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Through the Fuzzy Bilski Looking Glass: The Meaning of Patent-Eligible under 35 U.S.C. § 101


Written by Eric W. Guttag
Eric W. Guttag IP Law Office
Posted: July 22, 2010 @ 6:38 pm
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Alice enters another world through the looking glass

In Chapter 6 of Lewis Carroll’s Through the Looking Glass, Humpty Dumpty tells Alice scornfully “when I use a word, it means just what I choose it to mean – neither more nor less.”  After reading and compositing the various opinions by the nine SCOTUS Justices in USPTO v. Bilski, I, like many others, are still wondering what is a patent-ineligible “abstract idea” (other than Bilski’s claimed method for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy, i.e., hedge against such risks) and especially what does “patent-eligible” really mean under 35 U.S.C. § 101.  The composite opinions by SCOTUS in Bilski concoct a standard for patent-eligibility that is as fuzzy and circular as the logic Humpty Dumpty employed on Alice.

As you might imagine, there are many takes on what the SCOTUS Bilski ruling actually says, including mine.  See Section 273 is NOT a Red Herring: Stevens’ Disingenuous Concurrence in Bilski where I waxed lyrical about now retired Justice Stevens’ disingenuous sophistry in his concurrence which treats 35 U.S.C. § 273 as if it didn’t exist, but which is, in fact, an implicit, if not explicit, recognition and acceptance by Congress that “business methods” (however you characterize them) ARE patent-eligible subject matter under 35 U.S.C. § 101.  See also Foaming at the Mouth III: And Then Came Bilski where I commented on the most recent “thunderbolt” from our Judicial Mount Olympus as SCOTUS summarily granted certiorari in Prometheus Laboratories, Inc. v. Mayo Collaborative Services and Classen Immunotherapies, Inc. v. Biogen Idec, and then vacated and remanded both cases to the Federal Circuit to reconsider (with equally “fuzzy” guidance) in light of SCOTUS’ ruling in Bilski.

The complicating factor in what Bilski means regarding the standard for patent-eligibility under 35 U.S.C. § 101 is that there are at least three different opinions (actually four if you count Scalia’s refusal to join Parts II B-2 and C-2 of Kennedy’s opinion for the Court).  Even so, I see five key “takeaways” from the composite ruling:

1.         The “machine or transformation” (M or T) test is not the sole test for patent eligibility under 35 U.S.C. § 101 (by a 9-0 vote).  The “M or T” test, while still valid, has been relegated to “second class” status as too inflexible, much like the “teaching, suggestion and motivation” (TSM) test in KSR International v. Teleflex.  That’s the easiest and clearest “takeaway.”

2.         At least some “business methods,” however defined, remain patent-eligible under 35 U.S.C. § 101 (by a 5-4 vote).  A majority of SCOTUS Justices (based on Scalia joining Part C-1 of Kennedy’s opinion of the Court) agree that 35 U.S.C. § 273 (which provides a “prior user right” defense to infringement of patented “business methods”) confirms that at least some “business methods” are patent-eligible subject matter (e.g., are a “process”) under 35 U.S.C. § 101.

3.         “Abstract ideas,” however defined, remain patent-ineligible under 35 U.S.C. § 101 (by a 9-0 vote).  Another clear “takeaway.”  But as noted above, what constitutes an “abstract idea” is not defined or is ambiguously defined by SCOTUS’ composite opinions.  Given Kennedy’s reference in Part III of the Court’s opinion to the Bilski method as “adding even less to the underlying abstract principle than the invention in” Parker v. Flook (which was characterized by the Court’s opinion as involving a “mathematical formula”), any claim that is deemed to cover subject matter that is analogous to that in Flook (i.e., a “mathematical formula,” or an “algorithm” as the invention in Flook more specifically related to) will be considered a patent-ineligible “abstract idea.”

4.         The patent-eligible status of computer programs or software under 35 U.S.C. § 101 may be up in the air but there are subtle signs that a majority of SCOTUS would consider computer programs/software to still be patent-eligible (by a 4-4-1 vote).  This is based on Scalia’s refusal to join Part II B-2 of the Kennedy’s opinion for the Court.  What is unclear is exactly what in Part II B-2 Scalia disagreed with.  In Part II B-2, Kennedy specifically references Stevens’ dissenting opinion in Diamond v. Diehr (“well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program”), and then says:  “But this fact does not mean that unforeseen innovations such as computer programs are always unpatentable (referring to the majority opinion in Diehr).”  Assuming that Scalia’s refusal is based on the “broader premise” set out in Part II B-2 of Kennedy’s opinion for the Court (not specifically directed to computer programs/software), and that, like his implicit (if grudging) acknowledgment that 35 U.S.C. § 273 mandates that “business methods” are patent-eligible under 35 U.S.C. § 101, Scalia may have also (perhaps grudgingly) conceded that at least some computer programs/software inventions are patent-eligible under 35 U.S.C. § 101 in view of the majority holding in Diehr.  It remains to be seen how this will play out as Stevens has stepped down from SCOTUS, and exactly how the Federal Circuit will construe the impact of Part II B-2 of the Court’s opinion in view of Scalia’s refusal to join it.

5.         The expansive view of patent-eligible subject matter taken by SCOTUS in Diamond v. Chakrabarty may have been undercut somewhat, and the even more expansive “tangible, concrete and useful result” view of the Federal Circuit in State Street is likely dead (by a 5-4 vote).  The SCOTUS majority in Chakrabarty said that “anything under the sun made by man” may be patent-ineligible under 35 U.S.C. § 101, which is at least implicitly acknowledged in Part II A of the Court’s opinion where Kennedy refers to Chakrabarty for the proposition that Congress intended the categories of 35 U.S.C. § 101 to “be given a wide scope.”  Parts III and IV of Stevens’ concurring opinion (actually a partial dissent from the Court’s opinion which three other Justices joined) directly challenges Kennedy’s view.  In addition to Scalia refusing to join Part II B-2 and C-2 of the Court’s opinion which support a more expansive view of patent-eligible subject matter, Scalia also joined Breyer’s concurrence (again a partial dissent from the Court’s opinion).  Breyer’s concurring/partial dissenting opinion refers explicitly to his dissent in Laboratory Corp. v. Metabolite Laboratories, Inc. which essentially takes a much more restrictive view of what is patent-eligible subject matter, and also directly refutes the “useful, concrete, and tangible result” view of the Federal Circuit’s State Street Bank & Trust Co. v. Signature Financial Group, Inc. Given Scalia’s refusal to join Part II B-2 and C-2 of the Court’s opinion and his joining of Breyer’s concurring/partial dissenting opinion (which directly challenges the much more expansive view in State Street already rejected by a majority of the Federal Circuit in Bilski), a majority of SCOTUS in Bilski appears to have taken a much more restrictive view of patent-eligible subject matter under 35 U.S.C. § 101 compared to what was held in Chakrabarty, and has also likely dealt a “death blow” to the even more expansive “useful, concrete, and useful result” view in State Street.

So now what does SCOTUS’ ruling in Bilski “really” mean to us “mere mortals”?  First, we’ve got two “wild cards” to deal with as noted above:  (1) Stevens has retired; and (2) what does Scalia’s refusal to join Parts II B-2 and C-2 of Kennedy’s opinion for the Court signify.  Some aspects of “wild card” #2 are dealt with above, but as also noted, there are still some aspects which are unclear or at least ambiguous as to how this refusal by Scalia should be viewed.  This lack of clarity/ambiguity will require some sorting out by the Federal Circuit, which may come as early as the reconsideration by the Federal Circuit of Prometheus, Classen, or even the appeal in AMP v. USPTO involving the gene patenting controversy.  In AMP, District Court Judge Sweet’s invalidity ruling regarding the method claims for determining a pre-disposition to breast/ovarian cancer using the BRCA1 and BRCA2 genes relies at least in part upon the “M or T” test which, as noted above, SCOTUS unanimously relegated to “second class” status in Bilski as not the only test for patent-eligibility.

So here’s my “realistic” appraisal of how to approach what remains patent-eligible after Bilski:

a.         To avoid the “abstract idea” patent-ineligible “zone,” define the process/method/system to be more machine/computer-implemented and/or to be more manipulative (transformative) of items/data.  While SCOTUS’ ruling in Bilski said the “machine or transformation” test isn’t the sole way to determine patent-eligibility, that test still points to a way for avoiding the “abstract idea” patent-ineligible “zone.”  That’s what SCOTUS’ majority ruling in Diehr actually says and is entirely consistent with SCOTUS’ composite ruling in Bilski.  The more the process/method/system is tied to machine/computer implementation and/or the more the process/method/system manipulates (i.e., transforms) objects, compounds, even data/information, the more likely it will be treated as patent-eligible.  Also, avoid vexing over whether the claimed process/method/system will be considered to be a “business method.”  SCOTUS’ composite ruling in Bilski says that at least some “business methods” are patent-eligible, so worrying about whether (or not) the process/method/system is (or is not) a “business method” won’t normally help.

b.         Still pursue patent claims computer programs/software, but also include at least some claims that carefully tie the program/software to machine/computer implementation.  It is, at most, ambiguous how the composite SCOTUS rulings in Bilski treated the patent-eligibility of computer programs/software inventions, so I recommend continuing to pursue such patent claims, but crafted carefully to avoid simply reading on an “algorithm.”  The only thing that is clear in this regard from the composite SCOTUS rulings in Bilski is that you cannot simply claim the “algorithm” (that’s what SCOTUS said, in essence, you can’t do in Flook which is mentioned repeatedly in Bilski).  And unless SCOTUS overrules its majority opinion in Diehr (also discussed repeatedly in Bilski), or the Federal Circuit decides to go in a different direction (which is hopefully unlikely), tying the program/software to a machine/computer implemented process/method/system should keep it patent-eligible.

c.         Medical diagnostic process/method patent claims should still be pursued, but be careful in relying exclusively upon comparison/correlation patent claims.  What I mean by “comparison/correlation patent claims” are those which typically involve a first step of gathering/analyzing data, and then comparing/correlating in a second step that gathered/analyzed data to a “bench mark” value to see if, for example, a certain medical condition exists or there is potentially a predisposition to such a medical condition.  This issue was left unresolved by SCOTUS in the Laboratory Corp. case, and the Federal Circuit has taken what I consider conflicting views (after its own Bilski ruling) as to whether (and when) such comparison/correlation patent claims are patent-eligible.  Compare Prometheus (drug dosage calibration patent claims are “transformative” and therefore patent-eligible) with Classen (with no/minimal explanation, claimed method for essentially calibrating an immunization schedule for a treatment group, relative to a control group is patent-ineligible in view of Federal Circuit’s Bilski).  How the Federal Circuit will try to reconcile Prometheus and Classen, as well as AMP, in view of SCOTUS’ “fuzzy” ruling in Bilski is anyone’s guess.  For now, I recommend still trying to go for such comparison/correlation patent claims, but also try to have at least some other patent claims which define the method/process as actually “diagnosing” a specific disease state (at minimum), and/or suggesting/providing a particular course of treatment (preferably) based on that diagnosis; even these sorts of “diagnostic/treatment” claims might not pass muster when the Federal Circuit applies SCOTUS’ “fuzzy” ruling in Bilski because they may involve patent-ineligible “post-solution” activity.

That’s my view through the looking glass for what to do now in these uncertain Bilski times.  I’m sure there will be disagreements with what I’ve said or suggested, just like the various SCOTUS Justices who couldn’t come to a consensus on what is the standard is for patent-eligibility.  Like Alice, we “mere mortals” may still find ourselves looking through a “fuzzy” looking glass in trying to decipher what the composite SCOTUS ruling in Bilski means for what is or remains patent-eligible under 35 U.S.C. § 101.  The best we can do for now is give advice (and take action) that remains flexible enough to go whichever way the Federal Circuit bends (or retreats) as it considers future cases involving patent-eligibility under 35 U.S.C. § 101, especially the Prometheus, Classen and AMP cases.  This trio of cases may soon gives us a glimmer of hope (or yet more despair) on how to view the “fuzzy” looking glass called Bilski.

© 2010 Eric W. Guttag


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74 comments
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  1. Eric,

    Excellent analysis.

    I would however, start with reference to Grimm’s tale of The Emperor’s Clothes.

    The point of such a start would not be to compare the dark-robed 9 to the Emperor. After all they are far from being Stew-pad. They are very smart.

    But that high IQ leads to the ultimate vice: vanity.

    They are too vain to admit that with their high IQ’s there are somethings they cannot see or cannot understand.

  2. Your analysis neglects one important thing — what Stevens thinks doesn’t matter anymore — it’ll be what Kagan thinks that matters. Also, I see either Ginsburg or Scalia making the transition in the future (with Ginsburg the big favorite to be the next to go). As such, the value of their opinions is nebulous — particular when we start nibbling at the edges of what is an absract idea and what is not.

  3. As I see it, the three Step Bilski logic:

    1) Does claim recite a machine or transformation? If yes, patent eligible.

    2) If no, is claim directed to abstract idea? If yes, patent ineligible.

    3) If no, are other tests appropriate to determine patent eligibility? If yes, apply other tests. If no, patent eligible.

    In Bilski, the Supreme Court answered “1) no.” It then alleged “2) yes” without any apparent factual underpinnings – merely as a conclusion of law. No one really knows what made the Bilski claims a mere “abstract idea” (other than they failed the machine or transformation test).

    For better or worse, I suspect Examiners can allege a “yes” to question 2) as a mere conclusion (and transfer the burden of proof to the applicant) and be fully in line with the Bilski logic applied by the Supreme Court

  4. Sorry scrappy, but that’s not how it went down.

    The Supreme Court basically took your first point (MoT) and said:
    – MoT not a valid test – stop.

    WHat they did do was:
    – CAFC tried hard but got it wrong – stop.
    – MoT is indeed a clue to patent eligibility – stop.
    – MoT not a valid test – stop.
    – Look at Benson and Flook as controlled by Diehr – stop.
    – Bilski does not pass B-F-D because it is an abstract idea – stop.

  5. SB: Nice thought about the Grimm fairy tale. I used the analogy to the Lewis Carroll series (which I’ve used before in reference to SCOTUS’ deciision in Microsoft v. AT&T) because of the “logic” disconnect our 9 on the Judicial Mount Olympus have in our part of the “law vineyard.” And I concur in your comment about their arrogance regarding their technology-challenged nature.

    JV: Kagan is definitely another “wildcard” that we must consider. I had high hopes for Sotamayor which so far have been dashed. Ginsburg and Scalia leaving during the current administration won’t help us as I’m afraid that President Obama likely won’t appoint anyone to SCOTUS who is anything other than patent hostile. Also, SCOTUS tends to be more dogmatic about stare decisis when it comes to patent law; they should really ditich Gottschalk v. Benson (authored by Justice Douglas) and Parker v. Flook (authored by Stevens) but they won’t.

    Scrappy: What you say makes sense. Unfortunately, the recent memo issued by the USPTO on what to do in light of Bilski says the converse: if the claim doesn’t satisfy the MoT test, it is prima facie patent-ineligible. That’s completely inconsistent with what all 9 SCOTUS Justices said.

    Thanks to all of you for your comments.

  6. EG:

    I’m still givig Sotamayor the benefit of the doubt for reasons I already discussed.

    As for new justicies appointed by Obama, they are a complete unknown. In the proverbial “list of 100 questions” a potential justice needs answer, my guess is that the questions regarding patent law are somewhere down around 95 or 96. That being said, I don’t the Obama administration is going to select a justice based upon their patent views — too many other, bigger hot-button issues to consider.

    I could be wrong, but I would imagine that any justice nominated today has a far greater personal experience with the technologies at issue than the justices they would be replacing — which, IMHO, is a good thing.

    It is a gut feel … but I doubt Scalia has used a computer in years or if he does, it is for menials tasks, such as checking for e-mail. However, even with e-mail, I wouldn’t be surprised if he has his e-mails printed out and he dictates responses to them.

  7. Scrappy & Say-

    My reading of the decision is this:

    1. If machine or transformation is satisfied — patentable subject matter
    2. If machine or transformation not satisfied ask: Does invention represent an abstract idea?
    a. If yes — NOT patentable subject matter
    b. If no — patentable subject matter

    I can’t see anything that could meet machine or transformation that would be an abstract idea. I know some have tried to convince me otherwise, but I am still unconvinced.

    Also, what if the district courts and Patent Office were actually applying the “transformation” end of the MoT test? It seems nothing is transformative. It also seems to me that the transformation aspect, if applied in any honest way, isn’t so much different than State Street at least in so far as the application to what we would consider “inventions.”

    I remain convinced that what is going on here is an attempt to define what is an “invention” and that should be left to 112 first paragraph, not 101.

    -Gene

  8. Gene is correct that the courts, especially SCOTUS, are looking at the wrong end of the patent statutes to start assessing whether the claimed invention is patent-eligible. We should be starting with the requirements of 35 USC 112, not 35 USC 101. Michael Risch (now at Villanova Law School) espoused this view some time ago in an article he wrote, and I totally agree with his view. Now we could only get those 9 technologically-challenged Jusitces from the Judicial Mount Olympus to see it that way . . . .

  9. Re: “The SCOTUS majority in Chakrabarty said that “anything under the sun made by man” may be patent-ineligible under 35 U.S.C. § 101.”
    That’s what this case is so often misquoted out of context for, but what that Sup. Ct..decision ACTUALLY said [right after that famous language] was: “This is not to suggest that §101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “

  10. Eric,

    I don’t think “arrogance” is the correct word.
    The Mount Olympus 9 are not consciously trying to be arrogant and they are not “dumb”.

    By us trying to eke out a logical rule out of the B.v.K. decision we are failing to step back and see the bigger picture.

    The bigger picture is a clash between our judicial system and complex science.

    Many here will be startled and ask, “How can a simple hedging system be “complex” science (if ‘science’ at all)”?

    That is true for all here who have spent 4+ years in college learning math, science and supposed logical thinking. But what you are missing out on is that the Fab 9 did not take (and afterwards work in the field of) science. They don’t know the difference between a scientific hypothesis and a so-called “law of nature” and a claim by someone that they can run their car on water using hydrinos. It’s all gobbledygook to them. They hear a lot of buzz words. They hear the sounds of so-called experts echoing all about their judicial chambers. Their heads spin. What the heck is a “patent claim”? I don’t know, ask Sotomayor, her ex was a patent attorney. OK, now I see it all clearly. A claim “explains” what the invention is and if it “explains” it in a way that looks too pornographic or too abstract to me then by golly it is too “abstract”. Case closed. Glad that one is over. I feel sorry for them poor patent practitioners who have to mess with this way too heady stuff all the time. How do they do it? Remind me to never grant cert to another patent case for the next 10 years. We have spoken from the mountain and the world did not collapse. That’s all we need to know for now.

  11. p.s. I ought to add that there is no such thing as a “Law of Nature”.

    There are only theories of men seeking to predict how the Universe about them might behave.

    All too often our theories are wrong.

    Trust me, the O-ring will hold.
    Trust me, the crack in the wing is of no consequence.
    Trust me, this Deep Horizon rig is rock solid and it will operate safely.

  12. “I don’t think “arrogance” is the correct word.”

    SB,

    Sorry, but it is: Scalia says TSM test is “gobbledygook”. Breyer talks about “raccoon access-preventing” inventions when the claimed subject matter is vehicle accelerator pedals (KSR Internation) or “bicycle pedals” when the claimed invention is computer software/systems (Microsoft v. AT&T). Sotamayor talks about patenting “speed dating” (Bilski). That’s arrogance.

  13. It’s being so incompetent in matters of science that you don’t know you are incompetent: Agnosia

  14. http://www.onelook.com/?w=Agnosia&ls=a

  15. once again, Step Back lapses into post-modernism.
    Of course there are laws of nature, no matter how imperfectly we understand them, the laws that govern the universe exist separate and apart from our imperfect understanding and representations of them.

  16. I was waiting for someone to “step forward” into my rat trap, but I didn’t expect you Koepsell. Of all the critters that are going to rush forward unthinkingly, it had to be you.

    So let’s start with the law of “gravity”.

    F= m1*m2/r^2 times some “constant” if I recall correctly.

    Is that a “Law of Nature” Koepsell or just a predictive theory made up by man?

  17. Is evolution a theory or a fact?

    It’s both. The theory of evolution is our best model for the fact of evolution.

    Gravity works the same way. It’s a natural phenomenon, and our model of it is an abstract concept that attempts to come as close as possible to describing the natural phenomenon. Both are non-statutory subject matter absent a specific and limiting practical application.

  18. I will agree with Step Back. I have previsouly entertained Mr. Koepsell and tried to engage in a discussion about what “made by man” entails when it comes to Men creating models of nature.

    I can only say that the experience was very disappointing.

    As I have also said before – Nature is never wrong. If something (made by man) is capable of being wrong, then it is not Nature. This would include most scientific theories which can be shown to be wrong at their edges (and yes, this includes Newton’s gravity and Einstein’s relativity and energy equations).

    In such cases, close doesn’t count.

    Now with IANAE’s post we add a different limitation – “absent a specific and limiting practical application“, but this rather than answering the wide open call that patent eligible matters should be beckoned with, raises more questions – how limiting is “limiting?” Is “field of art” limiting enough? too much? At what level of abstraction does “specific” have enough meaning? Is a computer a specific machine? Well, a computer is a different type of machine than a cotton gin – is that specific enough? And of course, is a programmed machine a different type of machine than a non-programmed machine? (That’s a question that can fill several thousand blog pages, but my favorite is to test the actuality of one machine against the other).

    So back to gravity – yes it is real and it is natural. But is the current man-made model accurate enough* (whatever abstraction level you want to delve to) – and should we “promote” more activity into trying to build a better mousetrap (as it were) of the model of gravity by rewarding man’s innovation in better describing the natural force?

  19. “Now with IANAE’s post we add a different limitation”

    I was perhaps being overly glib, but I meant to invoke the Diehr/Bilski requirement of MOT-or-other-unspecified-criterion-of-non-abstract-ness.

    How specific or limiting is enough? Well, a machine or a physical transformation is a good start.

    Is a general-purpose computer a “machine”? Not according to the Federal Circuit, so you’d have to go over their heads if you want to claim one.

    Is a programmed machine different from a non-programmed machine? If it is, and patentability depends on the distinction, the distinction should be particularly claimed in terms of structure.

    But is the current man-made model accurate enough – and should we “promote” more activity into trying to build a better mousetrap (as it were) of the model of gravity by rewarding man’s innovation in better describing the natural force?

    It doesn’t really matter how good our current model is. Any new model of gravity would be non-statutory no matter how good it might turn out to be. Of course, if your model allowed you to build a better gravity-powered mousetrap, you’d have yourself a good patent.

    The patent system does reward theoretical research, but only indirectly, via US Patent 78,317.

  20. Gene, I agree with your comment 7. (I was trying to include tests that were not part of the Bilski decision, like laws of nature, future CAFC tests, etc. which the Supreme Court alluded to.)

    I also think whether a claim covers an “abstract idea” might ultimately be defined by whether the full breadth (or substantially full breadth) of the claim is both enabled and described in the accompanying detailed description, thus tying the “abstract idea” part of 101 fully back to 112, first paragraph. (The thought being that if your preferred embodiments and detailed teachings don’t track your claim scope, that would be an indication of abstractness in your claims. Of course, they has little if anything to do with 101.)

    By the way, I went to the GMU Hot Topics presentation on Bilski. The law professors there appeared to be in agreement that even if you satisfied MoT, you claims could still be ineligible if they merely covered an abstract idea – meaning the abstract/non-abstract idea test cut both ways and could add to or take away from the patent eligible subject matter preliminarily defined by the MoT test. Sounded ivory towerish to me.

  21. The law professors there appeared to be in agreement that even if you satisfied MoT, you claims could still be ineligible if they merely covered an abstract idea – meaning the abstract/non-abstract idea test cut both ways and could add to or take away from the patent eligible subject matter preliminarily defined by the MoT test.

    Well, MOT isn’t a hard and fast rule, but “you can’t get a patent on an abstract concept” is.

    Still, you’d be hard pressed to claim an abstract concept that includes a particular machine.

  22. Is Newton’s “Theory” of Gravity truly a “Law of Nature”?

    (Sorry guys that I had to leave the debate. There are deadlines to be met, you know.)

    Some of you may already be aware of this news article:
    http://www.nytimes.com/2010/07/13/science/13gravity.html?_r=3

    There is a physics expert out there who is saying that “mass” may be an illusion and what we are truly seeing is entropic effects between entangled wave functions.

    Is he right? I don’t know. Completely out of my league. But IF HE IS, that proves that our universally accepted “law of nature” about one of the most important “forces” (or so we were fooled by the randomness into believing), namely, “gravity” was all wrong.

    The point is that we may never know what the “true” operations of Mother Nature are (and by such possession of knowledge fully grasp the theorized “Laws of Nature”). It could be that our various senses, including cognitive senses, are insufficient to ever know how Mom Nature “truly” operates. All we have are our man-made theories and those are tailored for our limited ability to understand things.

    Just as even out best physicists may be hampered from truly knowing how Mom Nature operates, our fab 9 on Mount Olympus are probably hampered from grasping what a patent claim is or what a composition of matter is.

    The B.v.K. decision was a purely political play as the 4-1-4 vote inherently tells us.

    One group of special interest groups (SIGs) convinced the liberal 4 on the Court that patents are “bad” and patenting of this stuff called “business method” is really bad.

    Another set of SIGs convinced the conservative 4+1 that patents are not so “bad” and that patenting of this stuff called “business method” may be OK in some circumstances even though not in this gobbledygook particular case.

    The fact that MOT went down in flames was pure political luck and not an outcome of scholarly comprehension.

  23. IANAE,

    I do not think that you have followed the comments close enough.

    It doesn’t really matter how good our current model is. Any new model of gravity would be non-statutory no matter how good it might turn out to be.

    You have introduced a tautology that only holds so far and only if you presume that the so-called ban on Laws of Nature applies to Laws about Nature Made by Man. You are assuming the very point under discussion resulting in a circular logic. You have to break that chain and try again.

  24. @step back
    The difference between laws and theories isn’t that laws are more solid, but that laws don’t explain why, while theories do. However, I sort of doubt that the laws of nature are meant to apply only to scientific laws, and certainly not only to scientific laws that are currently considered cutting edge. We know that Newtonian physics isn’t totally correct, but it is accurate to the extent that outside of implementations involving particle accelerators, near-lightspeed travel, and precise calculations of planetary orbits, it is accurate within the levels of precision used for almost all practical application.

    My reading of the tea leaves is that ‘laws of nature’ would include basically any pure application of theory, hypothesis, or law in any field. Thus, things like taking the ideal cost of insurance and modifying it to fit a nearby psychological price point would not be patentable because it is just an application of a ‘law of nature’ despite being a theory on an arguably non-natural subject.

  25. IANAE,

    Let me simplify it for you.

    My point is that the so-called “Laws of Nature” are merely our “ABSTRACT IDEAS” of how we think Mother Nature operates.

    When the SCT. said there are three separate categories of non-statutory subject matter, they were wrong. There is only one: abstract ideas. “Natural phenomenon” are not invented as new by any person and thus natural phenomenon cannot be any “new and …” stuff even if discovered for a first time.

    The B.v.K. decision never explained what is or is not an “abstract idea” and thus it is totally worthless except that it knocked out the MOT test (thank goodness).

  26. @Bobby,

    Everything is an “application of” a so-called LawOfNature (LON ?) except for perpetual motion machines perhaps.

  27. @step back
    If everything is an application of a law of nature, then the only valid patents are the ones SCOTUS hasn’t looked at yet. ;-)
    A better mousetrap might utilize laws of nature and various algorithms, but what makes the patent useful to society is that it consists of something other than just applying existing knowledge.

  28. Bobby,

    Step Back is again correct. Nothing exists that “consists of something other than just applying existing knowledge.

    New knowledge is gained only incrementally by applying existing knowledge.

    Yet another Tautology that needs to be broken in order to walk down the path.

  29. Just curious.

    See: US Patent No. 7,756,761 issues 7/13/10

    A 101 per Bilski, or a 102, 103, 112?

  30. @ Gene Quinn:
    //I can’t see anything that could meet machine or transformation that would be an abstract idea. I know some // have tried to convince me otherwise, but I am still unconvinced.

    True, but how about the other two subject matters that are also non-statutory, namely, law of nature and natural phenomena.

    MPEP 2106 clearly states that “The subject matter courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to abstract ideas, laws of nature and natural phenomena.”

    Can one meet the MoT test but fails to be patentable because its directed to a law of nature and natural phenomena?

  31. Actually, I just got a doozy for you.

    Draft a claim for a forming a diamond:

    Step 1) take a lump of carbon (graphite and etc)
    Step 2) apply pressure on said lump of carbon of 50 kiloBars and simultaneously apply temperature of 1000 Celcius
    Step 3) wait for 10^6 years

    You’ll meet the MoT test. One should be able to show that the graphite to diamond transformation is a type of matter transformation. But, steps 1-3 is natural phenomena that can be found in the crust of the earth, is it not? So maybe it is possible to pass the MoT test and still be rejected under 35 U.S.C 101.

  32. breadcrumbs and step back: of course there are laws of nature, they are what make the universe do the things it does. As I mentioned, all our depictions of laws of nature are imperfect, and contingent, but this does not mean there are no laws of nature (as step back so adorably suggested in his little post-modern lilt).

    Certainly, even though E=MC^2 is a man-made model or depiction of the relationship between energy and mass, nobody in his right mind would suggest that such a depiction is a “man-made law of nature” (which is an oxymoron), but rather it is a provisional and contingent attempt to depict or model an actual law of nature that exists independently of our models and that governs physical phenomena, and it ought not to be patent-eligible as a “law of nature” pursuant to Chakrabarthy.

  33. Man doesn’t make “laws of nature” he attempts to uncover them by making hypotheses and theories, and our models and depictions are always provisional and contingent (subject to change as we gain more knowledge). The underlying laws of nature are unchanging, and have existed as a part of the universe since its creation. (Only post-modernists like step back and breadcrumbs deny the underlying reality of the universe). Now, SCOTUS doesn’t mean that only those laws cannot be subject to patent eligibility under 101 when it states that laws of nature are not patent eligible in Chakrabarthy. Most rational people would interpret this as meaning that even our imperfect depictions of those laws are not eligible for patent. But then, the courts and lawyers get lots of simple things wrong, like for instance the notion of “abstract ideas,” which is a pleonasm. All ideas are inherently abstract. There is no spectrum of “abstractness.” Only expressions of those ideas are concrete, by which some idea is made manifest in the universe (like via a thought, whereby the idea inheres in neurons), or via a statement, or writing, or machine. Pi is a perfect example. It is the mathematically, universally constant ratio of the circumference of a circle to its diameter. It is abstract. It is an idea. It is made manifest in every instance of a circle, and each manifestation is a token of the type, or idea of pi.

  34. The underlying laws of nature are unchanging, and have existed as a part of the universe since its creation.

    @Koepsell,

    How pray tell, do you know any of this?
    How do you know the Universe was “created” (out of nothingness) ?
    How do you know there was “time” to measure “since” the so-alleged creation event?
    How do you know these things you call “laws of nature” are “unchanging” and “continuous” in their existence?
    Is that true throughout all regions of your notion of “universe”?

    In the real world, there is no perfect circle with value of Pi attached to it, did you know that?
    The notion of a perfect circle with thickness zero and accurately measurable circumference (in violation of Heisenberg principle) is itself an abstraction. Hopefully you know that.

    And where pray tell, oh Anarchist know-it-all, have you hidden the Higgs boson?

  35. Part of the reason why the conversation with Mr. Koepsell is so disappointing is that he likes to try to impress with his vernacular, but is very sloppy with his sentences. He does not realize that he is in a discussion with lawyers of a particular kind, lawyers who are not only trained in the art of words, but also in the sciences. He writes for the audience of sound-byters, rather than fully joining the conversation of professionals.

    An easy example is Mr. Koepsell’s first sentence in the post above:
    Man doesn’t make “laws of nature” he attempts to uncover them by making hypotheses and theories, and our models and depictions are always provisional and contingent (subject to change as we gain more knowledge). The underlying laws of nature are unchanging, and have existed as a part of the universe since its creation

    Not withstanding the points made by Step Back (which point to a different argument concerning the infusion of philosophy and one’s personal dogma into the understanding of Nature), Mr. Koepsell is actually agreeing with my post. He in essence is saying that Nature and man’s made models are two distinct things.

    Yet he then veers off on an incorrect ad hominem that supposes that I do not believe in the reality of Nature (which is nonsensical as I have posted that it does exist and is separate from models made by Man).

    Arguing by non sequitur ad hominem makes for great sound bytes, but extremely poor logic.

    Going on and merely stating that the Supremes, of course, understand this distinction (which is nowhere apparent), Mr. Koepsell states that the models, or tools, made by Man, in this particular area, are off limits to intellectual protection.

    This bias against this type of tool is rooted in Iron Age thinking. The great advances of the Post Iron Age are due to the fact that tools, in their primal essence are no longer constrained to things which one can drop on their feet. The abundant harvest of the improvements in efficiency and effectiveness are due to the fact that Man has realized that tools are more than purely physical items.

    If we really want to commit to “promotion”, we would recognize our self-imposed limits and remove those limits on the non-physical, man-made tools from the system that promotes the advancement and open cataloging and capturing for all mankind (after the limited exclusion period).

  36. @breadcrumbs
    “If we really want to commit to “promotion”, we would recognize our self-imposed limits and remove those limits on the non-physical, man-made tools from the system that promotes the advancement and open cataloging and capturing for all mankind (after the limited exclusion period).”
    That only holds true if we can conclude that granting patents covering these areas would cause more benefit from their revelation than the harm caused by their exclusion for a limited time (as well as the various costs of the patent process, patent searches, litigation and other associated costs), and many feel that the result is not a net benefit.

  37. Step back: because I know not to confuse epistemology with ontology. You clearly don’t.

    Breadcrumbs: true, I know and argued above they are two different things, but you know as well as I do that when SCOTUS excludes laws of nature from patent, they extend that exclusion to depictions of laws of nature as well. Try patenting the latest model of the law of gravitation if you want to see how the PTO or the courts will react.

  38. @Koepsell,

    because I know not to confuse epistemology with ontology.

    Agreed. You are 100% ontology.

    Your group’s philosophy is: I am because I think metaphysically and anarchistically.

  39. Regarding whether a programmed machine is a different type of machine than a non-programmed machine, IANAE at comment 19 states:

    Is a programmed machine different from a non-programmed machine? If it is, and patentability depends on the distinction, the distinction should be particularly claimed in terms of structure.

    However, what IANAE asks for is already common practice. To wit:

    Descriptive material can be characterized as either “functional descriptive material” or “nonfunctional descriptive material.” In this context, “functional descriptive material” consists of data structures and computer programs which impart functionality when employed as a computer component. (The definition of “data structure” is “a physical or logical relationship among data elements, designed to support specific data manipulation functions.” The New IEEE Standard Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993).) “Nonfunctional descriptive material” includes but is not limited to music, literary works and a compilation or mere arrangement of data.

    Clearly, by PHOSITA standards, IANAE already has what he asks for.

  40. Gentlemen,

    Step Back is again correct, so far as 100% of ontology means 0% epistemology.

    Both Mr. Koepsell and Bobby reply with circular arguments, having assumed the answers that they want to impress.

    Bobby – your statement of “That only holds true if ” entails a philosophy of segregation of types of matter, or more precisely to fit your mantra, fields of art, covered by the Constitutional basis of the Patent Act. It is only the Judiciary that has segregated the law, and they, as continued in the Bilski opinion, refuse to isolate any particular field of art (most damaging to the ego of those wishing for anti-software edicts). The subject I speak of is of a higher plane than field of art and concerns both Man’s unrelenting ego (we can define and control nature) juxtaposed against an infirmity of faith (if we allow that, man cannot move forward). We are at two different abstractions.

    Mr. Koepsell, Once again you assume without warrant that the Supreme Court Justices hold the same view and distinction between true Nature and Man’s made tools used to understand Nature. Nothing in their writings indicate taking such a stand. Quite contrary, certain writings evince a vibrant desire to stay in an Age of Iron. Your invitation to “Try patenting the latest model of the law of gravitation” proves only that the existing misunderstanding prevails (thus, what you think proves your point, simply does not, and proves that enlightenment has not reached those bodies). There is no truly logical rationale for distinguishing man made tools of a physical nature and man made tools of a non-physical nature in the application of a universal system for promotion.

  41. @breadcrumbs
    I was discussing the notion of why we have patents. We have patents because the public benefits from disclosure of said patents. If the public does not benefit from patents that meet a certain criteria, than those patents should not be granted. This is why patents that are obvious or already disclosed are not allowed, as their benefits are clearly minimal or possibly non-existent while the costs to society during the period of exclusivity are fairly high. If one were to conclude that patents within certain criteria do not result in a benefit, then not granting those patents would be the best action to take.

    As for the juxtaposition you speak of, I don’t really see it. An absence of patents in a field or within certain criteria does not prevent anyone from doing anything, and is in fact quite the opposite. It just means that active steps are not taken to allow inventors temporary exclusion of others in exchange for public disclosure. Innovation can and does occur without patents, and patents just act as a coefficient to the rate of innovation. If that coefficient is less than 1, it is retarding innovation and we are better off without them, and patents regarding laws of nature would almost certainly fit that scenario.

  42. Bobby,

    You are entertaining a seriously wrong notion about patents. And I am not surprised at all that you “don’t see it”.

    If the public does not benefit from patents that meet a certain criteria, than those patents should not be granted.

    You have individualized the patent clause far, far too much. I suggest that you look up the Bilksi Opinion and find within the Stevens’ concurrence, a reference to a paper by Judge Rich, who happened to contribute both to the 1952 Patent Act and the State Street Bank decision.

    Beyond that, I am afraid our discussions would only end up in useless sparring.

  43. We have patents because the public benefits from disclosure of said patents. If the public does not benefit from patents that meet a certain criteria, than those patents should not be granted. This is why patents that are obvious … are not allowed, as their benefits are clearly minimal

    @Bobby

    The world is a little more complicated and refined than what you allow for.

    There are many reasons why a country has a patent system and the reasons vary from country to country and probably from one time period to the next within a country.

    One of the deficiencies of the anti-patent software crowd is that they “fail to think 4 dimensionally” as Doc Brown of Back to the Future would say.

    “Obviousness” is all about timing.
    After you know the answer (because the inventor has revealed it to you) many things seem “obvious”.

    It is no different than a riddle in the before and after state of you having received the answer from someone else.

    Here is a riddle that most 5 year olds solve in 3 seconds:

    What is:
    Better than the best,
    More evil than the Devil,
    More powerful than God,
    The poor have it,
    The rich want it, and
    If you eat it, you will die?

    tick, tock, tick, tock
    Remember, 5 years olds solve it in 3 seconds.

    (no fair of course if you have already heard this one)

  44. @breadcrumbs
    To me, it seems quite obvious that the regulations exist for the purposes of determining benefit and getting better results. While they don’t directly determine the value of each patent and it’s costs/benefit ratio due to the impracticality of it, they do apply various tests to get an idea of those values and make a decision based upon these tests.

    @step back
    “There are many reasons why a country has a patent system and the reasons vary from country to country and probably from one time period to the next within a country.”
    The reason the US has a patent system is defined by the constitutional clause that grants it. The only way this can be fundamentally changed is a constitutional amendment, and even Disney couldn’t get that one through. Even if other countries have a different viewpoint, it is not particularly relevant to US patent law because our patents can only serve that purpose.

    “One of the deficiencies of the anti-patent software crowd is that they “fail to think 4 dimensionally” as Doc Brown of Back to the Future would say.”
    First, I have to say ‘anti-patent software’ crowd is as bad of a term as ‘anti-software patent’. It’s just a misleading term that suggest wholesale opposition to patents and software respectively. Opponents of software patents or software patent opponents is a clearer term (sorry, pet peeve). Back on subject, I think that software patent opponents are thinking 4 dimensionally, and contend that the cost over time outweighs the benefits received, thus slowing progress. Also, in their current form, they give large firms a competitive advantage against smaller firms, with exceptions for NPE’s. There is already enough of a concern over monopolistic behavior in these markets, and using patents to lock out or tax competitors can slow progress. Another problem is that software patents get in the way of compatibility, which is essential to modern computing, and can again result in smaller firms being at a disadvantage, even if the software’s primary format is technically superior, but not as widely supported.

    ““Obviousness” is all about timing.”
    I would agree. The USPTO determines obviousness at the time of the patent application, so we’ve got that one knocked out, at least on paper. Outsiders to the patent process may be confused by that with the difference between the application and issue dates, but failure to find prior art in patents that raise high profile cases does hurt the public opinion and raise actual cases where it was obvious before the patent was applied for.

  45. step back notes ““There are many reasons why a country has a patent system and the reasons vary from country to country and probably from one time period to the next within a country.”

    In the US, the reason Congress was empowered with the ability to create IP laws is enshrined in the Constitution, of course: “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” As SCOTUS held in Chakrabarthy, although “anything under the sun made by man” is patent-eligible, there are exceptions: “This is not to suggest that § 101 has no limits, or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U. S. 584 (1978); Gottschalk v. Benson, 409 U. S. 63, 409 U. S. 67 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 333 U. S. 130 (1948); 56 U. S. 112-121 (1854); 55 U. S. 175 (1853). Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity.”

    Excluding E=mc2 from patent-eligibility under 101 makes perfect sense, from a practical standpoint, although not from a theoretical standpoint, because it’s just too general, and would encompass all at once: all nuclear fission and fusion, any type of nuclear device or reactor. Patenting that far upstream would therefore inhibit “the progress of science and the useful arts,” exactly the opposite of what the Constitution sought to promote. But then, this is all academic, and no one seriously disputes the non-patent-eligibility of models of laws of nature.

    As well, the “usefulness” criteria of patentability quite obviously speaks to the necessity that an invention serve some public benefit. People benefit from usefulness. The public also benefits from the disclosure of the art in the patent documents. The public also benefits from the fact that, after a span of time, the invention lapses into the public domain. So yes, of course patents are meant to serve some public benefit, which is why useless things cannot get patents. Contrary to the opinion of patent attorneys, the purpose of patent law is not to generate fees for their pockets.

  46. Step Back,

    Good riddle, I had to search Google for the answer. Telling that riddle is a really good argument against a 103 rejection. I wonder if I should try that sometime?

  47. Good riddle, I had to search Google for the answer.

    @patent leather,

    We can even tease with the readers by adding this hint:
    tick tock, tick tock, come on. nothing comes to mind yet? tick tock, tick tock.
    remember. 5 year olds get the answer in 3 seconds.

  48. Excluding E=mc2 from patent-eligibility under 101 makes perfect sense, from a practical standpoint, although not from a theoretical standpoint, because it’s just too general, and would encompass all at once: all nuclear fission and fusion, any type of nuclear device or reactor. Patenting that far upstream would therefore inhibit “the progress of science and the useful arts

    @Koepsell,

    We are in agreement that a patent claim reading as follows would exceed the limits of 101:

    What is claimed is: 1. A method comprising using the equation E=m * c^2.

    But the reason for why it exceeds the limits of 101 has nothing with being on a sliding scale and on a point that is arbitrarily “too general” as you suggest.

    Instead the problem with that claim (note I didn’t say “patent”) is that it covers (encompasses) the step of “thinking” about the abstract theory of how the Universe might operate that alleges that E=m * c^2, where mere thinking is assumed to be a purely abstract process although science tells us otherwise even with regard to that (to using your brain).

    The theory that the Universe operates according to E=m * c^2 is essentially just as abstract as the theories of E=m * c^(1.9) or E=m * c^(2.1).

    With that said, a claim such as the following would nonetheless be patent eligible:

    What is claimed is: 2. A method comprising implementing the equation E=m * c^2 by means of conducting a controlled fusion reaction where the conducting of said controlled fusion reaction includes (a)…, (b)… and (c) …

    We leave it to the reader (you) of course to fill in the A, B, C’s for carrying out such a thing where the claim is one that concludes a specification enabling the A, B, C’s.

  49. To all:

    Great debate, no matter what position you take. If only our Judicial Mount Olympus would engage in such debate. What I see here just shows how out of its league SCOTUS is when it comes to technological issues like this one. Thanks to all for your comments.

  50. I’ve enjoyed the reading, reading and learning about the many views and opinions on the Bilski case.

    Its worth a great deal more to gain an understanding of how someone thinks, then to just guess what they think at different points of time, on a per-case basis. It is with all the interpretation… and so on, (mine included), clear why the SCOTUS didn’t make a clear line in the sand, because it would be lost ! To get back with the understanding of how someone thinks, how it all comes together to give some idea about what the SCOTUS did. They, SCOTUS set into motion more change then they could draft in tens years. Change through, where responsibility isn’t shared, but passed on. The divide of responsibility is wide now, few will want to take a hit for others mistakes about “innovation”. This change post Bilski will impact the software arena for sure, because the PTO and the Federal Circuit do not want a return to the SCOTUS in my opinion, not for the same reason… more or less anyway.

  51. Great debate, … If only our Judicial Mount Olympus would [understand] how out of its league SCOTUS is when it comes to technological issues like this one.

    @Eric (comment 49)

    The bottom line is that the human mind cannot absorb understanding of all things at all times rapidly and there are some tricks that an old dog just can’t learn after the prime of puppyhood is past.

    Each of the Mount Olympus Nine is undoubtedly very smart. But it’s going to take more time and more effort than they can give for them to get up to speed on even the basics of what a patent claim is let alone the subtlety of the idea/implementation dividing line. (No Virginia … and Sonia too … a patent claim does not “explain” what the invention is. The lines of a real estate deed similarly do not reveal what the territory contained therein is. But you already knew that, didn’t you?)

    It all goes back to the vice pointed at in comment number 1:

    “But that high IQ [of the Mount Olympus Nine] leads to the ultimate vice: vanity.”

  52. IANAE said “Is a general-purpose computer a “machine”? Not according to the Federal Circuit, so you’d have to go over their heads if you want to claim one.”

    Disagree. The Federal Circuit has not yet ruled on this issue.

    In re Bilski refused to reach the question: “We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.”

    The only two Fed Cir cases to consider In re Bilski were In re Ferguson (didn’t reach the question either) and SiRF v. ITC (held that a GPS receiver was a particular machine).

    The Fed Cir will be almost certainly decide the question “is a general purpose computer a particular machine” in the near future. A number of district court cases which involve this very issue are up on appeal.

  53. The Fed Cir will be almost certainly decide the question “is a general purpose computer a particular machine” in the near future.

    @Karen

    Maybe the above is a good question to explore at your blog.
    (Click on Karen’s name in comment 52 to see her blog)

    My contention (and I’ll stick to it thank you) is that the phrase: “a general purpose computer” belongs to the realm of fantasy which I refer to as the “common nonsense”.

    There is no such thing and there cannot be such a thing as a “general purpose computer”.

    The term “general” implies that this mythical computer has been designed for any and ALL functions now known or in the future invented. When I use the term “computer” here, I mean a real and physically implementable machine and not the physics violating “Turing machine”.

    The physics violating “Turing machine” has a tape of infinite length whose mass can be accelerated to speeds exceeding the speed of light in infinitesimally short time. Otherwise one would never get from one end of the infinitely long tape to the other.

    I fully understand that the “Turing machine” is good model in the realm of physics-free pure mathematics (in the realm where one can quickly scribble: Let velocity equal 2 times speed of light). Real world machines are not unconstrained by the laws of physics. No real world machine can have infinite memory. No real world machine can transmit signals at faster than speed of light in a vacuum. No real world machine can convert energy from one form to another without generating heat. Sorry for being a singularity-party pooper here.

  54. Stepback said: “My contention (and I’ll stick to it thank you) is that the phrase: ‘a general purpose computer’ belongs to the realm of fantasy which I refer to as the ‘common nonsense’. ”

    Hmm. If you object to the name, I don’t think it matters to the reasoning if we rename the entity The Examiners, BPAI and courts all seem to think there’s a big distinction between a computer that can easily be reprogrammed to run different kinds of software, e.g., a PC, and a computer that cannot be so easily reprogrammed, e.g. a GPS receiver. [Though reprogramming is implicit in my definition of a processor: processors execute whatever instructions you feed them.] And further, that this distinction matters in terms of patentable subject matter.

    Perhaps their distinction is related to their concern with “preempts all fields of use”? ie, a claim to an FFT algorithm executing on an unspecified type of computer prevents any use of that algorithm by in any sort of application, where a claim to that same FFT algorithm executing on a GPS receiver preempts only GPS applications? That is, even though the algorithm itself has wider application, it should only be patentable if limited to GPS?

  55. processors execute whatever instructions you feed them

    More feedstock from the “common nonsense” twilight zone.

    My AM analog radio executes whatever instructions I feed it.
    I rotate the frequency tuning knob and … amazing … it executes a change in tuned in frequency.
    I rotate the volume tuning knob and … wallah … it executes a change in loudness of output.

    My bicycle executes whatever instructions I feed it.
    I rotate the pedal thingy faster and … amazing … it executes a change in velocity.
    I rotate the steering handlebar thingy and ….

    Perhaps their distinction is related to their concern with “preempts all fields of use”?

    More feedstock from the “common nonsense” twilight zone.
    The whole purpose of a patent claim is to preempt within the limited area of its metes and bounds.
    Bilski’s claim 1 did not preemept anyone who wants to from thinking about hedging and then writing a “scholarly” paper about it. That is part of the ALL of doing something with the hedgey you betchya stuff.

    I’m not trying to be a sophist here.

    If you hate what I say, it’s because it is true. You have no agreed upon definition of “computer” let alone of a “general purpose” computer or “software”.

    a computer that can easily be reprogrammed to run different kinds of software

    “Easily” is an arbitrary standard that is in the eyes of the beholder.
    I don’t know what a “different kind” of software is. Do you mean the kind that does not use 1’s and 0’s?

    (BTW, my AM radio waves processor uses that different kind of software and it is even easier to “program” than my Windows OS desktop machine.)

  56. The term “general” implies that this mythical computer has been designed for any and ALL functions now known or in the future invented. When I use the term “computer” here, I mean a real and physically implementable machine and not the physics violating “Turing machine”.

    Your desktop computer is a Turing machine. In particular, your desktop computer could be trivially programmed to emulate a Turing machine.

  57. your desktop computer could be trivially programmed to emulate a Turing machine

    Oh really?

    IIRC the TM (Turing Machine) has an infinitely long tape for storing an infinite amount of data.
    So the first task for my so-called trivially programmable TM is —
    No. Make that YOUR TM-emulating desktop computer; is to store the entire contents of the Internet on a small part of its infinite tape.

    After that we can start talking about a more challenging task for our TM-emulating desktops.

    God speed.

  58. IIRC the TM (Turing Machine) has an infinitely long tape for storing an infinite amount of data.

    The Turing machine technically only requires a finite-but-unbounded tape, because the amount of data on the tape will necessarily be finite as long as the program terminates. It may be really large, even arbitrarily large, but it will always be finite and you can always accommodate the need for more tape by appending a sufficient (finite) length of tape when you reach the end. You can do the same in your desktop computer by adding more memory as needed, with the added benefit of random access so you don’t have to scroll the tape “infinitely” (really “arbitrarily”) quickly.

  59. @IANAE

    As OJ’s lawyer used to say:

    If the facts don’t fit, make them illegit ….
    (and then make up your own convenient set of fantasy facts)

    Wiki definition of Turing Machine:

    an infinite memory capacity obtained in the form of an infinite tape marked out into squares, on each of which a symbol could be printed. At any moment there is one symbol in the machine; it is called the scanned symbol. The machine can alter the scanned symbol and its behavior is in part determined by that symbol, but the symbols on the tape elsewhere do not affect the behavior of the machine. However, the [infinite] tape can be moved back and forth through the machine, this being one of the elementary operations of the machine. Any symbol on the tape may therefore eventually have an innings.[2] (Turing 1948, p. 61)

    source: http://en.wikipedia.org/wiki/Turing_machine

    p.s. Where can I buy those new 100 Terabyte super-high speed DRAM chips to shove into my general purpose desktop computer? I’m having one of those arbitrary whims to tack on a finite tid bit of more memory.

    p.p.s. Is it OK to use standard office thumb tacks for tacking on the extra memory or do I have to use those special low static kind? ;-)

  60. It’s quite common for people to colloquially say “infinite” (also, “exponential”) when they really mean “very big”, especially when talking about theoretical devices, and especially in definitions on the internet that anybody in the world can edit. It’s obvious that by “infinite” what they really mean is “make sure you have more of it lying around than you could ever actually need, so you don’t run out”. There will always be a finite number large enough that it represents an adequate amount of tape.

    You can have fun with semantic games all you want, but you know as well as I do that a Turing machine program cannot both terminate and require an infinite tape, and also that a series of bits stored on a hard disk or flash drive or whatever is just as good as a tape.

    p.p.s. Is it OK to use standard office thumb tacks for tacking on the extra memory or do I have to use those special low static kind?

    You’re using static thumb tacks for dynamic memory? That’s just begging for a hardware conflict.

    Seriously though, use a hot-swappable memory format and add/remove them as needed. It couldn’t possibly slow down the operation more than scrolling an infinite tape.

  61. @step back
    I don’t think there is really a significant difference between a Turing Machine and and an average desktop if the computer is capable of performing the task in question except perhaps the amount of time involved to do the operation, which is rarely a factor in these patents.

    The real problem is that most of the software patents are insultingly simplified compared to what is actually taking place. Every element of a program except strings output to the end user or logs, comments in source code, and variable names, is a functional element. If we held them to have the same degree of detail as pharmaceutical patents, where 31 atoms (and thus 31 ‘functional parts’) in a compound results in about 31 detailed claims, we’d probably have even some of the simplest software patents consisting of hundreds of claims in a horrid mixture of source code and patent-ese. The problem with this for programmers/inventors is that there is practically zero chance of collision in this manner, and you’ve now got the shorter protection period of patents in addition to the patent fees and the mental health problems that you’ve caused the attorney who prepared it.

    Likewise, for human actions, the way we act and think is an entirely different degree of complexity. If you detailed the exact thought and mechanical processes, you’d probably be hard pressed in many cases to duplicate it yourself, let alone catching and proving someone else is doing it.

  62. @stepback:

    >My bicycle executes whatever instructions I feed it

    A bicycle responds to your input. To paraphrase that as “executing instructions” is stretch the meaning of the words past their breaking point.

    >I don’t know what a “different kind” of software is. Do you mean the kind that does not use 1’s and 0’s?

    “Can execute different kinds of software” was my description of the difference between a PC and a GPS receiver. It’s more difficult to get a GPS receiver to run a non-GPS program than it is to get a PC to run IE one minute and a media player the next.

    I only bring up general-purpose vs. special-purpose because the courts make a big deal out of this. Personally, I think the idea that the GPS receiver satisfies the MoT test while a PC doesn’t is wrong-headed.

    BTW, I still say there’s difference between a class of computers which we can call “special purpose” and another class which we can call “general purpose”. The fact that both classes have a lot of common doesn’t erase those differences. My position is that patentability shouldn’t rest on those differences.

    >The term “general” implies that this mythical computer has been designed for any and ALL functions now known >or in the future invented.

    Apparently that’s what *you* mean by general-purpose computer. It’s not what I mean.

    >When I use the term “computer” here, I mean a real and physically implementable machine

    You and I agree on this one.

    >The whole purpose of a patent claim is to preempt within the limited area of its metes and bounds.

    Amen to that, brother. If I get a patent on a new kind of screw, I can preempt all uses of that screw, from bookcases to auto parts. Why isn’t the world up in arms about that? Why is software subject to a more stringent standard?

  63. Karen,

    I think what you meant to say is that YOUR definition
    (1) of a “special purpose” computer is one where most of its instructions and data are stored in non-reprogrammable memory (i.e. ROM), and
    (2) of a “general purpose” computer is one where most of its instructions and data are stored in reprogrammable memory (i.e. RAM and magnetic disk)

    But I don’t think that is the definition that various judges have in their minds (mostly because they have no idea what a RAM, ROM, disk and whatyama call it are or do in detail).

  64. If I get a patent on a new kind of screw, I can preempt all uses of that screw, from bookcases to auto parts. Why isn’t the world up in arms about that? Why is software subject to a more stringent standard?

    Because when you invent a new device you’re supposed to be able to preempt all uses of that device. That’s what patents are for. In any event, your screw will generally only ever be used as a screw, whether it’s in a bookcase or a crankcase.

    Processes are by their nature less tangible. If you claim them at a sufficiently high level of abstraction, and take away the specialized hardware on which they operate, you risk claiming an abstract concept, which I think we all agree should not be patent-eligible. If you take away Diehr’s press (particular machine) and cured rubber (particular transformation), you’re left with a claim to using the Arrhenius equation for math.

    A general purpose computer doesn’t really place any meaningful limitation on the steps of a process, because a general purpose computer can emulate any other processor and do any calculation you could ever ask of any other machine. Data goes in, data goes out, and in the middle there are steps carried out, but the fact that there’s a computer in the middle adds nothing at all to the process.

    Once you get specific with your machine, e.g. by adding a heated press and a thermistor that inputs data into the computer, or get specific with your transformation, e.g. by putting in rubber and getting out cured rubber, then we have a pretty good clue that the method isn’t abstract anymore. You can go ahead and pre-empt all uses of that press, or all methods of curing rubber according to your calculation.

  65. IANAE, thanks for the cogent explanation. I understand your position more clearly than I understand that of some other folks I’ve read here and elsewhere.

    >Processes are by their nature less tangible.

    Hmm. OK, I can agree with this. A device/apparatus is *by definition* tangible. A process is not.

    >If you claim them at a sufficiently high level of abstraction, and take away the specialized hardware
    >on which they operate, you risk claiming an abstract concept,

    Maybe if you take away any and all hardware you’re left with an abstract concept. If you keep any hardware you’re left with hardware implementing a process, which is concrete and therefore non-abstract.

    The only sense in which I agree that a process implemented by a machine is “abstract” is the sense that it preempts all uses not limited by the claims. But “preempts all uses” is not a normal meaning of the word “abstract”.

    I wish folks that say “a process/machine that preempts all uses should not be patentable subject matter” would just say that, and do away with the abstract idea camouflage.

    >A general purpose computer doesn’t really place any meaningful limitation on the steps of a process,

    Well, that depends on where you draw the line at “meaningful.” I’ll agree that a specialized computer puts more limitations on the steps of a process than does a general purpose computer. I just don’t agree that that moves it from abstract to not-abstract. Either operating on a computer makes it non-abstract or it doesn’t. [I say the former, of course.]

    >If you take away Diehr’s press (particular machine) and cured rubber (particular transformation),
    >you’re left with a claim to using the Arrhenius equation for math.

    No, if you take away the *machine* you’re left with the math. If you keep any machine, you’re left with a machine implementing a process that uses the Arrhenius equation. And? Oh, right, you’re implying that “using the Arrhenius equation to perform some action” shouldn’t be *patentable subject matter*. Again, just not seeing it. Maybe there are plenty of reasons a claim to a particular use of an Arrhenius equation shouldn’t be *patentable*, such as Written Description, Enablement, and/or Novelty/Obviousness. Maybe even “you didn’t invent the equation”, depending on how its claims. I say let those existing criteria take care of that.

    >Once you get specific with your machine, e.g. by adding a heated press and a thermistor that inputs data into
    >the computer, or get specific with your transformation, e.g. by putting in rubber and getting out cured rubber,
    >then we have a pretty good clue that the method isn’t abstract anymore.

    Good explanation. I’ll even agree that the process using the rubber curing machine is more-concrete/less-abstract than the process of performing calculations using the Arrhenius equation on a computer. Just doesn’t matter to me, because I say that the second process is safely out of the realm of abstract by virtue of having a machine.

    I think we’ve reached an impasse on this particular point. I can’t see how you’re going to convince me that “abstract idea” could cover anything implemented on a machine. It simply comes down to semantics, and how I understand the phrase “abstract idea”.

    But I’d love to hear more from you on why “a process/machine that preempts all uses should not be patentable subject matter.” [If that is indeed your position.]

    Does it boil down to policy? ie, horrible things will happen if we allow this? What horrible things? Did you have good reason to believe that the other patentability criteria wouldn’t keep these horrible things from happening?

  66. Maybe if you take away any and all hardware you’re left with an abstract concept. If you keep any hardware you’re left with hardware implementing a process, which is concrete and therefore non-abstract.

    The only sense in which I agree that a process implemented by a machine is “abstract” is the sense that it preempts all uses not limited by the claims. But “preempts all uses” is not a normal meaning of the word “abstract”.

    It’s a pretty delicate issue, and it borders on the philosophical/theoretical. I don’t think “preempts all uses” is intended as a meaning of the word “abstract”, exactly. It’s intended as a sort of test to see whether the abstract concept is sufficiently reduced/limited to a practical application.

    Every invention is based on at least one abstract concept, whether it’s Newton’s third law or the correlation between the BRCA genes and breast cancer or the Arrhenius equation. A claim that is not restricted to a specific practical application is said to “preempt the abstract concept”, and is seen as an attempt to claim the abstract concept itself, and is therefore considered non-statutory.

    Now, consider a general purpose computer. Since a general purpose computer can do pretty much anything you ask of it, claiming a process performed on a general purpose computer is no different than claiming the same process performed “on a machine”, or simply “performed”. It doesn’t reduce the level of abstraction any more than “a process comprising”, which on its face should make your claim statutory. Adding “on a computer” to a method is like adding “in bed” to a fortune cookie fortune – you can say it about anything. In my opinion, that means you should have something non-abstract in the process steps themselves if you want your patent.

    It’s hard to draw the line between claiming an abstract idea/equation/concept per se and claiming a process implemented on a general purpose computer that receives data, processes it according to that abstract idea/equation/concept and outputs data. If you have some idea of where that line belongs, good news. The USPTO has just requested comments on that very point.

  67. @IAN-AE & Karen,

    This conversation is heading towards wasteland.

    Let me say one thing for now: First Amendment

    I don’t have time at moment to elaborate, but freedom of speech inherently requires freedom of thought (about abstract ideas). I think that is part of what the Supremes worry about but do not articulate because they don’t yet foresee what will be unleashed by opening that Pandora’s Box.

    The test should be whether the process claim impinges on First Amendment right to think (in the abstract). What if you needed a computer to help you “think” about the abstract idea?

  68. “What if you needed a computer to help you “think” about the abstract idea?”

    Then I’m truly sorry that the public school system has failed you so badly.

    The First Amendment is not a limit, let alone the limit, on patentable subject matter. Congress was empowered to grant patents before the First Amendment even existed, and the Second Amendment doesn’t preclude patents on firearms. Clearly this is not a civil rights issue.

    The issue here is that patents live in the realm of the “useful arts”. That doesn’t include mere thought, or abstract principles independent of any practical application. Patents are given in exchange for giving the public a new and useful invention. We don’t want to patent abstract principles because they are more along the lines of scientific or theoretical research, and monopolizing them doesn’t advance the useful arts. Use your equation to accomplish something real, and we’ll give you a patent on what you accomplished.

  69. @IAN.AE,

    The issue here is that patents live in the realm of the “useful arts”.

    Like you, for a long time I thought that the “useful arts” phrase in the Constitution controlled.

    However, the same phrase applies to Copyright Law, and there; at least for works of fiction, it clearly does not control.

    Nonetheless, in 35 USC 101, we do have the limitations of any new “and useful” process.

    The term process must be expanded per 100(b) to mean: “process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material”.

    So yes one of the expanded options (using the distributive property me learned in them thar public schools) is “useful art”. But also included are “useful process”, “useful method” and “useful new use of a known [blah blah blah]”

    That of course begs the question as to when something covered by a claim ceases to be “useful” and must the claim then explicitly renounce the unuseful portions of its coverage.

    For example, if I have a claim that recites a circuit comprising a 1st transistor, a 2nd transistor, yadah yadah, the term “transistor” is broad enough to include a broken transistor. Clearly such is not “useful”. However, it has been held that an apparatus claim need not renounce dysfunctional interpretations that happen to fall within its literal language.

    So if a process claim covers both useful implementations and nonuseful ones, why must we expressly renounce the nonuseful ones?

  70. “the term “transistor” is broad enough to include a broken transistor.”

    See, I would disagree with that statement. A transistor is a particular arrangement of materials having a particular function. If it breaks, it’s either an open circuit or a short circuit, but it’s no longer a transistor.

    Yes, I’ve seen BRI rejections where the examiner had to break prior art structures to invalidate my claims, but the answer to that is always the same. A person skilled in the art (to whom the claim is addressed) knows that “transistor” means “operational transistor”, and it is well known in any art not to break things. There’s no shortage of people willing to sign a 132 affidavit to that effect, should it come to that.

  71. One need not travel far to find the Abstractionist Looking Glass looking back at us:

    Ex parte TSE-HUONG CHOO,
    http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009006352-07-28-2010-1
    Decided 7/27/2010 BPAI

    THE NON-STATUTORY SUBJECT MATTER REJECTION
    Claims 1-13
    Regarding representative independent claim 1, the Examiner finds that
    the recited system is an abstract idea and claims software. Ans. 4.
    Appellants argue that claim 1 is directed to a system or a “machine” as set
    forth under § 101.

    ANALYSIS
    Based on the record before us, we find no error in the Examiner’s
    non-statutory subject matter rejection of claim 1. Claim 1 recites a computer
    system having ….

  72. “One need not travel far to find the Abstractionist Looking Glass looking back at us:”

    There’s nothing strange about that decision. It was 15 years in the making. The PTO is finally standing up for itself and telling us that Beauregard-type claims are non-statutory.

  73. The PTO is finally standing up for itself and telling us that Beauregard-type claims are non-statutory.

    Didn’t they blow the chance when they had it, some 15 years ago? Don’t see it as somehow now to be “in the making“.

    One also has to keep in mind that this is at the BPAI level – it is not at all surprising as this level of semi-judiciary is the one that has the most tainted lips, and the one farthest away from the reform movement of Kappos.

  74. To all:

    The great debate goes on! I’m glad we’ve got differing views here on the subject of patent-eligibility. But what I’m most please with that this debate isn’t turning personal but is instead a reasoned, thoughtful discussion. Continue on as long as you feel there’s something more to say. And thanks again for all the comments.