USPTO Sends Memo to Examiners Regarding Bilski v. Kappos

By Gene Quinn
June 28, 2010

I have just received a copy of the United States Patent and Trademark Office’s first Memorandum to the Patent Examining Corps regarding the United States Supreme Court’s decision earlier today in Bilski v. Kappos.  The memo was authored by Robert W. Bahr, Acting Associate Commissioner for Patent Examination Policy.  This is the first communication to Patent Examiners, telling them what they should know about the decision and how to handle the thorny issues that will no doubt be presenting themselves.  The memo concludes by explaining the the “USPTO is reviewing the decision in Bilski and will be developing further guidance on patentable subject matter eligibility under 35 U.S.C. § 101.”  Ultimately, the USPTO is going to need to issue Bilski Guidelines, but that cannot be expected on day one right after the Supreme Court essentially eviscerated the machine or transformation test as has been used by Patent Examiners since the Fall of 2008 when the Federal Circuit issued its own decision in Bilski.

The memo sent to Patent Examiners briefly goes through the Supreme Court’s decision and wastes no time in getting to what will be music to the ears of patent attorneys and agents:

Significantly, the Supreme Court also indicated that a business method is, at least in some circumstances, eligible for patenting under section 101.

The memo goes on to explain:

Examiners should continue to examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under section 101.  If a claimed method meets the machine-or-transformation test, the method is likely patent-eligible under section 101 unless there is a clear indication that the method is directed to an abstract idea.  If a claimed method does not meet the machine-or-transformation test, the examiner should reject the claim under section 101 unless there is a clear indication that the method is not directed to an abstract idea.  If a claim is rejected under section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.

All things considered, this seems to be an essentially fair way to proceed, at least for the time being.  I, however, disagree about whether those inventions that satisfy the machine-or-transformation test are patentable subject matter.  According to this memo they are “likely patent-eligible.”  I think any fair reading of the Bilski v. Kappos opinions would find that if a claimed invention satisfies the machine-or-transformation test then it is, in fact, patentable subject matter.

To be honest, I am likely splitting hair here, because taken together in its entirety it seems the “likely patent-eligible” could be read to mean “is patent eligible unless there is a clear indication that the method is directed to an abstract idea.”  The trouble I am having is I cannot think of a situation where the machine-or-transformation test could be satisfied and an intellectually honest conclusion could be reached that the claimed invention is directed to an abstract idea.

Having said all of this, what lies in front of the United States Patent Office is an unenviable task of figuring out what the Supreme Court left unanswered, which is exactly what they had to do in KSR v. Teleflex, which lead to the compiling of comprehensive, and complicated, Obviousness Guidelines.

The difficulty with this Supreme Court decision, and the way in which they explain “figure it out PTO and lower courts,” is that they fail to appreciate the dreadful task of providing bright line guidelines to 6,000 plus Patent Examiners who are not lawyers and who have varying degrees of experience.  In order for the Patent Office to manage its docket and its workforce there needs to be some kind of guidance given, and despite what the Supreme Court thinks that cannot be to tell the Examining Corps to take it on a case-by-case basis.

Who knows what will happen, but this early announcement form the USPTO seems helpful.  They recognize that business methods are patentable unless they represent abstract ideas, as Bilski was determined to encompass.  It is also recognized that satisfying the machine-or-transformation test is heavy evidence of satisfying the requirements of 101, and an interim process is put in place whereby the burden will be shifted to the applicant to demonstrate that the claimed invention is not simply drawn to an abstract idea if a machine-or-transformation rejection is given.

This seems reasonable to me, at least for now and until we can all digest the case better and figure out what the Supreme Court (1) said; and (2) what they meant, which are almost certainly two different things.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 37 Comments comments.

  1. patent leather June 28, 2010 5:59 pm

    “The trouble I am having is I cannot think of a situation where the machine-or-transformation test could be satisfied and an intellectually honest conclusion could be reached that the claimed invention is directed to an abstract idea.”

    How about a claim reciting a method on to how to teach a class while keeping your students awake, with the last element of the claim being, “recording the above lecture using a blu-ray player.” Sure, the last element is probably insignificant post-solution activity, but technically it would pass the MoT test.

  2. Andrew Cole June 28, 2010 6:15 pm

    “Ultimately, the USPTO is going to need to issue Bilski Guidelines, but that cannot be expected on day one right after the Supreme Court essentially eviscerated the machine or transformation test ”

    I would hardly call it eviscerated. They all seem to have a high opinion of the test, but they just want to play it a bit safer than to allow it to be the only test. It’s not like they ever really condemned it, and referred to it as a useful tool and clue.

  3. Blind Dogma June 28, 2010 6:42 pm

    On first glance, what was eviscerated was the “THE” aspect of clue-ness. This was expressly shot down. In a very real sense, MOT can show eligibility, but its power – on its own – to show ineligibility has been severely damaged (perhaps irreparably). I will need to drink this in before I can fully stand behind my thoughts – this was amazingly close for such diametric viewpoints.

    On second glance, statutory construction was a major winner – Section 273 had to have meaning, and just could not be hand-waived away.

  4. Gene Quinn June 28, 2010 7:05 pm

    Patent Leather-

    Excellent example.

    I am not sure that does pass the Machine or Transformation (MoT) test. I know it would not pass the MoT test as it was being interpreted at the Patent Office or in the District Courts. Under the CAFC Bilski interpretation of MoT, “the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility.”

    It seems to me that the way the USPTO has interpreted MoT and the way many District Courts have interpreted MoT, the method of teaching using a blu-ray player would not satisfy MoT because it does not impose a meaningful limitation on the claims scope. In other words, the gist of the claim has nothing to do with the blu-ray player and everything to do with the process, so the blu-ray play, while physical, would not import enough to satisfy the MoT test.

    -Gene

  5. Gene Quinn June 28, 2010 7:11 pm

    BD-

    The more I read and discuss the more I think this was not diametrically opposite viewpoints. Everyone agrees that MoT cannot be the only test, so that is 9-0 I think. Everyone agreed that Bilski was an abstract idea (probably better to all it a concept as is done at least once in the majority opinion) so another 9-0. Where the disagreement comes in is with respect to whether business methods are patentable subject matter at all ever. It seems 5-4 that they are patentable subject matter so long as they do not simple embody abstract ideas. It also seems that at least 8 Justices (not including Scalia) would have agreed that State Street was a patentable innovation, although the expansive silliness of State Street was not endorsed. Footnote 40 is critical in my reading. Stevens seems OK with business method patents as long as there is some other core patentable subject matter. He says his decision does not address software, but State Street did deal with software. So it seems 4 (Kennedy, Roberts, Alito and Thomas) say yes to patenting business methods generally; 4 (Stevens, Sotomayor, Ginsberg and Breyer) say not to patenting disembodied business methods, but would not render an otherwise patentable invention unpatentable because it relates to a business process. Taken together with the common ordinary meaning of “process” (5 Justices there) it seems biotech is a big winner, and software is as well. Business methods seems a bigger winner than most could have imagined as well.

    Thoughts folks?

    -Gene

  6. Gene Quinn June 28, 2010 7:14 pm

    Andrew-

    I say “eviscerated” because from the USPTO perspective it is gone. They have been using MoT as a blanket 101 rejection. Now all applicants have to do is say the Supreme Court says that even if MoT is not satisfied the invention can be patentable subject matter. So the MoT test is kept in the exact opposite formulation than was previously. If you satisfy MoT then you have patentable subject matter. If you don’t you still may as long as it is not an abstract idea. So this puts a HUGE monkey wrench into the USPTO way to handle 101 under the CAFC Bilski test, and gives them no guidance on what they should do.

    So it really does eviscerate the test insofar as the Examining Corps is concerned. It can no longer legitimately be leveled and the silver bullet rejection that cannot be overcome by the applicant.

    -Gene

  7. Andrew Cole June 28, 2010 8:05 pm

    -Gene

    As far as MoT being eviscerated, point taken.

    As far as your other post, I was getting some strong feelings that even though they let business method patents live for another day, it wasn’t because they cared all that much. Stevens seemed to go pretty far out of his way to advance the argument that the word process as defined in 100(b) was not only inadequate for its lack of clarity, but that he doesn’t think business methods should be considered “processes” for the sake of 101, and that the only reason they didn’t categorically exclude business methods was because they felt they had no congressional warrant to do so. I understand what you are saying about allowing business method patents if they can somehow pass the other requirements, but I’m not to sure he and some of the other justices believe they exist.

    Maybe because I am not a lawyer (despite what some people might think) and am able to read between the lines correctly that I am missing something?

    Andrew

  8. patent leather June 28, 2010 8:40 pm

    I think in the aftermath of Bilski, the new test for patentable subject matter will be: 1) does the claim satisfy the MoT test (including the “meaningful limits” restriction)? If yes, then it is patentable. If not, then 2) is the claim an abstract idea? If no, then it is patentable, if yes, then not. I don’t see any authority for the Fed Circuit to develop a brand new test, so the Fed Circuit will continuously refine the “abstract idea” test as it decides more 101 cases. Can anyone articulate the “abstract idea” test in a few sentences?

    The Supreme Court lashes at the Fed Circuit when they don’t follow Supreme Court precedent, but the Supreme Court seems to continuously decline to leave clear precedent/instructions. In this case, I can only assume the justices could not reach a majority as to what the patentability test should be, which explains the long delay.

  9. Gene Quinn June 28, 2010 9:18 pm

    Andrew-

    You are struggling with what we all are.

    Don’t forget though that 5 Justices clearly wanted an ordinary meaning for “process,” so despite what Stevens wrote he and the others lost on that point. So don’t read anything into what Stevens says on that point. Process now encompasses business methods and software.

    The thing that makes this difficult is Scalia joining the Breyer concurring opinion. It seems Scalia reluctantly came to the conclusion that business methods are patentable subject matter, although he has a disdain for the wacky and ridiculous ones (see Fourth point in Breyer concurrence).

    If I had to guess I think Scalia was lamenting the fact that he had to accept at least some business methods, and even more upset that he couldn’t provide any guidance to get rid of the ridiculous business methods. Bilski was a horrible case for the CAFC to say what it said because it was so clearly going to be unpatentable subject matter. I would have said it was nothing more than a concept, which they did in once section at least, but they tried to pull over the well established “you can’t patent an abstract idea” blanket. So Bilski was not one of those crazy business methods where you teach a janitor how to clean using a vacuum cleaner, it was just not defined enough, or concrete enough, to be an invention at all.

    I wouldn’t put State Street to rest yet either. I think it will come back in modified form at the CAFC. A fair reading of the Bilski case is that all 9 Justices said it wasn’t patentable because it wasn’t an invention. But could you have patented the Bilski process? Yes if there was a “there” there, which there wasn’t.

    If a client came to me with the Bilski process I could get it patented, but it would be a very different application, which would be heavy on technology and processes that were tied to the technology and couldn’t be carried out disembodied from the technology.

    That is where the anti-software folks go wrong. They say software shouldn’t be patented because it could be carried out with pen and paper. That misses the point that the claims, and hence the invention, cannot be carried out on paper. So who cares if you could be done on paper. Go ahead. Waste your life doing a process over decades that could be done by a computer/software combo in seconds. The invention isn’t the paper method, it is the computer method. Bilski only really had a paper method, and that made it nothing more than an idea.

    The more I think about it the more I like the decision.

    Make sense?

    -Gene

  10. Gene Quinn June 28, 2010 9:23 pm

    Patent leather-

    Agreed.

    You ask: “Can anyone articulate the “abstract idea” test in a few sentences?”

    Sure… how about this tried and true approach… “I’ll know it when I see it.” Works (at least in theory) for obscenity.

    -Gene

  11. patent leather June 29, 2010 12:06 am

    Relying exclusively on the MoT test was another by-product of the John Doll era. Before the Federal Circuit even decided Bilski, I remember a memo was sent (I think by John Love but I’m not sure) instructing examiners how to apply the MoT test as the exclusive test. In my opinion it seemed to me to be on the Doll administration’s agenda to kill business method patents (the second set of eyes started in the business method unit and examiners in this unit became scared issuing allowances). Thus, the USPTO also felt (even before the Fed Circuit) that the MoT test was the only test (but we know how the USPTO lawyers are always correct).

    Since we don’t currently have a clear test the USPTO is going to have some discretion (at least until another Federal Circus decision) as to what to allow/reject. I trust/hope that Kappos & co. wont be abusing this discretion to reject worthy applications.

  12. Andrew Cole June 29, 2010 7:03 am

    -Gene

    I have to say that I really like the decision myself as well . They didn’t want to preclude the possibly that some business methods might be deserving of a patent, which wouldn’t pass MoT (which seems like wisdom to me), while at the same time acknowledging that a lot of nonsense could be passed off as a business method. I used to think they should just broaden the interpretation of MoT, but I think I understand why they opted for more test(s) instead. At the same time, Stevens made some very compelling arguments for why business method patents shouldn’t be allowed to go buck wild (like software patents already are), and I agree with that. The real problem is that discretion is now a large factor in determining what is prior art, and what is an abstract idea for business methods, and those are two of the biggest problems with software patents. I think all the classes of possible patentable subject matter that fall into those traps need reform in the way they are evaluated. I would like to see a second test developed that caters to those instead of just depending on “abstract idea”, like the Supremes did.

    Andrew

  13. IANAE June 29, 2010 9:11 am

    “Sure… how about this tried and true approach… “I’ll know it when I see it.” Works (at least in theory) for obscenity. ”

    Speaking of obscenity, I’ll reiterate what I posted on Patently-O, and respectfully disagree with your assessment that “[MOT is] ‘eviscerated’ because from the USPTO perspective it is gone.”

    Firstly, I note that it is still PTO policy to default to MOT per the memo you report above.

    Secondly, there is no alternative test for the patentability of claims that fall outside MOT. As we both independently observed, it comes down to “I know it when I see it”. Well, what if the examiner doesn’t see it? How are you to convince him that your claim is not abstract?

    All the old Bilski rejections will become MOT rejections coupled with a conclusory statement that the claimed invention is abstract, because most claims without a machine seem kind of abstract. Unless you can overcome MOT by argument or amendment, you’ll need another trip to the Supreme Court to get your claim allowed.

    Also, the Supremes didn’t even comment on the Circuit’s categorical (but scholarly) exclusion of computers from MOT. That means computer-implemented methods still have to be justified under the “I know it when I see it, and it doesn’t look abstract to me” test, which doesn’t admit of logical argument once the examiner has taken a contrary position.

  14. TINLA IANYL June 29, 2010 12:09 pm

    Gene,

    I agree that the SCOTUS Bilski decision never says that a claim that passes the MoT test might still fail the requirements of 101. However, I do think that a claim that passes MoT might be found 101 ineligible if it is blatantly drawn to to fine art or something similar that everyone agrees is not patentable subject matter. For example, consider a claim to a metal sculpture comprising an inoperative lawnmower and an inoperative toaster each welded to a substrate disposed beneath a sign bearing the phrase “non-utility.” Do you agree that this claim twice passes the MoT test as drawn to not one, but two particular machines? Do you agree that it does not meet the requirements of 101 because it is drawn to a abstract idea?

  15. TINLA IANYL June 29, 2010 12:58 pm

    If you will allow me to follow up, I think the closest the decision comes to saying that there might be some things that pass MoT and yet are abstract might be in Breyers Concurrence at pages 3 and 4, where he mentions some patents that were granted under the rule in State Street that were “ridiculous” or “absurd.” the examples given are:

    a method of training janitors to dust and vacuum using video displays;

    a system for toilet reservations; and

    a method of using color coded bracelets to designate dating status in order to limit the embarrassment of rejection.

    I don’t know if any of the claims in these cases passed the MoT inquiry. Does anyone think the Court would find claims to such inventions unpatentable even if they pass the MoT inquiry? Would the Court simply finess the issue by saying that whatever words you added to the claim fail to recite a “particular” machine, or fail to recite transforming a “particular” thing, so as to avoid a finding that the claims pass the MoT test?

  16. Anon June 29, 2010 1:07 pm

    I thought any memorandum affecting applicants had to be made public knowledge? I have scoured the USPTO web site and cannot find the memorandum that is the topic of this thread.

  17. IANAE June 29, 2010 1:09 pm

    “Do you agree that this claim twice passes the MoT test as drawn to not one, but two particular machines?”

    I don’t know for sure that using a machine in its capacity as a physical object qualifies as tying to a particular machine, any more than it counts as a credible utility for that machine.

  18. Gene Quinn June 29, 2010 8:02 pm

    Tinla-

    I do not agree that the metal sculpture would be patent ineligible. Why would it be? There would never be any need to resort to the MoT test here because there is a tangible apparatus. So it would clearly be patentable subject matter, and it would be useful as a paperweight. The question would be whether it would be new and nonobvious, which I doubt.

    Why would you think that a tangible apparatus is an abstract idea?

    -Gene

  19. Gene Quinn June 29, 2010 8:24 pm

    IANAE-

    I have to disagree with you. The MoT test is now a safe harbor. If you satisfy the test then you have patentable subject matter, but if you don’t satisfy the test then you can still have patentable subject matter. It is no longer the silver bullet.

    It is certainly true that examiners are going to just say that the claims represent nothing more than an abstract idea. The trouble is that applicants will rebut that and then the Office, if they follow proper protocol, is going to have to merely accept the applicants assertions. If you make an assertion with an affidavit and explain why then that must satisfy the examiner because the examiner will be unable to provide information to combat it other than opinion or speculation. Since applicants are entitled to a patent unless the examiner can articulate a rationale, and since there is no mechanism to reject factual assertions in affidavits, the patents will have to issue.

    Now, I am not naive. I know this isn’t going to happen. Someone will have to take the case to the Board and point out that the examiner has not offered any explanation as to why the invention is an abstract idea, and the old saying about some evidence being overwhelming when compared with the absence of evidence will prove to be true. Because the Supreme Court did not explain the bright line and because examiners do not have the luxury of playing Supreme Court Justice and saying they know it when they see it, they simply cannot prevent the issuance of patents.

    In time the Patent Office will create guidelines, which will get tested and challenged. In the meantime the district courts will come up with tests, and the Federal Circuit will as well given there are a few cases stayed pending Bilski. I’m sure the Board will also have something to say soon enough.

    The trouble with the Supreme Court decision is they basically said that these types of inventions are patentable as long as they are not abstract ideas. So anything that is tangible, by definition, cannot be abstract.

    -Gene

  20. Gena777 June 30, 2010 2:42 am

    The Supremes’ opinion was maddeningly, if perhaps necessarily, short on specifics, definitions, or the means of determining patentability. The main difference is that, instead of stewing over machines and transformations, we’ll all be trying to figure out what exactly is an abstract idea. Meet the new boss, same as the old boss.
    http://www.generalpatent.com/media/videos/general-patent-gets-results-its-clients

  21. IANAE June 30, 2010 9:37 am

    Gene: “I have to disagree with you. The MoT test is now a safe harbor. If you satisfy the test then you have patentable subject matter, but if you don’t satisfy the test then you can still have patentable subject matter. It is no longer the silver bullet.”

    You don’t have to disagree with me, because I agree with all those things.

    Where we disagree is on your statement that a claimed device could “be useful as a paperweight”, and similar considerations regarding the presence of a machine for MOT. I would hope our patent system has not degenerated to the point where “it exists” satisfies the statutory requirement for either utility or tying to a machine. The utility (and the machine) must be specific to what was actually invented.

    I should clarify that I do think some processes that run on general-purpose computers or their equivalent should be patentable. I just don’t think “if you put it on a scale, you can tell it’s there” is the right test. I’ve always felt that excluding general computers from MOT was facile and over-reaching, and I hope you and others are right that it’s no longer the law, but I’ll want to see it in practice before I feel better about it.

    Gene: “It is certainly true that examiners are going to just say that the claims represent nothing more than an abstract idea. The trouble is that applicants will rebut that and then the Office, if they follow proper protocol, is going to have to merely accept the applicants assertions.”

    I don’t know many examiners who accept an applicant’s conclusory assertions, even if they are in the form of a 132 affidavit. Those are supposed to be affidavits of fact, and to be credible they should state and support with evidence the facts that underlie the applicant’s legal argument.

    The problem is that the applicant doesn’t have a legal argument, because there’s no legal test for abstract-ness. There are no facts that support the applicant’s argument unless he can somehow show that some claim term the examiner thought was abstract actually corresponds to structure, or something along those lines. It’s not like overcoming a 103 rejection, where you can establish the fact that one claim limitation is not found in the cited art, or the fact that a person skilled in the art has certain knowledge that suggests the references can’t be combined. A merely conclusory affidavit stating that a person skilled in the art “doesn’t think this is abstract” will not (and should not) be persuasive.

    Gene: “the old saying about some evidence being overwhelming when compared with the absence of evidence will prove to be true.”

    Of course, but what evidence? What facts, other than the presence of a machine or a physical transformation, tend to suggest that a claim is not abstract? So far, we have no general way of knowing. I think it will be highly particular to each case, and you’ll need a skilled agent to position a claim on the narrow strip of dry land between impermissible abstraction and the safe harbor of MOT.

    Gene: “examiners do not have the luxury of playing Supreme Court Justice and saying they know it when they see it,”

    That’s sort of what they do with indefiniteness, except that’s more a case of “I know it when I don’t see it”.

  22. TINLA IANYL June 30, 2010 11:35 am

    Gene-

    You asked, “Why would you think that a tangible apparatus is an abstract idea?”

    My reply is that it would be ineligible for a utility patent for the same reason the Mona Lisa would be ineligible for patent protection. If you review the SCOTUS Bilski Oral Arguments, I think you will see how the Justices start out with the observation that everyone agrees that things like fine art are not eligble for utility patent protection becaseu they do not pass muster under 101. And I recall that being a distinction brought out over and over again thoughout the literature on the subject of what is properly the subject of copyright protection and what is properly the subject of utility patent protection. Similarly, consider a song recorded on an album or on a CD. The recording medium strikes one as patentable, but then so does a stretched canvas as a recording medium for a painting. And that is how we keep running afoul of this tendency of some Courts to attempt to discount elements that are not novel from being used to establish 101 satisfaction. Meanwhile, others seem to want to let the article pass muster under 101, and then say that the novel part of the article has no patentbale weight because it is an image or an algorithm or what have you. If you think that the metal sculpture satisfies 101, then it would seem to me that you must also think that the Mona Lisa also satisfies 101. Can you get qa utility patent on the mona lisa? A design patent?

  23. Blind Dogma June 30, 2010 8:20 pm

    Reminds me of the adage concerning any chemical patent: Throw the chemical on the grass. If the grass grows, the chemical is a fertilizer; if the grass dies, he chemical is a herbicide.

  24. Non Sequitur June 30, 2010 9:21 pm

    Anon June,

    The memo is also available on this page: http://www.uspto.gov/patents/law/exam/memoranda.jsp

  25. Blind Dogma July 1, 2010 8:10 am

    Borrowed from the just-_n_examiner blog (http://just-n-examiner.livejournal.com/44111.html ), but spot on:

    The funny thing about the memo (other than the lack of widespread promulgation), is that technically, it says that the Supremes got it wrong.

    The Supremes said that the test is a good one for finding patent-eligible material. They also clearly said it was not the only test. What these means logically is that the test is limited to showing patent eligibility and cannot (on its own) be used to show patent ineligibility (a classic Type I / Type II error scenario).

    The memo promotes an illegal action by telling examiners to continue using the test in a manner found by the highest court in the land to be wrong (in the manner used – not that the test itself is wrong).

    It is still the job of the Office to indicate precisely why an applicant cannot have a patent even if the memo indicates that the applicant has to show why he should have one after the Office makes a conclusionary and (non-substantiated) assertion. The blog master here hits the nail on the head – examiners do not have the power of a Supreme Court Justice.

    I expect a retraction from Bahr as soon as someone points this out (or as soon as the avalanche of responses from the patent bar hit the Office with quotes to the Supreme Court decision).

  26. TINLA IANYL July 1, 2010 11:24 am

    Gene,

    You said, “The trouble with the Supreme Court decision is they basically said that these types of inventions are patentable as long as they are not abstract ideas. So anything that is tangible, by definition, cannot be abstract.”

    But let me point out that a general purpose computer running the process of Parker v. Flook also makes a good paperweight. Same with the process in Benson. Case after case says you can’t take a process that has a preemption problem and convert it into an apparatus and thereby avoid the preemption problem. The code phrase is that it is a general pupose computer, and not a particular machine.

    Don’t get me wrong. I think it is ridiculous that you could patent a computer that operates a process to control an alarm in a way that an alarm has never before been controlled, but that you cannot then patent an improvement to such a process, because the improvement algorithm is only useful with that apparatus, and there is preemption. But, in my view, that is the ridiculous conclusion required by Parker v Flook, taken in view of Diehr.

    So there you have it. Given the plethora of cases finding that general purpose computers running algorithms are not eligible to be patented due to preemption, you just can’t conclude that anything tangible is not abstract, even though it might make a good paperweight.

  27. IANAE July 1, 2010 12:02 pm

    “I think it is ridiculous that you could patent a computer that operates a process to control an alarm in a way that an alarm has never before been controlled, but that you cannot then patent an improvement to such a process, because the improvement algorithm is only useful with that apparatus, and there is preemption.”

    Preemption only makes logical sense to me if we are talking about preemption of ideas that are themselves abstract and nonstatutory, like physics equations or other properties of nature. If the underlying idea is nonstatutory and your claim preempts any use of that idea, that’s how we know your claim is actually to the nonstatutory idea and not a practical implementation.

    If I improve the internal combustion engine by redesigning some mechanical component (clearly statutory subject matter) that is particular to engines, of course I’m going to claim my improvement in an engine. Of course that preempts all uses of my invention, but that’s okay. Patents are supposed to preempt all uses of an invention, if you’ve gotten the best possible claims. As long as the underlying invention is statutory, it shouldn’t be a problem.

    If I preempt all uses of the Carnot cycle in an engine, I should expect a 101 rejection.

  28. Gene Quinn July 1, 2010 12:34 pm

    BD-

    Perhaps I read a different memo. Seems to me that the PTO got it exactly right. The machine or transformation test is where to start and if it is satisfied there is patentable subject matter. I don’t like the word “likely” in the memo, but that is likely just to give them some wiggle room in the absence of having considered guidelines in a deliberative manner.

    How is this an illegal action? Exactly how is the memo incorrect? It says exactly what the Supremes said, if you don’t satisfy MoT you can still get a patent unless it is an abstract idea.

    I don’t see the burden shifting as anything other than the only practical way to implement the Supreme decision in Bilski.

    Sent from iPhone

  29. Gene Quinn July 1, 2010 12:43 pm

    Tinla-

    Do you realize you are comparing apples and elephants?

    You started by saying a metal sculpture is not patentable subject matter, which it clearly is. Now you are talking about computers being paperweights. You are exceptionally difficult to follow.

    Of course a general purpose computer running software could be patented as a paperweight. It would be clearly patent eligible, but the claims would need to be directed to a paperweight, not a computer implemented process.

    For the life if me I cannot understand your attempts to confuse Bilski with real tangible objects that have always been capable of being patented and clearly are patent eligible subject matter.

    You do realize that Bilski dealt with a process having absolutely no tangible aspects.

    Sent from iPhone

  30. IANAE July 1, 2010 12:56 pm

    “You started by saying a metal sculpture is not patentable subject matter, which it clearly is.”

    “Of course a general purpose computer running software could be patented as a paperweight.”

    Gene, section 101 requires utility. A physical object that does nothing but exist (whether for people to look at or for weighing down other objects) does not have a patent-eligible utility any more than an alleged perpetual motion machine would if it were claimed as “a paperweight comprising”. I’m sure the free energy crowd (or whatever they call it these days) would have thought of this trick by now.

  31. Blind Dogma July 1, 2010 1:12 pm

    Gene,

    Last I checked, the Office does not have substantive rule making authority in order to make a “burden shifting as anything other than the only practical way to implement the Supreme decision in Bilski”.

    Substantive rule making such as before (and worse here in your view, since no proper channels were followed in the release of the memo having such rule impact) was ruled illegal in the Claims and Continuations effort – I don’t see the difference from a legal perspective.

  32. IANAE July 1, 2010 1:19 pm

    “Last I checked, the Office does not have substantive rule making authority in order to make a ‘burden shifting as anything other than the only practical way to implement the Supreme decision in Bilski’.”

    They do it for perpetual motion machines. The rejection is essentially on the basis that the claims are directed to a class of subject matter that is generally recognized to be non-statutory, unless the applicant can traverse in his particular case the reason that ordinarily applies to the class.

    Maybe that’s not within the PTO’s authority either, but I haven’t seen anyone appeal to the Federal Circuit on that basis.

  33. Blind Dogma July 1, 2010 4:35 pm

    IANAE,

    If by “generally recognized” you mean an invention that violates the laws of nature, and that such deserve special treatment, I can agree with you for that class.

  34. IANAE July 1, 2010 4:48 pm

    “an invention that violates the laws of nature,”

    An invention that violates the laws of nature as currently understood. That’s what your rejection from the PTO will say, more or less.

    If you can show that your perpetual motion machine actually works, either by showing a working model or otherwise demonstrating that the current understanding of the laws of nature is wrong, you’ll get your patent. We’ve been wrong about nature before. People didn’t believe Maxwell at first because his eponymous equations were Lorentz-invariant, which violated Newton’s laws of motion. Turns out Maxwell was right.

    But that’s shifting the burden to the applicant, isn’t it? Can the PTO validly do that, simply because the claims are to a broad class of nonstatutory subject matter, any exceptions to which are still unknown and hypothetical? And if so, why not for non-MOT claims?

  35. step back July 1, 2010 8:39 pm

    IANAE,

    So good of you to note there is something like:

    laws of nature as currently understood [and enunciated by scientists, not by Mother N herself]

    Because this is one of the “fundamental principles” which the SCt 9 and the CAFC 11 seem to always get wrong. They categorize the “Laws of Nature” as something distinct from “abstract ideas” when rightfully the Theorized Laws of Nature as enunciated by scientists and never by Mother N herself are just that, theorized abstract ideas of what we humans currently believe to be a consistent rule of Nature even though Mother herself never comes down from the mountain top with a set of tablets that says, “Good job boys, you correctly and accurately guessed on that one!” We never know for sure. Thus they are mere abstract ideas, our human ideas, and not something that originates from Mother N.

  36. breadcrumbs July 2, 2010 8:19 am

    I would go further, step back, in that such articulated theories are not abstract in the full sense of that word. Recognizing that such theories are made by Man AND are not the actual domain of nature leads down the path that such work does not belong to all men (necessarily).

    Building tools in the world of math means that you have built specific constructs that may be eligible for protection. Perhaps an observation to be contemplated in searching for the dividing line is that Nature is never wrong, but Man often is. If something is capable of being wrong, that something is not Nature.

    In the sense that such are “science” in the IP sense, the protection of copyright applies.

    In the sense that such are “applied science”, used in the sense of a tool that meets the other requirements of the Patent Act, the protection of patents apply.

  37. American Cowboy July 5, 2010 3:33 pm

    So, where are we with signal claims and Beauregard claims? If the claim is to the series of steps as embodied in the transient signals or recorded on a computer-readable medium, are these statutory subject matter in light of Scotus’s Bilski? The Board has ruled against signal claims based on the MOT test of the FedCir Bilski. Will they have to back up?