I cannot accept the Court’s conclusion that Diehr and Lutton claim to have discovered a new method of constantly measuring the temperature inside a mold. First, there is not a word in the patent application that suggests that there is anything unusual about the temperature-reading devices used in this process – or indeed that any particular species of temperature-reading device should be used in it. 28 Second, since devices for constantly [450 U.S. 175, 208] measuring actual temperatures – on a back porch, for example – have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a “process of constantly measuring the actual temperature” had just been discovered. Finally, the Patent and Trademark Office Board of Appeals expressly found that “the only difference between the conventional methods of operating a molding press and that claimed in [the] application rests in those steps of the claims which relate to the calculation incident to the solution of the mathematical problem or formula used to control the mold heater and the automatic opening of the press.” 29 This finding was not disturbed by the Court of Customs and Patent Appeals and is clearly correct.
And to be sure, if you accept his claim construction then you’re no doubt well aware that Benson/Flook would take the claim out in a heartbeat.
As a conclusion, the USSC hardly bent over backwards in Diehr, they simply construed the claim. In my opinion, I will say they construed the claim properly. Although I see the reason why Stevens would construe the claim differently, we cannot ignore so much of the claim in making the construction.
In any event, Stevens dissent in no way is a nail in any coffin, from either Flook or from Bilski. That being especially apparent since Bislki goes out of its way to reaffirm Benson and Flook, just as Diehr does.
“In other words, Stevens was looking for new, and therefore, significant post solution activity.”
This is true, but he only didn’t find it because of an erroneous claim construction. As he mentions, the case would go differently based on different constructions. Specifically, had he adopted the majority’s construction, I have little doubt that he would have joined them.
You simply must remember that back in the ancient days there was a lot of looking to the entire app to figure out what the invention was, rather than limiting what you were looking for only to the claims. Claim construction was not so refined as it is today.
“In dissent, Judge Lane, joined by Judge Rich, argued that Benson should be read as a general proscription of the patenting of computer programs regardless of the form of the claims. 545 F.2d, at 151-152. ”
That’s interesting to know. It seems that Judge Rich may have, at one time, been on the side of good. Which is pretty crazy since he turns out to be the archnemisis of everything right, pure and just.
Bold Tag off
IANAE,
You sure spend a lot of time focusing on snark. But you would do all of us a big favor if you actually spent more of your time on your facts and on law instead.
Clearly, you do not understand the law as developed in the Benson-Flook-Diehr trilogy. Clearly you do not understand which justices had which opinions. If you did you would have seen the Stevens angle (Stevens was a Douglas protégée, a direct replacement) and you would have understood why Bilski took so long, and why Bilski is truly a nail in the coffin for the Stevens viewpoint.
You also do not understand baseball.
You admonish “Try watching a National League game sometime.” after throwing out a comment like “Actual inventors are 1 for 4. Even in baseball, if you do that badly you’d better have a wicked curve ball.”
One in four for a pitcher is phenomenal. “That badly“? The only thing “that badly” is the shameless way you simply makes things up.
I did a quick Google search and for 2008, here are the National League team batting averages for pitchers:
link to askville.amazon.com
Team – Batting Average
CHN – .206
STL – .171
SD – .165
ARI – .160
HOU – .159
MIL – .152
ATL – .134
LA – .130
PIT – .127
SF – .126
FLA – .124
PHI – .124
COL – .117
NYN – .117
CIN – .114
WAS – .095
Even the very best wasn’t close to one in four.
Your posting is shameless. Your emphasis of snark over substance is repulsive. Spend more time with the facts and law before you spout. It would do all of us better if we had less snark and more substance from you.
Jason: edited for formatting to close the bold tag
Diehr’s “claims as a whole” approach wouldn’t have saved either Benson’s claims or Flook’s claims, and it didn’t save Bilski’s. The Diehr limitation, whatever it may be, isn’t very limiting at all. All Diehr apparently does is limit Flook by saying not to do what Flook says not to do.
Posted by: IANAE | Dec 15, 2010 at 03:01 PM
______
The above is non sense and does not even rise to the level of conjecture. You are NOT quoting or citing any passage or even sentences from ANY Supreme Court case.
You are just saying what you believe or want the law to be. Which is fine, you have a right to an opinion.
But the PTO and all its Examiners are bound by the exact words and instructions of the Supreme Court that interprets the laws.
And as it stands today, any inventor of a novel new process or improvement of an existing process that is not a law of nature, natural phenomenon, mathematics, or other abstract idea is eligible to receive a patent on that process.
It does not matter if the process has a machine, or is a machine, or transforms anything anything at all. As long as the process is applied and does not come under one of the Court recognized exceptions stated above, it’s statutory.
SLAM DUNK!
That was supposed to be, “Well done AI’s dear Diehrist!”
Anyway, It has been a good afternoon watching IANAE get intellectual B slapped by both Actual Inventors and Attorneys. 🙂
Dierh had to bend over backwards to essentially overrule that $&@^&*% while pretending not to overule it.
Posted by: TINLA IANYL | Dec 15, 2010 at 06:01 PM
____________
That says it all!!!
Unfortunately for IANAE that “$&@^&*% ” is all he/she has left to hang his/her hat on.
IANAE: “Whatever Diehr actually controls, it’s much less than you think it does. “Even Diehr doesn’t think Diehr is limiting Flook. The only person who thinks so is AI.”
AI’s dear Diehrist: Oh, – AND THE SUPREME COURT MAJORITY TOO
!!! BILSKI 14 !!!
IANAE: “A statement of the conclusion you wish was the law, based on an incorrect paraphrase of the Supreme Court.”
AI’s dear Diehrist: IANAE – you describe yourself. You lose – the more you struggle the worse you look. I would think a real lawyer would recognize that. Actual Inventors win! !!! BILSKI 14 !!!
_________
And down goes IANAE!!!
Well down AI’s dear Diehrist.
That doesn’t make the process a positive limitation. That’s merely the intended source of a data input to the calculation process, in other words a field of use. The actual claim is pure math. The entire claim. If you take out the math, there isn’t only no patentable invention left. There’s no claim left.
I love the way you redefine “positive limitation” to exclude the “insignificant post-solution activity. And it’s not that there’s no claim left if you take out the algorithm. It’s that the part of the claim that’s left was old, and therefore insignificant post-solution activity. So Flook would pull out the algorithm, then discount anything that’s old as insignificant post solution activity. Just look at flook again:
“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
Page 437 U. S. 590
formula outside the petrochemical and oil refining industries that remain in the public domain. 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.
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.
In other words, Stevens was looking for new, and therefore, significant post solution activity. His dissent in Diehr is the nail in the coffin of your argument.
Dierh had to bend over backwards to essentially overrule that $&@^&*% while pretending not to overule it.
The process variable could be the distance I park from the curb or the price of the cigarettes, just to name a couple of examples that are “involved” in that process but that clearly have very little to do with catalytic conversion.
And SCOTUS said that was the basic problem (i.e., the process variable was undefined), which led to the CAFC developing a stance that the claim passes 101 as a “particular transformation” if it recites what the data being transformed represents in the real world. Good eye.
TINLA: Notice they didn’t even say it had to be in the claim.
IANAE: If Diehr had said that, especially that last bit, it would obviously be wrong.
And yet, this latest decision would seem to let some claims through 101 on the basis of the contents of the specification, and/or other claims. I’m sure you’ll agree that some of those claims, examined in a vacuum, would seem to fail 101, but the CAFC appears to be allowing the meanings of words in the claims to be imbued with non-abstractness by the overall teachings of the specification and the contents of the otehr claims. See, for example:
1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.
You lost me
Try watching a National League game sometime.
“Actual inventors are 1 for 4. Even in baseball, if you do that badly you’d better have a wicked curve ball.”
You lost me
the more you struggle the worse you look.
It’s really no struggle for me to point out that you’re wrong, just like it’s no struggle for you to keep repeating the same nonsense based on a case you clearly haven’t even read.
Actual Inventors win!
Actual inventors are 1 for 4. Even in baseball, if you do that badly you’d better have a wicked curve ball.
“Whatever Diehr actually controls, it’s much less than you think it does.
“Even Diehr doesn’t think Diehr is limiting Flook. The only person who thinks so is AI.”
Oh, – AND THE SUPREME COURT MAJORITY TOO
!!! BILSKI 14 !!!
“A statement of the conclusion you wish was the law, based on an incorrect paraphrase of the Supreme Court.”
IANAE – you describe yourself.
You lose – the more you struggle the worse you look. I would think a real lawyer would recognize that.
Actual Inventors win!
!!! BILSKI 14 !!!
WOW! Best smack down of the year!
Yeah, it’s just your sort of thing. A statement of the conclusion you wish was the law, based on an incorrect paraphrase of the Supreme Court.
Flook had math. Diehr had chemistry. Diehr wins. Big surprise.
Diehr even goes on to say that the Flook claim could have been patentable if the application had discussed any particular catalytic conversion process. Notice they didn’t even say it had to be in the claim.
“‘Parker v. Flook, supra, presented a similar situation. 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, 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 . ”
Now what do you have to say for yourself?
Posted by: TINLA IANYL | Dec 15, 2010 at 03:38 PM
WOW! Best smack down of the year!
TINLA: Do I have to point out for you the positive recitation of the process variable, thereby making the calatalytic conversion process a positive limitation?
That doesn’t make the process a positive limitation. That’s merely the intended source of a data input to the calculation process, in other words a field of use. The actual claim is pure math. The entire claim. If you take out the math, there isn’t only no patentable invention left. There’s no claim left.
There are clearly problems in Flook. There’s an obvious conflation of novelty with statutory subject matter. But really, I see Flook as a very clumsy way of saying that once you take the math out of the claim, there’s nothing left.
Curiously, you quote from footnote 12 of Diehr, which reads:
“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.“
Even Diehr doesn’t think Diehr is limiting Flook. The only person who thinks so is AI.
TINLA: Diehr even goes on to say that the Flook claim could have been patentable if the application had discussed any particular catalytic conversion process. Notice they didn’t even say it had to be in the claim.
If Diehr had said that, especially that last bit, it would obviously be wrong. But that’s not what Diehr said. Diehr said that Flook didn’t even discuss any particular catalytic conversion process – not that such discussion would have saved the claims. They were simply saying how very badly Flook’s application was drafted, and contrasting it with Diehr’s very good application.
TINLA: Now what do you have to say for yourself?
I have to say that Diehr and Flook are different enough on the facts that we don’t have to pretend every Supreme Court decision is an earth-shattering departure from the ones before. Besides, the “important limitation” according to Bilski is simply a statement that physical apparatus or processes will get you into the PTO, a statement with which the Flook court would surely have agreed, had it been at all relevant.
It sounds like Mr. Flook has rather a large cabin all to himself. Even though Bilski never used the word “cabin”.
at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons
Nobody asked me, but driving to the store, parking the car, and buying a particular quantity of cigarettes is a “process comprising the catalytic conversion of hydrocarbons.” The process variable could be the distance I park from the curb or the price of the cigarettes, just to name a couple of examples that are “involved” in that process but that clearly have very little to do with catalytic conversion. If catalytic conversion is a positive limitation, it’s not a very limiting limitation.
And some 30 plus years later the Supreme Court Majority in Bilski continued to agree with the Supreme Court majority in Diehr.
And yet, the Supreme Court (not just a majority, all of them) agreed that Bilski should lose for the exact same reason that Benson and Flook lost.
Whatever Diehr actually controls, it’s much less than you think it does.
Wow, IANAE. Where do I start?
(the catalytic conversion was not positively recited but merely intended use), and the only real dissection in Flook was to ignore the field of use
Let’s start by looking at the first few lines of Flook’s claim:
“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;”
Do I have to point out for you the positive recitation of the process variable, thereby making the calatalytic conversion process a positive limitation?
And as for what Flook did, are we reading the same case? The one I’m reading says this:
“… the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” see Gottschalk v. Benson, 409 U.S. at 409 U. S. 67, it is treated as though it were a familiar part of the prior art. This is also the teaching of our landmark decision in 56 U. S. 112-121. … 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. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. 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. The chemical processes involved in catalytic conversion of hydrocarbons are well known, as are the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for “automatic monitoring alarming.” [Footnote 17] Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”
Then look at Diehr:
“Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis …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 … 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.’ … [ 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 even goes on to say that the Flook claim could have been patentable if the application had discussed any particular catalytic conversion process. Notice they didn’t even say it had to be in the claim.
“‘Parker v. Flook, supra, presented a similar situation. 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, 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 . ”
Now what do you have to say for yourself?
TINLA IANYL: Diehr specifically criticized the reasoning in Flook, saying that you can’t disect out the old stuff, but must consider the claim as a whole.
IANAE: Actually, if you read Flook, the Supremes were careful to say that they were not doing exactly that.
AI: But the Supreme Court majority in Diehr disagreed with the Supreme Court majority in Flook. And some 30 plus years later the Supreme Court Majority in Bilski continued to agree with the Supreme Court majority in Diehr.
TINLA IANYL is right.
IANAE is wrong.
Diehr controls.
Keep on trying that crazy spin IANAE – you are fooling no one.
One only has to look at the real picture of which justices were involved to see the real slap down in Bilski when Diehr was raised ascendant.
Stevens lost – his legacy was lost and those like IANAE have also lost.
Real lawyer indeed – real has been loser is more like it
Actual Inventors win!
!!! BILSKI 14 !!!
Diehr specifically criticized the reasoning in Flook, saying that you can’t disect out the old stuff, but must consider the claim as a whole.
Actually, if you read Flook, the Supremes were careful to say that they were not doing exactly that. Flook claimed a pure calculation in a field of use (the catalytic conversion was not positively recited but merely intended use), and the only real dissection in Flook was to ignore the field of use – something that is still acceptable today.
Diehr’s claim was a pretty garden variety method claim where one step wasn’t merely “do this” but “do this in a specified way”. I find it hard to believe that such claims were ever generally nonstatutory either before or after Flook.
Diehr’s “claims as a whole” approach wouldn’t have saved either Benson’s claims or Flook’s claims, and it didn’t save Bilski’s. The Diehr limitation, whatever it may be, isn’t very limiting at all. All Diehr apparently does is limit Flook by saying not to do what Flook says not to do.
AI: Once again read the first sentence of the paragraph,
IANAE: Once again, read the other sentences of the paragraph. Diehr only “limits” Benson and Flook in the case of “a known structure or process”,
AI: Well, since we are discussing processes your statement adds nothing new or makes any additional point whatsoever.
IANAE: And wrong according to Albert Einstein, since Diehr was decided after the other two.
AI: since it was the Supreme Court that wrote, ” Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook” and not Albert Einstein, your statement is once again illogical and adds nothing to the discussion whatsoever.
IANAE Rewrites AI’s post and says, “The Court had an opportunity to put a gloss on Benson or Flook or flat out over rule its precedent but instead deliberately affirmed its principles.”
AI: Since the point proven is that “in Diehr, the Court established a limitation on the principles articulated in Benson and Flook”, your above statement is illogical and adds nothing to the discussion whatsoever.
IANAE: Get back to me when you’re an Actual Lawyer.
AI: If your point is to prove your legal competence you failed to do so with me. I would never hire an attorney that used such blatant logical fallacies as a demonstration of legal analysis skill.
Diehr only “limits” Benson and Flook in the case of “a known structure or process”, which wasn’t even new law when Diehr was decided
I don’t think that’s right. Flook very clearly dissected out that which was known for determining 101 eligibility, and Diehr specifically criticized the reasoning in Flook, saying that you can’t disect out the old stuff, but must consider the claim as a whole.
That’s not to say that Diehr contradicted the result in Flook, as opposed to the analysis. Diehr made it clear that an application of an algorithm to a known structure or process would be 101 eligible, while saying that the claim in Flook did not meet that requirement for various reasons that make it clear that the catalytic conversion process to which the algorithm was being applied was not really known because it was simply undefined. That’s why a field of use limitation is not good enough, and nor is specifying a category for the process, such that one is trying, as in Flook, to patent the application of the algorithm to any known or unknown process of the category and field.
AI: Once again read the first sentence of the paragraph,
Once again, read the other sentences of the paragraph.
Diehr only “limits” Benson and Flook in the case of “a known structure or process”, which wasn’t even new law when Diehr was decided, and certainly wasn’t news when we read it in Bilski.
AI: Anyone claiming, as it has been done on this blog, that Flook and Benson cabined or limited Diehr in anyway is flat out wrong according the Supreme Court of the United States!
And wrong according to Albert Einstein, since Diehr was decided after the other two.
AI: The Court had an opportunity to put a gloss on Benson or Flook or flat out over rule its precedent but instead deliberately affirmed its principles.
Fixed that for you.
Get back to me when you’re an Actual Lawyer.
Speaking of case law, I went back to read the Supreme Courts Bilski decision which is the most recent case of 101 in the last 30 years and once again was struck with the power and simple clarity of the Courts words on page 14. I quote….
“/media/docs/2010/09/08-964.pdf”
Finally, in Diehr, the Court established a limitation on
the principles articulated in Benson and Flook. The appli-
cation in Diehr claimed a previously unknown method for
“molding raw, uncured synthetic rubber into cured preci-
sion products,” using a mathematical formula to complete
some of its several steps by way of a computer. 450 U. S.,
at 177. Diehr explained that while an abstract idea, law of
nature, or mathematical formula could not be patented,
“an application of a law of nature or mathematical for-
mula to a known structure or process may well be deserv-
ing of patent protection.” Id., at 187. Diehr emphasized
the need to consider the invention as a whole, rather than
“dissect[ing] the claims into old and new elements and
then . . . ignor[ing] the presence of the old elements in the
analysis.” Id., at 188. Finally, the Court concluded that
because the claim was not “an attempt to patent a
mathematical formula, but rather [was] an industrial
process for the molding of rubber products,” it fell within
§101’s patentable subject matter. Id., at 192–193. ”
Once again read the first sentence of the paragraph, “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”
Anyone claiming, as it has been done on this blog, that Flook and Benson cabined or limited Diehr in anyway is flat out wrong according the Supreme Court of the United States!
The Court had an opportunity to put a gloss on Diehr or flat out over rule its precedent but instead deliberately affirmed its principles.
So as it stands today according to the Supreme Court of the United States. a process invention is statutory unless the process is for claiming an abstract idea of thinking or pure mathematics, or laws of nature.
Will you please also give us a list of example “abstract ideas” and “non-abstract ideas”
Thanks in advance.
Posted by: TINLA IANYL | Dec 15, 2010 at 11:11 AM
__________________
Hmmm….. Okay I will take a shot at this.
A process for imagining world peace
1. Closing ones eyes while sitting at the beach
2. listening to the sounds of the ocean
3. visualizing people smiling laughing and getting along with each other.
___________________
Now assuming there is an enabling specification the above process claims are technically an applied process and not abstract. However I do believe the courts would say the process is legally abstract because it’s a method of thinking. This would preempt a thought process. Although I don’t know how an inventor would enforce such an invention even if it did have a patent. I mean how could you ever know what someone was imagining or thinking unless they told you?
I also assume the same type of legal reasoning could be applied to more so called left brain thinking such as math that you can calculate in your head.
The Courts in this recent wave of decisions from the upholding of Diehr, to the cabining of CAFC Bilski, has pretty much said let’s leave the abstract ideas to abstract ideas..i.e. thinking, imagining and such. And that’s pretty much all there is to it.
And this is probably the reason that those that claim there is more write hundreds of words of conjecture but can’t give one citation of case law to back it up.
nonononnonononononnoonnono no. Broje. Look let me restate this for you in the form which you will, from your statement above, understand.
I think (and the law is, regardless of what I think) that there are “abstract ideas” and “non-abstract ideas”, and that applications of abstract ideas are unpatentable IF THE CLAIM TO THE APPLICATION ALSO COVERS THE ENTIRE (substantially at least, see benson and flook) ABSTRACT IDEA AS WELL. All “ideas” (note that this is a point of semantics), standing on their own, are “abstract” in so far as we are talking about things that are not an “idea” about, oh, say, punching someone, building something, basically MOT. When a claim is “directed to an abstract idea,” that just means that it tries to claim the idea itself (see benson), instead of ONLY an application of the idea, or blatantly comes right out and claims the abstract idea (see flook) without any attempt made to claim an application. On the other hand, if you claim only the application of the abstract idea to an otherwise obviously non-abstract method, AND leave the abstract idea mostly free to the public, then you’re fine (see Diehr) (also see what the Feds thought happened in this case).
I’m really confused. First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.
But then you go on and basically restate and agree with everything I said. Will you please make up your mind?
Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.
Thanks in advance.
And while you are at it, please provide the proper legal citation for this “debunking” – mere conjecture on an anonymous blog does not count.
Lowry, Bernhart and Beauregard debunked.
You’ll note that the comments to that post are closed. With good reason.
Malcolm Mooney,
Both of your links lead to the front page of a 608 comment blog.
Can you be a little bit more specific?
link to patentlyo.com
link to patentlyo.com
Lowry, Bernhart and Beauregard debunked.
There is quite a difference. Although I wouldn’t put it past you to miss it.
You must have missed all those times I distinguished Lowry from Beauregard.
But thanks for the respect. Means a lot, coming from you.
“is abstract if it is an application of a known principal and is too broad. What?”
Technically it has nothing to do with the size of the breadth, i.e. that it is “too” broad. It only has to do with what is inside that breadth.
When you realize that, and the implications thereof, perhaps it will seem a little more worthwhile.
“Enablement is all we needed to deal with this problem.”
If what you posted was the problem at hand then yes, you might be right. However, breadth simply isn’t the concern sir, the TYPE of subject matter encompassed is. The USSC only references the “breadth” of the claim to make sure that everyone understands that the subject matter to which they are referring, and have a problem with, is indeed, ALL within the breadth.
“You don’t want information processing inventions, then you should go to Congress. Maybe you are right. Maybe there shouuldn’t be patents for them. But, fabricating nonsense by judges is not the way to get rid of them.”
Lulz, I don’t need to. Information processing “inventions” will (practically?) always get a 101 from me without more in the claim. If you think the Board and Feds won’t notice the abstract idea being preempt when I point it out for them then you’re welcome to roll the dice. Your kind may be able to take advantage of Rader’s technical incompetence once, but you wouldn’t fool him with me holding his hand. Just think of what fun we’ll have with a precedent where they do notice what abstract idea is being preempt.
Who knows? Perhaps we’ll see that shortly in this case.
“I thought the claims in In re Lowry were perfectly statutory.”
You might not have noticed but that was less an “information processing invention” and more a “information storage device data structure design invention”. There is quite a difference. Although I wouldn’t put it past you to miss it. You’ll note however, even with your rudimentary understanding, the distinct lack of “processing” and the conspicuous presence of “structures” (as in the physical kind) in Lowry.