By Jason Rantanen
Classen Immunotherapies, Inc. v. Biogen Idec (Fed. Cir. 2011) Download 06-1634-1649
Panel: Rader (offering "additional views"), Newman (author), Moore (dissent)
There is no doubt that the Federal Circuit continues to struggle mightily with Section 101. If Myriad were not enough evidence of this, Classen Immunotherapies – and Judge Rader's additional views in particular – should remove all doubt.
Classen Immunotherapies holds three patents that it contends are infringed by virtually everyone: Patent Nos. 6,638,739; 6,420,139; and 5,723,283. According to the patents, their inventor, Dr. Classen, has discovered that "the schedule of infant immunization for infectious diseases can affect the later occurrence of chronic immune-mediated disorders…and that immunization should be conducted on the schedule that presents the lowest risk with respect to such disorders." Slip Op. at 5. Claim 1 of the '739 patent is illustrative of Classen's broad claim scope:
1. A method of immunizing a mammalian subject which comprises:
(I) screening a plurality of immunization schedules, by
(a) identifying a first group of mammals and at least a second group of mammals, said mammals being of the same species, the first group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a first screened immunization schedule, and the second group of mammals having been immunized with one or more doses of one or more infectious disease-causing organism-associated immunogens according to a second screened im-munization schedule, each group of mammals having been immunized according to a different immunization schedule, and
(b) comparing the effectiveness of said first and second screened immunization schedules in pro-tecting against or inducing a chronic immune-mediated disorder in said first and second groups, as a result of which one of said screened immuni-zation schedules may be identified as a lower risk screened immunization schedule and the other of said screened schedules as a higher risk screened immunization schedule with regard to the risk of developing said chronic immune mediated disorder(s),
(II) immunizing said subject according to a subject immunization schedule, according to which at least one of said infectious disease-causing organism-associated immunogens of said lower risk schedule is administered in accordance with said lower risk screened immunization schedule, which administration is associated with a lower risk of development of said chronic immune-mediated disorder(s) than when said immunogen was administered according to said higher risk screened immunization schedule.
Classen asserts that the '139 and '739 patents are infringed "when a health care provider reads the relevant literature and selects and uses an immunization schedule that is of lower risk for development of a chronic immune-mediated disorder." Slip Op. at 7. According to Classen, this includes "the act of reviewing the published information, whether or not any change in the immunization schedule is made upon such review." Id. The '283 patent is similar, except that it does not include the subsequent step of selecting an immunization schedule. Classen asserts that the '283 patent is infringed "when a person reviews relevant information, whether the person is a producer of vaccines, a health care provider, or a concerned parent." Slip Op. at 8. The three patents list several hundred preexisting references relating to immunization schedules, the occurrence of immune-mediated disorders, and studies and reports from the field.
The district court granted summary judgment of invalidity of the asserted claims on the ground that they claimed an abstract idea. On initial appeal, the CAFC affirmed, with Judge Moore penning an extremely short affirmance. Following Bilski, the Supreme Court grant-vacate-remanded the case to the Federal Circuit, where it was assigned to the panel of Rader, Newman, and Moore.
The Majority: Writing for herself and Judge Rader, Judge Newman concluded that while the '283 patent failed to satisfy Section 101, the '139 and '739 patent did. Although the '139/'739 patents included a mental step, "precedent has recognized that the presence of a mental step is not of itself fatal to § 101 eligibility." Slip Op. at 15. Because the claims of these patents include the physical step of immunization, the majority held, they were directed to a "specific, tangible application." Slip Op. at 18. This was sufficient to assure the majority, which declined to offer any additional reasoning, of their subject matter patentablity. On the other hand, the majority held, the '283 patent attempted to claim an abstract idea unfettered to any physical steps. Thus, it was invalid under Section 101.
The Dissent: Judge Moore disagreed entirely. "While I confess the precise line to be drawn between patentable subject matter and abstract idea is quite elusive, at least for me, this case is not even close." Dissent at 6. All three claims simply constitute abstract subject matter: "Having discovered a principle – that changing the timing of immunization may change the incidence of chronic immune mediated disorders – Classen now seeks to keep it for himself." Dissent at 8. While Judge Moore reserves her harshest criticism for the '283 patent, her views on the '139/'739 reach the same conclusion. "The immunization step of the '739 patent, like updating the alarm limit in Parker v. Flook, 437 U.S. 584 (1978), is nothing more than post-solution activity." Id. at 9. That post-solution activity "does not transform the unpatentable principle – that a correlation exists between vacination schedules and incidence of chronic immune disease – into a patentable process.' Id. at 10.
Judge Rader's Additional Views: In an unusual move, Judge Rader, joined by Judge Newman, wrote separately to express frustration with the constant use of Section 101 challenges by accused infringers.
In the last several years, this court has confronted a rising number of challenges under 35 U.S.C. § 101. The language of § 101 is very broad. Nevertheless, litigants continue to urge this court to impose limitations not present in the statute.
For a variety of policy reasons, Judge Rader urges, "[t]his court should decline to accept invitations to restrict subject matter eligibility." Rader additional views at 2. Chief among these is the problem that "eligibility restrictions usually engender a health dose of claim-drafting ingenuity," evasions that "add to the cost and complexity of the patent system and may cause technology research to shift to countries where protection is not so difficult or expensive." Id. at 3.
Comments: I am troubled by several aspects of the court's opinions. Particularly concerning is the majority's apparent desire to abdicate the subject matter inquiry altogether, a desire expressed both implicitly, in the majority opinion's unwillingness to offer any substantive reasoning to support its ruling on the '139/'739 patents, and explicitly in Judge Rader's policy statement. This approach seems problematic on its own, but becomes even more so when coupled with the numerous Supreme Court opinions relating to the issue of subject matter patentability – an area of traditional significance in the patent sphere. While the Court may have repeatedly suggested that broad categorical rules may be inpermissible, it has nowhere suggested that subject matter arguments lack merit as a class, or that subject matter arguments must fail as a matter of course. In particular, I find it difficult to see how the '139/'739 patents possibly survive scrutiny under Parker v. Flook, 437 U.S. 584 (1978). The mental step itself is not a patentable subject, so how can combining it with an act (or the lack of an act) that has previously been done without the mental step make it patentable?
Nor does Section 101 seem to present such a unique problem that the Federal Circuit should adopt a policy of declining to address arguments relating to it. Even as Judge Rader criticizes the case law limiting subject matter patentablity because it encourages costly legal design-arounds, he joins with an opinion that does precisely that by drawing the line between the two sets of claims. Mental step claims are now clearly out; mental step plus claims are now in. And since every process is simply a link in a longer process, claim drafters need only look one step forward to avoid the effects of the majority's ruling. Nor should the effects of Judge Rader's parade of horribles be limited to Section 101 – they strike me as equally applicable to Section 102, Section 103, and especially Section 112.
Stevens was not on the court for Benson.
What was Steven’s position on Benson?
Your problem Ned is you believe that only claims that pass the MOT are eligible subject matter when that is NOT what was held in Classen, Bilski, or Diehr.
Everything you have said is wrong and dishonest. Word for word what was said and in original context, has been documented in another article and thread. I do not care to go back and look it all up because you are simply playing games and have no regard for the truth in online debates, as has been pointed out and validated on this blog.
He is one of the judges who said that the Diehr cabined Benson.
He was also was among the few Federal Circuit judges who refused to go along with the majority on the “machine or transformation” test.”
Ned, if the CAFC acknowldged that Diehr cabined Benson and the SCOTUS agreed in Bilksi, 14, the question should then be…
So what is Ned’s problem?
IBP You haven’t litigated, have you MM?
In fact, I have. For years.
Your starting points are just loaded with untenable assumptions
No, they aren’t. It’s amusing that you state this and then fail to identify one of these “untenable assumptions.”
I’m not making any assumptions. I don’t need to. Primarily, that is because I’m not trying to come up with a “universal” method for identifying every type of claim that could possibly be found ineligible under 101.
Rather, I am identifying a type of claim that must be found either ineligible under 101 (because the claim effectively patents a mental step by failing to include any novel or non-obvious non-mental steps) or invalid under one of the other patent statutes of your choice (102, 103, 112 … take your pick, choose your theory).
Yes, the application of 101 in this scenario follows either an admission that the other step(s) in the claim is/are old (usually not terribly difficult to obtain – Classen and Prometheus didn’t bother to contest the issue; indeed, they seemed proud of the fact) or a finding by the judge that such is the case. Regardless, once that finding is made, the conclusion is straightforward and undeniable: the claim turns practitioners of the prior art who acquire KNOWLEDGE about the patentee’s “discovery” into infringers. As we all agree, IBP, that result is not allowable.
I’ll be “intellectually honest”: I don’t see yet why Moore is wrong. I abhor the grant of exclusive rights on the scientific method as such, and I think 101 is what ought to block it. It is a dereliction of Rader’s duty, to leave the job to 103.
I agree that such decisions may render it all too easy for clever patent claim drafting to compensate for weaknesses in a supposed “invention.”
Actual Inventor, If you did not say that Bilski held that business method patents were patent eligible, then I owe you an apology. However, I don’t think I was wrong in that. In fact, I believe you repeatedly made the statement that in your view Bilski held that business method patents were patent eligible. I challenged you. I asked whether if BMPs were patent eligible, why did the unanimous Supreme Court hold the claims in Bilski not patent eligible. After all they were directed to a business method. You responded, I believe, and you can correct me here if I’m wrong, that the claims in Bilski were not directed to business method. It is at this point, that I think our discussions went clearly off the rails and where you begin calling me names to substitute for argument.
Actual inventor, because that was the holding in Flook. The principles of Flook were reaffirmed in Bilski when the court held that the limitations of the Bilski claims to particular end-uses did not render the otherwise abstract methods patentable subject matter.
Zen, I have no idea which mean, but in reviewing this thread upstream I did find a quote from Actual Inventor from Diehr, summarizing its case history. Apparently the patent office had held the claims unpatentable because they were directed to a programmed computer and relied on Benson for its authority. I believe this is a incorrect understanding of Benson, but to the extent that Benson could be construed to prohibit any claims that included a programmed computer, even if the programmed computer were applied to a practical use, clearly Diehr did cabin Benson. However I strongly disagree that Benson ever held that programmed computers were unpatentable even if they were applied to a practical end use.
Um, no, I find it interesting that even the majority in Bilski cited to Stevens dissent and you did not seem to find anything wrong in that. For example, you do not call majority dishonest. Why? Because when they cited to the dissent, they said they were doing so. They were citing the dissent not for authority, but for its commentary.
When I cite portions of the dissent, and let you know that I am citing the dissent, I am not citing the dissent for authority, but for its commentary. Because I let you know what I am doing, I am not being dishonest.
The problem I have with you um, no, is you have a stick up your a.. about something that occurred between us a long time ago. I really don’t know what it is that caused you to go off the deep end. I have tried to make amends, and repeatedly so. But to no avail. You have a vendetta against me and you will not let it go. All I can do at this point in time is ask you to leave this form because you your constant whining is bothering not only me, but everybody else who is trying to read this blog.
Actual inventor, regarding cabining Benson, the patent office held the claims in Diehr to be unpatentable because they were included a stored program computer at the point of novelty, and the because rest of the elements were old and conventional. The patent office relied upon Benson for their authority.
First of all, Benson did not hold that stored program computers were unpatentable. Therefore the idea that Benson that held that stored program computers were unpatentable is the problem. Benson did contain such dicta, I agree. But the holding in Benson was that the claims involved in that case were abstract and that they were not applied to any practical application, i.e., they were not applied to any useful end. In other words, had the patent office followed Benson, they would’ve held the claims in Diehr patentable, not patent ineligible, because the stored program computer in that case was applied to a practical end use.
I hope you can understand why those of us who understand what Benson actually held are constantly asking you and others just how any subsequent cases, such as Diehr, cabined Benson, because in our view, Diehr followed Benson.
” You said Bikski held BMPs to be patent eligible”
I did not.
“I responded that Bilski held that they were not automatically excluded.”
You did not.
“For the life of me, I do not understand why you cannot see the difference.”
You are dishonest.
“What is clear is that you got the message of Bilski backwards and continue to get it wrong.”
I did not get or read any “message” into Bilski at all. I, like all honest pro patent, Americans, read the ruling and accepted it’s results.
“I have tried to explain this to you many, many times. I am beginning to feel that either you do have the capacity to understand or you choose not to understand such distinctions.”
Bilski 14.
Nuff said
And why exactly would a process that uses the “scientific method for particular applications” be non statutory????
And please be honest Ned and use current controlling Case Law, Statutes, and/or the Constitution to based your answer on, and not your personal view/theory of what you think the law should be. And no Dissents!
:: waits to see if Ned can be intellectually honest::
IBP, I think another flaw in MM’s approach is to conduct a novelty test before 102/103. I suggest that this is wrong, at this post. Sep 04, 2011 at 04:03 AM.
If one must assume the lawnmower steps are novel and unobvious for the purpose of 101 analysis (which takes place before 102/103, not after), then Mooney’s test would always fail.
The problem lies elsewhere.
The CCPA once deemed such pre-calculation steps as mere data gathering, but In re Christensen was overruled. If such data gathering steps are not ignored for 101 purposes, then generally such claims will pass 101 because of the old elements themselves define a statutory process.
But, when one looks at the infringement theories of these folks, we instantly realized that the Classen result is right, the Promtheus result is wrong, and the overruled Christensen was right all along.
However, there is another issue lurking here.
The basis of the Prometheus claims being held valid was because the process has a disclosed but unclaimed use within the MOT. This logic is similar to that in Alappat, which also had a disclosed but unclaimed use. We see where Rader is going. He really wants to carve an exception out of Flook.
“Have you read Classen’s brief? They do actually assert that their patent is infringed “when a person reviews relevant information”, so maybe they included some sort of explanation of how that’s possible.”
IANAE, are the claims really just to reading information? Or did Classen claim an invention that includes ready information, along with all the other steps involved in the invention?
Max, the two patents did call for immunizations according to the low risk schedule. I think one “must assume” this was new for the purposes of 101, because 101 is a threshold issue that operates before 102.
The latter. That is why Moore said that these claims are not even close to being patentable, as the patent claims the use of the scientific method for particular applications.
MM: “My concise statement is that rather than leave it to equity, just recognize that ALL claims in the form of the claim I presented restrict free thought and thus are ineligible under 101 which, as everyone agrees, bars claims to thoughts and methods of thinking.
It doesn’t get more concise than this, IBP. Your 112 analysis requires quite a few assumptions to be made about the claim’s “utility” and the “rational relationship” of mental steps to the alleged “utility”. My analysis requires no assumptions. It’s bulletproof. Easy to apply. And reaches the result that we both agree is correct.”
“Claims to thoughts and methods of thinking”–
First of all, the claim you presented was not such a claim. Second, what does that even mean? That all limitations were directed to thoughts? Some limitations? One? An intermediate limitation, or an initial or final limitation? Limitations such as mentally-performable calculations are not clearly impermissible under 101.
It seems as though you are first misunderstanding 101, and then conceiving a mis-formulation that fits within that misunderstanding.
Again, your formulation is one of empassioned convenience, not one of dispassionate inquiry.
And even if we take it at face value, “bulletproof and easy to apply”? Why, because you say so? I’d present a multiplicity of scenarios demonstrating the failure of your formulation, except that it doesn’t seem like it would be worth it, based on your incorrect understanding of 101.
“Bulletproof and easy to apply”–hardly.
Your approach is piecemeal, like other failed approaches designed by the courts. In order to have any merit and enduring quality, it should derive from principle and not convenience, for obvious reasons. Your unworkable convenience-based formulation is in every way inferior to a principle-based formulation.
You probably believe that it could promote economy, and that might be true at the prosecution level because of the deterrent effect of prosecution costs–however, that is mere PTO economy, and not patent scheme economy, the two not being synonymous.
newb here,
Something is not clear to me. Is Classen’s claim on just his own research results or does he claim intellectual property on the results of anyone who tests a few immunization schedules before using the one that works best?
“The point is Ned, that all programming software is software that actually makes the machine function like a different machine. That IS what programming software does. I think unwittingly, you have just conceded the entire debate.”
Find ZEN. Understand ZEN. Free the shackles of your mind.
“The point is Ned, that all programming software is software that actually makes the machine function like a different machine. That IS what programming software does. I think unwittingly, you have just conceded the entire debate.”
Find ZEN. Understand ZEN. Be free of the shackles of your mind.
“Diehr held that practical applications of computer programs were patentable. So, that must be it.”
Find ZEN. Understand ZEN. Be free of the shackles of your mind.
This Classen opinion will certainly “rock the patent-eligibility” boat in many quarters. The majority opinion and “additional views” opinion squarely address the absurdity and subjectivity of viewing claimed subject matter through the 35 USC 101 “patent-eligibility” screen first and not initially through the “patentable merits” screens of 35 USC 112, 102, and 103 screens. As Sherlock Holmes would say, “the game is truly afoot” regarding the patent-eligibilty question, and the judicial donnybrook at the Federal Circuit (and potentially at the Supreme Court) is about to begin in earnest.
anon, in dicta, Benson told us that computer programs were not patentable. Diehr held that practical applications of computer programs were patentable. So, that must be it.
However, Benson said as much itself, citing cases. In fact, that was the whole point of the Benson. To be patentable, the abstract concept must be applied to a practical, "physical" use. Diehr only followed Benson's holding.
But, until Diehr, Benson's dicta may have been the prevailing view for the proposition that all computer programming was unpatentable.
Ned,
I would like to tell you that I have not been affected by the repeated postings attacking your honesty.
I would like to tell you that, but that itself would be a lie.
I find it beyond reason that the person who has posted so much, I darsay the most, on this subject, bar none, who professes to have had an working relationship with Judge Rich and who easily has read these cases at least a hundred times, can honestly say that he does not know what a single particular sentence means in the capstone case of the series? A sentence that has been bandied about like a battle cry for more than a year. The person who quotes from the majority views and the dissenting views, cannot understand a point of law made by the majority of Supreme Court Justices in the last case that affects the previous cases that he quotes from extensively?
You will have to excuse me for my incredulity.
Be that as it may, I want to hold your feet to the fire. I am not willing to let you skip out of this point and have someone else give an answer. I am not interested in someone else’s answer (even my own). I want your answer.
Let’s pretend to be lawyers. Better yet, let’s pretend to be law students. You have been assigned the series of cases and the professor has asked you: What does Bilski 14 stand for? Why is Benson included in the quote?
Ned, using all of your formidable experience, what is your answer?
You have my complete attention.
And by the way, if you still beg off and say you do not know the answer, I advise you to STOP posting as if you do, including as I note below, you telling someone to read Benson for an answer that just may not be controlling law. After all, you are a real lawyer are you not, and a real lawyer does not advise on law he does not know, correct?
I write of shilling – that of others. Nothing I write reflects more than that.
You, on the other hand, write “to learn”, yet do not learn – what do you make of that?
By their works shall ye know them, a wise man once said.
Yet, after you have written so much for this blog, you write above:
“-you know nothing of me,”
True, I don’t “know” you personally. I know something “of” you though, don’t I?
New purpose? I missed that Ned. What is it then?
All you have to do is read Benson to see the distinction. The Supreme Court made it there. If after you have understood the words of the Supreme Court, you still disagree, your debate is with them, not with me.
Anthropomorphism runs amuck.
Software is using the tool???
Is software an entity with its own volition now?
Does a screwdriver use a screw?
Does a tire use a car?
Does a bullet use a gun?
Why is there so much concerted wanking effort against software?
…T O O L S
“So, if the object of the software is to improve the tool, it is patentable… but using it”
This is nonsense.
Software has no other object. Software does not exist for its own sake. Software only exists to “improve the tool” – being as it may, be the tool, a part of the tool, working in conjunction with the tool, any one part of these or all parts of these. There is no such thing as “but using it” – for if the software “but [uses] it,” then the tool is merely part of a different tool, a tool no less unpatentable.
Dwell on these words and understand.
I have a better idea: DON’T “consider the following claims”
MM’s hypo isolated claims are not helpful to understanding anything, except MM’s personal bias.
You haven’t litigated, have you MM? Like judges, we don’t care one whit about you, and are not going to adopt your position simply because it is yours. You have to give us enough for us to get there “on our own”, using what you give us.
And what you DO give is tripe. Sorry, but it’s a vast waste of time, you’re just not that important or interesting. You are, however, typical.
Your starting points are just loaded with untenable assumptions, which would be fine if the ensuing process was nevertheless illuminating such that it would be then more understandable how the process would work when the assumptions were NOT made.
You never reach that point. Yours is a world of pure fantasy–and as far as fantasy goes, it’s just plain boring.
Surely you can see this, right? Why don’t you try arguing based on ACTUAL facts, rather than on your fantasy facts? Is it too difficult? I know you’re smart enough to be able to do it, but you apparently favor convenience over substance for some reason.
“yes, compared with you”
More pure BS – you know nothing of me, nothing to make such a statement with.
You wish to sound all “high and mighty” – you sound the fool. Your personal beliefs still taint all that you add to these threads.
Redefining terms, otherwise known as “spin,” avails you not. There are far more adept at using that tool. Your use is clumsy and unbecoming.
Ah, but those claims were invalidated, the ones that simply did the scientific method and no more. The one's that used the data for a new purpose pass 101, but do not pass 112 or are completely obvious, as the scientific method is as old as the hills.
This is where the claim gets dicey, do they not? Judge Moore, citing O'Reilly v. Morse and Wyeth v. Stone, particularly the latter case, said claims of this scope are directed, not to any application of a principle, but to the principle itself. As such, the claims cover the use of the scientific method for a particular application. Under the principles of the least Bilski, and the aforementioned cases from the dawn of the US patent system, the claims may just well be unpatentable under section
101.
If by “bias” you mean reflecting equally on the interests of i) those clients wanting to patent such stuff and ii) those clients asking for clearance opinions on such claims then, yes, compared with you, I’m biassed.
Ned to me the steps of the claim exemplify “the scientific method” as such: you do something, observe, measure and do some more, all in search of a theory to explain the observations. I still see no “application” like that in Diehr.
“Those of us with clients to advise are paid for our ability…”
I would imagine, then, MaxDrei, that you would be less apt to display the bias that you surely do have.
Your comments are drenched in bias and if you think that you really don’t have any, then you are doing a very grave diservice to your clients because your predictions will be as tainted as your comments are here.
The whole Rader/symptom-disease angle was discussed three days ago. All of your comments shill to a very predictable mindset, regardless of which way the wind blows (meaning that your statement above is pure BS).
Max, if the science is correct, immunization according to one schedule vs. another for any vaccine will lower the risk of getting certain diseases later in life. I think, on the whole, this is enough application to pass the 101 muster.
However, there may be problems with the scope of the claims as all three judges seem to think is the real problem here. I think that is a 112 problem.
anon, I think most of use would agree that any software that causes the machine to function differently as a machine to the user is probably patentable. I think Judge Rich saw the Benson algorithm that way, but he did not clearly limit his opinions in Musgrave or in Benson to software that caused the machine to function differently as a machine, and not simply use the machine as a tool. In discussions with MaxDrei on this topic, I believe the Euros see it this way too.
So, if the object of the software is to improve the tool, it is patentable. If the tool is recited simply as a tool, the software is not improving the tool, but using it.
There lies the difference.
No bias with me. Sorry. But, as Simon and Garfunkel once observed: A man hears what he wants to hear…..and disregards the rest.
Those of us with clients to advise are paid for our ability to predict which way the wind will blow, and which way the courts will jump, next case up.
Professionals would be well advised not to “disregard the rest” but instead to listen carefully, and mull over what’s coming up next.
I'm sorry, anon, I asked a question because I genuinely do not know the answer. If you would be so kind as to help me, please do.
Just how did Diehr cabin Benson?
“is he attacking the syptom rather than the disease”
The answer is no – he is attacking the use of 101, the use of the coarse filter for philosophical means.
It is only the shilling that is trying to redefine the symptom and the disease here. Re-read the decision without importing the bias.
When Rader attacks the proliferation of complaints under 35 USC 101, is he attacking the syptom rather than the disease. The disease is the one Moore detects, of inventors who notice a correlation in science then putting that correlation forward as their claim 1.
“In my country, the law evolves, partly as a function of the revocation and passage of new legislation, partly as a function of judicial intepretation of that legislation and (effectively) partly as function of the community’s/government’s willingness to enforce the laws.”
An interesting comment, but one that does not touch or change the comment provided of:
“without worrying too much about minor technicalities like what the law happens to be.”
It would be helpful in these debates if acknowledgement of what the current law actually happens to be would be freely, openly and steadfastly admitted, and the possible changes to that current state be posited as what they are – proposed changes.
It would also be helpful to leave out the _xx_’ing rhetoric and political and semi-political rants, but I think I would be asking too much of some people and the number of comments on these strings would easily be halved.
The conflation of desired state of law and actual state of law, mixed with the vitriol of partisan comments simply is not effective in advancing the legal positions and clean crisp critical thinking would be much more effective. When one screens out the vitriol and removes the conclusory “I want” types of reasoning, there is just no substance left.
If you choose to continue to push your agenda so, then so be it. But don’t be surprised when you cannot seem to convince anyone and you end up repeating the same argument thousands of times over a number of years.
Who can help me with the Diehr word “application” and its application to the facts of Classen?
I can see how a scientific equation can be applied to a technological process of curing rubber.
But here, we have the notion that immunisation schedules influence immunisation risk and immunisation effectiveness.
I don’t yet see any “application” of maths or science to technology.
Stink/Smells,
I like the circuits analogy.
The arrangement of the exact same components makes a critical difference. It is easy to see from this that the word “configured” in the software/computer debate pertains to the very real physical differences between an unprogrammed and a programmed computer.
I think that parsing out the results of the difference from the programming itself is just too much a reach and ignores the plain fact that the computer has been changed from the first state of being unprogrammed to the second state of being programmed. Look at the very language you use: “software that actually makes the machine function like a different machine should be considered patent-eligible.” The point is Ned, that all programming software is software that actually makes the machine function like a different machine. That IS what programming software does. I think unwittingly, you have just conceded the entire debate.
If I take a massive amount of circuits and reconfigure a particular number and placement of resistors in the “in series” and “in parallel” configurations, their can be no doubt that I have a different machine after my reconfiguration than I do before my reconfiguration, even though I am working with the same amount of materials “in the box.”
I also like your correction from “designed to operate on instructions” to “designed to change.” You have alighted on the aspect of computers that makes them such special machines. The plain fact is that a computer is a machine built to be changed into a different machine through programming. There simply is no way for the initial machine to be said to capture the inventions of others that come later – the inventions of others must be given credit to those others that actually invent those later changes. In a very real sense, the computer allows the common programmer to become a god in the virtual world.
Ned, I understand your limitation of an improvement of machine qua machine, but you are parsing the patent law to be something that it is not. Any tool that is improved is patent eligible. Programming that provides a new use where that use simply was not possible pre-programming evidences a change in the tool that is patent eligible. You seem to be conflating the “built to be changed” aspect of computers with some type of “all such changes are inherent” mentality, and thus you are robbing later inventors of their rightful reward by denigrating the improvements by your classification of those improvments as “mere use.” You are denying the basic truth that software is a component. A component of later invention that does in fact reconfigure a tool designed to be changed.
Such would be equivalent in other art fields to limit patent eligibility of new molecules to only those new molecules that are created with somehow improved molecular bonding (with the provisio that all basic atoms are known and old and that standard molecular bonding is known and old).SUch analogies are of admitted limited use, but the use of pointing out that the hands of man creates from the given building blocks is the one that should be reasoned from the analogy. Interchange the building blocks and interchange the creative mechanism and you can see the same logic applied simply falters.
I think that you are fighting what Judge Rich had to say purely on principle and you simply are refusing to allow anything in those principles you resist to stand or fall based on their own merit.
Ned,
Not to be pedantic, but you have not answered AI’s Dear Diehrist’s question.
The Supreme Court quote is “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”
The Supreme Court quote is not “Finally, in Diehr, the Court established a limitation on the principles articulated in Flook.”
Your answer here only addresses Flook.
What is your answer regarding the inclusion of Benson in the direct quote from the Supreme Court that Diehr limits Benson? This is a legitimate question. I hope that you are not suggesting the Bilski quote is a typo.
“sciences” in quotes – it has a distinct meaning. As used in the constitution is not how the term is used today.
Ironically, “useful arts” has also been argued to have a distinct meaning, and while that may be true, “useful arts” has been determined not to be “cabined” to the 18th century list.
Tip of the hat to A New Light’s “crossing over” post.
Malcolm, I see you have crossed swords with IANAE on the issue of whether a mental step being the final step in a process is patent-eligible regardless of whether the data gathering steps define a novel process. He seems to agree with my position that such a process is not patent eligible because it actually does not result in anything physical or otherwise within the MOT. At this point, I think you continue to disagree with this proposition and continue to insist that the data-gathering steps must be old.
If your position is correct, one could not address the patent-eligibility of such a claim until one had conducted a novelty test to determine whether the data-gathering steps were new or obvious. If did they were determined to be old, they would be declared anticipated or obvious. The mental step would be given no weight.
But now you have to explain why the mental step would be given no weight, because mental steps as part of processes can have functional relationships to the process that can make the process new and nonobvious. That is the exact holding in Diamond v. Diehr.
In the final analysis, the very reason that you give no weight to the final step in a novelty analysis is the same reason why the claim with that final mental step is unpatentable under section 101: It does not modify the process. Rather, the process exists to provide data for the mental step.
While I will agree with you that the novelty and obviousness analysis could be conducted the way you suggest, I think the analysis that I propose is consistent with both Benson and Diehr; and the CCPA, at least at one time, agreed with it. See, In re Christensen.
The “sciences” are covered in copyright law.
Thanks for pointing that out. I thought an Actual Inventor could get a patent on a scientific invention also.
MaxDrei, I couldn’t agree with you more about judge Rader’s “rant.” You can see that he is seriously deluded in his thinking, and is acting as he is, in regards to §101, for policy reasons that not only are contrary to fact, but illogical even considering. He long ago drank the Giles Sutherland Rich Kool-Aid, and has long ago expressed his views that Benson is illogical and has to be cabined or ignored. He is one of the judges who said that the Diehr cabined Benson. He was also was among the few Federal Circuit judges who refused to go along with the majority on the “machine or transformation” test. It is quite clear, that he simply does not get it. He does not and will not acknowledge, in the same manner that Rich never acknowledged, the actual holding in Benson. He pretends not to understand the case and refuses to apply it and it obviously wish it went away as if it were a nightmare.
In his dissent in Bilski, he never explained why the claims in that case where “abstract.” Even though the Supreme Court followed his lead in the Bilski case, they too did not provide an explanation as to why the claims were abstract. However, the Supreme Court in Benson did explain why the claims in that case were abstract. They further explained that claims could employ an abstract idea and still be patentable if the were applied to a practical end use. It’s that simple. They further explained that the use “had” to be physical, and the case also set forth the machine or transformation test, which was later adopted by Diehr.
So what is Rader’s problem?
Diehrist, I would simply like to know what it is that you and actual inventor think Diehr did the cabin Benson? IANAE and I, probably among others, have carefully explained to you why we think that Diehr followed Benson. I think Diehr affected Flook, which could be misinterpreted to require a point of novelty analysis. But I don't think Benson said anything of the kind. Benson said that abstract ideas were not patentable subject matter. They deemed a mathematical algorithm as abstract ideas because they could be performed entirely by human using pen and paper. They said that the calculation of the algorithm on a computer did not change the essence of what was being claimed, the abstract algorithm, because the computer was simply in this context a
tool.
They said that in order to be patentable, that an abstract idea (or law nature, etc.) had to be reduced to a practical application, i.e. something that had a useful end. But that is exactly what Diehr said as well was patent-eligible.
Where then, did Diehr cabin Benson?
stinks, the only thing in your diatribe that made any sense whatsoever is that software was equivalent to firmware and that firmware is equivalent to hardware. You realize that this is somewhat bootstrapping to take this true statement and extend it to program software in general. Now I will grant you that operating system software is a gray area. To the user of the machine, the operating system is somewhat equivalent to instructions. Rather than use machine instructions to make I/O requests, one can use operating system instructions such as call commands to request the operating system to handle I/O.
Now I will grant you, that any such firmware or operating system software that actually makes the machine function like a different machine should be considered patent-eligible. However, if the software has nothing to do with improving the operation of the machine qua machine, then we have an entirely different kettle of fish. In this regard that the computer is simply a tool. The software itself does nothing to improve or to modify the tool. It simply uses the tool.
So we stop talking about generalities and start talking about realities, I think we could talk. But as a general matter, a programmed computer is quite a bit different than a computer that is made into a new computer via firmware or
operating system software.
Ned,
Will you affirmatively state that Diehr did cabin Benson before the good and honest Actual Inventor ventures forht with what he believe the answer to your question might be?
I want to see in black and white that you acknowledge what you have posted time and again not to be true AS true.
Perhaps before the good and honest Actual Inventor answers your question, you could explain what you think the sacred words “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”
! ! ! Bilski 14 ! ! !
For more than a year now I have proclaimed this message. Procalimed without subterfuge, without deceit, and only with the plain and simple message of
! ! ! Bilski 14 ! ! !
And yet, never, not once have you acknowledged the TRUTH of these words.
What say you? Are you ready to be honest?
What in all your honesty, do YOU think these words mean?
MM–
What you said exactly was:
“If the lawnmower is new and non-obvious, it’s eligible under 101. No questions asked. But if the lawnmower is not new and non-obvious, then how can the patent be granted without effectively patenting the mental process? The answer is: it can’t be done.”
I first demonstrated your initial conclusion to have been untrue.
When asked to assume your conclusion, I played along nicely anyway, then demonstrated your second conclusion to have been untrue.
Still playing nicely, when asked to assume both your first and second conclusions, I played along nicely anyway, then demonstrated that the ultimate outcome of your game was an unenforceable valid patent, and showed you why.
Your response has been, as ever, to ask that deficiencies in your formulation be ignored, every time one is pointed out. It gets to the point where your ultimate point has non merit whatsoever, especially when pointed out that it is irrelevant even if true.
What was the point of this? It was you who provided the hypo, and I played within your rules. As I said, meaningful analysis of the claim is impossible without an assertion of utility. If you don’t like the one I found, you can give us another one, and I will proceed as before. It is a non-trivial step that cannot be ignored for your convenience.
And I make no assumptions about the rational relation requirement–it is right there in the credibility requirement of utility.
As far as your so-called “analysis” goes, I have yet to see one. You don’t “reach” any result, rather you simply “state” a belief.
Weak stuff, for some reason I expected more from you. Want to keep playing?
Ned,
You are, with all due politeness, simply wrong. No matter how many times you close your eyes, stick your fingers in your ears and chant nah-nah-nah, your mere proclaimations do not change the facts, nor do they change the law.
“the computer does not change physically. It is designed to operate on instructions. The execution of instructions does not change the machine in any sense whatsoever. To say the opposite is to dwell in some fantasy world, and that is a fact”
Physically, factually and legally, you are wrong.
We can go back and forth this way, but the courts and physicists agree with me and I know because I am a physicist. I notice you do not touch the simple circuit analogy – that is MOST telling. I know because I do not bend court readings against what they actually say. The pages here are replete with you caught with your proverbial pants down around your ankles.
Likewise, with your “mendatious of advocate,” you have shown the same that you would charge others. It is widely known that you play lose with truth and honesty because you feel that these blog posts are mere opinion. Your word is driven by your philosophy and there is no truth to it on its own. Eliminate the advocacy of your position and you have nothing.
I still have the facts. I still have the Law.
The truth of the matter is that the computer is designed to change. That is its greatest advantage. What ALL those changes actually are, are not known when the computer is first made, otherwise, the changes would not be changes. You still need to recognize that software is equivalent to firmware is equivalent to hardware, and upgrading any of these results in a changed machine.
Stinks, the computer does not change physically. It is designed to operate on instructions. The execution of instructions does not change the machine in any sense whatsoever. To say the opposite is to dwell in some fantasy world, and that is a fact. Not a single person on planet earth not compromised by interest would say any different. Only the most mendatious of advocate could seriously argue the propositon, and Rich was all of that. You only have to read his concurring opinions in In re Christensen to get a hint that he was anything but thrilled with Benson. I have never seen such grousing from a judge before, until I began to read Rader's opinions on the same topic. Rich's ego was bruised and it showed. He vowed to get even, and he did with Alappat and
State Street. But what did those cases do? They allowed the issuance of raw computer program and business method patents that have all but brought down the patent system. Congress was appalled. Business was appalled. The patent bar was thrilled however, as they saw their wallets fatten with the with volumes of money now being spent to mulct the engines of commerce with business method patents…
You may think you are right, but I doubt it. I really believe that you know you are completely and utterly wrong that a computer is a new machine just because its programming changes. But, let that be.
I will not decide this issue. You will not decide the issue. The supreme court will. Until then, we really need to consider asking
Rader to step asside. I can only hope his fellows on the Federal Circuit keep him in a box, locked up and without a key.
I'm sorry AI, but just how did Diehr cabin Benson?
Now who is the “fundamentalist” ?
Malcolm unlike you I don’t claim to be a patent attorney. I am a mere Actual Inventor. I only know what the Courts says. And I ready in Bilski, page 14, the following:
“”Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.””
Patent eligibility does not rest on some notion of point of novelty.
“It certainly does and you’re failure to acknowledge this is a sign of your blindness and/or willingness to dissemble.”
Malcolm, there is a fundamental difference between a ” point” of novelty in a set of claims, and the novelty of the claim as a whole.
The Diehr Court instructed us to read the claims as a whole. If one or more steps are novel then the invention is novel and passes 102.
No Supreme Court case has reversed that ruling to date.
It is you who shows a willingness to dissemble by ignoring this fact and repeating that it’s okay to ignore mental and/or old steps when determining atent eligibility.
In my country, the law evolves, partly as a function of the revocation and passage of new legislation, partly as a function of judicial intepretation of that legislation and (effectively) partly as function of the community’s/government’s willingness to enforce the laws.
See, e.g.,
Thousands of unmarried couples who are living together in Florida may be surprised to learn that they are actually breaking the law. Under outdated and rarely enforced state laws that have been on the books since the late 1800s, “cohabitation” is actually a second-degree misdemeanor, punishable by $500 or up to 60 days in jail. The same penalty applies to adultery …
The Sun Sentinel reports that one Florida Republican is commendably trying to repeal these irrelevant laws — only to be met with mass opposition from his fellow Republicans including Gov. Rick Scott (R).
What a bunch of buffoons. The pxtxnt txxbxxxxrs who defend claims like Classen’s and Prometheus’ are no different. “Who cares that people practicing the prior art are turned into literal infringers just because they learning something? It’s not about right and wrong. It’s about following the teachings of St. Rich and reading Article 1, Section 8 of the Constitution and 35 USC 101 in a strict vacuum, exactly as the founders intended!!!!! Subject to the reasonable needs of whoever owns Disney’s intellectual property, of course.”
“without worrying too much about minor technicalities like what the law happens to be.”
– IANAE
fits to Malcolm’s comments.
IANAE, Diehr was a method involving the use of a rubber-curing machine that didn’t previously exist. It raises different issues. They are related issues, to be sure, but it’s not the issue we’re discussing. At least, it’s not the issue I’m discussing. 😉
MM: “A practioner of the prior art suddenly becomes an infringer because he/she has learned something.”
IANAE: No he doesn’t. Not unless he changes what he’s doing based on what he learned, as recited in the claim.
Again, the way many of these claims are written (including the one in my example), there is no requirement — at least not one recited in the claim — that anything be done “differently” relative to what would have been done without the new knowledge. It is You Peeked! infringement.
If what he was doing before is correlated with the mental step in the same way, the claim should be anticipated, at least inherently.
I absolutely agree that this *should* be the case, even where the accused infringer admits that he/she is using the new facts to determine his/her subsequent steps. If this is the result (per se anticipation of a claims where the point of novelty lies in a mental step, regardless of what comes before or after) that comes out of Classen and/or Prometheus on remand after who-knows-how-many-years, I am all for it. It will offend those who will see the rule as offending the requirement for anticipation that all claim limitations (regardless of whether they are mental or transformative) be found in the prior art but … fxxx ’em.
Given that the real problem is ultimately a 101 eligibility problem (effectively patenting a mental step) and it’s right in front of the court’s faces, I remain baffled as to why they don’t acknowledge the issue in plain terms. Judge Moore’s dissent in Classen came closest so far (Breyer’s dissent in LabCorp. also coming close). I’m not expecting that they decide the anticipation issue as a matter of law without all the facts, but it would seem worthwhile to acknowledge that the issue exists and should be considered on remand.
Essentially what needs to be done is take Judge Rich’s bxllshxrt in Musgrave by the horns and put it to sleep.
link to youtube.com
MM:: “That’s only true if you ignore the intervening mental step.”
What do you mean? Diehr had a non-statutory calculation step, and then a transformative step in response.
MM: “A practioner of the prior art suddenly becomes an infringer because he/she has learned something.”
No he doesn’t. Not unless he changes what he’s doing based on what he learned, as recited in the claim. If what he was doing before is correlated with the mental step in the same way, the claim should be anticipated, at least inherently.
That’s the whole point of Diehr. Everybody who cured rubber in the prior art opened the mold at some point. But Diehr’s claim was still good because he added the calculation step and correlated the opening step to the calculation.
It’s not “You Peeked! infringement” because you still have to change what you’re doing to infringe, even after you’ve read the spec. You don’t have to un-learn what you’ve learned to freely get on with your prior art life. And you can tell whether the act infringes or not, by whether the final transformative step correlates to the result of the mental step.
MM Now I have a statutory act after the mental step. Consider the case where the prior art includes practioners obtaining the same data using the same first transformative step and carrying out the second statutory act in response to the data (but for a different underlying reason than recited in the claim). What then?
IANAE That’s basically Diehr’s claim. If practitioners of the prior art were carrying out step 2 in response to the same data, the claim is anticipated and they have no liability.
That’s only true if you ignore the intervening mental step.
If not, what’s the problem with the claim?
The problem is the same problem I’ve been pointing out: You Peeked! infringement. A practioner of the prior art suddenly becomes an infringer because he/she has learned something. Patentees like Classen and Prometheus WILL SUE YOU once they have some evidence that you are aware of their “discovery”. How do you prove that you aren’t taking into account the facts that are “owned” by the patentee, when your behavior is exactly the behavior that would be predicted if you were taking those facts into account? This is the debacle that results from these sorts of claims.
fix italics tag
Lots of that going on – from both sides of the philosophical battle,
Fair enough, but I maintain my long-held view that Prometheus was a Flook, though the Circuit held their claims Diehr.
“without worrying too much about minor technicalities like what the law happens to be.”
Lots of that going on – from both sides of the philosophical battle, from the Ivory Towers to the Boardrooms to the manufacturing floor and engineering offices to the courtrooms, even (especially) to the comment sections of patent blogs.
Actual Inventor,
The “sciences” are covered in copyright law.
This does not detract from your point about processes being covered under patent law, but you might not want to conflate the copyright realm with the patent realm. The “useful arts” is plenty big enough to include the non-technical without muddying the waters with the errant inclusion of “science.”
First, if Benson, Flook, Diehr and Bilsi are so “clear” about that, then how in hxxx did Prometheus come out the way it did?
I’m pretty sure I pointed out in the Prometheus thread at the time that the Prometheus court was trying very hard to uphold those claims, without worrying too much about minor technicalities like what the law happens to be.
Now I have a statutory act after the mental step. Consider the case where the prior art includes practioners obtaining the same data using the same first transformative step and carrying out the second statutory act in response to the data (but for a different underlying reason than recited in the claim). What then?
That’s basically Diehr’s claim. If practitioners of the prior art were carrying out step 2 in response to the same data, the claim is anticipated and they have no liability. If not, what’s the problem with the claim?
AI,
Ned very much realizes that he depends on words of dissent.
Several people have pointed out that WHERE the words are coming from and WHO is saying those words are crtical items and that it is important to keep track of these throughout the several Supreme Court cases precisely because those cases are not a linear development of what the law is today.
Plainly put, there has been a back and forth battle. Ned is aware of this. Ned is not honest though, and has no compunction to misrepresent that actual battle in order to protray his philosophy in the “best light.” He has said so directly. Even his “pals” Malcolm and 6 get exasperated with Ned for Ned’s constant slippages and corrections and re-corrections.
Ned does not care. Ned knows and does not care. You say that he cannot refute a fact? Sure he can. Does this mean that he is wrong when he does so? Yes it does. Ned does not care. Ned knows and does not care. Sure Ned will wear his heart on his sleeve and portray indignation and bray at the rudeness of others, all the while bending law and facts every which way, because, after all, this is only opinions here on this mere blog page, and Ned does not care. Ned believes what Ned wants to believe. If the law is actually different than that, then by all that is holy, the law must be wrong. If the facts are actually different than that, then the situation surrounding those facts must be “zoomed in” with a magic microscope so as to not see those offending facts. Ned is quick to tell others that they are too full of themselves, but the one that is too full of himself is Ned. There is a reason why lying and deception are fundamental violations of the Kantian world. Ned knows, but Ned does not care.
Ed: italics tag fixed.
“Your turn”
Let’s start by recognizing that analogies have limits, and your recognized Kantian tendency to go well beyond the reasonable limits, Ned.
Then let’s expose the dichotomies in the strawman you present.
For example, you say that BOTH “reader itself does not change” and “causes the reader to function differently.” Which is it? Functioning differently can be change. For a machine such as a computer, when you program the computer, you do change the machine. In the card reader “magic microscope” your analogy fails because you have zoomed in on a piece of the computer – ask yourself why and how the function of a static piece of equipment was changed – the answer is that THE MACHINE was changed. You either have something new or you do not. You either have the new ability of the new machine or you have the same old machine.
There is a dichotomy in talking about machines in this manner. The concept is simple, but discipline is required to not veer off on tangeants of thought. It is very easy to allow anthromoporisms to sidetrack the PHILOSOPHICAL basis of a discussion. The best thing is to NOT use analogies if possible. You have a machine. You upgrade the machine. You have a new and improved machine. The upgrades can come in the form of new and added parts, or it can come in the form of new and changed configuration of existing parts. The fact that a computer’s “toybin” of parts is provided with the machine does not change the fact that the machine is upgraded after programming.
It is as simple as that.
What you gloss over in the analogy is the same fact you gloss over in reality – a change does happen. You must remind yourself (in your analogies) that software is equivalent to firmware is equivalent to hardware. Think about electronic cicuits. You have all the materials for several circuits in a box. Do you have the same circuit – even having all the same materials – when you CONFIGURE the circuits in series as you do when you CONFIGURE the circuits in parrallel? With computers -the “contents of its memory” analogy falls short to what is actually going on. The anthromoporphism of a dog or person fails on this point, because a differently wired machine – wired by virtual circuits – is still a different machine.
You are simply incorrect in your base premise about programmed computers. The computer DOES change. That is the LAW. That is the FACT. How you CHOOSE to see it really makes no difference to the actuality. You simply need to learn to see it in the way it is.
It really is as simple as that.
Hello Ned:
Don’t know if you realized this but Stevens words are from the dissent in Diehr. They have no force of law. The Court clearly cabined Benson and Flook. Thats a fact you can’t refute.
INANE “.Good news for Diehr, who claimed actually making something. Bad news for Benson, Flook, and Bilski. ”
That may apply for the Arts, but what about the sciences? Science involves processes. There is a reason processes by themselves are patentable under the constitution and therefore the statute.
Processes are not exclusively about a finished product made by man. Such thinking would take us back to the iron age. But that would be just fine with your arcane, ” if ya can’t drop it on your foot, its not patentable” mentality.
Watch in merryment as they chase their tales and start discussing this amongst themselves for they cannot convince anyone but themselves.
The Truth has been laid out for all to see – Stevens dreams and legacies, his mentor and idol’s Benson, his Flook, his DISSENT in Diehr and Bilski are perfectly clear which side has won the 101 Debate. It is not the no-thinking allowed side. The Words are stark and clear:
! ! ! Bilski 14 ! ! !
Read and weap all you perverters of patent dreams
= you might care to note the holding in Bilski, decided later even than Diehr, to the effect that Benson and Flook are still good law. That means any claims that look like the ones at issue in Benson or Flook are just as non-statutory as ever.”
Only that’s not what it meant, nor what was said, ou written and ruled in Bilski. However what was actually written was clear, consise, powerful and the law.
“Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.” Bilski 14.
POW!
As far as Benson has been modified (cabined, if you will), the Court has announced its agreement on such.
That would be Diehr, right?
Right. The PTO declared Diehrs claims non statutory based on Benson. But the Courts reversed.
Evidence: “The patent examiner rejected the respondents’ claims on the sole ground that they were drawn to nonstatutory subject matter under 35 U.S.C. §101.5 He determined that those <450 U.S. 180> steps in respondents’ claims that are carried out by a computer under control of a stored program constituted nonstatutory subject matter under this Court’s decision in Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). The remaining steps — installing rubber in the press and the subsequent closing of the <450 U.S. 181> press — were “conventional in nature and cannot be the basis of patentability.” The examiner concluded that respondents’ claims defined and sought protection of a computer program for operating a rubber molding press.
The Patent and Trademark Office Board of Appeals agreed with the examiner, but the Court of Customs and Patent Appeals reversed. The court noted that a claim drawn to subject matter otherwise statutory <209 USPQ 6> does not become nonstatutory because a computer is involved. The respondents claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products.” ( “Diamond, Commissioner of Patents and Trademarks v. Diehr and Lutton United States Supreme Court
March 3,1981 450 U.S. 175, 209 USPQ 1”)
So you see, if Benson had NOT be cabined Diehr would have lost his case.
IANAE: The one that claimed the actual physical machine for curing actual rubber that was quite obviously statutory all along?
Wrong. Diehr claimed a process. It was a process claim. Diehr did not claim a machine . In was not a machine claim.
Evidence: “The claimed invention is a process for molding raw, uncured synthetic rubber into cured precision products.( “Diamond, Commissioner of Patents and Trademarks v. Diehr and Lutton United States Supreme Court
March 3,1981 450 U.S. 175, 209 USPQ 1”)
Diehr’s process just so happens to operate on a machine, which did not prevent Dierhr’s claim from being patent eligible. Nor did said machine in effect make Diehr’s claims patent eligible, as would have been the case under the the ill fated CAFC MOT Test. In the minds of the majority members of the Supreme Court of the United States, the machine(s) in Diehrs claim had nothing to do with it’s eligibility for patentabilty. They do not even mention the machine in the concluding thoughts.
Evidence:”We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula. … Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process <450 U.S. 193> for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals. ” ( “Diamond, Commissioner of Patents and Trademarks v. Diehr and Lutton United States Supreme Court
March 3,1981 450 U.S. 175, 209 USPQ 1”)
POOF!
There goes your inane idea of a MOT test ruling in Diehr! You too Nedo~
Now repeat after me IANAE and Nedo.
“”ACTUAL INVENTORS WIN. THEY ALWAYS WIN::
Sounds an awful lot like the magic microscope – break the computer down into small enough pieces -a reader, a specific part of the memory and proclaim – See! that part doesn’t change!
Four little words:
Claims as a whole.
The problem you have is that your “so viewed” is not a valid “so viewed” – BY LAW.
“by a perpetual motion machine”
Only if that machine was powered by STRAW.
Try harder you academic.